Transcenic, Inc. v. Google Inc.

7 F. Supp. 3d 405, 2013 WL 5230641, 2013 U.S. Dist. LEXIS 132564
CourtDistrict Court, D. Delaware
DecidedSeptember 17, 2013
DocketC.A. No. 11-582-LPS
StatusPublished

This text of 7 F. Supp. 3d 405 (Transcenic, Inc. v. Google Inc.) is published on Counsel Stack Legal Research, covering District Court, D. Delaware primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Transcenic, Inc. v. Google Inc., 7 F. Supp. 3d 405, 2013 WL 5230641, 2013 U.S. Dist. LEXIS 132564 (D. Del. 2013).

Opinion

MEMORANDUM OPINION

STARK, U.S. District Judge:

Presently before the Court is the issue of claim construction of various disputed terms of U.S. Pat. No. RE 42,289 (“the '289 patent”). The '289 patent is a reissue of U.S. Patent No. 7,050,102.

I. BACKGROUND

Plaintiff Transeenic, Inc. (“Plaintiff’) filed this patent infringement action against Defendants Google Inc., Microsoft Corp., AOL Inc., and MapQuest, Inc. (collectively, “Defendants”) on July 1, 2011, alleging infringement of the '289 patent. (D.I. 1, 16) The '289 patent is entitled “Spatial Referenced Photographic System With Navigation Arrangement” and relates to a system for capturing image data along with positional information, processing the image data, linking it to the positional information, and displaying the image data together with interactive controls that allow a user to navigate through the image data.

The parties completed their claim construction briefing on October 5, 2012. (D.I. 200, 203, 238, 242) In addition to the briefs, the parties submitted technology tutorials (D.I. 199, 202) and expert reports (D.I. 204, 240). The Court held a Mark-man hearing on November 19, 2012. (D.I. 311) (hereinafter “Tr.”).

II. LEGAL STANDARDS

“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.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.Cir.2005) (internal quotation marks omitted). Construing the claims -of a patent presents a question of law. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-78 (Fed.Cir.1995), aff'd, 517 U.S. 370, 388-90, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). “[T]here'is ho magic formula or catechism for conducting claim construction.” Phillips, 415 F.3d at 1324. Instead, the court is free to attach the appropriate weight to appropriate sources “in light of the statutes and policies that inform patent law.” Id.

“[T]he words of a claim are generally given their ordinary and customary meaning ... [which 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, i.e., as of the effective filing date of the patent, application.” Id. at 1312-13 (internal citations and quotation marks omitted). “[T]he ordinary meaning of a claim term is its meaning to the ordinary artisan after reading the entire patent.” Id. at 1321 (internal quotation marks omitted). The patent specification “is always highly relevant to the claim construction analysis. Usually, it is dis-positive; it is the single best guide to the meaning of a disputed term.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996).

While “the claims themselves provide substantial guidance as to the meaning of particular claim terms,” the context of the surrounding words of the claim also must be considered. Phillips, 415 F.3d at 1314. Furthermore, “[o]ther claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment ... [because claim terms are normally used consistently throughout the patent....” Id. (internal citation omitted).

[410]*410It is likewise true that “[djiffer-ences among claims can also be a useful guide.... For example, the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.” Id. at 1314-15 (internal citation omitted). This “presumption is especially strong when the limitation in dispute is the only meaningful difference between an independent and dependent claim, and one party is urging that the limitation in the dependent claim should be read into the independent claim.” SunRace Roots Enter. Co., Ltd. v. SRAM Corp., 336 F.3d 1298, 1303 (Fed.Cir.2003).

It is also possible that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316. It bears emphasis that “[e]ven when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed.Cir.2004) (internal quotation marks omitted), aff'd, 481 F.3d 1371 (Fed.Cir.2007).

In addition to the specification, a court “should also consider the patent’s prosecution history, if it is in evidence.” Markman, 52 F.3d at 980. The prosecution history, which is “intrinsic evidence,” “consists of the complete record of the proceedings before the PTO [Patent and Trademark Office] and includes the prior art cited during the examination of the patent.” Phillips, 415 F.3d at 1317. “[T]he prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be.” Id.

A court also may rely on “extrinsic evidence,” which “consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.” Markman, 52 F.3d at 980. For instance, technical dictionaries can assist the court in determining the meaning of a term to those of skill in the relevant art because such dictionaries “endeavor to collect the accepted meanings of terms used in various fields of science and technology.” Phillips, 415 F.3d at 1318. In addition, expert testimony can be useful “to ensure that the court’s understanding of the technical aspects of the patent is consistent with that of a person of ordinary skill in the art, or to establish that a particular term in the patent or the prior art has a particular meaning in the pertinent field.” Id. Nonetheless, courts must not lose sight of the fact that “expert reports and testimony [are] generated at the time of and for the purpose of litigation and thus can suffer from bias that is not present in intrinsic evidence.” Id. Overall, while extrinsic evidence “may be useful” to the court, it is “less reliable” than intrinsic evidence, and its consideration “is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence.” Id. at 1318-19.

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Bluebook (online)
7 F. Supp. 3d 405, 2013 WL 5230641, 2013 U.S. Dist. LEXIS 132564, Counsel Stack Legal Research, https://law.counselstack.com/opinion/transcenic-inc-v-google-inc-ded-2013.