Info-Hold, Inc. v. Applied Media Techs. Corp.

• Decision Date: 24 April 2015
• Docket Number: No. 2013–1528.,2013–1528.
• Citation: 114 U.S.P.Q.2d 1563,783 F.3d 1262
• Parties: INFO–HOLD, INC., Plaintiff–Appellant v. APPLIED MEDIA TECHNOLOGIES CORPORATION, Defendant–Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

783 F.3d 1262

114 U.S.P.Q.2d 1563

INFO–HOLD, INC., Plaintiff–Appellant

v.APPLIED MEDIA TECHNOLOGIES CORPORATION, Defendant–Appellee.

No. 2013–1528.

United States Court of Appeals, Federal Circuit.

April 24, 2015.

Daniel Joseph Wood, Info–Hold, Inc., Cincinnati, OH, James L. Kwak, Standley Law Group LLP, Dublin, OH, argued for plaintiff-appellant.

Raymond R. Ferrera, Adams & Reese LLP, Houston, TX, argued for defendant-appellee. Also represented by Melissa Stok Rizzo, Donald A. Mihokovich, Tampa, FL.

Before REYNA, WALLACH, and TARANTO, Circuit Judges.

Opinion

REYNA, Circuit Judge.

This case comes before us on appeal of a final judgment that Applied Media Technologies Corporation (“AMTC”) does not infringe U.S. Patent No. 5,991,374 (“'374 patent”). Info–Hold, owner of the '374 patent, asserted the patent against AMTC and Muzak LLC in separate suits before the same judge in the Southern District of Ohio. Those suits led to separate appeals, which were argued on the same day before the same panel. We address the issues raised in Info–Hold's appeal in the Muzak suit in a separate opinion.

We find the district court adopted a construction that improperly narrowed the scope of the claims. We reverse the district court and remand for further proceedings consistent with our opinion.

Background

The '374 patent is directed to systems, apparatuses, and methods for playing music and messages (e.g., advertisements) through telephones and public speaker systems. Playback order of the music and message tracks is set on a remote server. The remote server generates and sends control signals to message playback devices, telling them to access and play back tracks in a specified order. One use of the disclosed technology involves directing the output of the message playback devices to a public address system at retail stores, so customers can hear the music and advertisements while shopping. The output of the message playback device can also be directed to a music-on-hold (“MOH”) system, which plays the tracks over the telephone to callers who are on hold.

In January 2010, an ex parte reexamination proceeding was initiated on the ' 374 patent. After amendment of some claims and cancellation of others, the '374 patent emerged from reexamination. Reexamined independent claim 7 is representative of the technology claimed in the '374 patent and recites:

7. A programmable message delivery system for playing messages on message playback devices at one or more remote sites comprising:

a communication link;

a plurality of message playback devices, each of said message playback devices communicating with a respective telephone system and comprising a storage device for storing messages and for playing selected ones of said messages through an output of said message playback device when a caller is placed on hold; and

a computer remotely located from said plurality of message playback devices and operable to generate and transmit control signals via said communication link for controlling at least one of said plurality of message playback devices;

each of said plurality of message playback devices being adapted to receive said control signals via said communication link and being programmable to access at least one of said messages from said storage device and to provide said accessed message to said output in accordance with said control signals when a caller is placed on hold;

wherein said computer comprises a display device and is programmable to generate screens on said display device that include user selectable menu items for selection by an operator to define relationships between said plurality of message playback devices and said messages, the screens guiding an operator to make choices selected from the group consisting of which of said messages are to be played, which of said plurality of message playback devices are to play said selected messages, a time of day when said control signals are to be transmitted to said message playback devices, a date on which said control signals are to be transmitted to said message playback devices, a sequence in which said selected messages are to be played, and how many times to repeat at least one of said selected messages in said sequence, and to generate said control signals to implement said choices via said message playback devices.

'374 patent reexamination certificate, col. 1 ll. 28–67.

