DISCOVERY PATENT HOLDINGS, LLC v. Amazon. Com, Inc. , 769 F. Supp. 2d 662 ( 2011 )


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  • 769 F. Supp. 2d 662 (2011)

    DISCOVERY PATENT HOLDINGS, LLC, et al., Plaintiffs,
    v.
    AMAZON.COM, INC., et al., Defendants.

    Civil Action No. 10-600-ER.

    United States District Court, D. Delaware.

    February 4, 2011.

    *664 Elena C. Norman, Jeffrey Thomas Castellano, Young, Conaway, Stargatt & Taylor, Wilmington, DE, Brent P. Lorimer, Pro Hac Vice, Workman Nydegger, Sterling A. Brennan, Pro Hac Vice, Salt Lake City, UT, Deok Keun M. Ahn, Pro Hac Vice, Morrison & Foerster LLP, San *665 Francisco, CA, Michael A. Jacobs, Pro Hac Vice, Seth W. Black, Pro Hac Vice, for Plaintiffs.

    Richard L. Horwitz, David Ellis Moore, Potter Anderson & Corroon, LLP, Wilmington, DE, Brian Ankenbrandt, Pro Hac Vice, Brooke L. Myers, Pro Hac Vice, Jason C. Lo, Pro Hac Vice, Josh A. Krevitt, Pro Hac Vice, Mark Reiter, Pro Hac Vice, Sarah E. Piepmeier, Pro Hac Vice, Stuart M. Rosenberg, Pro Hac Vice, Y. Ernest Hsin, Pro Hac Vice, for Defendants.

    MEMORANDUM

    EDUARDO C. ROBRENO, District Judge.

    I. INTRODUCTION

    Plaintiff Discovery Communications, Inc., ("Discovery" or "Plaintiff") initiated this action against Defendant Amazon.com, Inc. ("Amazon" or "Defendant"), alleging infringement of two of its patents in violation of 35 U.S.C. § 271 and seeking injunctive relief, and compensatory and punitive damages.[1]

    Before the Court are both parties' briefing on claim construction with proffered definitions for disputed claim terms. For the reasons set forth below, the Court defines the claim terms as set out in the conclusion.

    II. BACKGROUND

    On March 17, 2009, Plaintiff Discovery Communications, Inc., initiated this action against Defendant Amazon.com, Inc., alleging infringement of Discovery's '851 Patent in violation of 35 U.S.C. § 271 and seeking injunctive relief and compensatory and punitive damages. Discovery contends that Amazon is required to obtain a license to "make, use, sell, offer for sale and/or import products" under numerous patents in Amazon's E-book Patent Portfolio (including but not limited to the Kindle, the Kindle 2, and the content of other e-books).[2]Id.

    On May 15, 2009, Amazon filed its Answer, asserting defenses and counterclaims. (Doc. no. 7.) Therein, Amazon asserted the following four defenses: (1) non-infringement of the '851 patent; (2) invalidity/unenforceability of the '851 patent; (3) inequitable conduct engaged in by Discovery in withholding material information to the USPTO regarding prosecution of the '851 patent; and (4) patent misuse. (Id.) Amazon also alleges patent infringements by Discovery, in the area of electronic commerce ("e-commerce") and its underlying technology, seeking declaratory relief and compensatory and punitive damages.

    On July 14, 2010, Discovery filed a second, separate complaint alleging infringement of its '690 patent. On August 17, 2010, the Court consolidated both of Discovery's complaints and Amazon's counterclaims into this action.

    Originally, eight patents were at issue.[3] However, there are currently only four *666 patents to be construed by the Court: Discovery's patents '690 and '851 ("Discovery Patents"); and Amazon's patents '141 and '133 ("Amazon Patents").

    A. Discovery Patents

    Discovery's '690 Patent is entitled "Electronic Book Selection and Delivery Service" and was issued on Nov. 15, 1999. The '690 Patent describes a "method of distributing electronic books to a portable book-shaped viewing device." (See Pl. Br. 2.) The '690 Patent's disclosure is comprised of (1) the viewing unit, and (2) the operations center that stores and transmits the e-books. (See Pl. Br. 2 (citing '690 Patent at 1:51-2:45).) The '690 Patent effectively transmits books to e-readers for reading, as opposed to physical book transportation.

    Discovery's '851 Patent is entitled "Electronic Book Security and Copyright Protection System" and was issued on Nov. 20, 2007. The '851 Patent covers the same system as the '690 Patent, a "system and method of securely distributing electronic books to a portable book-shaped viewing device." However, the '851 Patent "details an encryption process for securing" the e-books transmitted to the viewing device. (Id. at 3.)

    Specifically, the '851 Patent encrypts e-books by modifying unencrypted ("clear") text and transforming it into encrypted text ("ciphertext"); the reverse is done for encrypted text. (See Def. Br. 4.) The '851 Patent is comprised of (1) an operations center to store/transmit e-books, and (2) a device to view the books.

    B. Amazon Patents

    Amazon's '141 Patent is entitled "Internet-Based Customer Referral System" and issued on February 2, 2000. Amazon's related '133 Patent is entitled "Internet-Based Customer Referral System" and issued on February 26, 2000.

    Amazon describes the '141 and '133 Patents as creating technological outpaths from the e-merchant's website (here, Amazon) to associates' websites (the referring entities) that avoids costly impediments for the e-merchant, such as having the burden of reviewing the associates' sites and having to pay for conventional advertising. (Id. at 8.) Thus, the associate is able to get referrals to its website (and products) from Amazon.com in exchange for a commission. Associates are also able to generate feedback reports regarding the success of their referrals. (Id. at 10.)

    C. Procedural History

    On March 12, 2010, the Court issued an amended scheduling order, regarding the *667 Markman hearing and claim construction. (Doc. no. 89.) Both parties filed their claim construction briefing and on May 21, 2010, the Court held the Markman hearing.

    III. DISCUSSION

    Before the Court are both parties' briefing on claim construction with proffered definitions for disputed claim terms. The following claims are contested by the parties and contain terms which the Court must define:

    — '690 Patent:   Claims 39, 40
    — '851 Patent:   Claims 1, 34, 36, 38, 39,
                     45, 56, 61, 82, 96, 107,
                     110, 119, 122, 123
    — '141 Patent:   Claims 1, 2, 7, 9, 10, 13,
                     14, 15, 16, 17, 18, 19, 21,
                     23, 24, 25, 26, 27, 28, 29,
                     33, 34, 35, 36, 37, 38, 39,
                     40, 41, 42
    — '133 Patent:   Claims 1, 2, 5, 8, 9, 18,
                     21, 22, 23, 24, 25
    

    A. Legal Principles of Claim Construction

    A court's analysis of patent infringement is comprised of a well-established two-step process: (1) the meaning of disputed claims are construed; and (2) the allegedly infringing device is compared to the claims as construed. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.Cir.1995), aff'd, 517 U.S. 370, 116 S. Ct. 1384, 134 L. Ed. 2d 577 (1996); Wavetronix LLC v. EIS Electronic Integrated Sys., 573 F.3d 1343, 1354 (Fed.Cir.2009). With respect to the first step, "[t]he purpose of claim construction is to determine the meaning and scope of the patent claims that the plaintiff alleges have been infringed." Every Penny Counts, Inc. v. American Express Co., 563 F.3d 1378, 1382 (Fed. Cir.2009) (citing O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed.Cir.2008)).

    It is axiomatic that the claims define the scope of the patent. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.Cir. 2005) (en banc) (internal citations omitted); see also, Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed.Cir.2004); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996). Therefore, the Court must first look to the words of the claims themselves in order to ascertain their meaning. Vitronics Corp., 90 F.3d at 1582; see also Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248 (Fed.Cir.1998) ("[T]he claims define the scope of the right to exclude; the claim construction inquiry, therefore, begins and ends in all cases with the actual words of the claim.").

    1. Plain and Ordinary Meaning

    Claim terms must be initially interpreted according to their ordinary and customary meaning. Genzyme Corp. v. Transkaryotic Therapies, Inc., 346 F.3d 1094, 1106 (Fed.Cir.2003). Undefined claims terms are to be given an ordinary and customary meaning "as understood by a person of ordinary skill in the art at the time of the invention." Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1378 (Fed.Cir.2009). As explained by the Federal Circuit:

    Because the meaning of a claim term as understood by persons of skill in the art is often not immediately apparent, and because patentees frequently use terms idiosyncratically, the court looks to `those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean,' including `the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.' *668 Phillips, 415 F.3d at 1314 (quoting Innova, 381 F.3d at 1116).

