of the invention that is clear and complete enough to enable those of ordinary skill in the art to make
and use it. Vitronics, 90 F.3d at 1582. The specification is “always highly relevant” and is the
“single best guide to the meaning” of a disputed term. Jd. All claims must be read in view of the
specification, which acts as a sort of dictionary to explain the invention and may also help to define
the terms used in the claims. Markman, 52 F.3d at 979.

Third, the court may also consider the prosecution history of the patent, which contains the
complete record of the proceedings before the Patent and Trademark Office, including any express
representations made by the patentee regarding the scope of the claims. Vitronics, 90 F.3d at 1582.
Often significant in determining the scope of a claim, the prosecution history can and should be used
to understand the language used in the claim. Jd. Such history may include an examination of the
prior art, which may give guidance as to what the patent does and does not cover. Jd. at 1583.

Finally, extrinsic evidence, such as expert and inventor testimony, dictionaries and leamed
treatises, may be considered only to assist the court in understanding the patent, not to vary or
contradict the terms of the claims. Markman, 52 F.3d at 980-81. Extrinsic evidence should be relied
upon only if the analysis of intrinsic evidence fails to resolve an ambiguity in the disputed claim
term. Vitronics, 90 F.3d at 1584. Judges are free to consult dictionaries at any time to better
understand the underlying technology, and may rely on dictionary definitions as the ordinary and
accustomed meaning of a term, as Jong as that definition does not contradict any definition found
in the patent itself. /d. at 1584, n.6. A court may rely on prior art to aid in the court’s understanding
and to demonstrate how a disputed term is used by those skilled in the art. Jd. at 1584. Opinion
testimony of experts and the inventor should be treated with “utmost caution” and may only be relied

upon if the patent documents are insufficient to enable the court to construe the disputed claims



billing data has been filtered and “billing information” refers to the individual user’s bill. Use of
“billing information” after the filtering process, (id.), must have a different meaning from “billing
information” before the sorting process, (id. at ll. 14, 20). “Billing information,” therefore, as used
in the specification, has two distinct meanings.

In order to determine whether “billing information” as used in claim 1(c) means the billing
data for all users or for only one user, the court now looks to the prosecution history, The inventors
submitted their patent application on August 29, 1988. (Checkfree Mot., Ex. C, Tab 1 at 1.) As
originally drafted, claim 1(c) used the term “billing data,” not “billing information.” (Jd. at Tab 1
at 11.) It appears that an examiner marked corrections and comments on their application. (/d. at
Tab 1 at 2-14.) On pages 11 and 12, certain corrections to claim 1 are made; the word “data” was
replaced by “information.” (/d. at Tab 1 at 11-12.) Significantly, in the claim as originally drafted,
the term “billing data” was consistently used prior to the filtering at the address decoder, while
“billing information” was consistently used after the address decoder. (/d. at Tab 1 at 11.) In the
examiner’s action dated June 20, 1989, the examiner did not explain his reason for replacing “data”
with “information.” (/d. at Tab 2 at 1.) In response, the inventors amended claim 1 by changing the
word “data” to “information.” (/d. at Tab 4 at 2.) Both the claim as originally drafted and the
amendment from “data” to “information” supports a construction that “billing information” as used
in claim 1(c) means the billing data for all customers.

However, use of the phrase “billing data” in the specification was not changed to “billing
information” as it was in the recitation of claim 1. During a lengthy prosecution history, patentees
sometimes fail to update the specification language as they amend the claims. Eolas Technologies,

Inc. v. Microsoft Corp., 2000 WL 1898853, *15 (N.D. Ill. 2000). It seems likely that inadvertence



