PowerOasis v . T-Mobile USA CV-05-42-PB 03/22/06

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW HAMPSHIRE

PowerOasis, Inc. and PowerOasis Networks, LLC

v. Civil N o . 05-cv-42-PB Opinion N o .

T-Mobile USA, Inc.

MEMORANDUM AND ORDER

PowerOasis1 claims that T-Mobile USA, Inc. has infringed two

patents for a “Power and Telecommunications Access Vending

Machine.” In this Memorandum and Order, I construe several

patent terms that have been placed in dispute by PowerOasis’

infringement claims.

I. BACKGROUND

A. General Description of the Patented Invention

The patents-in-suit are U.S. Patents Nos. 6,466,658 (“‘658

patent”) and 6,721,400 (“‘400 patent”). They disclose inventions

designed to support “the operation of computers and other

1 PowerOasis, Inc. licenses the patents-in-suit from PowerOasis Networks, LLC. Both companies have sued T-Mobile. I refer to plaintiffs collectively as “PowerOasis.” electrical and electronic devices while [their owners are]

traveling away from home.” ‘400 patent col. 1 , l l . 22-24. 2 The

patentees discerned a need for the inventions due to the fact

that “individuals are increasingly dependent on a variety of

electronic devices to receive and send information.”

col. 1 ,

l l . 26-28.

The patentees refer to their inventions as “vending

machine[s] for dispensing telecommunications access.”

Abstract. The “vending machine[s]” provide electrical power

and/or a telecommunications channel (such as a high-speed

Internet connection) to a customer after the customer supplies

payment information or user identification.

col. 2 , l l . 43-

67. The “vending machine[s’]” central features include “a

control unit,” which receives payment information and controls

access to the electrical power or telecommunications channel, “a

customer interface,” with which customers can monitor the

“vending machine,” and a “payment mechanism.”

col. 1 6 , l l .

5-25.

2 I cite to the ‘400 patent where the ‘400 and ‘658 patents do not differ in substance.

-2- B. The Claims

The disputed patents are quite similar. Both consist of a

single independent claim (claim 1 ) and 48 dependent claims.

PowerOasis bases its infringement claims on dependent claims 1 5 ,

1 8 , 3 1 , 3 5 , 3 8 , 40 and 4 9 . The independent claim and the

disputed dependent claims are reproduced below, with the disputed terms in boldface.3

What is claimed i s : 1 . A vending machine for vending telecommunications channel access to a customer, said vending machine comprising:

a payment mechanism for obtaining information from the customer to initiate a vending transaction;

a customer interface for indicating the status of said vending machine;

an electronic circuit for determining when the vending transaction is completed;

a telecommunications channel access circuit adapted to be connected to at least one external telecommunica- tions channel for enabling access to the at least one external telecommunications channel at the beginning of a vending transaction and disabling access at the end of the vending transaction;

3 The ‘658 patent’s independent claim differs in immaterial ways from the corresponding claim in the ‘400 patent. The disputed dependent claims in both patents are identical.

-3- a telecommunications channel access connector connected to said telecommunications channel access circuit for enabling connection to an external telecommunications device of the customer; and

a control unit having a device for receiving payment information from the customer and for controlling said electronic circuit and said telecommunications channel access circuit.

1 5 . A vending machine as claimed in claim 1 , wherein said customer interface comprises a mechanism that interfaces with software supplied by the customer.

1 8 . A vending machine as claimed in claim 1 , wherein said telecommunications access channel #1 connector comprises a high bandwidth channel connector.

3 1 . A vending machine as claimed in claim 1 , wherein said telecommunications channel access circuit is adapted to be connected to a direct internet connection via an Internet service provider selected by the vending machine.

3 5 . A vending machine as claimed in claim 1 , wherein said telecommunications channel access connector comprises a transceiver to connect wirelessly to an external communications device of the customer.

-4- 3 8 . A vending machine as claimed in claim 1 , wherein said control unit is located remote from said vending machine.

4 0 . A vending machine as claimed in claim 1 , wherein said control unit further comprises circuitry for controlling a plurality of vending machines.

. . . .

