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Case 1 :04-cv-00360-JJF Document 218 Filed 08/25/2006 Page 1 of 3
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Reolyto: Wilmington Office
August 25, 2006
By E-File
The Honorable Joseph J. Farnan, Jr.
United States District Court
for the District of Delaware
844 N. King Street
Wilmington, DE 1980l
RE: Affinion Net Patents, Inc. v. Moritz Inc.
Civil Action No. 04660-·JJF

Dear lodge Farnan:
Pursuant to Delaware Local Rule 7.1.2(c), Maritz Inc. ("Maritz") wishes to draw
i the Court’s attention to Honeywell International Inc. v. ITT Industries, Inc., 452 F.3d
l312 (Fed. Cir. 2006) as authority in support of Marit2’s proposed claim construction.
I A copy ofthe Honeywell case is attached for the Court’s convenience.
The Court held a Mor/anon hearing on June 7, 2006. A few weeks after that
hearing concluded, the Federal Circuit issued its decision in Honeywell, in which the
Federal Circuit embraced the claim construction rationale that the specilication is
‘°always highly relevant to claim constn1ction” and "usually" is "dispositive." 452 F.3d
1312, 1318. The Court emphasized the following significant patent claim construction
propositions:
1. Patent claims are properly construed as covering the sole embodiment
described as "this invention" or "the present invention" in the specification. 452
_ F.3d at X3} 8. ln Honeywell, the only "fuel system component" disclosed in the patent
specilication and figure was a fuel iilter. The Court noted that "[0]n at least four
occasions, the written description refers to the fuel filter as 'this invention' or 'the present
invention."’ ld. Therefore, "fue1 system component" in the patent claims was held to be
limited to a fuel filter.
wauurncron, oa wnsnanerom, oc ros lmorrras, ca

Case 1 :04-cv-00360-JJF Document 218 Filed 08/25/2006 Page 2 0f 3
C<>r~1:~1c>|..i..Y Bow: Lomas: 84 Hurz LLP
The Honorable J oscph J. Famam, J1:
August 25, 2006
Pago 3
In thc present casa, thc only "cm-line incentive pr0gra.m" described in the ‘4i2
patent spcciiicatioii is a frequency program that awards points for on-lim: product
purchases made-: through thc p1·0gr?.m’s website. And thc ’412 patcnt app1ica11txcpcatcd1y
used tmms such as "thc present invciition," "thc disclosed invcnticm,'* and "thc subject
invc11ti0n" in characterizing thc inventive subject mattcr in a manner consistent with
Maritz's proposed claim constmction. (Maritz’s Opening Claim Construction Brici D.I.
E38 at 7-8. See also AfE11i0n’s Answering Claim Cczistmcticm Brit-zi; D.I. 152 at 1-2, 9-
10; Maritz's Answering Ciaim Construction Brici D.I. 151, at 11-13).
2. Clear statements in the patent specification identifying “thc invcnti0n"
= override contrary statements about claim scope made by the applicant elsewhere in
the prosecution history. 452 F.3d at 1319. The Honeywell Court found that, cvcn if
thc app1ica,nt’s statements duiing prosecution had been unambiguous, thc result wouid
not have changed: "Whezc as hare, thc written description cle-zariy identifies what his
invention is, an expression by ei patcntcc during prosecution that he intends his ciaims to
cover marc than what his specification discloses is cntiticd to little weight? Id. at 1319.
In the present case, when Nctccntivcs took ovcr prosecution of the ‘412 patent,
Nctccmtivcs attempted to "1·cinva11t" thc claimed Subj ect matter by making ambiguous
Statements t0 the E’at€¤’£ Office which were incunsisicut with thc iiivcutiuii as described
p in thc specification. (Afiinicifs Opening Claim Construction Brici Di. 139, at 16-17
i and 1849; see also Maritz’s Answering Claim Construction Brici D.I. 151, at 7-8, amd
AiHni0n's Answering Claim Construction Brief, 1).1. 152 at 10-11). Thcsc ambiguous
prosecution history statements were chief among the scant intrinsic cvidcncc which
Afiinioii cculd muster to try to support its proposed claim cmnstmcticn. In Honeywell,
thc Fcdcrai Circuit termed such ambiguous statements to bc of "1itt1c wc=:ight." 452 F.3d
at 1319.
3. Subject matter disckaimcd in the written description cannot later be read
into the claims. 452 F.3d at 1319 ("This court has recognized that ‘[w]hcrc thc
specification makes clcar that the invention docs not include a particular feature, that
feature is deemed to bc outside thc reach of thc ciaims cf thc patent, cvcn though thc
language of thc claims, read without reference to the specification, might bc considered
broad enough to encompass the feature in q1wsti0n."’ (citation 0mitted)). Hare, Maritvt
i has shown that thc °412 patent claims include an "immcdiacy" limitation (i.c., the
issuance, and availability for redemption, of points must bc immediate). Matitz’s
Opening Claim Construction Brief, D.}, 138, at 11-1/1-; Affinioxfs Answering Claim
Construction Brici D.I. 152, at i9—20; Maritfs Answering Claim Construction Bidet]
D1. E5}, at 25-6. The *412 patent applicant criticized thc prior art as lacking immcdiacy

Case 1 :04-cv-00360-JJF Document 218 Filed 08/25/2006 Page 3 of 3
C01~u~1c>1.1..v Bova L.0a·>c1;: 8c HUTZ LLP
The Honorable Joseph J. Farnan, J r.
August 25, 2006
Page 4
of point awarding and availability for redemption, and touted his purported invention as
E employing just such an immediacy effect. The patent applicant thus disavowed systems
lacking such immediacy.
i Respectfully submitted,
J
· I . · Q'/b}F’<£,
p Patricia Smink Ro ski
Del. Bar ID No. 2632
i Enclosure
Honeywell International Inc. v. I TT Industries, Inc.,
452 F.3d l312 {Fed. Cir. 2006)
ec: 3. Bennett Clark, Esquire (with enclosure)
Sharon Davis, Esquire (With enclosure)
Maryellen Noreilca, Esquire (with enclosure)
PSR.v}m
4S3949vl(CB)

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