    2. Intrinsic Evidence

    Where a court cannot properly construe a claim based on the plain meaning, it is necessary to examine the intrinsic record of the claims, which includes the specification and the prosecution history. Masco Corp. v. United States, 303 F.3d 1316, 1324 (Fed.Cir.2002) ((citing Vitronics Corp., 90 F.3d at 1582) (holding such intrinsic evidence to be "the most significant source of the legally operative meaning of disputed claim language.")). The specification contains a written description of the invention which must be clear and complete enough to enable those of ordinary skill in the art to make and use it. Thus, the specification provides necessary context for understanding the claims, and "is always highly relevant to the claim construction analysis." Phillips, 415 F.3d at 1315 (quoting Vitronics Corp., 90 F.3d at 1582). Therefore, a patentee can act as his own lexicographer in the patent specification by defining a term with particularity that already has an ordinary meaning to a person of skill in the art. Merck & Co., Inc. v. Teva Pharma. USA, Inc., 395 F.3d 1364, 1370 (Fed.Cir.2005) (internal citation omitted); Phillips, 415 F.3d at 1321 ("[T]he specification `acts as a dictionary when it expressly defines terms used in the claims.'" (internal quotation omitted)).

    Further, "[w]hen consulting the specification to clarify the meaning of claim terms, courts must take care not to import limitations into the claims from the specification." Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed.Cir.2009). Limitations contained in the specification should be applied judiciously and courts should refrain from restricting broader claim language to a single embodiment described in the specification, "unless the patentee has demonstrated a clear intention to limit the claim scope using `words or expressions of manifest exclusion or restriction.'" Id. (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed.Cir.2004)); see also Bell At. Network Servs., Inc. v. Covad Commc'ns Group, Inc., 262 F.3d 1258, 1271 (Fed.Cir. 2001) ("[W]hen a patentee uses a claim term throughout the entire patent specification, in a manner consistent with only a single meaning, he has defined that term `by implication.'" (internal quotation omitted)).

    Along with the specification, the prosecution history is "intrinsic evidence" of the meaning of the claims, because it "provides evidence of how the [United States Patent & Trademark Office ("PTO")] and the inventor understood the patent." Phillips, 415 F.3d at 1317. The prosecution history is comprised of the original application, communications between the patent applicant and the patent examiner, changes to the patent application, prior art cited during the patent examination, and other pertinent documents. See Rheox, Inc. v. Entact, Inc., 276 F.3d 1319, 1326 (Fed.Cir.2002) (noting that the totality of the prosecution history includes "amendments to claims and arguments made to overcome or distinguish references.") (citing Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 979 (Fed.Cir. 1999)).

    Though ambiguities during negotiations between the PTO and inventor may occur, "the 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." Abbott Labs., 566 F.3d at 1288 (quoting Phillips, 415 F.3d at 1317). Statements made during prosecution can serve to disavow the scope of the patent, but only in situations where *669 the disclaimer is unambiguous. See id.; Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed.Cir.2008) ("[A] patentee may limit the meaning of a claim term by making a clear and unmistakable disavowal of scope during prosecution.") (quoting Purdue Pharma L.P. v. Endo Pharms., Inc., 438 F.3d 1123, 1136 (Fed.Cir.2006)); Southwall Tech., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir.1995) ("The prosecution history limits the interpretation of claim terms so as to exclude any interpretation that was disclaimed during prosecution.") (citations omitted).

    3. Extrinsic Evidence

    Beyond the claim language itself and the intrinsic record, a court is permitted to rely on extrinsic evidence, consisting 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. Extrinsic evidence is to be used to aid in a court's interpretation of the claim language, but "not for the purpose of varying or contradicting the terms of the claim." Id. (internal citation omitted); see Phillips, 415 F.3d at 1317 (extrinsic evidence is "less significant than the intrinsic record").

    B. Undisputed Claim Terms

    1. Discovery Patents: '690 & '851 Patents

    ----------------------------------------------------------------
                                               Agreed Position
      Patent(s)       Term                     or Construction
    ----------------------------------------------------------------
    '851 Patent   cryptographic                "an operation
                   algorithm                   used to encrypt
                                               or decrypt"
    ----------------------------------------------------------------
    '851 Patent   encryption/                  "an operation
                  decryption                   used to encrypt
                  algorithm                    or decrypt"
    ----------------------------------------------------------------
    '851 Patent   decryption key               "data used to
                                               decrypt encrypted
                                               information"
    ----------------------------------------------------------------
    '851 Patent   encryption key               "data used to
                                               encrypt
                                               information"
    ----------------------------------------------------------------
    '851 Patent   electronic book              "a location from
                    source                     which textual or
                                               graphical information
                                               of a book
                                               is electronically
                                               transmitted"
    ----------------------------------------------------------------
    '690 Patent   text source                  "a location from
                                               which textual or
                                               graphical information
                                               of a book
                                               is electronically
                                               transmitted"
    ----------------------------------------------------------------
    '851 Patent   upon demand                  No construction
                                               necessary.
    '690 Patent
    ----------------------------------------------------------------
    '851 Patent   supplying a selected         No construction
                   electronic                  necessary,
                   book corresponding
                   to the
                   selected title to
                    be encrypted
    ----------------------------------------------------------------
    

    2. Amazon Patents: '141 and '133 Patents

    ----------------------------------------------------------------
                                               Agreed Position
    Patent(s)       Term                       or Construction
    ----------------------------------------------------------------
    '141 Patent   Web page                     "interlinked,
                                               user-viewable
                                               hypertext document
                                               that is
                                               accessible via
                                               the Internet"
    '133 Patent
    ----------------------------------------------------------------
    '141 Patent     using the associate        No construction
                  identifier ... to identify   needed,
                  the associate
    ----------------------------------------------------------------
    '141 Patent     computer                   No construction
                  implemented                  needed.
    ----------------------------------------------------------------
    '141 Patent   automatically                No construction
                                               needed.
    ----------------------------------------------------------------
    '141 Patent      generating ... a          No construction
                   report/generates ...        needed.
                        reports
    ----------------------------------------------------------------
    

    C. Disputed Claim Terms

    1. Discovery Patents: '690 & '851 Patents

    There are seven (7) disputed terms for Discovery's '690 and '851 Patents. The parties' proposed term constructions are as follows:

    ------------------------------------------------------------------------
                              Discovery's                Amazon's
                                Proposed                 Proposed
    Terms & Patent(s)         Construction             Construction
    ------------------------------------------------------------------------
    broadcast                 No construction          "sent via a
                              necessary.               simultaneous
                                                       transmission to
    

    *670
                                                       multiple recipients"
    '851 Patent               If construed:
                              "transmitted"
    ------------------------------------------------------------------------
    book                      "an electronic           "an electronic
                              version of the           version of the
                              textual or               textual or
                              graphical information    graphical information
                              conatained               contained
                              in a work                in a work
                              such as a novel,         such as a novel,
                              encyclopedia, article,   encyclopedia, article,
                              magazine,                magazine,
                              newspaper, catalogue,    newspaper, catalogue,
                              periodical,              periodical,
                              or manual"               manual, speech,
                                                       law, court
                                                       decision, or
                                                       testimony"
    '690 Patent
    electronic book
    '851 Patent
    ------------------------------------------------------------------------
    encrypting the selected   No construction          "modifying the
    electronic                necessary.               unencrypted
    book                                               text and graphics
                                                       of an electronic
                                                       book,
                                                       making it
                                                       unreadable"
    '851 Patent               If construed:
                              "encrypting data
                              representing the
                              text and graphics
                              of an electronic
                              book"
    ------------------------------------------------------------------------
    decrypting the            No construction          "modifying the
    encrypted selected        necessary.               encrypted selected
    electronic book                                    electronic
                                                       book back to
                                                       readable text
                                                       and graphics"
    '851 Patent               If construed:
                              "decrypting the
                              encrypted data
                              representing
                              text and graphics
                              of an electronic
                              book"
    ------------------------------------------------------------------------
    information that          No construction          "information
    allows encryption         necessary.               that allows each
    and decryption                                     of the following:
    of the electronic
    book and encryption
    and decryption
    of the
    encryption and
    decryption keys
    '851 Patent                                        (1) encryption of
                                                       the electronic
                                                       book,
                                                       (2) decryption of
                                                       the electronic
                                                       book,
                                                       (3) encryption of
                                                       the encryption
                                                       key,
                                                       (4) decryption of
                                                       the encryption
                                                       key,
                                                       (5) encryption of
                                                       the decryption
                                                       key, and
                                                       (6) decryption of
                                                       the decryption
                                                       key"
    ------------------------------------------------------------------------
    key generator             "a key generation        "a process that
                              process implemented      creates encryption
                              using                    and decryption
                              hardware or              keys used to
                              software, or a           encrypt and decrypt
                              combination              an electronic
                              thereof"                 book"
    '851 Patent
    ------------------------------------------------------------------------
    list of titles of         No construction          "list of titles of
    available                 necessary.               all books for
    electronic                                         which the text
    books                                              associated with
                                                       the electronic
                                                       book is available
                                                       for transmission"
    '851 Patent
    list of titles of
    available books
    '690 Patent
    ------------------------------------------------------------------------
    

