Info-Hold, Inc. v. Applied Media Technologies Corp. ( 2015 )

United States Court of Appeals
for the Federal Circuit
______________________
INFO-HOLD, INC.,
Plaintiff-Appellant
v.
APPLIED MEDIA TECHNOLOGIES
CORPORATION,
Defendant-Appellee
______________________
2013-1528
______________________
Appeal from the United States District Court for the
Southern District of Ohio in No. 08-CV-0802, Judge
Timothy S. Black.
______________________
Decided: April 24, 2015
______________________
DANIEL JOSEPH WOOD, Info-Hold, Inc., Cincinnati,
OH, JAMES L. KWAK, Standley Law Group LLP, Dublin,
OH, argued for plaintiff-appellant.
RAYMOND R. FERRERA, Adams & Reese LLP, Houston,
TX, argued for defendant-appellee. Also represented by
MELISSA STOK RIZZO, DONALD A. MIHOKOVICH, Tampa, FL.
______________________
Before REYNA, WALLACH, and TARANTO, Circuit Judges.
2 INFO-HOLD, INC. v. APPLIED MEDIA TECH. CORP.
REYNA, Circuit Judge.
This case comes before us on appeal of a final judg-
ment that Applied Media Technologies Corporation
(“AMTC”) does not infringe U.S. Patent No. 5,991,374(“ ’374 patent”). Info-Hold, owner of the ’374 patent,
asserted the patent against AMTC and Muzak LLC in
separate suits before the same judge in the Southern
District of Ohio. Those suits led to separate appeals,
which were argued on the same day before the same
panel. We address the issues raised in Info-Hold’s appeal
in the Muzak suit in a separate opinion.
We find the district court adopted a construction that
improperly narrowed the scope of the claims. We reverse
the district court and remand for further proceedings
consistent with our opinion.
BACKGROUND
The ’374 patent is directed to systems, apparatuses,
and methods for playing music and messages (e.g., adver-
tisements) through telephones and public speaker sys-
tems. Playback order of the music and message tracks is
set on a remote server. The remote server generates and
sends control signals to message playback devices, telling
them to access and play back tracks in a specified order.
One use of the disclosed technology involves directing the
output of the message playback devices to a public ad-
dress system at retail stores, so customers can hear the
music and advertisements while shopping. The output of
the message playback device can also be directed to a
music-on-hold (“MOH”) system, which plays the tracks
over the telephone to callers who are on hold.
In January 2010, an ex parte reexamination proceed-
ing was initiated on the ’374 patent. After amendment of
some claims and cancellation of others, the ’374 patent
emerged from reexamination. Reexamined independent
INFO-HOLD, INC. v. APPLIED MEDIA TECH. CORP. 3
claim 7 is representative of the technology claimed in the
’374 patent and recites:
7. A programmable message delivery system for
playing messages on message playback devic-
es at one or more remote sites comprising:
a communication link;
a plurality of message playback devic-
es, each of said message playback de-
vices communicating with a respective
telephone system and comprising a
storage device for storing messages
and for playing selected ones of said
messages through an output of said
message playback device when a caller
is placed on hold; and
a computer remotely located from said
plurality of message playback devices
and operable to generate and transmit
control signals via said communication
link for controlling at least one of said
plurality of message playback devices;
each of said plurality of message playback devices
being adapted to receive said control signals
via said communication link and being pro-
grammable to access at least one of said mes-
sages from said storage device and to provide
said accessed message to said output in ac-
cordance with said control signals when a
caller is placed on hold;
wherein said computer comprises a display device
and is programmable to generate screens on
said display device that include user se-
lectable menu items for selection by an opera-
tor to define relationships between said
plurality of message playback devices and
4 INFO-HOLD, INC. v. APPLIED MEDIA TECH. CORP.
said messages, the screens guiding an opera-
tor to make choices selected from the group
consisting of which of said messages are to be
played, which of said plurality of message
playback devices are to play said selected
messages, a time of day when said control
signals are to be transmitted to said message
playback devices, a date on which said control
signals are to be transmitted to said message
playback devices, a sequence in which said se-
lected messages are to be played, and how
many times to repeat at least one of said se-
lected messages in said sequence, and to gen-
erate said control signals to implement said
choices via said message playback devices.
’374 patent reexamination certificate, col. 1 ll. 28-67.
LITIGATION HISTORY
Info-Hold filed suit in November 2003, accusing
AMTC’s Remotelink IP and EOS Horizon devices
(“AMTC’s Accused Devices”) of infringing the ’374 patent.
During the litigation, a third-party requester initiated an
ex parte reexamination of the ’374 patent. The Patent
Office’s decision to reexamine the ’374 patent resulted in
a stay of the infringement suit against AMTC that was
pending in the district court. While the reexamination
proceeding was pending, Info-Hold brought a separate
suit against Muzak LLC (“Muzak”), with the same judge
in the Southern District of Ohio presiding over both cases.