infringement by Checkfree concerns a bill payment system in which a supplier telecommunicates
a single user’s bill information. Checkfree argues that “billing information” is synonymous with
“billing data” and, therefore, its product cannot infringe the °084 patent. Databurst, on the other
hand, argues that “billing information” refers to information for only one particular user.
Checkfree argues that in claim 1(c) “billing information” is synonymous with the term
“billing data,” and, thus, it should be construed to mean “information regarding bills for all users.”
(Checkfree Mot. at 21.) Specifically, Checkfree contends that the term “billing information”
represents the bills for all users, including (1) information about the transactions that are to be billed
to each user; and (2) identification information for each user, Recognizing that the pertinent
specification does not define the phrase “billing information” but does define “billing data,”
Checkfree states that “billing data for the customers” includes “customer identification information
and information about the transactions that are to be billed to the customer.” Checkfree asserts
without explanation that the wording of the specification supports the notion that “billing
information” is synonymous with “billing data” and therefore includes the billing data for all users.
In addition, Checkfree argues that the prosecution history supports its argument that “billing
information” is the same as “billing data” as used in the specification. Checkfree claims that the
patentee used the two terms interchangeably, as evidenced by the patentee’s amendment to claim 1
where “billing data” was replaced with “billing information.” Finally, Checkfree relies on inventor
testimony to support the correlation between “billing information” and “billing data.” In light of this
construction, Checkfree maintains that the limitation in claim 1(c) cannot be met by a device that

telecommunicates only an individual user’s bills.



terms, which is “rare[], if ever.” Jd. at 1584-85.
Means-Plus-Function Format

Both parties agree that each of the disputed claims is a means-plus-function construction and
should be construed pursuant to 35 U.S.C. § 112,96. Pursuant to that section, a claim element may
be “expressed as a means or step for performing a specified function without the recital of structure,
material, or acts in support thereof.” 35 U.S.C. § 112, 6. Claim elements written in a “means-plus-
function” format are construed to cover the corresponding structures described in the specification,
and equivalents thereof. Jd. In construing a means-plus-function element, the court must identify
the function portion of the element and construe any disputed terms in the function language. Next,
the court must identify the corresponding structure(s) disclosed in the specification linked or
associated with that function. Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145
F.3d 1303, 1308 (Fed. Cir. 1998). To determine the claimed function, the court must construe the
specific terms in the claim. Jd. at 1308.

Claim Interpretation

The elements of the ’084 patent requiring construction by the court are found in claims 1(a),
1(c), 1(d), 1(h), 8(a) and 8(d). However, the court finds the construction of claim 1(c) to be
determinative in this case. Therefore, the court need not construe the remaining claims.

The language in claim 1(c) reads: “means for telecommunicating the read billing information
to auser.” Because it is undisputed that this claim is a means-plus-function construction, the court
will construe it pursuant to 35 U.S.C. § 112, 6. The parties’ dispute over claim 1(c) turns on the
meaning of the phrase “billing information” as it is used in that claim. The question of whether

“billing information” refers to all users, or only one user, is determinative because the alleged



information.” Further, the ordinary and accustomed meaning of “information” does not provide this
court with any guidance as “information” may be either singular or plural. See Webster's Ninth New
College Dictionary 620 (9th ed. 1985) (defining “information” as “the communication or reception
of knowledge or intelligence”).

The court next turns to the specification more generally for guidance. “Billing data” is used
to describe what is broadcast from the supplier to the user. By tracing “billing data” as it travels
through different blocks in the specification, “billing data” is consistently referenced until the term
“billing information” appears in lines 14 and 20 in column 3. In a nutshell, “billing data” (which
both parties agree refers to the data for all customers) is first supplied to block 10, read by a tape
reader in block 12, temporarily stored at block 14 or 16, scrambled, encoded or faxed by block 20,
22, or 24, output to a modem at block 26, received by another modem at block 30, transmitted by
block 32, 34, or 38, received by block 44 or 46, digitally decoded by block 50 and decoded according
to a user’s address at block 52. Up to this point, nothing has occurred in the process to change the
content or substance of the “billing data,” and, therefore, the court reads “billing information” in
lines 14 and 20 in column 3 to refer to the billing data for all customers. Therefore, “billing
information” in both lines 14 and 20 refers to what was broadcast by the supplier to the user, i.e.
billing data. This supports a construction that “billing information” includes the billing data for all
customers.

There is, however, some further ambiguity and inconsistency in the use of the phrase “billing
information” that occurs later in the specification’s description. After the address decoder at block
52 determines if a bill is coming in for a particular user, the “billing information is stored in memory

in the message storage unit.” (°084 patent, col. 3, ll. 44-45.) Now, at this point in the process, the



Minute Order Form (06/97)

United States District Court, Northern District of Illinois

ame ied dae Joan B. Gottschall Siting Jed Other

CASE NUMBER 00 C 7944 DATE 3/17/2003
CASE Databurst LLC vs. Checkfree Corporation
TITLE

[In the following box (a) indicate the party filing the motion, e.g., plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature

of the motion being presented.}

MOTION:

DOCKET ENTRY:

(1) o Filed motion of [ use listing in “Motion” box above.]

