AMOS L. MAZZANT, District Judge.
Before the Court is Plaintiff Innovation Sciences, LLC's ("Plaintiff's" or "VIS's" or "Innovation's")
The Court held a claim construction hearing on August 28, 2019, to determine the proper construction of the disputed claim terms in United States Patents No. 9,723,443 ("the '443 Patent"), 9,729,918 ("the '918 Patent"), 9,912,983 ("the '983 Patent"), and 9,942,798 ("the '798 Patent") (collectively, the "patents-in-suit").
The Court issues this Claim Construction Memorandum Opinion and Order and hereby incorporates-by-reference the claim construction hearing and transcript as well as the demonstrative slides presented by the parties during the hearing. For the following reasons, the Court provides the constructions set forth below.
Plaintiff alleges infringement of United States Patents No. 9,723,443, 9,729,918, 9,912,983, and 9,942,798.
The '443 Patent, titled "System and Method for Providing Locally Applicable Internet Content with Secure Action Requests and Item Condition Alerts," issued on August 1, 2017, and bears an earliest priority date of August 12, 2005. The Abstract of the '443 Patent states:
The '798 Patent, titled "Method and System for Efficient Communication," issued on April 10, 2018, and bears an earliest priority date of August 12, 2005. The Abstract of the '798 Patent states:
The '918 Patent and the '983 Patent resulted from continuations of the '798 Patent. Defendants submit that the '798 Patent, the '918 Patent, and the '983 Patent share a common specification. (Dkt. #132 at p. 3).
Plaintiff submits: "All four patents are being asserted against the Amazon defendants, the ['918, '983, and '798] patents are being asserted against defendant HTC, while only the first patent (`the '983 patent') is being asserted against defendants Vector Security and Resideo." (Dkt. #119 at p. 1). Defendants submit: "Plaintiff asserts the '983 patent against all Defendants, the '798 and '918 patent against HTC and Amazon, and the '443 patent only against Amazon." (Dkt. #131 at p. 3). "For ease of reference, Defendants cite to disclosures in the '983 patent, which Plaintiff asserts against all Defendants." (Id. at p. 4).
The '443 Patent resulted from a continuation of United States Patent No. 9,369,844 ("the '844 Patent"), and United States District Judge Liam O'Grady of the Eastern District of Virginia construed disputed terms in the '844 Patent in Virginia Innovation Sciences, Inc. v. Amazon.com, Inc., No. 1:16-CV-861, 2017 WL 3599642 (E.D. Va. Aug. 18, 2017) ("VIS I" or "Amazon I"). On appeal, the findings in VIS I were affirmed-in-part and vacated-in-part. Innovation Sciences, LLC v. Amazon.com, Inc., No. 2018-1495, 2019 WL 2762976 (Fed. Cir. July 2, 2019) ("Innovation Sciences"). Additional detail regarding litigation involving related patents in the Eastern District of Virginia is set forth in the Court's July 15, 2019 Memorandum Opinion and Order in the above-captioned case. (See Dkt. #161 at pp. 45-48).
Claim construction is a matter of law. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995). The purpose of claim construction is to resolve the meanings and technical scope of claim terms. U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). When the parties dispute the scope of a claim term, "it is the court's duty to resolve it." O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008).
"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 1303, 1312 (Fed. Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). The Court examines a patent's intrinsic evidence to define the patented invention's scope. Id. at 1313-14; Bell Atl. Network Servs., Inc. v. Covad Commc'ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). Intrinsic evidence includes the claims, the rest of the specification, and the prosecution history. Phillips, 415 F.3d at 1312-13; Bell Atl. Network Servs., 262 F.3d at 1267. The Court gives claim terms their ordinary and customary meaning as understood by one of ordinary skill in the art at the time of the invention. Phillips, 415 F.3d at 1312-13; Alloc, Inc. v. Int'l Trade Comm'n, 342 F.3d 1361, 1368 (Fed. Cir. 2003).
Claim language guides the Court's construction of claim terms. Phillips, 415 F.3d at 1314. "[T]he context in which a term is used in the asserted claim can be highly instructive." Id. Other claims, asserted and unasserted, can provide additional instruction because "terms are normally used consistently throughout the patent." Id. Differences among claims, such as additional limitations in dependent claims, can provide further guidance. Id.
"[C]laims `must be read in view of the specification, of which they are a part.'" Id. at 1315 (quoting Markman, 52 F.3d at 979). "[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. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex. Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). In the specification, a patentee may define his own terms, give a claim term a different meaning than it would otherwise possess, or disclaim or disavow some claim scope. Phillips, 415 F.3d at 1316. Although the Court generally presumes terms possess their ordinary meaning, this presumption can be overcome by statements of clear disclaimer. See SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343-44 (Fed. Cir. 2001). This presumption does not arise when the patentee acts as his own lexicographer. See Irdeto Access, Inc. v. EchoStar Satellite Corp., 383 F.3d 1295, 1301 (Fed. Cir. 2004).
The specification may also resolve ambiguous claim terms "where the ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of the claim to be ascertained from the words alone." Teleflex, 299 F.3d at 1325. For example, "[a] claim interpretation that excludes a preferred embodiment from the scope of the claim `is rarely, if ever, correct.'" Globetrotter Software, Inc. v. Elan Computer Group Inc., 362 F.3d 1367, 1381 (Fed. Cir. 2004) (quoting Vitronics, 90 F.3d at 1583). But, "[a]lthough the specification may aid the court in interpreting the meaning of disputed language in the claims, particular embodiments and examples appearing in the specification will not generally be read into the claims." Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988); accord Phillips, 415 F.3d at 1323.
The prosecution history is another tool to supply the proper context for claim construction because a patentee may define a term during prosecution of the patent. Home Diagnostics Inc. v. LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) ("As in the case of the specification, a patent applicant may define a term in prosecuting a patent."). The well-established doctrine of prosecution disclaimer "preclud[es] patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution." Omega Eng'g Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). "Indeed, by distinguishing the claimed invention over the prior art, an applicant is indicating what the claims do not cover." Spectrum Int'l v. Sterilite Corp., 164 F.3d 1372, 1378-79 (Fed. Cir. 1988) (quotation omitted). "As a basic principle of claim interpretation, prosecution disclaimer promotes the public notice function of the intrinsic evidence and protects the public's reliance on definitive statements made during prosecution." Omega Eng'g, 334 F.3d at 1324. However, the prosecution history must show that the patentee clearly and unambiguously disclaimed or disavowed the proposed interpretation during prosecution to obtain claim allowance. Middleton Inc. v. 3M Co., 311 F.3d 1384, 1388 (Fed. Cir. 2002). Statements will constitute disclaimer of scope only if they are "clear and unmistakable statements of disavowal." See Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1358 (Fed. Cir. 2003). An "ambiguous disavowal" will not suffice. Schindler Elevator Corp. v. Otis Elevator Co., 593 F.3d 1275, 1285 (Fed. Cir. 2010) (citation omitted).
