Case 0:09-cv-01594-ADM-FLN Document 42 Filed 07/30/10 Page 1 of 15 UNITED STATES DISTRICT COURT DISTRICT OF MINNESOTA 3M INNOVATIVE PROPERTIES COMPANY and 3M COMPANY, vs. ENVISIONWARE, INC., Plaintiffs, Civil No. 09-cv-01594-ADM-FLN JOINT CLAIM CONSTRUCTION STATEMENT Defendant. In accordance with the Court's Pretrial Schedule dated January 24, 2010, the parties file this Joint Claim Construction Statement ("Statement") of certain, previously-identified claim terms, phrases, or clauses of U.S. Patent 6,857,568, U.S. Patent 6,232,870, and U.S. Patent 6,486,780. The Statement identifies the claim terms, phrases, or clauses on which the parties were unable to agree on a construction and provides a proposed construction by each of the parties. For each of the disputed claim terms, phrases, or clauses, the Statement further identifies references from the specification and/or prosecution history ("Intrinsic ") and any known extrinsic evidence on which either party may rely either to support its proposed construction or to oppose the other party's construction. Each party reserves the right to rely on any Intrinsic or extrinsic evidence cited by the opposing party in this Statement. The parties believe that a claim construction hearing will be necessary to more fully present the parties respective positions and will assist the Court for purposes of resolving the disputed claim terms and anticipate that the claim construction hearing will require approximately one day. The parties propose that the claim construction hearing is conducted in a
Case 0:09-cv-01594-ADM-FLN Document 42 Filed 07/30/10 Page 2 of 15 term-by-term fashion that allows each side to address each disputed claim term before moving on to a different claim term. As to the claim construction briefing procedure, the parties propose that they simultaneously file and serve their respective opening and responsive claim construction briefs. Each side's total briefing (opening and response briefs combined) shall not exceed 12,000 words per local rule 7.1(d). The parties differ on the proposed briefing schedule. 3M proposes that the parties simultaneously file and serve their respective opening briefs on August 27, 2010. 3M proposes each of the parties will then have 21 days to file and serve a response brief (September 17, 2010). 3M proposes that, according to paragraph D(5) of the Court's Pretrial Schedule, a hearing on claim construction shall be held on or before October 1, 2010. EnvisionWare proposes the Court reserve setting a briefing schedule until after the Court has ruled on EnvisionWare's Motion for Stay Pending Reexamination, which EnvisionWare will be filing this Monday, August 2, 2010. I. Terms On Which The Parties Do Not Agree A. Disputed Claim Terms from U.S. Patent 6,857,568 Each party's proposed claim construction for each of the disputed phrases (and the independent and dependent claims in which these phrases are found) is identified below, followed by the intrinsic and extrinsic evidence the party intends to rely on in support of its proposed construction or to oppose the other party's proposed construction. 1. "controller" as used in claims 6, 7, 8, 9, 15, 16, and 22 3M's Proposed Construction and 3M contends that no construction is "a device that controls the operation of the 2
Case 0:09-cv-01594-ADM-FLN Document 42 Filed 07/30/10 Page 3 of 15 required for the term controller. 3M proposes that the phrase controller carries its plain and ordinary meaning. In the alternative, if the Court determines that a construction of controller is necessary, 3M proposes that the term controller be construed as: a device that receives, stores, processes, and/or provides information to various devices. 568 Patent: Abstract Summary of the Invention Fig. 3 Cl. 7:29-65 Cl. 8:58-9:8 Cl. 13:7-47 Cl. 15:21-44 Cl. 18:47-19:3 Cl. 22:9-51 Cl. 23:38-24:12 Cl. 32:33-46 Claims 1, 2, 3, 6-17, and 22 recited elements of the self-service library terminal" '568 Patent: Abstract Cl. 2:14-4:5 Cl. 7:29-67 Cl. 8:1-33:9 Cl. 33:26-59 Cl. 33:63-34:8 Cl. 34:31-38:48 FIGS. 3-29. 