    a. broadcast

    ------------------------------------------------------------------------
    Discovery's Proposed      Amazon's Proposed
       Construction            Construction
    ------------------------------------------------------------------------
    No construction        "sent via a simultaneous
    necessary.             transmission to multiple
                           recipients"
    If construed:
    "transmitted"
    ------------------------------------------------------------------------
    

    Discovery argues that Claim 110, '851 Patent claims an electronic book viewer "wherein the electronic books are broadcast to the electronic book viewer." (See Pl. Br. 8.) Discovery argues that the plain meaning of "broadcast" should be construed as "transmitted." Discovery argues that Amazon's construction limits the term to (1) chosen "features of exemplary embodiments" in the specification, that improperly excludes other embodiments; and (2) the doctrine of claim differentiation supports the contention that the term "broadcast" need not necessarily require "simultaneous transmission to multiple" e-book viewers. (Id. at 10.) Further, Discovery argues that Amazon's limitation requires "over-the-air television or direct satellite delivery method[s]," which contradicts the intrinsic evidence.

    Further, Discovery argues that dictionary definitions supports its construction: *671 Broadcast: "3. To send a transmission or signal; transmit." ((See Pl. Br. 9) (citing The American Heritage Dictionary of the English Language, 3d Ed. at 241).) However, other definitions in that same dictionary are: "1. To transmit (a radio or television program) for public or general use. 2. To send out or communicate especially by radio or television . . . . 3. To make known over a wide area." (Id.)

    Amazon, on the other hand, argues that the plain meaning of "broadcast" is a "way of transmitting information to multiple recipients simultaneously" as opposed to simply meaning "transmitted." (See Def. Br. 7.) Defendant argues that express claim language and specification show that "broadcast" means to go to multiple viewers at the same time. (See Id. (noting that claim 41 states that an e-book is "broadcast to multiple home systems simultaneously" and claim 129 states that "broadcasting the encrypted e-book to multiple home systems simultaneously").) Amazon argues that the specification further demonstrates that transmission methods of satellite television and over-the-air broadcast require that multiple recipient receive the transmission at the same time, which support of its definition of "broadcast." Lastly, Amazon argues that the extrinsic evidence of the dictionary definition supports its plain meaning definition:

    [B]roadcast: To send the same message simultaneously to multiple recipients. Broadcasting is a useful feature in e-mail systems. It is also supported by some fax systems.

    ((See Def. Br. 8) (quoting 1999 Random House Webster's Computer & Internet Dictionary).)

    The plain meaning of "broadcast" best supports Amazon's construction of "broadcast": "sent via a simultaneous transmission to multiple recipients." (See Def. Br. 6-11); see Lucent Tech., Inc. v. Extreme Networks, Inc., 367 F. Supp. 2d 649, 672 (D.Del.2005) (construing "broadcast message" to mean "a message that is sent to all nodes in the network"); see also Sport-vision, Inc. v. SportsMEDIA Tech. Corp., Civ. No. 04-03115, 2006 WL 408634, *4, 2006 U.S. Dist. LEXIS 8995, *12 (N.D.Cal., Feb. 17, 2006) (defining "broadcast" as "a wide-spread distribution"). The presumption that different terms in the same claim have different meanings favor's Amazon's construction because Discovery uses both the term "broadcast" and "transmitted" within the same claim. See Bancorp Services, LLC v. Hartford Life Ins. Co., 359 F.3d 1367, 1373 (Fed.Cir. 2004).

    However, Amazon goes a step further introducing the word "simultaneous." Thus, the Court will adopt Amazon's construction without the "simultaneous" portion. That is, finding that "broadcast" means "sent to multiple recipients."

    b. book/electronic book

    ---------------------------------------------------------------
                           Discovery's            Amazon's
                             Proposed             Proposed
    Terms & Patent(s)      Construction         Construction
    ---------------------------------------------------------------
    book                 "an electronic       "an electronic
                         version of the       version of the
                         textual or           textual or
                         graphical infor-     graphical infor-
                         mation con-          mation con-
                         tained in a work     tained in a work
                         such as a novel,     such as a novel,
                         encyclopedia, ar-    encyclopedia, ar-
                         ticle, magazine,     ticle, magazine,
                         newspaper, cata-     newspaper, cata-
                         logue, periodical,   logue, periodical,
                         or manual"           manual, speech,
                                              law, court
                                              decision, or
                                              testimony"
    '690 Patent
    electronic book
    '851 Patent
    -------------------------------------------------------------------------------
    

    The parties agree that: (1) the '690 and '851 Patents demonstrate that e-books are "a vehicle for delivering numerous categories of textual and graphical information;" (2) "e-books" consist of textual information and graphics; (3) "book" and "e-book" definitions are not just plain and ordinary meanings of the word "book" and *672 can include magazines, etc.; and (4) specific examples of "e-books" is broader that the '851 specification and includes more than just "a novel, encyclopedia, article, magazine, newspaper, catalogue, periodical or manual." ((Id. at 12) (citing Pl. Br. 7-8).)

    Discovery argues that: (1) the express claim language of the '690 and '851 Patent support its definition of "book" and "electronic book;" (2) the explicit definitions in the specification supports its definitions; (3) "book" refers to "electronic textual and graphical information;" and (4) additional examples are "unnecessary and may be misleading to a jury." (See Pl. Br. 7.) Amazon, however, disagrees and argues that Discovery's limitation that "book" and "e-book" must include "published material or text" is improperly limiting. (See Def. Br. 13-14.)

    Here, as both parties agreed that the plain and ordinary meaning of "book" does not apply, Amazon's broader definition that includes "speech, law, court decision or testimony" to be included in the meaning of "book" or "e-book" seems to prevail over Discovery's definition which would only include "published material or text." (Id. 12 (citing '851 Patent 1:61-2:6) (additional examples of e-books include "the President's speech, a new law, a court decision on abortion, or O.J. Simpson's testimony").) That the '851 Patent itself includes speech, law, common law, and testimony, demonstrates that the meaning of "books" is not distinguished from textual material and at a minimum, includes these additional items. Thus, the Court will adopt Amazon's definition.

    c. encrypting the selected electronic book

    ---------------------------------------------------------
                         Discovery's          Amazon's
                           Proposed           Proposed
    Terms & Patent(s)    Construction       Construction
    ---------------------------------------------------------
    encrypting the      No construction    "modifying the
    selected            necessary.         unencrypted
    electronic                             text and graph-
    book                                   ics of an elec-
                                           tronic book,
                                           making it
                                           unreadable"
    '851 Patent         If construed:
                        "encrypting data
                        representing the
                        text and graph-
                        ics of an elec-
                        tronic book"
    ---------------------------------------------------------
    

    Discovery argues that its construction is proper based on (1) the plain and ordinary meaning; (2) extrinsic evidence; and (3) intrinsic evidence. First, Discovery argues that Claim 1 of the '851 Patent involves "encrypting the selected electronic book" and that the word "encrypt" is so common to laypersons that it need not be construed. See Orion IP, LLC v. Staples, Inc., 406 F. Supp. 2d 717 737-38 (E.D.Tex.2005) (refusing to construe terms used in accordance with ordinary lay meanings).