Although "less significant than the intrinsic record in determining the legally operative meaning of claim language," the Court may rely on extrinsic evidence to "shed useful light on the relevant art." Phillips, 415 F.3d at 1317 (quotation omitted). Technical dictionaries and treatises may help the Court understand the underlying technology and the manner in which one skilled in the art might use claim terms, but such sources may also provide overly broad definitions or may not be indicative of how terms are used in the patent. Id. at 1318. Similarly, expert testimony may aid the Court in determining the particular meaning of a term in the pertinent field, but "conclusory, unsupported assertions by experts as to the definition of a claim term are not useful." Id. Generally, extrinsic evidence is "less reliable than the patent and its prosecution history in determining how to read claim terms." Id.
The Supreme Court of the United States has "read [35 U.S.C.] § 112, ¶ 2 to require that a patent's claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty." Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2129 (2014). "A determination of claim indefiniteness is a legal conclusion that is drawn from the court's performance of its duty as the construer of patent claims." Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005) (citations and internal quotation marks omitted), abrogated on other grounds by Nautilus, 134 S.Ct. 2120. "Indefiniteness must be proven by clear and convincing evidence." Sonix Tech. Co. v. Publ'ns Int'l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017).
In their May 6, 2019 Joint Claim Construction Statement Pursuant to P.R. 4-3, the parties submit that "[t]he parties have not agreed to any constructions," but "the parties have met and conferred as required by P.R. 4-2(c) and have reduced the number of terms for which they seek construction in an effort to streamline the claim construction proceedings." (Dkt. #111 at p. 2).
(Dkt. #111, Ex. 1, at pp. 2-3; Dkt. #119, Ex. 5 at pp. 2-3). Defendants submit that the term "centralized hub system" appears in Claims 1, 2, and 81 of the '798 Patent, the term "centralized HUB system" appears in Claim 139 of the '983 Patent, the term "wireless HUB system" appears in Claims 22, 24, 62, and 117 of the '983 Patent, and the term "wireless hub" appears in Claims 116, 128, and 135 of the '918 Patent. (Dkt. #131 at p. 15; see Dkt. #111, Ex. 1 at pp. 2-3). Larger "hub" and "system" terms presented by the parties are addressed in Sections A-1, A-2, and A-3, below.
Plaintiff argues that "the term `hub' refers to a well-known class of devices." (Dkt. #119 at p. 12).
Defendants respond that "[w]hile the terms `wireless,' `centralized,' and `hub' may individually have some meaning to one of ordinary skill in the art, the combination of those terms does not connote a structure and certainly not one sufficient to perform all the various functions claimed." (Dkt. #131 at p. 16). Defendants also argue that "while the generic computing term `hub' may have some meaning in the art, the terms `wireless HUB' and `centralized HUB' (with `HUB' in all caps) are coined terms unique to the asserted patents." (Id. at pp. 16-17). Further, Defendants argue: "[T]he patent claims the result of converting any received signal in any format from any network existing or to be developed and extracting from it information content of any type encoded in any manner, thus claiming far more than the patentees invented. Section 112, ¶ 6 exists precisely to provide limits on such vacuous and functional claims. See, e.g., Halliburton Energy Servs., Inc. [v. M-I LLC], 514 F.3d [1244,] 1255 [(Fed. Cir. 2008)]." (Dkt. #131 at p. 18).
Plaintiff replies that "[b]ecause Defendants did not raise the issue of definiteness apart from the means-plus-function analysis, Defendants have waived their original contention that these terms were indefinite." (Dkt. #144 at p. 19).
In sur-reply, Defendants argue that, to avoid means-plus-function treatment under 35 U.S.C. § 112, ¶ 6, a claim must "recite not just generic structure but structure for performing the recited function entirely." (Dkt. #147-1 at p. 2).
Claims 22 and 139 of the '983 Patent, for example, recite (emphasis added):
Title 35 U.S.C. § 112(f) (formerly § 112, ¶ 6) provides: "An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." "In exchange for using this form of claiming, the patent specification must disclose with sufficient particularity the corresponding structure for performing the claimed function and clearly link that structure to the function." Triton Tech of Tex., LLC v. Nintendo of Am., Inc., 753 F.3d 1375, 1378 (Fed. Cir. 2014).
"[T]he failure to use the word `means' . . . creates a rebuttable presumption . . . that § 112, para. 6 does not apply." Williamson v. Citrix Online LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (citations and internal quotation marks omitted). "When a claim term lacks the word `means,' the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function." Id. at 1349 (citations and internal quotation marks omitted).
Williamson, in an en banc portion of the decision, abrogated prior statements that the absence of the word "means" gives rise to a "strong" presumption against means-plus-function treatment. Id. (citation omitted). Williamson also abrogated prior statements that this presumption "is not readily overcome" and that this presumption cannot be overcome "without a showing that the limitation essentially is devoid of anything that can be construed as structure." Id. (citations omitted). Instead, Williamson found, "[h]enceforth, we will apply the presumption as we have done prior to Lighting World . . . ." Id. (citing Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004)). In a subsequent part of the decision not considered en banc, Williamson affirmed the district court's finding that the term "distributed learning control module" was a means-plus-function term that was indefinite because of lack of corresponding structure, and in doing so Williamson stated that "`module' is a well-known nonce word." 792 F.3d at 1350.
Here, Defendants have not shown that "hub" is a "nonce" term under Williamson, and Defendants submit no persuasive evidence that the term "hub" fails to connote structure in the relevant art. See 792 F.3d at 1350. Nothing in the specification suggests that "hub" lacks structure. See '983 Patent at 14:66-15:8 ("the WHUB 804 [(wireless HUB)] may keep a database of household requirements and inventories"); see also id. at 24:18-28 ("centralized HUB system") & 25:17-24.
Plaintiff submits a technical dictionary definition of "hub," thereby demonstrating that the term "hub" refers to a known class of structures in the art of computer networking. (See Dkt. #119, Ex. 6, Microsoft Computer Dictionary 260 (5th ed. 2002) ("In a network, a device joining communication lines at a central location, providing a common connection to all devices on the network. The term is an analogy to the hub of a wheel."). The opinions of Defendants' expert are not to the contrary. For example, Defendants' expert opines:
(Dkt. #119, Ex. 13, May 6, 2019 Johnson Decl. at ¶ 43) (emphasis added).
Defendants fail to support their contention that the known structure must be known to function in the specific manner set forth in the claims. See Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1373 (Fed. Cir. 2003) (finding that "circuit" connoted structure); see also Chrimar Holding Co., LLC v. ALE USA Inc., 732 F. App'x 876, 884-85 (Fed. Cir. June 1, 2018) (as to "central piece of equipment," "Ethernet terminal equipment," "BaseT Ethernet terminal equipment," and "end device," stating that "[a] claim term that has an understood meaning in the art as reciting structure is not a nonce word triggering § 112, ¶ 6"); Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1119 (Fed. Cir. 2017) (finding "wireless device means" to not be a means-plus-function term, noting that "it is sufficient if the claim term is used in common parlance or by persons of skill in the pertinent art to designate structure, even if the term covers a broad class of structures and even if the term identifies the structures by their function") (quoting TecSec, Inc. v. Int'l Bus. Machs. Corp., 731 F.3d 1336, 1347 (Fed. Cir. 2013)); Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1008 (Fed. Cir. 2018) (finding that "user interface code" and "program" were not nonce words; noting that "the mere fact that the disputed limitations incorporate functional language does not automatically convert the words into means for performing such functions").
