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Edisync Systems, LLC v. Adobe Systems, Inc.

United States District Court, D. Colorado

June 16, 2017

EDISYNC SYSTEMS, LLC, Plaintiff,
v.
ADOBE SYSTEMS, INC., Defendant.

          OPINION AND ORDER CONSTRUING CLAIMS [1]

          Marcia S. Krieger Chief United States District Judge.

         THIS MATTER comes before the Court pursuant to the parties' Joint Amended Claim Construction Chart (# 88), the parties initial claim construction briefs (# 93, 94), the parties' responsive briefs (# 104, 105), and the parties' reply briefs (# 108, 109).

         BACKGROUND

         The claims in this action concern U.S. Patent No. 5, 799, 320 (“the ‘320 Patent” or simply “the Patent”), awarded to John Klug, [2] which covers a “Remote Multiple-User Editing System and Method.” It describes a group of interconnected personal computers, linked in such a way that the users may share and simultaneously edit a file that is stored on only one of the computers. In short, the method entails a “host” computer -- which holds the file and associated application software - that repeatedly “polls” the remote computers for their input or other functions to be performed on the file.

         As discussed below, the Patent has been the subject of several proceedings. It has been re-examined on three separate occasions by the U.S. Patent and Trademark Office. The first re-examination resulted in the cancellation of all original claims and the addition of new claims. A second re-examination prompted Mr. Klug to amend some of the new claims, including those at issue here, to avoid cancellation due to the existence of prior art. A third re-examination confirmed the patentability of certain of the new claims and cancelled others.

         In addition, the Plaintiff previously brought suit in this Court on the same Patent against a different Defendant. EdiSync Systems, Inc. v. Centra Software, Inc., D.C. Colo. Civ. Case No. 03-cv-01587-WYD-MEH. In that case a claim construction ruling was issued by Judge Daniel in which he construed most of the same claim terms that are at issue in this action. Id. at Docket # 258. Judge Daniel later re-construed one of the claim terms in light of a USPTO re-examination, significantly narrowing his prior construction of that term. Id. at Docket # 333. Shortly thereafter, the parties reached a settlement of the dispute and the case was dismissed, with no judgment having been entered by the Court.[3]

         Pursuant to Markman v. Westview Instruments, 517 U.S. 370 (1996), the parties now request construction of 29 terms used in the Patent.

         ANALYSIS

         A. Claim construction standards

         The fundamental purpose of a patent is to give notice to others of that in which the inventor claims exclusive rights. Oakley Inc. v. Sunglass Hut International, 316 F.3d 1331, 1340 (Fed. Cir. 2003). Thus, the focus of claim construction is ascertaining how a reasonable competitor would interpret the actual claim language, not what the inventor subjectively intended the language to mean. Id. at 1340-41. The words used in the patent are evaluated according to their “ordinary and customary meaning, ” as would be understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc). In some circumstances, the specification may reveal that the inventor specifically - albeit idiosyncratically - defined a term in a way that might differ from the meaning it would otherwise be given. If the intrinsic record clearly discloses that the inventor resorted to his or her own peculiar lexicography, the Court gives effect to the inventor's unique idiom; however, if the inventor used particular words without giving a clear indication of an intent to endow them with an unusual meaning, the Court will give those words their ordinary and customary meaning in the art, notwithstanding the inventor's subjective intent to invoke a different definition. See e.g. Laryngeal Mask Co. v Ambu, 618 F.3d 1367, 1372 (Fed. Cir. 2010).

