Here is e-data's reply:
UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF NEW YORK
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INTERACTIVE GIFT EXPRESS, INC.
Plaintiff,
v.
COMPUSERVE INC. et al.
Defendants.
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Civil Action No. 95-6871 (BSJ)
PLAINTIFF'S REPLY TO DEFENDANTS' CLAIM CONSTRUCTION
INTRODUCTION
Several Defendants have submitted Briefs to urge the Court to interpreted the patent claims of the patent-in-suit (the "Freeny patent") in narrow or strange ways to escape liability. Other Defendants appear to accept the Plaintiff's claim construction through their silence.
The Defendants at the initial pr-trial conference urged the Court to focus on claim construction and agreed to postpone arguments on validity and other issues. The Plaintiff had no objections or disputed the value of having the Court address the issue of claim construction and the Court proceeded to issue the Order specifying that the parties would focus on claim construction and would not be concerned with validity during this phase of the case.
Nevertheless, Defendants have endeavored to depart from the Order and the Court has reminded the Defendants orally and in subsequent written Orders that the Defendants are not to divert the attention of the Court and the Plaintiff the issue of validity .
Apparently, the Defendants are not content with their first choice of claim construction and have decided unilaterally to focus on validity despite the Court's Order and their originally desire expressed to the Court.
The following is responsive to the Briefs form the Defendants and shows that the arguments by the defendants are without factual basis, are illogical, and are based testimony asserted by attorneys, not on any expert testimony.
COMPUSERVE INCORPORATED
CompuServe Inc. discloses at pp. 4-5 the legal standard for claim construction. It is noted that at page 5, first paragraph, this CompuServe points out the importance of expert testimony. It is noted that the expert affidavits of the Defendant CompuServe merely describe prior systems and do not relate such systems to the Freeny patent or particularly the patent claim of the Freeny patent. Thus, it is as though an expert affidavit were supplied to show that telephone lines existed well before the Freeny patent so that the Freeny patent is invalid!
Page 1 of the brief frivolously asserts that Plaintiff "asserts that the Freeny patent covers all methods of 'selling software online'". This, of course, avoids the entire issue of patent claim and claim constructions The Defendant CompuServe thereafter concentrates on defeating the Freeny patent based on it own misstatement of the issue before the Court.
This confusion with CompuServe is evident, for example, at page 6 where CompuServe not only insists on arguing the issue of valaidity, but at footnote 9 maligns the Patent Examiner by asserting that the patent claims were probably allowed because the Patent Examiner was confused, did not understand the invention as claimed and "just gave up". The cavalier approach taken by CompuServe is also reflected in its piecewise approach to analying the patent claims as indicated at page 11 where CompuServe offers to provide an additional brief t address the patent claims it is not bothering to consider in its present report.
The analysis of the Freeny patent with respect to the prior art is without substance because CompuServe is relying on the occurrence of words and terms in the prior art to establish a status of the prior art which should be properly based on testimony by an expert as to the specific operations of the prior art and how it relates to the Freeny patent. Instead, CompuServe attacks it sown "restatement" of the Freeny patent claims. See page 20, first full paragraph where CompuServe argues that it made the first publicly available system for "selling software online".
CompuServe argues that an IP address was known prior to the Freeny patent. The Freeny patent does not claim to originate the IP address any more than it claims to originate computers and printers. CompuServe reasoned that Freeny patent is limited to only the "predelivery" of information. See page 30. No portion of the Freeny patent is relied upon for such a preposterous assertion. Instead, at page 31, CompuServe argues that the patent claims should have been written differently if Freeny wanted to (or anticipated) CompuServe's argument.
As t the term "point of sale", CompuServe relies on the Brief of Defendants Broderbund and Intuit.
BRODERBUND AND INTUIT
At page 1, Broderbund and Intuit follow the philosophy of CompuServe of misstating the Freeny invention but take the additional step of misleading the Court into believing that the Plaintiff endorses its position. The second paragraph is represented as being based on testimony by Plaintiff's expert, Dr. Fred Stahl, by references to Dr. Stahl's testimony; however, the testimony relied on does not, in fact, support Broderbund's and Intuit's contention. Apparently, Broderbund and Intuit hoped that the Court would be overwhelmed by the 6 1/2 inches of papers submitted by the defendants (to argue the incredible obviousness of their interpretation).