After the ’374 patent emerged from reexamination, the
stay of the AMTC suit was lifted. Subsequently, it be-
came apparent that the district court would conduct claim
construction proceedings in the Muzak case first. Info-
Hold and AMTC agreed to be bound in their case by the
constructions rendered in the Muzak case. J.A. 1296-97.
Among the terms the district court construed in the
Muzak case was “when a caller is placed on hold.” The
INFO-HOLD, INC. v. APPLIED MEDIA TECH. CORP. 5
district court construed the term to mean “at the moment
a caller is placed on hold,” a construction favoring Muzak.
Info-Hold, Inc. v. Muzak Holdings LLC, No. 1:11-cv-283,
at *8 (S.D. Ohio Sept. 10, 2012).
In this case, the district court issued an order constru-
ing three terms, adopting AMTC’s proposed construction
for each. The district court primarily relied on statements
from the patent’s written description to support its claim
construction. Before construing the claims, however, the
district court also noted its interest in what it viewed as
“extrinsic evidence related to” U.S. Patent No. 6,741,683(“ ’683 patent”), namely the ’683 patent’s Notice of Allow-
ability. Info-Hold, Inc. v. Applied Media Techs. Corp., No.
1:08-cv-802, at *7 (S.D. Ohio Apr. 25, 2013) (“Claim
Construction Order”). 1 According to the district court,
when explaining the reasons for allowance of the ’683
patent, the examiner stated that prior art MOH patents
did not teach systems in which the local device initiates
contact with a server to determine whether new content is
available. Id. The district court explained that this
“statement assists the Court in determining what a
person of ordinary skill in the art would understand the
claims to present” at the time of the invention described
in the ’374 patent. Id. The district court did not tie its
construction of any of the terms in dispute to this state-
ment or otherwise explain how the statement affected its
constructions.
The district court construed “transmit” as “to initiate
a contact with and send an electronic signal to another
device.” Id. at *8. It construed the term “message play-
1 The ’683 patent issued over three years after the
’374 patent issued and is unrelated to the ’374 patent.
The ’683 patent covers local on-hold music devices that
contact and interact with a server from which the local
device receives content.
6 INFO-HOLD, INC. v. APPLIED MEDIA TECH. CORP.
back device” as “a device configured to select and access
from its storage device one or more stored messages and
to play those messages through an output, and adapted to
receive control signals after initiation of contact from
another source.” Id. And it construed the term “operable
to generate and transmit control signals” as “capable to
initiate a contact with the message playback device, and
generate and send control signals to it.” Id. at *9. The
constructions effectively required any communication
between the server and the message playback device to be
initiated by the server, a construction favorable to AMTC.
After the district court rendered constructions unfa-
vorable to Info-Hold in both cases, AMTC and Info-Hold
filed a joint stipulation of noninfringement in favor of
AMTC. The stipulation stated that the construction of
each of the three terms in this case was dispositive on the
issue of infringement for each claim having any of the
terms, thereby establishing noninfringement for AMTC’s
Accused Devices. Likewise, the stipulation conceded that
the district court’s construction of “when a caller is placed
on hold” established that AMTC’s Accused Devices did not
infringe each claim having this term. The parties further
requested that the district court enter final judgment of
noninfringement to allow Info-Hold to appeal the con-
structions. Based on the parties’ stipulations and request,
the district court entered final judgment of noninfringe-
ment in favor of AMTC.
Info-Hold appeals the district court’s claim construc-
tions rendered in this case, as well as the construction of
the term “when a caller is placed on hold” from the Muzak
case. We have jurisdiction under 28 U.S.C. § 1295(a)(1).
DISCUSSION
We review the district court’s evaluation of the pa-
tent’s intrinsic record during claim construction de novo.
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831,
841 (2015). Subsidiary factual determinations based on
INFO-HOLD, INC. v. APPLIED MEDIA TECH. CORP. 7
extrinsic evidence are reviewed for clear error. Id. The
ultimate construction of the claim is a legal question and,
therefore, is reviewed de novo. Id.Claim terms are generally given their ordinary and
customary meaning as 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). Such a skilled artisan reads claim language in the
context of the claims, the specification, and the prosecu-
tion history, using them to resolve any uncertainties.
Though the claim term may appear plain on its face, we
may depart from that plain meaning “1) when a patentee
sets out a definition and acts as his own lexicographer, or
2) when the patentee disavows the full scope of the claim
term either in the specification or during prosecution.”
Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d
1362, 1365 (Fed. Cir. 2012) (citation omitted).
Info-Hold’s appeal of the district court’s construction
of the three terms in this case—“transmit,” “operable to
generate and transmit control signals,” and “message
playback devices”—challenges whether the district court
erroneously required that all communication between the
remote server and the message playback devices must be
initiated by the server.
