Spendingmoney LLC v. Am. Express Co.
| Decision Date | 18 July 2011 |
| Docket Number | No. 3:08cv1376 (SRU),3:08cv1376 (SRU) |
| Court | U.S. District Court — District of Connecticut |
| Parties | SPENDINGMONEY LLC, Plaintiff, v. AMERICAN EXPRESS CO., ET AL., Defendants. |
SpendingMoney LLC ("SpendingMoney") is the assignee of U.S. Patent No. 5,864,830 (the "'830 Patent"), Data Proceeding Method of Configuring and Monitoring the Satellite Spending Card Linked to A Host Card. On September 10, 2007, SpendingMoney filed this patent infringement suit against American Express Co. ("American Express") and Visa USA Inc. ("Visa"). Following the submission of initial and responsive claim construction memoranda by all parties, I held a full-day Markman1 hearing at which the parties were given the opportunity to submit intrinsic and extrinsic evidence in support of their proffered claim constructions. Additionally, I received supplemental briefs from all parties concerning the construction of two means-plus-function claims at issue. After due consideration of all submissions, I now render this Claim Construction Ruling.
The '830 Patent was filed on February 13, 1997 as Application No. 08/799,953 and issued on January 26, 1999 to David Armetta and David Tempest. The invention sought to provide a solution to a problem: how a credit card holder can provide another person with a secondary card that (1) is on the same account, (2) has a limited spending capacity, and (3) hasthe advantages of a credit card rather than the problems and disadvantages of a debit card or stored value card. (See '830 Patent col. 1, 11. 17-67; col. 2, 11. 1-67.)
The '830 patent issued with ten claims. SpendingMoney is asserting infringement of Claims 1, 3, 6, 8 and 10 against American Express and Claims 1, 3, 6 and 10 against Visa. Each of the claim terms identified by the parties as requiring construction appears in Claim 1. Claim 1 reads:
('830 Patent col. 6, 11. 58-67, col. 7, 11. 1-31 (emphasis added).)
"It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude." Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004). Courts construe claims "to resolve disputes about claim terms and to assign a fixed, unambiguous, legally operative meaning to the claim," so that a patentee's right to exclude is clearly defined. Liquid Dynamics Corp. v. Vaughan Co., 355 F.3d 1361, 1367 (Fed. Cir. 2004). Intrinsic evidence is "the most significant source of the legally operative meaning of disputed claim language." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996); see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). Intrinsic evidence includes the patent itself, the claims, the specification, and the prosecution history if it is in evidence. Vitronics, 90 F.3d at 1582.
In considering intrinsic evidence, the court proceeds in the following order. First, the court must consider the words of the claims themselves to define the scope of the patented invention. Bell Commc'ns Research, Inc. v. Vitalink Commc'ns Corp., 55 F.3d 615, 619-20 (Fed. Cir. 1995). Second, the court must review the specification, which contains a written description of the invention that must be clear and complete to enable one of ordinary skill in the art to make and use the invention. Markman, 52 F.3d at 979. The specification is "always highly relevant to the claim construction analysis" and is "the single best guide to the meaning of a disputed term." Vitronics, 90 F.3d at 1582. The Federal Circuit has cautioned, however, that because the claims define the invention, limitations from the specification should not be read into those claims. Rather, a claim should be read in light of the specification. Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186-87 (Fed. Cir. 1998).
Third, the court looks to the patent's prosecution history, if in evidence, which is a matter of public record. Id. at 1186. The prosecution history consists of the complete record of the proceedings before the Patent and Trademark Office, including the prior art cited during the patent examination and the applicant's acquiescence with regard to the prior art, which indicates what the claims do not cover. Phillips, 415 F.3d at 1317; Liquid Dynamics Corp., 355 F.3d at 1367-68.
Courts properly may turn to and rely "on extrinsic evidence to construe a claim . . . only when the claim language remains genuinely ambiguous after consideration of the intrinsic evidence." Interactive Gift Exp., Inc. v. Compuserve, Inc., 256 F.3d 1323, 1332 (Fed. Cir. 2001) (quotations and citations omitted). Extrinsic evidence "consists of all evidence external to the patent and prosecution history," such as dictionaries, learned treatises, and expert testimony. Phillips, 415 F.3d at 1317-18. The Phillips Court cautioned that "undue reliance on extrinsic evidence poses the risk that it will be used to change the meaning of the claims in derogation of the [public record of intrinsic evidence], thereby undermining the public notice function of patents." Id. at 1318-19 (quotations and citations omitted).
In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent and claim construction involves little more than the application of the widely accepted meaning of commonly understood words. Id. at 1314.
The parties do not dispute these general tenets of claim construction. Rather, their disagreement arises from the application of these principles to the claim terms at issue in this case.
The claim construction arguments concern four terms, all of which are found in Claim 1 of the '830 Patent: (1) "satellite spending card" or "satellite card"; (2) "available balance of the host credit card"; (3) "means for storing on the satellite card the satellite account number"; and (4) "means on the card for displaying at least a portion of the configuration data sufficient to identify the satellite cardholder." (Am. Joint Claim Const. Stmt., doc. # 94, hereinafter "JCC Stmt.") At the Markman hearing on September 9, 2009, I ruled on the construction of the first and second terms. (See Transcript of Sept. 9, 2009, doc. # 101, hereinafter "Tr.")
The parties have agreed that the terms "data processing device" and "linking, in the data processing device, the satellite account record to the host account record" do not need construction and can be accorded their plain meaning. The parties have agreed on a construction of the term "host cardholder determined spending capacity" as "the maximum amount that can be spent using the satellite card, as fixed by the host cardholder." I adopt that construction.
Because the terms "means for storing on the satellite card the satellite account number" and "means on the card for displaying at least a portion of the configuration data sufficient to identify the satellite cardholder" utilize means-plus-function language, I must construe those terms in accordance with 35 U.S.C. § 112, ¶ 6. Likewise, "satellite spending card" or "satellite card" do not appear to have an ordinary meaning to those skilled in the art. I do not address the claim construction arguments for "satellite spending card" or "satellite card" in detail because I ruled on that term from the bench at oral argument. (Tr. 55.) As I indicated at the Markman hearing, I find that no claim construction is necessary for "available balance of the host credit card." (Tr. 58-59.)
The parties agreed that "satellite spending card" and "satellite card" should be construed identically. I construed these terms at the Markman hearing. The claim term satellite spending card or satellite card is...
To continue reading
Request your trial