4 9 . A vending machine as claimed in claim 1 , wherein said payment mechanism comprises a mechanism that interfaces with software resident on equipment of the customer.

C. Prosecution History

The ‘658 and ‘400 patents are links in a chain of

continuation and continuation-in-part applications that began

with the patentees’ first application in 1997. The following

describes this prosecution history.

On February 6, 1997, the patentees filed Application N o .

08/796,562 (“1997 Application”). The Patent and Trademark Office

(PTO) examiner rejected one claim and allowed the remainder of

the claims, which became U.S. Patent N o . 5,812,643 (“‘643

patent”). ‘643 patent Notice of Allowability at 1 . As to the

allowed claims, the examiner noted that “none of the art of

record suggest nor teach the system and method of vending

-5- telecommunications channel access and power to a customer having

the physical combination of elements and steps as set forth [in

the application].”

at 3 .

On September 1 8 , 1998, the patentees filed Application N o .

09/156,487 (“1998 Application”), which was a continuation of the

1997 Application. They amended the application on December 1 ,

1999, see 1999 Amendment, and subsequently abandoned i t .

On June 1 5 , 2000, the patentees filed Application N o .

09/594,028 (“2000 Application”), which was a continuation-in-part

of the 1998 Application. It became U.S. Patent N o . 6,314,169

(“‘169 patent”). The 2000 Application added substantial new

matter to the previous applications. This new matter included

Figures 10-12 and new language in the specification. The

relevant new language appears in boldface in the passages below:

This invention provides access to one or more utilities after the customer provides payment in electronic form (e.g. credit card, debit card, smart card, or other forms of electronic or magnetic currency devices) or optionally, currency. Alternatively, no physical payment method is required, and payment is carried out through software that is present in the user’s laptop or other device. In still another option, payment is not made during the transaction, and the user is identified through some type of authentication. These can include RF ID cards, hotel keys,

-6- ID cards, software or anatomical characteristics such as fingerprint, voiceprint or retinal pattern identification. ‘400 patent col. 2 , l l . 50-61; see also

col. 1 0 , l l . 59- 65.

Alternatively, no payment mechanism is required, and the vending transaction starts when a customer is identified. Once identified, the user can be billed at a later date. Or, the identification is used as additional security for use in conjunction with electronic or magnetic payment cards or software e-money.

col. 6, l l . 9-14; see also

col. 1 0 , l l . 5-7.

The microprocessor [that controls the vending process] also communicates with the customer via a user interface to provide details on the progress of the transaction. The user interface is not particularly limited and need not even include a visual display on the vending machine.

col. 3 , l l . 5-9.

The user interface may be a visual display or some other type of progress indicator such as an auditory signal. For example, the vending machine could instruct or inform the user via an audio speaker. Alternatively, the user interface can be present inside or uploaded to the user’s laptop or other device thereby obviating the need for an interface within the vending machine unit. Similarly, the use of a card access system which prevents usage by ejecting the user’s card would also obviate the need for a visual or aural interface.

col. 6, l l . 17-26; see also

col. 9, l l . 32-35.

Another object of this invention is portability. Using an internal power source and wireless telecommunications channels, this invention is not limited to a fixed location. In this configuration, the invention could be used at fairs, outdoor concerts and similar sites where permanent installations are not cost effective. In these cases, it might be more cost effective to have one control unit

-7- operating multiple vending machines. These multiple vending machines may be arranged in the form of a kiosk to allow multiple customers access to the vending machine at the same time. Similarly, almost any combination of functional components of the vending machine could be moved to a location remote from the machine. This could be accomplished, for example, by networking a cluster of machines to a server either on site or at a remote location.

col. 4 , l l . 23-37; see also

col. 1 1 , l l . 26-31.

The 2000 Application also altered the language of independent

claim 1 and added 43 new dependent claims. Notably, the 2000

Application added several dependent claims disclosing a “vending

machine” with its component parts “located remote from said

vending machine.” See ‘169 patent claim 4 5 ; ‘169 patent claim

4 6 ; ‘169 patent claim 4 7 .

On November 1 6 , 2001, the patentees filed Application N o .