    Further, based on intrinsic evidence in the specification, the data to be encrypted can include "any `string of digital bits,'" not just data that was not already encrypted. Discovery argues that other portions of the specification contemplate "dual-layered encryption" where the text to be encrypted is already encrypted. However, this does not mean that encrypted data be first unencrypted as already encrypted text can be dually encrypted. (See Pl. Br. 22.) Lastly, Discovery argues that, based on the extrinsic evidence, "encryption" does not require input by unencrypted data.

    In response, Amazon argues that Discovery's construction (1) does not define the term "encrypting"; (2) allows textual material that is "to be encrypted" to already be encrypted; and (3) is unsupported by the claims and specification which instead support Amazon's construction. See Def. Br. 15.

    First, Amazon argues the intrinsic evidence establishes that the e-books "entering the encryption process are unencrypted" since Claim 1 states "to be encrypted." *673 See id. (arguing that "to be" means "not yet encrypted"); but see Pl. Br. 22 (contending that already encrypted text can undergo dual-layer encryption). Amazon also argues that the specification explicitly states that clear text, not already encrypted text, is contemplated to be encrypted:

    A basic encryption process operates on a string of digit bits, or clear text, by modifying the clear text using a series of mathematical operations with both the clear text and a second string of bits, called an encryption key, as inputs, resulting in a third string of bits, called ciphertext.

    (See Def. Br. 16 (citing '851 patent, 28:12-16); see also Figure 1.1, '851 Patent (displaying a flow chart of "plaintext" → "encryption → "ciphertext" rarr; "decryption" → "original plaintext").)

    Second, Figure 19a of the '851 Patent displays a flowchart where it explicitly states that unencrypted text goes through an encryption and decryption process. ((See Pl. Piepmeier Decl. Ex. B, Applied Cryptology treatise) (explaining that the encryption process disguises clear text to hide its substance)); see also Adv. Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed.Cir.2000) (finding that treatises incorporated by reference into the specification become part of the specification and are therefore part of the intrinsic record).

    Third, Amazon argues that extrinsic evidence further supports its construction as Claim 83 of the '851 Patent states "non-book content" (a reply message) is already encrypted text to be encrypted twice, is distinguishable from the rest of the text of the e-books and is treated as such in the specification itself. (See Def. Br. 22.) Amazon argues that Claim 83 specifically refers to the e-book being "doubly encrypted" and that there is another "re-encryption," where it fails to state that explicit reference in any other claim. See Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed.Cir.1998) ("There is presumed to be a difference in meaning and scope when different words of phrases are used in separate claims." (internal citation omitted)).

    The language in Discovery's '851 patent seems to support Discovery's argument: "encryption process operates on a string of digit bits, or clear text, by modifying the clear text." This language seems to suggest that the encryption process contemplated would encrypt different types of data. Amazon argues that the '851 Patent of Figure 19a shows that the process begins with "unencrypted content" means that this content is clear text. However, these are not the same. "Unencrypted content" only means the content, in whatever form it is in, before it undergoes this particular encryption process. Indeed, the fact that other claims relate specifically to "double encrypted" data supports Discovery's contention that its language was meant to be read more broadly to include data that was already encrypted. Additionally, encryption is understood by a lay person. Thus, the Court will adopt the definition, "encrypting data representing the text and graphics of an electronic book."

    d. decrypting the encrypted selected electronic book

    ----------------------------------------------------------------
                          Discovery's            Amazon's
                            Proposed             Proposed
    Terms & Patent(s)     Construction          Construction
    ----------------------------------------------------------------
    decrypting the en-    No construction       "modifying the
    crypted selected      necessary.            encrypted se-
    electronic book                             lected electronic
                                                book back to
                                                readable text
                                                and graphics"
    '851 Patent           If construed:
                          "decrypting the
                          encrypted data
                          representing
                          text and graph-
                          ics of an elec-
                          tronic book"
    ----------------------------------------------------------------
    

    *674 In regards to the constructions, Discovery contends that Amazon's proposed construction improperly limits the claim term to requiring that "decrypting. . . yield readable text and graphics." ((Id.); but see ('851 Patent, 28:11-22 ("A reversing process exists using a fourth string of bits, called a decryption key, that, when input into a decryption process consisting of a second series of mathematical operations, along with the ciphertext, the resulting output is the original clear text string of digital bits.")).) Discovery argues that a "clear text string of digital bits" can be anything. (See Pl. Br. 25 (citing Applied Cryptography, 2d. Ed. at 2, Ahn Decl. Ex. 12 (noting that clear text or plaintext can be "whatever")).)

    Amazon argues that, like the encryption argument, Discovery solely disagrees that the "decryption process must result in `readable' text and graphics." See Def. Br. 23. However, based on the intrinsic record, Amazon argues that (1) the entire point of decryption is so the reader can "read the book," thus resulting in clear text; (2) the '851 specification states that "the resulting output [of decryption] is the original clear text string of digital bits"; and (3) the incorporated Applied Cryptography treatise elucidates the point that "the process of turning ciphertext back into plaintext is decryption." See id. 24.

    For the reasons above, the Court will adopt Discovery's definition "decrypting the encrypted data representing text and graphics of an electronic book."

    e. information that allows encryption and decryption of the electronic book and encrypting and decryption of the encryption and decryption keys

    ----------------------------------------------------------------
                           Discovery's       Amazon's
                            Proposed         Proposed
    Terms & Patent(s)     Construction      Construction
    ----------------------------------------------------------------
    information that     No construction    "information
    allows encryption    necessary.         that allows each
    and decryption of                       of the following:
    the electronic
    book and
    encryption and
    decryption of the
    encryption and
    decryption keys
    '851 Patent                             (1) encryption of
                                            the electronic
                                            book,
                                            (2) decryption of
                                            the electronic
                                            book,
                                            (3) encryption of
                                            the encryption
                                            key,
                                            (4) decryption of
                                            the encryption
                                            key,
                                            (5) encryption of
                                            the decryption
                                            key, and
                                            (6) decryption of
                                            the decryption
                                            key"
    ----------------------------------------------------------------
    

    Discovery argues that Claim 96 of the '851 patent requires "information that allows encryption and decryption of the electronic book and encryption and decryption of the encryption and decryption keys," which should have plain and ordinary meaning that is apparent to laypersons. (See Pl. Br. 28.) As the terms "electronic book," "encryption key," and "decryption key" are construed, no construction is necessary here. (Id.)

    Amazon contends, however, that Claim 96 requires six specific functions stated above. Claim 96 of the '851 Patent claims an e-book viewer that receives an e-book from a party and displays that e-book once received. (See Def. Br. 25.) In doing so, Claim 96 "includes information that allows encryption and decryption of the electronic book and encryption and decryption of encryption and decryption keys." (Id. (citing '851 patent).) Amazon argues that where there are six separate functions to be understood from one-dense phrase, a lay jury would not be confused by its construction, but in fact would help to clarify the explicit functions of Claim 96. (Id. at 26.)

    Discovery's patent language is not any more confusing than Amazon's proposed language. The original text is favored where proposed text does not further clarify the language. What may make reading *675 of the language easier is to add a comma. Thus, the Court will adopt the original text with the addition of a comma: "information that allows encryption and decryption of the electronic book, and encryption and decryption of the encryption and decryption keys."

    f. key generator

    -----------------------------------------------------------
                          Discovery's           Amazon's
                           Proposed            Proposed
    Terms & Patent(s)    Construction        Construction
    -----------------------------------------------------------
    key generator        "a key genera-      "a process that
                         tion process im-    creates encryp-
                         plemented using     tion and decryp-
                         hardware or         tion keys used to
                         software, or a      encrypt and
                         combination         decrypt an
                         thereof"            electronic
                                             book"
    '851 Patent
    -----------------------------------------------------------
    

    A "key generator" is used by the e-book viewer to "generate encryption and decryption keys." (See Def. Br. 26 (citing Claim 96, '851 Patent).) For one of ordinary skill to understand the claims and corresponding specifications, one must also know that the "key generator," "generates keys used to encrypt and decrypt" the e-book for the "information stream between the home system and operations center." ((Pl. Br. 29) (citing Vitronics, 90 F.3d at 1584).)

    Discovery argues that its construction, "using hardware or software, or a combination thereof": (1) is best reflected by the intrinsic evidence; and (2) does not impute any unsupported limitations on the terms. (See Pl. Br. 29.) First, Discovery asserts that where the specification of Claim 96 of the '851 Patent provides that security measures, such as encryption or decryption:

    Performed by the operations center 250 or the home system 258 may be done in hardware . . . [or] may be done in software. . . . In yet another alternative, a portion of security related activities may be done in software using a standard or secure processor while the remaining portion done in hardware via a specialized processor.