This finding is consistent with principles articulated by the Federal Circuit prior to the abrogated Lighting World decision. See Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (finding that "detent mechanism" was not a means-plus-function term because "`detent' denotes a type of device with a generally understood meaning in the mechanical arts, even though the definitions are expressed in functional terms"; "It is true that the term `detent' does not call to mind a single well-defined structure, but the same could be said of other commonplace structural terms such as `clamp' or `container.' What is important is not simply that a `detent' or `detent mechanism' is defined in terms of what it does, but that the term, as the name for structure, has a reasonably well understood meaning in the art.").
Defendants' argument resembles an argument as to whether the patents disclose sufficient corresponding structure, but this is a distinct inquiry that arises only if 35 U.S.C. § 112, ¶ 6 is found to apply. Defendants' Notice of Supplemental Authority Regarding Defendants' Responsive Claim Construction Brief (Dkt. #199) cites MTD Products Inc. v. Iancu, No. 2017-2292, ___ F.3d ___, 2019 WL 3770828 (Fed. Cir. Aug. 12, 2019). In MTD, the Federal Circuit found "mechanical control assembly . . . configured to . . ." to be "similar to other generic, black-box words that this court has held to be nonce terms similar to `means' and subject to § 112, ¶ 6," and the court vacated a finding that 35 U.S.C. § 112, ¶ 6 did not apply. Id., at *5. In the present case, by contrast, Defendants' expert acknowledges that a "hub" is a known structure. (Dkt. #119, Ex. 13, May 6, 2019 Johnson Decl. at ¶ 43) (quoted above). Moreover, the analysis in MTD further undercuts Defendants' argument that the structure must be known to function in the specific manner claimed:
MTD, 2019 WL 3770828, at *6 (emphasis added).
At the August 28, 2019 hearing, Defendants emphasized the statement in MTD that "[i]n assessing whether the claim limitation is in means-plus-function format, we do not merely consider the introductory phrase (e.g., `mechanical control assembly') in isolation, but look to the entire passage including functions performed by the introductory phrase." Id., at *4. Immediately following this sentence, MTD cited Apex generally (without a pin cite). 325 F.3d 1364. At the August 28, 2019 hearing, Defendants cited the statement in Apex that: "The threshold issue for all the limitations involving the term `circuit' is whether the term itself connotes sufficient structure to one of ordinary skill in the art to perform the functions identified by each limitation." Id. at 1373. Ironically, Apex held that "first interface circuit" and "second interface circuit" were not means-plus-function terms, finding that "it is clear that the term `circuit,' by itself connotes some structure" and, as to "interface circuit," "the ordinary meaning of this term connotes specific structures to one of ordinary skill in the art." Id. at 1373-74; see id. at 1375 (noting that, on remand, challenger must "prove by a preponderance of the evidence that the limitations, as a whole, do not connote sufficiently definite structure to one of ordinary skill in the art"). Again, in the present case, Defendants fail to show that the "hub" structures known in the art must be known as performing all of the specific functions set forth in the claims at issue. MTD, Apex, and other similar authorities cited by Defendants do not compel otherwise.
Further, Defendants have not shown that instances of capitalization of "HUB" demonstrate that the inventor coined a new term. See, e.g., CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) ("the claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history") (emphasis added).
The term "hub" is not analogous to the term "cheque standby unit" that failed to connote sufficiently definite structure in Diebold Nixdorf, Inc. v. International Trade Commission, 899 F.3d 1291, 1298 (Fed. Cir. 2018), cited by Defendants. In particular, Diebold found that "the claims do not recite any structure, much less `sufficiently definite structure,' for the `cheque standby unit.'" Id. In the present case, by contrast, Defendants' expert acknowledges that a "hub" is a known structure. (Dkt. #119, Ex. 13, May 6, 2019 Johnson Decl. at ¶ 43) (quoted above). Defendants' reliance on Advanced Ground Information Systems, Inc. v. Life360, Inc. is similarly unavailing. 830 F.3d 1341, 1348 (Fed. Cir. 2016) (as to "symbol generator," stating that "[i]rrespective of whether the terms `symbol' and `generator' are terms of art in computer science, the combination of the terms as used in the context of the relevant claim language suggests that it is simply an abstraction that describes the function being performed (i.e., the generation of symbols)").
Defendants' reliance on the Danco case is also unpersuasive. See Danco Inc. v. Fluidmaster, Inc., No. 5:16-CV-73, 2017 WL 4225217, at *7 (E.D. Tex. Sept. 22, 2017). In particular, Defendants cite Danco as purported support for Defendants' argument that "even if these terms did connote some generic structure, they do not connote sufficient structure to `perform entirely' the recited functions, which they must to avoid the requirements of § 112, ¶ 6." (Dkt. #131 at p. 17). Yet, Danco quoted the "perform entirely" language from authority regarding when a term that expressly uses the word "means" is not governed by 35 U.S.C. § 112, ¶ 6. See Personalized Media Commc'ns, LLC v. Int'l Trade Comm'n, 161 F.3d 696, 704 (Fed. Cir. 1998) ("`[W]here a claim recites a function, but then goes on to elaborate sufficient structure, material, or acts within the claim itself to perform entirely the recited function, the claim is not in means-plus-function format' even if the claim uses the term `means.'") (quoting Sage Prods. v. Devon Indus., Inc., 126 F.3d 1420, 1427-28 (Fed. Cir. 1997)). Danco is therefore not analogous to the present case, in which the terms at issue do not use the word "means."
The Court concludes that Defendants fail to rebut the presumption against means-plus-function treatment. Defendants present no alternative proposed constructions. No further construction is necessary.
Defendants have also presented an indefiniteness argument under Nautilus:
(Dkt. #131 at p. 22). Defendants have not adequately supported their argument or otherwise persuasively shown that the claim terms at issue lack reasonable certainty under Nautilus. (See id.; see also Dkt. #119, Ex. 13, May 6, 2019 Johnson Decl. at ¶ 617).
The Court therefore hereby construes
Additional "hub" terms identified by the parties are subject to the same analysis as set forth above regarding the terms "wireless HUB system," "wireless hub," "centralized HUB system," and "centralized hub system." These terms include (see Dkt. #119 at pp. 21-22 & 39-40; see also Dkt. #200, Ex. E at pp. 2-9; id., Ex. F at pp. 1-5; id., Ex. G at pp. 1-2)
The Court therefore likewise hereby construes these terms to have their
Certain "system" terms identified by the parties refer back to terms such as "wireless HUB system," "centralized HUB system," and "centralized hub system" and are subject to the same analysis as set forth above. These terms include (see Dkt. #119 at pp. 45-46; see also Dkt. #200, Ex. F at pp. 16-17) (emphasis added):
The Court therefore likewise hereby construes these terms to have their
In supplemental briefing, the parties addressed certain supplemental "hub" terms. The parties present the same arguments for these supplemental "hub" terms as set forth above regarding the terms "wireless HUB system," "wireless hub," "centralized HUB system," and "centralized hub system." (See Dkt. #186 at pp. 2-7; see also Dkt. #197 at pp. 3-4; Dkt. #205 at pp. 1-2).