         To give meaning to the inventor's language, 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.” Phillips, 415 F.3d at 1314. Among those sources are: (i) the words of the claims themselves; (ii) the remainder of the patent's specification; (iii) the prosecution history of the patent; (iv) extrinsic evidence concerning relevant scientific principles; (v) the common meanings of technical terms used; and (vi) the state of the art at the time of the invention. Id. Terms must be construed in light of the entirety of the patent, not just in the context of the particular claim(s) they appear in. Id. at 1313. In other words, claim language must be read in conjunction with the more general and descriptive specification portion of the patent; indeed, the specification is often “the single best guide to the meaning of a disputed term.” Id. at 1315. Because the patent is examined as a whole, the Court assumes that claim terms will normally be used consistently throughout the patent, and thus, the meaning of a term used in one claim can illustrate the meaning of that same term used elsewhere in the patent. Id. at 1314.

         As with the specification, evidence of the prosecution history of the patent can also be considered as intrinsic evidence of how the USPTO and the inventor understood the patent. Id. at 1317. The prosecution history reflects “an ongoing negotiation between the PTO and the applicant, ” and can sometimes demonstrate that the inventor limited or disclaimed some portion of a claim. Id. At the same time, because the prosecution history predates the final patent language, the prosecution history “often lacks the clarity of the specification and thus is less useful for claim construction purposes.” Id.

         Extrinsic evidence of disputed terms - that is, “all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises” - can also shed light on the proper construction to be given to those terms, but extrinsic evidence “in general [is] less reliable than the patent and prosecution history in determining how to read claim terms.” Id. at 1318. The court in Phillips articulated a variety of reasons why a court construing a patent should be wary of relying too heavily on extrinsic evidence, and cautions that, while admissible and potentially probative, courts “should keep in mind the flaws inherent in each time of [extrinsic] evidence and assess that evidence accordingly.” Id. at 1318-19.

         B. Particular claim terms

         1. General description of invention

         This patent describes a process by which a number of users of networked computers jointly and simultaneously view and edit a document, database, or other computer file. The process involves a “host” computer, on which the document or file physically resides, and the host computer is electronically connected to one or more “remote” computers.[4] As exemplified by the flowchart shown as Figure 3A, the host computer begins by sending the first screen of the file to all of the remote computers. Then the host computer “polls” - that is, contacts -- the first remote computer to inquire whether the user of that remote computer has made a change to the file. If so, the host computer makes the requested change to the file and sends any updated display output to all of the connected computers. The host computer then polls the next remote computer as to whether its user has made a change to the file, and if so, processes any change and updates the output to all users. This process continues as to each remote computer, then repeats. The patent further contemplates situations in which users are viewing and interacting with different parts of the file, requiring that the host computer to monitor the portion of the document that each remote user is viewing and editing and making appropriate changes to all remote users' views when a change is made elsewhere in the file.

         To increase efficiency, the patent contemplates that some remote users (and, during certain operations that tax the host computer's capabilities, all users) will not be involved in active editing, but rather, will be spectators for a period of time. It anticipates that these such computers will be placed in a “locked out” status by the host, by which they are no longer polled for changes and are merely provided updates of the file's output when other users make changes.[5] When appropriate, users who are locked out can have their ability to access reinstated upon submission of the appropriate command, at which point the polling of their computer resumes.

         The specification also describes embodiments in which there are no mechanisms for polling the remote computers or storing edit commands in a buffer; these more anarchic embodiments contemplate that all user input is provided directly to the host computer in realtime, raising the distinct possibility of conflicting editing commands, overwritten edits, and generalized chaos that, Mr. Klug suggests, can be prevented only through careful external coordination among the users themselves.

         2. Primary disputed claims

         The parties' Joint Claim Construction Chart (# 88) lists more than two dozen claim terms to construe. However, the claim construction briefs focus on a subset of nine key terms. For purposes of economy and due to the parties' priortization, the Court limits its construction to those nine key terms.

         a. “multi-tasking processing means”

         All of the claims at issue in this litigation require the host computer to have “multitasking processing means” (hereafter “MPM”). The MPM serves two purposes: “coordinating the execution of . . . file editing operations” and “coordinating the transfer of data” to and from the host computer. The parties agree in most respects as to the construction to be given to this term; they disagree only in two particulars: (i) whether the MPM requirement necessarily requires the host computer to be running a multi-tasking operating system, or whether any operating system that may be supplemented by software that effectively simulates a multitasking environment can suffice; and (ii) whether all of the steps discussed in Fig. 3A (namely, “establishing voice communication, ” “polling, ” sending the first screen of the file to all displays, and transferring the completed file to the remote computers) are necessarily part of the software component of the MPM, or whether some functions may be omitted in certain situations or embodiments.

