Case 2:12-mc-00244-JFC Document 691 Filed 10/09/13 Page 1 of 109
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF PENNSYLVANIA
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`IN RE: MAXIM INTEGRATED
`PRODUCTS, INC. MDL NO. 2354
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`This Document Relates to: All Actions
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`§
`§
`§ Master Docket
`§ Misc. No. 12-244
`§ MDL No. 2354
`§ CONTI, District Judge
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`SPECIAL MASTER’S REPORT AND RECOMMENDATION
`RE: CLAIM CONSTRUCTION
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`This claim construction Report and Recommendation analyzes the disputed claim
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`terms of United States Patent Nos. 5,805,702 (the “‘702 Patent”), 5,940,510 (the “‘510
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`Patent”), 5,949,880 (the “‘880 Patent”), 6,105,013 (the “‘013 Patent”), and 6,237,095 (the
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`“‘095 Patent”).1 Defendants collectively filed consolidated claim construction briefing
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`(Defendants are referred to as Opposing Parties and referenced herein as “OPs”). A
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`subset of OPs, Bank of the West, Comerica, Inc. and BMO Harris Bank National
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`Association, filed a separate claim construction brief as to the term “certificate” (the
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`subset is referred to as Joining Parties and referenced herein as “JPs”). Some claim
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`disputes are only relevant to Defendants Starbucks and Groupon (collectively referenced
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`herein as “S/G”), and the other OPs express no opinion regarding those terms. Citation
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`herein is made to the briefing in the action numbered 2:12-mc-00244: Maxim’s Opening
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`Brief (Dkt. 634), OPs’ Responsive Brief (Dkt. 642), Maxim’s Reply Brief (Dkt. 651),
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`JPs’ Responsive Brief (Dkt. 680), Maxim’s Supplemental Brief as to “certificate” (Dkt.
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`1 References to column and line numbers of the patents are made as ‘XXX Patent at col:line.
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`PNC-JP MORGAN EXHIBIT 1010
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`686) and Maxim’s Supplemental Brief as to “packet” (Dkt. 687). A claim construction
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`Oral Hearing was held on September 12, 2013.2 For the following reasons, the Special
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`Master recommends the constructions set forth below.
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`BACKGROUND
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`The five patents-in-suit have priority dates in 1995 and 1996. The patents arose
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`from the development by Dallas Semiconductor (the original assignee subsequently
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`acquired by Maxim) of a product called the “iButton.” The iButton was a small portable
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`fob type device. The iButton was a combination of hardware and firmware that allowed
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`merchants, banks and other service providers to provide in a secure encrypted manner a
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`mechanism for a user to perform a variety of secure transactions. One application of the
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`transactions allowed the iButton user to store and transfer data that included “digital
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`cash” so that goods and services could be purchased through the use of the iButton. The
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`technologies asserted by Maxim to infringe include smartphones and software “apps.”
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`The patents have various relationships. The ‘880 Patent is a divisional of the ‘510
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`Patent. The ‘702 Patent, ‘013 Patent and ‘095 Patent all date back to a common
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`provisional application filed September 29, 1995. The regular filing dates for each patent
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`(either directly or through a parent application) all date to January 31, 1996. The ‘702
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`Patent, ‘013 Patent and ‘095 Patent share a substantially similar specification. The ‘013
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`Patent and ‘095 Patent incorporate by reference the ‘510 Patent. The ‘510 Patent and
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`‘880 Patent incorporate by reference the ‘702 Patent.
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`LEGAL STANDARDS
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`Claim construction is a matter of law. Markman v. Westview Instruments, Inc., 52
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`F.3d 967, 979 (Fed. Cir. 1995). The purpose of claim construction is to resolve the
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`2 References to the Oral Hearing transcript are made as Tr. at xx.
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`meanings and technical scope of claim terms. U.S. Surgical Corp. v. Ethicon, Inc., 103
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`F.3d 1554, 1568 (Fed. Cir. 1997). When the parties dispute the scope of a claim term, “it
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`is the court’s duty to resolve it.” O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521
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`F.3d 1351, 1362 (Fed. Cir. 2008).