The Court therefore likewise hereby construes these terms to have their
(See Dkt. #119, Ex. 5 at pp. 28-31). The parties have submitted the following "central controller" terms (see Dkt. #119 at p. 32; see also Dkt. #200, Ex. H at pp. 2-7):
Plaintiff argues that "[t]he claimed `controller' and the related term `microcontroller' are part of a well-known class of structures," and "[t]he claims themselves recite additional structural interconnectivity with other elements of the claims." (Dkt. #119 at pp. 32 & 33). Further, Plaintiff argues that "[t]he specification also describes the structural interconnection that examples of the central controller may have in the disclosed embodiments." (Id. at p. 33).
Defendants respond that "[w]hile the terms `central' and `controller' may individually have some meaning, the combination of those terms does not connote a structure sufficient to perform the claimed functions." (Dkt. #131 at p. 23).
Plaintiff replies that technical dictionaries confirm that "those of skill in the art understand that the term `controller' refers to known structures." (Dkt. #144 at p. 11; see id. at pp. 10-11).
Claim 1 of the '443 Patent recites (emphasis added):
Legal principles regarding 35 U.S.C. § 112, ¶ 6 are set forth above as to the "hub" terms. Here, Defendants have not shown that "controller" (or "central controller") is a "nonce" term under Williamson, and Defendants submit no persuasive evidence that the term "central controller" fails to connote structure in the relevant art. See 792 F.3d at 1350. Nothing in the specification suggests that "central controller" lacks structure. See '443 Patent at 4:43-51 (describing "Radio Network Controller" as a "conventional element[] of a cellular network").
Plaintiff submits technical dictionary definitions of "controller," thereby reinforcing that the term "controller" refers to a known class of structures in the art. (See Dkt. #144, Ex. 18, The IEEE Standard Dictionary of Electrical and Electronics Terms 217 (6th ed. 1996) ("The component of a system that functions as the system controller. A controller typically sends program messages to and receives response messages from devices."); see also id., Ex. 19, IBM Dictionary of Computing 145 (10th ed. 1993) ("A device that coordinates and controls the operation of one or more input/output devices, such as workstations, and synchronizes the operation of such devices with the operation of the system as a whole.")).
Defendants' expert opines: "This term, although made up of certain words that alone have a meaning to those of skill in the art, does not have a computer science meaning as recited in the claims of the '443 patent." (Dkt. #119, Ex. 13, May 6, 2019 Johnson Decl. at ¶ 524).
Defendants fail to show, however, how the modifier "central" purportedly renders the well-known meaning of controller inapplicable. The opinion of Defendants' expert is therefore unpersuasive. Defendants' reliance on Advanced Ground Information Systems, Inc. v. Life360, Inc. is similarly unavailing. See 830 F.3d at 1348 (as to "symbol generator," stating that "[i]rrespective of whether the terms `symbol' and `generator' are terms of art in computer science, the combination of the terms as used in the context of the relevant claim language suggests that it is simply an abstraction that describes the function being performed (i.e., the generation of symbols)"). These findings are consistent with principles articulated by the Federal Circuit prior to the abrogated Lighting World decision. See Greenberg, 91 F.3d at 1583 (quoted above).
The Court therefore concludes that Defendants fail to rebut the presumption against means-plus-function treatment. Defendants present no alternative proposed constructions. No further construction is necessary.
Defendants cite St. Isidore Research, LLC v. Comerica Inc., et al., in which the Court found that "how the `processor configured to . . .' terms operate with the other claimed components is not sufficiently recited or described." No. 2:15-CV-1390, 2016 WL 4988246, at *14 (E.D. Tex. Feb. 9, 2017). In the present case, the claim language describes how the controller "interact[s]. . . with other limitations in the claim to achieve [its] objectives." Id. In particular, "the central controller is configured to receive information regarding the item status signal and identify the item in connection with a successful transmission of the item status signal from the wireless transmitter," "identify the item . . . based on recognition of the unique identifier of the item stored in the memory," "perform a processing of a purchase request for the item to increase the household inventory of the item in connection with identification of the item," "communicate information for the processing of the purchase request through a network communication channel to complete the processing of the purchase request," and "send confirmation information regarding the processing of the purchase request." On balance, St. Isidore is not persuasive here. Also, Defendants' reliance on Danco is unpersuasive for the same reasons set forth regarding the above-discussed "hub" terms. See Danco, 2017 WL 4225217, at *7.
Defendants further argue that the claim fails to set forth sufficient structure because "[t]he central controller must be given information about the format and meaning of the unique identifier of the item, and would need direction as to where the unique identifier is stored in memory." In light of the above-discussed evidence that "controller" has a well-known structural meaning, Defendants' argument might perhaps be relevant to consideration of the enablement requirement under 35 U.S.C. § 112, ¶ 1, but is not persuasive as to the present claim construction dispute.
Finally, Defendants fail to support their contention that the known structure must be known to function in the specific manner set forth in the claims. The analysis of this issue as to the "hub" terms, addressed above, applies here as to the "controller" terms. See Apex, 325 F.3d at 1373; see also Chrimar, 732 F. App'x at 884-85; Zeroclick, 891 F.3d at 1008; MTD, 2019 WL 3770828, at *6.
The Court therefore hereby construes these above-identified "central controller" terms to have their
(Dkt. #111, Ex. 1 at p. 3; Dkt. #119 at pp. 14-15). Plaintiff submits that these terms appear in Claims 33, 37, 38, 42, 116, 128, and 135 of the '918 Patent. (Dkt. #119 at p. 14; Dkt. #144 at p. 19). Defendants submit that these terms appear in Claims 86, 103, and 108 of the '983 Patent, Claims 38 and 135 of the '918 Patent, and Claim 52 of the '798 Patent. (Dkt. #131 at p. 26).
In addition to the terms "management center system" and "management system" (see Dkt. #119 at pp. 14-15), the parties submit the following larger "management system" terms (see Dkt. #119 at pp. 24 & 41-42; see also Dkt. #200, Ex. E at pp. 9-13; id., Ex. F at pp. 5-8):
Plaintiff argues that "[t]he claimed `management center system' recites sufficiently definite structure," and "[a]n example of a management center system is disclosed in Figure 16 of the '918 patent." (Dkt. #119 at p. 25).
Defendants respond: "The terms `management center' and `management system' imply only the generic function of managing something in an unspecified manner. They are well-recognized nonce words." (Id. at p. 27). Defendants argue that "[o]n their own, they do not connote any structure—i.e., a specific piece of hardware or an algorithm—to one of ordinary skill in the art, let alone sufficient structure to perform the recited functions." (Id.) Defendants also argue: "[T]hat the management center interacts with a conventional WiFi network or a conventional high definition display says nothing about the structure of the system itself or how it is configured with the other conventional components to perform the claimed functions." (Id. at p. 29). Finally, as to disclosures cited by Plaintiff, Defendants argue that "the specification describes the MC System depicted in Figure 16 solely by its function." (Id.)
Plaintiff's reply brief, as to the "management center system" and "management system" terms, states in full as follows:
(Dkt. #144 at pp. 19-20).