         (i) operating system

         Turning first to the question of whether the MPM requires an operating system capable of multi-tasking or merely a single-tasking operating system enhanced by software that simulates a multi-tasking environment, the Court finds that the specification contemplates that the functions described can be performed by a single-task operating system supplemented with mutli-tasking software. It explains that “Multi-tasking can be implemented through the PC's . . . operating system, the application software, the operating software, or some combination thereof.” (7:27-29). It goes on to state:

Software is also available that can effectively convert a single-tasking personal computer into a multi-tasking machine. In this way, a single-tasking personal computer is able to run a plurality of different tasks or programs simultaneously. Until recently, however, few presently available personal computers were powerful enough to perform effective multi-tasking through the use of software. . . Within a relatively short period of time, it is expected that personal computers will be widely available that operate at many times [the necessary] speed. (7:51-66).

         The Plaintiff concedes that the patent itself contemplates the possibility of a single-task operating system, supplemented by multi-tasking software, but argues that Mr. Klug disclaimed that alternative on two occasions during the patent reexamination process. Although a patent may be unambiguous in its terms, the patentee may choose to disclaim or disavow certain claims during the course of prosecuting the patent before the Patent & Trademark Office. Poly-America v. API Industries, Inc., ___ F.3d___, 2016 WL 5956745 (Fed. Cir. Oct. 14, 2016). A disavowal requires the patentee to make clear, by unequivocal evidence, that the claimed invention includes or does not include a particular feature. Id. Here, the Plaintiff points to two items of evidence that, it contends, demonstrate that Mr. Klug disavowed any claim to the invention running on a single-task operating system using multi-tasking software.

         The first item is the August 2005 affidavit of Gary Nutt, submitted in conjunction with a 2004 reexamination of the Patent. This reexamination focused, among other things, on the Patent's reference to a “single-user application” that the host computer uses to perform editing of the document or file. Items of alleged prior art described a similar process being performed by a “multi-user application.” Mr. Nutt's affidavit makes clear that “multi-tasking is fundamentally different from multi-user, ” and takes the position that the Patent necessarily describes a single-user application “because it specifically requires the use of multi-tasking to accomplish interactivity.” (In other words, an application specifically designed for multiple simultaneous users would not require a “multi-tasking” environment to run in, because, Mr. Klug noted, “the multi-user application program would already have facilitated and supported the desired interactivity” [JA445].[6]) Although Mr. Nutt's affidavit makes a passing comment that “the ‘320 Patent discloses that “interactivity is accomplished, in part, by using a multi-tasking operating system” (emphasis added), the context of the statement makes clear that Mr. Nutt is intending to distinguish a single-user application in a multi-tasking environment from a multi-user application, not disavowing the Patent's explicit reference to the possibility that the required multi-tasking environment could be created by multi-tasking software instead of a multi-tasking operating system. Accordingly, the Court finds that Mr. Nutt's statement cannot be understood to be an unambiguous disavowal of the specification's suggestion that an appropriate multitasking environment can be created by a single-task operating system running multi-tasking software.

