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Michael Sandborn & Mark Sandborn P'Ship v. Avid Tech., Inc.

United States District Court, D. Massachusetts

October 20, 2014

AVID TECHNOLOGY, INC., Defendant and Counter Claimant

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[Copyrighted Material Omitted]

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For Michael Sandborn & Mark Sandborn Partnership, Michael Sandborn, Mark Sandborn, MS Squared, Plaintiffs, Counter Defendants: Thomas M. Greene, LEAD ATTORNEY, Michael Tabb, Greene LLP, Boston, MA; John P. Cowart, PRO HAC VICE, Shaw Cowart LLLP, Austin, TX; Thomas D. Greene, GreeneLLP, Bostonq, MA.

For Avid Technology, Inc., Defendant, Counter Claimant: Craig R. Smith, LEAD ATTORNEY, Eric P. Carnevale, Lando & Anastasi, LLP, Cambridge, MA; William Seymour, PRO HAC VICE, Lando & Anastasi, Cambridge, MA.

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F. Dennis Saylor IV, United States District Judge.

This is a patent infringement action involving musical notations that use color to demonstrate harmonic structure. The patent at issue, U.S. Patent No. 6,930,235 B2 (the " '235 patent" ), claims methods and systems for correlating colors with musical notes. Plaintiffs Michael Sandborn & Mark Sandborn Partnership, Michael Sandborn, Mark Sandborn, and MS Squared seek a judgment under 35 U.S.C. § 271 that their patent is infringed by a software program, Sibelius, that was created by defendant Avid Technology, Inc. Defendant has asserted a number of counterclaims, including claims of non-infringement and invalidity.

The case is at the claim construction stage. The parties dispute the meaning of the term " consecutive chromatic colors" in claim 102. Defendant also contends that three of plaintiffs' claims--72, 74, and 75--are invalid because plaintiff has failed to identify a structure for those claims.

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I. Background

A. Factual Background

The facts are set forth as alleged in the complaint.

On August 16, 2005, the United States Patent and Trademark Office issued the '235 patent. (Am. Compl. ¶ 9). The patent covers methods and systems for (1) " assigning colors to musical notes and musical notation," (2) " creat[ing] musical notation with colors," and (3) " read[ing] and display[ing] such musical notation." ( Id.) The Michael Sandborn & Mark Sandborn Partnership, Michael Sandborn, Mark Sandborn, and MS Squared own the rights to the '235 patent. (Am. Compl. ¶ 10).

Defendant Avid Technology, Inc. owns the right to a popular software product, Sibelius, that creates, reads, displays, and prints musical scores. (Am. Compl. ¶ 11). Among other options, Sibelius offers users the ability to create scores that include colored annotations. ( Id.). Plaintiff alleges that Sibelius infringes, or has infringed, the methods and systems set forth in the '235 patent. ( Id.).

According to plaintiffs, Avid was made aware of the existence of the '235 patent in February 2009. (Am. Compl. ¶ 13). Avid did not seek a license to use the patented methods or systems, nor did it remove the use of those methods and systems from its product. ( Id.).

In May 2009, Avid released a new version of Sibelius, called version 6. (Am. Compl. ¶ 14). The version eliminated the " Pitch Spectrum" feature, which had previously created colored musical scores. ( Id.). Sibelius users complained about the removal of the " Pitch Spectrum" feature. (Am. Compl. ¶ 15). The complaint alleges that an Avid employee indicated that it was removed " for legal reasons," and the same employee and others posted " work-arounds" on the Avid website to allow users to restore the functionality of the feature to version 6. (Am. Compl. ¶ ¶ 15-16).

Plaintiffs filed the present suit on August 17, 2011. Avid answered the complaint on December 19, 2011, and filed counterclaims of invalidity and non-infringement. The parties proceeded with discovery until August 9, 2012, when a suggestion of bankruptcy was filed in the case regarding Michael Sandborn. The parties requested, and were granted, a stay of the action pending resolution of the bankruptcy issues. In February 2013, the stay was lifted. On April 29, 2014, the Court held a Markman hearing on the disputed terms in the claims.

B. The Claimed Invention

The '235 patent claims a process for relating music to colors. Specifically, it claims a method and system wherein twelve colors in a color spectrum are assigned to the twelve tones of a chromatic scale based on their positions in the musical circle of fifths.[1] The colors and tones are assigned according to proximity on each respective scale, so that the colors that are closest to each other on the spectrum correspond with the tones that share the most harmonic relationships. According to plaintiffs, the color scheme aids in music education by making additional information about the harmonic structure of a piece readily apparent, and accordingly offers an improvement over previous systems of musical notation.