As noted above, the district court referred to the later-
issued ’683 patent—which is cited in the ’374 patent’s
reexamination certificate—and the Notice of Allowability
for the ’683 patent. Neither of these references calls for
clear-error review. The former is part of the ’374 patent’s
own prosecution history (on reexamination), hence intrin-
sic evidence whose interpretation is “a determination of
law.” Teva, 135 S. Ct. at 841. The latter is not itself cited
in the ’374 patent’s prosecution history, and we need not
classify it as “intrinsic” or “extrinsic” for at least these
reasons: this public record presents no disputed issue of
fact as to the Notice’s existence or content; the district
8 INFO-HOLD, INC. v. APPLIED MEDIA TECH. CORP.
court made no findings about it; and what remains is
what, if any, significance it might have for the ultimate
claim construction, which is a question of law. Vasudevan
Software, Inc. v. MicroStrategy, Inc., No. 2014-1094, 2015
WL 1501565 at *3, *5 (Fed. Cir. Apr. 3, 2015). Therefore,
we apply the de novo standard in reviewing the district
court’s claim constructions. We begin our review with the
term “transmit,” given that the construction of the term is
vital to, and necessarily influences, the construction of the
other terms.
I. “TRANSMIT”
The district court construed the term “transmit” to
mean “initiate a contact with and send an electronic
signal to another device.” Claim Construction Order at
*10. It based the construction on its understanding that
the patent exclusively disclosed the sending of control
signals from the server to the remote playback devices,
and that the remote playback devices were only config-
ured to receive transmissions.
Info-Hold argues that the district court erred by limit-
ing the claims to features disclosed in the preferred
embodiment. It notes that we have rejected the conten-
tion that it is proper to limit the claims to the single
disclosed embodiment absent a clear expression of intent
to limit the claims’ scope. E.g., Enzo Biochem, Inc. v.
Applera Corp., 599 F.3d 1325, 1342 (Fed. Cir. 2010), cert.
denied on other grounds, 131 S. Ct. 3020 (2011). Info-
Hold also contends that it is improper to import limita-
tions from the specification absent an express statement
limiting the claims. Since there is no language in the
claims limiting the term “transmit” to the initiation of
communication to either device prior to transmission of
data, initiation by either the server or the message play-
back device would be covered by the claims.
AMTC contends that if the preferred embodiment is
synonymous with the invention itself, our precedent
INFO-HOLD, INC. v. APPLIED MEDIA TECH. CORP. 9
restricts the scope of the claims to the features disclosed
in that embodiment. See Wang Labs. v. Am. Online, Inc.,
197 F.3d 1377, 1382 (Fed. Cir. 1999) (limiting claims to
one of two alternatives because only one was described
and enabled). According to AMTC, in the single embodi-
ment disclosed in the ’374 patent, the message playback
device only receives control signals after another device
initiates contact. Further, the message playback device
disclosed in the invention is incapable of initiating contact
with another device, meaning that transmission can only
be initiated by the server.
We find that the claim term “transmit” and the speci-
fication support a construction that is neutral as to
whether the message playback device or the server initi-
ates the transmission. Nothing in the word “transmit”
suggests a limitation on initiation: there is no linguistic
ambiguity to resolve. And the specification confirms the
term’s neutrality as to initiation. For instance, the patent
discloses that the “message playback device is preferably
operational in a receive-only manner . . . .” ’374 patent,
col. 18 ll. 5-6. The mention of a preferred “receive-only”
manner implies the invention’s ability to operate in a
manner in which the message playback device may
transmit. Operating in such a manner would allow for
communications which are initiated by the message
playback device. The claims themselves are indetermi-
nate as to which communication endpoint initiates the
transmission. Also, even if the embodiment in the specifi-
cation only disclosed server-initiated communication, we
have “expressly rejected the contention that if a patent
describes only a single embodiment, the claims of the
patent must be construed as being limited to that embod-
iment.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
898, 906 (Fed. Cir. 2004) (citations and quotations omit-
ted).
The ’374 patent’s written description does not invoke
the exception to the rule that we will not read limitations
10 INFO-HOLD, INC. v. APPLIED MEDIA TECH. CORP.
from the preferred embodiment into the claims. Under
that exception, the scope of the invention is properly
limited to the preferred embodiment if the patentee uses
words that manifest a clear intention to restrict the scope
of the claims to that embodiment. Id. We find nothing in
the ’374 patent’s preferred embodiments or the remainder
of the specification that evinces a clear intention to re-
strict the invention’s communications to those initiated by
the server. Absent an intentional statement of re-
striction, we refuse to restrict the patent’s claims to cover
only server-initiated transmissions.
We also find a lack of a clear, intentional disavowal of
claim scope that would require the incorporation of a step
of initiating contact in the construction of “transmit.” We
find no basis to depart from the ordinary and customary
meaning of the term. See, e.g., Tex. Digital Sys., Inc. v.