Legal principles regarding 35 U.S.C. § 112, ¶ 6 are set forth above as to the "hub" terms.
The claim thus expressly recites that the "management center system" comprises "a mapping table" and "a network interface." Defendants do not contest that the "mapping table" and the "network interface" connote structure. (See Dkt. #131 at pp. 26-30.) The same analysis applies to the other claims at issue in the '983 Patent, namely Claims 103 and 108, because those claims depend from above-reproduced Claim 86.
Claim 52 of the '798 Patent depends from Claim 1, which recites a management system comprising a "centralized hub system," which has been presented as a distinct disputed term (addressed above) and which the Court has found connotes structure.
The Court therefore finds that these disputed "management center system" and "management system" terms in the '983 Patent and the '798 Patent are not governed by 35 U.S.C. § 112, ¶ 6.
In the '918 Patent, by contrast, Claim 33 for example recites (formatting modified; emphasis added):
The claims at issue in the '918 Patent do not recite that the "management center system" comprises any particular structure, and Plaintiff fails to demonstrate that "management center system" has any known structural meaning in the art. Further, "the claim[s] do[] not describe how the `[management center system]' interacts with other components . . . in a way that might inform the structural character of the limitation-in-question or otherwise impart structure to the `[management center system]' as recited in the claim." Williamson, 792 F.3d at 1351. For example, Plaintiff's reliance on the recital in Claim 38 of the '918 Patent that "the management center system is further configured to search a content server for the multimedia information content . . ." is unavailing.
The Court therefore finds that the above-identified "management center system" terms in the '918 Patent are means-plus-function terms governed by 35 U.S.C. § 112, ¶ 6. As to the claimed functions, Plaintiff has not challenged Defendants' proposals. The Court therefore turns to whether the specification discloses corresponding structure. "[T]he patent specification must disclose with sufficient particularity the corresponding structure for performing the claimed function and clearly link that structure to the function." Triton, 753 F.3d at 1378.
The specification discloses a "Management Center (MC) System" that is linked to the functions of processing a request, searching a content server, and routing multimedia information. See '918 Patent at 21:33-35 ("a Management Center (MC) System receives, selects, converts, compresses, decompresses, and routs [sic] data to the user terminals"), 21:46-50 ("routing content to various connected devices"), 21:59-63 ("selecting" data) & 23:59-65 ("initiating communications with the MC System") & Fig. 16 (illustrating "MC System").
Yet, Plaintiff does not show that the disclosed "MC System" is anything other than a general-purpose computer. See, e.g., id. at 22:11-12 ("the MC System includes data storage such as a hard disk") & 22:19-20 ("the MC System may include software and/or hardware for filtering and treating viruses").
Because the specification links the claimed function to a general-purpose computer, an algorithm is required. See WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999) ("In a means-plus-function claim in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm."); see also Net MoneyIN Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008) (citing WMS Gaming). Plaintiff's discussion of the MC System in the Background section of its reply brief does not compel otherwise. (See Dkt. #144 at pp. 1-3).
Also, Plaintiff has not demonstrated that the so-called "Katz" exception applies. That is, Plaintiff has not shown that the claimed functions could be performed by any general-purpose computer without special programming. See In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible narrower construction of the terms `processing,' `receiving,' and `storing,' . . . those functions can be achieved by any general purpose computer without special programming.").
Plaintiff identifies no algorithms disclosed in the specification for performing the claimed functions. (See Dkt. #119 at pp. 14-15.) This lack of disclosure renders the claims at issue indefinite. See Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1319 (Fed. Cir. 2012) ("Computer-implemented means-plus-function claims are indefinite unless the specification discloses an algorithm to perform the function associated with the limitation."); see also Net MoneyIN, 545 F.3d at 1367; Williamson, 792 F.3d at 1352-54.
The Court therefore hereby construes these disputed terms as set forth in the following chart:
(Dkt. #111, Ex. 1 at pp. 35-36, 38-40 & 51-53; Dkt. #119, Ex. 5 at pp. 15, 16 & 21-22; see Dkt. #119 at pp. 30, 34 & 43; see also Dkt. #131 at p. 30; Dkt. #200, Ex. F at pp. 8-9, 10-11 & 14-15).
Plaintiff argues that "[t]he claimed `signal conversion unit' is part of a well-known class of structures," and "[t]he claims themselves recite structural interconnectivity with other elements of the claims. (Dkt. #119 at pp. 34 & 35). Plaintiff submits that "[t]he specification also describes the structure and structural interconnection that examples of the signal conversion unit may have in the disclosed embodiments." (Id. at p. 35). Likewise, Plaintiff argues that "[t]he claimed `processing unit' is part of well-known classes of structures," and "the term `central processing unit' is widely used in the electrical engineering arts and has a meaning so well known that it is found in technical dictionaries." (Id. at p. 30).
Defendants respond that "[t]hese terms do not connote structure sufficient to perform the claimed functions and, therefore, must be construed under § 112, ¶ 6." (Dkt. #131 at p. 31). Defendants also argue that "[t]he term must be construed under § 112, ¶ 6 regardless of whether it also appears in the preamble." (Id. at p. 32). Further, Defendants argue that "[a] general-purpose processor or network adapter cannot perform the functions of the wireless signal conversion apparatus, signal conversion unit, and processing unit without some special programming or algorithm, and the asserted patents nowhere disclose such an algorithm." (Id. at p. 33).
Plaintiff's reply brief does not specifically address these terms. (See Dkt. #144).
These disputed terms appear in Claims 9, 27, and 128 of the '918 Patent, which recite (emphasis added):
As to "wireless signal conversion apparatus," this term appears only in the preambles of the claims here at issue.
Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). "Generally, the preamble does not limit the claims." Allen Eng'g Corp. v. Bartell Indus., 299 F.3d 1336, 1346 (Fed. Cir. 2002).
Here, Defendants do not show that the preamble term "wireless signal conversion apparatus" is limiting. (See Dkt. #131 at pp. 32-33). Instead, this preamble language is merely "descriptive." IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir. 2000) ("The phrase `control apparatus' in the preamble merely gives a descriptive name to the set of limitations in the body of the claim that completely set forth the invention."); see Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1358 (Fed. Cir. 2012) ("if the body of the claim describes a structurally complete invention, a preamble is not limiting where it `merely gives a name' to the invention, extols its features or benefits, or describes a use for the invention") (quoting Catalina, 289 F.3d at 809).
The Court therefore rejects Defendants' proposal as to construing "wireless signal conversion apparatus" pursuant to 35 U.S.C. § 112, ¶ 6. There being no other dispute as to Claim 27 of the '918 Patent, the Court construes "communicate, through the wireless communication network, information about an updated status of the household item in conjunction with a short range wireless communication regarding the updated status" to have its plain meaning.
As to "processing unit," legal principles regarding 35 U.S.C. § 112, ¶ 6 are set forth above as to the "hub" terms. Here, Defendants have not shown that "processing unit" is a "nonce" term under Williamson, and Defendants submit no persuasive evidence that the term "processing unit" fails to connote structure in the relevant art. See 792 F.3d at 1350; see also id. at 1351 (noting that "modifiers" can impart structural meaning). Plaintiff submits a technical dictionary definition of "central processing unit," thereby supporting Plaintiff's position that the term "processing unit" refers to a known class of structures in the art. (See Dkt. #119, Ex. 6, Microsoft Computer Dictionary 132 (5th ed. 2002) (defining "CPU": "Acronym for central processing unit. The computational and control unit of a computer. The CPU is the device that interprets and executes instructions. * * *")).