    (See Pl. Br. 29 (citing '851 Patent at 50:1-12).)

    Further, Discovery contends that Amazon's construction is improper because (1) its construction language is redundant with the "key generator" term, which already includes the encryption/decryption keys and process; (2) the patentee did not intend to "require that the generated keys be `used to encrypt and decrypt" an e-book, if so he would have stated so;[4] and (3) the specification does not limit the transactions to solely for e-book information (e.g., generator keys can encrypt/decrypt other information, such as associated metadata headers). (Id. 30.)

    Contrarily, Amazon argues that the intrinsic evidence, the patent specification, requires its construction of key generator. Claims 3 and 5 of the '851 Patent which rely on Claim 1 of the '851 Patent, specifically state that the key generator generates a "symmetric key" that encrypts (and decrypts) e-books. Amazon argues that the specifications in the '851 Patent support its contention that key generators are designed to encrypt and decrypt e-books. (See Figure 24(A), '851 Patent (displaying a key generator in the encryption and decryption process via use of a transaction symmetric key).)

    Further, Amazon disputes Discovery's third contention. Amazon asserts that simply because a key generator's term is construed as being used to encrypt or decrypt an e-book, does not "mean that it cannot also separately generate other keys used to encrypt and decrypt other information." (See Def. Br. 28.)

    *676 Although Discovery's definition is reflective of the intrinsic evidence of the patent, Amazon correctly points out that the passage of its '851 patent that Discovery relies on for its definition is not a portion of the patent dealing with the key generator. However, this claim term does not seem to need construction. A layperson would likely understand that a "key generator" is a process that generates keys. Thus, the Court will not define "key generator."

    g. list of titles of available electronic books/list of titles of available books

    ----------------------------------------------------------------
                            Discovery's            Amazon's
                            Proposed              Proposed
    Terms & Patent(s)     Construction           Construction
    ----------------------------------------------------------------
    list of titles of     No construction        "list of titles of
    available             necessary.             all books for
    electronic                                   which the text
    books                                        associated with
                                                 the electronic
                                                 book is available
                                                 for transmis-
    '851 Patent                                  sion"
    list of titles of
    available books
    '690 Patent
    ---------------------------------------------------------------
    

    Discovery argues that (1) "list of titles of available books" need not be construed; (2) "list of titles of available electronic books" need not be construed; (3) "available" is already defined and can be construed by its plain and ordinary meaning; and (4) "available" should not be construed as "all" as "all" creates an additional, improper limitation. See SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed.Cir.2004) ("[I]t is important not to import into a claim limitations that are not part of the claim."). Further, Discovery argues that Claim 1 of the '851 Patent requires "creating a list of titles of available electronic books" which is the same a the book definition and needs no further construction.

    Discovery argues that "list of titles of available books" means just that, "creating a list of titles of available books wherein a book is available if the text associated with the book is available for transmission." (See Pl. Br. 13 (citing '690 Patent at 25:4-6) (noting that the "available books may comprise books related to a particular category—not all available books").)

    Amazon argues, on the other hand, that where the claims "must be read in view of the specification, of which they are a part" the specification requires that the claim be read as "a list of titles of all books for which the test associated with the electronic book is available for transmission." (See Def. Br. 29 (citing Phillips, 415 F.3d at 1315).) Amazon relies on Figure 10 of the '851 Patent to demonstrate that "all books available from the system must be displayed." (Id. 30 (citing Figure 10 of the '851 Patent specification that state "[i]nformation requests received from the viewer 266 generally fall into three categories: (1) directory data of books stored in the library 262, (2) index of all available books on the system, and (3) requests for a specific book (step S700)").)

    Amazon's suggested definition begins with "a list of titles of all books" but Amazon's argument that its construction is appropriate is based on a figure which states "index of all books," not "a list of titles." While this does not seem to be a big difference, it is. Discovery is arguing that Amazon's construction effectively precludes the transmission of lists based on categories, and Discovery is right. Discovery's patent clearly contemplates sending lists based on categories as evidenced in Figure 14e of Discovery's '851 patent. Additionally, the plain language is clear and Amazon's construction would lead to redundant language. Thus, the Court will not define this term.

    2. Amazon Patents: '141 and '133 Patents

    There are nine disputed terms for Amazon's '141 and '133 Patents. The parties' *677 proposed term constructions are as follows:

    -------------------------------------------------------------
                            Amazon's            Discovery's
                            Proposed              Proposed
    Terms & Patent(s)     Construction          Construction
    -------------------------------------------------------------
    associate             "software/hard-      "enrollment soft-
    registration          ware used in         ware running on
    system                registering          the merchant's
                          associates"          Web site"
    '141 Patent
    -------------------------------------------------------------
    associate enroll-     "software/hard-      "enrollment soft-
    ment system           ware used in         ware running on
                          enrolling            the merchant's
                          associates"          Web site"
    '141 Patent
    -------------------------------------------------------------
    compensation          "software/hard-      "software run-
    system                ware used in          ning on the mer-
                          compensating         chant's Web site
                          associates"          for crediting
                                               associates for
                                               referrals"
    '141 Patent
    -------------------------------------------------------------
    online                "software/hard-      "enrollment soft-
    registration          ware used in         ware running on
    system                registering          the merchant's
                          associates           Web site that
                          online"              sends an appli-
                                               cation document
                                               from the mer-
                                               chant's Web ser-
                                               ver to the enroll-
                                               ing associate's
                                               Web browser
                                               configured to be
                                               returned to the
                                               merchant's Web
                                               server upon
                                               completion"
    '141 Patent
    -------------------------------------------------------------
    referral process-     "software/hard-      "software run-
    ing system            ware used in         ning on the mer-
                          processing           chant's Web site
                          referrals"           that identifies
                                               the associate
                                               who referred the
                                               customer to the
                                               merchant Web
                                               site"
    '141 Patent
    -------------------------------------------------------------
    report generation     "software/hard-      "report genera-
    system                ware used in         tion software
                          generating feed-     running on the
                          back reports"        merchant's Web
                                               site that uses in-
                                               formation stored
                                               by the merchant
                                               Web site"
    '141 Patent
    -------------------------------------------------------------
    web site              "A computer          "a computer
                           system that         system that
                           serves informa-     serves informa-
                           tional content      tional content
                           over a network      over a network
                           using the stan-     using standard
                           dard protocols      Internet proto-
                           of the World        cols and corre-
                           Wide Web. Typ-      sponding to a
                           ically, a Web       particular Inter-
                           site corresponds    net domain
                           to a particular     name, such as
                           Internet domain     `amazon.com,'
                           name, such as       and which en-
                           `amazon.com,'       compasses the
                           and includes the    hardware and
                           content associat-   software server
                           ed with a partic-   components that
                           ular organiza-      serve the infor-
                           tion. As used       mational con-
                           herein, the term    tent and the
                           is generally in-    hardware and
                           tended to en-       software compo-
                           compass both (i)    nents that in-
                           the hard-           teract with the
                           ware/software       server compo-
                           server compo-       nents to per-
                           nents that serve    form additional
                           the information-    Web site func-
                           al content over     tions"
                           the network,
                           and (ii) the `back
                           end' hard-
                           ware/software
                           components, in-
                           cluding any non-
                           standard or spe-
                           cialized compo-
                           nents, that in-
                           teract with the
                           server compo-
                           nents to perform
                           services for Web
                           site users."
    '133 Patent
    -------------------------------------------------------------
    request message        No construction     "a uniform re-
                           needed.             source locator
                                               address that
                                               includes the
                                               address for the
                                               item's to an
                                               product detail
                                               page on the
                                               merchant's Web
                                               site"
    '141 Patent            If construed:
                           "communication
                           requesting a
                           Web page corre-
                           sponding item
                           offered for sale"
    -------------------------------------------------------------
    Determining ...        No construction     "calculating/
    compensation/          needed.             calculates a
    Determines ...                             proper amount
    compensation                               of compensa-
                                               tion"
    '141 Patent
    -------------------------------------------------------------
    

    a. The "System Terms"

    For all of the "system terms," Discovery adds in its definition the language "software running on the merchant's Web site" to each term. Amazon argues that Discovery attempts to improperly limit the "system terms" from specific embodiments of the inventions. However, Amazon avers *678 that the '141 Patent specification "explicitly precludes such a limitation" by stating that a "`system' may be its own computer system or site, distinct from the merchant's site." (See Amazon Resp. 3-4.)

