Case 6:12-cv-00093-LED Document 72 Filed 07/24/13 Page 1 of 8 PageID #: 647
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`UNILOC USA, INC., ET AL.,
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`Plaintiff,
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`v.
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`INMAGINE CORPORATION, LLC, ET
`AL.,
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` Defendants.
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`§
`§
`§
`CASE NO. 6:12-CV-93-LED
`§
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`§
`§ JURY TRIAL DEMANDED
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`§
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`MEMORANDUM OPINION AND ORDER
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`This Opinion construes U.S. Patent No. 7,099,849 (the “‘849 Patent”).
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`BACKGROUND
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`Plaintiffs Uniloc USA, Inc. and Uniloc Luxembourg S.A. (collectively “Uniloc”) allege
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`infringement of the ‘849 Patent by Defendants Inmagine Corporation LLC, 123RF LTD.,
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`Revostock, Inc., V.R. Media Resources, Inc., DepositPhotos Inc., and Dreamstime.com, LLC
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`(collectively, “Defendants”). The Parties requested that the Court hold a mini-Markman hearing
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`to resolve two case-dispositive sub-element phrases appearing in the only independent asserted
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`claim.1 The Court held the mini-Markman hearing on April 16, 2013.
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`The ‘849 Patent is directed toward an integrated rights management and licensing system
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`for storing, researching, buying, and selling intellectual property rights. ‘849 Patent, Abstract.
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`Claim 7, the only independent claim asserted, recites:
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`1 Uniloc sued Defendants for infringement of the ‘849 Patent in four different cases (6:12-cv-93, 6:12-cv-94, 6:12-
`cv-423, and 6:12-cv-424). Plaintiffs Uniloc and Defendants Inmagine Corporation LLC, 123RF LTD., Revostock,
`Inc., and V.R. Media Resources, Inc. filed an Agreed Motion requesting leave to set a mini-Markman hearing.
`6:12-cv-93, Dkt. No. 38. Defendant Dreamstime.com, LLC originally opposed the motion, but later filed a Notice
`of Joinder in the Proposal for the mini-Markman hearing. 6:12-cv-424, Dkt. No. 26. Defendant DepositPhotos
`filed an opposition stating that it did not believe that a Mini-Markman proceeding would be helpful. 6:12-cv-423,
`Dkt. No. 19. The Court granted the Motion to set a mini-Markman hearing (in the 6:12-cv-93 and 6:12-cv-94
`cases). 6:12-cv-93, Dkt. No. 40 Subsequently, the Court consolidated all four cases for pretrial purposes only.
`6:12-cv93, Dkt. No. 44.
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`1
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`Patent Owner Ex. 2002 Page 1
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`Case 6:12-cv-00093-LED Document 72 Filed 07/24/13 Page 2 of 8 PageID #: 648
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`A system for managing intellectual property rights, comprising:
`a first module configured to receive over a network information related to intellectual
`property available for at least a first property from a first intellectual property rights
`licensor and for at least a second property from a second intellectual property
`owner;
`a repository coupled to the first module, wherein the repository is configured to store
`the information related to the intellectual rights for the first property and the second
`property; and
`a second module configured to:
`visually present to a first potential licensee a first license form including license
`terms defined by the first intellectual property rights licensor;
`receive data entered into the first license form by the first potential licensee, the data
`including a request to license a first right;
`determine if the first right is available, and if the first right is available, to submit the
`first license request, including at least a portion of the received data, for approval;
`transmit a first license approval to the first potential licensee;
`visually present to a second potential licensee a second license form including
`license terms defined by the second intellectual property rights licensor;
`receive data entered into the second license form by the second potential licensee, the
`data including a request to license a second right;
`determine if the second right is available and if the second right is available, to
`submit the second license request, including at least a portion of the received data,
`for approval;
`transmit a second license approval to the second potential licensee.
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`Id. at 30:43–31:12 (emphasis added to highlight phrases in dispute).
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`APPLICABLE LAW
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`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention
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`to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303,
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`1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys.,
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`Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). In claim construction, courts examine the patent’s
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`intrinsic evidence to define the patented invention’s scope. See id.; C.R. Bard, Inc. v. U.S.
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`Surgical Corp., 388 F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad
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`Commc’ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). This intrinsic evidence includes
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`the claims themselves, the specification, and the prosecution history. See Phillips, 415 F.3d at
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`1314; C.R. Bard, Inc., 388 F.3d at 861. Courts give claim terms their ordinary and accustomed
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`2
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`meaning as understood by one of ordinary skill in the art at the time of the invention in the
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`context of the entire patent. Phillips, 415 F.3d at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n,
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`342 F.3d 1361, 1368 (Fed. Cir. 2003).
