Haddad v. United States

In the United States Court of Federal Claims
No. 17-307
(Filed: 20 January 2023)
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MICHAEL HADDAD, *
*
Plaintiff, *
*
v. *
*
THE UNITED STATES, *
*
Defendant, * Claim Construction; Markman Hearing;
* Plain and Ordinary Meaning; Means Plus
TRANS DIGITAL TECHNOLOGIES * Function; Intrinsic Record; Indefinite;
LIMITED LIABILITY COMPANY, * Person Having Ordinary Skill in the Art;
* 28 U.S.C. § 112.
Third-Party Defendant, *
*
and *
*
IDEMIA IDENTITY & SECURITY USA *
LLC, *
*
Third-Party Defendant. *
*
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Geoffrey Mason, MOARBES, LLP, of Washington, DC, for plaintiff.
Conrad J. DeWitte, Jr., Assistant Director, with whom were Gary L. Hausken, Director,
Commercial Litigation Branch, and Brian M. Boynton, Principal Deputy Assistant Attorney
General, Civil Division, Department of Justice, all of Washington, DC, for defendant.
Richard L. Brophy, Armstrong Teasdale LLP, of St. Louis, MO, for third-party
defendants Trans Digital Technologies LLC and Idemia Identity & Security USA LLC.
CLAIM CONSTRUCTION OPINION AND ORDER
HOLTE, Judge.
Plaintiff Michael Haddad accuses the government of infringing U.S. Patent No.
7,639,844. The government noticed Trans Digital Technology LLC and Morpho Trust USA,
LLC (now Idemia Identity & Security USA LLC), distributors of the allegedly infringing
product, who joined the government in defending the claims against patent infringement. The
parties filed claim construction briefs seeking to construe the meaning of various disputed claim
terms. The Court held a Markman hearing to construe the disputed terms. Defendants argue
thirteen of the fifteen claim terms are indefinite under 35 U.S.C. § 112. This Claim Construction
Opinion and Order construes the disputed terms and finds sole independent claim 1 indefinite
and accordingly finds the entire ’844 patent invalid. The Court further orders the plaintiff to
show cause why this case should not be dismissed.
I. Background
A. Patents, Property, and Presumption of Validity
In 1876, the Supreme Court held “[a] patent for an invention is as much property as a
patent for land. The right rests on the same foundation, and is surrounded and protected by the
same sanctions.” Consol. Fruit-Jar Co. v. Wright, 94 U.S. 92, 96 (1876). In more recent years,
the Supreme Court has established the right to exclude as “one of the most essential sticks in the
bundle of rights that are commonly characterized as property.” Kaiser Aetna v. United States,
444 U.S. 164, 176 (1979). The Federal Circuit confirms “a patent grants only the right to
exclude others and confers no right on its holder to make, use, or sell [an invention].” Bio-Tech.
Gen. Corp. v. Genentech, Inc., 80 F.3d 1553, 1559 (Fed. Cir. 1996) (quoting Vaupel
Texilmaschinen KG v. Meccanica Euro Italia S.P.A., 944 F.3d 870, 879 n.4 (Fed. Cir. 1991))
(internal quotations omitted).
In addition to patents being property, “[p]atents are presumed to be valid.” Procter &
Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (citing Kao Corp. v.
Unilever U.S., Inc., 441 F.3d 963, 968 (Fed. Cir. 2006)). “[T]he [United States] Patent and
Trademark Office [(‘USPTO’)] only grants those patent applications that meet the statutory
patentability requirement.” Adam Mossoff, Who Cares What Thomas Jefferson Thought about
Patents–Reevaluating the Patent Privilege in Historical Context, 92 Cornell L. Rev. 953, 999
(2007) (citing Intervet Am., Inc. v. Kee-Vet Labs., Inc., 887 F.2d 1050, 1054 (Fed. Cir. 1989)
(“The presumption of validity under 35 U.S.C. § 282 carries with it a presumption the examiner
did his duty and knew what claims he was allowing”); Am. Hoist & Derrick Co. v. Sowa & Sons,
Inc., 725 F.2d 1350, 1359 (Fed. Cir. 1984) (noting § 282 is based on the “basic proposition that a
government agency such as the then Patent Office was presumed to do its job”)). “The burden of
establishing invalidity of a patent claim . . . rest[s] on the party asserting invalidity.” 35 U.S.C.
§ 282(a). “An issued patent enjoys a presumption of validity[, and] a party challenging patent
validity has the burden to prove its case with clear and convincing evidence.” Impax Labs., Inc.
v. Aventis Pharm., Inc., 545 F.3d 1312, 1314 (Fed. Cir. 2008).
B. Factual History
Plaintiff Michael Haddad is the sole inventor, owner, and assignee of U.S. Patent No.
7,639,844 (“the ’844 patent”). Compl. ¶¶ 1, 6, 9, ECF No. 1. The ’844 patent is a
“[c]ontinuation-in-part of [U.S.] application No. 11/220,282 [(‘the ’282 application’)], filed on 7
September 2005, now Pat[ent] No. 7,401,732 [(‘the ’732 patent’)], and a continuation-in-part of
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[U.S.] application No. 10/330,981, filed on 30 December 2002, now abandoned.” ’844 patent at
[63].
The ’844 patent, titled “Airport Vehicular Gate Entry Access System,” relates to methods
of “securing airport vehicular gate entries by providing” “means of authenticating drivers’
licenses, verifying employee status, printing temporary passes, printing a temporary vehicle entry
pass and certificate” and “providing the airport police with a handheld apparatus capable of
reading the entry certificate and wirelessly verifying its authenticity.” Id. at [54], [57]. The
system also provides means of matching vehicle drivers and passengers “against the TSA
NO-FLY and SELECTEE lists.” Id. at [57]. The system is “fully automated and is touch screen
capable, thus requiring a minimal amount of human interaction.” Id.C. Procedural History
Plaintiff filed his complaint on 6 March 2017, alleging the Credential Authentication
Technology-Boarding Pass Scanning System (“CAT/BPSS”) used by the government and
provided by third-party defendants Trans Digital Technology LLC (“TDT”) and Idemia Identity
& Security USA LLC 1 (“Idemia”) (collectively “defendants”) for its airport security systems
infringes the ’844 patent. See Compl. ¶¶ 15–16, 19, 33. The government moved to notice
interested third parties, BAE Systems Information Solutions, Inc., NCR Government Systems,
LLC, Trans Digital Technologies, Inc., and MorphoTrust USA, Inc., and the interested third
parties were noticed on 3 May 2017. Mot. for Notice to Third Parties, ECF No. 8; see Notice to
Third Parties, ECF No. 11. On 28 February 2018, this court dismissed plaintiff’s claims for
patent infringement accruing prior to 27 October 2016. See Order Granting Gov’t’s Mot. to
Dismiss at 15–16, ECF No. 39. On 27 July 2018, this court dismissed third-party defendants
BAE Systems Information Solutions, Inc. and NCR Government Systems, LLC. See Order
Dismissing Third-Party Defs. at 2, ECF No. 45. This case was reassigned to the undersigned
judge on 29 July 2019. See Order, ECF No. 81.
On 9 February 2021, defendants filed a joint status report stating each party’s views on a
proposed discovery schedule, whether the parties had claim construction disputes, and each
party’s proposed schedule for claim construction briefing. See Joint Status Report, ECF No. 116.
On 16 February 2021, the Court issued a scheduling order for the exchange of: preliminary
infringement contentions; preliminary invalidity contentions; claim terms for construction;
proposed claim constructions; and extrinsic evidence supporting claim construction positions.
See Scheduling Order at 2–3, ECF No. 117. On 19 March 2021, defendants filed a motion to
compel plaintiff to serve supplemental infringement contentions. See Mot. to Compel, ECF No.
120. After the parties fully briefed the issue, the Court denied the motion to compel as moot
when plaintiff agreed to serve infringement contentions. See Order, ECF No. 131.
On 23 November 2021, defendants filed their opening claim construction brief. See
Defs.’ Opening Claim Construction Br. (“Defs.’ Cl. Constr. Br.”), ECF No. 137. Plaintiff filed
his response to defendants’ opening claim construction brief on 20 December 2021. See Pl.’s
Resp. to Defs.’ Opening Claim Construction Br. (“Pl.’s Resp. Cl. Constr. Br.”), ECF No. 140.
1
Idemia Identity & Security USA LLC was formerly known as MorphoTrust USA, LLC. Notice of Name Change,
ECF No. 60.
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On 7 January 2022, defendants filed their reply to plaintiff’s response. See Defs.’ Reply Claim
Construction Br. (“Defs.’ Reply Cl. Constr. Br.”), ECF No. 141. Plaintiff filed a surreply to
defendants’ reply on 21 January 2022. See Pl.’s Surreply Claim Construction Br. (“Pl.’s
Surreply Cl. Constr. Br”), ECF No. 144. The Court held a Markman hearing on 12 July 2022.
See Order, ECF No. 151.
D. The Technology of the ’844 Patent
On 27 August 2007, plaintiff filed U.S. Patent Application No. 11/895,656, later issued
as the ’844 patent. See ’844 patent at [10], [21]–[22]. Plaintiff asserts infringement of sole
independent claim 1 of the ’844 patent and dependent claims 3, 5, and 6. See Compl. ¶¶ 19–32.
The ’844 patent “relates to a method of securing airport vehicular gate entry/exit gates”
by allowing “security personnel to process a vehicle entry as a group of verifiable objects
interrelated, including an employee host, a vehicle registration card, a vehicle driver and vehicle
passengers.” ’844 patent col. 1 ll. 13–14, 36–39. The background of the ’844 patent describes
the field as being “prone to excessive error rates, lower security standards, increased
inefficiencies and decreased reliability” because “[a]irport vehicular entry gates rely on human
intervention and manual data entry.” Id. col. 1 ll. 22–25. The patent discloses “an enterprise
platform where multiple airport vehicular gates comprise one workstation each, interconnected in
a network configuration, controlled by a central database server” making “all data immediately
available at all workstations” because “[a]ll workstations collect and store data in the central
database server.” Id. col. 2 ll. 41–45. The platform “uses a computer system, the apparatus of
[the ’282 application], and the software application of [the ’282 application] customized for the
purpose [of providing], a commercial [i]dentification card authentication apparatus, and various
computer peripherals.” Id. col. 1 ll. 40–44.
The system provides an “entry/exit workstation” for airport gate attendants, “which
would be located at an airport vehicular gate booth” preferably having “a touch screen LCD” or
another display screen. Id. col. 2 ll. 31–38. The workstation contains a “reader for standardized
personal identification credentials, . . . a suitable camera, . . . a central processing unit color, . . .
plastic card printers, . . . one ID card authenticator, . . . a keyboard, a laser printer, . . . and a
display monitor.” Id. (cleaned up). Each workstation is “interconnected in a network
configuration, controlled by a central database server,” and “[a]ll workstations collect and store
data in the central database server.” ’844 patent col. 2 ll. 42–45. Figure 1, reproduced below,
“schematically illustrates the elements of an entry/exit workstation.” ’844 patent col. 2 ll. 31–32,
fig.1.
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The system provides “a vehicle entry . . . formed of a group of collected records,
processed sequentially” including the following records: “1–ESCORTER”; “2–[Department of
Motor Vehicles (‘DMV’)] Vehicle Registration Information”; “3–Driver Information”; and “4–
Passengers Information.” Id. col. 2 ll. 58–64. “Upon the arrival of a vehicle at an airport
vehicular entry gate,” an airport employee “presents its airport ID to the reader for standardized
personal identification credentials device” and is then requested “to enter a security code in the
numeric keypad.” Id. col. 2 l. 65–col. 3 l. 3. “The information read from the ID serves to locate
the ESCORTER record in the airport employee database,” “verifies employment status,” and
“[i]f active . . . match[es the employee] against the TSA NO-FLY and SELECTEE lists.” Id. col.
3 ll. 5–9. The system “provides a security alert if the employee is not active” or “matched during
the TSA NO-FLY and SELECTEE list search.” Id. col. 3 ll. 9–13.
“After processing the employee, the employee becomes the ESCORTER of the entry
group,” and the system “automatically moves into the vehicle registration mode.” Id. col. 3 ll.
19–21. “The gate attendant places the DMV vehicle registration card in the authenticator, as
requested by the display message,” which in turn “acquires an image of the registration card.”
’844 patent col. 3 ll. 25–28. The authenticator then “sends the image to the system for
proceeding with character recognition” which “becomes the second record in the entry group.”
Id. col. 3 ll. 29–30.
“The system automatically moves into the DRIVER mode,” requiring the gate attendant
to “follow[] operational steps” such as presenting a credential to the reading apparatus and
following the “warning window” message if prompted. Id. col. 3 ll. 31, 35–38, 49. When a
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credential “is presented to the reading apparatus, . . . [t]he system decodes the encoded data and
encrypts the sensitive information, . . . checks database information to determine whether the
individual is an employee,” and checks the “ID credential against the TSA NO-FLY and
SELECTEE lists.” Id. col. 3 ll. 37–48. “If all checks are negative, the process continues. The
system picks up the individual photo provided by the authenticator returned record, and prints a
time sensitive encoded temporary pass.” Id. col. 3 ll. 61–64.
“Upon completing the DRIVER entry record, the system moves automatically into the
‘PASSENGER’ mode . . . .” Id. col. 3 ll. 65–66. “The gate attendant proceeds with collecting
passengers’ records, one after another, in a sequential manner, following the same functional
steps mentioned earlier during the DRIVER ID processing.” ’844 col. 4 ll. 3–6. The gate
attendant then selects the “‘CERTIFICATE’ touch button” on the screen causing the “printing of
the Temporary Vehicle Entry Certificate and Permit” which “is to be displayed at the vehicle
windshield.” Id. col. 4 ll. 15–16, 29. “A wireless handheld apparatus reader . . . is provided to
the airport police to read the certificate on the premises and instantly verify the displayed
certificate records, through a wireless access to the system database.” Id. col. 4 ll. 30–33.
E. Overview of Claims
Plaintiff asserts infringement of claims 1, 3, 5, and 6. These claims are directed toward a
CAT/BPSS. See Compl. ¶¶ 19–32. Claims 3, 5, and 6 depend on claim 1.
Based on the Court’s detailed review of the patents, the disputed terms appear in the
claims as follows:
Term Disputed Term Applicable
# Claim(s)
1 “standardized credential reader means” Claim 1
2 “credential encoded with personal identification” Claims 1, 3
3 “build individual real time records” Claim 1
4 “credential collected information match” Claim 1
5 “system database” Claims 1, 5, 6
6 “the type of entry, visitor, employee, contractor, supplier, or vendor, Claim 1
is determined”
7 “an ID authenticator” Claim 1
8 “means to read non-encoded credentials” Claim 1
9 “authentication data record” Claim 1
10 “authenticity risk rating” / “authentication rating” / “ID forgery risks Claim 1
rating”
11 “automatically determines the source” Claim 1
12 “credential data record” Claim 1
13 “to be checked against a security list, TSA NO-FLY list, SELECTEE Claim 1
list, other alternative credentials”
14 “warning window[, as a result of the individual credentials match Claim 1
and ID forgery risks rating contained in the authentication data
record]”
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15 “individual credentials match” Claim 1
Claim 1 of the ’844 patent, reproduced below, provides a representative example of all of
the disputed claim terms:
1. An automated access control system for securing airport vehicular gates and
airport sterile areas comprising:
a standardized credential reader means for reading a credential encoded with
personal identification to be used at entry point into the airport sterile
areas and automatically collects data to build individual real time records;
a software application for recovering information from the standardized
credential reader, wherein one or more of the following processing is
performed:
real time records are checked searching for a credential collected information
match; individual suspicious status is checked against a security list
stored in a system database; employee records are checked to determine if
the individual is an employee; the type of entry, visitor, employee,
contractor, supplier, or vendor, is determined; and admission is processed
as entry or re-entry of the individuals,
an ID authenticator, wherein a credential to be authenticated is presented, a
credential physical aspect and embedded security features are analyzed to
determine the possibility of any tempering or forgery and provide an
authenticity risk rating, said ID authenticator comprises means to read non-
encoded credentials, whereas said ID authenticator generates an
authentication data record comprising presented credential information and
authentication rating,
a central processing unit for receiving information from the standardized
credential reader and the ID authenticator;
wherein, upon a credential reading, the automated access control system
automatically determines the source of the credential data record, and
automatically extracts personal information to be checked against a
security list, TSA NO-FLY list, SELECTEE list, other alternative
credentials; whereas upon the credential authentication, the automated
access control system automatically extracts authentication information
from the authentication data record, and subsequently displays a warning
window, as a result of the individual credentials match and ID forgery
risks rating contained in the authentication data record.
Claim 3 of the ’844 patent, reproduced below, provides a representative example of one
disputed claim term (“credential encoded with personal identification”) indicated in italics:
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3. An automatic access control system as claimed in claim 1, wherein the
standardized credential reader can read any one of: drivers license identification,
passports, boarding passes or any other standardized credentials presented as a
personal identification upon entry into the airport, and whereas standardized
credentials refer to identification documents encoded using established standards.
Claim 5 of the ’844 patent, reproduced below, provides a representative example of one
disputed claim term (“system database”) indicated in italics:
5. An automated access control system as claimed in claim 1, wherein the system
database includes one or more interrelated group of records: the airport employee
as ESCORTER, the DMV vehicle registration card information, the driver
identification record and the passengers’ identification records.
Claim 6 of the ’844 patent, reproduced below, provides a representative example of one
disputed claim term (“system database”) indicated in italics:
6. An automated access control system as claimed in claim 1, includes: a wireless
barcode reader, a system database, a suitable camera, a color plastic card printer, a
keyboard, a laser printer, an intranet package and a display monitor.
’844 patent col. 4 l. 66–col. 6 l. 18.
II. Applicable Law for Claim Construction
A. Claim Term Interpretation
“[T]he interpretation and construction of patent claims, which define the scope of the
patentee’s rights under the patent, is a matter of law exclusively for the court.” Markman v.
Westview Instruments, Inc., 52 F.3d 967, 970–71 (Fed. Cir. 1995). “To construe a claim term,
the trial court must determine the meaning of any disputed words from the perspective of one of
ordinary skill in the pertinent art at the time of filing.” 2 Chamberlain Grp. Inc. v. Lear Corp.,
516 F.3d 1331, 1335 (Fed. Cir. 2008). “[T]he words of a claim ‘are generally given their
ordinary and customary meaning,’ . . . [and] the ordinary and customary meaning of a claim
term 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.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005)
(quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “There are
only two exceptions to this general rule: (1) when a patentee sets out a definition and acts as his
2
At oral argument, the parties agreed none of their claim constructions rely on one particular definition of a person
having ordinary skill in the art (“PHOSITA”), and the Court need not decide the parties’ dispute over who a
PHOSITA is at this stage. Cl. Constr. Tr. (“Tr.”) at 10:2–11, ECF No. 153 (“THE COURT: [I]s it plaintiff’s
understanding that there’s any argument about specific terms that would be affected by the definition of PHOSITA?
[PLAINTIFF]: No, you honor, I don’t think we have to decide at this point. . . . THE COURT: [D]o defendants
believe that there is any specific claim construction that may be affected by PHOSITA definition?
