United States District Court, E.D. Virginia, Alexandria Division
[Copyrighted Material Omitted]
[Copyrighted Material Omitted]
For TomTom, Inc., Plaintiff, Counter Defendant: Adrienne Gail Johnson, Attison Leonard Barnes, III, Brian Himanshu Pandya, Karyn Kay Ablin, Wiley Rein LLP (DC), Washington, DC.
For Michael Adolph, Defendant, Counter Claimant, ThirdParty Plaintiff: Antigone Gabriella Peyton, LEAD ATTORNEY, Clyde Elbert Findley, Cloudigy Law PLLC, McLean, VA; Derek Yoshio Sugimura, Gilbert Oshinsky LLP, Washington, DC; Timothy Marshall Belknap, William Edgar Copley, Weisbrod Matteis & Copley PLLC, Washington, DC.
For TomTom International, B.V., Counter Defendant: Adrienne Gail Johnson, Attison Leonard Barnes, III, Karyn Kay Ablin, Wiley Rein LLP (DC), Washington, DC.
For TomTom North America, Inc., ThirdParty Defendant: Adrienne Gail Johnson, Karyn Kay Ablin, Wiley Rein LLP (DC), Washington, DC.
T. S. Ellis, III, United States District Judge.
This declaratory judgment action is a patent infringement suit. Plaintiff TomTom, Inc. (" TomTom" ), the putative infringer of U.S. Patent No. 6,356,836 (" the '836 patent" ) owned by defendant Michael
Adolph, seeks a declaration that the claims of the '836 patent are invalid and that TomTom does not infringe any valid claim of the '836 patent, which purports to cover a method for tracking data in a mobile Global Positioning System (" GPS" ) unit. Defendant Michael Adolph (" Dr. Adolph" ) not only opposes TomTom's request for a declaration but also counterclaims that TomTom infringes the '836 patent and seeks damages. As is typical in patent infringement actions, the parties here dispute the meaning of several patent claim terms and phrases, thereby requiring Markman  claim construction of the disputed terms and phrases. The resolution of these disputes is the subject of this memorandum opinion.
Plaintiff and counterclaim defendant TomTom is a Massachusetts corporation with its principal place of business in Massachusetts. TomTom sells personal navigation devices (" PNDs" ) that use software called " HOME." The HOME software gathers historical travel data stored on TomTom devices, including location information, time of travel for certain routes, and historical speed data. TomTom also sells PNDs and software including the " IQ Routes" system, which gathers travel data and uses the data to recommend routes with the shortest travel times. Finally, TomTom sells PNDs and software with the " HD Traffic" system, which uses real-time traffic data to recommend routes with shorter travel times.
Defendant and counterclaim plaintiff Michael Adolph, an individual residing in Germany, is the inventor and owner of the '836 patent, entitled " Method and Device for Generating, Merging and Updating of Destination Tracking Data," issued March 12, 2002. TomTom's complaint originally named AOT Systems GmbH (" AOT" ), a German corporation established by defendant Dr. Adolph in 2000, with its principal place of business in Germany. AOT is the exclusive licensee of the '836 patent. On August 3, 2012, TomTom amended its complaint to add Dr. Adolph as a second defendant. On September 14, 2012, AOT's motion to dismiss for lack of personal jurisdiction was granted, and all claims against AOT were dismissed, leaving Dr. Adolph as the sole defendant. TomTom, Inc. v. AOT Systems GmbH, 893 F.Supp.2d 785 (E.D. Va. 2012) (Order).
The '836 patent, which consists of 53 claims, recites in the two claims at issue--independent claim 1 and dependent claim 22--a method for generating and updating travel data for use in a destination-tracking system. This system, according to the claims in issue, includes the generation and storage of data by mobile units to record real routes and traffic conditions.
In February and March 2011, AOT sent two letters to TomTom alleging that TomTom infringed the '836 patent and its European counterparts and threatening to take legal action. On June 28, 2011, representatives of TomTom, Dr. Adolph, and AOT met in person to discuss the '836 patent. TomTom alleges that during the course of this meeting, representatives of Dr. Adolph and AOT reiterated the allegation that TomTom infringes the patent and its European counterparts, and they stated their intention to enforce those patents against TomTom. Dr. Adolph, in turn, alleges that, during the course of this meeting, the parties discussed AOT and Dr. Adolph's offer to license the German
counterpart of the '836 patent, but that the parties were unable to reach any licensing agreement.
On February 3, 2012, AOT filed a lawsuit in Germany against TomTom's customer, REWE Unterhaltungselektronik GmbH, seeking damages and injunctive relief for REWE's sales of TomTom products that AOT asserts infringe a European counterpart to the '836 patent. Thereafter, on May 11, 2012, TomTom filed this declaratory judgment suit, alleging that the '836 patent is invalid as obvious and anticipated by prior art, and that, in any event, TomTom does not infringe any valid claims of the '836 patent. On October 3, 2012, Dr. Adolph filed a counterclaim against TomTom, alleging that TomTom directly and indirectly infringes the '836 patent.
