Haddad v. United States

• Decision Date: 20 January 2023
• Docket Number: 17-307
• Court: U.S. Claims Court
• Parties: MICHAEL HADDAD, Plaintiff, v. THE UNITED STATES, Defendant, TRANS DIGITAL TECHNOLOGIES LIMITED LIABILITY COMPANY, Third-Party Defendant, and IDEMIA IDENTITY & SECURITY USA LLC, Third-Party Defendant. Court's Construction Court's Construction

MICHAEL HADDAD, Plaintiff,
v.
THE UNITED STATES, Defendant,

TRANS DIGITAL TECHNOLOGIES LIMITED LIABILITY COMPANY, Third-Party Defendant, and IDEMIA IDENTITY & SECURITY USA LLC, Third-Party Defendant.

No. 17-307

United States Court of Federal Claims

January 20, 2023

NOT TO BE PUBLISHED

Claim Construction; Markman Hearing; Plain and Ordinary Meaning; Means Plus Function; Intrinsic Record; Indefinite; Person Having Ordinary Skill in the Art; 28 U.S.C. § 112.

Geoffrey Mason, MOARBES, LLP, of Washington, DC, for plaintiff.

Conrad J. DeWitte, Jr., Assistant Director, with whom were Gary L. Hausken, Director, Commercial Litigation Branch, and Brian M. Boynton, Principal Deputy Assistant Attorney General, Civil Division, Department of Justice, all of Washington, DC, for defendant.

Richard L. Brophy, Armstrong Teasdale LLP, of St. Louis, MO, for third-party defendants Trans Digital Technologies LLC and Idemia Identity & Security USA LLC.

CLAIM CONSTRUCTION OPINION AND ORDER

RYAN T. HOLTE, JUDGE

Plaintiff Michael Haddad accuses the government of infringing U.S. Patent No. 7,639,844. The government noticed Trans Digital Technology LLC and Morpho Trust USA, LLC (now Idemia Identity & Security USA LLC), distributors of the allegedly infringing

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product, who joined the government in defending the claims against patent infringement. The parties filed claim construction briefs seeking to construe the meaning of various disputed claim terms. The Court held a Markman hearing to construe the disputed terms. Defendants argue thirteen of the fifteen claim terms are indefinite under 35 U.S.C. § 112. This Claim Construction Opinion and Order construes the disputed terms and finds sole independent claim 1 indefinite and accordingly finds the entire '844 patent invalid. The Court further orders the plaintiff to show cause why this case should not be dismissed.

I. Background

A. Patents, Property, and Presumption of Validity

In 1876, the Supreme Court held "[a] patent for an invention is as much property as a patent for land. The right rests on the same foundation, and is surrounded and protected by the same sanctions." Consol. Fruit-Jar Co. v. Wright, 94 U.S. 92, 96 (1876). In more recent years, the Supreme Court has established the right to exclude as "one of the most essential sticks in the bundle of rights that are commonly characterized as property." Kaiser Aetna v. United States, 444 U.S. 164, 176 (1979). The Federal Circuit confirms "a patent grants only the right to exclude others and confers no right on its holder to make, use, or sell [an invention]." Bio-Tech. Gen. Corp. v. Genentech, Inc., 80 F.3d 1553, 1559 (Fed. Cir. 1996) (quoting Vaupel Texilmaschinen KG v. Meccanica Euro Italia S.P.A., 944 F.3d 870, 879 n.4 (Fed. Cir. 1991)) (internal quotations omitted).

In addition to patents being property, "[p]atents are presumed to be valid." Procter & Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (citing Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 968 (Fed. Cir. 2006)). "[T]he [United States] Patent and Trademark Office [('USPTO')] only grants those patent applications that meet the statutory patentability requirement." Adam Mossoff, Who Cares What Thomas Jefferson Thought about Patents-Reevaluating the Patent Privilege in Historical Context, 92 Cornell L. Rev. 953, 999 (2007) (citing Intervet Am., Inc. v. Kee-Vet Labs., Inc., 887 F.2d 1050, 1054 (Fed. Cir. 1989) ("The presumption of validity under 35 U.S.C. § 282 carries with it a presumption the examiner did his duty and knew what claims he was allowing"); Am. Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1359 (Fed. Cir. 1984) (noting § 282 is based on the "basic proposition that a government agency such as the then Patent Office was presumed to do its job")). "The burden of establishing invalidity of a patent claim . . . rest[s] on the party asserting invalidity." 35 U.S.C. § 282(a). "An issued patent enjoys a presumption of validity[, and] a party challenging patent validity has the burden to prove its case with clear and convincing evidence." Impax Labs., Inc. v. Aventis Pharm., Inc., 545 F.3d 1312, 1314 (Fed. Cir. 2008).

B. Factual History

Plaintiff Michael Haddad is the sole inventor, owner, and assignee of U.S. Patent No. 7,639,844 ("the '844 patent"). Compl. ¶¶ 1, 6, 9, ECF No. 1. The '844 patent is a "[c]ontinuation-in-part of [U.S.] application No. 11/220,282 [('the '282 application')], filed on 7 September 2005, now Pat[ent] No. 7,401,732 [('the '732 patent')], and a continuation-in-part of

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[U.S.] application No. 10/330,981, filed on 30 December 2002, now abandoned." '844 patent at [63].