    Amazon argues that its constructions are in accordance with the claims, specification, and ordinary meaning of the terms. Amazon collectively argues that Discovery's construction as to all the "system terms" are improper because (1) they limit the claims to "software running on the merchant's Web site"; and (2) individualized flaws for each "system term" exist (as dealt with below). Discovery, however, asserts that each term requires an independent construction. (See Disc. Resp. 13.)

    i. System terms and proposed construction

    -----------------------------------------------------------------------------
                                Amazon's           Discovery's
                                Proposed             Proposed
    Terms & Patent(s)         Construction         Construction
    -----------------------------------------------------------------------------
    associate                 "software/hard-     "enrollment soft-
    registration              ware used in        ware running on
    system                    registering         the merchant's
                              associates"         Web site"
    '141 Patent
    -----------------------------------------------------------------------------
    associate enroll-         "software/hard-     "enrollment soft-
    ment system               ware used in        ware running on
                              enrolling           the merchant's
                              associates"         Web site"
    '141 Patent
    -----------------------------------------------------------------------------
    compensation              "software/hard-     "software run-
    system                    ware used in        ping on the mer-
                              compensating        chant's Web site
                              associates"         for crediting
                                                  associates for
                                                  referrals"
    '141 Patent
    -----------------------------------------------------------------------------
    online                    "software/hard-     "enrollment soft-
    registration              ware used in        ware running on
    system                    registering         the merchant's
                              associates          Web site that
                              online"             sends an appli-
                                                  cation document
                                                  from the mer-
                                                  chant's Web ser-
                                                  ver to the enroll-
                                                  ing associate's
                                                  Web browser
                                                  configured to be
                                                  returned to the
                                                  merchant's Web
                                                  server upon
                                                  completion"
    '141 Patent
    -----------------------------------------------------------------------------
    referral                  "software/hard-     "software run-
    processing                ware used in        ping on the mer-
    system                    processing          chant's Web site
                              referrals"          that identifies
                                                  the associate
                                                  who referred the
                                                  customer to the
                                                  merchant Web
                                                  site"
    '141 Patent
    -----------------------------------------------------------------------------
    report generation          "software/hard-     "report genera-
    system                     ware used in        tion software
                              generating feed-    running on the
                              back reports"       merchant's Web
                                                  site that uses in-
                                                  formation stored
                                                  by the merchant
                                                  Web site"
    '141 Patent
    -----------------------------------------------------------------------------
    

    ii. The addition of the language, "software running on the merchant's web site"

    Amazon asserts that Discovery's constructions for all the "system terms" immediately fails because it impermissibly limits them to "software running on the merchant's Web site." (See Amazon Br. 16.) Amazon argues that the claims need not be construed because a jury could readily determine that the claims "already describe these various `systems'" that include both hardware and software system components. (Id. at 17 n. 10.)

    Specifically, Amazon asserts four flaws with Discovery's proposed construction it construes as a claim limitation by limiting the terms to only "software," the merchant's Web site, or any one Web site. (Id. at 19.) First, Amazon avers that Discovery's limitation cut against the "words of the claims themselves." See Amgen Inc. v. Hoechst Marion Roussel, Inc., 457 F.3d 1293, 1301 (Fed.Cir.2006) ((citing Phillips, 415 F.3d at 1312) ("claim construction must begin with the words of the claims themselves.")). For example, by limiting the term "compensation system" to "software," Discovery did not "begin with the words of the claim themselves."

    Second, Amazon argues that the "system" definitions themselves preclude a construction limited to "software." (Id. (noting that the claims explicitly include a *679 Web site/"Web site system" and systems not part of the Web site, thus demonstrating that they are not limited to "software")); see also NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1300 (Fed. Cir.2005) ("Nothing in the claim suggests that `a plurality of originating processors' defines a genus . . . . Instead, these limitations are used as three separate, independent limitations to describe the various constituent components."). Here, Amazon argues that the "Web site" and corresponding "systems" are "various constituent components" and "cannot be required to be a part of (or running on) the Web site system." (See Amazon Br. 21.)

    Third, Amazon avers that Discovery's construction cuts against the explicit specification because the terms function by running on the merchant's Web site and other web sites. (Id. 22.) The '141 Patent specification provides:

    Although the automated enrollment function is preferably handled by the same computer system that handles the referral processing function, these functions could be performed by dedicated, physically distinct computer systems or sites.

    ((See '141 Patent, 10:24-28); see also '141 Patent 9:61 (refers associate to access "merchant Web site 106 and the enrollment function," the latter of which is performed on each user's website).)

    Fourth, Amazon contends that Discovery's limitation is inconsistent with the prosecution history. In this vein, Amazon avers that Discovery's construction contradicts the intention of the inventors who specifically did not limit claims to "software running `on the merchant's Web site.'" Id. 25-26 (noting that Claim 31 of the '141 Patent limits the "systems" to "run on a common World Wide Web site"). Further, Amazon points to independent and dependent claims that function to limit some of the terms in specific ways. See Dow Chem. Co. v. United States, 226 F.3d 1334, 1341-42 (Fed.Cir.2000) (explaining that claims are presumed to have different scope, and an independent claim is broader than dependent claims).

    On the other hand, Discovery argues that the entirety of Claim 36's specification supports its construction as "nothing . . . contemplates a different implementation" from software running on a merchant's Web site. Discovery points to the "Abstract" and "Summary of the Invention" to support its contention that Amazon reads the term too broadly. See Disc. Resp. 14 (noting that Figure 1, '141 Patent at 6:2-4 refers to all embodiments); see C.R. Bard, Inc. v. U.S. Surgical Corp, 388 F.3d 858, 864 (Fed.Cir.2004) (emphasizing statements regarding nature of the overall invention from the Summary of Invention).

    Although Discovery points to portions in Amazon's patents that support its inclusion of "on the Merchant's Web site" the support is tenuous. The language that Discovery points to is in the Abstract and Summary of the Invention sections. Also, Discovery's arguments seem tailored to summary judgment instead of claim construction. Discovery's construction also defines the terms too narrowly by only using "software" and "on the Merchant's website." However, Amazon's proposed construction includes the vague term "software/hardware." Thus, the Court will adopt Amazon's construction but with the substitution of "and" for the "/".

    b. web site

    --------------------------------------------------------
                         Amazon's             Discovery's
                         Proposed               Proposed
    Terms & Patent(s)   Construction          Construction
    ---------------------------------------------------------
    web site            "A computer           "a computer
                        system that           system that
                        serves informa-       serves informa-
                        tional content        tional content
                        over a network        over a network
                        using the stan-       using standard
                        dard protocols        Internet proto-
                        of the World          cols and corre-
                        Wide Web.             sponding to a
    

    *680
                        Typically, a          particular Inter-
                        Web site corre-       net domain
                        sponds to a           name, such as
                        particular Inter-     `amazon.com,'
                        net domain            and which en-
                        name, such as         compasses the
                        `amazon.com,'         hardware and
                        and includes the      software server
                        content associat-     components that
                        ed with a par-        serve the infor-
                        ticular organiza-     mational con-
                        tion. As used         tent and the
                        herein, the term      hardware and
                        is generally in-      software compo-
                        tended to en-         nents that in-
                        compass both          teract with the
                        (i) the hard-         server compo-
                        ware/                 nents to per-
                        software server       form additional
                        components that       Web site
                        serve the infor-      functions"
                        mational con-
                        tent over the
                        network, and
                        (ii) the `back
                        end' hard-
                        ware/software
                        components, in-
                        cluding any
                        non-standard or
                        specialized com-
                        ponents, that
                        interact with
                        the server com-
                        ponents to per-
                        form services
                        for Web site
                        users."
    '133 Patent
    

    Amazon argues that its construction of "web site" is proper based on (1) the definition in the Patent itself; (2) intrinsic evidence (i.e., specialization and prosecution histories); and (3) the plain and ordinary meaning of the term. Specifically, Amazon asserts that where the '141 Patent specification explicitly provides a detailed description of web site, no further construction of the term is warranted. (See Def. Resp. 12 (citing "Glossary of Terms and Acronyms" list, '141 Patent 4:27-5:67); see Vitronics, 90 F.3d at 1582 (holding that definitions in patents control).)