09,985,930 (“2001 Application”), which was a continuation of the

2000 Application. It became the ‘658 patent. The 2001

Application did not add substantially to the previous patent’s

specification, although it did delete some dependent claims.

Dependent claim 4 5 , which had first appeared in the 2000

Application, was renumbered to become dependent claim 3 8 .

On October 1 5 , 2002, the patentees filed Application N o .

10/270,108 (“2002 Application”), which was a continuation of the

-8- 2001 Application. It became the ‘400 patent. The 2001

Application made insubstantial changes to the previous patent.

On April 7 , 2004, the patentees filed Application N o .

10/819,168 (“2004 Application”), which was a continuation of the

2002 Application. In the 2004 Application, the patentees

replaced the phrase “a vending machine for vending

telecommunications access” with “a method for vending

telecommunications channel access.” 2004 Application at 3 9 , l .

4. They also changed the phrasing of independent claim 1 by

converting the structural components of the “vending machine”

into “steps” in a method.

l . 5 . The PTO examiner rejected

the 2004 Application under the “doctrine of obviousness-type

double patenting” with reference to the ‘400, ‘658, ‘169, and

‘643 patents and because the 2004 Application’s claims were

either anticipated by or unpatentable over a patent held by

another inventor. 2004 Application Office Action Summary at 2-5.

II. CLAIM CONSTRUCTION

“It is a ‘bedrock principle’ of patent law that ‘the claims

of a patent define the invention to which the patentee is

entitled the right to exclude.’” Phillips v . AWH Corp., 415 F.3d

-9- 1303, 1312 (Fed. Cir. 2005), cert. denied,

(Feb. 2 1 , 2006) (quoting Innova/Pure Water, Inc. v . Safari Water

Filtration Sys., Inc.,

(Fed. Cir. 2004)).

Claim construction, or the interpretation of claim terms, is a

matter of law. IMS Tech., Inc. v . Haas Automation, Inc.,

(Fed. Cir. 2000). A claim term must be assigned

“the meaning that the term would have to a person of ordinary

skill in the art in question at the time of the invention, i.e.,

as of the effective filing date of the patent application.”

Phillips, 415 F.3d at 1313.

To discern the meaning of a claim term, courts examine the

same sources as would the hypothetical person of ordinary skill

in the relevant art. Id. First, courts examine the so-called

intrinsic evidence – the claim language, the specification, and

the prosecution history. Id. at 1314. The claim language is a

useful starting point. Id. “[T]he context in which a term is

used in the asserted claim can be highly instructive.” Id.

“Differences among claims can also be a useful guide in

understanding the meaning of particular claim terms.” Id. In

addition, “claims ‘must be read in view of the specification, of

which they are a part.’” Id. at 1315 (quoting Markman v . Westview

-10- Instruments, Inc.,

6 7 , 978 (Fed. Cir. 1995) (en banc),

aff’d,

(1996)). In fact, the specification is

usually “‘the single best guide to the meaning of a disputed

term.’”

(quoting Markman, 52 F.3d at 9 7 9 ) . Finally, the

prosecution history should also be consulted to clarify “how the

inventor understood the invention and whether the inventor

limited the invention in the course of prosecution, making the

claim scope narrower than it otherwise would be.” Id. at 1317.

After examining the intrinsic evidence, courts may also

refer to extrinsic evidence such as dictionaries, treatises, and

expert testimony. Id. at 1317-18. These sources must be

“considered in the context of the intrinsic evidence.” Id. at

1319. “[T]here is no magic formula” that will reveal the correct

construction of a disputed claim term. Id. at 1324. Courts may

review a variety of materials so long as they do not ignore

“claim meaning that is unambiguous in light of the intrinsic

evidence.” Id.

III. ANALYSIS

The following patent terms are in dispute: “vending

machine,” “payment mechanism,” “customer interface,” “enabling

-11- access to at least one external telecommunications channel at the

beginning of a vending transaction and disabling access at the

end of the vending transaction,” “a mechanism that interfaces

with software supplied by the customer,” and “located remote from

said vending machine.” I take each in turn.