[DEFENDANTS]: Not in this case . . . .”). See also Cave Consulting Grp., Inc. v. Truven Health Analytics Inc.,
No. 15-cv-02177-SI, 2016 WL 2902234, at *3 (N.D. Cal. May 13, 2016).
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own lexicographer, or (2) when the patentee disavows the full scope of a claim term either in the
specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362,
1365 (Fed. Cir. 2012) (citing Vitronics, 90 F.3d at 1580).
The analysis of any disputed claim term begins with the intrinsic evidence of record, as
“intrinsic evidence is the most significant source of the legally operative meaning of disputed
claim language.” Vitronics, 90 F.3d at 1582. Additional claims, whether asserted or not, “can
also be valuable sources of enlightenment as to the meaning of a claim term” when determining
consistent language usage throughout the patent, differences amongst particular terms, and
various limitations added throughout the dependent claims. Phillips, 415 F.3d at 1314. The
claims do not stand on their own; “they are part of ‘a fully integrated written instrument,’
consisting principally of a specification that concludes with the claims.” Id. at 1315 (quoting
Markman, 52 F.3d at 978). The claims are therefore read in view of the specification. Markman,
52 F.3d at 979. It is important limitations from preferred embodiments are not read “into the
claims absent a clear indication in the intrinsic record that the patentee intended the claims to be
so limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).
Federal Circuit caselaw “instructs that different claim terms are presumed to have
different meanings.” MicroStrategy Inc. v. Bus. Objects Americas, 238 F. App’x 605, 609 (Fed.
Cir. 2007) (citing CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308,
1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that the
use of these different terms in the claims connotes different meanings.”); Applied Med. Res.
Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006) (“[T]he use of two terms
in a claim requires that they connote different meanings . . . .”)).
B. Prosecution History Weight and Interpretation
The prosecution history may serve as an additional source of intrinsic evidence.
Markman, 52 F.3d at 980. The prosecution history “consists of the complete record of the
proceedings before the [USPTO] and includes the prior art cited during the examination of the
patent.” Phillips, 415 F.3d at 1317. The prosecution history “represents an ongoing negotiation
between the [US]PTO and the applicant, rather than the final product of that negotiation.” Id.
“Any explanation, elaboration, or qualification presented by the inventor during patent
examination is relevant, for the role of claim construction is to ‘capture the scope of the actual
invention’ that is disclosed, described, and patented.” Iridescent Networks, Inc. v. AT&T
Mobility, LLC, 933 F.3d 1345, 1352–53 (Fed. Cir. 2019) (quoting Fenner Invs., Ltd. v. Cellco
P’ship, 778 F.3d 1320, 1323 (Fed. Cir. 2015)). After considering all intrinsic evidence of record,
the court has discretion to consider sources of extrinsic evidence, such as dictionaries, treatises,
and expert and inventor testimony, “if the court deems it helpful in determining ‘the true
meaning of language used in the patent claims.’” Phillips, 415 F.3d at 1318 (quoting Markman,
52 F.3d at 980). While sometimes helpful, extrinsic evidence is “less significant than the
intrinsic record in determining the legally operative meaning of claim language.” Id. at 1317
(internal quotation marks and citations omitted) (quoting C.R. Bard, Inc. v. U.S. Surgical Corp.,
388 F.3d 858, 862 (Fed. Cir. 2004).
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“Prosecution disclaimer ‘preclud[es] patentees from recapturing through claim
interpretation specific meanings disclaimed during prosecution.’” Aylus Networks, Inc. v. Apple
Inc., 856 F.3d 1353, 1359 (Fed. Cir. 2017) (quoting Omega Eng’g, Inc. v. Raytek Corp., 334
F.3d 1314, 1323 (Fed. Cir. 2003)). Federal Circuit caselaw “requires that the alleged disavowing
actions or statements made during prosecution be both clear and unmistakable” in order to apply
the principles of prosecution disclaimer. Id. “[W]hen the patentee unequivocally and
unambiguously disavows a certain meaning to obtain a patent, the doctrine of prosecution history
disclaimer narrows the meaning of the claim consistent with the scope of the claim surrendered.”
Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1095 (Fed. Cir. 2013). Further,
“statements made by a patent owner during an [inter partes review] proceeding can be
considered during claim construction and relied upon to support a finding of prosecution
disclaimer.” Aylus Networks, Inc., 856 F.3d at 1361. “Where the alleged disavowal is
ambiguous, or even ‘amenable to multiple reasonable interpretations,’ [the Federal Circuit has]
declined to find prosecution disclaimer.” Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040,
1045 (Fed. Cir. 2016) (quoting Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1359 (Fed.
Cir. 2003)).
C. Use of a Parent Patent as Part of the Intrinsic Record
Federal Circuit cases “draw[] a distinct line between patents that have a familial
relationship and those that do not” when considering whether a “related patent or its prosecution
history is available to construe the claims of a patent at issue.” Goldenberg v. Cytogen, Inc., 373
F.3d 1158, 1167 (Fed. Cir. 2004). “When a parent application includes statements involving
‘common subject matter’ with the terms at issue, those statements are relevant to construction of
the terms in the child patent.” E.I. du Pont de Nemours & Co. v. Unifrax I LLC, 921 F.3d 1060,
1070 (Fed. Cir. 2019). When an application cites a parent application as prior art or in the
prosecution history, these familial applications, moreover, become incorporated into the intrinsic
record. 3 Goldenberg, 373 F.3d at 1167; Unifrax I, 921 F.3d at 1070 (citing Advanced
Cardiovascular Sys., Inc. v. Medtronic, Inc., 265 F.3d 1294, 1305–06 (Fed. Cir. 2001) (“[I]t is
plainly appropriate to treat a parent application as intrinsic evidence[] when considering two
related patents with identical claim terms.”).
Further, as “claims must be read in light of the specification,” “any patents incorporated
by reference are effectively part of the host patent.” Finjan LLC v. ESET, LLC, 51 F.4th 1377,
1382 (Fed. Cir. 2022) (first citing Phillips, 415 F.3d at 1315; then citing X2Y Attenuators, LLC v.
U.S. Int’l Trade Comm’n, 757 F.3d 1358, 1362–63 (Fed. Cir. 2014)). Accordingly,
“[i]ncorporation by reference of a patent ‘renders the entire contents of that patent’s disclosure a
3
At oral argument, defendants agreed there was no significant difference between the ’282 application and the
subsequent ’732 patent specification. Tr. at 14:13–17 (“THE COURT: [R]elated to the specification, it sounds like
there was no change or new information that was added as the ’282 application became the ’732 patent?
[DEFENDANTS]: That’s my understanding.”). Accordingly, the Court references the ’282 application and the
’732 interchangeably. Defendants also agreed “the prosecution history of the parent application as well as the
prosecution of the ’844 patent, can all be considered part of what’s referred to as intrinsic evidence.” See Tr. at
17:15–18:11. During argument for claim term 13, defendants agreed the parent patent is part of the intrinsic record.
Tr. at 136:10–17. Plaintiff also agreed the ’732 parent patent could be used for construing a term of the ’844 patent.
Tr. at 18:12–17. (“THE COURT: [P]laintiff generally agrees that the Court can refer to the parent patent, the ’732
patent, to construe a term and that that would be intrinsic evidence? [PLAINTIFF]: Yes . . . .”).
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part of the host patent’” and “may inform the construction of claim terms common across
patents.” Id. (quoting X2Y Attenuators, LLC, 757 F.3d at 1362–63).
D. Indefiniteness
“[I]ndefiniteness is a question of law and in effect part of claim construction.” ePlus, Inc.
v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012). “Indefiniteness must be proven by
clear and convincing evidence.” Sonix Tech. Co. v. Publ’ns Int’l, Ltd., 844 F.3d 1370, 1377
(Fed. Cir. 2017). A patent specification must conclude with claims distinctly pointing out the
subject matter of the invention. 35 U.S.C. § 112, ¶ 2. 4 Patent claims must apprise “a skilled
artisan [of] the scope of the claimed invention with reasonable certainty.” Sonix Tech. Co., 844
F.3d at 1376. If the claim language fails to apprise a skilled artisan with reasonable certainty, the
patent claim is indefinite under § 112, ¶ 2. Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S.
898, 910 (2014). General knowledge “sufficiently well established in the art and referenced in
the patent,” does not render a claim indefinite. Presidio Components, Inc. v. Am. Tech. Ceramics
Corp., 875 F.3d 1369, 1377 (Fed. Cir. 2017).
Claim construction may contain indefiniteness inquries, but other invalidity arguments
under § 112, such as lack of enablement or lack of adequate written description, are separate and
distinct. See ePlus, Inc., 700 F.3d at 517; Philips, 415 F.3d at 1327 (“[W]e have certainly not
endorsed a regime in which validity analysis is a regular component of claim construction.”); see
also, e.g., Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1361 (Fed. Cir.
2004); Sw. Software, Inc. v. Harlequin Inc., 226 F.3d 1280, 1297–98 (Fed. Cir. 2000). Despite
invalidity conceptually overlapping with indefiniteness, parties must use the proper standard
when arguing invalidity. See, e.g., Augme Techs., Inc. v. Yahoo! Inc., 755 F.3d 1326, 1340 (Fed.
Cir. 2014) (“Appellants’ arguments appear to be based on the wrong legal standard, i.e., written
description or enablement as opposed to indefiniteness.”); Process Control Corp. v. HydReclaim
Corp., 190 F.3d 1350, 1358 n.2 (Fed. Cir. 1999) (“[D]efiniteness and enablement are analytically
distinct requirements [of validity], even though both concepts are contained in 35 U.S.C. §
112.”).
E. Means-Plus-Function Claims
Patent claims may also be directed to a combination comprising a series of elements. “A
patentee may express an ‘element in a claim for a combination’ ‘as a means or step for
performing a specified function without the recital of structure, material, or acts in support
thereof.’” HTC Corp. v. IPCom GmbH & Co., KG, 667 F.3d 1270, 1278 (Fed. Cir. 2012)
(quoting 35 U.S.C. § 112, ¶ 6). Known as means-plus-function claiming, this claim drafting
technique pursuant to § 112, ¶ 6 results in a claim construction covering “the corresponding
structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C.
§ 112, ¶ 6.
4
The paragraphs of 35 U.S.C. § 112 were replaced with newly designated subsections when the America Invents
Act (“AIA”), Pub. L. No. 112–29, took effect on 16 September 2012. The application resulting in the patent-at-
issue in this case was filed before that date, so the Court refers to the pre-AIA version of § 112.
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The presence or absence of the word “means” in a patent claim impacts the claim
limitation’s interpretation. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir.
2015). The presence of the word “means” creates a rebuttable presumption indicating invocation
of § 112, ¶ 6 but is not the “essential inquiry” of means plus function claiming structure. Id.
Instead, the analysis turns on “whether the words of the claim are understood by persons of
ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Id.
Sufficient structure is recited “‘if the claim term is used in common parlance or by persons of
skill in the pertinent art to designate structure, even if the term covers a broad class of structures
and even if the term identifies the structures by their function.’” Skky, Inc. v. MindGeek,
S.A.R.L., 859 F.3d 1014, 1019 (Fed. Cir. 2017) (quoting TecSec, Inc. v. Int’l Bus. Machs. Corp.,
731 F.3d 1336, 1347 (Fed. Cir. 2013)). If both the claim and the specification fail to disclose
sufficient structure to perform the claimed function, then the claim is indefinite. Williamson, 792
F.3d at 1352.
III. Disputed Claim Term #1: “standardized credential reader means”
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
“Here the claimed function is to ‘read a “Indefinite.
credential.’ The patent in suit identifies one
or more standard devices for performing this To the extent the term is construed,
function. However, the patent covers both Defendants propose:
such standard devices and any equivalents.
You have heard testimony in the trial of this A device, separate from the ID authenticator,
matter relating to whether or not the accused for reading a credential encoded with personal
products are such equivalents. As the fact identification that has a fixed 2D imaging
finder, your role is to decide whether the assembly, an angled window on which the
products accused of infringing by plaintiff are credential is placed, an ID/object detector,
such equivalents or not.” and a 3-track magstripe reader, all of which
are mounted in a housing. The device does
Pl.’s Resp. Cl. Constr. Br. at 2–3. not rely on any of the following to improve
the image resolution: movement or rotation
of any component, mirroring, focused
circuitry, a display screen, movable support, a
longitudinal axis, a support shroud, an optics
rotating assembly, or a user visible indicator.”
Defs.’ Cl. Constr. Br. at 4.
The disputed term is used in claim 1:
a standardized credential reader means for reading a credential encoded with
personal identification to be used at entry point into the airport sterile
areas and automatically collects data to build individual real time records;
’844 patent col. 5 ll. 1–4.
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A. Parties’ Arguments
Defendants argue “standardized credential reader means” is indefinite because the
specification of the ’844 patent “fails to disclose adequate corresponding structure for the
claimed function.” Defs.’ Cl. Constr. Br. at 4. Defendants state, “[N]o description is given as to
the actual structure of this element that would enable it to read encoded credentials” in either the
figures or the specification. Id. at 5. Defendants assert Figure 1 “includes merely a perspective
view of an outer housing of [the apparatus for recovering information from standardized personal
identification credentials], with no visible internal structure,” whereas “the specification
describes the reader element in purely functional terms.” Id. at 5–6. While acknowledging “in
some circumstances, ‘familial patents inform the construction of a claim term and are
appropriately treated as intrinsic evidence,’” defendants argue “‘material incorporated by
reference cannot provide the corresponding structure necessary to satisfy the definiteness
requirement for a means-plus-function clause.’” Id. at 6 (quoting E.I. du Pont de Nemours & Co.
v. Unifrax I LLC, 921 F.3d 1060, 1070 (Fed. Cir. 2019); Default Proof Credit Card Sys., Inc. v.
Home Depot U.S.A. Inc., 412 F.3d 1291, 1301 (Fed. Cir. 2005); then citing Atmel Corp. v. Info.
Storage Devices, Inc., 198 F.3d 1374, 1382 (Fed. Cir. 1999); Fiber, LLC v. Ciena Corp., 792 F.
App’x 789, 795 (Fed. Cir. 2019)). Defendants argue, moreover, “even if ‘one of skill in the art
may have been able to find a structure that would work’ to implement the recited function, that
does not satisfy § 112, ¶ 6” because “a patentee is only entitled to claim ‘corresponding structure
. . . described in the specification and equivalents thereof.’” Defs.’ Reply Cl. Constr. Br. at 3
(emphasis in original) (quoting Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361,
1364 (Fed. Cir. 2012). Defendants argue plaintiff’s reference to his ’282 application—now the
’732 patent—for which the ’844 patent is a continuation-in-part, cannot satisfy the definiteness
requirement for a means-plus-function clause. Defs.’ Cl. Constr. Br. at 6.
If not indefinite, defendants argue their proposed construction is the “only one that
accurately captures the structure disclosed in the [’732 parent patent].” Id. According to
defendants, plaintiff’s proposed construction “is silent as to what actual structure would result in
infringement of the claim.” Id. at 7. Defendants also argue plaintiff’s proposed construction,
“‘read a credential,’ completely reads out the claim terms ‘standardized’ and ‘encoded,’ each of
which modifies the term ‘credential’ in the limitation at issue.” Id. at 5. If the Court gives effect
to plaintiff’s definition, defendants argue, the claim could encompass the “reading of any type of
credential, regardless of whether the credential was ‘standardized’ or contained ‘encoded’
information.” Id.
Plaintiff refutes defendants’ indefiniteness argument by contending “standard credential
reader means are well known to one of the ordinary skill in the art.” Pl.’s Resp. Cl. Constr. Br. at
3. “There are only a few such machines commercially available at any given time,” plaintiff
argues, “and anyone of ordinary skill working in the field is well aware of what those machines
are.” Id.; see also Pl.’s Surreply Cl. Constr. Br. at 5. Plaintiff quotes Atmel to argue “the
knowledge of one skilled in the particular art may be used to understand what structure(s) the
specification discloses . . . [and] even a dictionary or other documentary source may be helpful
for such assistance.” Pl.’s Resp. Cl. Constr. Br. at 3 (quoting Atmel Corp., 198 F.3d at 1382).
Plaintiff argues “the patent in suit identifies one or more standard devices for performing this
function,” as seen in Figure 1 and the detailed description of Figure 1. Pl.’s Surreply Cl. Constr.
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Br. at 3. Asserting the claim is definite, plaintiff argues the Court should construe the term as
claiming the function, “to ‘read a credential.’” Pl.’s Resp. Cl. Constr. Br. at 2–3.
B. Analysis
1. The Court’s Preliminary Construction
Before the Markman hearing, the Court provided the parties with the Court’s preliminary
construction after considering both parties’ claim construction briefs and all referenced materials
in full. See Tr. at 8:15–19. The government asserts in briefing both parties agreed the term
should be construed under 35 U.S.C. § 112, ¶ 6 “but dispute the precise function involved.”
Defs’ Cl. Constr. Br. at 4. Accordingly, the Court initially construed the term under a means-
plus-function analysis. As the claim term contains the word “means,” the Court looked to
identify what function the means was intended to perform. The parties dispute what credentials
the function applies to and limitations surrounding the apparatus performing the function, but
both parties generally agree the claimed function is to “read a credential.” See id. at 4–5
(arguing the construction, among other limitations, includes “reading a credential”); Pl.’s Resp.
Cl. Constr. Br. at 2–3 (contending the construction should be, “read a credential”). After
identifying a function, the Court then “identif[ied] the structure in the specification that is clearly
linked with this function . . . .” Rain Computing Inc. v. Samsung Elecs. Am., Inc., 989 F.3d 1002,
1007 (Fed. Cir. 2021). The Court relied on the ’732 patent’s description, as referenced the ’844
patent, column 1 lines 39–40, for the apparatus components for a corresponding structure of the
“standardized credential reader means” function and, therefore, preliminarily found the term not
indefinite. See HTC Corp. v. IPCom GmbH & Co., KG, 667 F.3d 1270, 1279 (Fed. Cir. 2012).
The Court preliminarily construed the term as the apparatus in the the ’732 patent or “a device
for reading a credential encoded with personal identification that has a fixed 2D imaging
assembly, an angled top window, an ID/object detector, and a 3-track magstripe reader, all of
which are mounted on a housing. The device is stationary with no moveable components.” 5
2. The Court’s Final Construction
At the Markman hearing, plaintiff confirmed the disputed term invokes a means-plus-
function construction. Tr. at 27:13–14 (“[PLAINTIFF]: [The claim] was a means-plus-function
claim.”), 31:16–18 (“THE COURT: [Y]our point is that it does invoke 112(f)? [PLAINTIFF]:
Yes, using that structure.”). Defendants agreed the language of the term invokes means-plus-
function construction. Tr. at 45:4–7 (“[DEFENDANTS]: [B]oth parties contend this is a means-
plus-function construction.”). Ordinarily, the word “means” in a claim creates a rebuttable
5
The Court initially construed the term as the apparatus disclosed in the ’732 patent because of a shared Figure 1
and the reference to the apparatus in the ’844 patent. See ’844 patent col. 1 l. 39–40 (“Such method uses a computer
system, the apparatus of [the ’732 patent], and the software application of the [the ’732 patent].”). While the ’732
patent is incorporated by reference and therefore “provides context” to claim construction, the ’844 patent does not
provide a comprehensive explanation linking the structure to the performance of the function. Fiber, 792 Fed.
