Driessen v. Sony Music Entertainment , 640 F. App'x 892 ( 2016 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
JAMES L. DRIESSEN, MARGUERITE A.
DRIESSEN,
Plaintiffs-Appellants
v.
SONY MUSIC ENTERTAINMENT, AKA SONY BMG
MUSIC ENTERTAINMENT, BEST BUY STORES,
AKA BEST BUY COMPANY, FYE, AKA TRANS
WORLD ENTERTAINMENT, TARGET
CORPORATION,
Defendants-Appellees
______________________
2015-2050
______________________
Appeal from the United States District Court for the
District of Utah in No. 2:09-cv-00140-CW-BCW, Judge
Clark Waddoups.
______________________
Decided: February 10, 2016
______________________
JAMES L. DRIESSEN, Lindon, UT, pro se.
MARGUERITE A. DRIESSEN, Lindon, UT, pro se.
2 DRIESSEN v. SONY MUSIC ENTERTAINMENT
JAMES CHARLES PISTORINO, Parrish Law Office, Menlo
Park, CA, for defendants-appellees.
______________________
Before DYK, MAYER, and HUGHES, Circuit Judges.
PER CURIAM.
James L. Driessen is the named inventor on U.S.
Patent Nos. 7,003,500 (“the ’500 patent”), 7,636,695 (“the
’695 patent”), and 7,742,993 (“the ’993 patent”). Mr.
Driessen and his wife, Marguerite A. Driessen, 1 (collec-
tively “the Driessens”) sued Sony Music Entertainment,
Best Buy Stores, FYE, and Target (collectively “Sony”),
alleging infringement of the ’500, ’695, and ’993 patents in
the United States District Court for the District of Utah.
The district court granted Sony’s motions for summary
judgment, finding asserted claims 1–4 and 7 of the ’500
patent invalid as indefinite, and asserted claims 10–15 of
the ’500 patent, all claims of the ’695 patent, and all
claims of the ’993 patent invalid for lack of written de-
scription. The Driessens appeal. We affirm.
BACKGROUND
The ’500, ’695, and ’993 patents all have virtually the
same specification and relate to systems and methods of
purchasing downloadable content from the Internet.
Rather than purchasing the content directly through the
Internet, the buyer goes to a retail store to pay for the
item in person. At the retail store, the buyer obtains a
ticket or other “physical medium” proof of sale containing
a web address specific to the item sold and a unique
password that will enable its download. Driessen v. Sony
1 The basis for Marguerite Driessen’s standing is
not clear in the record.
DRIESSEN v. SONY MUSIC ENTERTAINMENT 3
Music Entm't, No. 2:09-CV-0140-CW, 2015 WL 1057845,
at *2 (D. Utah Mar. 10, 2015) (“D.C. Op.”). The buyer can
then anonymously download the media content from any
computer with Internet access by going to the web ad-
dress and inputting the unique password provided. The
district court held claims 1–4 and 7 of the ’500 patent
invalid as indefinite, and claims 10–15 of the ’500 patent
and all asserted claims of the ’695 and ’993 patents inva-
lid for lack of written description. Id. at *14. The Dries-
sens appealed. We have jurisdiction under 28 U.S.C.
§ 1295(a)(1).
DISCUSSION
We begin with the issue of indefiniteness. Indefinite-
ness is a question of law that we review de novo. Teva
Pharm. U.S.A., Inc. v. Sandoz, Inc., 789 F.3d 1335, 1341
(Fed. Cir. 2015). We review the ultimate construction of a
claim and intrinsic evidence de novo. Teva Pharm.
U.S.A., Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
We review the grant of summary judgment de novo.
Vanmoor v. Wal-Mart Stores, Inc., 201 F.3d 1363, 1365
(Fed. Cir. 2000).
Claim 1 of the ’500 patent, which contains several
means-plus-function elements, provides,
A payment system for itemized Internet mer-
chandise or itemized downloadable media materi-
al objects, comprising:
a retail point of sale establishment;
a customer access point at said retail point of
sale establishment;
URL information that is an Internet transac-
tion location of said itemized Internet merchan-
dise or itemized downloadable media material
objects;
4 DRIESSEN v. SONY MUSIC ENTERTAINMENT
means for accepting payment through an in
person transaction with a customer wherein said
payment is designated for purchase of said item-
ized Internet merchandise or itemized down-
loadable media material objects;
means for storing and retrieving a record on
or in a physical medium corresponding to said
URL information that is an Internet transaction
location of said itemized Internet merchandise or
itemized downloadable media material objects;
means for transfer of said physical medium
from said retail point of sale establishment to said
customer; and
means for Internet transaction authorization
on, in, or actuated from said physical medium
wherein ownership rights in said itemized Inter-
net merchandise or itemized downloadable media
material objects are preselected and transferred to
said customer through said transfer of said physi-
cal medium.