2. "remind" as used in claims 6, 7, 8, 9, and 15 3M's Proposed Construction and 3M contends that no construction is required for the term remind. 3M proposes that the term remind carries its plain and ordinary meaning. In the alternative, if the Court determines that a construction of remind is necessary, 3M proposes that the term remind be construed as: inform or alert 568 Patent: "always alert a borrower to the recited information" '568 Patent: Cl. 3:10-19 Cl. 8:1-33:9 Cl. 33:63-34:8 Cl. 34:31-38:48. '568 Patent Prosecution History: 3
Case 0:09-cv-01594-ADM-FLN Document 42 Filed 07/30/10 Page 4 of 15 Summary of the Invention Cl. 3:11-18 Cl. 34:5-9 Claims: 6-12, 15 568 Patent Prosecution History: Application 09/713,444 May 5, 2003 Amendment April 13, 2004 Amendment The Random House Dictionary, 2d Ed., 1987 (remind) ( to cause (a person) to remember; cause (a person) to think (of someone or something) ). May 5, 2003 Amendment October 15, 2003 Amendment April 13, 2004 Amendment May 5, 2003 Amendment The Random House Dictionary, 2d ed., unabridged, 1987 (remind) ("to cause (a person) to remember; cause (a person) to think (of someone or something): Remind me to phone him tomorrow. That woman reminds me of my mother."). 3. "so that the loan transactions can be later transferred to the circulation system" as used in claims 9, 16, and 22 3M's Proposed Construction and 3M contends that no construction is required for the phrase so that the loan transactions can be later transferred to the circulation system. 3M proposes that the phrase so that the loan transactions can be later transferred to the circulation system carries its plain and ordinary meaning. "to transfer data to the circulation system over the link when the link is re-established" '568 Patent: Cl. 1:63-2:9 Cl. 3:19-33 Cl. 7:43-65 Cl. 8:1-33:9 Cl. 34:31-38:48. 4 '568 Patent Prosecution History: May 5, 2003 Amendment October 15, 2003 Amendment April 13, 2004 Amendment Compl. [Docket No. 1] 3M's Ans. to EnvisionWare's 1st. Set of Interrogs.
Case 0:09-cv-01594-ADM-FLN Document 42 Filed 07/30/10 Page 5 of 15 B. Disputed Claim Terms from U.S. Patent 6,232,870 Each party's proposed claim construction for each of the disputed phrases (and the independent and dependent claims in which these phrases are found) is identified below, followed by the intrinsic and extrinsic evidence the party intends to rely on in support of its proposed construction or to oppose the other party's proposed construction. 1. "inputting information" as used in claims 1, 2, and 4 3M's Proposed Construction and entering, loading, or transferring information 870 Patent: Fig. 14 Cl. 15:11-17 Cl. 15:32-37 Cl. 15:59-62 Cl. 16:55-64 Cl. 17:17-26 Cl. 17:40-43 Claims 1, 3, 6, 13, and 18 "entering data via a user interface of the device, but not transferring (e.g., downloading or uploading) data from another computer" '870 Patent: Cl. 11:17-18:46 Cl. 18:55-20:54. The Random House Dictionary, 2d ed., unabridged, 1987 (input) ("Computers. to enter (data) into a computer for processing"). 870 Patent Prosecution History: Application No. 09/134,686 Application No. 09/344,758 Application No. 09/368,826 November 1, 2000 Amendment Webster s New World Dictionary, 3rd College Ed., 1994 (input) ( The act of putting in; data or programs entered to be entered into a computer for processing; to feed (information) 5