App’x at 795 (quoting Default Proof Credit Card Sys., Inc., 412 F.3d at 1301 (“As an initial matter, material
incorporated by reference cannot provide the corresponding structure necessary to satisfy the definiteness
requirement for a means-plus-function clause.”) (internal quotes and citation omitted)); see Finjan LLC v. ESET,
LLC, 51 F.4th 1377, 1382 (Fed. Cir. 2022). As a preliminary construction, however, the Court was willing to
construe in favor of validity, despite the tenuous link between structure and performance of the function.
- 14 -
presumption § 112, ¶ 6 applies, which the party seeking to overcome the presumption has the
burden to proffer evidence to rebut. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348
(Fed. Cir. 2015); Apex, Inc. v. Raritan Comput., Inc., 325 F.3d 1364, 1371–72 (Fed. Cir. 2003)
(placing the evidentiary burden to rebut on the party seeking to overcome the presumption).
Here, neither party seeks to rebut a mean-plus-function construction, so the Court need not
determine whether the rebuttable presumption is overcome and instead analyzes definiteness
under the mean-plus-function construction.
Determining definiteness under a means-plus-function construction requires a two-step
analysis. Williamson, 792 F.3d at 1351. First, a court will “identify the claimed function.” Id. at
1351 (citing Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1311 (Fed. Cir. 2012)). “Then, the
court [will] determine what structure, if any, disclosed in the specification corresponds to the
claimed function.” Id. at 1349.
First, the Court identifies the claimed function. Both parties agree the claimed function is
to “read a credential.” See Defs.’ Cl. Constr. Br. at 4–5 (arguing the construction, among other
limitations, includes “reading a credential”); Pl.’s Resp. Cl. Constr. Br. at 2–3 (contending the
construction should be “read a credential”). The Court agrees “reading a credential” is at least
the primary claimed function here as it is consistent with the claim language. ’844 patent col. 5
ll. 1–2 (emphasis added) (“a standardized credential reader means for reading a credential”).
Claim 1 also suggests the standardized credential reader may store some information for some
amount of time. The claim states a “software application” can “recover[] information from the
standardized credential reader,” and “a central processing unit” can “receiv[e] information from
the standardized credential reader.” ’844 patent col. 5 ll. 5–6, 24–25 (emphasis added).
Second, the Court determines whether the specification discloses sufficient structure
corresponding to the claimed function. Williamson, 792 F.3d at 1351. When asked where the
specification discloses structure corresponding to the credential reader’s function, plaintiff could
not point to anything in the ’844 patent specification describing structure necessary for a
standardized credential reader means. Tr. at 44:16–24 (“THE COURT: [C]an you read from the
spec[ification] where . . . the requisite structure is given? [PLAINTIFF]: Not from the
spec[ification], no. You have to refer to external devices and the knowledge of one of ordinary
skill in the art in terms of what those devices are.”).
The Court in its preliminary construction relied on the ’732 patent to find corresponding
structure and prevent indefiniteness, but at oral argument, plaintiff disclaimed the references to
the ’732 patent in this context, specifically Figure 1 contained in both patents and column 1 lines
39 to 40. Tr. at 28:9–14 (“THE COURT: Isn’t [Figure 1] a picture from the ’732 patent?”
[PLAINTIFF]: It is a picture from the ’732 patent, but it’s a generic reference . . . we’ve never
said that this is what we’re actually using as our structural reference.”). Plaintiff asserted Figure
1 of the ’844 patent was used to denote a generic credential reader understood as a wide variety
of readers for the purpose of credential reading by a PHOSITA, not a specific structure. Tr. at
28:20–29:14. Indeed, plaintiff argues, “The patent-in-suit identifies one or more standard
devices for performing this function. However, the patent covers both such standard devices and
any equivalents.” Pl.’s Resp. Cl. Constr. Br. at 2–3. Plaintiff, however, cannot point to other
language in the ’844 patent describing products or characteristics of products which could be
- 15 -
used for the purpose of reading credentials. See Tr. at 30:10–16 (“THE COURT: Is there
anywhere where it says that it could be a variety of certain products or a reader that has certain
attributes or may have certain attributes? [PLAINTIFF]: Not to my knowledge.”). Even using
the reference to the ’732 figure, the link between the apparatus and the performance of function
was tenuous; with plaintiff disclaiming the ’732 figure as a specific structure, the ’844 patent
specification cannot adequately explain how the apparatus, including the apparatus incorporated
though the ’732 patent, performs the function. By characterizing Figure 1 as a generic and
cabining its structure to the ’732 patent, the specification, including its figures, now do not link
any structure to the claimed function. See Williamson, 792 F.3d at 1351–54.
To support a structure, plaintiff states the generic reader is sufficient “to refer to a group
of electronic devices by one of ordinary skill in the art.” See Tr. at 28:23–29:7. Plaintiff asserts
the Federal Circuit in Telcordia held the word “controller” was deemed to have sufficient
structure for a “means-plus-function claim because the record shows that an ordinary artisan
would have recognized the controller as an electronic device of known structure.” Id. Telcordia,
however, is distinguishable from the current case because the meaning of “controller” was
clarified and supported by expert testimony, whereas no such testimony in support of “credential
reader” exists here. Telcordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1377 (Fed. Cir.
2010).
“The indefiniteness inquiry is concerned with whether the bounds of the invention are
sufficiently demarcated, not with whether one of ordinary skill in the art may find a way to
practice the invention.” ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012).
Plaintiff’s boundless mention of devices is an insufficient demarcation of the invention. Id.Plaintiff agrees the claim invokes means-plus-function claiming yet fails to point to any structure
“in the specification [corresponding] to the claimed function.” Williamson, 792 F.3d at 1351.
Plaintiff is unable to prove “the claim term is used in common parlance or by persons of skill in
the pertinent art to designate structure, even if the term covers a broad class of structures and
even if the term identifies the structures by their function.” Skky, Inc. v. MindGeek, S.A.R.L., 859
F.3d 1014, 1019 (Fed. Cir. 2017) (cleaned up) (quoting TecSec, Inc. v. Int’l Bus. Machs. Corp.,
731 F.3d 1336, 1347 (Fed. Cir. 2013)). Under 35 U.S.C. § 112, ¶ 6, a person of ordinary skill in
the art is unable to recognize the structure in the specification and associate it with the
corresponding function in the claim; the means-plus-function clause of “standardized credential
reader means” is therefore indefinite. See Williamson, 792 F.3d at 1354.
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
“Here the claimed function is to ‘read a “Indefinite.
credential.’ The patent in suit identifies one
or more standard devices for performing this To the extent the term is construed,
function. However, the patent covers both Defendants propose:
such standard devices and any equivalents.
You have heard testimony in the trial of this A device, separate from the ID authenticator,
matter relating to whether or not the accused for reading a credential encoded with personal
products are such equivalents. As the fact identification that has a fixed 2D imaging
finder, your role is to decide whether the assembly, an angled window on which the
credential is placed, an ID/object detector,
- 16 -
products accused of infringing by plaintiff are and a 3-track magstripe reader, all of which
such equivalents or not.” are mounted in a housing. The device does
not rely on any of the following to improve
the image resolution: movement or rotation of
any component, mirroring, focused circuitry,
a display screen, movable support, a
longitudinal axis, a support shroud, an optics
rotating assembly, or a user visible indicator.”
Court’s Construction
Indefinite.
IV. Disputed Claim Term #2: “credential encoded with personal identification”
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
“Plain meaning.” 6 “Indefinite.
Pl.’s Cl. Constr. Br. at 4. To the extent the term is construed,
Defendants propose:
A credential used to prove an individual’s
identity containing a machine-readable
magnetic stripe or bar code which stores at
least the individual’s full name.”
Defs.’ Cl. Constr. Br. at 7.
The disputed term is used in claims 1 and 3. See ’844 patent col. 5 ll. 1–4, col. 5 l. 44–
col. 6 l. 5. The following claim limitations highlight selected usage of the term in context:
a standardized credential reader means for reading a credential encoded with
personal identification to be used at entry point into the airport sterile areas
and automatically collects data to build individual real time records;
id. col. 5 ll. 1–4.
An automatic access control system as claimed in claim 1, wherein the standardized
credential reader can read any one of: driver license identification,
passports, boarding passes or any other standardized credentials presented
as a personal identification upon entry into the airport, and whereas
6
Plainitiff inadvertently pasted in the proposed construction of a different disputed term for term 2 in exchange of
proposed construction. Plaintiff, however argues disputed term 2 as plain meaning. See Pl.’s Cl. Constr. Br. at 4 n.2
(“Plaintiff regrets the inadvertent provision of the definition for another term in the supplemental exchange of
definitions. (See Ex. C at 3). The parties have exchanged numerous tables for the claim terms with unfortunately
many different orders for the terms even for each party, so while cut and pasting is helpful, it has its hazards. In any
event, rather than ask for a supplemental definition, Defendants construed this mistake as an argument for ‘a
credential,’ stripping the term of its requirement that it be encoded with personal identification. As with many of the
other claims that have clearly understood terms, Plaintiff intended to argue only for plain meaning.”)
- 17 -
standardized credentials refer to identification documents encoded using
established standards.
Id. col. 5 l. 44–col. 6 l. 5.
A. Parties’ Arguments
Defendants primarily argue the term is indefinite under § 112, ¶ 2. Defendants raise
several indefiniteness arguments concerning the “multiple types of credentials” plaintiff attempts
to claim and the ambiguity surrounding “which ones include information ‘encoded’ thereon that
qualifies as ‘personal identification.’” Defs.’ Cl. Constr. Br. at 7. Defendants asserts “it is
impossible to determine whether the airport ID so described is also a ‘credential encoded with
personal identification’” because after the reader device reads an airport ID, the reader device
requires the employee to enter a security code in a numeric keypad. Id. at 8. Defendants argue
“[i]t is unclear whether using the information read from the airport ID to verify ‘employment
status’ . . . would qualify . . . as ‘personal identification’ . . . or . . . would not qualify because the
separate security code entered on a keypad . . . is necessary to establish the identity of the
holder.” Id. (emphasis omitted).
Plaintiff rebuts defendants’ indefiniteness arguments by defining “encode” as “to convert
into a coded form” and narrowing “personal identification” to “personal identification
information” because “encoding with personal identification” requires information. Pl.’s Resp.
Cl. Constr. Br. at 4. Plaintiff argues both “encode” and “personal information” “have very clear
meanings to one of ordinary skill,” and “read together, it is clear all that is meant is that the
credential have plain text personal identification information encoded on it in some fashion,
i.e.[,] a bar code or magnetic stripe.” Id. at 4–5. Plaintiff argues the claim does not exclude
airport IDs, contrary to defendants’ position, because the keypad security code merely functions
as an “additional security measure so [airport IDs] are not misused.” Id. at 5. If “information
sufficient to identify an individual is encoded,” plaintiff argues, “this claim limitation is met.”
Id.
If the claim is definite, defendants argue, the Court should construe the scope of the claim
in accordance with the “structures disclosed in the intrinsic record, and in particular [the ’732
patent,]” which would require limiting the “personal information” to information encoded in
magnetic strips or bar codes. Defs.’ Cl. Constr. Br. at 8. Plaintiff argues the examples of
encoded information in the ’732 patent “do not overrule the plain meaning” of “credential
encoded with personal identification.” Pl.’s Resp. Cl. Constr. Br. at 6. According to plaintiff,
“credential encoded with personal identification” should be given its ordinary meaning: “[a]
credential used to prove an individual’s identity containing a machine-readable aspect (e.g., a
magnetic stripe or bar code) which stores a name or number that, alone or in combination with
other information, is sufficient to identify a specific individual.” Id.
B. Analysis
1. The Court’s Preliminary Construction
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Before the Markman hearing, the Court provided the parties with the Court’s preliminary
construction after considering both parties’ claim construction briefs and all referenced materials
in full. Tr. at 8:15–19. The Court first addressed defendants’ indefiniteness arguments.
Defendants argue two embodiments described in the specification suggest competing
interpretations of “credential encoded with personal identification,” so the patent should fail for
indefiniteness. Defs.’ Cl. Constr. Br. at 7–8. Defendants do not explain why the term cannot
cover both types of identification.
The specification language referenced by defendants suggests a broad interpretation. Id.
The ’844 patent, when describing the operation of the system, indicates a driver’s license is
merely offered as an example. ’844 patent col. 3 ll. 37–38 (“[a] credential, in this case a driver
license, is presented to the reading apparatus) (emphasis added). Language in dependent claim 3
further supports a broad reading which would cover both types of credentials: “the standardized
credential reader can read any one of: driver license identification, passports, boarding passes or
any other standardized credentials presented as a personal identification . . . whereas
standardized credentials refer to identification documents encoded using established standards.”
’844 patent col. 5 l. 44–col. 6 l. 5. The PHOSITA is not left in the “zone of uncertainty” as to
whether the term refers to a driver’s license or airport ID because the claim term explicitly
covers both. Id. Accordingly, the Court preliminarily rejected defendants’ indefiniteness
arguments.
Claim terms are “generally given their ordinary and customary meanings” unless the
patentee acts as his own lexicographer or disavows the full scope of the claim in the
specification or during patent prosecution. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13
(Fed. Cir. 2005); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
2012) (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996)). The
embodiments referenced by defendants provide context for evaluating the scope of the patent,
but do not limit the Court’s construction. See Phillips, 415 F.3d at 1323–24. The described
embodiments merely exemplify operation of the system and do not act as explicit definitions or
overcome the presumptive use of plain and ordinary meaning. See Markman v. Westview
Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995); Jack Guttman, Inc. v. Kopykake Enters.,
Inc., 302 F.3d 1352, 1360–61 (Fed. Cir. 2002). The Court, therefore, rejected the construction
offered by defendants which requires encoding of at least the individual’s full name. Defs.’ Cl.
Constr. Br. at 7–8. Likewise, the Court also rejected defendants’ argument the patent should be
limited to use of only magnetic stripe or bar code as a method for encoding. Id. at 8. Such
limitations are not clearly adopted by the ’844 patent and are merely contemplated by the ’732
patent. See ’844 patent; ’732 patent. Finally, neither the specification nor the prosecution
history demonstrates an intention by the patentee to disavow the scope of the plain and ordinary
meaning, and neither party argrues otherwise in the briefing. See ’844 patent; Defs.’ Cl. Constr.
Br.; Pl.’s Resp. Cl. Constr. Br.; Defs.’ Reply Cl. Constr. Br.; Pl.’s Surreply Cl. Constr. Br. As
neither of the two exceptions for ordinary meaning are met, supra Section II.A., the Court did
not adopt the limitations provided by the ’732 patent and instead preliminarily adopted the plain
and ordinary meaning of this term. See Phillips, 415 F.3d at 1312–13. Insofar as a specific
definition is useful, the Court offered the following: “a certified document containing
information relating to a particular individual converted from one system of communication into
another.” Credential, Merriam-Webster Dictionary, https://www.merriam-
- 19 -
webster.com/dictionary/credential (last visited Jan. 10, 2023) (“testimonials or certified
documents showing that a person is entitled to credit or has a right to exercise official power);
Encode, Merriam-Webster Dictionary, https://www.merriam-webster.com/dictionary/encode
(last visited Jan. 10, 2023) (“to convert (something, such as a body of information) from one
system of communication into another”); Personal, Webster’s Third New International
Dictionary (2002) (“of or relating to a particular person”).
2. The Court’s Final Construction
At the Markman hearing, the parties agreed with the Court’s preliminary construction
with certain modifications. See Tr. at 52:1–60:25. Consistent with defendants’ request, a list of
documents including “driver’s license, passport, boarding pass, airport ID” has been added. Tr.
at 56:11–20. Consistent with plaintiff’s request, the term “certified” is replaced with
“standardized.” Tr. at 58:18–59:17. The Court’s final construction is: “a driver’s license,
passport, boarding pass, airport ID, or other standardized documents containing information
relating to a particular individual converted from one system of communication into another.”
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
“Plain meaning.” “Indefinite.
To the extent the term is construed,
Defendants propose:
A credential used to prove an individual’s
identity containing a machine-readable
magnetic stripe or bar code which stores at
least the individual’s full name.”
Court’s Construction
Plain meaning: “a driver’s license, passport, boarding pass, airport ID, or other standardized
documents containing information relating to a particular individual converted from one
system of communication into another.”
V. Disputed Claim Term #3: “build individual real time records”
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
“Plain meaning. The system generates a data “Indefinite.
record in real time. The data and entry
decision are displayed to the operator but not To the extent the term is construed,
accessed by the system operator. Accessing Defendants propose:
data means ability to edit, update and make
changes, which is not the case here.” Create and store a record of information
obtained from each credential reading,
Pl.’s Resp. Cl. Constr. Br. at 6. including at least the individual’s photo and
all information extracted from the machine-
readable magnetic stripe or bar code, which
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may be accessed by the system operator at
any time”
Defs.’ Cl. Constr. Br. at 9.
The disputed term in used in claim 1:
a standardized credential reader means for reading a credential encoded with
personal identification to be used at entry point into the airport sterile
areas and automatically collects data to build individual real time records;
’844 patent col. 5 ll. 1–4.
A. Parties’ Arguments
Defendants contend plaintiff’s plain meaning construction is indefinite because the claim
provides no explanation of how records are built, what constitutes a record, or how the record
building is done in real time, leaving one of ordinary skill in a zone of uncertainty as to what
activity is covered by this claim term. Defs.’ Cl. Constr. Br. at 9. According to defendants,
plaintiff’s “general dictionary definitions” do not remedy this uncertainty. Defs.’ Reply Cl.
Constr. Br. at 4–5. Plaintiff disagrees, asserting the “information collected and processed” from
a standardized credential reader means would be “known to one of ordinary skill” because the art
uses “only a few” machines for this function. Pl.’s Surreply Cl. Const. Br. at 5.
Plaintiff argues “build individual real time records” is not indefinite. Pl.’s Resp. Cl.
Constr. Br. at 6–8. Plaintiff relies on general dictionary definitions for “build” and “real time” to
demonstrate “build” and “real time” are well understood and therefore not indefinite. Id. at 6–7
(defining build as to “construct (something) by putting parts or material together,” and real time
as “a system, in which input data is processed within milliseconds so that it is available virtually
immediately as feedback”) (quoting Exs. D, ECF No. 140-5 (Google definition of “build”), E,
ECF No. 140-6 (Google definition of “real time”).
Both parties also offer alternative constructions. Plaintiff suggests the term should be
construed broadly as “any step of storing data received by a credential reader,” if the Court does
not adopt the plain meaning construction. Id. at 8. Defendants reject this reading as “overbroad”
because the construction “would apply to essentially any step of storing data received by an
accused credential reader.” Defs.’ Cl. Constr. Br. at 10. Plaintiff argues breadth is irrelevant, for
“[p]atentees are entitled to claim as broadly or as narrowly as they like, so long as the patent is
valid.” Pl.’s Resp. Cl. Constr. Br. at 7. Defendants’ alternative construction, in contrast,
imposes two limitations related to “what data is collected and stored in the process of ‘building’
the records”: (1) the record must include the “individual’s photo and all information extracted
from the machine-readable magnetic stripe or bar code”; and (2) the “system operator” must be
able to “access” the record “at any time.” Defs.’ Cl. Constr. Br. at 9. Plaintiff characterizes
these limitations as attempts to “seize on illustrations in the patent to try to claim a definition
limited to those illustrations.” Pl.’s Resp. Cl. Constr. Br. at 7.