The analysis of the purpose of the Freeny patent concludes that the intent is to sell preselected information. Instead of acknowledges that such information is identified by a catalog code in the patent claims, Broderbund and Intuit surprisingly conclude that such information must be at the point of sale already. This conclusion is not supported by the Freeny patent, any testimony and certainly not by any expert. The attorney who prepared the conclusion has testified as to his or her conclusion.
Presumably, the analysis described as a road map of the patent is intended to provide the basis of a series of conclusions unsupported by the contents of the Freeny patent or any testimony by the inventor, Dr. Freeny, or Plaintiff's expert, Dr. Stahl.
Broderbund and Intuit argue that "point of sale" must mean in a retail store despite testimony the contrary and the fact that there is no reason why the invention must be carried out in a particular environment. More over , the Freeny patent itself actually discloses the limitation of "point of sale" being a retail store is overcome by the invention. See the Freeny patent, Col. 2, line 62 to Col. 3, line 3.
Broderbund and Intuit rely on various dictionaries and the UCC to support its argument as though the person with ordinary skill in the art (electronics) would be "stuck" on the meaning of "point of sale" and rush to the Uniform Commercial Code for a clarifying definition. Broderbund and Intuit have not disputed Plaintiff's definition of a person with ordinary skill in the art and it would be logical to learn what such a person believes, but no such opinion has been presented by Broderbund and Intuit. The record, thanks to Broderbund and Intuit, only reflects the opinions of Dr. Freeny and Dr. Stahl, both of whom know what people with ordinary skill in the art would understand.
Broderbund and Intuit ague that Plaintiff is precluded from its definition because of U.S.C. 112, but treat the patent claims as being in artfully drawn or confusing. Neither is the case here.
The next argument is that a material object according to the claims must be portable and that implies it is purchased at a retail store. Broderbund and Intuit preclude the use of information downloaded in a person's bedroom form being used in that person's kitchen. Hence a recipe must be purchased at a retail store.
Broderbund and Intuit carefully consider one of the examples of the Freeny patent and conclude that the patent claims must conform to that example (and apparently not other example in the Freeny patent).
INTERNET SHOPPING NETWORK, INC.
The Internet Shopping Network, Inc. like its brothers elects to direct its arguments to the broad concepts and not the issue of claim construction. For this purpose, Internet Shopping Network, Inc. relies entirely on the testimony of Mr. MacConnell, a long time employee of Lexis-Nexis of Mead Data Central, Inc.
While Mr. MacConnell was a sincere witness, the reality is that he barely acquired an associate degree. (MacConnell Tr. 132-133. In addition, he never was a programmer nor did he take any programming beyond rudimentary Basic. (MacConnell Tr. 134-137).
Mr. MacConnell's credibility is questionable considering his testimony that he never spoke to any lawyers prior to the deposition about his testimony, he took the day off from his work (although it was not a vacation day or personal leave), and he was present at the deposition solely at the direction of a paralegal who says he never questioned. (MacConnell Tr. 149-152).
Mr. MacConnell described in detail the operational steps for communicating with the Lexis system and his description at 154-188 is completely remote form the Freeny claims. Yet, the Defendant endeavors to reason from broad concepts when the facts are before us.
WALDEN BOOKS
Walden books argue obscurely that the same element is being referred to by two different terms. Without more information or a better foundation, the point being argued is not understood. In addition, the absence of expert testimony and specific facts make all of the arguments too difficult to be understood and denied.
CONCLUSIONS
The Defendants have not provided facts or expert testimony refuting the Plaintiff's proposed claim construction. If the Defendants' have accomplished anything, they have highlighted the need for experts to educate the Court due to the complex technical nature of the invention and the importance of learning the fabric of the technical field at the time of the invention to appreciate the fair understanding of the technical terms and the scope of the patent claims.
Dated: August 29, 1997
THE PLAINTIFF
INTERACTIVE GIFT EXPRESS, INC.
By_____________ David Fink, Esq. (DF 4238)
Attorney for Plaintiff
800 Summer Street
Suite 315
Stamford, CT 06901
(203) 325-3344 |
