Judge Amy Totenberg rendered a Markman decision in a patent infringement action brought by Mobile Telecommunications Technologies, LLC (“MTel”), against United Parcel Service, Inc. (“UPS”).  MTel alleged UPS infringed U.S. Patent No. 5,786,748, issued July 28, 1998, by using the protected method to track packages and provide status information with text messages.

MTel argued that its method covers a prompt notification system of delivery status rather than a tracking system.  The Court set forth the claim language (with numbers added by the court for the six steps involved and bolding and underlining the contested terms) as follows:

1. sending to an express mail tracking service an ID number assigned to an express mailing and a page number of a delivery notification recipient;

2. relaying the ID, page number, and an appointed time to a paging operations center;

3. providing a first indication to the paging operations center that the express mailing has been delivered to the addressee;

4. providing a second indication to the paging operations center that the express mailing has not been delivered to the addressee by the appointed time;

5. transmitting, responsive to the first indication, a wireless page message to the recipient as notification of the express mailing delivery; and

6. transmitting, responsive to the second indication, a wireless page message to the recipient notifying recipient that the express mailing has not been delivered by the appointed time.^[1]

The Court noted that the two dependent claims both include references to “wireless page messages” that, respectively, include a time of delivery and the name of the person signing for the express mailing.  The Court directed MTel to provide proposed ordinary definitions of both disputed terms rather than merely contend that their ordinary and customary meaning should apply with no construction being needed.

In addition to the disputed terms, the parties also disputed whether or not the steps required performance in the order given.

Judge Totenberg declined application of ordinary and customary meaning for express mail tracking service (“ETMS”), and, after reviewing the patent specifications, concluded that the term was the equivalent of “express mail tracking network” – a narrower construction than argued by MTel’s counsel.  However, the Court then rejected UPS’s proposal that express mail tracking service be defined as requiring association with an express mail service.  The Court found that “a reasonable juror does not need to be told that the EMTS is associated with the express mail tracking service.” The Court adopted a construction that makes clear the ETMS can be “a network or service.”  The Court agreed with a UPS proposal that EMTS tracks packages, while noting that did not mean the EMTS was required to monitor the package’s location at all times. Succinctly, the Court construed “express mail tracking service to be a “network or service that tracks the delivery status of a package.”  The Court went on to hold that the terms “network,” “service,” and “tracks” used in its construction had plain and ordinary meanings easily assessable to a lay juror without further construction – thereby avoiding future motions by the parties for clarification or construction of those terms.

The Court found as too restrictive UPS’s proposed construction of “paging operations center” (“POC”) to be limited to receiving information from the EMTS, observing that the specifications referred to a delivery person communicating by use of a bar code reader.  Nevertheless, the Court agreed with UPS that the POC is the only transmitter of wireless page messages, pointing to numerous specification cites disclosing only the POC as transmitter.  No other transmitting entity is suggested.  The Court denied UPS’s motion to strike the declaration of an undisclosed expert, stated that the declaration would remain in the record but not be considered, and went on to state that, even if considered, the ruling would not change.  The Court held that the POC “’transmits wireless page messages to the delivery notification recipient.’”  However, use of other equipment to effectuate the transfer was expressly noted not to undo the POC’s role of transmitter.

The Court then analyzed the dispute between the parties over the sequencing of the required steps of the method.  The Court examined the steps and determined that, by their plain reading, some steps (such as steps 1 and 2) were required before other steps could be taken.  However, the Court noted that “’The use of the terms ‘first’ and ‘second’ is a common patent-law convention to distinguish between repeated instances of an element or limitation’” . . . “’and should not in and of itself impose a serial or temporal limitation.’”^[2]  3M Innovative Props. Co. v. Avery Dennison Corp., 350 F3d 1365, 1371 (Fed. Cir. 2003).  UPS sought to require that a first notice that the package had arrived precede a second notice that the package was late.  The Court found the alternative ordering logical and not prohibited.

The case is Mobile Telecommunications Technologies, LLC v. United Parcel Service, Inc., No. 1:12-cv-03222-AT, Dkt. 68, entered in the U.S. District Court for the Northern District of Georgia, Atlanta Division, on March 17, 2014, by to U.S. District Judge Amy Totenberg. 

_{[1] The Court noted in footnote 6 that “the Claims are ambiguous as to what entity does any of the actions in the invention.”}

_{[2] The word “first” was used in step 3 and the word “second” was used in step 4.}