Case 0:09-cv-01594-ADM-FLN Document 42 Filed 07/30/10 Page 6 of 15 into a computer ); McGraw-Hill Dictionary of Scientific and Technical Terms 5th Ed., 1994 (input) ( The information that is delivered to a data-processing device from the external world, the process of delivering this data, or the equipment that performs this process ); The American Heritage Dictionary 3rd Ed., 1992 (input) ( Comp. Sci. Information put into a data processing system ) 2. "an algorithm" as used in claim 6 3M's Proposed Construction and data or a list corresponding to an organizational system or a method of sorting 870 Patent: Fig. 13 Fig. 14 Cl. 16:36-54 Cl. 17:21-26 Claim 6 870 Patent Prosecution History: Application No. 09/134,686 Application No. 09/344,758 Application No. 09/368,826 "a set of rules" '870 Patent: Cl. 8:5-14 Cl. 11:17-18:46 Cl. 18:55-20:54 Webster's New World Dictionary of the American Language, 2d College ed., 1982 (algorithm) ("any special method of solving a certain kind of problem; specif., the repetitive calculations used in finding the greatest common divisor of two numbers (call in full Euclid s algorithm)"). 3. "received signals" as used in claims 1, 2, and 4 3M's Proposed Construction and 3M contends that no construction is required for the phrase received signals. 3M proposes that the phrase received signals carries its plain and ordinary meaning. "an electrical quantity or effect that can be varied in such a way as to convey information" '870 Patent: 6
Case 0:09-cv-01594-ADM-FLN Document 42 Filed 07/30/10 Page 7 of 15 Cl. 5:19-8:14 Cl. 18:55-20:54. 4. "obtaining" as used in claims 13, 14, and 15 The Random House Dictionary, 2d ed., unabridged, 1987 (signal) ("an electrical quantity or effect, as current, voltage, or electromagnetic waves, that can be varied in such a way as to convey information") Testimony from William R. Bandy, Ph.D. 3M's Proposed Construction and identifying, selecting, or acquiring an item in a manner to facilitate the input of information to the RFID device as to that item 870 Patent: Fig. 13 Cl. 17:61-18:6 Claim 13 870 Patent Prosecution History: Application No. 09/134,686 Application No. 09/344,758 Application No. 09/368,826 November 1, 2000 Amendment "gathering for interrogation" '870 Patent: Cl. 11:17-18:46 Cl. 18:55-20:54. The Random House Dictionary, 2d ed., unabridged, 1987 (obtain) ("to come into possession of; get, acquire, or procure, as through an effort or by a request: to obtain permission; to obtain a better income.") The American Heritage Dictionary 3rd Ed., 1992 (obtain) ( To succeed in gaining possession of; acquire ); Webster s II New College Dictionary, 1995 (obtain) ( To gain possession of, esp. by intention or endeavor ) 7
Case 0:09-cv-01594-ADM-FLN Document 42 Filed 07/30/10 Page 8 of 15 5. "input information to the RFID device as to that item" as used in claims 13, 14, and 15 3M's Proposed Construction and enter information to the RFID device as to the item 870 Patent: Fig. 13 Cl. 17:61-18:6 Claims 13, 14, and 15 870 Patent Prosecution History: Application No. 09/134,686 Application No. 09/344,758 Application No. 09/368,826 November 1, 2000 Amendment "input to the RFID device custom information observed by a user regarding the item scanned by the RFID device" '870 Patent: Cl. 11:17-18:46 Cl. 18:55-20:54. '870 Patent Prosecution History: November 1, 2000 Amendment C. Disputed Claim Terms from U.S. Patent 6,486,780 Each party's proposed claim construction for each of the disputed phrases (and the independent and dependent claims in which these phrases are found) is identified below, followed by the intrinsic and extrinsic evidence the party intends to rely on in support of its proposed construction or to oppose the other party's proposed construction. 1. "integrated unit" as used in claims 1, 2, 3, 4, 5, 6, 7, 11 and 17 3M's Proposed Construction and a unit wherein the recited component parts are or can be combined into a unified structure 780 Patent: "recited components directly connected to a single housing" '780 Patent: Cl. 11:17-18:57 8