A. Vending Machine

The preamble to claim 1 identifies the patented invention as

“a vending machine for vending telecommunications access to a

customer.” ‘400 patent col. 1 6 , l l . 2-3. The parties disagree

as to whether the term “vending machine” limits the claims or

merely give a name to the disclosed invention. Because all

subsequent citations to “vending machine” in the body of the

claims refer back to its use in the preamble, I resolve this

dispute by determining whether the preamble operates as a claim

limitation.

“Whether to treat a preamble as a limitation is a

determination ‘resolved only on review of the entire[] . . .

patent to gain an understanding of what the inventors actually

invented and intended to encompass by the claim.’” Catalina

Marketing Int’l v . Coolsavings.com, Inc.,

0 1 , 808 (Fed.

Cir. 2002) (quoting Corning Glass Works v . Sumitomo Elec. U.S.A.,

-12- Inc.,

(Fed. Cir. 1989)). Language used in

the preamble to a claim ordinarily will limit the claim i f : (1)

the patentee relied on the preamble during prosecution to

distinguish prior art; (2) the preamble serves as an antecedent

basis for other claim language; or (3) the preamble “recites

additional structure or steps” or otherwise is “‘necessary to

give life, meaning, and vitality’” to the claims.

at 808

(quoting Pitney Bowes, Inc. v . Hewlett Packard Co.,

(Fed. Cir. 1999)). In contrast, a term used in a

preamble will not limit the claim if it “merely gives a

descriptive name to the set of limitations in the body of the

claim that completely set forth the invention.” IMS Tech.,

.

T-Mobile first argues that “vending machine” limits the

claimed inventions because the patentees used the term in the

preamble as the antecedent basis for subsequent references in the

body of the claims. I disagree. While I recognize that all of

the references to “vending machine” in the body of the claims

refer back to the preamble, this drafting choice does not

necessarily make the preamble a distinct claim limitation.

Patentees may give an invention a name in the preamble and repeat

-13- that name in the body of the claim without thereby imbuing the

invention with additional limitations. The real issue is whether

the name used in the preamble gives independent meaning to the

claims. See, e.g., Seachange Int’l, Inc. v . C-Cor Inc.,

(Fed. Cir. 2005) (applying antecedent basis rule where

preamble supplies necessary structure); Eaton Corp. v . Rockwell

Int’l Corp.,

(Fed. Cir. 2003) (same). This

question cannot be answered simply by noting that the body of a

claim uses a term in a way that refers back to the preamble.

T-Mobile next argues that “vending machine” is a claim

limitation because it supplies structure not disclosed elsewhere

in the body of the claims. Again, I disagree. T-Mobile proposes

that “vending machine” includes the following structural

elements: (1) a “device or unit;” (2) that is “mechanically,

electrically, or electronically operated;” and (3) that

“dispens[es] goods or services to a single customer at a time.”4

I address only the first of these proposed elements because T-

Mobile has not explained how the evidence supports the second and

4 T-Mobile defines “vending machine” as “[a] mechanically, electrically, or electronically operated device or unit for dispensing goods or services to a single customer at a time when the customer provides sufficient payment.” T-Mobile B r . at 8 .

-14- third elements.

I agree with T-Mobile that the patents-in-suit disclose a

“device or unit.” I base this conclusion, however, on my reading

of the claims as a whole rather than because I attach independent

significance to “vending machine.” The patents plainly claim an

apparatus with a specific structure rather than a “system and

method of vending” as PowerOasis claims.”5 If there were any

doubt as to this point, it is dispelled by the PTO examiner’s

wholesale rejection of the 2004 Application, in which the

patentees attempted to convert the inventions described in the

‘400 and ‘658 patents into “[a] method for vending

telecommunications channel access” comprised of certain specified

“steps.” See 2004 Application Office Action Summary at 1-5.

Because the patents as a whole make clear that the patented

inventions disclose a device or unit rather than a system and

method of vending, it is unnecessary to treat “vending machine”

as a structural limitation in order to give “life, meaning, and

5 PowerOasis argues that if “vending machine” is not merely a name for the invention it should be construed to be “a system and method of vending telecommunications channel access to a customer.” PowerOasis B r . at 6.