Disclosure in the specification regarding a "processor" is consistent with the evidence submitted by Plaintiff:
'918 Patent at 17:30-37 (emphasis added). Also, Plaintiff's expert persuasively opines:
(Dkt. #119, Ex. 7, May 23, 2019 McAlexander Decl. at ¶ 17). The opinions of Defendants' expert to the contrary are unpersuasive. (See id., Ex. 13, May 6, 2019 Johnson Decl. at ¶¶ 199-200). Finally, Defendants fail to support their contention that the known structure must be known to function in the specific manner set forth in the claims. The analysis of this issue as to the "hub" terms, addressed above, applies here as well. See Apex, 325 F.3d at 1373; see also Chrimar, 732 F. App'x at 884-85; Zeroclick, 891 F.3d at 1008; MTD, 2019 WL 3770828, at *6.
As to the "signal conversion unit," however, Plaintiff fails to demonstrate that this term has any known meaning in the relevant art. Instead, this "unit" is recited merely functionally and is analogous to the term "cheque standby unit" as to which the Federal Circuit found 35 U.S.C. § 112, ¶ 6 applicable in Diebold. See 899 F.3d at 1301-02. Plaintiff's reliance on "structural interconnectivity with other elements of the claims" (see Dkt. #119 at p. 35) is unavailing because "the claim does not describe how the `[signal conversion unit]' interacts with other components. . . in a way that might inform the structural character of the limitation-in-question or otherwise impart structure to the `[signal conversion unit]' as recited in the claim." See Williamson, 792 F.3d at 1351. The Court therefore finds that 35 U.S.C. § 112, ¶ 6 applies to the "signal conversion unit."
The parties present no dispute as to the claimed functions for the "signal conversion unit" term. These functions are "to decompress the compressed video signal to a decompressed video signal" and "to encode the decompressed video signal to produce an encoded signal for transmission to the digital television through a digital output interface, the encoded signal comprising a decompressed digital video signal."
The Court thus turns to whether the specification discloses corresponding structure. "[T]he patent specification must disclose with sufficient particularity the corresponding structure for performing the claimed function and clearly link that structure to the function." Triton, 753 F.3d at 1378. Plaintiff proposes that the corresponding structure for the "signal conversion unit" terms is "converter (see MC System)" or "DDVE 1104c." (Dkt. #119, Ex. 5 at pp. 21-22).
The specification links the claimed functions to the "Video Compress Decoder 1104a" and the "Digital/Digital Video Encoder (DDVE) 1104c," respectively:
'918 Patent at 18:61-64 & 19:9-32 (emphasis added).
Finally, Defendants fail to show that the "Video Compress Decoder 1104a" and "Digital/Digital Video Encoder (DDVE) 1104c" are general-purpose computers. Thus, no algorithm requirement applies. See Net MoneyIN, 545 F.3d at 1367.
The Court therefore hereby construes these disputed terms as set forth in the following chart:
(Dkt. #111, Ex. 1 at pp. 26-27 & 95-96; see Dkt. #119 at p. 28; see also Dkt. #131 at p. 34; Dkt. #200, Ex. E at pp. 1-2; id., Ex. H at pp. 1-2).
Plaintiff argues that "[t]he claimed `transmitter' and `wireless transmitter' are part of well-known classes of structures," and "[t]he claims themselves recite additional structural interconnectivity with other elements of the claims." (Dkt. #119 at pp. 28 & 29).
Defendants respond: "The `transmitter' terms do not connote structure sufficient to perform the specific algorithms claimed in the asserted patents, and § 112, ¶ 6 therefore applies. Though the term `wireless transmitter' refers to a generic class of structure, it does not connote structure sufficient to perform entirely the claimed functions." (Dkt. #131 at p. 34).
Plaintiff's reply brief does not specifically address these terms. (See Dkt. #144).
Legal principles regarding 35 U.S.C. § 112, ¶ 6 are set forth above as to the "hub" terms.
Here, Defendants do not show that "transmitter" and "wireless transmitter" are nonce terms under Williamson, and Defendants fail to demonstrate that the terms "transmitter" and "wireless transmitter" lack structural meaning in the relevant art. See 792 F.3d at 1350. The specification explains that a "transmitter" sends signals using "conventional wireless communication technologies":
'983 Patent at 13:3-9 (emphasis added). The accompanying recital of a "wireless transmission channel" in the claims further connotes structure. See '983 Patent, Cl. 110 ("transmitter configured to transmit, through a wireless transmission channel"); see also '443 Patent, Cl. 1 (same).
Moreover, Plaintiff submits a technical dictionary definition of "transmitter," thereby reinforcing that the terms "transmitter" and "wireless transmitter" refer to a known class of structures. (See Dkt. #119, Ex. 6, Microsoft Computer Dictionary 528 (5th ed. 2002) ("Any circuit or electronic device designed to send electrically encoded data to another location.")). The opinions of Defendants' expert to the contrary are unpersuasive. (See id., Ex. 13, May 6, 2019 Johnson Decl. at ¶ 148). Finding that "transmitter" and "wireless transmitter" connote structure is consistent with principles articulated by the Federal Circuit prior to the abrogated Lighting World decision. See Greenberg, 91 F.3d at 1583 (quoted above).
Finally, Defendants fail to support their contention that the known structure must be known to function in the specific manner set forth in the claims. The analysis of this issue as to the "hub" terms, addressed above, applies here as well. See Apex, 325 F.3d at 1373; see also Chrimar, 732 F. App'x at 884-85; Zeroclick, 891 F.3d at 1008; MTD, 2019 WL 3770828, at *6. Defendants' reliance on Danco is unpersuasive for the same reasons set forth regarding the above-addressed "hub" terms. See Danco, 2017 WL 4225217, at *7. The Court concludes that Defendants have failed to rebut the presumption against means-plus-function treatment. Defendants present no alternative proposed constructions. No further construction is necessary.
The Court therefore hereby construes the disputed
(Dkt. #111, Ex. 1 at pp. 96-97, 111-13 & 115-17; see Dkt. #119 at p. 28; see also Dkt. #200, Ex. F at pp. 12-14; id., Ex. H at pp. 7-10).
Plaintiff argues that "[t]he claimed `memory' is part of well-known classes of structures," and "[t]he claims themselves recite additional structural interconnectivity with other elements of the claims." (Dkt. #119 at pp. 36 & 37). Plaintiff further argues that "[t]he specification also describes the structural interconnection that the memory may have in the disclosed embodiments." (Id. at p. 37).
Defendants respond that the claims "define the `program code' and related `instructions' solely by the functions they perform." (Dkt. #131 at p. 37).
Plaintiff replies that "the claims and patents here describe the operation and objectives of the `program code,' and the claims describe how the `program code' interacts with other structures." (Dkt. #144 at p. 14). Plaintiff also submits that "[t]he terms `program' and `code' have well defined meanings to those of skill in the art." (Id. at p. 15).
