I am writing a short argument supporting GIFTs position. Keep in
mind this is intended to be PERSUASIVE, not unbiased. I am writing
it because the Judge will have persuasive arguments from both sides
when she makes her decision. It helps me evaluate their persuasive
brief when I consider counter arguments. This post presupposes
that the reader has read CompuServe's brief. This argument merely
states the law and facts (rather than explain and cite) to keep
things (relatively) short. Also, I will only address the first
issue.
Overview
The parties positions can be best summed in two sentences. GIFT
thinks words mean what they normally mean. CS thinks words should
not mean what they normally mean.
Compuserve (CS) addresses how to interpret three claim terms:
provide, authorization code, and point of sale. GIFT wants this
Court to hold that these three terms have their normal meaning.
Thus, provide means to provide (i.e deliver). Authorization code
means a code that authorizes. And a point of sale is where a sale
is made. Three simple terms, three straight forward definitions.
Patent law requires, when possible, that claim words have their
ordinary meaning. Here not only is the ordinary meaning possible,
it flows necessarily from the use of these words in the patent.
CS asks the court to do the opposite: It wants the Court to hold
that each of these three terms has a convoluted, litigation driven
meaning. First, CS wants this Court to find the word "provide"
means not just to provide or deliver, but to provide and store.
Second, CS asserts that an authorization code means not just a code
that authorizes, but requires an additional code. Third, CS asks
the Court to hold that a point of sale is not where a sale occurs,
but rather where a merchant is located.
"PROVIDE"
The heading (VI A) CS uses to discuss provide sums up the CS
position: Provide means "Providing A Collection Of Catalogued
Information AND STORING That Information .... CS wants the court
to hold that provide means provide and store.
The independent claims say "providing from a source remotely
located with respect to the information manufacturing machine the
information to be reproduced to the information manufacturing
machine, each information being uniquely identified by a catalog
code;" Where does "store" appear? Only in CS's definition. Not
in the independent claims.
CS must devote pages and pages of its brief to the definition of
"provide", because it must justify why the plain meaning isn't
adopted. CS gives three reasons to go away from the normal
meaning: the claim language, the specification teachings, and
foreign prosecution. Each of these three reasons support the plain
meaning of "provide."
The claims use provide in claim one, and store in dependent claims.
Clearly the patentee knew what store meant, and used it when he
wanted to require data to be stored. Claim 18 specifies that the
step of providing, in claim 1, includes an additional step --
storing. The doctrine of claim differentiation requires that the
dependent limitation not be read into the independent claim. In
other words, if provide meant store, then there would be no need to
add storing as a step in claim 18.
The specification also supports the plain meaning. The patent used
"store" (or some tense of it) 142 times before the claims. Clearly
when the patentee wanted to say store, he said it. The patentee
also used "provide" many, many times -- 92 -- before the claims.
Each of these non claims uses - 142 for store and 92 for provide -
have the words take their normal meaning. Provide is to provide or
deliver, and store is to maintain after receiving. Why would an
inventor suddenly use different meanings for words in the claims,
when the normal meanings were used throughout the patent?
CS makes much ado about the Canadian application. There, the
inventor changed the claim scope (claims often have different scope
in different countries since patentability standards vary from
country to country) because he was told that simply "providing" the
data was not sufficient - it must also be stored. Did the patentee
argue that "provide" meant provide and store? NO!! The inventor
changed the words (dropped provide and added store) and said, if it
must be store, then I'll say store! If the words had meant the
same thing, why make a change? The answer is, of course, the words
have DIFFERENT meanings. |