’500 patent col. 10 ll. 18–42 (emphasis added).
Primarily at issue in the case is the “means for storing
and retrieving a record on or in a physical medium”
limitation. Id. at ll. 30–31. Pursuant to 35 U.S.C.
§ 112(f), 2 the district court found that the function of that
element is “storing and retrieving a record on or in a
physical medium.” D.C. Op., at *6. The district court
construed “storing” to mean “both putting into storage
and holding in storage,” “retrieving” to mean “taking out
of storage for the purpose of presenting authentication to
2 Before the America Invents Act 35 U.S.C. § 112(f)
was contained in § 112 paragraph 6.
DRIESSEN v. SONY MUSIC ENTERTAINMENT 5
prove purchase,” “record” to mean a “unique URL corre-
sponding to specific web merchandise or content,” and “on
or in a physical medium” to mean the location where “the
record is stored and from where it may be retrieved.” Id.
A means-plus-function claim is indefinite unless
structure to perform the function is identified in the
specification. E.g., Cardiac Pacemakers, Inc. v. St. Jude
Med., Inc., 296 F.3d 1106, 1113–14. The district court
here rejected the Driessens’ contention that Figure 5—
which depicts an “Admit One” ticket and a floppy disk—
provides the necessary structure to correspond with the
above function. D.C. Op., at *7. The court explained that
while Figure 5 perhaps discloses examples of “physical
media,” it does not disclose a structure that “stor[es] and
retriev[es] a record on or in a physical medium.” Id.(emphasis added). Because the specification failed to
disclose any such associated structure for “storing” and
“receiving” the record in a physical medium, the district
court held that claim 1 and dependent claims 2–4 and 7
are invalid as indefinite.
The Driessens argue that the district court erred in
construing “storing” in claim 1 of the ’500 patent to re-
quire “both putting into storage and holding in storage,”
D.C. Op., at *6, contending that “storing” should be un-
derstood to require only holding in storage, not the addi-
tional preliminary step of getting there. The word
“storing” itself implies both putting into and holding in
storage. See Store, MERRIAM-WEBSTER DICTIONARY (2015)
(“to put . . . in a place where it is available, where it can
be kept safely, etc.”). The Driessens point to no language
in the claims or specification that would support their
contrary construction. The Driessens’ argument by
analogy, that “store rooms, filing cabinets, cans, bottles,
and similar devices” are properly understood as “storage”
devices despite their inability to “put things into them-
selves,” is inapposite. Claim terms must be construed in
6 DRIESSEN v. SONY MUSIC ENTERTAINMENT
light of the context in which they appear. See, e.g.,
Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d
1294, 1299 (Fed. Cir. 2003). In the context of storing “a
record on or in a physical medium,” it is apparent that
“store” implies not only maintaining the record in a
physical medium, but also getting it there to begin with.
Similarly, the Driessens’ contention that “retrieving”
should be construed to mean only “presenting” or “deliver-
ing” divorces the claim from its context, in violation of
basic claim construction principles. See id. We see no
error in the district court’s claim construction.
The Driessens argue further that the necessary struc-
tures for performing a “means for storing and retrieving a
record on or in physical medium,” ’500 patent col. 10 ll.
30–31, were known in the art, and therefore the claims
are not indefinite. The district court properly rejected
this argument. We have explained that “[t]he inquiry is
whether one of skill in the art would understand the
specification itself to disclose a structure, not simply
whether that person would be capable of implementing a
structure. Accordingly, a bare statement that known
techniques or methods can be used does not disclose
structure.” Biomedino, LLC v. Waters Tech. Corp., 490
F.3d 946, 953 (Fed. Cir. 2007) (citations omitted). Noth-
ing in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct.