Legal principles regarding 35 U.S.C. § 112, ¶ 6 are set forth above as to the "hub" terms. Claim 1 of the '443 Patent recites, in relevant part (emphasis added):
Plaintiff submits that "memory" has a well-known structural meaning in the relevant art (Dkt. #119 at pp. 36-37), and Defendants do not appear to dispute this point. Indeed, Defendants' responsive claim construction brief does not appear to address this term. (See Dkt. #131).
As to the "program code" terms, Defendants argue that "[t]he hard work of devising actual solutions to these problems is left to others to figure out using only the generic components described in the patent, such as a wireless network interface or a processor, which cannot perform these functions without special programming." (Dkt. #131 at p. 38). Defendants cite Global Equity Mgmt. (SA) Pty. Ltd. v. Expedia, Inc., which found that the term "program code for configuring said at least one partition of said at least one secondary storage device through a secondary storage partitions window" was a means-plus-function term governed by 35 U.S.C. § 112, ¶ 6. See No. 2:16-CV-95, 2016 WL 7416132, at *27-*29 (E.D. Tex. Dec. 22, 2016) ("GEMSA"). GEMSA found that the term there at issue was "defined only by the function that it performs," and "[h]ow the code interacts with other code or structure of the claimed invention is not described." Id., at *29.
Claim 29 of the '443 Patent, by contrast, recites (emphasis added):
The claim thus recites substantial detail regarding instructions included in the program code, particularly with reference to a database and household inventory. Cf. Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1320 (Fed. Cir. 2004) ("when the structure-connoting term `circuit' is coupled with a description of the circuit's operation, sufficient structural meaning generally will be conveyed to persons of ordinary skill in the art, and § 112 ¶ 6 presumptively will not apply"). Likewise, Claim 99 of the '918 Patent recites (emphasis added):
The claim thus recites substantial detail regarding the operations that the program code must be executable to perform, and additional context is provided by the recital that "the destination device is a digital television." See Zeroclick, 891 F.3d at 1006-09 (finding that "user interface code," considering in the context of the claims at issue, was not a means-plus-function term). Although Defendants argue, for example, that these recitals fail to set forth adequate detail about how "decompressing" is performed (see Dkt. #131 at p. 38), "the patentee is not required to include in the specification information readily understood by practitioners, lest every patent be required to be written as a comprehensive tutorial and treatise for the generalist, instead of a concise statement for persons in the field." Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1119 (Fed. Cir. 2002). The specification provides additional context by disclosing:
'918 Patent at 17:30-37.
Extrinsic dictionary definitions submitted by Plaintiff further support Plaintiff's position that "program code" refers to a known class of structures in the relevant art. (See Dkt. #144, Ex. 20, Microsoft Computer Dictionary 424 (5th ed. 2002) (defining "program" as: "A sequence of instructions that can be executed by a computer. The term can refer to the original source code or to the executable (machine language) version."); id. at p. 106 (defining "code" as: "Program instructions. Source code consists of human-readable statements written by a programmer in a programming language. Machine code consists of numerical instructions that the computer can recognize and execute and that were converted from source code."); cf. Personalized Media, 161 F.3d at 704 ("`Detector' is not a generic structural term such as `means,' `element,' or `device'; nor is it a coined term lacking a clear meaning, such as `widget' or `ram-a-fram.'")).
The Court concludes that Defendants have failed to rebut the presumption against means-plus-function treatment. Defendants present no alternative proposed constructions. No further construction is necessary.
The Court accordingly hereby construes the disputed
(Dkt. #111, Ex. 1 at p. 2; Dkt. #119 at p. 10; Dkt. #131 at p. 39; see Dkt. #200, Ex. A at p. 1; see also id., Ex. B at p. 2 of 6; id., Ex. C at p. 1; id., Ex. D at p. 2). The parties submit that this term appears in Claims 22-24, 27, 31, 38, 43, 62-64, 103, 105, 108, 110, 117-119, 123, and 143 of the '983 Patent, Claims 26-30, 33, 111, 112, and 115 of the '918 Patent, Claims 1, 5, 52, and 60 of the '798 Patent, and Claims 1 and 29 of the '443 Patent. (Dkt. #200, Ex. A at p. 1; id., Ex. B at p. 2 of 6; id., Ex. C at p. 1; id., Ex. D at p. 2).
Plaintiff argues that "Defendants' proposed construction — a detected change — would eliminate the embodiment in which the DCSM periodically determines and sends the updated status to the CRC." (Dkt. #119 at p. 11).
Defendants respond that "the patent claims, specification, and Judge O'Grady's prior construction of the same term (`item status') and a related term (`updated condition of a merchandise') [in VIS I] all consistently describe an `updated' status as a detected change in status." (Dkt. #131 at p. 39).
Plaintiff replies by reiterating its opening arguments. (Dkt. #144 at p. 18).
The parties have also discussed Claim 110 of the '983 Patent, which recites in relevant part (emphasis added): "a transmitter configured to transmit, through a wireless transmission channel, a signal in connection with an initiation of a replenishment of an inventory of an item, the signal being transmitted through the wireless transmission channel in response to an indication of an updated status of the item, the signal comprising information corresponding to a unique identifier of the wireless device, information about the inventory of the item being stored in a database, a requirement of the item being included in the information about the inventory of the item."
Defendants argue that this "updated status" must reflect a "detected change in the status." No such limitation is evident based on the language of this claim.
Other claims at issue, however, use the word "updated" with reference to "detection." See Phillips, 415 F.3d at 1314 ("Other claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment as to the meaning of a claim term. Because claim terms are normally used consistently throughout the patent, the usage of a term in one claim can often illuminate the meaning of the same term in other claims.") (citation omitted). For example, Claim 27 of the '983 Patent recites (emphasis added):
Additional claims that are similar in this regard include: '983 Patent, Claim 117 ("the wireless transmission channel being established for transmission of the signal in response to a detection of an updated status of the item by the item status sensing device"); '983 Patent, Claim 143 ("a detection of the updated status"); '443 Patent, Claim 1 ("in response to an indication of an updated status of the item"); '443 Patent, Claim 29 ("the item status signal being transmitted through the wireless transmission channel in a local wireless communication network based on an indication of an updated status of the item"); '798 Patent, Claim 5 ("wherein the short range wireless communication is triggered by a detection, by a sensor, of the updated status"); '798 Patent, Claim 60 ("wherein the short range wireless communication is initiated by a detection of the updated status"); and '918 Patent, Claim 112 ("wherein the short range wireless communication is initiated by a detection, by a sensor, of the household item status").
The specification is consistent with interpreting "updated" as involving a change: "When the diaper condition changes, such as when it is wet, the DCSM [(diaper condition sensing module)] sensor detects the updated condition of the diaper." '983 Patent at 14:7-9 (emphasis added). This disclosure thus refers to an "updated" condition in the context of "changes." Id. Similarly, the specification discloses that the "DCSM sensor monitors diaper condition" and the "DCSM transmitter sends condition update to CRC [(central receiver/controller)] when the diaper is determined to be wet." '983 Patent at Fig. 7 (elements 702 and 704); see '443 Patent at 3:5-9 ("According to still another aspect, the present invention accommodates the delivery of diaper status updates through a wireless connection. A sensor detects the condition of the diaper and accommodates a status indication when the current indication requires an updated [sic].").