Case 0:09-cv-01594-ADM-FLN Document 42 Filed 07/30/10 Page 9 of 15 Cl. 15:42-16:7 Fig. 13 Fig. 14 Fig. 15 Fig. 16 Claims 1, 7, 17, and 22 780 Patent Prosecution History: Cl. 18:66-20:54 FIGS. 15, 16. '780 Patent Prosecution History: February 26, 2001 Office Action March 29, 2001 Amendment September 14, 2001 Notice of Allowance Application No. 09/134,686 Application No. 09/344,758 Application No. 09/368,826 Application No. 09/619,220 March 29, 2001 Amendment April 25, 2001 Notice of Allowability September 12, 2001 Notice of Allowability Webster s New World Dictionary, 3rd College Ed., 1994 (integrate) ( To put or bring (parts) together into a whole; unify ); The American Heritage Dictionary 3rd Ed., 1992 (integrate) ( To make into a whole; unify; To join with something else; unite ); Webster s II New College Dictionary, 1995 (integrate) ( To make into a whole by bringing all parts together: unify; To join with something else ) 2. "substantially simultaneously" as used in claims 1, 2, 3, 4, 5, 6, 7, 11 and 17 3M's Proposed Construction and in immediate or nearly immediate succession in time 780 Patent: Background of the Invention Cl. 8:3-13 Cl. 13:25-36 Cl. 5:36-53 Cl. 15:62-16:3 Claims 1 and 17 9 "in substantially overlapping durations" '780 Patent: Cl. 1:25-3:22 Cl. 5:39-45 Cl. 8:3-13 Cl. 11:17-18:57 Cl. 18:66-20:54
Case 0:09-cv-01594-ADM-FLN Document 42 Filed 07/30/10 Page 10 of 15 780 Patent Prosecution History: Application No. 09/134,686 Application No. 09/344,758 Application No. 09/368,826 Application No. 09/619,220 March 29, 2001 Amendment September 12, 2001 Notice of Allowability U.S. Patent No. 5,940,006 to MacLellan et al. EP0779520 to AT&T Corp U.S. Patent No. 5,952,922 to Shober. Testimony of William R. Bandy, Ph.D. Webster s New World Dictionary, 3rd College Ed., 1994 (simultaneous) ( Occurring, done, existing, etc. together or at the same time ); The American Heritage Dictionary 3rd Ed., 1992 (simultaneous) ( Happening, existing, or done at the same time ); Webster s II New College Dictionary, 1995 (simultaneous) ( Occurring, existing, or carried out at the same time ). 3. "a data transfer system for transferring data from the RFID device to a separate database" as used in claims 3, 4, 5, and 6 3M's Proposed Construction and 3M contends that no construction is required for the phrase a data transfer system for transferring data from the RFID device to a separate database. 3M proposes that the phrase a data transfer system for transferring data from the RFID device to a separate database carries its plain and ordinary meaning. "a system that transfers data directly to a comprehensive collection of related data organized for convenient access" '780 Patent: Cl. 11:17-18:57 Cl. 18:66-20:54 The Random House Dictionary, 2d ed., unabridged, 1987 (database) ("1. a comprehensive collection of related data organized for convenient access, generally in a computer. 2. See data bank.") 10
Case 0:09-cv-01594-ADM-FLN Document 42 Filed 07/30/10 Page 11 of 15 4. "a trigger for intermittent activation of the device" as used in claim 17 3M's Proposed Construction and 3M contends that no construction is required for the phrase a trigger for intermittent activation of the device. 3M proposes that the phrase a trigger for intermittent activation of the device carries its plain and ordinary meaning. properly construed as means plus function under 35 U.S.C. 112 6 alternatively construed as: "a trigger" a projecting tongue or lever "intermittent activation of the device" placing the device into a separate, powersaving mode of operation as opposed to a continuous mode of operation '780 Patent: Cl. 1:25-3:22 Cl. 11:17-18:57 Cl. 18:66-20:54 FIGS. 15, 16. '780 Patent Prosecution History: Original Application March 29, 2001 Amendment The Random House Dictionary, 2d ed., unabridged, 1987 (intermittent) ("alternately functioning and not functioning or alternately functioning properly or improperly") U.S. Patent No. 5,952,922 to Shober U.S. Patent No. 6,097,301 to Tuttle U.S. Patent No. 6,150,948 to Watkins. Testimony of William R. Bandy, Ph.D. 11