    Amazon argues that web site need not be construed, and argues that the exact definition as provided in the patent should apply, whereby web site was defined as:

    A computer system that serves informational content over a network using the standard protocols of the World Wide Web. Typically, a Web site corresponds to a particular Internet domain name, such as `amazon.com,' and includes the content associated with a particular organization. As used herein, the term is generally intended to encompass both (i) the hardware/software server components that serve the informational content over the network, and (ii) the `back end' hardware/software components, including any non-standard or specialized components, that interact with the server components to perform services for Web site users.

    See '141 Patent, 5:5-14; see Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed.Cir.1998) ("[A] patent applicant has elected to be a lexicographer by providing an explicit definition in the specification for a claim term . . . the definition selected by the patent applicant controls.")

    Therefore, as dictated by Renishaw, where a patent applicant provides an explicit definition, that definition must be applied by the Court. 158 F.3d at 1250; accord Phillips, 415 F.3d at 1316 (citing Innova/Pure Water, Inc. v. Safari Water Filtration Sys., 381 F.3d 1111 (Fed.Cir. 2004) (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.")). However, a patent lexicography must also appear "with reasonable clarity, deliberateness, and precision" prior to affecting the claim. Renishaw, 158 F.3d at 1249 (quoting In re Paulsen, 30 F.3d 1475, 1480 (Fed.Cir. 1994)).

    Discovery, in opposition, argues that Amazon's construction of web site is improper because (1) Amazon's definition of web site is vague and imprecise and thus not controlling; (2) '141 Patent's specification supports deleting "generally intended" and "typically" and requiring both "hardware *681 and software." (See Disc. Resp. 36-38.)

    While Amazon provided a definition in the patent itself and thus, deserves deference, Amazon's definition includes wording that is not sufficiently precise, for example: "typically," "generally intended to," and "hardware/software." Thus, the Court will adopt a definition that is a fusion of the two: "A computer system that serves informational content over a network using the standard protocols of the World Wide Web. A Web site corresponds to a particular Internet domain name, such as `amazon.com,' and includes the content associated with a particular organization. As used herein, the term encompasses both (i) the hardware and software server components that serve the informational content over the network, and (ii) the `back end' hardware and software components, including any non-standard or specialized components, that interact with the server components to perform services for Web site users."

    c. request message

    --------------------------------------------------------------
                         Amazon's         Discovery's
                         Proposed          Proposed
    Terms & Patent(s)  Construction      Construction
    --------------------------------------------------------------
    request message    No construction   "a uniform re-
                       needed.           source locator
                                         address that
                                         includes the ad-
                                         dress for the
                                         item's product
                                         detail page on
                                         the merchant's
                                         Web site"
    '141 Patent        If construed:
                       "communication
                       requesting a
                       Web page corre-
                       sponding to an
                       item offered for
                       sale"
    --------------------------------------------------------------
    

    Amazon contends that Claim 1 uses "request message," should be construed as "communication requesting a Web page corresponding to an item offered for sale," which comports with the surrounding claim language and summarizes what is being requested—a Web page corresponding to the "item identifier." (See Amazon Br. 37.)

    Discovery argues that the "request message" is a URL based on Amazon's repeated reference to a "referral link" in its specifications which seems to be synonymous with the "request message" as described in the claim. However, this seems incorrect. The referral link seems to be what the customer clicks on to generate the "request message." Thus, as Amazon's proposed construction seems to be supported by the claim language and specifications, the Court will adopt Amazon's definition.

    d. determining . . . compensation/determines. . . compensation

    --------------------------------------------------------------
                          Amazon's         Discovery's
                          Proposed          Proposed
    Terms & Patent(s)   Construction      Construction
    --------------------------------------------------------------
    Determining ...     No construction   "calculating/
    compensation/       needed.           calculates a
    Determines ...                        proper amount
    compensation                          of
                                          compensation"
    '141 Patent
    --------------------------------------------------------------
    

    Amazon contends that Claims 17 and 36 of the '141 Patent involve determining the compensation system for the associates who refer customers who purchase items off the merchant's web site. As such, the claim is particularly clear as it uses common language known by laypersons. Amazon argues Discovery's construction is improper by demonstrating that there is permissible language used as to whether to include calculating an amount in the compensation and requiring that the calculation must occur. The patent refers to the calculation as permissive and Discovery's definition would improperly require it.

    On the other hand, Discovery points to the specifications to show that Amazon repeatedly used "calculated" where they were referring to the process of "determining compensation." However, the *682 specifications do not limit it to "calculated" only, so Amazon's broader language should control. Although it is hard to see how "determine" would mean anything other than "calculate," the claim language should be used if its meaning is plain and ordinary. Thus, the Court will not define this term.

    IV. CONCLUSION

    For the reasons stated above, the Court will adopt the claim term definitions below. An appropriate order will follow.

    ------------------------------------------------------------------------
                                DISCOVERY PATENTS
    ------------------------------------------------------------------------
         Terms & Patent(s)                 Construction
    ------------------------------------------------------------------------
    broadcast                      sent to multiple recipients
    '851 Patent
    ------------------------------------------------------------------------
    book                           an electronic version of the
                                   textual or graphical infor-
                                   mation contained in a work
                                   such as a novel, encyclope-
                                   dia, article, magazine,
                                   newspaper, catalogue, peri-
                                   odical, manual, speech, law,
                                   court decision, or testimony
    '690 Patent
    electronic book
    '851 Patent
    ------------------------------------------------------------------------
    encrypting the selected        encrypting data represent-
    electronic book                ing the text and graphics of
                                   an electronic book
    '851 Patent
    ------------------------------------------------------------------------
    decrypting the encrypted       decrypting the encrypted
    selected electronic book       data representing text and
                                   graphics of an electronic
                                   book
    '851 Patent
    ------------------------------------------------------------------------
    information that allows        information that allows
    encryption and decryption      encryption and decryption
    of the electronic book and     of the electronic book, and
    encryption and decryption      encryption and decryption
    of the encryption and          of the encryption and
    decryption keys                decryption keys
    '851 Patent
    ------------------------------------------------------------------------
    key generator                  No construction needed.
    '851 Patent
    ------------------------------------------------------------------------
    list of titles of available    No construction needed.
    electronic books
    '851 Patent
    list of titles of available 
    books
    '690 Patent
    ------------------------------------------------------------------------
                                 AMAZON PATENTS
    ------------------------------------------------------------------------
         Terms & Patent(s)                Construction
    ------------------------------------------------------------------------
    associate registration sys-    software and hardware
    tem                            used in registering associ-
                                   ates
    '141 Patent
    ------------------------------------------------------------------------
    associate enrollment           software and hardware
    system                         used in enrolling associates
    '141 Patent
    ------------------------------------------------------------------------
    compensation system            software and hardware
                                   used in compensating asso-
                                   ciates
    '141 Patent
    ------------------------------------------------------------------------
    online registration system     software and hardware
                                   used in registering associ-
                                   ates online
    '141 Patent
    ------------------------------------------------------------------------
    referral processing system     software and hardware
                                   used in processing referrals
    '141 Patent
    ------------------------------------------------------------------------
    report generation system       software and hardware
                                   used in registering
                                   associates
    '141 Patent
    ------------------------------------------------------------------------
    web site                       A computer system that
                                   serves informational con-
                                   tent over a network using
                                   the standard protocols of
                                   the World Wide Web. A
                                   Web site corresponds to a
                                   particular Internet domain
                                   name, such as `ama-
                                   zon.com,' and includes the
                                   content associated with a
                                   particular organization. As
                                   used herein, the term en-
                                   compasses both (i) the
                                   hardware and software ser-
                                   ver components that serve
                                   the informational content
                                   over the network, and (ii)
                                   the `back end' hardware
                                   and software components,
                                   including any non-standard
                                   or specialized components,
                                   that interact with the ser-
                                   ver components to perform
                                   services for Web site users
    '133 Patent
    ------------------------------------------------------------------------
    request message                communication requesting a
                                   Web page corresponding to
                                   an item offered for sale
    '141 Patent
    ------------------------------------------------------------------------
    Determining ...                No construction needed.
    compensation/
    Determines ...
    compensation
    '141 Patent
    ------------------------------------------------------------------------
    