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`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the
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`invention to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp.,
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`415 F.3d 1303, 1312 (Fed. Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari Water
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`Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). The Court examines a
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`patent’s intrinsic evidence to define the patented invention’s scope. Id. at 1313-14; Bell
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`Atl. Network Servs., Inc. v. Covad Commc’ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir.
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`2001). Intrinsic evidence includes the claims, the rest of the specification, and the
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`prosecution history. Phillips, 415 F.3d at 1312-13; Bell Atl. Network Servs., 262 F.3d at
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`1267. The Court gives claim terms their ordinary and customary meaning as understood
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`by one of ordinary skill in the art at the time of the invention. Phillips, 415 F.3d at 1312-
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`13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003).
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`Claim language guides the Court’s construction of claim terms. Phillips, 415
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`F.3d at 1314. “[T]he context in which a term is used in the asserted claim can be highly
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`instructive.” Id. Other claims, asserted and unasserted, can provide additional instruction
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`because “terms are normally used consistently throughout the patent.” Id. Differences
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`among claims, such as additional limitations in dependent claims, can provide further
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`guidance. Id.
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`“[C]laims ‘must be read in view of the specification, of which they are a part.’”
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`Id. at 315 (quoting Markman, 52 F.3d at 979). “[T]he specification ‘is always highly
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`relevant to the claim construction analysis. Usually, it is dispositive; it is the single best
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`guide to the meaning of a disputed term.’” Id. (quoting Vitronics Corp. v. Conceptronic,
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`Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex. Inc. v. Ficosa N. Am. Corp., 299
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`F.3d 1313, 1325 (Fed. Cir. 2002). In the specification, a patentee may define his own
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`terms, give a claim term a different meaning that it would otherwise possess, or disclaim
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`or disavow some claim scope. Phillips, 415 F.3d at 1316. Although the Court generally
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`presumes terms possess their ordinary meaning, this presumption can be overcome by
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`statements of clear disclaimer. See SciMed Life Sys., Inc. v. Advanced Cardiovascular
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`Sys., Inc., 242 F.3d 1337, 1343-44 (Fed. Cir. 2001). This presumption does not arise
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`when the patentee acts as his own lexicographer. See Irdeto Access, Inc. v. EchoStar
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`Satellite Corp., 383 F.3d 1295, 1301 (Fed. Cir. 2004). “The person of ordinary skill in
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`the art is deemed to read the claim term not only in the context of the particular claim in
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`which the disputed term appears, but in the context of the entire patent, including the
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`specification.” Phillips, 415 F.3d at 1313. Although the claims themselves may provide
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`guidance as to the meaning of particular terms, those terms are part of “a fully integrated
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`written instrument.” Id. at 1315 (quoting Markman, 52 F.3d at 978). Thus, the Phillips
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`court emphasized the specification as being the primary basis for construing the claims.
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`Id. at 1314-17.
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`The specification may also resolve ambiguous claim terms “where the ordinary
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`and accustomed meaning of the words used in the claims lack sufficient clarity to permit
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`the scope of the claim to be ascertained from the words alone.” Teleflex, 299 F.3d at
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`1325. For example, “[a] claim interpretation that excludes a preferred embodiment from
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`the scope of the claim ‘is rarely, if ever, correct.’” Globetrotter Software, Inc. v. Elam
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`Computer Group Inc., 362 F.3d 1367, 1381 (Fed. Cir. 2004) (quoting Vitronics Corp., 90
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`F.3d at 1583). But, “[a]lthough the specification may aid the court in interpreting the
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`meaning of disputed language in the claims, particular embodiments and examples
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`appearing in the specification will not generally be read into the claims.” Constant v.
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`Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988); see also Phillips,
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`415 F.3d at 1323.
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`The prosecution history is another tool to supply the proper context for claim
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`construction because a patentee may define a term during prosecution of the patent.
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`Home Diagnostics Inc. v. LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in
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`the case of the specification, a patent applicant may define a term in prosecuting a
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`patent”). The well established doctrine of prosecution disclaimer “preclud[es] patentees
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`from recapturing through claim interpretation specific meanings disclaimed during
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`prosecution.” Omega Eng’g Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003).