Case 0:09-cv-01594-ADM-FLN Document 42 Filed 07/30/10 Page 12 of 15 II. Witnesses A. EnvisionWare's Position EnvisionWare intends to call William R. Bandy, Ph.D. at the claim construction hearing to provide testimony regarding the following topics. First, Dr. Bandy will testify that, at the time of the earliest effective filing date of the '780 patent, at least two ways existed to read information from multiple RFID tags: (i) simultaneously e.g., using multiple channels or using spread-spectrum technology; or (ii) sequentially e.g., using time slots. This testimony will be relevant to the construction of the term "substantially simultaneously" as recited in claims 1 and 17 of the '780 patent. Second, Dr. Bandy will testify that, at the time of the earliest effective filing date of the '780 patent, the industry was researching and implementing RFID readers having at least two modes of operation: (i) a fully powered mode; and (ii) an intermittent mode of operation in which reader power was conserved. This testimony will be relevant to the construction of the term "intermittent activation of the device" as recited in claims 11 and 17 of the '780 patent. Third, Dr. Bandy will opine as to how a person of ordinary skill in the relevant art(s) would interpret the term "received signals" as recited in claim 1 of the '870 patent. Additionally, Dr. Bandy will opine as to the level of skill in the relevant art as of the earliest effective filing date of the '870, '780, and '568 patents. Regarding 3M's objection to EnvisionWare's reliance on testimony of expert witnesses, EnvisionWare disputes and disagrees with 3M's characterizations. EnvisionWare has relied on the proposals and representations of 3M's counsel, both during our meet-and-confer telephone calls and in explicit written correspondence, that the parties' positions with respect to proposed terms, proposed constructions, and proposed sources of extrinsic evidence were preliminary and 12
Case 0:09-cv-01594-ADM-FLN Document 42 Filed 07/30/10 Page 13 of 15 may evolve until the August 1, 2010, deadline for submitting the Joint Claim Construction to the Court. Moreover, 3M too only notified EnvisionWare of substantial changes to 3M's own positions on July 28, 2010 and July 30, 2010, only hours before the filing of this Joint Claim Construction Statement. 3M's substantial changes to its own positions belie its objection and, in fact, demonstrate an acknowledgement of the agreement between the parties. In view of counsel for 3M's representations and 3M's own revised positions, EnvisionWare believes any objection to EnvisionWare's revised positions is inappropriate. B. 3M's Position 3M objects to the inclusion by EnvisionWare of any evidence in the form of witness testimony. Section D(3) of the Pretrial Schedule requires that on or before July 1, 2010 the parties provide preliminary identification of extrinsic evidence, including without limitation... testimony of percipient and expert witnesses that they contend support their respective claim constructions. (Dkt. 23). Furthermore, the Pretrial Schedule requires that at the same time the parties shall also provide a brief description of the substance of that witness proposed testimony. (Id.) EnvisionWare s Preliminary Claim Construction and Preliminary Identification of Extrinsic served on July 1, 2010 did not identify any witnesses, let alone provide a brief description of the substance of that witness proposed testimony. The first time 3M was made aware of EnvisionWare s intent to rely on witness testimony was July 30, 2010 only hours before the filing of this Joint Claim Construction Statement. Because EnvisionWare failed to comply with the Court s Pretrial Schedule and concealed its intent to rely on witness testimony until hours before filing this Joint Claim Construction Statement, 3M requests that this Court bar EnvisionWare from submitting any witness testimony 13