(2) im Brief in support of motion due

(3) Qa Answer brief to motion due___. Reply to answer brief due.

(4) im} Ruling/Hearingon____ssetfor___—_att

(5) (a) Status hearing[held/continued to] [set for/re-set for]on___—ssetfor___—_att

(6) im Pretrial conference(held/continued to] [set for/re-set for]on___—ssetfor_— ss at_

(7) o Trial[set for/re-set for]on__at

(8) o [Bench/Jury trial] [Hearing] held/continued to___at

(9) oO This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to]
OFRCP4(m) OLocal Rule 41.1 CFRCP41(a)(1) OO FRCP41(a)(2).

(do) ol [Other docket entry} Enter Memorandum Opinion and Order. The accompanying Memorandum

Opinion and Order is entered and addresses the claim construction issues [53-1] in this case.

(11) | {For further detail see order attached to the original minute order.]
No notices required, advised in open court.
No notices required. number of notices
Notices mailed by judge’s staff. MA Dona
; THAW 7S 9,
Notified counsel by telephone, date dockéted’ 1:
af_| Docketing to mait notices.

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enag re, ( > 4

£05 Nd 81 yywey
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on the part of the patentees explains the inconsistent use of the phrase “billing information.”
Further, the court notes that a construction in which the supplier sends to the user only the individual
user’s billing information does not withstand scrutiny in light of the filtering process included within
the patent. The patent contemplates that data would be received by the user, run through an address
decoder, and then an individual user’s bill would be delivered into the PAID. If the supplier sends
the user’s receiver only the individual user’s bill, there would be no need to have any filtering
mechanism.
Conclusion

Based on the above, the court finds that the term “billing information” in claim 1(c) includes
the billing data for all customers, and includes for each user: (1) information about the transactions
that are to be billed to that user, and (2) identification information for that user. This limitation
would not cover any equipment that telecommunicates only an individual user’s bill(s) from the

supplier to the user.

JOAN B. GOTTSCHAFL
Yhited States District Judge
y

Dated: March 17, 2003 /

10



Databurst argues that claim 1(c) should be construed as a “means-plus-function limitation
covering modems 26 and 30, phone lines 32, modem 46 and equivalents thereof, which communicate
billing information at a distance as by telephone, radio, optical beams and the like.” (Databurst Mot.
at 17.) Databurst argues that based on the language of the specification, “billing data” is plural,
while “billing information” is the specific unit of information for one customer. Specifically,
Databurst alleges that “billing information” is defined in the specification as “customer identification
information and information about transactions that are to be billed to the customer.” (Databurst
Mot. at 18.)

The court must now determine the meaning of the phrase “billing information,” as used in
claim 1(c) to describe what is telecommunicated from the supplier (such as a credit card company)
to the individual user. First of all, contrary to Databurst’s contention, the term “billing information”
is not defined in the specification or anywhere in the patent. The specification states that a “block
10 contains billing data for the customers.” (’084 patent, col. 2, ll. 38-39.) It is undisputed that the
term “billing data” refers to the billing data for all customers. The next sentences reads: “This
includes customer identification information and information about the transactions that are to be
billed to the customer.” (Id. at ll. 39-40) (emphasis added). The pronoun “this” refers to the
antecedent “block 10” in the preceding sentence. Reading the two sentences together, block 10
(containing “billing data”) includes customer identification information and information about the
transactions that are to be billed to the customer.' Therefore, that section of the specification relied

upon by Databurst refers to “billing data” and cannot be read as a definition for “billing

' Although not necessary to the court’s construction, the court notes that the testimony of
the inventor of the 084 patent acknowledged that “billing information” was the same as “billing
data” at the “block 10” stage. (Checkfree Mot., Ex. D, Linse Dep. at 177-78.)

7



Claim Construction Principles

An infringement analysis is a two-step process. The first step is determining the meaning
and scope of the patent claims allegedly infringed, also known as claim construction. Mahurkar v.
Arrow Int'l, Inc., 160 F. Supp. 2d 927, 932 (N.D. Ill. 2001) (citing Markman, 52 F.3d at 976).
Courts must construe the claims as a matter of law before turning to the second step, the factual
application of those claims to the accused products. Jd.

