Terms Construed in Website Messaging Patent/Summary Judgment Denied In Light of New Construction/Testimony Excluded

523 IP LLC, v.

Case Number: 1:11-cv-09697-KPF

Judge Failla construed terms of U.S. Patent No. 7,702,523 (“Website messaging system”), and, as her construction at times differs significantly from the parties’ proposed constructions, denied summary judgment of infringement and validity. The court did, however, express a preference for defendant’s constructions, calling one of plaintiff’s constructions “nonsense—a flippantly broad construction, untethered to the language of the claim.”  

The claim at issue reads (with the construed terms shown underlined):

31. An apparatus for routing a message from a requestor to a physician through a web site, such apparatus comprising:

 a plurality of message destinations provided by the physician;

 a respective criteria provided by the physician for routing messages to each of the plurality of message destinations;

 a form downloaded by the requestor from the web site;

 an at least partially completed form created by the requestor from the downloaded form and returned to the web site as a message to the physician;

 a content processor adapted to determine an information content of the message received from the patient and that selects a message destination of the plurality of message destinations by matching the routing criteria of the selected destination with the determined information content; and

 a routing processor adapted to route the message to the selected message destination based upon the determined information content and routing criteria provided by the selected physician.

The court’s construction is as follows:

  • The preamble is not limiting.
  • comprising means “including but not limited to”
  • “plurality of message destinations provided by the physician” means “more than one communication device or end point that is external to the patented system and can belong to someone other than the physician, which device or end point is supplied by the physician for the delivery of messages.”
  • “a respective criteria provided by the physician for routing messages to each of the plurality of message destinations,” along with the antecedent references to “routing criteria,” means “standards provided by a physician, and no one else, upon which a decision can be made about which of a plurality of message destinations to route a message based upon the importance and priority of that type of message to that physician.”
  • “a form downloaded by the requestor from the web site” means “a form containing at least one field for freeform message entry that can be accessed by the requestor on the web site.”
  • “content processor” means “a device that intelligently reviews the contents of the form’s fields, ascertains the message’s content, compares that content to a set of routing criteria provided by the physician, matches the message type to the importance of that message to the physician, and selects where the message should go in terms of priority.”
  • “routing processor” means “a device that receives from the content processor priority-based routing instructions for the destination of a message, matches the already determined priority of the message with the message destination(s) selected by the physician to receive messages of that priority, and effectuates the delivery of the message to the message destination(s).”

Judge Failla also ruled on motions to exclude testimony “to provide clarity to the parties in the event they elect to resubmit motions for summary judgment.” She said that the defendant’s founder’s lay-witness testimony was admissible except where it stated legal conclusions. For example, this statement was found to be inadmissible:  “The screen shots for element nos. 2 and 3 in [plaintiff’s] claim chart do not support the presence of a plurality of message destinations for the [accused product].”

The court completely excluded the testimony of defendant’s witness Mark Conner. Defendant alleged that Conner built a system that anticipated the patent-in-suit. However, the court struck this testimony for two reasons. First, like the founders’ testimony, it made inadmissible lay-witness conclusions on legal issues. Second, and more important in the court’s mind, CureMD never disclosed Conner as a potential witness or that he had information CureMD would rely upon for its defense. Further, it failed to produce documents relating to Conner’s work until after the close of discovery.

The court also struck portions of plaintiff’s testimony. Plaintiff offered the testimony of the patent’s sole inventor, Joseph Sameh. The court found that Sameh was an expert on doctor-client communication, but that he was “not qualified to testify as an expert in the fields of computer programming, systems analysis or engineering, applications expertise, or software engineering.” Sameh’s training in computer programming was called “limited.” His computer education was approximately 40 years old, and he did not graduate from college. Further, the court said that “Sameh and 523 IP are essentially asking the Court to accept his representation that he has expertise based on experience, without explaining what that experience is or how his expertise grew from it.”

The court also excluded Sameh’s opinions about infringement, finding that nearly all of his conclusions (1) proffered his own claim construction, (2) stated that defendant’s product met the limitation as construed, and (3) thus concluded that the product infringes. “Sameh’s assertions are so conclusory and obvious as to be unhelpful to the trier of fact.”

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