-15- vitality” to the claims.6 Accordingly, I hold that “vending

machine” is a name for the disclosed invention rather than an

independent claim limitation.

B. Payment Mechanism

Claim 1(a) discloses “a payment mechanism for obtaining

information from the customer to initiate a vending transaction.”

‘400 patent col. 1 6 , l l . 5-6. The parties’ dispute concerns the

meaning of the term “mechanism.” T-Mobile argues that a

mechanism is “an arrangement of connected parts,” T-Mobile B r . at

1 9 , while PowerOasis contends that “‘[m]echanism’ means machinery

or process for achieving a result.” PowerOasis B r . at 1 3 .

T-Mobile offers two unconvincing arguments to support its

interpretation. First, T-Mobile notes that the dictionary

definition of “mechanism” is “an arrangement of interconnected

6 T-Mobile suggests that the patentees’ use of “vending machine” also limits the claimed inventions to “a unitary machine, and not a distributed system made up of components located at remote locations . . . ” T-Mobile Brief at 1 2 . The only evidence that T-Mobile identifies to support its position, however, is the PTO examiner’s statement that the patents claim a “physical combination of elements and steps.” ‘643 patent Notice of Allowability at 3 . This statement simply does not carry the meaning that T-Mobile assigns to i t . Accordingly, I decline to construe “vending machine” as a limitation requiring that the claimed inventions be unitary machines.

-16- parts.” T-Mobile B r . at 19 (citing American Heritage College

Dictionary). In fact, “mechanism” has several dictionary

definitions, including ones that comport with PowerOasis’

proposed construction of “payment mechanism.” See Compact Oxford

English Dictionary of Current English (defining “mechanism” as

“the way in which something works or is brought about”). Thus,

dictionaries are unhelpful.

Second, T-Mobile argues that the patentees’ earlier patents

used “mechanism” in terms such as “cover mechanism,” ‘643 patent

col. 9, l . 2 2 , “steam supply mechanism,” ‘169 patent col. 1 8 , l l .

25-26, “hydrocarbon supply mechanism,”

col. 1 8 , l l . 28-29,

and “electric supply mechanism,”

col. 1 8 , l . 3 4 , “to describe

items that are made of connected parts.” T-Mobile B r . at 1 9 .

These references do not support T-Mobile’s argument because they

use “mechanism” in the same way as it is used in the phrase

“payment mechanism” without providing any additional guidance as

to the term’s intended meaning.7

7 In contrast to the other “mechanisms,” the patentees explained that a “cover mechanism” is a protective enclosure for the customer’s electronic device. ‘643 patent col. 9, l l . 17-23. While I agree with T-Mobile that a “cover mechanism” is a physical structure, my conclusion derives from the patentees’ explication of how the “cover mechanism” functions as a cover for

-17- T-Mobile’s argument also falters in light of the

specification’s statement that “no physical payment method is

required [in which case] payment is carried out through software

that is present in the user’s laptop or other device.” ‘400

patent col. 2 , l l . 54-56; see also ‘400 patent col. 3 , l l . 22-23.

I agree with PowerOasis that this language refutes T-Mobile’s

contention that a “mechanism” must be “an arrangement of

connected parts.” As this statement demonstrates, the patentees

clearly envisioned an embodiment in which the “payment mechanism”

consists of software on the customer’s laptop rather than a coin

acceptor, card reader, or other “arrangement of connected parts.”

Although I agree with PowerOasis that “payment mechanism”

includes software loaded on the customer’s computer, I decline to

adopt its proposed definition without qualification. As T-Mobile

has correctly pointed out, the ‘658 and ‘400 patents are

apparatus claims rather than method claims. PowerOasis’

definition of “mechanism” as “a process for achieving a result”

improperly attempts to convert disclosed structure into a method

the customer’s device rather than their use of the term “mechanism.” Accordingly, “cover mechanism” sheds no light on the meaning of “mechanism” in “payment mechanism.”

-18- for achieving the result. In order to clarify that the term

“payment mechanism” does not encompass all possible methods for

obtaining payment from the customer, I construe “payment

mechanism” to mean “a mechanical, electrical, or electronic

(i.e., software) means for achieving payment.”