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`The claims themselves provide substantial guidance in determining the meaning of
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`particular claim terms. Phillips, 415 F.3d at 1314. First, a term’s context in the asserted claim
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`can be very instructive. Id. Other asserted or unasserted claims can also aid in determining the
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`claim’s meaning because claim terms are typically used consistently throughout the patent. Id.
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`Differences among the claim terms can also assist in understanding a term’s meaning. Id. For
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`example, when a dependent claim adds a limitation to an independent claim, it is presumed that
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`the independent claim does not include the limitation. Id. at 1314–15.
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`“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id.
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`(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)).
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`“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is
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`dispositive; it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics
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`Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am.
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`Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). This is true because a patentee may define his own
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`terms, give a claim term a different meaning than the term would otherwise possess, or disclaim
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`or disavow the claim scope. Phillips, 415 F.3d at 1316. In these situations, the inventor’s
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`lexicography governs. Id. Also, the specification may resolve ambiguous claim terms “where the
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`ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to
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`permit the scope of the claim to be ascertained from the words alone.” Teleflex, Inc., 299 F.3d at
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`1325. But, “‘[a]lthough the specification may aid the court in interpreting the meaning of
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`disputed claim language, particular embodiments and examples appearing in the specification
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`3
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`will not generally be read into the claims.’” Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d
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`1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560,
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`1571 (Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323. The prosecution history is another
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`tool to supply the proper context for claim construction because a patent applicant may also
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`define a term in prosecuting the patent. Home Diagnostics, Inc., v. Lifescan, Inc., 381 F.3d 1352,
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`1356 (Fed. Cir. 2004) (“As in the case of the specification, a patent applicant may define a term
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`in prosecuting a patent.”).
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`Although extrinsic evidence can be useful, it is “‘less significant than the intrinsic record
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`in determining the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317
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`(quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a court
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`understand the underlying technology and the manner in which one skilled in the art might use
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`claim terms, but technical dictionaries and treatises may provide definitions that are too broad or
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`may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert
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`testimony may aid a court in understanding the underlying technology and determining the
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`particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
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`assertions as to a term’s definition is entirely unhelpful to a court. Id. Generally, extrinsic
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`evidence is “less reliable than the patent and its prosecution history in determining how to read
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`claim terms.” Id.
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`ANALYSIS
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`“visually present to a [first/second] potential licensee a [first/second] license form including
`license terms defined by the [first/second] intellectual property rights licensor”
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`Plaintiff proposes “provide a [first/second] license form for display to a [first/second]
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`potential licensee, which [first/second] license form includes license terms selected by the
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`[first/second] intellectual property licensor.” Defendants propose “display to a [first/second]
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`4
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`potential licensee a license form, created by the [first/second] intellectual property licensor, that
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`includes both license terms and data entry fields.” The Parties’ disputes center around three
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`component terms: “visually present,” “defined,” and “license form.”
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`The disputes regarding “visually present” and “defined” were resolved by agreement at
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`the hearing. Plaintiff originally argued that “visually present” should be construed as “provide
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`. . . for display,” while Defendants argued that it should simply be construed as “display.” At the
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`hearing, however, the Parties agreed that this component term should remain unconstrued. Dkt.
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`No. 62, Mini-Markman Hearing Tr., at 30:21–31:19.2 As to “defined,” Plaintiff had proposed
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`“selected,” while Defendants argued for “created.” The Parties then agreed at the hearing that the
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`term “defined” was preferable. Id. at 13:10–15.3
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`As to the third dispute, “license form,” Plaintiff argues that the claim language provides
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`for a license form “including license terms” and that no additional construction is necessary.
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`Defendants, however, argue for a construction that requires “data entry fields” in addition to
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`license terms. Plaintiff contends that it would be impermissible to add a “data entry fields”
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`limitation because the term does not appear anywhere in the specification. Dkt. No. 49, at 11.
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`Defendants contend that the claim language specifies that the module must receive data entered
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`into the license form, thus the form necessarily includes data entry fields. Dkt. No. 50, at 15–16.
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`While it is apparent in the claim language that data must be entered into the form in some
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`fashion—for example, the second module is configured to “receive data entered into the
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`. . . license form”—the claim does not mention any manner for entering data into the form. ‘849
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`2 “Mr. Tower: Your Honor, Uniloc will agree with ‘visually present,’ keeping that term. . . . Mr. Gasparo: Yeah,
`‘visually present,’ plain and ordinary meaning, and not ‘provide for display,’ yes. The Court: Is that agreeable to
`plaintiff? Mr. Tower: Uniloc is agreeable, yes, Your Honor.” Dkt. No. 62.