    A computer system that serves informational content over a network using the standard protocols of the World Wide Web. A Web site corresponds to a particular Internet domain name, such as `amazon.com,' *683 and includes the content associated with a particular organization. As used herein, the term encompasses both (i) the hardware and software server components that serve the informational content over the network, and (ii) the `back end' hardware and software components, including any non-standard or specialized components, that interact with the server components to perform services for Web site users

    ORDER

    AND NOW, this 4th day of February, 2011, for the reasons set forth in the Court's accompanying memorandum dated February 4, 2011, it is ORDERED that the disputed claim terms shall be defined as follows:

    ------------------------------------------------------------------------
                   DISCOVERY PATENTS
    ------------------------------------------------------------------------
        Terms & Patent(s)             Construction
    ------------------------------------------------------------------------
    broadcast                      sent to multiple recipients
    '851 Patent
    ------------------------------------------------------------------------
    book                           an electronic version of the
                                   textual or graphical infor-
                                   mation contained in a wor]
                                   such as a novel, encyclope-
                                   dia, article, magazine,
                                   newspaper, catalogue, peri-
                                   odical, manual, speech, lam
                                   court decision, or testimony:
    '690 Patent
    electronic book
    '851 Patent
    ------------------------------------------------------------------------
    encrypting the selected        encrypting data represent-
    electronic book                ing the text and graphics of
                                   an electronic book
    '851 Patent
    ------------------------------------------------------------------------
    decrypting the encrypted       decrypting the encrypted
    selected electronic book       data representing text and
                                   graphics of an electronic
                                   book
    '851 Patent
    ------------------------------------------------------------------------
    information that allows        information that allows
    encryption and decryption      encryption and decryption
    of the electronic book and     of the electronic book, am
    encryption and decryption      encryption and decryption
    of the encryption and de-      of the encryption and
    cryption keys                  decryption keys
    '851 Patent
    ------------------------------------------------------------------------
    key generator                  No construction needed.
    '851 Patent
    ------------------------------------------------------------------------
    list of titles of available    No construction needed.
    electronic books
    '851 Patent
    list of titles of available 
    books
    '690 Patent
    ------------------------------------------------------------------------
    

    ------------------------------------------------------------------------
                   AMAZON PATENTS
    ------------------------------------------------------------------------
        Terms & Patent(s)               Construction
    ------------------------------------------------------------------------
    associate registration         software and hardware
    system                         used in registering
                                   associates
    '141 Patent
    ------------------------------------------------------------------------
    associate enrollment           software and hardware
    system                         used in enrolling associates
    '141 Patent
    ------------------------------------------------------------------------
    compensation system            software and hardware
                                   used in compensating
                                   associates
    '141 Patent
    ------------------------------------------------------------------------
    online registration system     software and hardware
                                   used in registering
                                   associates online
    '141 Patent
    ------------------------------------------------------------------------
    referral processing system     software and hardware
                                   used in processing referrals
    '141 Patent
    ------------------------------------------------------------------------
    report generation system       software and hardware
                                   used in registering
                                   associates
    '141 Patent
    ------------------------------------------------------------------------
    web site                       A computer system that
                                   serves informational con-
                                   tent over a network using
                                   the standard protocols of
                                   the World Wide Web. A
                                   Web site corresponds to a
                                   particular Internet domain
                                   name, such as `ama-
                                   zon.com,' and includes the
                                   content associated with a
                                   particular organization. As
                                   used herein, the term en-
                                   compasses both (i) the
                                   hardware and software ser-
                                   ver components that serve
                                   the informational content
                                   over the network, and (ii)
                                   the `back end' hardware
                                   and software components,
                                   including any non-standard
                                   or specialized components,
                                   that interact with the ser-
                                   ver components to perform
    '133 Patent                    services for Web site users
    ------------------------------------------------------------------------
    request message                communication requesting a
                                   Web page corresponding to
                                   an item offered for sale
    

    *684
    '141 Patent
    ---------------------------------------------------------
    Determining ...        No construction needed.
    compensation/
    Determines ...
    compensation
    '141 Patent
    ---------------------------------------------------------
    

    AND IT IS SO ORDERED.

    NOTES

    [1] The Court has jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338.

    [2] On October 2, 2008, Plaintiff sent Defendant a letter identifying the infringing conduct and products, and alleging that certain patents for products Defendant was using and/or selling required a license. (Doc. no. 7 at 17.)

    [3] As referenced in the pleadings, the disputed patents were as follows:

    —  Count I:    The '141 Patent is entitled
                  "Internet-Based Customer
                  Referral System," issued on Feb. 2,
                  2000
    — Count II:   The '133 Patent is entitled
                  "Internet-Based Customer
                  Referral System," issued on Feb.
                  26, 2000
    — Count III:  The '851 Patent is entitled "Electronic
                  Book Security and Copyright
                  Protection System," issued on Nov.
                  20, 2007, seeking declaratory relief
                  based on disputed liability, patent
    

                  invalidity, inequitable conduct and
                  patent misuse
    — Count IV:   The '690 Patent is entitled "Electronic
                  Book Selection and Delivery
                  Service," issued on Nov. 15, 1999,
                  seeking declaratory relief on the
                  same bases
    — Count V:    The '173 Patent is entitled "Portable
                  Electronic Book Viewer," issued
                  to John S. Hendricks on April
                  29, 2003, seeking declaratory relief
                  on the same bases
    — Count VI:   The '501 Patent is entitled "Electronic
                  Book Selection and Delivery
                  System Having Encryption and
                  Security Features," issued to John
                  S. Hendricks on Nov. 20, 2007,
                  seeking declaratory relief on the
                  same bases
    — Count VII:  The '788 Patent is entitled "Electronic
                  Book Secure Communication
                  with Home Subsystem," issued to
                  John S. Hendricks on Feb. 26,
                  2008, seeking declaratory relief on
                  the same bases
    — Count VIII: The '286 Patent is entitled "Electronic
                  Book Electronic Links,"
                  issued to John S. Hendricks and
                  Michael Asmussen on July 15, 2008,
                  seeking declaratory relief on the
                  same bases.
    

    [4] See Hoganas AB v. Dresser Industries, Inc., 9 F.3d 948, 951 (Fed.Cir.1993) (declining to incorporate unstated limitations that could have been added by patentee, but were not).

Document Info

DocketNumber: Civil Action No. 10-600-ER

Citation Numbers: 769 F. Supp. 2d 662

Judges: Eduardo C. Robreno

Filed Date: 2/4/2011

Precedential Status: Precedential

Modified Date: 10/30/2014

Authorities (27)

Herbert Markman and Positek, Inc. v. Westview Instruments, ... , 517 U.S. 370 ( 1996 )

Wavetronix v. EIS Electronic Integrated Sys. , 573 F.3d 1343 ( 2009 )

Gemtron Corp. v. Saint-Gobain Corp. , 572 F.3d 1371 ( 2009 )

Abbott Laboratories v. Sandoz, Inc. , 566 F.3d 1282 ( 2009 )

Computer Docking Station Corp. v. Dell, Inc. , 519 F.3d 1366 ( 2008 )

Hoganas Ab v. Dresser Industries, Inc. , 9 F.3d 948 ( 1994 )

In Re David C. Paulsen , 30 F.3d 1475 ( 1994 )

Herbert Markman and Positek, Inc. v. Westview Instruments, ... , 52 F.3d 967 ( 1995 )

Southwall Technologies, Inc. v. Cardinal Ig Company , 54 F.3d 1570 ( 1995 )

Vitronics Corporation v. Conceptronic, Inc. , 90 F.3d 1576 ( 1996 )

Comark Communications, Inc. v. Harris Corporation , 156 F.3d 1182 ( 1998 )

Renishaw Plc v. Marposs Societa' Per Azioni and Marposs ... , 158 F.3d 1243 ( 1998 )

advanced-display-systems-inc-and-bao-gang-wu-third-party-v-kent-state , 212 F.3d 1272 ( 2000 )

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Masco Corporation v. United States, and Mosler, Inc. And ... , 303 F.3d 1316 ( 2002 )

Genzyme Corporation and Mount Sinai School of Medicine of ... , 346 F.3d 1094 ( 2003 )

superguide-corporation-v-directv-enterprises-inc-directv-inc-directv , 358 F.3d 870 ( 2004 )

Liebel-Flarsheim Company and Mallinckrodt Inc. v. Medrad, ... , 358 F.3d 898 ( 2004 )

bancorp-services-llc-v-hartford-life-insurance-company-and , 359 F.3d 1367 ( 2004 )

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