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`“Indeed, by distinguishing the claimed invention over the prior art, an applicant is
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`indicating what the claims do not cover.” Spectrum Int’l v. Sterilite Corp., 164 F.3d
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`1372, 1378-79 (Fed. Cir. 1988) (quotation omitted). “As a basic principle of claim
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`interpretation, prosecution disclaimer promotes the public notice function of the intrinsic
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`evidence and protects the public’s reliance on definitive statements made during
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`prosecution.” Omega Eng’g, Inc., 334 F.3d at 1324. However, the prosecution history
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`must show that the patentee clearly and unambiguously disclaimed or disavowed the
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`proposed interpretation during prosecution to obtain claim allowance. Middleton Inc. v.
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`3M Co., 311 F.3d 1384, 1388 (Fed. Cir. 2002). Statements will constitute disclaimer of
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`scope only if they are “clear and unmistakable statements of disavowal.” See Cordis
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`Corp. v. Medtronic Ave, Inc., 339 F.3d 1352, 1358 (Fed. Cir. 2003). An “ambiguous
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`disavowal” will not suffice. Schindler Elevator Corp. v. Otis Elevator Co., 593 F.3d
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`1275, 1285 (Fed. Cir. 2010) (citation omitted). Because the file history “represents an
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`ongoing negotiation between the PTO and the applicant, rather than the final product of
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`that negotiation, it often lacks the clarity of the specification and thus is less useful in
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`claim construction proceedings.” Phillips, 415 F.3d at 1317. Nevertheless, the
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`prosecution history is intrinsic evidence that is relevant to the determination of how the
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`inventor understood the invention and whether the inventor limited the invention during
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`prosecution by narrowing the scope of the claims. Id.
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`The doctrine of claim differentiation provides that “different words or phrases
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`used in separate claims are presumed to indicate that the claims have different meaning
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`and scope.” Seachange Intl. Inc., v. C-COR, Inc., 413 F.3d 1361, 1368 (Fed. Cir. 2005)
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`(citing Karlin Tech. Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971-72 (Fed. Cir.
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`1999)). However, the doctrine “only creates a presumption that each claim in a patent
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`has a different scope; it is not a hard and fast rule of construction.” Id. at 1369 (quoting
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`Kraft Foods, Inc. v. Int’l Trading Co., 203 F.3d 1362, 1368 (Fed. Cir. 2000)). The
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`“claims cannot enlarge what is patented beyond what the inventor has described as the
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`invention.” Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir. 2009) (citations
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`omitted).
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`Phillips rejected any claim construction approach that sacrificed the intrinsic
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`record in favor of extrinsic evidence, such as dictionary definitions or expert testimony.
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`The en banc court condemned the suggestion made by Texas Digital Systems, Inc. v.
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`Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002) that a court should discern the ordinary
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`meaning of the claim terms (through dictionaries or otherwise) before resorting to the
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`specification for certain limited purposes. Phillips, 415 F.3d at 1319-24. Still, though
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`“less significant than the intrinsic record in determining the legally operative meaning of
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`claim language,” the Court may rely on extrinsic evidence to “shed useful light on the
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`relevant art.” Phillips, 415 F.3d at 1317 (quotation omitted). Technical dictionaries and
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`treatises may help the Court understand the underlying technology and the manner in
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`which one skilled in the art might use claim terms, but such sources may also provide
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`overly broad definitions or may not be indicative of how terms are used in the patent. Id.
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`at 1318. Similarly, expert testimony may aid the Court in determining the particular
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`meaning of a term in the pertinent field, but “conclusory, unsupported assertions by
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`experts as to the definition of a claim term are not useful.” Id. Generally, extrinsic
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`evidence is “less reliable than the patent and its prosecution history in determining how to
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`read claim terms.” Id.
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`Patent claims must particularly point out and distinctly claim the subject matter
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`regarded as the invention. 35 U.S.C. § 112, ¶ 2. Whether a claim meets this definiteness
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`requirement is a matter of law. Young v. Lumenis, Inc., 492 F.3d 1336, 1344 (Fed. Cir.
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`2007). A party challenging the definiteness of a claim must show it is invalid by clear
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`and convincing evidence. Id. at 1345.
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`“Only claims ‘not amenable to construction’ or ‘insolubly ambiguous’ are
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`indefinite.” Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1250 (Fed. Cir.
