Sightsound.Com Inc. v. N2K, Inc.
| Decision Date | 08 February 2002 |
| Docket Number | No. Civ.A.98-CV-118.,Civ.A.98-CV-118. |
| Citation | 185 F.Supp.2d 445 |
| Parties | SIGHTSOUND.COM INCORPORATED, a Pennsylvania Corporation, Plaintiff, v. N2K, INC., a Delaware corporation, CDNOW, Inc., a Pennsylvania Corporation, and CDNOW Online, Inc., a Pennsylvania Corporation, Defendants. |
| Court | U.S. District Court — Western District of Pennsylvania |
Richard F. Rinaldo, Hugh E. McGough, Meyer, Unkovic & Scott, Pittsburgh, PA, John Flock, Kenyon & Kenyon, New York City, William K. Wells, Benjamin Hershkowitz, Gary S. Morris, Kenyon & Kenyon, Washington, DC, for Plaintiff.
Eric Kraeutler, Paul J. Greco, Catherine E. Gillespie, R. Tyler Goodwyn, Morgan, Lewis & Bockius, Philadelphia, PA, Edward C. Flynn, Pittsburgh, PA, Michael Barclay, Irwin R. Gross, Monica Mucchetti, Alice Garber, Wilson, Sonsini, Goodrich & Rosati, Palo Alto, CA, Edward C. Flynn, Pittsburgh, PA, for Defendants.
A Report and Recommendation has been filed in this matter addressed to the construction of claim language in the patents-in-suit. A Markman hearing was held in which a single evidentiary ruling remains to be made. Hence, this order.
Plaintiff sought to introduce at the hearing as Plaintiff's Exhibit J what it termed "counter-designations" from the deposition testimony of the inventor, Arthur Hair (Docket # 93 at 118). The portions of the transcript were offered in response to an argument made by defendants that the inventor, at the time of the patent application, had no knowledge of packet-switch networks such as the Internet (Id.).
Defendants objected, noting that they had introduced portions of the Hair Deposition for the purpose of construing the term "electronic sales," but that they had not introduced deposition excerpts for any other purpose (Id., at 119; Defendants' Exhibit 12). Indeed, the designations offered by defendants are limited to the "electronic sales" issue, and Plaintiff's Exhibit J is not properly a cross-designation thereto.
Nonetheless, plaintiff's proposed deposition designations are extrinsic evidence which is responsive to arguments made by defendants. They are, in that respect, relevant to the inquiry before the court. In light of the fact that the undersigned sits in an advisory position, and that the record should tend more towards over-inclusiveness than not, the exhibit will be admitted. The undersigned notes, however, that Plaintiff's Exhibit J was not relied upon in reaching the recommendation regarding claim construction.
IT IS HEREBY ORDERED that defendants' objection to the admission of Plaintiff's Exhibit J is OVERRULED, and that exhibit is ADMITTED into evidence.
It is respectfully recommended that the claims in suit be interpreted as set forth in more detail in the following report.
This is a patent infringement action filed by the holder of three patents which, as described by plaintiff, "are directed to commercially-acceptable systems and methods for selling music and video in digital form over telecommunications lines." (Docket # 69 at 1). Plaintiff, Sightsound.com, Inc. ("Sightsound") accuses defendants N2K, Inc. ("N2K"), CDnow, Inc., and CDnow Online, Inc. (collectively referred to as "CDnow" or "defendants") of infringing multiple claims of U.S.Patent Nos. 5,191,573 ("the '573 Patent"), 5,675,734 ("the '734 Patent"), and 5,966,440 ("the '440 Patent") through the practice of downloading digital music over the internet.1
In view of the numerous claims which have allegedly been infringed, the court encouraged the parties to narrow issues by agreeing, where possible, to interpretations of various claims in the patents. After the parties engaged in this process, however, many disputes remained concerning claim interpretation2. Hence, the court scheduled a Markman hearing, and the parties filed claim construction briefs (Docket # s 65, 69 and 75), a joint compilation of exhibits (Docket # s 70-72), and expert reports and declarations filed independently (Docket # s). A hearing was held before the undersigned on April 18, 19, 20 and May 16, 2001, at which expert testimony, demonstrative evidence, exhibits and argument were offered by the parties (Docket # s 93-96). The undersigned has considered all of the briefs, exhibits, testimony and argument submitted. The following conclusions of law are recommended.