Litigation History

Info–Hold filed suit in November 2003, accusing AMTC's Remotelink IP and EOS Horizon devices (“AMTC's Accused Devices”) of infringing the '374 patent. During the litigation, a third-party requester initiated an ex parte reexamination of the '374 patent. The Patent Office's decision to reexamine the '374 patent resulted in a stay of the infringement suit against AMTC that was pending in the district court. While the reexamination proceeding was pending, Info–Hold brought a separate suit against Muzak LLC (“Muzak”), with the same judge in the Southern District of Ohio presiding over both cases. After the '374 patent emerged from reexamination, the stay of the AMTC suit was lifted. Subsequently, it became apparent that the district court would conduct claim construction proceedings in the Muzak case first. Info–Hold and AMTC agreed to be bound in their case by the constructions rendered in the Muzak case. J.A. 1296–97.

Among the terms the district court construed in the Muzak case was “when a caller is placed on hold.” The district court construed the term to mean “at the moment a caller is placed on hold,” a construction favoring Muzak. Info–Hold, Inc. v. Muzak Holdings LLC, No. 1:11–cv–283, 2012 WL 3930376, at *4 (S.D.Ohio Sept. 10, 2012).

In this case, the district court issued an order construing three terms, adopting AMTC's proposed construction for each. The district court primarily relied on statements from the patent's written description to support its claim construction. Before construing the claims, however, the district court also noted its interest in what it viewed as “extrinsic evidence related to” U.S. Patent No. 6,741,683 (“'683 patent”), namely the '683 patent's Notice of Allowability. Info–Hold, Inc. v. Applied Media Techs. Corp.,

No. 1:08–cv–802, 2013 WL 1787007, at *3 (S.D.Ohio Apr. 25, 2013) (“Claim Construction Order ”).¹ According to the district court, when explaining the reasons for allowance of the '683 patent, the examiner stated that prior art MOH patents did not teach systems in which the local device initiates contact with a server to determine whether new content is available. Id. The district court explained that this “statement assists the Court in determining what a person of ordinary skill in the art would understand the claims to present” at the time of the invention described in the '374 patent. Id. The district court did not tie its construction of any of the terms in dispute to this statement or otherwise explain how the statement affected its constructions.

The district court construed “transmit” as “to initiate a contact with and send an electronic signal to another device.” Id. at *4. It construed the term “message playback device” as “a device configured to select and access from its storage device one or more stored messages and to play those messages through an output, and adapted to receive control signals after initiation of contact from another source.” Id. And it construed the term “operable to generate and transmit control signals” as “capable to initiate a contact with the message playback device, and generate and send control signals to it.” Id. at *4. The constructions effectively required any communication between the server and the message playback device to be initiated by the server, a construction favorable to AMTC.

After the district court rendered constructions unfavorable to Info–Hold in both cases, AMTC and Info–Hold filed a joint stipulation of noninfringement in favor of AMTC. The stipulation stated that the construction of each of the three terms in this case was dispositive on the issue of infringement for each claim having any of the terms, thereby establishing noninfringement for AMTC's Accused Devices. Likewise, the stipulation conceded that the district court's construction of “when a caller is placed on hold” established that AMTC's Accused Devices did not infringe each claim having this term. The parties further requested that the district court enter final judgment of noninfringement to allow Info–Hold to appeal the constructions. Based on the parties' stipulations and request, the district court entered final judgment of noninfringement in favor of AMTC.

Info–Hold appeals the district court's claim constructions rendered in this case, as well as the construction of the term “when a caller is placed on hold” from the Muzak case. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

Discussion

We review the district court's evaluation of the patent's intrinsic record during claim construction de novo. Teva Pharm. USA, Inc. v. Sandoz, Inc., ––– U.S. ––––, 135 S.Ct. 831, 841, ––– L.Ed.2d –––– (2015). Subsidiary factual determinations based on extrinsic evidence are reviewed for clear error. Id. The ultimate construction of the claim is a legal question and, therefore, is reviewed de novo. Id.

Claim terms are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed.Cir.2005) (en banc). Such a skilled artisan reads claim language in the context of the claims, the specification, and the prosecution history, using them to resolve any uncertainties. Though the claim term may appear plain on its face, we may depart from that plain meaning “1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of the claim term either in the specification or during prosecution.”Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed.Cir.2012) (citation omitted...