Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv-00360-JJF Document 221 Filed 08/30/2006 Page 1 of 2
MoRR1s , NICHOLS , ARSHT 8; TUNNELL LLP
1201 NORTH MARKET STREET
P.O. Box 1347
WILMINGTON, DELAWARE 19899-1347
302 658 9200
302 658 3989 FAX
MARYELLEN NoRE1xA
202 351 9278
302 425 3011 FAX
[email protected]
August 30, 2006
BY ELECTRONIC FILING
The Honorable Joseph J. Farnan, Jr.
United States District Court
844 N. King Street
Wilmington, DE 19801
RE: Affinion v. Maritz, Inc. C.A. No. 04-360-JJF
Dear Judge Farnan:
Plaintiff Affinion Net Patents, Inc. ("Affinion") responds to the arguments made by
Defendant Maritz, Inc. ("Maritz"), in cormection with its submission of Honegell Intemational, Inc.
v. ITT Industries, Inc., 452 F.3d 1312 (Fed. Cir. 2006), as additional authority regarding claim
construction.
Maritz’s arguments incorrectly characterize the applicability of the Honeyyell
decision to the claim construction issues raised in this case. In Honeyyell, the claim construction
issues before the Court were (1) whether the term "fuel system component" could be construed to
include the accused "quick cormects" when the inventor unequivocally described his invention as
being a fuel filter and that was the only fuel system component disclosed in the specification, id, at
1318-19, and (2) whether the term "electrically conductive fibers" encompassed carbon fibers when
the specification said, in essence, "do not use carbon fibers," Q at 1320.
First, tmlike the specification at issue in Honeygell, the specification of the ‘4l2
patent does not contain any language unequivocally defining the "invention" as a system for product
purchase through an incentive program website and online redemption of awards, as Maritz
contends. Indeed, Maritz cannot quote any language from the specification ofthe ‘4l2 patent stating
anything remotely like the unequivocal statements in Honeygell that the invention was a fuel filter.
Instead, Maritz relies in its briefing on the statements of the various advantages ofthe invention - -
some but not all of which relate to product purchases. As discussed extensively in the Markman
briefing, sg; Affinion’s Claim Construction Answering Brief, D.I. 152 at 6-10, a claim need not be
interpreted to encompass all the stated advantages of the invention. Moreover, in contrast to the

Case 1 :04-cv-00360-JJF Document 221 Filed 08/30/2006 Page 2 of 2
The Honorable Joseph J. Faman, Jr.
August 30, 2006
Page 2
specification at issue in Honegell, which contained no disclosure relating to any fuel system
component other than the fuel filter, the specification of the ‘412 patent specifically describes and
depicts the award redemption method claimed in Claim 10. g, for example, the advantages of
online award redemption discussed at column 2 lines 9-17 and the discussion of Figure 4, which is
described (at col. 2, lines 49-51) as "a flow chart showing the award redemption part ofthe program
of the preferred embodiment of the present invention." Therefore, the specification of the ‘4l2
patent is not comparable to the specification at issue in Honeyyell.
Second, the statement in Honegell that the patentee’s statements to the PTO could
not be used to overcome a written description that "c1early identifies" what the invention is does not
apply here. Where the specification itself does not contain such a statement limiting the scope ofthe
invention, the intrinsic evidence of what was said during the prosecution history has value in helping
the Court to discem the meaning of the claims. g Phillips v. AWH Corp., 415 F.3d 1303, 1317
(Fed. Cir. 2005).
Third, in contrast to the repeated plain disclaimer of the use of carbon fibers in
Honeygell, there is no such disclaimer of a particular type of incentive program in the specification
of the ‘4l2 patent. The programs being criticized in the specification of the ‘412 patent are the
traditional, off-line incentive programs described therein. g col. 1, lines 17-59. Affinion’s
proposed claim construction would not encompass those traditional off-line programs and, therefore,
there is no issue of attempting to incorporate a disclaimed feature within the scope of the claims.
Affinion also wishes to draw the Court’s attention to LG Electronics, Inc. v. Bizcom
Electronics, Inc., 453 F.3d 1364 (Fed. Cir. 2006), decided on July 7, 2006. (A copy is attached for
the Court’s convenience.) ln LG Electronics, the Federal Circuit reversed the District Court’s claim
construction because it improperly read limitations into the claims based on descriptions of
embodiments in the specification.
Respectfully,
/s/ Maryellen Noreika (#3208)
Maryellen Noreika
MN/bls
cc: Peter T. Dalleo, Clerk (By Hand)
Patricia Smink Rogowski, Esquire (By Hand)
J. Bennett Clark, Esquire (By Fax)
Steven Lieberman, Esquire (By Fax)

Case 1:04-cv-00360-JJF

Document 221

Filed 08/30/2006

Page 1 of 2

Case 1:04-cv-00360-JJF

Document 221

Filed 08/30/2006

Page 2 of 2