Construction of patent claims is a matter exclusively within the province of the court, and is a determination made as a matter of law. Markman v. Westview Instruments, Inc., 517 U.S. 370, 372, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996); Interactive Gift Express, Inc. v. Compuserve, Inc., 231 F.3d 859, 865 (Fed.Cir.2000); Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.Cir.1995). In making this determination, "the viewing glass through which the claims are construed is that of a person skilled in the art." Interactive Gift, 231 F.3d at 866.
Intrinsic evidence is the most important source of information in construing the language used in a patent. Vitronics Corporation v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996). "Intrinsic" evidence consists of the claim language, the specification and the prosecution history. Id.; Markman, 52 F.3d at 979. Interactive Gift, 231 F.3d at 865.
The purpose of a patent is to secure to the patentee "all to which he is entitled" while "appris[ing] the public of what is still open to them." Markman, 517 U.S. at 373, 116 S.Ct. 1384. In construing the scope and meaning of a claim, terms used in the claim are to be given their ordinary meaning to one skilled in the art unless it appears from the patent and file history that the terms were used differently by the inventor. Id.; Intellicall, supra; Phillips Electronics v. Universal Electronics, Inc., 930 F.Supp. 986, 997 (D.Del.1996). Thus, the court must first look to the language of the patent claim. "If the claim language is clear on its face, then [the court's] consideration of the rest of the intrinsic evidence is restricted to determining if a deviation from the clear language of the claim is specified." Interactive Gift, 231 F.3d at 865. A patentee, after all, may "choose to be his own lexicographer and use terms in a manner other than their ordinary meaning." Vitronics, 90 F.3d at 1582.
The court may also find that a deviation from the plain meaning of the terms used in a patent claim is warranted because the patentee, in amending a claim before the PTO or in arguing to distinguish a reference to prior art, has relinquished part of what would normally be included within a claim's plain meaning. Interactive Gift, 231 F.3d at 865, quoting Elkay Manufacturing Co. v. Ebco Manufacturing Co., 192 F.3d 973, 976 (Fed.Cir. 1999). Hence, "[i]f a patentee takes a position before the PTO, such that a `competitor would reasonably believe that the applicant had surrendered the relevant subject matter,' the patentee may be barred from asserting an inconsistent position on claim construction." Katz v. AT & T Corp., 63 F.Supp.2d 583, 591 (E.D.Pa. 1999). This does not mean, however, that every amendment, or every attempt by an applicant during the application process to distinguish prior art, automatically results in a corresponding limitation during claim construction. "Unless altering claim language to escape an examiner rejection, a patent applicant only limits claims during prosecution by clearly disavowing claim coverage." York Products, Inc. v. Central Tractor Farm & Family Center, 99 F.3d 1568, 1575 (Fed.Cir.1996).
Further, although the specification may be "the single best guide to the meaning of a disputed term." Vitronics, 90 F.3d at 1582, the court must be careful to use the specification to ascertain the meaning of disputed claim term, and not merely to impose a limit on a claim term. Interactive Gift, 231 F.3d at 865-66; citing Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed.Cir.1998) ().
Id., 90 F.3d at 1583. In cases where the scope of the invention is described unambiguously by the intrinsic evidence, it is improper to consider extrinsic evidence. Id. The public is entitled to rely upon the "public record" of the invention, i.e., the claims, the specification and the file history. Id., citing Markman, 52 F.3d at 978-79. "Allowing the public record to be altered or changed by extrinsic evidence introduced at trial, such as expert testimony, would make this right meaningless." Vitronics, 90 F.3d at 1583. This same limitation applies whether it is the alleged infringer or the patentee who seeks to alter the scope of the claims. Id.
"Only if there were still some genuine ambiguity in the claims, after review of all available intrinsic evidence, should the trial court have resorted to extrinsic evidence, such as expert testimony...." Vitronics, 90 F.3d at 1584. Further, even if expert testimony is accepted and properly considered, it should be afforded no weight if it is inconsistent with the specification and file history. Id. Likewise, the inventor's subjective intent,...
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