         The second item of evidence is more supportive of disavowal, although some context is necessary. The Patent was reexamined a second time in 2009, when third parties alleged that prior art -- namely, U.S. Patent No. 4, 939, 509 (“the Bartholomew patent”), among others - anticipated Mr. Klug's invention. The Bartholomew patent appears to contemplate a host computer running a single-user application “such as a spread sheet or an editor, ” plus software that “enables [the host] to function as a time-sharing computer system” that receives commands from other networked computers. In essence, then, it appears that the Bartholomew patent anticipated Mr. Klug's notion of a host computer using multi-tasking software to enable it to interact with other computers, but does not necessarily contemplate a multi-tasking operating system performing that task.[7] In response, Mr. Klug argued that the Bartholomew patent did not describe an actual “multi-tasking” environment, but rather, described a single-tasking environment where the host computer was either performing edits to the file or document or receiving instructions from the remote computers, but never both simultaneously. Notably, this Court does not understand Mr. Klug to have drawn any differentiation at that time between Bartholomew's “multi-tasking via software” arrangement and a “multi-tasking via operating system” arrangement. The Patent Office eventually concluded that the Bartholomew patent did not anticipate Mr. Klug's patent, but based that decision on different grounds, leaving the operating system question unaddressed.

         The third reexamination proceeding occurred in 2012, ostensibly as a result of the proceedings before Judge Daniel. The party requesting reexamination argued that the Plaintiff's submissions to Judge Daniel advocated a construction of the Patent that was at odds with the reasoning of the Patent Office in upholding the claims during the 2009 reexamination. The reexamination request also appeared to incorporate arguments raised in 2009, including the contention that the Bartholomew patent also taught the use of a multi-tasking environment via software. In May 2013, Mr. Klug submitted a lengthy brief addressing the various issues raised in the reexamination, and it is a portion of that brief that the Plaintiff relies upon here to assert that Mr. Klug disavowed the creation of a multi-tasking environment via a single-tasking operating system augmented by multi-tasking software. Specifically, the brief states:

In short, the hardware for the [MPM] functions . . . across all of Klug's embodiments include, at a minimum, . . . a multi-tasking operating system.
More specifically, each of Klug's independent claims recite and require as part of the MPM, the use of a multi-tasking operating system, such as OS/2, and not some other form of “effective multitasking.” Notably, this position has been consistent throughout the prosecution of the ‘320 Patent [as he] previously argued that Klug required a multi-tasking operating system when discussing why a POSITA would recognize Klug as teaching use of a single user application program versus multi-user application programs, as discussed during the 1st Reexamination. [JA2073-74]

         The final sentence of the quoted text was supported by a footnote that referred back to Mr. Nutt's affidavit, discussed above, and further added that Mr. Klug “clearly and unequivocally argued that Klug requires use of a multi-tasking operating system and thereby clearly disavowed the use of any other techniques for accomplishing ‘effective' multi-tasking.”[8]

         This Court finds no merit in the Plaintiff's contention that it “clearly and unequivocally” disavowed the Patent's claim to software-based multi-tasking as early as the 2004 reexamination, nor in its contention that it has “consistent[ly]” maintained that position since. As noted above, the only authority the 2013 brief cites for that proposition is Mr. Nutt's affidavit, which does not disclaim software-based multi-tasking, much less do so in clear and unequivocal terms. Moreover, the Plaintiff has not pointed the Court to any other instance(s) of such “consistent” disavowals anywhere else in the lengthy reexamination record.

         At the same time, this Court is prepared to find that the 2013 brief is itself sufficiently clear and unambiguous in its disavowal of software-based multi-tasking. Although the statement that Mr. Klug “clearly and unequivocally . . . requires use of a multi-tasking operating system [and] disavow[s] the use of any other techniques for accomplishing effective multi-tasking” is yoked to an erroneous argument that Mr. Klug had asserted that position previously, the error does not diminish the language's clear intention to reflect disavowal now. Indeed, the disavowal of software-based multi-tasking at this time appears to be a cagey defensive move by Mr. Klug, as he seeks to preclude the possibility of invalidation of the Patent due to the prior art of Bartholomew. The Court might be reluctant to permit such a disavowal at this time if there was evidence that Mr. Klug had invoked the Patent's reference to ...


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