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`2008) (quoting Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir.
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`2005)). That is, the “standard [for finding indefiniteness] is met where an accused
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`infringer shows by clear and convincing evidence that a skilled artisan could not discern
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`the boundaries of the claim based on the claim language, the specification, and the
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`prosecution history, as well as her knowledge of the relevant art area.” Halliburton, 514
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`F.3d at 1249-50. The ultimate issue is whether someone working in the relevant
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`technical field could understand the bounds of a claim. Haemonetics Corp. v. Baxter
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`Healthcare Corp., 607 F.3d 776, 783 (Fed. Cir. 2010).
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`In determining whether that standard is met, i.e., whether the claims at
`issue are sufficiently precise to permit a potential competitor to determine
`whether or not he is infringing, we have not held that a claim is indefinite
`merely because it poses a difficult issue of claim construction. We engage
`in claim construction every day, and cases frequently present close
`questions of claim construction on which expert witnesses, trial courts,
`and even the judges of this court may disagree. Under a broad concept of
`indefiniteness, all but the clearest claim construction issues could be
`regarded as giving rise to invalidating indefiniteness in the claims at issue.
`But we have not adopted that approach to the law of indefiniteness. We
`have not insisted that claims be plain on their face in order to avoid
`condemnation for indefiniteness; rather, what we have asked is that the
`claims be amenable to construction, however difficult that task may be. If
`a claim is insolubly ambiguous, and no narrowing construction can
`properly be adopted, we have held the claim indefinite. If the meaning of
`the claim is discernible, even though the task may be formidable and the
`conclusion may be one over which reasonable persons will disagree, we
`have held the claim sufficiently clear to avoid invalidity on indefiniteness
`grounds. . . . By finding claims indefinite only if reasonable efforts at
`claim construction prove futile, we accord respect to the statutory
`presumption of patent validity . . . and we protect the inventive
`contribution of patentees, even when the drafting of their patents has been
`less than ideal.
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`Exxon Research & Eng’g Co. v. U.S., 265 F.3d 1371, 1375 (Fed. Cir. 2001) (citations and
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`internal quotation marks omitted).
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`DISPUTED CLAM TERMS
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`1(a). “first data” (‘510 Patent claim 1) [No. 12]3
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`Maxim
`plain meaning; if construction required; “a
`first/second data value”
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`“first data” and “second data” (‘095 Patent claim 1) [No. 12]
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`Maxim
`plain meaning; if construction required; “a
`first/second data value”
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`OPs
`“data that includes a value datum”
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`OPs
`“data that is used as money or its equivalent”
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`The dispute centers upon whether the claims are limited to money based
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`applications.
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`Maxim
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`Maxim asserts that the terms are used in the ‘095 Patent in the context of “a first
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`data object” and “a second data object.” Maxim asserts that this references the use in the
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`specifications of the term “data object” which means a data structure that can be used to
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`hold a value. Dkt. 634 at 42 (citing ‘095 Patent at 17:5-8, 3:60-64 (“[t]hese objects 42
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`include both data objects (encryption keys, transaction counts, money amounts, date/time
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`stamps, etc.”) and…”), 17:45-19:46, 8:9-12 (“locked money object containing a given
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`cash value”)). Maxim asserts that in context of the claims the objects are a specific value
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`associated with a secure transaction, such as an amount of money paid or a number of
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`credits that are being passed, stored or adjusted.
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`At the Oral Hearing, Maxim emphasized that the ‘095 Patent was a divisional
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`application from the ‘702 Patent. Maxim pointed out that that ‘702 Patent was subject to
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`a restriction between Invention I “drawn to a method for adding a monetary equivalent to
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`electronic equipment” and Invention II “drawn to a method for receiving and transmitting
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`3 Claim term numbers refer to the numbers in the Joint Disputed Claim Terms Chart. Dkt. 677-1.
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`encrypted data.” ‘702 File History JX-2 244MAX001382. 4 Maxim notes that the
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`applicants subsequently filed the ‘095 divisional patent and explicitly canceled all claims
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`but the Invention II claims. ‘095 File History JX-10 244MAX000300. Maxim notes
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`that the ‘095 Patent claim 1 merely recites “encrypted data” in the preamble and “first”
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`and “second” data object in the claims, in conformance with the Patent Office restriction.