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B. Analysis
1. The Court’s Preliminary Construction
Before the Markman hearing, the Court provided the parties with the Court’s preliminary
construction after considering both parties’ claim construction briefs and all referenced materials
in full. Tr. at 8:15–19. At the onset, the Court noted there are two types of records created by
practicing claim 1 of the ’844 patent: (1) “individual real time records” generated by a
“standardized credential reader means,” ’844 patent col 5. ll. 1–4; and (2) an “authentication data
record” generated by an “ID authenticator,” id. at col. 5 ll. 21–23. “[D]ifferent claim terms are
presumed to have different meanings,” so the Court considered intrinsic evidence concerning the
individual real time records. MicroStrategy Inc. v. Bus. Objects Ams., 238 F. App’x 605, 609
(Fed. Cir. 2007) (citations omitted). For clarity, the Court construed the term by parsing it into
two phrases: first construing “real time” and then addressing what is required to “build
individual records.”
The ’844 patent and ’732 patent specifications extensively detail what “real time” means
and include disclosures supporting plaintiff’s proffered dictionary definition. Compare Pl.’s
Resp. Cl. Constr. Br. Ex. E (Google definition of “real time”) (defining real time as “a system, in
which input data is processed within milliseconds so that it is available virtually immediately as
feedback”), with ’844 patent col. 5 ll. 26–29 (“upon a credential reading, the automated access
control system automatically determines the source of the credential data record, and
automatically extracts personal information”), and the ’732 patent col. 9 ll. 56–60 (“A large
number of workstations are connected to a local area network . . . controlled by a central
database server . . . . In such a[n interconnected] network, all data is immediately available at all
workstations.”). The Court agrees the “information collected and processed” from a
standardized credential reader means would be “known to one of ordinary skill” as it was well
known in the art. Presidio Components, Inc. v. Am. Tech. Ceramics Corp., 875 F.3d 1369, 1376
(Fed. Cir. 2017) (“A patent need not explicitly include information that is already well known in
the art.”). Indeed, reading credentials and generating real time records is “sufficiently well
established in the art and referenced in the patent to render the claims not indefinite.” Id. The
Court accordingly accepted plaintiff’s proffered definition for “real time.” See id.Turning to “build[ing] individual records,” the claims describe a process where a
“standardized credential reader means” reads a “credential encoded with personal identification
[information].” ’844 patent col. 5 ll. 1–4. The ’844 patent claims mention personal
identification information is “automatically collect[ed] . . . to build individual real time records,”
id.; the ’732 patent provides some necessary clarification. 7 The claims of the ’732 patent outline
the potential arrangement of the system: each “workstation can be standalone with all data
collected and stored locally, or otherwise [the workstation can be] connected to a local area
network or an intranet . . . with data stored in a central database server.” ’732 patent col. 14 ll.
7
The Court finds the ’732 patent’s disclosures on the apparatus or software application are available as intrinsic
evidence to the ’844 patent because the ’732 patent is the ’844 patent’s parent. See ’732 patent col. 9 l. 40–col. 13 l.
25; see also E.I. du Pont de Nemours & Co. v. Unifrax I LLC, 921 F.3d 1060, 1070 (Fed. Cir. 2019). The ’732
patent discloses elements of the method claimed by the ’844 patent.
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27–31 (emphasis added). The ’732 patent specification further clarifies “[t]he functional intent
of this apparatus is to provide a means for automatically recovering information from
standardized identification cards and processing the data through an internal processor and
communicating the output to a computer system or network application.” Id. at col. 7 ll. 3–8
(emphasis added). Viewing the patents together, a “standardized credential reader means”
processes and stores the credential data internally—at least for a temporary period before the
data is extracted and stored on the central database server.
The ’732 and ’844 patents also disclose the process of building real time records: the
“standardized credential reader means” first decodes data and then encrypts sensitive data. See
’732 patent fig.7; ’844 patent col. 3 ll. 39–41 (“The system decodes the encoded data and
encrypts the sensitive information before displaying it on the work-station monitor for
verification by the station guard.”). A software application, designed for recovering information
from the standardized credential reader, extracts the encoded data before the system “display[s
the data] on the work-station monitor for verification by the station guard.” ’844 patent col. 3 ll.
40–41. The phrase “for recovering information from” is used several times in the ’732 patent to
describe the standardized credential reader’s acquisition of information “from standardized
personal identification credentials.” See, e.g., ’732 patent col. 13 ll. 27–28, 47–48, 57–58. The
credential reader is separate from the credential, so the inventor’s consistent usage between
familial patents implies the software application is also separate from the credential reader. See
’844 patent col. 1 ll. 37–41. Accordingly, the intrinsic evidence suggests the process of
“build[ing] individual real time records” occurs exclusively on the credential reader. Id. col. 5 ll.
1–6. The Court preliminarily found the process requires the system to read information off a
credential, and then immediately: (1) save the information on the credential reader; (2) decode
the information; (3) encrypt any sensitive personal information; and (4) display the information
for verification by the gate employee. See ’732 patent fig.7, col. 13 ll. 27–28, 47–48, 57–58; see
also ’844 patent col. 3 ll. 39–41, col. 5 ll. 1–6. The description of prior art in the ’732 patent,
where plaintiff distinguished U.S. Patent No. 6,394,356 (“Zagami”) (filed June 4, 2001), further
supports the Court’s preliminary construction: (1) the Zagami system “does not claim reading
encoding available on the driver[’s] license”; and (2) without reading this information, the
Zagami system “at most” scans credentials as a picture, saving sensitive information in an
unencrypted format, which “fails to protect individual information.” ’732 patent col. 2 ll. 34–37,
49–52.
The Court, by clearly demarcating the bounds of the ’844 patent claim term “build[ing]
individual real time records,” rejected defendants’ indefiniteness arguments because the ’844
patent combined with the ’732 patent allow “a skilled artisan to know the scope of the claimed
invention with reasonable certainty.” See Presidio, 875 F.3d at 1376–77. Defendants’
indefiniteness contention of “how [records are built] in ‘real time’” is irrelevant because a patent
claim need not answer every conceivable question to be found definite. Id. at 1376 (citing
Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 909–10 (2014)). Defendants’ alternative
construction fares no better, for nothing in the claims or the specification limits what information
must be stored from the read data. See ’732 patent col. 11 ll. 30–32 (“Each data item . . . can be
saved in the system data store or ignored at the end of an admission process”), col. 11 ll. 28–29
(“Data shown in the collection form can be customized for viewing and saving as specified by
the system administrator.”), col. 10 ll. 43–47 (“[D]igital images . . . [of a potential visitor] are
- 23 -
saved or stored in the system only if the individual is actually admitted into the facility.”).
Limitations from preferred embodiments are not read “into the claims absent a clear indication in
the intrinsic record that the patentee intended the claims to be so limited.” Liebel-Flarsheim Co.
v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004). Defendants offered no indication in the
intrinsic record that these limitations were intended, so the Court declined to read them into the
claims and rejected defendants’ alternative construction.
Plaintiff’s broad proposed constructions must also be rejected. Zagami discloses a “basis
for providing an access control system,” to “generate[] a data record in real time” and “stor[e]
data received by a credential reader,” which means either relevant portions of the ’844 patent are
fully disclosed in the art, or “build[ing] individual real time records” requires additional
disclosure. ’732 patent col. 1 l. 64–col. 2 l. 52. Plaintiff distinguishes Zagami because of the
’844 patent’s usage of decoding and encrypting, so decoding and encrypting must be a necessary
part of “build[ing] individual real time records.”
In sum, the Court preliminarily found the intrinsic evidence to support the following
construction: “the credential reader immediately generates a digital record after decoding
information from the credential and encrypting sensitive personal information.” See ’844 patent
col. 3 ll. 39–41 (“The system decodes the encoded data and encrypts the sensitive information
before displaying it on the work-station monitor for verification by the station guard.”); ’732
patent fig.7, col. 14 ll. 27–31 (“[T]he system workstation can be standalone with all data
collected and stored locally, or otherwise connected to a local area network or an intranet . . .
with data stored in a central database server . . . .”).
2. The Court’s Final Construction
At the Markman hearing, the parties agreed with the Court’s preliminary construction
with certain modifications. See Tr. at 60:9–69:10. Defendants requested the language “stored
within the system for access by a operator at any time” be added as the language was supported
by the specification. Tr. at 63:15–66:6; ’844 patent col. 4 ll. 10–11 (“At any time, the gate
attendant is able to review the records that have been collected during the entry process.”).
Plaintiff agreed to this modification and suggested use of the term “user” instead of “operator.”
Tr. at 65:19. The Court’s final construction is: “The credential reader immediately generates a
digital record after decoding information from the credential and encrypting sensitive personal
information. The digital record is then stored within the system for access by a user at any time.”
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
“Plain meaning. The system generates a “Indefinite.
data record in real time. The data and
entry decision are displayed to the To the extent the term is construed,
operator but not accessed by the system Defendants propose:
operator. Accessing data means ability to
edit, update and make changes, which is Create and store a record of information
not the case here.” obtained from each credential reading,
including at least the individual’s photo and
all information extracted from the machine-
- 24 -
readable magnetic stripe or bar code, which
may be accessed by the system operator at
any time”
Court’s Construction
The credential reader immediately generates a digital record after decoding information from
the credential and encrypting sensitive personal information. The digital record is then stored
within the system for access by a user at any time.
VI. Disputed Claim Term #4: “credential collected information match”
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
“Plain meaning. As an illustration, checks can “Indefinite.
be made against TSA lists, employee lists if
employee, or traveler lists, if traveler.” To the extent the term is construed,
Defendants propose:
Pl.’s Resp. Cl. Constr. Br. at 8.
A match between the individual real time
record created for the presented credential and
any previously collected and stored individual
real time record containing the same name, or
information extracted from the same
credential.”
Defs.’ Cl. Constr. Br. at 10.
The disputed term is used in claim 1:
real time records are checked searching for a credential collected information
match; individual suspicious status is checked against a security list stored
in a system database; employee records are checked to determine if the
individual is an employee; the type of entry, visitor, employee, contractor,
supplier, or vendor, is determined; and admission is processed as entry or
re-entry of the individuals,
’844 patent col. 5 ll. 8–15.
A. Parties’ Arguments
Defendants argue this term is indefinite. Defs.’ Cl. Constr. Br. at 10. Defendants
contend the list of functions (including the contested term) require the “software application [to
perform] three separate and distinct functions, creating ambiguity as to how” the contested term
differs from what is covered by the second and third recited functions. Id. at 11–12 (identifying
the second phrase to include matches found by “comparing data read by the reader device
against an airport employee database to verify employee status” and the third phrase to include
“comparing data read by the reader device against a suspect individual list obtained from an
outside source”). Moreover, defendants argue plaintiff’s “suggested interpretation of [function
- 25 -
1] as a ‘catchall’ would clearly render [functions 2 and 3] superfluous.” Defs.’ Reply Cl. Constr.
Br. at 6. If the Court does not find the term indefinite, defendants propose the term be construed
as: “[a] match between the individual real time record created for the presented credential and
any previously collected and stored individual real time record containing the same name, or
information extracted from the same credential.” Defs.’ Cl. Constr. Br. at 10.
To rebut defendants’ indefiniteness argument, plaintiff offers an illustration of potential
databases where the collected information may be “matched”: “TSA lists, employee lists[,] if
employee, or traveler lists, if traveler.” Pl.’s Resp. Cl. Constr. Br. at 8. Plaintiff reasons the
preamble to the contested term, “‘wherein one or more of the following process[es] is
performed,’” contextualizes the subsequent clauses as part of a list. Id. at 9 (quoting ’844 patent
col. 5 ll. 6–7). More specifically, plaintiff argues the term is a “catchall phrase in the midst of
much more specific types of matches, only one of which needs to be performed by the accused
process to infringe this claim.” Id. If found to be definite, plaintiff argues “credential collected
information match” should be given its plain and ordinary meaning. Id. at 8.
B. Analysis
1. The Court’s Preliminary Construction
Before the Markman hearing, the Court provided the parties with the Court’s preliminary
construction after considering both parties’ claim construction briefs and all referenced materials
in full. Tr. at 8:15–19. The ’844 patent specification discloses the elements for a “credential
collected information match,” including three main prerequisite steps: (1) the standardized
credential reader means decodes the credential; (2) the standardized credential reader means
encrypts sensitive personal information; and (3) the station guard views the resulting “real time
record” after the standardized credential reader means presents the record for verification. See
’844 patent col. 3 ll. 35–41. After station guard verification, the system “checks database
information to determine whether the individual is an employee, contractor, vendor, supplier or a
visitor.” ’732 patent col. 10 ll. 32–34; see also ’844 patent col. 5 ll. 12–13 (“the type of entry,
visitor, employee, contractor, supplier, or vendor, is determined”). If the individual is an
employee who is “recognized using the employee pre-selected alternative credential,” the system
displays the employee’s picture, which is verified by the station guard. ’732 patent col. 10 ll.
35–39; see also ’844 patent col. 5 ll. 30–31 (“other alternative credentials”). If the individual is
“recognized as a visitor, then the system acquires a digital image of the individual” using a
camera, which is “saved or stored in the system only if the individual is actually admitted into
the facility.” ’732 patent col. 10 ll. 41–47. The system then “checks existing records for
possible matches. If a match is found, the archived record is displayed with the
contemporaneous record . . . to facilitate visual confirmation by the station guard.” Id. col. 10 ll.
48–52; see also ’844 patent col. 5 ll. 29–30 (“checked against a security list”). In addition, the
system “further checks for known and suspected criminal, saboteurs, and terrorists using lists as
delivered by the US Department of Homeland Security.” ’732 patent col. 10 ll. 55–58; see also
’844 patent col. 5 ll. 29–30 (“checked against . . . TSA NO-FLY list, SELECTEE list”). If all
checks are negative, “the system searches for previous visitor records,” and if found, the system
displays the previous image for visual confirmation by the station guard. ’732 patent col. 10 ll.
64–67; see also ’844 patent col. 5 ll. 14–15 (“admission is processed as entry or re-entry of the
- 26 -
individuals”). In sum, the disclosure identifies four potential matches: (1) an employee match;
(2) a Department of Homeland Security list match; (3) an archived record match; and (4) a
current visitor match (for entry/re-entry).
Turning to the parties’ proposed constructions, the Court agreed with plaintiff the plain
meaning is sufficiently clear within context of the specifications but disagreed the “credential
collected information match” is a “catchall” provision. See Pl.’s Resp. Cl. Constr. Br. at 8–9.
Defendants’ attempt to limit this “match” to a “collected and stored individual real time record
containing the same name, or information extracted from the same credential” is unsupported by
the intrinsic record. See Defs.’ Cl. Constr. Br. at 10. Accordingly, the Court preliminarily
construed “credential collected information match” according to its plain and ordinary meaning.
See Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996)). Insofar as a specific
definition is useful, the Court offered the following preliminary construction: “when the data
collected from a currently presented credential is equal or similar to an existing record.” See
Match, Merriam-Webster Dictionary, https://www.merriam-webster.com/dictionary/match (last
visited Jan. 10, 2023) (“a person or thing equal or similar to another); Information, Webster’s
Third New International Dictionary (2002) (“facts of figures ready for communication or use as
distinguished from those incorporated in a formally organized branch of knowledge: DATA”).
2. The Court’s Final Construction
At the Markman hearing, both parties agreed to the Court’s preliminary plain meaning
construction. Tr. at 67:1–9. The Court adopts its preliminary construction as final: plain
meaning, “when the data collected from a currently presented credential is equal or similar to an
existing record.”
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
“Plain meaning. As an illustration, checks can “Indefinite.
be made against TSA lists, employee lists if
employee, or traveler lists, if traveler.” To the extent the term is construed,
Defendants propose:
A match between the individual real time
record created for the presented credential and
any previously collected and stored individual
real time record containing the same name, or
information extracted from the same
credential.”
Court’s Final Construction
Plain meaning: “when the data collected from a currently presented credential is equal or
similar to an existing record.”
VIII. Disputed Claim Terms #5: “system database”
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
- 27 -
“Plain meaning. A database is a database and “A central database server, connected to
yes there is a system involved but all the automated access control system over a
databases involve some type of system. local area network, that stores at least
Currently, that hardly means it is connected to individual real time records and a security
a [local access network (‘LAN’)] and list for multiple automated access control
generally its not given improvement in WiFi systems.”
and cellular technologies like 5G.”
Defs.’ Cl. Constr. Br. at 13.
Pl.’s Resp. Cl. Const. Br. at 9–10.
The disputed term in used claims 1, 5, and 6. ’844 patent col. 5 ll. 7–15, col. 6 ll. 9–14,
15–19. The following claim limitations highlight selected usage of the term in context:
real time records are checked searching for a credential collected information
match; individual suspicious status is checked against a security list stored
in a system database; employee records are checked to determine if the
individual is an employee; the type of entry, visitor, employee, contractor,
supplier, or vendor, is determined; and admission is processed as entry or
re-entry of the individuals,
id. col. 5 ll. 5–7,
5. An automated access control system as claimed in claim 1, wherein the system
database includes one or more interrelated group of records: the airport employee
as ESCORTER, the DMV vehicle registration card information, the driver
identification record and the passengers’ identification records.
id. col. 6 ll. 9–14,
6. An automated access control system as claimed in claim 1, includes: a wireless
barcode reader, a system database, a suitable camera, a color plastic card printer, a
keyboard, a laser printer, an intranet package and a display monitor.
id. col. 6 ll. 15–19.
A. Parties’ Arguments
Defendants argue “system database” in the context of the ’844 patent requires the
combination of a central server, the automated access systems, and a local area network. Defs.’
Cl. Constr. Br. at 14. According to defendants, the embodiment described in the ’844 patent
makes use of a network and limits the breadth of the term because a single embodiment can be
appropriately used to limit patent scope. Id. at 13 (citing Medicines Co. v. Mylan, Inc., 853 F.3d
1296, 1309 (Fed. Cir. 2017)).
Plaintiff argues patent scope can only be limited by a single embodiment when the term
has no generally accepted technical meaning and intrinsic evidence is required to construe the
- 28 -
term. Pl.’s Resp. Cl. Constr. Br. at 10. Plaintiff further argues “the term ‘system database’ is
being used in its conventional manner to simply describe a conventional component used in the
invention.” Id. The “‘system database’ . . . has a well understood meaning to one of ordinary
skill in the art,” so plaintiff argues “plain meaning should . . . control.” Id. at 10–11.