The '844 patent, titled "Airport Vehicular Gate Entry Access System," relates to methods of "securing airport vehicular gate entries by providing" "means of authenticating drivers' licenses, verifying employee status, printing temporary passes, printing a temporary vehicle entry pass and certificate" and "providing the airport police with a handheld apparatus capable of reading the entry certificate and wirelessly verifying its authenticity." Id. at [54], [57]. The system also provides means of matching vehicle drivers and passengers "against the TSA NO-FLY and SELECTEE lists." Id. at [57]. The system is "fully automated and is touch screen capable, thus requiring a minimal amount of human interaction." Id.

C. Procedural History

Plaintiff filed his complaint on 6 March 2017, alleging the Credential Authentication Technology-Boarding Pass Scanning System ("CAT/BPSS") used by the government and provided by third-party defendants Trans Digital Technology LLC ("TDT") and Idemia Identity & Security USA LLC^[1] ("Idemia") (collectively "defendants") for its airport security systems infringes the '844 patent. See Compl. ¶¶ 15-16, 19, 33. The government moved to notice interested third parties, BAE Systems Information Solutions, Inc., NCR Government Systems, LLC, Trans Digital Technologies, Inc., and MorphoTrust USA, Inc., and the interested third parties were noticed on 3 May 2017. Mot. for Notice to Third Parties, ECF No. 8; see Notice to Third Parties, ECF No. 11. On 28 February 2018, this court dismissed plaintiff's claims for patent infringement accruing prior to 27 October 2016. See Order Granting Gov't's Mot. to Dismiss at 15-16, ECF No. 39. On 27 July 2018, this court dismissed third-party defendants BAE Systems Information Solutions, Inc. and NCR Government Systems, LLC. See Order Dismissing Third-Party Defs. at 2, ECF No. 45. This case was reassigned to the undersigned judge on 29 July 2019. See Order, ECF No. 81.

On 9 February 2021, defendants filed a joint status report stating each party's views on a proposed discovery schedule, whether the parties had claim construction disputes, and each party's proposed schedule for claim construction briefing. See Joint Status Report, ECF No. 116. On 16 February 2021, the Court issued a scheduling order for the exchange of: preliminary infringement contentions; preliminary invalidity contentions; claim terms for construction; proposed claim constructions; and extrinsic evidence supporting claim construction positions. See Scheduling Order at 2-3, ECF No. 117. On 19 March 2021, defendants filed a motion to compel plaintiff to serve supplemental infringement contentions. See Mot. to Compel, ECF No. 120. After the parties fully briefed the issue, the Court denied the motion to compel as moot when plaintiff agreed to serve infringement contentions. See Order, ECF No. 131.

On 23 November 2021, defendants filed their opening claim construction brief. See Defs.' Opening Claim Construction Br. ("Defs.' Cl. Constr. Br."), ECF No. 137. Plaintiff filed his response to defendants' opening claim construction brief on 20 December 2021. See Pl.'s Resp. to Defs.' Opening Claim Construction Br. ("Pl.'s Resp. Cl. Constr. Br."), ECF No. 140.

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On 7 January 2022, defendants filed their reply to plaintiff's response. See Defs.' Reply Claim Construction Br. ("Defs.' Reply Cl. Constr. Br."), ECF No. 141. Plaintiff filed a surreply to defendants' reply on 21 January 2022. See Pl.'s Surreply Claim Construction Br. ("Pl.'s Surreply Cl. Constr. Br"), ECF No. 144. The Court held a Markman hearing on 12 July 2022. See Order, ECF No. 151.

D. The Technology of the '844 Patent

On 27 August 2007, plaintiff filed U.S. Patent Application No. 11/895,656, later issued as the '844 patent. See '844 patent at [10], [21]-[22]. Plaintiff asserts infringement of sole independent claim 1 of the '844 patent and dependent claims 3, 5, and 6. See Compl. ¶¶ 19-32.

The '844 patent "relates to a method of securing airport vehicular gate entry/exit gates" by allowing "security personnel to process a vehicle entry as a group of verifiable objects interrelated, including an employee host, a vehicle registration card, a vehicle driver and vehicle passengers." '844 patent col. 1 ll. 13-14, 36-39. The background of the '844 patent describes the field as being "prone to excessive error rates, lower security standards, increased inefficiencies and decreased reliability" because "[a]irport vehicular entry gates rely on human intervention and manual data entry." Id. col. 1 ll. 22-25. The patent discloses "an enterprise platform where multiple airport vehicular gates comprise one workstation each, interconnected in a network configuration, controlled by a central database server" making "all data immediately available at all workstations" because "[a]ll workstations collect and store data in the central database server." Id. col. 2 ll. 41-45. The platform "uses a computer system, the apparatus of [the '282 application], and the software application of [the '282 application] customized for the purpose [of providing], a commercial [i]dentification card authentication apparatus, and various computer peripherals." Id. col. 1 ll. 40-44.

The system provides an "entry/exit workstation"...