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`Maxim asserts it is thus improper to limit the ‘095 Patent claims to the monetary
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`embodiments that the Patent Office stated were different inventions. Maxim also points
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`to the Abstract and Technical Field of the Invention of the ‘095 Patent as the Abstract
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`states that the encryption technique can be used “so that money and other valuable data
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`can be securely passed” and the Technical Field of the Invention states that the module
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`can “provide at least secure data transfers or to authorize monetary transactions.” ‘095
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`Patent at Abstract; 1:23-28. Further, Maxim notes that ‘095 Patent dependent claim 7
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`states that “said first data object includes a base monetary amount and wherein said
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`second data object includes a transaction monetary amount.” Maxim asserts that claim
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`differentiation thus supports Maxim’s construction.
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`Maxim asserts that “value datum” is not contained in the ‘095 or ‘510 Patent
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`claims or specifications. Maxim notes that “value datum” is contained in the ‘880 Patent
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`claim 1. Maxim asserts that OPs inclusion of “value datum” limits the object to units
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`having value that can be exchanged for goods or services. Maxim asserts that such a
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`construction excludes the “Software Authorization and Usage Metering” embodiment in
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`which the data object is not limited to money. Dkt. 634 at 43 (citing ‘095 Patent at
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`12:45-49).
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`4 The file history citations are made to the Joint Exhibits utilized by the parties and referenced as JX-
`## and filed at Dkt. 634.
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`OPs
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`OPs assert that the summary of invention of the ‘510 Patent limits the “present
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`invention … for communicating a cash equivalent electronically to and from a portable
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`module” and that the module can be “filled with electronic money.” ‘510 Patent at 1:59-
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`67. OPs assert that the only “data” that is stored in the portable module in claim 1 is
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`“first data,” and thus the first data most have units of value that can be exchanged like
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`cash equivalents. Dkt. 642 at 11. OPs assert that the specification states that a data
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`packet stored in the module have “value (monetary value)” (‘510 Patent at 7:21-27) and
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`the data packet “could be referred to as a first data” (‘510 Patent at 7:36-39, Figure 4
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`(encrypted data packet with “monetary value” is included in “data-one”)). OPs assert
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`these passages establish lexicography.
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`OPs also assert that all embodiments of the ‘510 Patent specification relate to
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`electronic money or credit. Dkt. 642 at 12 (citing Example A (train fare) ‘510 Patent at
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`7:14-8:29 and Example B (ATM withdrawal) ‘510 Patent at 8:31-9:16). OPs also assert
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`that in prosecution the applicants emphasized that issued claim 1 “allows a user to carry
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`the portable module and install digital money equivalents into the module.” ‘510 File
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`History, JX-4 244MAX1122-23.
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`OPs assert that the ‘095 Patent Technical Field of Invention states “the present
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`invention relates to…transferring money or its equivalent electronically.” ‘095 Patent
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`1:24-26. OPs contrast this with the ‘013 Patent Field of Invention which is not limited to
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`transferring money. OPs assert this intentional differentiation of the two applications
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`(which date to two different priority documents filed on the same date) indicates a
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`different scope of the patents. Dkt. 642 at 13, n. 11. OPs assert that the only item
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`transferred in ‘095 Patent claim 1 is the “certificate including…a second data object.”
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`Thus, OPs assert the second data object must be the money equivalent. OPs also assert
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`that the “first data object” is adjusted according to the second data object, indicating that
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`the first data object is also a money equivalent. Dkt. 642 at 13.
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`OPs assert that the claims require (1) “a first memory for storing a first data
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`object,” (2) “instructions” to “initiate generation of a certificate” including a “second data
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`object,” and (3) instructions “to adjust said first data object according to said second data
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`object.” OPs assert that only the money/value embodiments contain all three items. OPs
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`correlate the steps as (1) a money register (“first memory”) for storing a money balance
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`(“a first data object”), (2) generating a “certificate” include a payment or deposit amount
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`(“the second data object”) and (3) adjusting the money balance in view of the payment or
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`deposit. Dkt. 642 at 13-14 (providing extensive citations for each step).