The '836 patent consists of 53 claims. Claims 1 and 22, the sole claims in issue, read as follows:
1. A method for generating and updating data for use in a destination tracking system of at least one mobile unit comprising:
Generating and storing traveled distance data in at least one storage device provided in said mobile unit at least at predetermined time intervals, wherein the traveled distance data represent traveled sections by at least a series of nodes Pi and to each node Pi geographical coordinates xi and yi are assigned;
Generating and storing section data in the storage device provided in the mobile unit, said section data being generated by selecting, from the traveled distance data, nodes Pj and Pk, which define contiguous sections PjPk, to which at least their geographical starting point and end point are assigned; and
Generating a section data file from the section data and storing the section data file in the storage device provided in the mobile unit, said section data file being continuously supplemented and/or updated with section data newly generated by the mobile unit.
22. The method according to claim 1, further comprising the step of determining absolute coordinates of the mobile unit using the Global Positioning System.
The parties dispute the meaning of the following nine claim terms or phrases, bolded above, in claims 1 and 22.
(i) " to each node Pi geographical coordinates xi and yi are assigned," as used in claim 1;
(ii) " absolute coordinates of the mobile unit," as used in claim 22;
(iii) " generating and updating data for use in . . . ," as used in the preamble of claim 1;
(iv) " destination tracking system of at least one mobile unit," as used in the preamble of claim 1;
(v) " section data," as used in claim 1;
(vi) " selecting from the traveled distance data, nodes Pj and Pk which define contiguous sections PjPk," as used in claim 1;
(vii) " storing traveled distance data in at least one storage device," as used in claim 1;
(viii) " storing section data in the storage device," as used in claim 1; and,
(ix) " storing the section data file in the storage device," as used in claim 1.
Further, TomTom argues that the term " storage device" in claim 1 is fatally indefinite and therefore cannot be construed. This argument, as explained below, is unpersuasive; the term " storage device" is not fatally indefinite, and therefore its meaning in claim 1 must be addressed.
A brief review of the prosecution history and prior art is central to a proper construction of the patent's disputed claim terms and phrases.
In 1997, the priority date for the '836 patent, consumers were beginning to use GPS units for navigation while driving. At that time, GPS units provided navigation by continuously analyzing the location of a moving vehicle and comparing that position data with stored road network data. The purposes of these GPS units were (i) to guide drivers to their destinations and (ii) to help drivers avoid areas of congestion or traffic obstructions while driving to their destination. Not surprisingly, therefore, substantial prior art exists in this technology field, and thus, it is equally unsurprising that the prosecution history of the '836 patent reflects various efforts to distinguish the prior art.
The USPTO examiner in October 2000 issued a first Office Action with regard to the '836 patent application, rejecting certain pending claims of the '836 patent application, including claims 1 and 22, as anticipated by U.S. Patent No. 4,982,332 (" the Saito patent" ). In doing so, the patent examiner stated that the Saito patent discloses the method of claim 1 and discloses generation of road data that involves adding new roads into a map database for use in an on-board navigational system. The patent examiner also rejected claim 22 because the Saito patent discloses that absolute coordinates of the mobile unit are determined using GPS technology.
Dr. Adolph, the '836 patent applicant, responded on February 28, 2001 by distinguishing the '836 patent on several grounds. First, Dr. Adolph explained that the '836 invention collects not only the geographic points of each section traveled, but also the direction of travel between the points and the traveled distance, the time relationship between the traveled points, and the fact that the traveled points are contiguous. Moreover, under the '836 patent, new geographic information will be stored each time the GPS unit travels a route at a different speed because the recording intervals are time based, so each time a different speed is used, different geographic data is located. Finally, whereas the Saito patent requires loading an initial database representing roadways into the system before additional travel information is collected, the '836 patent does not require loading any initial information relating to existing road networks in order to start generating and storing travel data.
On April 2, 2001, the patent examiner issued a second Office Action that maintained the rejection of claim 1 as anticipated by the Saito patent. Furthermore, the patent examiner stated that claim 1 was also anticipated by PCT Patent Appl. Publ. No. WO 92/02891 to Thad et al. (" Thad" ). Dr. Adolph submitted a response to this Office Action, distinguishing the Saito patent again on the grounds stated in the response to the first Office Action, namely, (1) that the Saito patent only stores points as coordinates, while the invention generates and stores section data consisting of the time relationship between traveled points, the direction of travel from one point to the next, and the fact that the points are connected; and (2) that the storage medium in the Saito patent cannot be updated, whereas the storage data file section of the '836 invention can be updated.
Furthermore, Dr. Adolph stated that the Thad reference only uses a GPS receiver to determine and store coordinates according to criteria that does not include time information or information about continuous sections. On August 29, 2001, the patent examiner allowed claims 1-53 of the '836 patent, which issued on March 12, 2002.