B. Analysis
1. The Court’s Preliminary Construction
Before the Markman hearing, the Court provided the parties with the Court’s preliminary
construction after considering both parties’ claim construction briefs and all referenced materials
in full. Tr. at 8:15–19. The Court first determined whether defendants’ proposed construction
was supported in the patent. Defendants’ preferred construction imposes multiple limitations on
the construction of the term. See Defs.’ Cl. Constr. Br. at 13. Defendants construe “system
database” to require a centralized server and a connection through a LAN from the server to the
automated control system, while the “system database” stores real time records and a security
list. Id. Defendants draw these limitations from language in the specification describing the
“Airport Vehicular Gate Entry system” as an “enterprise platform.” Id. at 14 (quoting ’844
patent col. 2 ll. 40–47). In the system:
multiple airport vehicular gates comprise one workstation each, interconnected in
a network configuration, controlled by a central database server. All workstations
collect and store data in the central database server. In such a network, all data is
immediately available at all workstations. Such a strategy permits vehicles entering
from one particular gate to exit from another gate.
’844 patent col. 2 ll. 40–47. The stated configuration does not explicitly correspond to a “system
database” as used in claim 1. Compare id., with id. col. 5 l. 12, col. 6 l. 10, col. 6 l. 16.
Defendants conflate “central database server” as used in the specification with “system database”
as used in the claims; however, these are not necessarily the same. The section of the
specification cited by defendants refers to storage of information collected by the individual
workstations. ’844 patent col. 2 ll. 40–47. “All workstations collect and store data in the central
database server[,]” so “all data is immediately available at all workstations” and the system can
stay up to date when a vehicle “exit[s] from another gate.” Id. (emphasis added). By contrast,
the “system database” referenced in claim term 1 stores a “security list.” Id. col. 5 ll. 12. The
specification indicates the invention—the Airport Vehicular Gate Entry system—“incorporates
critical data” from security lists which “could be supplied by . . . the US Department of
Homeland Security, the Federal Bureau of Investigation and other security agencies.” ’844
patent col. 1 ll. 54–59. In other words, the “central databases server” is not necessarily the same
as the “system database.” Consequently, the “system database” in claim 1 could be a separate
repository of information and is not limited by the methods for storing information collected by
each workstation in a central database server.
Moreover, a particular embodiment described in the specification should not limit the
scope of the claims. Phillips v. AWH Corp., 415 F.3d 1303, 1323–24 (Fed. Cir. 2005) (noting
that the Federal Circuit “expressly reject[s] the contention that if a patent describes only a single
- 29 -
embodiment, the claims of the patent must be construed as being limited to that embodiment”).
Even if the language cited by defendants were relevant to the definition of system database as
used in claim 1, the scope of the claim term should not be so limited. Id. Defendants cite
Medicines for the proposition a single embodiment can be used to provide a limited definition for
claim construction. Defs.’ Cl. Constr. Br. at 13 (citing Medicines, 853 F.3d at 1309). Medicines
is inapposite to the facts in this case. First, in Medicines, the court was required to construct a
term—“efficient mixing”—which did not “carr[y] an accepted meaning to one of ordinary skill
in the art.” Medicines, 853 F.3d at 1308. Second, in Medicines, construction of the term in a
manner consistent with the specification was necessary to overcome the prior art. Id. at 1303–
05. The patent’s novelty was based on its “batch consistency,” and the specification taught
“efficient mixing as a necessary and sufficient condition for achieving batch consistency.” Id. at
1305. Therefore, constructing “efficient mixing” based on the specification was necessary to
cabin the scope of the patent. In this case, “system database” is a common term of art and the
novelty of the patent does not depend on this term’s construction. See Pl.’s Resp. Cl. Constr. Br.
at 10–11. Therefore, the Court did not preliminarily construe “system database” with the
limitations of the embodiment described in the ’844 patent specification. See ’844 patent col. 2
ll. 40–47.
As plaintiff neither disavows claim scope or acts as his own lexicographer, the Court
preliminarily construed the term according to its plain and ordinary meaning. Thorner v. Sony
Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996)). Insofar as a specific definition is
useful, the Court offered the following: “a collection of data organized for retrieval by a
computer, and accessible by an automated access control system.” See Database, Merriam-
Webster Dictionary, https://www.merriam-webster.com/dictionary/database, (last visited Jan. 10,
2023) (“a usually large collection of data organized especially for rapid search and retrieval (as
by a computer)”).
2. The Court’s Final Construction
At the Markman hearing, both parties agreed to the Court’s preliminary plain meaning
construction. Tr. at 67:20–68:11. The Court adopts its preliminary construction as final: plain
meaning, “a collection of data organized for retrieval by a computer, and accessible by an
automated access control system.”
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
“Plain meaning. A database is a database and “A central database server, connected to
yes there is a system involved but all the automated access control system over a
databases involve some type of system. local area network, that stores at least
Currently, that hardly means it is connected to individual real time records and a security
a LAN and generally its not given list for multiple automated access control
improvement in WiFi and cellular systems.”
technologies like 5G.”
Court’s Construction
Plain meaning: “a collection of data organized for retrieval by a computer, and accessible by
an automated access control system.”
- 30 -
IX. Disputed Claim Term #6: “the type of entry, visitor, employee, contractor, supplier,
or vendor, is determined”
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
“Plain meaning. Visitor is a well understood “Indefinite.
term. So is an employee. Contractor. Supplier.
And Vendor.” To the extent the term is construed,
Defendants propose:
Pl.’s Resp. Cl. Constr. Br. at 11.
The system is capable of categorizing the
individual presenting the credential as each
one of the following and categorizes the
individual as one of the following: visitor,
employee, contractor, supplier, or vendor.”
Defs.’ Cl. Constr. Br. at 14.
The disputed term is used in claim 1:
real time records are checked searching for a credential collected information
match; individual suspicious status is checked against a security list stored
in a system database; employee records are checked to determine if the
individual is an employee; the type of entry, visitor, employee, contractor,
supplier, or vendor, is determined; and admission is processed as entry or
re-entry of the individuals,
’844 patent col. 5 ll. 8–15.
A. Parties’ Arguments
Defendants argue the disputed term is indefinite. Defs.’ Cl. Constr. Br. at 14–15.
Defendants concede the terms visitor, employee, contractor, supplier, and vendor are “well
understood terms,” but not well understood in the context of the claim. Id. Defendants state the
patent is “silent with respect to how the system determines who is in the other four distinct
categories of visitor, contractor, supplier, or vendor.” Id. at 15–17. Defendants argue “the claim
creates a zone of uncertainty as to what activity is encompassed under the claim term,” and “the
claim term remains indefinite.” Id. In the alternative, defendants argue the term should be
construed to “properly parse[] the potentially confusing use of passive voice and an ‘or’-joined
list.” Id. at 17.
Plaintiff argues the terms “visitor, employee, contractor, supplier, [and] vendor” all have
a well understood plain meaning. See Pl.’s Cl. Constr. Br. at 11. Plaintiff claims “the system
would determine whether someone is a contractor, supplier or vendor: just as with their
employees, an airport maintains a database of such individuals.” Id. Plaintiff further claims
defendants’ proposed construction should be rejected because defendants’ “definition that the
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system must be both capable of and actually perform this step” is contrary to the claim’s
language stating “one or more of the following processing is performed.” Id. at 12.
B. Analysis
1. The Court’s Preliminary Construction
Before the Markman hearing, the Court provided the parties with the Court’s preliminary
construction after considering both parties’ claim construction briefs and all referenced materials
in full. Tr. at 8:15–19. The ’844 patent details the process followed when “standardized
personal identification credentials” are presented to the reader by the attendant. See ’844 patent
col. 3 ll. 35–64. When the information is presented, “[t]he system checks database information
to determine whether the individual is an employee.” Id. col. 3 ll. 42–43. The system then
proceeds to validate the credentials by comparing them to separate “TSA NO-FLY and
SELECTEE” lists. Id. col. 3 ll. 47–48. Following the comparison, the system prompts the
attendant to insert the credential ID into an “authenticator apparatus” which verifies “physical
aspects” of the ID by comparing it to stored templates. Id. col. 3 ll. 54–60. “If all checks are
negative, . . . [t]he system . . . prints a time sensitive encoded pass.” Id. col. 3 ll. 61–64. The
specification focuses heavily on the procedure used to identify employees, but it also mentions
the system’s capability to “automatically collect[] data and build visitor records.” Id. col. 1 ll.
61–62. The parent patent specification also states “[t]he system checks database information to
determine whether the individual is an employee, contractor, vendor, supplier or a visitor.” ’732
patent col. 10 ll. 33–35. Even though the process detailed in the specification does not describe
how the system would verify other individuals such as visitors, the Court is “cautioned against
limiting the claimed invention to preferred embodiments or specific examples in the
specification.” Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1328 (Fed. Cir. 2002)
(citing Comark Comm’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998)). The use
of the system for other categories of individuals is implied because when construing claims the
Court looks “to the words of the claims themselves . . . to define the scope of the patented
invention,” and the specification allows one to extend the use of the system to other categories of
individuals. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The
’844 patent describes two key components in the process of authenticating credentials, i.e.,
building records (employees and visitors) and comparing the credentials to the records, so the
patent “need not explicitly include information [on how the comparison occurs] that is already
well known in the art.” Presidio Components, Inc. v. Am. Tech. Ceramics Corp., 875 F.3d 1369,
1376 (Fed. Cir. 2017). The ’844 patent contains sufficient disclosure to rebut defendants’
indefiniteness arguments because the “general approach [of scanning credentials and comparing
to a database is] sufficiently well established in the art and referenced in the patent.” Id. at 1377.
The detailed description of the comparison process and the development of databases for people
other than employees makes it reasonable to expect a “skilled artisan to know the scope of the
claimed invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S.
898, 910 (2014). Accordingly, when the authentication process is “read in the view of the
specification,” describing the building of visitor records, the process is reasonably applied to
other categories of individuals such as vendors, contractors, suppliers, and visitors. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995).
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Defendants note the terms “contractor” and “supplier” appear “nowhere outside their use
in the claim at issue.” Defs.’ Cl. Constr. Br. at 15. Similarly, the term “vendor” is only used
once “outside of the claim term issue.” Id. Although “visitor” is frequently used, the term is not
explicitly defined. See ’844 patent. Accordingly, none of the terms are defined, so the patentee
did not “set[] out a definition and act[] as his own lexicographer.” Thorner v. Sony Comput.
Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing Vitronics, 90 F.3d at 1580).
Similarly, the patentee did not disavow the claim scope in the specification. Id.; see ’844 patent.
The patentee neither set a definition nor disavowed the full scope of a claim term in the
specification, so the ordinary and customary meanings of the terms visitor, employee, contractor,
supplier, vendor apply. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005). The
Court preliminarily construed “the type of entry, visitor, employee, contractor, supplier, or
vendor, is determined” as: “Using the individual real time record built from the presented
personal identification credentials, the software application checks the system database stored
information to ascertain whether the individual presenting the credential is one of the following:
visitor, employee, contractor, supplier, or vendor.”
2. The Court’s Final Construction
At the Markman hearing, both parties agreed to the Court’s preliminary construction. See
Tr. at 68:11–69:10. The Court adopts it preliminary construction as final: “Using the individual
real time record built from the presented personal identification credentials, the software
application checks the system database stored information to ascertain whether the individual
presenting the credential is one of the following: visitor, employee, contractor, supplier, or
vendor.”
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
“Plain meaning. Visitor is a well understood “Indefinite.
term. So is an employee. Contractor.
Supplier. And Vendor.” To the extent the term is construed,
Defendants propose:
The system is capable of categorizing the
individual presenting the credential as each
one of the following and categorizes the
individual as one of the following: visitor,
employee, contractor, supplier, or vendor.”
Court’s Construction
“Using the individual real time record built from the presented personal identification
credentials, the software application checks the system database stored information to
ascertain whether the individual presenting the credential is one of the following: visitor,
employee, contractor, supplier, or vendor.”
X. Disputed Claim Term #7: “an ID authenticator”
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
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“An ID authenticator is a device that scans a “Indefinite.
personal identification document (including,
but not limited to, a U.S. State driver’s license To the extent the term is construed,
or a U.S. passport) and determines the Defendants propose:
authenticity of the identification document
using one or more embedded security A commercial identification card
features.” authentication device, separate from the
standardized credential reader device, which
Pl.’s Resp. Cl. Constr. Br. at 12. further includes ‘means to read non-encoded
credentials.’”
Defs.’ Cl. Constr. Br. at 17.
The disputed term is used in claim 1:
an ID authenticator, wherein a credential to be authenticated is presented, a
credential physical aspect and embedded security features are analyzed to
determine the possibility of any tempering or forgery and provide an authenticity
risk rating, said ID authenticator comprises means to read non-encoded credentials,
whereas said ID authenticator generates an authentication data record comprising
presented credential information and authentication rating,
’844 patent col. 5 ll. 16–23.
A. Parties’ Arguments
Defendants argue “ID authenticator” is indefinite because it is not supported by sufficient
structure or detail. 8 Defs.’ Cl. Constr. Br. at 17. According to defendants, within the context of
the claims, the patent defines multiple “who’s” of the “ID authenticator”: (1) a mechanism or
apparatus which automatically analyzes an ID for authentication issues; and (2) a human
attendant who uses a device to perform authentication. Id. at 18. Defendants also argue the
specification is silent on “what” the “ID authenticator” authenticates or “how” the “ID
authenticator” performs the relevant analysis. Id. at 18–19. The patent suggests either the
process may require the mechanism perform the analysis automatically or the mechanism may
merely assist a human operator in analyzing the ID. Id. at 18–19. Accordingly, defendants
assert the claim is indefinite. Id.Defendants also argue, citing Becton, based on the structure of the ’844 patent, the “ID
authenticator” and credential reader device must necessarily be separate. Defs.’ Reply Cl.
Constr. Br. at 8 (citing Becton, Dickinson & Co. v. Tyco Healthcare Grp., 616 F.3d 1249, 1254
(Fed. Cir. 2010)). Defendants note “Claim 1 separately lists ‘a standardized credential reader
means for reading a credential encoded with personal identification’ and ‘an ID authenticator’
that ‘comprises means to read non-encoded credentials.’” Id. at 8 (quoting ’844 patent col. 5 ll.
1–2, 16–21). Defendants argue the distinction creates a presumption the devices are separate,
8
Defendants argue the claim term is indefinite but do not invoke a specific paragraph under § 112 in their briefing.
- 34 -
and nothing in the intrinsic record contemplates practice of the functions in a single device. Id.
at 8. Defendants also argue the specification outlines multiple purposes for the ID authenticator,
and therefore the exact function is unclear. Defs.’ Cl. Constr. Br. at 18. If the Court finds the
term not indefinite, defendants assert the term should be limited to non-encoded credentials and a
“commercial” product as described in certain embodiments. Id. at 19.
Plaintiff argues “ID authenticator” is not inherently ambiguous because the ’844 patent
specifically references “a commercial ID card authenticator.” Pl.’s Resp. Cl. Constr. Br. at 12
(citing ’844 patent fig.1). According to plaintiff, the number of suitable devices is limited, and,
therefore, the boundary of the claims is not indefinite. Id. at 12–13. Moreover, plaintiff
contends the claims need not define the operator and device relationship as the specific device
chosen will define the relationship. Pl.’s Surreply Cl. Constr. Br. at 8. The patent does not
differentiate the functions of the standardized credential reader and “ID authenticator,” so
plaintiff argues the claim encompasses a machine performing both functions. Id. at 9–10.
“Plaintiff concedes, however, that plain meaning will indeed not suffice for this Claim” and
instead invokes means-plus-function claim interpretation. Pl.’s Resp. Cl. Constr. Br. at 13–14.
Under a means-plus-function construction, plaintiff asserts the patent contains sufficient
structure to define the meaning of “ID authenticator.” Id. at 14.
B. Analysis
1. The Court’s Preliminary Construction
Before the Markman hearing the Court provided the parties with the Court’s preliminary
construction after considering both parties’ claim construction briefs and all referenced materials
in full. Tr. at 8:15–19. The patent references a commercial identification card authentication
device. ’844 patent fig.1, element 4. While a question exists as to which specific model the
patent contemplates, the options are limited, and a skilled artisan would understand the
boundaries of the claim with reasonable certainty. Presidio Components, Inc. v. Am. Tech.
Ceramics Corp., 875 F.3d 1369, 1376 (Fed. Cir. 2017). Disclosure of a specific device, or
specific characteristics of a suitable device, is not the type of information that must be explicitly
included as it “is already well known in the art.” Id. Therefore, the Court did not preliminarily
find the term to be indefinite.
The parties agree the term refers to a commercial identification card authentication device
if the term is not indefinite. See Pl.’s Resp. Cl. Constr. Br. at 12; Defs.’ Cl. Constr. Br. at 19.
Given the device must be a standard commercial product, the Court found no reason to hold the
term indefinite or to provide a unique construction in its preliminary construction. The patentee
did not act as his own lexicographer, nor did patentee clearly disavow claim scope; neither
exception to use of the plain and ordinary meaning is triggered. See Thorner v. Sony Comput.
Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996)); Phillips v. AWH Corp., 415 F.3d 1303, 1312–13
(Fed. Cir. 2005).
While “ID authenticator” should be given its plain and ordinary meaning, the parties
dispute whether the authentication device is necessarily separate from the standardized credential
- 35 -
reader. See Pl.’s Resp. Cl. Constr. Br. at 14; Defs.’ Reply Cl. Constr. Br. at 8. The ’844 patent
provides several reasons why the two devices would be considered separate and no reasons as to
why they should be considered as one machine. First, Figure 1 of the ’844 patent shows them as
separate machines (#4–Commercial ID card Authenticator; #3–Apparatus for Recovering
Information from standardized personal identification Credentials). ’844 patent fig.1, elements
3, 4. Figure 1 is consistent with the claim language, which divides the functions between the
standardized credential reader, id. col. 5 ll. 1–15, and the “ID authenticator,” id. col. 5 ll. 16–23.
Second, the ’732 patent, which covers the standardized credential reader, does not contemplate
or enable a device capable of ID authentication. See ’732 patent. The “ID authenticator” is
accordingly a new disclosure in the ’844 patent, which does not teach the combination of “ID
authentication” into the standardized credential reader. The intrinsic record provides support for
two separate devices but does not provide support for combining these two devices into one; the
Court therefore considered the devices separately. See ’844 patent.
In sum, the Court preliminarily found “ID authenticator” should be given its plain
meaning, with the caveat the device must be separate from the “standardized credential reader
means.” Insofar as a specific definition is clarifying, the Court offered the following: “a
commercial identification card authentication device, separate from the standardized credential
reader device.”
2. The Court’s Final Construction
At the Markman hearing, plaintiff argued the authentication device need not be separate
from the credential reader but otherwise was satisfied with the Court’s construction. Tr. at
70:10–17. (“THE COURT: [T]he question is whether or not the ID authenticator necessarily
has to be separate from the credential reader. Is that right? [PLAINTIFF]: Yes, that’s the
issue . . . . The rest of it, obviously, we have no issue.”). Plaintiff stated the claims support a
combined device. Tr. at 72:18–20. (“THE COURT: [W]hat describes them as the same thing?
[PLAINTIFF]: I think the party’s claims ultimately.”). Plaintiff was unable to point to any
claim suggesting the two devices could be combined into a single device and agreed there were a
number of instances where separate devices were described throughout the specification and the
claims. See Tr. at 72:1–74:25. Plaintiff’s only explanation was the devices “could possibly be
separate, they could possibly be combined.” Tr. at 74:14–15. Defendants reasserted the claims
and specification “uniformly and exclusively treats [“the standardized credential reader means”
and “ID authenticator”] as separate from one another” and agreed with the Court’s preliminary
construction. Tr. at 75:19–76:18, 79:14–15. Plaintiff failed to provide any support from the
intrinsic record for a combined credential reader and ID authenticator; accordingly, the Court
adopts its preliminary construction of “ID authenticator”: “A commercial identification card
authentication device, separate from the standardized credential reader device.”