Telegenix, Inc., 308 F.3d 1193, 1204 (Fed. Cir. 2002)
(explaining the presumption favoring ordinary meaning
will be overcome by the inventor’s use of words that
represent “a clear disavowal of claim scope”), cert. denied,
538 U.S. 1058 (2003).
Moreover, the patentee has not defined the term
“transmit” by implication. We have found that a patentee
defined a term “by implication” where the patentee used
the term throughout the specification in a way that was
consistent with only one meaning. Bell Atl. Network
Servs. v. Covad Commc’ns Grp., Inc., 262 F.3d 1258, 1271
(Fed. Cir. 2001) (quoting Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). This principle
does not apply in this case because the ’374 patent does
not consistently use the term “transmit” in a way that
necessarily restricts the term to server-initiated commu-
nications. As explained above, the patent’s “preferably
operational in a receive-only manner” language illustrates
that transmission can occur in either direction. Other
statements in the specification also use the term “trans-
mit” in a way that is consistent either with server-
INFO-HOLD, INC. v. APPLIED MEDIA TECH. CORP. 11
initiated or message-playback-device-initiated communi-
cations. For instance, the specification discloses that “the
invention relates to a system for generating and transmit-
ting message playlists to remotely located optical disc
players” that are part of MOH systems. Claim Construc-
tion Order, at *4 (citing ’374 patent, col. 1 ll. 9-11) (em-
phases omitted). While this statement illustrates the
direction of transmission of the playlists, it says nothing
about whether the remote playback device could first send
a signal requesting that the server transmit the playlist.
This shows that the term “transmit” does not require all
communications to be server-initiated. Accordingly, the
patentee has not implicitly defined the term “transmit” by
its usage in the ’374 patent.
Finally, we decline to accept AMTC’s invitation to an-
alyze this case under Wang. This court explained in
Liebel-Flarsheim that we have never read Wang to stand
for the proposition that a patent’s claims are limited to
the subject matter discussed in the sole embodiment of a
patent. 358 F.3d at 907. In Wang, the disputed term
could only be understood to have one possible meaning
when read in the light of the specification. Wang, 197
F.3d at 1382. Furthermore, during prosecution, the
inventors disclaimed a construction that would have
encompassed the second possible meaning. Id. at 1383-
84. As discussed above, the ’374 patent does not support
a reading that restricts the term “transmit” to one mean-
ing. Nor does AMTC point to any disclaimer in the in-
trinsic evidence that would restrict the term to server-
initiated communications. Therefore, Wang does not
control this case.
In sum, the ’374 patent’s discussion of preferred em-
bodiments discloses the possibility of transmission that
may be initiated by the message playback device, while
there is no requirement in the remainder of the patent’s
disclosure that the server initiate all communications. As
such, the claims should not be limited to server-initiated
12 INFO-HOLD, INC. v. APPLIED MEDIA TECH. CORP.
transmissions. For these reasons, we reverse the district
court’s construction of the term “transmit.”
II. “MESSAGE PLAYBACK DEVICE” AND “OPERABLE TO
GENERATE AND TRANSMIT CONTROL SIGNALS”
The district court’s construction of both of these terms
rests on its adopted construction that limits the claimed
invention to server-initiated transmissions. The construc-
tion of “message playback device” includes the require-
ment that the device be “adapted to receive control signals
after initiation of contact from another source.” Claim
Construction Order, at *8 (emphasis added). Similarly,
the construction of “operable to generate and transmit
control signals” requires the capability “to initiate contact
with the message playback device.” Id. at *9. Additional-
ly, the latter term includes the term “transmit.”
Because the construction of each of these terms de-
pends on the construction of the term transmit, we reverse
the district court’s construction of the terms “message
playback device” and “operable to generate and transmit
control signals.”
III. “WHEN A CALLER IS PLACED ON HOLD”
Info-Hold asks us to construe the term “when a caller
is placed on hold.” As discussed above, Info-Hold and
AMTC agreed to be bound by the construction rendered in
the Muzak case. The parties’ arguments in this case
regarding the construction of this term are not materially
different from the arguments presented in the Muzak
case. Therefore, we decline to adopt a different construc-
tion from that rendered in the Muzak case.
CONCLUSION
Because the district court erred in limiting the claims
to require that all communications between the server
and message playback devices be server-initiated, we
reverse the construction of the term “transmit,” as well as
INFO-HOLD, INC. v. APPLIED MEDIA TECH. CORP. 13
the terms “message playback device” and “operable to
generate and transmit control signals,” which depend on
the construction of “transmit.” We further remand the
case to the district court for further proceedings con-
sistent with this opinion.
REVERSED AND REMANDED
COSTS
Each party shall bear its own costs.