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`As to the alternative embodiments cited by Maxim, OP asserts those are not
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`relevant as most of the embodiments do not include the three claimed steps – asserting
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`that embodiments II.A (secure email – no certificates), II.B (Digital Notary – no data
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`adjustment), II.J (subscription service – no certificates) and II.K (registry with key
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`security – no data adjustment) are thus not relevant to the claim at issue. Dkt. 642 at 14-
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`15, n. 15. As to embodiment II.G (software usage and metering), OPs assert that such an
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`embodiment relates to units of time which are money equivalents and stored in a “money
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`object” that is still exchangeable for services. Dkt. 642 at 14-15, n. 14 (citing ‘095 Patent
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`at 12:45-47).
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`Maxim Reply
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`Maxim asserts that the ‘095 Patent software usage embodiment is not limited to
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`money but relates to units of time rather than the actual dollar amount. Maxim also
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`cites to the Registry With Guaranteed Private Key Security example as stating that it is
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`not used for money or its equivalent:
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`The model described here is one in which the authority to perform
`financial transactions derives from the registry maintained by the Service
`Provider. It is therefore essential that this information be accurate and that
`the private key in the module 10 can be secure from all parties. Because
`each module 10 has its own unique RSA key set, there is not provision in
`this model for module 10 to represent money independently of the registry
`maintained by the Service Provider.
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`‘095 Patent at 16:1-10. Maxim also objects that OPs provide two different constructions
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`for “first data” in two closely related patents. Maxim cites caselaw indicating that such
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`different constructions should not be used absent compelling reasons. Dkt. 651 at 16.
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`Analysis
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`
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`With regard to the ‘095 Patent, the claims, the specification and the file history
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`each support Maxim’s construction. As a starting point, the claims of the ‘095 Patent
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`merely utilize the terminology “first data object” and “second data object.” It is only in a
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`dependent claim (claim 7) that the object is explicitly recited as a monetary amount.
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`Further, passages that OPs assert state “the Invention” is limited to monetary amounts
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`provide such language in a permissive manner, identifying other data in addition to
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`money. Thus, as noted above the Abstract states “money and other valuable data” and
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`the Field of Invention states “provide at least secure data transfers or to authorize
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`monetary transactions. ‘095 Patent at Abstract; 1:23-28. Further, in the specification
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`“objects” are used more generally. ‘095 Patent at 3:60-63. In addition, the “Software
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`
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`13
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`Page 13 of 109
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`Case 2:12-mc-00244-JFC Document 691 Filed 10/09/13 Page 14 of 109
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`Authorization and Usage Metering” embodiment provides disclosure for objects which
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`relate to software usage time, not limited to money. ‘095 Patent at 12:45-49. Finally, the
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`divisional file history of the ‘095 Patent and its parent ‘702 Patent provide clear guidance
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`that the claims of the ‘095 Patent are not limited to monetary equivalents. ‘702 File
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`History JX-2 244MAX001382; ‘095 File History JX-10 244MAX000300.
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`
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`As to the ‘510 Patent, the claim term at issue arises in the context of “memory for
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`storing a first data.” As with the ‘095 Patent, such language is more generalized than
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`asserted by OPs. OPs’ assertion that as a matter of lexicography the patentees have re-
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`defined “data” is not supported. A statement of lexicography must be clear. Intellicall,
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`Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992). Here OPs cite to a data
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`packet stored in the module having “value (monetary value)” (‘510 Patent at 7:21-27) and
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`the data packet “could be referred to as a first data” (‘510 Patent at 7:36-39). The
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`statement that the data packet “could be” referred to as first data does not rise to the level
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`of a clear statement of lexicography redefining “data.” OPs also assert that all of the
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`disclosed embodiments are limited to monetary value and thus “data” must be limited to
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`monetary value. However, even if only a single embodiment exists the preferred
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`embodiment is not inherently required to be read into the claims. See Arlington
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`Industries, Inc. v. Bridgeport Fittings, Inc., 632 F.3d 1246, 1254 (Fed. Cir. 2011) (“Even
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`where a patent describes only a single embodiment, claims will not be read restrictively
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`unless the patentee has demonstrated a clear intention to limit the claim scope using
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`words or expressions of manifest exclusion or restriction.”) (internal citations omitted).
