Finisar Corp. v. The Directv Group, Inc.

• Decision Date: 17 February 2006
• Docket Number: No. CIV.A.1:05-CV-264.,CIV.A.1:05-CV-264.
• Citation: 416 F.Supp.2d 512
• Parties: FINISAR CORP., Plaintiff, v. THE DIRECTV GROUP, INC., et al., Defendant.
• Court: U.S. District Court — Eastern District of Texas

416 F.Supp.2d 512

FINISAR CORP., Plaintiff, v. THE DIRECTV GROUP, INC., et al., Defendant.

No. CIV.A.1:05-CV-264.

United States District Court, E.D. Texas, Beaumont Division.

February 17, 2006.

COPYRIGHT MATERIAL OMITTED

Lawrence Louis Germer, Heber Craig Hall of Germer Gertz, LLP, Beaumont, TX, Kirk R. Harris, Larry R. Laycock, Eric L. Maschoff, Charles L. Roberts, C.J. Veverka and David R. Wright of Workman, Nydegger & Seeley, Salt Lake City, UT, for Plaintiff.

Steven J. Corr, Kevin G. McBride, Marsha E. Mullin, Giam M. Nguyen, Victor George Savikas, and Louis Touton of Jones Day-California, Los Angeles, CA, J. Thad Heartfield, Jr., of Heartfield & McGinnis, Beaumont, Michael J. Newton of Jones, Day, Dallas, for Defendants.

MEMORANDUM OPINION AND ORDER CONSTRUING CLAIM TERMS OF UNITED STATES PATENT NO. 5,404,505

CLARK, District Judge.

Plaintiff Finisar Corporation ("Finisar") filed, suit against Defendants The DirecTV Group, Inc., DirecTV Holdings, LLC, DirecTV Enterprises, LLC, DirecTV Operations, LLC, DirecTV, Inc., and Hughes Network Systems, Inc. (collectively "DirecTV or Defendants") claiming infringement of United States Patent No. 5,404,505 ("the `505 patent"). The court conducted a Markman hearing to assist the court in interpreting the meaning of the claim terms in dispute. Having carefully considered the patent, the prosecution history, the parties' briefs, and the arguments of counsel, the court now makes the following findings and construes the disputed claim terms as follows.

I. Claim Construction Standard of Review

Claim construction is a matter of law. Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) ("Markman II"). "The duty of the trial judge is to determine the meaning of the claims at issue, and to instruct the jury accordingly." Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555 (Fed.Cir.1995) (citations omitted).

"`[T]he claims of the patent define the invention to which the patentee is entitled the right to exclude.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.Cir.2005) (en banc) (citation omitted). "Because the patentee is required to `define precisely what his invention is,' it is `unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms.'" Phillips, 415 F.3d at 1312 (quoting White v. Dunbar, 119 U.S. 47, 52, 7 S.Ct. 72, 30 L.Ed. 303 (1886)).

The words of a claim are generally given their ordinary and customary meaning. Phillips 415 F.3d at 1312. 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."¹ Id. at 1313. Analyzing "how a person of ordinary skill in the art understands a claim term" is the starting point of a proper claim construction. Id.

A "person of ordinary skill in the art is deemed to read the claim term not only in context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Phillips, 415 F.3d at 1313. Where a claim term has a particular meaning in the field of art, the court must examine those sources available to the public to show what a person skilled in the art would have understood disputed claim language to mean. Id. at 1414. Those sources "include `words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.'" Id. (citation omitted).

"[T]he ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words." Phillips, 415 F.3d at 1314. In these instances, a general purpose dictionary may be helpful. Id.

However, the Court emphasized the importance of the specification. "[T]he 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.'" Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996)). A court is authorized to review extrinsic evidence, such as dictionaries, inventor testimony, and learned treaties. Phillips, 415 F.3d at 1317. But their use should be limited to edification purposes. Id. at 1319.