C. Customer Interface

Claim 1(b) discloses “a customer interface for indicating

the status of said vending machine.” ‘400 patent col. 1 6 , l l . 7-

8. Dependent claim 15 discloses a “vending machine” in which the

“customer interface comprises a mechanism that interfaces with

software supplied by the customer.”

col. 1 6 , l l . 65-67. The

parties agree that a “customer interface” is “an interface that

enables information to be passed between a human user and

hardware or software components of a system.” T-Mobile B r . at

2 0 ; PowerOasis B r . at 14-15.8

As to both claim 1(b) and claim 1 5 , the parties disagree

about the location of the customer interface. T-Mobile contends

that the “customer interface” is “part of the vending machine.”

8 PowerOasis uses the terms “customer interface” and “user interface” interchangeably. T-Mobile has not argued that the terms have different meanings and I treat them as synonymous.

-19- T-Mobile B r . at 20 (claim 1(b)); id. at 22 (claim 1 5 ) .

PowerOasis responds that the “customer interface” may occur on

the customer’s laptop. PowerOasis B r . at 15 (claim 1(b)); id. at

19 (claim 1 5 ) . I agree with PowerOasis.

The specification is clear that the “customer interface”

component of the “vending machine” can take a variety of forms.

It states that “[t]he [customer] interface is not particularly

limited and need not even include a visual display on the vending

machine.” ‘400 patent col. 3 , l l . 7-8; see also id. col. 6, l l .

17-18 (“The [customer] interface may be a visual display or some

other type of progress indicator such as an auditory signal.”).

In fact, the patentees specifically identified an embodiment of

the invention in which the “customer interface” is located on the

customer’s laptop, noting that “[a]lternatively, the [customer]

interface can be present inside or uploaded to the user’s laptop

or other device thereby obviating the need for an interface

within the vending machine unit.” Id. col. 6, l l . 20-23.

According to T-Mobile, this specification language does not

describe a “vending machine” with a “customer interface” on the

customer’s laptop, but rather “illustrates an embodiment where

there is no customer interface.” T-Mobile B r . at 22-23. This

-20- reading flatly conflicts with the plain meaning of the sentence

as it is used in the specification. In light of the

specification’s clarity as to this issue, I conclude that the

“customer interface” may be located on the customer’s laptop

computer as well as on the vending machine.

D. Enabling and disabling access

Claim 1(d) discloses “a telecommunications channel access

circuit adapted to be connected to at least one external

telecommunication channel for enabling access to the at least one

external telecommunication channel at the beginning of a vending

transaction and disabling access at the end of the vending

transaction.” ‘400 patent col. 1 6 , l l . 12-17. T-Mobile argues

that “‘enabling’ and ‘disabling’ means ‘turning on and off’

access to the external telecommunications channel so that

communications through the vending machine to and from the

telecommunications channel can or cannot take place.” T-Mobile

Br. at 2 1 . PowerOasis responds that “‘[f]or enabling access to

the at least one external telecommunications channel’ means for

the purpose of activating the telecommunications channel so

telecommunications can take place [and] ‘[d]isabling access’

means deactivating the telecommunications channel.” PowerOasis

-21- Br. at 16-17.

T-Mobile has provided three short paragraphs of argument in

support of its position. PowerOasis has provided even less

analysis of the issue. Neither party has explained why the

other’s proposed definition is incorrect – in fact, neither party

has precisely identified how the competing definitions differ in

substance. In the absence of guidance from the parties, I

decline to speculate as to the contours of the dispute and its

appropriate resolution.

E. Located remote from said vending machine

Dependent claim 38 claims “a vending machine . . . wherein

said control unit is located remote from said vending machine.”

‘400 patent col. 1 8 , l l . 17-19. The parties frame their argument

concerning this claim as a dispute over the meaning of “located

remote from.” Because they agree, however, that “located remote

from” means “having a different physical location,”9

9 T-Mobile claims that the phrase means “having a different location than.” T-Mobile B r . at 23 (emphasis added). It does not explain why I should construe “from” to mean “than.” Thus, I decline to adopt this part of its suggested definition.