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`Further, the ‘510 Patent incorporates by reference the ‘702 Patent. The ‘702 Patent
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`includes a number of embodiments that involve transactions that are not limited to
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`
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`14
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`Page 14 of 109
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`Case 2:12-mc-00244-JFC Document 691 Filed 10/09/13 Page 15 of 109
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`monetary exchanges. For example secure email (‘702 Patent at 4:45-6:23), digital notary
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`service (‘702 Patent at 6:25-7:50), Software Authorization and Usage Metering (‘702
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`Patent at 12:30-13:5) and the Registry With Guaranteed Private Key Security (‘702
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`Patent at 14:63-16:19) which discloses at 16:8-17 the concept of providing authority to
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`perform financial transactions but the module itself does not “represent money
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`independently of the registry maintained by the service provider.” Thus, even OPs ’
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`single embodiment argument is contradicted by the specification. Finally OPs provide a
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`file history argument. As to the File History statement, the Amendment cited as a whole
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`does not limit the portable module as asserted by OPs. Note the Amendment starts be
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`stating that the claim “claims a system for communicating data securely.” Then a long
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`recitation of the claim elements is provided also without any description of money. ‘510
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`File History JX-4 244MAX001122. Only then does the Amendment state that the system
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`“allows a user” to use digital money. ‘Id. at 244MAX001122. When distinguishing the
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`prior art the Amendment focuses on specific claim elements, again with no reference to
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`money. Id. at 244MAX001123. The Amendment conclusion again focuses on merely
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`communicating data securely with no money reference: “the present invention is an
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`improvement over other systems
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`for communicating data securely.”
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`Id. at
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`244MAX001123. When viewed in context of the entire Amendment, the one statement
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`pulled out by OPs does not appear to be a disclaimer of the broader claim scope of the
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`terms themselves and the broader statements provided elsewhere in the Amendment.
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`Rather, the statement merely points to a usage that is allowed by the listed claimed
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`structure and the Amendment focuses on those claim structures without limiting the claim
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`to a monetary usage.
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`
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`15
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`Page 15 of 109
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`Case 2:12-mc-00244-JFC Document 691 Filed 10/09/13 Page 16 of 109
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`
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`First data and second data as used in the ‘095 Patent claim 1 and first data as used
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`in the ‘510 Patent claim 1 are not limited to money, monetary units or their equivalents.
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`
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`It is recommended that “first data” and “second data” have their plain
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`meaning, no construction required.
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`
`
`1(b). “units of exchange” and “value datum” (‘880 Patent claim 1) [No. 34]
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`Maxim
`plain meaning; if construction required; “units
`of exchange”: not a limitation; “value datum”:
`“data representing a value for a data object.”
`
`
`OPs
`“units having value that can be exchanged as
`payment for goods and services”
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`Maxim
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`Maxim asserts that the plain meaning of “value datum” is value of data and that
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`this conforms to the claim language which merely describes passing such data between
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`various modules. Dkt. 634 at 51. Maxim asserts that OPs’ construction renders a
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`construction that “value datum” must constitute legal tender itself, rather than a simple
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`variable representing an amount of the same. Maxim asserts that OPs’ construction
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`conflicts with the specification embodiments and Maxim states that value is “a
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`representation of some unit of exchange – not a unit of exchange itself.” Dkt. 634 at 51.
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`Maxim points to ‘880 Patent at 10:23-25: “may be used to represent money or some other
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`form of credit.”
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`Maxim also asserts that the ‘880 Patent embodiment describes that when a money
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`register is loaded, “a register within the secure module may be decremented by the same
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`amount.” ‘880 Patent at 8:65-9:2. Maxim asserts that the use of “may be” indicates that
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`the register may be changed by a value that is not the “same amount” and thus indicates
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`
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`16
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`Page 16 of 109
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`Case 2:12-mc-00244-JFC Document 691 Filed 10/09/13 Page 17 of 109
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`that value datum is simply “data representing a value for a data object,” not legal tender.
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`Dkt. 634 at 52.
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`
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`Maxim asserts the same arguments are relevant to “units of exchange” and in
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`addition the term is not a limitation as it is only found in the preamble and preambles are
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`assumed not to be