II. " Consecutive Chromatic Colors"

A. Legal Framework

The construction of claim terms is a question of law. Markman v. Westview

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Instruments, Inc., 517 U.S. 370, 372, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) (" [T]he construction of a patent, including terms of art within its claim, is exclusively within the province of the court." ).

In Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ( en banc ), the Federal Circuit clarified the proper approach to claim construction and set forth principles for determining the hierarchy and weight of the definitional sources that give a patent its meaning. The guiding principle of construction is " the meaning that the term would have to a person of ordinary skill in the art in question at the time of . . . the effective filing date of the patent application." Id. at 1313. Courts thus seek clarification of meaning in " the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art." Id. at 1314 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., 381 F.3d 1111, 1116 (Fed. Cir. 2004)).

1. The Words of the Claims Themselves

The claim construction analysis normally begins with the claims themselves.[2] The claims of a patent " define the invention to which the patentee is entitled the right to exclude." Id. at 1312 (citing Innova, 381 F.3d at 1115).

A court may construe a claim term to have its plain meaning when such a construction resolves a dispute between the parties. See O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008); see also U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (" Claim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, . . . [but] is not an obligatory exercise in redundancy." ).

In some instances, it is the arrangement of the disputed term in the claims that is dispositive. " This court's cases provide numerous . . . examples in which the use of a term within the claim provides a firm basis for construing the term." Phillips, 415 F.3d at 1314. For example, because claim terms are normally used consistently throughout the patent, the meaning of a term in one claim is likely the meaning of that same term in another. Id. In addition, " the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim." Id. at 1314-15.

2. The Specification

" The claims, of course, do not stand alone." Id. at 1315. Rather, " they are part of a fully integrated written instrument, consisting principally of a specification that concludes with the claims." Id.

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(citations and internal quotation marks omitted). For that reason, the specification must always be consulted to determine a claim's intended meaning. " [T]he specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term." Id. (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).

" In general, the scope and outer boundary of claims is set by the patentee's description of his invention." On Demand Mach. Corp. v. Ingram Indus., 442 F.3d 1331, 1338 (Fed. Cir. 2006); see also Phillips, 415 F.3d at 1315-1317 (" [T]he interpretation to be given a term can only be determined and confirmed with a full understanding of what the inventors actually invented and intended to envelop with the claim" ). " [T]he specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess." Phillips, 415 F.3d at 1316. It may also reveal " an intentional disclaimer, or disavowal, of claim scope by the inventor." Id. Therefore, the claims are to be construed in a way that makes them consistent with, and no broader than, the invention disclosed in the specification. On Demand, 442 F.3d at 1340 (" [C]laims cannot be of broader scope than the invention that is set forth in the specification." ); Phillips, 415 F.3d at 1316 (" [C]laims must be construed so as to be consistent with the specification, of which they are a part." ).

Nevertheless, courts must be careful to " us[e] the specification [only] to interpret the meaning of a claim" and not to " import[] limitations from the specification into the claim." Phillips, 415 F.3d at 1323; see also Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1375 (Fed. Cir. 2005) (internal quotation marks omitted). A patent's " claims, not specification embodiments, define the scope of patent protection." Kara Tech. Inc. v. Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009); see also Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1381 (Fed. Cir. 2009) (" [E]mbodiments appearing in the written description will not be used to limit claim language that has broader effect." ). " In particular, we have expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment." Phillips, 415 F.3d at 1323. This is " because persons of ordinary skill in the art rarely would confine their definitions of terms to the exact representations depicted in the embodiments." Id.

Although this distinction " can be a difficult one to apply in practice[,] . . . . the line between construing terms and importing limitations can be discerned with reasonable certainty and predictability if the court's focus remains on understanding how a person of ordinary skill in the art would understand the claim terms." Id. Ultimately, " [t]he construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction." Id. at 1316 (citing Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)).

3. The Prosecution History

After the specification and the claims themselves, the prosecution history is the next best indicator of term meaning. The prosecution history consists of the complete record of the proceedings before the PTO and includes the prior art cited during the examination of the patent. Id. at 1317. " Like the specification, the prosecution history provides evidence of how ...

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