-22- PowerOasis B r . at 2 3 , T-Mobile B r . at 2 3 , I cannot accept their

characterization of the interpretive problem. Instead, I see the

issue as whether T-Mobile is correct in arguing that the claim

describes an invention in which the control unit has a different

physical location from the “vending machine,” or whether

PowerOasis is correct in arguing that the claim describes an

invention in which the control unit has a different physical

location from the other components of the “vending machine.”

Both parties’ positions are problematic. If T-Mobile is

correct, the claim is nonsensical. Claim 1 describes a “vending

machine” that has a control unit as one of its essential

components. ‘400 patent col. 1 6 , l . 2 2 . Claim 38 is dependent

on claim 1 . Therefore, the “vending machine” that it describes

must also consist, in part, of a control unit. T-Mobile’s

proposed interpretation thus results in a claim for a “vending

machine” that has a different physical location from itself.

Obviously, such an invention is a physical impossibility.10

10 The language from the specification that I have relied on in construing “customer interface” and “payment mechanism” differs from claim 38 in that it does not describe a device that is remote from itself. See, e.g., ‘400 patent col. 6, l l . 20-23 (“[T]he [customer] interface can be present inside or uploaded to the user’s laptop or other device thereby obviating the need for

-23- PowerOasis proposes a sensible interpretation of claim 3 8 ,

but its definition requires that the claim be rewritten. If

PowerOasis is correct in claiming that “located remote from”

means “having a different location from” and “said vending

machine” means the invention claimed in claim 1,11 I cannot adopt

its interpretation without inserting the words “the other

components of” between the above-quoted terms. While this may

well be what the patentees intended, the Federal Circuit has

counseled district judges not to rewrite claims simply to avoid

nonsensical results. See Chef Am., Inc. v . Lamb-Weston, Inc.,

(Fed. Cir. 2004). In the present case, the

only reason I have to question T-Mobile’s proposed interpretation

an interface within the vending machine unit.”);

col. 2 , l l . 54-56 (“[N]o physical payment method is required [in which case] payment is carried out through software that is present in the user’s laptop or other device.”). Thus, my interpretation of those terms is not inconsistent with my determination that T- Mobile’s interpretation of claim 38 is nonsensical. 11 As I have noted, PowerOasis argues that “vending machine” is merely a name for the invention claimed in claim 1 . It does not argue that the term should be assigned one meaning when it is used in claim 38 and a different meaning when it is used elsewhere in the claims.

-24- is that it is nonsensical.12 Under Federal Circuit precedent,

this is not sufficient to permit an alternative interpretation

that the claim term will not reasonably bear without judicial

redrafting. Accordingly, I adopt T-Mobile’s proposed

interpretation of claim 38 rather than the interpretation

proposed by PowerOasis.

IV. CONCLUSION

For the reasons set forth in this Memorandum and Order, I :

(1) reject T-Mobile’s contention that “vending machine” is a

claim limitation; (2) agree with T-Mobile that the patents claim

a “device or unit” rather than a “system and method” of vending;

(3) conclude that a “payment mechanism” is “a mechanical,

electrical, or electronic (i.e. software) means for achieving

payment;” (4) agree with PowerOasis that the “customer interface”

may be loaded on the customer’s laptop computer; (5) decline to

12 PowerOasis also claims that the specification supports its interpretation because it states that “almost any combination of functional components of the vending machine could be moved to a location remote from the machine.” ‘400 patent col. 4 , l l . 33- 3 5 . This statement, however, is unhelpful because it also literally describes an invention that is located remote from itself.

-25- address the parties’ dispute as to “enabling and disabling

access;” and (6) conclude that “located remote from said vending

machine” should be given its plain meaning even though that

meaning is nonsensical.

SO ORDERED.

/s/Paul Barbadoro Paul Barbadoro United States District Judge

March 2 2 , 2006

cc: Amr O . Aly, Esq. David Bassett, Esq. Thomas Donovan, Esq. William Lee Esq. Robert Lucic, Esq. Gregory Noonan, Esq. Sibley Reppert, Esq. John Rhee, Esq. William Scofield, Jr., Esq. Benjamin Stern, Esq.

-26-