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
“An ID authenticator is a device that scans a “Indefinite.
personal identification document (including,
but not limited to, a U.S. State driver’s license To the extent the term is construed,
or a U.S. passport) and determines the Defendants propose:
authenticity of the identification document
- 36 -
using one or more embedded security A commercial identification card
features.” authentication device, separate from the
standardized credential reader device, which
further includes ‘means to read non-encoded
credentials.’”
Court’s Construction
“A commercial identification card authentication device, separate from the standardized
credential reader device.”
XI. Disputed Claim Term #8: “means to read non-encoded credentials”
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
“Plain meaning. Any automated ID “Indefinite.”
authentication systems also includes means to
read the non-encoded aspects of the Defs.’ Cl. Constr. Br. at 20.
identification.”
Pl.’s Resp. Cl. Constr. Br. at 14.
The disputed term is used in claim 1.
an ID authenticator, wherein a credential to be authenticated is presented, a
credential physical aspect and embedded security features are analyzed to
determine the possibility of any tempering or forgery and provide an authenticity
risk rating, said ID authenticator comprises means to read non-encoded credentials,
whereas said ID authenticator generates an authentication data record comprising
presented credential information and authentication rating,
’844 patent col. 5 ll. 16–23.
A. Parties’ Arguments
Defendants argue the term is a means-plus-function claim and should be construed under
35 U.S.C. § 112, ¶ 6. Defs.’ Cl. Constr. Br. at 20. According to defendants, the word “means”
creates a rebuttable presumption § 112, ¶ 6 applies, and when construed as a means-plus-function
claim, the specification fails to provide sufficient structure to disclose the function. Id. As a
result, defendants assert the term is indefinite. Id.
Plaintiff avers the specification discloses sufficient structure to perform the function in its
entirety. Pl.’s Resp. Cl. Constr. Br. at 14–15. Plaintiff points to the language from the
specification, related to vehicle tracking, which suggests the patent discloses image acquisition
and character recognition. Id. (citing ’844 patent col. 3:25–29). According to plaintiff, the
PHOSITA would recognize these requirements for vehicle tracking are applicable structure for
“means to read non-encoded credentials.” Id.
B. Analysis
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1. The Court’s Preliminary Construction
Before the Markman hearing, the Court provided the parties with the Court’s preliminary
construction after considering both parties’ claim construction briefs and all referenced materials
in full. Tr. at 8:15–19. The Court first considered whether the disputed term overcomes the
presumption of a means-plus-function construction. Ordinarily, the word “means” in a claim
creates a rebuttable presumption § 112, ¶ 6 applies. Williamson v. Citrix Online, LLC, 792 F.3d
1339, 1348 (Fed. Cir. 2015). Using the term “means to read non-encoded credentials” creates a
rebuttable presumption of means-plus-function construction, which can be overcome if the patent
recites sufficient structure for performing the function in its entirety. Skky, Inc. v. MindGeek,
S.A.R.L., 859 F.3d 1014, 1019 (Fed. Cir. 2017); see Biomedino, LLC. v. Waters Techs. Corp.,
490 F.3d 946, 950 (Fed. Cir. 2007) (discussing the inclusion of “means” in claim language
creates a presumption of § 112, ¶ 6); Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed.
Cir. 2003) (“[T]his presumption can be rebutted where the claim, in addition to the functional
language, recites structure sufficient to perform the claimed function in its entirety.”). The claim
language indicates “ID authenticator” is the structure which performs the function. See ’844
patent col. 5 ll. 16–23. The key language from claim 1 of the’844 patent is the term “comprises”
which links “ID authenticator” to “means to read non-encoded credentials,” therefore implying
“ID authenticator” provides the structure for the claimed functionality. Id. Given the Court’s
finding that “ID authenticator” is sufficiently specific when interpreted by the PHOSITA, the
overall claim term “ID authenticator comprises means to read non-encoded credentials” provides
adequate structure to implement the function in its entirety. See supra at Section X. The Court
preliminarily found the term overcame the presumption of a means-plus-function construction
because there was adequate structure for the claimed functionality; accordingly, the Court
preliminarily found the term to be definite. See Williamson, 792 F.3d at 1351–52.
The Court preliminarily found “means to read non-encoded credentials” should be
construed as a function of the “ID authenticator.” When construed in this manner, the phrase
should be given its plain and ordinary meaning: “an apparatus capable of image acquisition and
taking in the sense of letters and symbols.” See Read, Merriam-Webster Dictionary,
https://www.merriam-webster.com/dictionary/read, (last visited Jan. 10, 2023) (“to receive or
take in the sense of (letters, symbols, etc.) especially by sight or touch”).
2. The Court’s Final Construction
At the Markman hearing, the parties disputed whether the rebuttable presumption is
overcome. Plaintiff argued the application of § 112, ¶ 6 is rebutted for this term. Tr. at 86:12–
21. Defendants claimed the term “means to read non-encoded credentials” invokes means-plus-
function construction and does not overcome the rebuttable presumption as the claim has “no
structure disclosed for performing that process of reading non-encoded credentials.” Tr. at
77:14–15, 78:2–4. Defendants argued, “[T]here’s a disconnect between what the specification
teaches and what the claims require.” Tr. at 78:6–7. The disconnect, according to defendants, is
because “the claim requires the ID authenticator box scans the non-encoded credential, does
[optical character recognition (‘OCR’)] and generates a data record” whereas “[t]he specification
teaches that the ID authenticator takes a picture . . . then sends that to the system for doing the
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character recognition.” Tr. at 78:12–18. Defendants claimed the discrepancy between the
specification and the claim results in indefiniteness. See Tr. at 89:24–90:6. Defendants,
however, were unable to point to any location in the patent where the claim mandates OCR of
the credential information. See Tr. at 84:9–90:5 (“THE COURT: So your argument is that from
the claim, presented credential information must be an OCR-converted digital file?
[DEFENDANTS]: The authentication data record includes presented credential information
which necessarily is OCR . . . . That’s our position. . . . THE COURT: I just don’t see where
that conversion is mandated in the claim. [DEFENDANTS]: . . . I can’t point to anything that
specifically says the personal information in the authentication data record constitutes post-OCR
data.”).
The parties misunderstood the Court’s preliminary construction to include OCR.
Defendants understood the Court’s preliminary construction to include OCR, which is in line
with the claim but not the specification. Tr. at 88:23–89:2 (“[DEFENDANTS]: [W]e agree
generally with [the preliminary definition] capturing the notion of reading a non-encoded
credential, because you’re doing an OCR process.”). Plaintiff also misunderstood the Court’s
construction to include OCR. Tr. at 89:20–23. Plaintiff initially required the “ID authenticator”
be capable of doing OCR in plaintiff’s brief but later changed position and agreed the Court’s
construction does not and should not include OCR. Tr. at 91:13–15 (“[PLAINTIFF]: I agree. I
mean, certainly, I’ve changed my position from that brief at this point, based on [the preliminary
construction], as well as this discussion.”). The Court’s preliminary definition, however, did not
convey the capability of OCR because the key term in the disputed claim is “read” which is
defined as “to receive or take in the sense of (letters, symbols, etc.) especially by sight or touch.”
Read, Merriam-Webster Dictionary. The process of OCR requires the further recognition of
these letters and symbols as alphanumeric and conversion into digital data, which was not
described in the Court’s preliminary construction. Tr. at 88:20–22. As defendants have not
persuaded the Court OCR should be included in its construction, the Court retains its preliminary
construction of the claim term: “An apparatus capable of image acquisition and taking sense of
letters and symbols.”
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
“Plain meaning. Any automated ID “Indefinite.”
authentication systems also includes means to
read the non-encoded aspects of the
identification.”
Court’s Construction
“An apparatus capable of image acquisition and taking sense of letters and symbols.”
XII. Disputed Claim Term #9: “authentication data record”
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
“Plain meaning.” “Indefinite.
Pl.’s Resp. Cl. Constr. Br. at 15. To the extent the term is construed,
Defendants propose:
- 39 -
A record, separate from any individual real
time record, containing both information
extracted from a scanned image of the
credential and an ‘authentication rating.’”
Defs.’ Cl. Constr. Br. at 21.
The disputed term is used in claim 1:
an ID authenticator, wherein a credential to be authenticated is presented, a
credential physical aspect and embedded security features are analyzed to
determine the possibility of any tempering or forgery and provide an authenticity
risk rating, said ID authenticator comprises means to read non-encoded credentials,
whereas said ID authenticator generates an authentication data record comprising
presented credential information and authentication rating,
’844 patent col. 5 ll. 16–23.
A. Parties’ Arguments
Defendants argue the ID authenticator generates two types of records: (1) the image of
the vehicle registration card; and (2) the data captured and analyzed when the ID authenticator
performs ID checks against stored templates. Defs.’ Cl. Constr. Br. at 21–22. According to
defendants, “[b]ecause one of ordinary skill is left in a zone of uncertainty as to which type(s) of
record would be encompassed by the claim term, the term should be held indefinite.” Id. at 22.
In the alternative, defendants propose “authentication data record” should refer only to
information extracted from the scan of a vehicle registration card. Id. Defendants argue
plaintiff’s interpretation is overbroad as it would include any information extracted from a
credential, regardless of the method of extraction. Id.
Plaintiff argues there is no ambiguity in the claims. Pl.’s Resp. Cl. Constr. Br. at 16.
Plaintiff explains “authentication data record” comprises information extracted when the ID
authenticator reads credential information and the authentication rating. Id. Plaintiff’s
construction excludes any DMV or vehicle registration records because such records are not
credentials as defined by the claims. Id. at 15–16. Rather, the claims refer to personal
credentials. Id. Plaintiff asserts the term should be given it plain and ordinary meaning. Id. at
15.
B. Analysis
1. The Court’s Preliminary Construction
Before the Markman hearing, the Court provided the parties with the Court’s preliminary
construction after considering both parties’ claim construction briefs and all referenced materials
in full. Tr. at 8:15–19. The Court first determined the scope of “authentication data record.”
Neither party contests the “authentication data record” includes at least an image of the presented
- 40 -
credential. See Defs.’ Cl. Constr. Br. at 21–22; Pl.’s Resp. Cl. Constr. Br. 15–16. The ’844
specification supports this notion: “[t]he authenticator acquires an image of the registration card
and sends the image to the system for proceeding with character recognition.” ’844 patent col. 3
ll. 27–29. “The system picks up the individual photo provided by the authenticator returned
record . . . .” Id. col. 3 ll. 61–63. “[T]he automated access control system picks up the individual
photo provided by the authentication data record . . . .” Id. col. 5 ll. 41–42.
The parties dispute whether “authentication data record” is separate from other data
records. Defs.’ Cl. Constr. Br. at 21; Pl.’s Resp. Cl. Constr. Br. at 16. Different terms in a claim
are construed to have different meanings, and meaning should be given to all terms in a claim.
MicroStrategy Inc. v. Bus. Objects Americas, 238 F. App’x 605, 609 (Fed. Cir. 2007)
(“[D]ifferent claims terms are presumed to have different meanings.”); see Merck & Co. v. Teva
Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2017). The Court preliminarily construed
claim term 7, “ID authenticator,” as necessarily separate from the “standardized credential reader
means.” See supra Section X. Consequently, the record generated by the ID authenticator must
also necessarily be a separate record from the record created by the “standardized credential
reader means.” In other words, an individual real time record must be different from an
“authentication data record.” Paralleling the Court’s construction of claim term 3—deriving the
“individual real-time record” from “standardized credential reader means”—the “authentication
data record” must come from the “ID authenticator.” The derivation is explicitly supported by
the claim language: “whereas said ID authenticator generates an authentication data record
comprising presented credential information and authentication rating . . . .” ’844 patent col. 5 ll.
21–23; see supra Section V.
The specification also suggests “authentication data record” should include an
authentication rating. Compare ’844 patent col. 3 ll. 26–30 (“The authenticator acquires an
image of the registration card and sends the image to the system for proceeding with character
recognition. This data becomes the second record in the entry group.”), with id. col. 3 ll. 56–60
(“The authentication process provides a mean [sic] of determining and rating ID physical aspects
security risks. The authenticator matches the ID against stored templates, and looks for the ID
security features to determine the possibility of any ID tampering.”). While the registration card
has an image captured and stored, the credential has its unique security features analyzed to
create an authentication rating. See id. col. 3 ll. 26–30, 56–60. The patent claim, therefore,
refers to the credential ID and the information captured from the credential ID when describing
an “authentication data record” comprising presented credential information and authentication
rating. See supra Section X. As such, the Court preliminarily construed the “authentication data
record” to be “[a] record, separate from any individual real time record, containing both an
authentication rating and information extracted from a scanned image of the credential.”
2. The Court’s Final Construction
At the Markman hearing, plaintiff agreed to the Court’s preliminary construction. Tr. at
91:24–25. (“[PLAINTIFF]: Yeah, I have no [problem] with [the Court’s] construction [of term
9].”). Defendants requested clarification as to the use of “information extracted from a scanned
image of the credential.” Tr. at 92:2–7. Consistent with the term 8 arguments, defendants
argued disputed term 9 also “include[s] post-OCR information” Tr. at 94:7–15. This was
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defendants’ only disagreement with the preliminary construction. Tr. 97:5–8. For all the reasons
the Court notes in term 8, supra, there is no OCR requirement. The Court modifies its
preliminary construction and adopts the following final construction: “A record, separate from
any individual real time record, containing both an authentication rating and a digital image of
the credential.”
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
“Plain meaning.” “Indefinite.
To the extent the term is construed,
Defendants propose:
A record, separate from any individual real
time record, containing both information
extracted from a scanned image of the
credential and an ‘authentication rating.’”
Court’s Construction
“A record, separate from any individual real time record, containing both an authentication
rating and a digital image of the credential.”
XIII. Disputed Claim Term #10: “authenticity risk rating” / “authentication rating” / “ID
forgery risks rating”
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
“An authentication rating is either a numerical “Indefinite.”
scale based on various authentication criteria,
or a narrative or message relating to Defs.’ Cl. Constr. Br. At 23.
authenticity that is delivered to the end user of
a device that can determine authenticity.
Many numerical scales are, in fact, simply a
series of different narrative or message
choices that can be converted into a number.”
Pl.’s Resp. Cl. Constr. Br. At 16–17.
The disputed term is used in claim 1:
an ID authenticator, wherein a credential to be authenticated is presented, a
credential physical aspect and embedded security features are analyzed to
determine the possibility of any tempering or forgery and provide an authenticity
risk rating, said ID authenticator comprises means to read non-encoded credentials,
whereas said ID authenticator generates an authentication data record comprising
presented credential information and authentication rating . . .
wherein, upon a credential reading, the automated access control system
automatically determines the source of the credential data record, and
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automatically extracts personal information to be checked against a
security list, TSA NO-FLY list, SELECTEE list, other alternative
credentials; whereas upon the credential authentication, the automated
access control system automatically extracts authentication information
from the authentication data record, and subsequently displays a warning
window, as a result of the individual credentials match and ID forgery
risks rating contained in the authentication data record.
’844 patent col. 5 ll. 16–37.
A. Parties’ Arguments
Defendants argue the patent uses “authenticity risk rating,” “authentication rating,” and
“ID forgery risks rating” interchangeably. Defs.’ Cl. Constr. Br. At 23. Defendants argue,
however, Merck dictates the claim terms must be construed to have unique and distinct
meanings. Id. (citing Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir.
2005)). The patent cannot support a construction whereby all three terms have a different
meaning, so defendants argue the patent must fail for indefiniteness. Id. At 24.
Plaintiff argues the patent language makes clear the authenticity risk rating,
authentication rating, and ID forgery risks rating are all produced by the “standardized credential
reader means.” Pl.’s Resp. Cl. Constr. Br. At 17–18. Plaintiff asserts a limited number of
devices are commercially available; therefore, the analytical outputs of such machines are
familiar in the industry and the claim is sufficiently definite. Id. Plaintiff rejects defendants’
reliance on Merck, and argues Merck suggests unique definitions are preferred but not required.
Id. At 17. Plaintiff further argues a PHOSITA would understand all three terms refer to the same
output, and, therefore, the claim is sufficiently definite. Id. 17–18.
B. Analysis
1. The Court’s Preliminary Construction
Before the Markman hearing, the Court provided the parties with the Court’s preliminary
construction after considering both parties’ claim construction briefs and all referenced materials
in full. Tr. At 8:15–19. Patent claim interpretation preferably presumes different claim terms
have different meanings. MicroStrategy Inc. v. Bus. Objects Americas, 238 F. App’x 605, 609
(Fed. Cir. 2007); see Merck, 395 F.3d at 1372. This presumption can be “overcome where . . .
the evidence indicates that the patentee used the . . . terms interchangeably.” Baran v. Med.
Device Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010) (citing Tehrani v. Hamilton Med.,
Inc., 331 F.3d 1355, 1361 (Fed. Cir. 2003)). In Baran, the Federal Circuit construed the
descriptors “detachable” and “releasably” to have the same meaning based on the overall context
of the claim language. Id.The present case, like Baran, uses three terms interchangeably. Each of the three
variations of the term “rating” occur when describing the same process (ID authentication) by the
same apparatus (ID authenticator) evaluating the same aspects (an ID’s physical aspects and
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embedded security features) to produce the same output (authentication data record), suggesting
interchangeability of the terms. Compare ’844 patent col. 5 ll. 16–21 (“ID authenticator . . . a
credential physical aspect and embedded security features are analyzed to . . . provide an
authenticity risk rating . . . [which] generates an authentication data record comprising
presented credential information and authentication rating”) (emphasis added), with id. Col. 5 ll.
31–37 (“whereas upon the credential authentication . . . [the ID authenticator] automatically
extracts authentication information from the authentication data record, and subsequently
displays a warning window, as a result of the individual credentials match and ID forgery risk
rating contained in an authentication data record.”) (emphasis added). The claim begins by
describing how “an ID authenticator . . . [is used to] determine the possibility of any tempering
[sic] and forgery and provide an authenticity risk rating” for a presented credential. Id. Col. 5 ll.
16–19. The claim then contrasts this process with the functioning of the same ID authenticator
when “non-encoded” credentials are presented which results in the generation of an
“authentication data record comprising [of] presented credential information and [an]
authentication rating.” Id. Col. 5 ll. 20–23. The claim continues describing how a “central
processing unit” receives the “authentication data record” and “automatically extracts
authentication information from the authentication data record.” Id. Col. 5 ll. 24–34. The central
processing unit then “displays a warning window” based on its comparison of the authentication
information and “ID forgery risks rating” extracted from the authentication data record. Id. Col.
5 ll. 34–37. No specific definition of each of the terms exists in the intrinsic record to suggest
the terms are not interchangeable, so the “evidence [and context of the terms] indicates that the
patentee used the [three] terms interchangeably.” Baran, 616 F.3d at 1316. When viewed within
context, a skilled artisan would know the scope of the claimed invention with reasonable
certainty—these rating descriptors refer to the same output and are interchangeable. See
Presidio Components, Inc. v. Am. Tech. Ceramics Corp., 875 F.3d 1369, 1376 (Fed. Cir. 2017).