The American patent system attempts to both secure the patentee’s rights and to put others
on notice of what the patentee has removed from the public domain for the life of the patent.
Arachnid, Inc. v. Merit Ind., Inc.,201 F. Supp. 2d 883, 887 (N.D. Ill. 2002). In light of these goals,
the court first looks to the language of the patent itself, including the claims, the specification, and
the prosecution history, as the primary source for construing patent claims. /d. The language of the
claim defines the scope and meaning of that claim. York Products, Inc. v. Central Tractor Farm &
Family Ctr., 99 F.3d 1568, 1572 (Fed. Cir. 1996). The language of the claims is to be given its
ordinary and accustomed meaning. Johnson Worldwide Assoc., Inc. v. Zebco Corp., 175 F.3d 985,
989 (Fed. Cir. 1999). There are two instances in which the court may give a claim term a meaning
outside of the ordinary one. When the patentee has chosen to be his own lexicographer, the court
may allow a special definition so long as it is clearly stated in the patent specification or history. Id.
at 990; Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The second
occasion arises when the terms used by the patentee “so deprive the claim of clarity that there is no
means by which the scope of the claim may be ascertained from the language used.” Zebco, 175
F.3d at 990.

Second, the court looks to the patent specification, which must contain a written description



card issuer) generates bill data for its customers and broadcast equipment (the first component) reads
the bill data and “pushes” it out to all users. Checkfree describes the information as “pushed” (not
pulled) because the user does nothing to retrieve the data. According to Checkfree, the user has a
special device called a PAID (the second component) that automatically receives the bill data for all
users, but selects only that portion of the bill data belonging to that particular user. The user may
then use the PAID (which has a keyboard) to send instructions to the Information Center (the third
component) which then directs a transfer of funds to pay the bill. The user may also use the PAID
to notify the supplier of a change of address.

Databurst, on the other hand, describes the 084 patent in broader terms and denies that the
patent is a “push” device. According to Databurst, the 084 patent relates to “an apparatus that
delivers, receives, and facilitates payment of a bill.” (Databurst Mot. at 3.) Databurst agrees that
there are three components, but describes them as follows: (1) equipment that prepares and transmits
billing information; (2) a telecommunications system; (3) a PAID at the location of the user which
receives the billing information and allows a user to deliver an order to make payment of an
electronic bill. According to Databurst, the ’084 patent would cover a system where a supplier sends
only an individual user’s billing information to the user.

Databurst argues that the claims of the ’084 patent encompass an apparatus (such as
Checkfree’s) that utilizes the Internet to deliver billing information for a single user who can then
authorize payment. On the other hand, Checkfree argues that such an apparatus would fall outside
the scope of the ’084 patent because the 084 patent only contemplates the telecommunication of
billing data for al users and cannot cover a system that transmits bill payment information for only

a single user.


UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION ae ak J
MAR ig
DATABURST, LLC, ) 200
)
Plaintiff, ) Case No. 00 C 7944
v. )
)
CHECKFREE CORPORATION, ) Judge Joan B. Gottschall
)
Defendant. ) ; i
MAR j 2003

MEMORANDUM OPINION AND ORDER

Plaintiff Databurst, LLC (“Databurst”) has brought this patent infringement action against
Checkfree Corporation (“Checkfree”) alleging that Checkfree has infringed Databurst’s United
States Patent No. 5,007,084 (‘084 patent”). This opinion construes disputed claims of the ‘084
patent to determine their scope and meaning. Markman v. Westview Instruments, Inc., 52 F.3d 967,
976 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996). Each party has submitted its respective position
on claim construction, enabling the court to address the disputed claim elements as a matter of law.
Patent °084

The ’084 patent covers a bill payment system for sending, receiving and authorizing payment
of bills that consists of three general components. According to Checkfree, the ’084 patent relates
to a “system for broadcasted billing information and allowing a user to pay a bill.” (Checkfree Mot.
at 3.) Checkfree describes the system as containing three components: (1) broadcast equipment that
prepares and broadcasts billing information; (2) a Payment Authorization and Information Device
(“PAID”) at a user’s location; and (3) an Information Center that receives and processes payment

instructions from a user. Under the system as described by Checkfree, a supplier (such as a credit

b>