Monday, January 07, 2008

W.D. Wisconsin - Disclosure in Specification Limits Claim Term, Vitiating Infringement

Netcraft Corp. v. eBay, Inc. (3:07-cv:00254-bbc), December 10, 2007

Netcraft Corporation owns several patents related to internet billing methods. It argued that Ebay, Inc. and PayPal, Inc. are infringing its patents by providing a third party payment system to customers wishing to make secure purchases over the Internet.

Defendants moved for summary judgment, arguing that the phrase “providing a communications link through equipment of a third party” recited in in the patents imposes a limitation that a third party, such as a company like defendants, must provide internet access to the customer. It was conceded by plaintiffs that defendants do not provide their customers with access to the Internet.

The question in dispute was whether “providing a communications link through equipment of the third party” means providing Internet access to the customer. Defendants say it does; plaintiff says the phrase is not so limited.

The court noted that the claim itself does not define “communications link” the way defendants propose, and that the lay understanding of “communications link” is much broader than “internet access.” However, relying on the CAFC's Phillips decision, Judge Crabb noted that "courts cannot look at the claims in isolation or at just the lay understanding of them, but must consider the patent as a whole."

Turning to the patents,

The phrase “communications link” is never used in the specification, which is the same in both asserted patents, but the specification makes it unmistakably clear that the invention requires that the third party provide internet access to the customer. Because the phrase “communications link” is the only part of the claim that could incorporate this requirement, I construe “providing a communications link” to mean “providing customers access to the internet.”

The first two sentences of the abstract support this construction: “An Internet billing method comprises establishing an agreement between an Internet access provider and a customer . . . The provider creates access to the Internet for the customer.” Thus, the abstract is unambiguous: the third party intermediary is “an Internet access provider” and that provider does in fact connect the customer to the internet.

[T]he same understanding of the invention is repeated throughout the Summary of the Invention as well. In describing the invention, the patent states that “a provider establishes an agreement with a customer,” and even more explicitly that “the provider creates access to the Internet for the customer through the provider’s equipment." In countless instances, the specification refers to the third party as the “provider,” which plaintiff conceded at the claim construction hearing means “internet access provider.”
Interestingly, the plaintiff argued that the dependent claims explicitly recited an “Internet access provider," and that the independent claim would be "meaningless" under the proposed construction under the doctrine of claim differentiation. Nevertheless, the court remained unconvinced:
Plaintiff’s argument has some surface appeal, but I agree with defendants that a reasonable reading of claim 6 is that it simply lists examples of entities that may provide customers with access to the internet. Thus, in claim 6, “Internet access provider” means a company like America On-Line, “whose only business is to offer connection to the Internet,” the other examples, such as “a cable television company,” are entities that may offer internet access as an additional service.

This reading is supported by the specification, which contemplates in multiple locations the possibility that a cable television company or telephone company will provide the customer with internet access. E.g., ‘739 pat., col. 1, lns. 29-30 (“[T]elephone companies and cable television companies have announced plans to provide Internet access.”); id. at col. 2, lns. 64-65 (access to internet may be provided by “cable television companies” or “telephone companies”). In any event, plaintiff’s reliance on a presumption of claim differentiation cannot overcome the plain language of the patents.
Also of interest was the fact that the court made the construction without relying on the prosecution history:
Both sides advance arguments supporting their view of how the prosecution history informs the meaning of “communications link,” but it is unnecessary to consider those arguments when the patent itself is clear. Phillips, 415 F.3d at 1317 (“[B]ecause the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes.”)
View/download the opinion here (link)

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