2120 (2014), is to the contrary. There is no support in the
specification that the Driessens’ proposed additional
structures—ink, bar codes, magnetic strips and disks,
scratch off materials, and silica memory—perform the
storing function. Nor does a general purpose computer
provide sufficient structure for “storing and retrieving a
record on or in a physical medium.” See, e.g., Noah Sys.,
Inv. v. Intuit Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012).
We see no error in the district court’s conclusion that
claims 1–4 and 7 of the ’500 patent are invalid as indefi-
nite.
DRIESSEN v. SONY MUSIC ENTERTAINMENT 7
We next consider the issue of written description. We
review a district court’s grant of summary judgment of
invalidity for lack of written description de novo. ICU
Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1376
(Fed. Cir. 2009). Claim 10 of the ’500 patent provides,
A method of merchandise transfer on a computer
network comprising at least one buyer computer
on a network for operation by a user desiring to
buy at least one product and at least one selling
computer on said network operating for a purpose
to sell said product, the method comprising the
steps of: . . .
sending a payment message as a response to
said in person transaction either directly or
through other computers on said network to
said selling computer on said network;
causing an authorization message to be creat-
ed on said selling computer in or as a result of
said payment message that comprises at least
said specification of said product and authen-
tication based on cryptographic key(s), said
selling computer being programmed to receive
said authorization message for verification of
said authentication; . . . .
....
Id. col. 11 l. 60–col. 12 l. 18 (emphasis added). The three
terms “selling computer,” “payment message,” and “au-
thorization message,” which first appeared when Mr.
Driessen added new claims by amendment more than four
years after filing the original application that became the
’500 patent, also appear in claims 11–15 of the ’500 patent
and all asserted claims of the ’695 and ’993 patents. The
district court construed “selling computer” to mean “the
seller-side computer or computer network comprised of
8 DRIESSEN v. SONY MUSIC ENTERTAINMENT
the computer/network of the web content dealer.” D.C.
Op., at *12. It construed “payment message” in accord-
ance with both parties’ proposed constructions to mean
“an electronic message indicating that payment was
received.” Id. It construed “authorization message” in
accordance with the Driessens’ proposed construction to
mean “an electronic message,” explaining that no further
definition is required because the context of “authoriza-
tion message” is clear. Id. The district court then found
that no written description for “selling computer,” “pay-
ment message,” or “authorization message” is provided
anywhere in the specification or original application. The
court rejected the Driessens’ contention that the terms
were implicitly present in the original application, finding
that the discussion of “secure web transactions” and
“public key infrastructure” did not necessarily provide for
“payment messages” or “authorization messages,” let
alone require such messages to be sent to or from “selling
computers.” Id. at *13. The court thus held that claims
10–15 of the ’500 patent and all asserted claims of the
’695 and ’993 patents are invalid for lack of written de-
scription.
When, as here, a patent applicant adds new claims af-
ter the original filing date, “the new claims . . . must find
support in the original specification.” TurboCare Div. of
Demag Delaval Turbomachinery Corp. v. GE, 264 F.3d
1111, 1118 (Fed. Cir. 2001). The terms “selling comput-
er,” “payment message,” and “authorization message” are
not present anywhere in the specification or original
provisional application. The Driessens contend that
because the words “payment,” “message,” “authorization,”
and “computer” appear individually numerous times in
the specification, adequate written description for the
terms “selling computer,” “payment message,” and “au-
thorization message” is provided. This argument misun-
derstands the written description requirement. The mere
DRIESSEN v. SONY MUSIC ENTERTAINMENT 9
presence of these words in isolation does not suffice to
show that the “patentee had possession of” the “selling
computer,” “payment message,” and “authorization mes-
sage” elements of the claimed invention at the time of the
application, as 35 U.S.C. § 112(a) requires. 3 LizardTech,
Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1345
(Fed. Cir. 2005). Further, the district court properly
concluded that “selling computer,” “payment message,”
and “authorization message” are not implicitly present in
the application’s references to the distinct concepts of
“secure web transactions” and “public key infrastructure.”
D.C. Op., at *13.
We see no error in the district court’s conclusion that
claims 10–15 of the ’500 patent and all asserted claims of
the ’695 and ’993 patents are invalid for lack of written
description.
We have considered the Driessens’ remaining ar-
guments and find them to be without merit.
AFFIRMED
COSTS
Costs to Appellees.
3 Before the America Invents Act 35 U.S.C. § 112(a)
was contained in § 112 paragraph 1.