`3 “The Court: So you would be happy with ‘defined’? Mr. Gasparo: Yes, but not ‘selected.’ Mr. Tower: Your Honor,
`we will accept that. We will leave it ‘defined.’ The Court: By agreement then it is ‘defined’; does not require
`construction.” Dkt. No. 62.
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`5
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`Patent, 30:59–60 (“receive data entered into the first license form by the first potential licensee,
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`the data including a request to license a first right; determine if the first right is available, and if
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`the first right is available, to submit the first license request, including at least a portion of the
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`received data, for approval”). Further, the figures in the specification show manners of entering
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`data that do not necessarily employ data entry fields, such as automatically populating the form
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`with default information. ‘849 Patent, 7:54–69 (“The rights owner application may populate the
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`license agreement template with selected initial information, including, as a default, information
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`from the request template. The license agreement template may then be provided in response to
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`buyer or licensee requests.”). Neither the claim nor the specification provides a basis for limiting
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`the claim to “data entry fields” as the sole manner of entering data. Accordingly, it is
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`impermissible to insert an extraneous data-entry-fields limitation.
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`Two of the disputes were resolved by agreement, and there is no basis in the Patent for
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`inserting a “data entry fields” limitation to “license form.” Thus, no construction of this phrase is
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`necessary.
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`“determine if the [first/second] right is available”
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`Plaintiff argues no construction is necessary and alternatively proposes “determine the
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`availability of the [first/second] right.” Defendants propose “determine if the [first/second]
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`requested right is either available for license or unavailable for license, after receipt of the
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`request form from the [first/second] potential licensee.” The dispute is whether this term should
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`be construed in a way that limits the determination to available or unavailable.
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`Plaintiff argues that no construction is necessary because this term is easily understood
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`by a person of ordinary skill in the art and by the jury. Dkt. No. 49, at 15. Further, Plaintiff faults
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`Defendants’ proposed construction for improperly narrowing the determination to only two
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`possibilities. Id. According to Plaintiff, there is nothing in the specification, claims, or
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`prosecution history to support that the module in question is configured to determine one of only
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`two possibilities. Id. Plaintiff argues that the specification mentions “sold” as a possible status
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`other than available or unavailable. Id., citing ‘849 Patent, 6:16–20 (“In addition, as changes in
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`the status of intellectual property rights are made, for example, as rights are sold and/or no longer
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`available, the licensing application 106 sends real-time instructions to the central rights
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`repository 104 to change the status of the rights.”).
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`Defendants contend that this term should be construed because the plain and ordinary
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`meaning would provide no guidance to a jury. Dkt. No. 50 at 21. According to Defendants, the
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`determination is necessarily between two options, available and unavailable, since the system
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`proceeds to the next step only if the license is available. Id. at 17. Defendants also argue that a
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`construction as a binary decision is consistent with the specification’s teaching that the software
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`determines if a requested right is available or unavailable. Id. at 20, citing ‘849 Patent, 19:35–41;
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`24:47–25:7.
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`It is unclear how Defendants’ proposal of determining if the right is available or
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`unavailable clarifies the plain and ordinary meaning of the claim language requiring the module
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`to “determine if the . . . right is available.” Defendants state that their proposed construction
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`clarifies that an availability determination exists, and that the determination is logically confined
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`to two possible results, available or unavailable for licensing. Dkt. No. 50 at 17, 21. The claim
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`language recites that the system “determines if the [first/second] right is available,” and, if so, it
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`proceeds to submit the license request. Thus, it is clear from the claim language that an
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`availability determination exists. However, there is no support in the claim, or in the
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`specification, to confine the determination to two options. As the claim language already
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`provides substantial guidance as to the meaning of the claim terms, the plain and ordinary
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`meaning of the claim language controls. Phillips, 415 F.3d at 1312–13. Therefore, the term
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`“determine if the [first/second] right is available” does not require construction.
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`CONCLUSION
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`For the foregoing reasons, the Court interprets the claim language in this case in the
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`manner set forth above. The Court utilizes the mini-Markman proceeding to address terms that, if
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`construed, are case dispositive. As the Parties stated that the mini-Markman would allow them to
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`focus on case-dispositive issues, the Court expects that the early construction of the claim
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`language will resolve important issues and result in case-dispositive motions.
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`8
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`__________________________________
`LEONARD DAVIS
`UNITED STATES DISTRICT JUDGE
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`So ORDERED and SIGNED this 24th day of July, 2013.
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