Case 0:09-cv-01594-ADM-FLN Document 42 Filed 07/30/10 Page 14 of 15 either at the Claim Construction Hearing or otherwise. If the Court permits EnvisionWare to provide extrinsic evidence in the form of witness testimony, 3M reserves its right to provide responsive witness testimony, the subject of which will be disclosed in 3M s opening Claim Construction brief. Dated: July 30, 2010 s/ Andrew F. Johnson David J. F. Gross (No. 208772) James W. Poradek (No. 290488) Theodore M. Budd (No. 314778) Christopher J. Burrell (No. 386475) Andrew F. Johnson (No. 389331) FAEGRE & BENSON LLP 2200 Wells Fargo Center 90 South Seventh Street Minneapolis, Minnesota 55402-3901 Telephone: (612) 766-7000 Fax: (612) 766-1600 Email: dgross@faegre.com; jporadek@faegre.com; tbudd@faegre.com; cburrell@faegre.com; ajohnson@faegre.com Kevin H. Rhodes (No. 0318115) Peter L. Olson (No. 0221491) 3M INNOVATIVE PROPERTIES COMPANY 3M Center P.O. Box 33427 Saint Paul, MN 55144 Telephone: (651) 736-4533 Fax: (651) 737-2948 Email: krhodes@mmm.com; plolson4@mmm.com ATTORNEYS FOR PLAINTIFFS 3M INNOVATIVE PROPERTIES COMPANY AND 3M COMPANY 14
Case 0:09-cv-01594-ADM-FLN Document 42 Filed 07/30/10 Page 15 of 15 Dated: July 30, 2010 /s Nirav N. Desai Kevin D. Conneely (#192703) David D. Axtell (#314956) Ruth A. Rivard (#327591) Erik M. Drange (#344138) LEONARD, STREET AND DEINARD, P.A. 150 South Fifth Street, Suite 2300 Minneapolis, MN 55402 Telephone: (612) 335-1500 Facsimile: (612) 335-1657 Email: kevin.conneely@leonard.com; david.axtell@leonard.com; ruth.rivard@leonard.com erik.drange@leonard.com OF COUNSEL: H. Keeto Sabharwal (admitted pro hac vice) Nirav N. Desai (admitted pro hac vice) Email: keetos@skgf.com; ndesai@skgf.com STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 New York Avenue, NW Washington, DC 20006 Telephone: (202) 371-2600 Facsimile: (202) 772-8878 ATTORNEYS FOR DEFENDANT ENVISIONWARE, INC. Joint Claim Construction Statement (to be filed with Court).DOC 15
Case 0:09-cv-01594-ADM-FLN Document 42-1 Filed 07/30/10 Page 1 of 2 UNITED STATES DISTRICT COURT DISTRICT OF MINNESOTA 3M INNOVATIVE PROPERTIES COMPANY and 3M COMPANY, vs. ENVISIONWARE, INC., Plaintiffs, Civil No. 09-cv-01594-ADM-FLN CERTIFICATE OF SERVICE Defendant. I hereby certify that on July 30, 2010, I caused the following document: Joint Claim Construction Statement to be filed electronically with the Clerk of Court through ECF, and that ECF will send an e-notice of electronic filing to the following: David D Axtell david.axtell@leonard.com,barbara.mclean@leonard.com, catherine.hortonmorin@leonard.com Theodore M Budd tbudd@faegre.com,merickson@faegre.com,couellette@faegre.com Christopher J Burrell cburrell@faegre.com Kevin D Conneely kevin.conneely@leonard.com,barbara.mclean@leonard.com, maryann.wessel@leonard.com,catherine.hortonmorin@leonard.com Nirav N Desai ndesai@skgf.com Erik M Drange erik.drange@leonard.com,lynn.miskowiec@leonard.com David J F Gross dgross@faegre.com,degan@faegre.com Andrew F Johnson ajohnson@faegre.com,sbeety@faegre.com Peter L Olson plolson4@mmm.com
Case 0:09-cv-01594-ADM-FLN Document 42-1 Filed 07/30/10 Page 2 of 2 James W Poradek jporadek@faegre.com,dnoren@faegre.com Kevin H Rhodes krhodes@mmm.com,sconoryea@mmm.com Ruth A Rivard ruth.rivard@leonard.com,brenda.harvey@leonard.com H Keeto Sabharwal keetos@skgf.com Dated: July 30, 2010 BY: s/ Andrew F. Johnson David J. F. Gross (No. 208772) James W. Poradek (No. 290488) Theodore M. Budd (No. 314778) Christopher J. Burrell (No. 386475) Andrew F. Johnson (No. 389331) FAEGRE & BENSON LLP 2200 Wells Fargo Center 90 South Seventh Street Minneapolis, Minnesota 55402-3901 Telephone: (612) 766-7000 Fax: (612) 766-1600 Email: dgross@faegre.com; jporadek@faegre.com; tbudd@faegre.com; cburrell@faegre.com; ajohnson@faegre.com Kevin H. Rhodes (No. 0318115) Peter L. Olson (No. 0221491) 3M INNOVATIVE PROPERTIES COMPANY 3M Center P.O. Box 33427 Saint Paul, MN 55144 Telephone: (651) 736-4533 Fax: (651) 737-2948 Email: krhodes@mmm.com; plolson4@mmm.com fb.us.5524962.01 ATTORNEYS FOR PLAINTIFFS 3M INNOVATIVE PROPERTIES COMPANY AND 3M COMPANY