Over the nearly two decades since Markman, the elucidation of claim construction principles has become well-plowed ground, although the plowed furrows have not always been clear or straight lines. Nonetheless, the claim construction principles pertinent here are now well-settled. They are as follows:
Patent terms are presumed to have their ordinary and customary meaning, which is " the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc); see also Innova/Pure Water, Inc. v. Safari Water Filtration Sys., 381 F.3d 1111, 1116 (Fed. Cir. 2004). Accordingly, a person of ordinary skill in the art " is deemed to read the words used in the patent documents with an understanding of their meaning in the field, and to have knowledge of any special meaning and usage in the field." Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998).
In the event that a claim phrase or claim term's ordinary meaning is not apparent, then a court may--as would a person of ordinary skill in the art--look to " the words of the claims themselves,...the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art." Innova/Pure Water, 381 F.3d at 1116. In this regard, it is important to note that courts must adhere to the following hierarchy of evidence in construing disputed patent claim phrases and terms: (i) the claim language, (ii) the other intrinsic evidence-- i.e., the specification and the prosecution history, and (iii) the extrinsic evidence-- i.e., evidence that is external to the patent and prosecution history, such as expert testimony or treatises. See Advanced Cardiovascular Sys. v. Medtronic, 265 F.3d 1294, 1304 (Fed. Cir. 2001). Thus, as the Federal Circuit has consistently made clear, the claim construction effort should focus first on the claim language and other intrinsic evidence, only proceeding to examine extrinsic evidence if the intrinsic evidence does not yield an answer. Vitronics Corp. v. Conceptronic, 90 F.3d 1576, 1583 (Fed. Cir. 1996); see also Phillips, 415 F.3d at 1317 (stating that extrinsic evidence is " less significant" than intrinsic evidence). Of course, courts, in construing claim terms, may always use extrinsic evidence to aid their understanding of the patent technology. See Markman, 52 F.3d 967, 980 (Fed. Cir. 1995) (" The court may, in its discretion, receive extrinsic evidence in order to aid the court in coming to a correct conclusion as to the true meaning of the language employed in the patent." ) (internal citations omitted).
Given the hierarchy of claim construction evidence, " the claim construction analysis must begin and remain centered on the claim language itself" because a " bedrock principle" of patent law is that " the claims of a patent define the invention to which the patentee is entitled the right to exclude." Innova/Pure Water, Inc., 381 F.3d at 1115-16. Thus, a court must " look to the words themselves...to define the scope of the patented invention." Vitronics Corp.,
90 F.3d at 1582. Comparison of disputed claim terms to other claims in the patent, both disputed and undisputed, is often illuminating because " a claim term should be construed consistently with its appearance in other places in the same claim or in other claims of the same patent." Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001). Furthermore, according to the doctrine of claim differentiation, there is a presumption " that each claim in a patent has a different scope." Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998). In its most specific sense, the doctrine of claim differentiation means that limitations stated in dependent claims " are not to be read into the independent claim from which they depend." Karlin Tech., Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971-72 (Fed. Cir. 1999). But because two claims with different terminology can define the exact same subject matter, Federal Circuit has cautioned that " claim differentiation is a guide, not a rigid rule." Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1538 (Fed. Cir. 1991).
In the event the language of the claim itself does not make the meaning of a claim term or phrase clear, specification is " the single best guide to the meaning of a disputed term" and is often " dispositive." Phillips, 415 F.3d at 1315. Yet, courts must be cautious in using the specification to avoid importing into the claims embodiments described in the specification and thereby limiting the scope of the claims. In this respect, there is " a fine line between reading a claim in light of the specification, and reading a limitation into the claim from the specification." Id. at 1323. Indeed, to read " a limitation from the written description into the claims" is a " cardinal sin" of patent claim construction. SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1340-41 (Fed. Cir. 2001).
A further important element of intrinsic evidence is the patent's prosecution history--also commonly referred to as the patent's " file wrapper" --which may be considered for the purpose of determining whether to " exclude any interpretation that was disclaimed during prosecution." Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005) (citation and quotation marks omitted). Thus, if a patentee " has unequivocally disavowed a certain meaning to obtain his patent," the claim is narrowed " congruent with the scope of surrender," and the patentee may not later recapture through claim interpretation a claim term meaning disclaimed during prosecution and thereby recapture in the Markman process a scope of the patent surrendered during prosecution. Id. A patentee may not construe terms one way " in order to obtain their allowance and in a different way against accused infringers." Id.
It is true, of course, that " a patentee is free to be his own lexicographer" and to give claim terms his own specific meaning. Markman, 52 F.3d at 980. When a patentee acts as his own lexicographer, he may " use terms in a manner other than their ordinary meaning[.]" Vitronics, 90 F.3d at 1582. Importantly, a patentee acting as his own lexicographer must " define the specific terms used to describe his or her invention . . . with reasonable clarity, deliberateness, and precision." In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). ...