Accordingly, the Court rejected defendants’ indefiniteness arguments. See id.Given the language of the claim, and the general purpose of the ID authenticator in
relation to the overall process, the Court preliminarily construed all three “rating” terms to mean:
“[a] grade of an ID’s security risks provided by the ID authenticator by analyzing physical
aspects and embedded security features to determine the possibility of any tampering or forgery
by matching with stored templates.” See ’844 patent col. 5 ll. 16–19 (“ID authenticator . . . [is
used to] determine the possibility of any tempering [sic] and forgery”), col. 3 ll. 56–60 (“The
authentication process provides a means of determining and rating ID physical aspects security
risks. The authenticator matches the ID against stored templates, and looks for ID security
features to determine the possibility of any ID tempering [sic]”).
2. The Court’s Final Construction
At the Markman hearing, defendants argued the term is indefinite because the terms are
presumed to have “three different meanings” and the specification does not support or define
even one of the terms. Tr. At 98:13–23. Defendants further argued the specification does not
support “how [the rating] is used.” Id. In response, plaintiff stated the terms are
interchangeable, and a PHOSITA would understand the terms are interchangeable. Tr. At
100:5–11. Regarding the Court’s preliminary construction, defendants stated “grade” is not
defined and might lead to future litigation. See Tr. At 98:24–99:9. Plaintiff claimed a PHOSITA
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would understand the term “grade” as a percentage in the industry; for example, “TSA uses the
percentage between a certain point and another point as being high risk, low risk, medium risk.
There is no set risk . . . for everyone. It’s just relative to the client.” Tr. At 106:9–13 (plaintiff
explaining “percentage of risk”). Further, plaintiff suggested at the Markman hearing
defendants’ argument—“[n]othing’s taught in the specification about what a rating looks like”—
is an enablement argument, not an indefiniteness argument. Tr. At 99:1–106:25; 25:18–24
(defendants stating if disputed terms are definite “we have some written description and
enablement issues to grapple with, but that will be down the road”).
Although enablement and indefiniteness may conceptually overlap, the legal standards
are distinct. See, e.g., Augme Techs., Inc. v. Yahoo! Inc., 755 F.3d 1326, 1340 (Fed. Cir.
2014) (“Appellants’ arguments appear to be based on the wrong legal standard, i.e.,
written description or enablement as opposed to indefiniteness.”); Process Control Corp.
v. HydReclaim Corp., 190 F.3d 1350, 1358 n.2 (Fed. Cir. 1999) (“[D]efiniteness and
enablement are analytically distinct requirements [of validity], even though both concepts
are contained in 35 U.S.C. § 112.”). The Federal Circuit has held validity arguments,
such as lack of enablement and lack of written description, are not proper to address
during claim construction; therefore, the Court will not address defendants’ enablement
argument here. See Philips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005) (“[W]e
have certainly not endorsed a regime in which validity analysis is a regular component of
claim construction.”). Accordingly, the Court adopts its preliminary construction as
final: “A grade of an ID’s security risks provided by the ID authenticator by analyzing
physical aspects and embedded security features to determine the possibility of any
tampering or forgery by matching with stored templates.”
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
“An authentication rating is either a numerical “Indefinite.”
scale based on various authentication criteria,
or a narrative or message relating to
authenticity that is delivered to the end user of
a device that can determine authenticity.
Many numerical scales are, in fact, simply a
series of different narrative or message
choices that can be converted into a number”
Court’s Construction
“A grade of an ID’s security risks provided by the ID authenticator by analyzing physical
aspects and embedded security features to determine the possibility of any tampering or
forgery by matching with stored templates.”
XIV. Disputed Claim Term #11: “automatically determines the source”
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
“Plain meaning, and as an example, the type “Indefinite” or “Using common storage to
of entry, visitor, employee, contractor, verify that a submitted unique identifier has
supplier, or vendor.” not already been assigned to another physical
device.”
- 45 -
Pl.’s Resp. Cl. Constr. Br. At 18.
Defs.’ Cl. Constr. Br. At 24.
The disputed term is used in claim 1:
wherein, upon a credential reading, the automated access control system
automatically determines the source of the credential data record, and
automatically extracts personal information to be checked against a
security list, TSA NO-FLY list, SELECTEE list, other alternative
credentials; whereas upon the credential authentication, the automated
access control system automatically extracts authentication information
from the authentication data record, and subsequently displays a warning
window, as a result of the individual credentials match and ID forgery
risks rating contained in the authentication data record.
’844 patent col. 5 ll. 26–37.
A. Parties’ Arguments
Defendants argue the term “automatically determines the source” must be read in relation
to the subsequent term “credential data record” and is therefore ambiguous. Defs.’ Cl. Constr.
Br. At 24. Assuming “credential data record” refers to information extracted from IDs processed
by the system, the source could be: (1) the actual terminal device which originally processed the
data record; or (2) the original source of the ID, such as the state agency which produced and
issued the credential. Id. Defendants contend the term is ambiguous because “source” never
appears anywhere else in the language of the patent. Id. Defendants argue the first interpretation
stems naturally from the construction of the sentence, but the second interpretation is also
plausible because a determination of the original source is likely necessary to determine which
template should be used for evaluation of the authenticity risk rating. Id. Accordingly,
defendants argue the term is indefinite. Id.Plaintiff rejects defendants’ interpretation and instead argues the source is a reference to
the type of prospective entrant presenting the credential. Pl.’s Resp. Cl. Constr. Br. At 18.
Plaintiff contends “automatically determin[ing] the source” is an extension of the process
described in claim term 1, where the type of entry is determined. Id. At 18–19 (citing ’844
patent col. 5 ll. 12–13). In support, plaintiff argues “automatically determin[ing] the source” is a
necessary step because different types of entrants utilize different credentials, and the central
processing unit must analyze each credential. Id. (citing ’844 patent col. 5 ll. 27–31)
(“automatically determines the source [or type of entrant] of the credential data record and
automatically extracts personal information to be checked against a security list, TSA NO-FLY
list, SELECTEE list, other alternative credentials [because based on the type of entrant the list to
compare would vary.]” ). Therefore, the system must determine the type of entrant presenting
the credential. Id. Accordingly, plaintiff argues the term should be given its plain meaning. Id.B. Analysis
- 46 -
1. The Court’s Preliminary Construction
Before the Markman hearing, the Court provided the parties with the Court’s preliminary
construction after considering both parties’ claim construction briefs and all referenced materials
in full. Tr. At 8:15–19. The Court first determined whether “source” must refer to the “type of
entrant,” as plaintiff argues. 9 See Pl.’s Resp. Cl. Constr. Br. At 18. Reading the specification,
“type of entry,” however, has multiple potential meanings as argued by defendants including:
(1) the physical location of the credential, see ’844 patent col. 5 ll. 12-13 (“[A]dmission is
processed as entry or re-entry of the individuals . . . .”); and (2) the issuing authority of the
credential, see id. (“[E]mployee records are checked to determine if the individual is an
employee; the type of entry, visitor, employee, contractor, supplier, or vendor, is determined
. . . .”). See also Defs.’ Cl. Constr. Br. At 24. Replacing either meaning of “type of entrant”
with the plain meaning of “source” indicates plaintiff’s interchangeability argument is
inapplicable. The patentee further did not consistently interchange “type of entry” and “source”
in the specification. See id.; see also Baran v. Med. Device Techs., Inc., 616 F.3d 1309, 1316
(Fed. Cir. 2010). Additionally, the ordinary meaning of “source” does not naturally lend itself to
be understood as “type of entrant.” See Source, Webster’s Third New International Dictionary,
(2002) (“A point of origin or procurement”). As such, the Court preliminarily construed
“source” and “type of entry” to have different meanings. MicroStrategy Inc. v. Bus. Objects
Americas, 238 F. App’x 605, 609 (Fed. Cir. 2007); see Merck & Co. v. Teva Pharm. USA, Inc.,
395 F.3d 1364, 1372 (Fed. Cir. 2005).
When construing the term, the Court looked “to the words of the claims themselves,
both asserted and nonasserted, to define the scope of the patented invention”; however, equating
“source” to “type of entry” is not supported by asserted and nonasserted aspects of the
specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (citing Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). Although a patent need not
answer every conceivable question to be found definite, the ’844 patent specification does not
define “automatically determines the source,” even when read within the context of the claims.
See Presidio Components, Inc. v. Am. Tech. Ceramics Corp., 875 F.3d 1369, 1377 (Fed. Cir.
2017); Baran, 616 F.3d at 1316. Without a clear definition for “source” in the specification, a
skilled artisan could not know the scope of the claimed invention with reasonable certainty. See
Presidio, 875 F.3d at 1375 (citing Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910
(2014)).
Noting this term may be indefinite, the Court provided the parties with three potential
preliminary constructions for “automatically determines the source”: (1) “the process by which
the system understands the physical location from which the credential data record originated”;
(2) “the process by which the system understands the type of entry of the credential (employee,
visitor, etc.)”; or (3) “the process by which the system determines the issuing authority of the
credential.”
2. The Court’s Final Construction
9
In briefing, plaintiff uses “type of entry” to describe the “type of entrant.” See Pl.’s Resp. Cl. Constr. Br. at 18
(arguing “source” means “type of entry” or entrant, i.e., visitor, employee, contractor, supplier or vendor).
- 47 -
At the Markman hearing, defendants maintained “automatically determines the source”
was indefinite because the term is prone to multiple constructions, and a skilled artisan would not
know the scope of the term with reasonable certainty. See Tr. At 117:24–118:1 (defendants
arguing “we have multiple intrinsic references all supplying multiple potential interpretations
. . . .”). Plaintiff admitted the term “source” was not defined in the specification and stated, “[I]t
could be a lot of different things.” Tr. At 109:12–14 (“[PLAINTIFF]: [I]t’s our view that a
source check . . . there’s no definition of it. It could be a lot of different things.”). Plaintiff
agreed the specification does not provide any detail as to the meaning of the term “source.” Tr.
At 112:19–22. (“THE COURT: And you agree that the specification does not provide any detail
of what source is? [PLAINTIFF]: That’s correct.”). When asked how the patent informs the
PHOSITA with reasonable certainty as to what “source” is “automatically determined,” plaintiff
stated “source” “reasonably” could refer to the type of person presenting the credential (“visitor
versus employee”) or “reasonably does incorporate another sense of the word [depending on]
where it is.” See Tr. At 115:20–116:14. Defendants agreed, citing supporting intrinsic evidence
for all the possible different meanings of “source.” Tr. At 117:3–118:11 (“[DEFENDANTS]:
. . . It’s not enough for us to come up with an interpretation. We’ve come up with four or five.
We have to know, with reasonable certainty, which one it is, and we just don’t know here.
There’s nothing to discern that from and so it can’t be valid. . . . [T]he word ‘source’ doesn’t
even appear in the specification.”).
As plaintiff concedes, “source” means “a lot of different things,” Tr. At 109:12–14, and
therefore does not inform “those skilled in the art about the scope of the claimed invention with
reasonable certainty.” Sonix Tech. Co. v. Publ’ns Int’l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir.
2017) (citing Nautilus, 572 U.S. at 901). As such, “automatically determines the source” fails
§ 112, ¶ 2 and renders the term indefinite. Nautilus, 572 U.S. at 901.
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
“Plain meaning, and as an example, the type “Indefinite” or “Using common storage to
of entry, visitor, employee, contractor, verify that a submitted unique identifier has
supplier, or vendor.” not already been assigned to another physical
device.”
Court’s Construction
Indefinite.
XV. Disputed Claim Term #12: “credential data record”
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
“Plain meaning.” “Indefinite.”
Pl.’s Resp. Cl. Constr. Br. At 19. Defs.’ Cl. Constr. Br. At 25.
The disputed term is used in claim 1:
wherein, upon a credential reading, the automated access control system
automatically determines the source of the credential data record, and
- 48 -
automatically extracts personal information to be checked against a
security list, TSA NO-FLY list, SELECTEE list, other alternative
credentials; whereas upon the credential authentication, the automated
access control system automatically extracts authentication information
from the authentication data record, and subsequently displays a warning
window, as a result of the individual credentials match and ID forgery
risks rating contained in the authentication data record.
’844 patent col. 5 ll. 26–37.
A. Parties’ Arguments
Defendants argue “credential data record” is ambiguous because claim 1 contains no
antecedent basis for the term. Defs.’ Cl. Constr. Br. At 25. According to defendants, the claim
identifies multiple types of records, including real time records generated from the ID reader,
authentication data records generated by the ID authenticator, and entry records when vehicles
are admitted. Id. (citing ’844 patent col. 5 ll. 1–24). Defendants argue the “credential data
record” could be a combination of any of the records. Id. Given the patent identifies multiple
types of records but does not specify type here, defendants contend the claim is indefinite. Id.Plaintiff argues “credential data record” encompasses all entrant data derived from
presented credentials, as recorded by the access system as a whole, including both the real time
data generated by the credential reader and authentication data records generated by the ID
authenticator. Pl.’s Resp. Cl. Constr. Br. At 19–20. Plaintiff argues a term encompassing both
types of system data is required because some types of identification do not receive an
authentication rating, but all data records are subject to evaluation against a relevant list. Id. At
20. Plaintiff therefore argues “credential data record” encompasses all data extracted during the
process of admitting an entrant and is not indefinite. Id. At 20–21. Plaintiff asserts the term
should be given its plain and ordinary meaning. Id. At 19.
B. Analysis
1. The Court’s Preliminary Construction
Before the Markman hearing, the Court provided the parties with the Court’s preliminary
construction after considering both parties’ claim construction briefs and all referenced materials
in full. Tr. At 8:15–19. The Court first addressed whether the term clearly marks the bounds of
the claim. When a claim term has no express antecedent basis, the claim term is indefinite unless
the context of the claim provides information to sufficiently clarify the boundary of the claim.
See Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1370 (Fed. Cir. 2006). To
avoid indefiniteness, a “person of ordinary skill in the art [should be able] to read [‘credential
data record’] . . . in the context of the entire patent” and ascertain the clear boundaries of the
claim. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005); see Energizer Holdings,
435 F.3d at 1370–71. The term “credential data record” appears for the first and only time in the
’844 patent on column 5, line 28. When read within the local context of the claim, “credential
data record” has at least two possible meanings: (1) “authentication data record”; and (2) “the
- 49 -
real time record” generated by reading the credential. See ’844 patent col. 5 ll. 21–37. When
viewed within the context of the entire patent, however, “credential data record” must be a new,
third record comprising both the “real time record” and the “authentication data record.” Id. The
term “credential data record” is therefore prone to multiple interpretations within the context of
the patent, so “the bounds of the invention are [not] sufficiently demarcated.” ePlus, Inc. v.
Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012). The term is boundless, and “a skilled
artisan [could not] know the scope of the claimed invention with reasonable certainty.” Sonix
Tech. Co. v. Publ’ns Int’l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017) (citing Nautilus, Inc. v.
Biosig Instruments, Inc., 572 U.S. 898, 901 (2014)). As a skilled artisan cannot “know the scope
of the claimed invention with reasonable certainty[,]” “credential data record” fails under § 112,
¶ 2 and is indefinite. Nautilus, 572 U.S. at 901. Preliminarily noting this term may be indefinite,
the Court offered the parties the following alternative construction in addition to those the parties
already presented: “a record comprising of the individual real-time record and the authentication
data record.”
2. The Court’s Final Construction
At the Markman hearing, plaintiff faltered from the arguments made in its brief—
“credential data record” encompasses all entrant data derived from presented credentials, as
recorded by the access system as a whole. Pl.’s Resp. Cl. Constr. Br. at 19–20. Plaintiff argued
“credential data record” only includes the real time record. Tr. at 120:11–14. (“[PLAINTIFF]: .
. . So [‘credential data record’] looks like it really actually should be just the real time record . . .
.”). Plaintiff then changed course and agreed the term could be construed to include both real
time data record and authentication data record when asked why the Court’s alternative
construction of “a record comprising of the individual real-time record and the authentication
data record” was incorrect. Tr. at 121:13–15 (“THE COURT: So explain to me why it’s not
both. [PLAINTIFF]: Well, because I think . . . it certainly could be both, and I think that was
why I originally wrote that . . . .”). Plaintiff also conceded neither the ’732 nor the ’844 patent
described “credential data record.” Tr. at 123:22–25 (“THE COURT: [D]oes either the ’844
patent or the ’732 patent describe and use the language ‘credential data record” anywhere?
[PLAINTIFF]: I don’t believe so.”). Plaintiff agreed the plain meaning of “credential data
record” favored the Court’s alternative construction. Tr. at 123:16–21. (“THE COURT: . . .
[W]hat is the plain meaning of ‘credential data record’? [PLAINTIFF]: Well, it is more
encompassing, and I think that pushes in favor of [the preliminary construction].”). Plaintiff
further argued the antecedent basis for the term was “the authentication device and the
standardized credential reader . . . are the only sources of data that are present,” which in turn
supported the Court’s alternative construction. Tr. at 124:1–21. At the same time, plaintiff
stated “credential data record” “probably is just real time records,” but because “it’s a different
term, it should be given a different meaning . . . [so], overall, I think it actually encompasses
both.” Tr. at 123:9–125:5. By changing positions between two separate constructions, and
deviating from the construction in plaintiff’s own briefs, plaintiff demonstrated the term is prone
to multiple constructions. See, e.g., Tr. at 120:7–125:14. The multiple constructions show “the
bounds of the invention are [not] sufficiently demarcated.” ePlus, Inc., 700 F.3d at 517. The
claim term lacks clear antecedent basis and does not “inform those skilled in the art about the
scope of the claimed invention with reasonable certainty.” Sonix Tech. Co., 844 F.3d at 1377
(citing Nautilus, 572 U.S. at 901); Energizer Holdings, 435 F.3d at 1370–71. The term fails
- 50 -
under § 112, ¶ 2 and is indefinite. Nautilus, 572 U.S. at 901; Energizer Holdings, 435 F.3d at
1370–71.
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
“Plain meaning.” “Indefinite.”
Court’s Construction
Indefinite.
XVI. Disputed Claim Term #13: “to be checked against a security list, TSA NO-FLY list,
SELECTEE list, other alternative credentials”
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
“Plain meaning. All airports maintain a “Indefinite.”
security list, the TSA maintains a NO-FLY
list, as well as a SELECTEE list.” Defs.’ Cl. Constr. Br. at 26.
Pl.’s Resp. Cl. Constr. Br. at 21.
The disputed term is used in claim 1:
wherein, upon a credential reading, the automated access control system
automatically determines the source of the credential data record, and
automatically extracts personal information to be checked against a
security list, TSA NO-FLY list, SELECTEE list, other alternative
credentials; whereas upon the credential authentication, the automated
access control system automatically extracts authentication information
from the authentication data record, and subsequently displays a warning
window, as a result of the individual credentials match and ID forgery
risks rating contained in the authentication data record.
’844 patent col. 5 ll. 26–37.