The intrinsic evidence, that is, the patent specification, and, if in evidence, the prosecution history, may clarify whether the patentee clearly intended a meaning different from the ordinary meaning, or clearly disavowed the ordinary meaning in favor of some special meaning. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 979-80 (Fed.Cir.1995). Claim terms take on their ordinary and accustomed meanings unless the patentee demonstrated "clear intent" to deviate from the ordinary and accustomed meaning of a claim term by redefining the term in the patent specification. Johnson Worldwide Assoc., Inc. v. Zebco Corp., 175 F.3d 985, 990 (Fed.Cir.1999).

The "`ordinary meaning' of a claim term is its meaning to the ordinary artisan after reading the entire patent." Phillips, 415 F.3d at 1321. However, the patentee may deviate from the plain and ordinary meaning by characterizing the invention in the prosecution history using words or expressions of manifest exclusion or restriction, representing a "clear disavowal" of claim scope. Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed.Cir. 2002). It is clear that if the patentee clearly intended to be its own lexicographer, the "inventor's lexicography governs." Phillips, 415 F.3d at 1316.

II. Claim Construction— The `505 patent

Dr. Frank Levinson is the inventor of United States Patent No. 5,404,505. The assignee is Finisar Corporation. The `505 patent describes the transfer of information, from an information database, to subscribers, upon request, through satellite transmission. In general, this involves a central supplier station sending regularly scheduled data to its subscribers via satellite. However, a portion of the available bandwidth is reserved for subscriber requested data. Here, although that data is actually broadcast to all subscribers, only those who have requested the data will have access to it (i.e., be able to view the data). There is also the possibility of remote systems (usually local programming) sending data to subscribers.

The first five disputed terms are contained in the beginning of claim 1. This section is set out below with the disputed terms in bold.

1. An information transmission system comprising:

a set of one or more computer memory devices on which is stored an information database;

database editing means, coupled to said one or more computer memory devices, for generating a hierarchically arranged set of indices for referencing data in said information database, including distinct indices for referencing

distinct portions thereof, and for embedding said indices in said information database.

"Information database." Used in claims 1, 2, 7, 10, 16, 17, 22, 25, 37, 39, and 44.

For this term, Finisar initially proposed "a collection of information" and gave some examples.² DirecTV suggested "[a] collection of non-transient data files that can be searched and retrieved." Their dispute centered on two points:

1. whether the data can be in several locations or must be "non-transient;" and

2. whether the definition must specify that the data can be "searched and retrieved."

Since the claim language alone does not resolve this dispute, the court looks to the specification.

The specification demonstrates that the database is not isolated. "The goal of the present invention is to provide widespread, high speed access to a virtual omniscient database . . ." `505 patent, col. 1, ll. 54-56. (emphasis added); see also, col. 5, ll. 12-13. The specification analogizes the system to "having access" to a large collection of books in a library, even if all books are not instantly available. `505 patent, col. 2, ll. 17-23. All of the information in the database is tagged with indices to form a hierarchical structure to provide subscribers with access to various parts of the database according to different transmission schedules. `505 patent, col. 2, ll. 52-59. Accordingly, the information database is computerized information which can be accessed in some fashion.

There is no need to impose the limitation of "searched and retrieved" which implies a more specific search and retrieval system than the claims and specification describe. Nothing in the claim or specification indicates that the database must be searchable to any particular level of specificity. For example, common legal research systems allow very narrow searches, such as by case name, by judge name, and even by a particular word. In contrast, some of the data in the `505 system can only be referenced in broader terms, such as a search for a movie by title, but not necessarily by words used in a movie or group of movies.

As to the argument that the data in the database be "non-transient," it is important to note that one skilled in the art would know that computerized information is made up of electronic impulses—the classic "ones and zeros" of the binary system. It would also be known that a database could exist on a network of computers and memory storage devices. This is described as a possible embodiment. 505 patent, col. 6, ll. 61-64. Moreover, the use of the phrase "non-transient" will likely not be helpful to a lay jury. It is not helpful to focus on the time period during which data is being sent from the supplier station to the satellite and then to the subscriber station, as shown in Figure 1 of the patent.

This claim term will be construed as follows:...