A. Parties’ Arguments
The parties primarily dispute the meaning of “other alternative credentials.” According
to defendants, “other alternative credentials” appears at the end of a list and could reasonably be
read in light of the characteristics of the other listed elements. Defs.’ Cl. Constr. Br. at 26.
Reading the term alongside the “security list, TSA NO-FLY list, SELECTEE list,” defendants
suggest “alternative credentials” refers to a type of list. Id. Defendants alternatively assert,
using the ’732 patent, the term could refer to an alternative backup form of ID for employees
unable to present their main credential. Id. at 26–27. Defendants argue the term is indefinite
because the claim term has two plausible readings. Id. Defendants further argue if the term is
construed to mean an alternative employee ID, the claim term does not adequately describe what
type of comparison the system would make between: (1) the personal information extracted
from the presented credential; and (2) the personal information extracted from the alternative
credential. Id. Accordingly, defendants assert the term is indefinite. Id. at 26.
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Plaintiff argues if a separate alternative credentials “list” was contemplated, as suggested
by defendants, the claim would have expressly described the list as an “alternative credentials
list.” Pl.’s Resp. Cl. Constr. Br. at 21. The lack of the word “list,” according to plaintiff,
suggests “alternative credentials” should be construed without consistency with the
characteristics of the other elements in the list. Id. Plaintiff contends “to be checked against”
should receive its ordinary meaning, contemplating a process where the system compares
personal data from the presented credential to various lists maintained by the facility or to an
alternative credential. Id. at 21–22.
B. Analysis
1. The Court’s Preliminary Construction
Before the Markman hearing, the Court provided the parties with the Court’s preliminary
construction after considering both parties’ claim construction briefs and all referenced materials
in full. Tr. at 8:15–19. The Court first looked to determine if the ’844 defines alternative
credential. The ’844 patent does not reference or provide an independent definition of
“alternative credentials.” See ’844 patent. The ’732 patent, on the other hand, describes “an
alternative credential” in dependent claim 3 as a credential used when an employee’s main
credential is unavailable. ’732 patent col. 10 l. 36, col 11 l. 20, col. 14 l. 54. In the context of
airport security, the ’732 patent’s definition coincides with the term’s plain meaning. See
Alternative, Oxford Dictionary of English, (3d ed. 2010) (“available as another possibility or
choice”). “When a parent application includes statements involving ‘common subject matter’
with the terms at issue, those statements are relevant to construction of the terms in the child
patent.” E.I. du Pont De Nemours & Co. v. Unifrax I LLC, 921 F.3d 1060, 1070 (Fed. Cir. 2019).
The ’732 parent patent includes a definition of “an alternative credential” consistent with the
term’s plain meaning in context, so the ’732 patent is relevant to construing the term within the
’844 patent. Accordingly, the Court preliminarily construed this term indefinite or plain
meaning for the enumerated lists, with “alternative credentials” as defined in dependent claim 3
of the ’732 patent. 10
2. The Court’s Final Construction
At the Markman hearing, defendants agreed the ’282 application (the predecessor to the
’732 patent) is part of the intrinsic record and therefore resolved any indefinite issues for the
disputed term. Tr. at 128:24–25, 129:1 (“THE COURT: And you would agree that [’282
application, now ’732 patent is] in the intrinsic record? [DEFENDANTS]: Yes . . . .”).
Defendants also agreed the definition of “alternative credentials” from the ’732 patent can be
used in construing the term in the current claim at issue. Tr. at 136:1–7 (“THE COURT: You
got to agree that the parent patent does seem to go into some discussions about alternative
credential. So there’s explanation there in the spec[ification]. [DEFENDANTS]: . . . [G]iven
that this is in the intrinsic record, I think the Court has a basis for [the preliminary] construction
10
The Court preliminarily construed the term as indefinite based on the differences between the ’282 application and
’732 issued patent; however, these discrepancies were resolved during the Markman hearing.
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under Phillips.”). For clarity, defendants requested the Court remove reference to the parent
patent and define “alternative credential” within the construction itself as “a credential used
when the employee loses or misplaces a regular company credential.” Tr. at 131:10–19.
Plaintiff agreed to the modification. Tr. at 132:15–17. Accordingly, as agreed by the parties, the
Court adopts as final the construction: “Plain meaning as to the enumerated lists, with
‘alternative credentials’ meaning a credential used when an employee loses or misplaces a
regular credential.”
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
“Plain meaning. All airports maintain a “Indefinite.”
security list, the TSA maintains a NO-FLY
list, as well as a SELECTEE list.”
Court’s Construction
“Plain meaning as to the enumerated lists, with ‘alternative credentials’ meaning a credential
used when an employee loses or misplaces a regular credential.”
XVII. Disputed Claim Term #14: “warning window[, as a result of the individual
credentials match and ID forgery risks rating contained in the authentication data
record]”
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
“Plain meaning. All airports maintain a “Indefinite.
security list, the TSA maintains a NO-FLY
list, as well as a SELECTEE list.” To the extent the term is construed,
Defendants propose:
Pl.’s Resp. Cl. Constr. Br. at 22.
An alert to the system operator, notifying the
system operator that the individual should be
denied access without human intervention,
based on the credential data record generated
using information from the standardized
credential means and the authentication data
record generated using information from the
ID authenticator.”
Defs.’ Cl. Constr. Br. at 27.
This disputed term is used in claim 1:
wherein, upon a credential reading, the automated access control system
automatically determines the source of the credential data record, and
automatically extracts personal information to be checked against a
security list, TSA NO-FLY list, SELECTEE list, other alternative
credentials; whereas upon the credential authentication, the automated
access control system automatically extracts authentication information
from the authentication data record, and subsequently displays a warning
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window, as a result of the individual credentials match and ID forgery
risks rating contained in the authentication data record.
’844 patent col. 5 ll. 26–37.
A. Parties’ Arguments
Defendants contend the term is indefinite because the patent does not describe the
information displayed upon appearance of the warning window or the additional actions the
system takes once the warning window is triggered. Defs.’ Cl. Constr. Br. at 27–28. Defendants
point to the ’844 patent specification describing a potential embodiment where the warning
window requires a security manager to enter a predefined security code in order to override the
warning. Id. (citing ’844 patent col. 3 ll. 37–53). Defendants assert the language of claim 1 does
not describe the content of the warning window or the potential actions taken by the security
system to prevent unauthorized access prior to intervention by the security manager. Id. at 28.
According to defendants, the ’844 patent’s lack of detail renders the claim indefinite. Id.
Alternatively, if the claim is not indefinite, defendants argue the term must be construed to
clarify the relationship with the system operator when the warning window is triggered. Id.
Plaintiff argues “warning window” has a plain and ordinary meaning in the field. Pl.’s Resp.
Cl. Constr. Br. at 22–23. Plaintiff further argues defendants are inappropriately reading
limitations from an illustrative embodiment into the construction of the claim term. Id. at 23.
B. Analysis
1. The Court’s Preliminary Construction
Before the Markman hearing, the Court provided the parties with the Court’s preliminary
construction after considering both parties’ claim construction briefs and all referenced materials
in full. Tr. at 8:15–19. The Court first determined whether an embodiment should limit the
claim. The ’844 patent provides an illustration of the system operating as a vehicle gate entry
system. ’844 patent col. 3 ll. 31–64. The embodiment explains when a “warning window” is
displayed, intervention and a security code from a manager are required. Id. Such an illustrative
embodiment, however, should not limit this term’s construction. Phillips v. AWH Corp., 415
F.3d 1303, 1323 (Fed. Cir. 2005) (the Federal Circuit “has repeatedly warned against confining
the claims to [very specific] embodiments”). As such, the Court did not preliminarily adopt a
requirement where a security manager must intervene with a security access code because claim
1 does not expressly state the limitation. Furthermore, the patentee did not adopt an independent
definition, act as his own lexicographer, or disavow any claim scope. See ’844 patent; ’282
application; Phillips, 415 F.3d at 1312–13 (quoting Vitronics Corp. v. Conceptronic, Inc., 90
F.3d 1576, 1582 (Fed. Cir. 1996)); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362,
1365 (Fed. Cir. 2012) (citing Vitronics, 90 F.3d at 1580). The Court therefore preliminarily
adopted a plain and ordinary meaning. See Phillips, 415 F.3d at 1312–13. Insofar as a definition
is helpful, the Court preliminarily offered: “any of various rectangular boxes appearing on a
computer screen that display files or program output to call something to an operator’s
attention.” Warn, Webster’s Third New International Dictionary (2002) (“to notify or apprise
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esp[ecially] in advance: call to one’s attention: make aware: INFORM”); Window, Merriam-
Webster’s Dictionary, https://www.merriam-webster.com/dictionary/window (last visited Jan.
10, 2023) (“any of various rectangular boxes appearing on a computer screen that display files or
program output, that can usually be moved and resized, and that facilitate multitasking”).
2. The Court’s Final Construction
At the Markman hearing, defendants argued the term is indefinite because the
specification fails to detail a test for when the warning window would be displayed. Tr. at
137:11–23. Defendants also questioned if “the warning window [is] triggered to display or [if
the warning window] is . . . always displayed to show the operator information.” Tr. at 139:21–
23. Applying broader patent policy arguments, defendants stated, because “[t]here’s zero
information about when this warning window appears, . . . if it always has to appear, [or] what
that rating looks like,” designing around the patent is more difficult. See Tr. at 146:6–12.
Defendants’ argument, however, focuses on enablement rather than indefiniteness. See Enzo
Life Sciences, Inc. v. Roche Molecular Sys., Inc., 928 F.3d 1340, 1345 (Fed. Cir. 2019) (“The
enablement requirement asks whether ‘the specification teach[es] those in the art to make and
use the invention without undue experimentation.’”). The legal standards of enablement and
indefiniteness are distinct despite a conceptual overlap between both statutory requirements, and
defendants improperly conflate enablement and indefiniteness. See, e.g., Augme Techs., Inc. v.
Yahoo! Inc., 755 F.3d 1326, 1340 (Fed. Cir. 2014) (“Appellants’ arguments appear to be based
on the wrong legal standard, i.e., written description or enablement as opposed to
indefiniteness.”); Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1358 n.2 (Fed.
Cir. 1999) (“[D]efiniteness and enablement are analytically distinct requirements [of validity],
even though both concepts are contained in 35 U.S.C. § 112.”). The Federal Circuit has held
validity arguments, such as lack of enablement and lack of written description, are not relevant
during claim construction; therefore, the Court will not address an enablement argument here.
See Philips, 415 F.3d at 1327 (“[W]e have certainly not endorsed a regime in which validity
analysis is a regular component of claim construction.”). Defendants alternatively agreed with
the Court’s construction of this term. Tr. at 139:10–20. Accordingly, the Court adopts its
preliminary construction as final: “Plain meaning, ‘any of various rectangular boxes appearing
on a computer screen that display files or program output to call something to an operator’s
attention.’”
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
“Plain meaning. All airports maintain a “Indefinite.
security list, the TSA maintains a NO-FLY
list, as well as a SELECTEE list.” To the extent the term is construed,
Defendants propose:
An alert to the system operator, notifying the
system operator that the individual should be
denied access without human intervention,
based on the credential data record generated
using information from the standardized
credential means and the authentication data
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record generated using information from the
ID authenticator.”
Court’s Construction
Plain meaning: “any of various rectangular boxes appearing on a computer screen that display
files or program output to call something to an operator’s attention.”
XVIII. Disputed Claim Term #15: “individual credentials match”
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
“Plain meaning. As an illustration, checks “Indefinite.”
can be made against TSA lists, employee lists
if employee, or traveler lists, if traveler.” Defs.’ Cl. Constr. Br. at 28.
Pl.’s Resp. Cl. Constr. Br. at 24.
The disputed term is used in claim 1:
wherein, upon a credential reading, the automated access control system
automatically determines the source of the credential data record, and
automatically extracts personal information to be checked against a
security list, TSA NO-FLY list, SELECTEE list, other alternative
credentials; whereas upon the credential authentication, the automated
access control system automatically extracts authentication information
from the authentication data record, and subsequently displays a warning
window, as a result of the individual credentials match and ID forgery
risks rating contained in the authentication data record.
’844 patent col. 5 ll. 26–37.
A. Parties’ Arguments
Defendants argue the term is indefinite because the patent does not describe whether the
system checks against various predetermined databases or against previously collected ID
information to detect a match. Defs.’ Cl. Constr. Br. at 28–29. Defendants further argue if the
system checks against predetermined databases, the patent does not specify which databases are
contemplated as the patent describes a non-exhaustive list of potential databases. Id. at 29.
Plaintiff argues the term is intended as a catch-all and should describe a match against
any list utilized by the system and is not indefinite. Pl.’s Resp. Cl. Constr. Br. at 24. Plaintiff
asserts the term should be given its plain and ordinary meaning. Id.
B. Analysis
1. The Court’s Preliminary Construction
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Before the Markman hearing, the Court provided the parties with the Court’s preliminary
construction after considering both parties’ claim construction briefs and all referenced materials
in full. See Tr. at 8:15–19. In multiple instances, the ’844 patent describes a system comparing
personal information against different types of predefined lists. See ’844 patent col. 1 l. 66
(terrorists lists), col. 3 l. 13 (NO-FLY and SELECTEE lists), col. 3 l. 46 (NO-FLY and
SELECTEE lists), col. 5 ll. 29–30 (security list, TSA NO-FLY and SELECTEE list). A
PHOSITA would therefore read the term against a backdrop of these references and understand
“individual credentials match” to refer to predefined lists similar to those illustrated in the patent.
As for “match,” neither of the Thorner exceptions are met, and therefore, the Court preliminarily
construed based on ordinary meaning. See ’844 patent; ’282 application; Thorner v. Sony
Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996)). Based on the lists described by the
’844 patent and the ordinary meaning of “match,” the Court provided the following preliminary
construction: “The result when the extracted personal information is equal or similar to an entry
in a security list, TSA NO-FLY list, SELECTEE list, or other alternative credentials.”
2. The Court’s Final Construction
At the Markman hearing, defendants generally agreed to the Court’s construction but
wanted “further clarity . . . where the extraction of personal information comes from.” Tr. at
149:18–24. Plaintiff stated the information comes from the authentication data record. Tr. at
151:5. Both parties then agreed with the Court’s construction of the term with the added
clarification. See Tr. at 151:12–21. Accordingly, the Court adopts the following final
construction: “The result when the extracted personal information from the authentication data
record is equal or similar to an entry in a security list, TSA NO-FLY list, SELECTEE list, or
other alternative credentials.”
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
“Plain meaning. As an illustration, checks can “Indefinite.”
be made against TSA lists, employee lists if
employee, or traveler lists, if traveler.”
Court’s Construction
“The result when the extracted personal information from the authentication data record is
equal or similar to an entry in a security list, TSA NO-FLY list, SELECTEE list, or other
alternative credentials.”
XIX. Conclusion
The disputed terms are interpreted by the Court in this Claim Construction Opinion and
Order. The Court accordingly adopts the constructions of the disputed terms as set forth herein.
Term Disputed Term The Court’s Construction
#
1 “standardized credential reader Indefinite.
means”
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2 “credential encoded with personal Plain meaning: “a driver’s license, passport,
identification” boarding pass, airport ID, or other standardized
documents containing information relating to a
particular individual converted from one system
of communication into another.”
3 “build individual real time records” “The credential reader immediately generates a
digital record after decoding information from
the credential and encrypting sensitive personal
information. The digital record is then stored
within the system for access by a user at any
time.”
4 “credential collected information Plain meaning: “when the data collected from a
match” currently presented credential is equal or similar
to an existing record.”
5 “system database” Plain meaning: “a collection of data organized
for retrieval by a computer, and accessible by
an automated access control system.”
6 “the type of entry, visitor, “Using the individual real time record built
employee, contractor, supplier, or from the presented personal identification
vendor, is determined” credentials, the software application checks the
system database stored information to ascertain
whether the individual presenting the credential
is one of the following: visitor, employee,
contractor, supplier, or vendor.”
7 “an ID authenticator” “A commercial identification card
authentication device, separate from the
standardized credential reader device.”
8 “means to read non-encoded “An apparatus capable of image acquisition and
credentials” taking sense of letters and symbols.”
9 “authentication data record” “A record, separate from any individual real
time record, containing both an authentication
rating and a digital image of the credential.”
10 “authenticity risk rating” / “A grade of an ID’s security risks provided by
“authentication rating” / “ID the ID authenticator by analyzing physical
forgery risks rating” aspects and embedded security features to
determine the possibility of any tampering or
forgery by matching with stored templates.”
11 “automatically determines the Indefinite.
source”
12 “credential data record” Indefinite.
13 “to be checked against a security Plain meaning as to the enumerated lists, with
list, TSA NO-FLY list, SELECTEE “alternative credentials” meaning a credential
list, other alternative credentials” used when an employee loses or misplaces a
regular credential.
14 “warning window[, as a result of Plain meaning: “any of various rectangular
the individual credentials match and boxes appearing on a computer screen that
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ID forgery risks rating contained in display files or program output to call
the authentication data record]” something to an operator’s attention.”
15 “individual credentials match” “The result when the extracted personal
information from the authentication data record
is equal or similar to an entry in a security list,
TSA NO-FLY list, SELECTEE list, or other
alternative credentials.”
The Court began this claim construction analysis with a presumption “patents are
presumed to be valid” and the USPTO “only grants those patent applications that meet the
statutory patentability requirement[s].” See supra Section I.A. Defendants have proven their
case and overcome the presumption of validity with clear and convincing evidence regarding
three disputed terms. As discussed supra Sections III, XIV, and XV, claim terms 1, 11, and 12
are indefinite under 35 U.S.C. § 112 and as a result independent claim 1 is rendered invalid. As
the only independent claim in the ’844 patent, the entire ’844 patent is invalid under § 112. See
Horizon Pharma, Inc. v. Dr. Reddy’s Labs., Inc., No. CV 15-3324 (SRC), 2018 WL 6040265, at
*9 (D.N.J. Nov. 19, 2018) (finding the patents-in-suit invalid after finding the sole independent
claims invalid for indefiniteness), aff’d, 839 F. App’x 500 (Fed. Cir. 2021); see also Nautilus,
Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 902 (“A lack of definiteness renders invalid ‘the
patent or any claim in suit.’”) (quoting 35 U.S.C. § 282, ¶ 2(3)). Although three terms were
found indefinite, rendering the entire ’844 patent invalid, the Court construed all disputed terms
the parties raised. See O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360
(Fed. Cir. 2008) (“When the parties raise an actual dispute regarding the proper scope of these
claims, the court . . . must resolve that dispute.”).
The ’844 patent—the only patent asserted as infringed—is now invalid. Plaintiff no
longer presents a valid patent viable for patent infringement adjudication in this Court. Rule
12(h)(3) of the Rules of the Court of Federal Claims (“RCFC”) provides “[i]f the court
determines at any time that it lacks subject matter jurisdiction, the court must dismiss the action.”
The Court therefore ORDERS plaintiff to SHOW CAUSE as to why this case should not be
dismissed pursuant to RCFC 12(h)(3) on or before 20 February 2023. In responding to this
order, plaintiff must identify which source or sources of law he is invoking and explain why this
Court has jurisdiction over this case. Defendants SHALL FILE a response on or before 6
March 2023.
IT IS SO ORDERED.
s/ Ryan T. Holte
RYAN T. HOLTE
Judge
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