Plaintiff cites disclosure that "[t]he CRC may also poll the DCSM after a given period of time to ensure that the diaper condition has been updated." '983 Patent at 14:27-29 (emphasis added). At first blush, this disclosure appears to refer to polling the DCSM to obtain the most current status. This reading is also supported by the extrinsic, general-purpose dictionary definition of "update" submitted by Plaintiff, namely "to bring up to date." (Dkt. #144, Ex. 21, Merriam-Webster's Collegiate Dictionary 1298 (10th ed. 1997)).
Yet, this disclosure appears as part of the following passage:
'983 Patent at 14:21-40.
Contrary to Plaintiff's argument, this disclosure does not refer to "periodically polling" the DCSM to determine the current condition of a diaper. (See Dkt. #119 at p. 11). Read in context, this disclosure regarding "poll[ing]" refers to whether "the diaper condition has been updated" in the context of whether the diaper has been changed.
Finally, at the August 28, 2019 hearing, Plaintiff expressed concern that referring to detection in the construction of the "updated status" terms might improperly be interpreted as requiring detection of a change to occur as soon the change occurs. No such immediate detection requirement is apparent. Instead, the above-discussed evidence refers to whether a change has occurred, not necessarily whether the change has been detected. Other claim language, such as recited in above-reproduced Claim 27, recites detecting a change.
The Court accordingly hereby construes
(Dkt. #111, Ex. 1 at p. 3; Dkt. #119 at p. 15; Dkt. #131 at p. 43; Dkt. #200, Ex. D at p. 3). The parties submit that this term appears in Claims 1, 16, and 29 of the '443 Patent. (Dkt. #144 at p. 20; Dkt. #200, Ex. D at p. 3).
Plaintiff argues that "all that the claim requires is that the `item status signal' conveys information such that the claimed `central controller' can identify the item, provided that there is a successful transmission of the item status signal." (Dkt. #119 at p. 15).
Defendants respond that "Plaintiff is bound to the [VIS I] previous construction under the doctrine of collateral estoppel." (Dkt. #131 at p. 43).
Plaintiff replies that "[t]he construction of `item status signal' has to be broad enough to encompass the RFID embodiment," and "Innovation's arguments are not the same as those made in Virginia [in VIS I]." (Dkt. #144 at pp. 20 & 21).
Defendants argue for a finding of collateral estoppel based on Judge O'Grady's construction of "item status signal" in the related '844 Patent as meaning "a signal conveying information regarding the status of an item." VIS I, 2017 WL 3599642, at *15-*16. The Federal Circuit affirmed this construction. Innovation Sciences, No. 2018-1495, 2019 WL 2762976, at *7.
"Collateral estoppel applies when, in the initial litigation, (1) the issue at stake in the pending litigation is the same, (2) the issue was actually litigated, and (3) the determination of the issue in the initial litigation was a necessary part of the judgment." Harvey Specialty & Supply, Inc. v. Anson Flowline Equip. Inc., 434 F.3d 320, 323 (5th Cir. 2005); see Dkt. #131 at p. 43 (citing Rabo Agrifinance, Inc. v. Terra XXI, Ltd., 583 F.3d 348, 353 (5th Cir. 2009)). The doctrine of collateral estoppel has been applied to claim construction. See, e.g., Nestle USA, Inc. v. Steuben Foods, Inc., 884 F.3d 1350, 1352 (Fed. Cir. 2018).
The '443 Patent is a continuation of the '844 Patent that was at issue in VIS I. These patents therefore share the same specification. Judge O'Grady considered the specification in VIS I when construing "item status signal":
2017 WL 3599642, at *16.
Yet, the '844 Patent uses the term "item status signal" in a context different from how the term is used in the '443 Patent. Claim 28 of the '844 Patent, for example, recites in relevant part (emphasis added):
In the present case, by contrast, Claim 1 of the '443 Patent
The claim in the present case thus refers to information regarding an item status signal rather than information provided by an item status signal. This difference in the contexts is a "material difference" such that, at least for purposes of collateral estoppel, the issue in the present case is different from the issue in VIS I. Nestle, 884 F.3d at 1352; see e.Digital Corp. v. Futurewei Techs., Inc., 772 F.3d 723, 727 (Fed. Cir. 2014) ("a court cannot impose collateral estoppel to bar a claim construction dispute solely because the patents are related"). Collateral estoppel therefore does not apply as to the construction of "item status signal." Likewise, although Federal Circuit claim constructions can have a "national stare decisis effect,"
The present dispute between the parties reflects this difference. Whereas Defendants propose that an "item status signal" must itself convey information, Plaintiff argues that information could merely be inferred from the item status signal. In this regard, the specification discloses that "[t]he transmitter 514 may use various communication techniques," and "the function may be provided by causing the circuit loop of the RFID tag to transition from open to close [sic, closed] when the diaper condition (e.g., wet) is detected by the sensor, which automatically causes the ID Tag to be sensed by the tag reader of the CRC." '443 Patent at 11:10-14. Thus, the specification contemplates that a signal could merely convey an "ID Tag," and the "wet" condition could be inferred from the sensing of the ID Tag.
Still, in disclosure regarding this same "transmitter 514," the specification frames this type of communication as conveying the status of an item:
'443 Patent at 10:48-54 (emphasis added).
Thus, although the findings in VIS I and Innovation Sciences do not give rise to collateral estoppel or stare decisis, the Court arrives at a substantially similar conclusion, finding that an "item status signal" need not itself convey "information" but must relate to the status of an item. This is consistent with the discussion in Innovation Sciences noting that the patentee "points to an embodiment in the specification in which a DCSM [(diaper condition sensing module)] uses an RFID tag to transmit an item status signal," and "as Amazon points out, `[e]ven if the item status signal of the patent consists of an RFID ID, it reflects the `item status' of the diaper being monitored by that diaper probe sensor." 2019 WL 2762976, at *7 (citation omitted).
The Court therefore hereby construes
(Dkt. #111, Ex. 1 at p. 4; Dkt. #119, Ex. 5 at pp. 3-4; Dkt. #131 at p. 46; Dkt. #200, Ex. A at p. 3; id., Ex. B at p. 3 of 6; id., Ex. C at p. 2). The parties submit that this term appears in Claims 22, 23, 27, 31, 43, 105, 108, 117, and 143 of the '983 Patent, Claims 26, 27, 29, 30, 33, and 111-114 of the '918 Patent, and Claims 1, 5, 6, and 60 of the '798 Patent. (Dkt. #200, Ex. A at p. 3; id., Ex. B at p. 3 of 6; id., Ex. C at p. 2).
Plaintiff argues that "[t]he patent specification specifically links the use of ZigBee (or Bluetooth) to the relevant working range between the sensors and the central receiver." (Dkt. #119 at p. 17).
Defendants respond that "[t]he specification emphasizes that the HUB utilizes short range communication to authenticate the cellular phone," and "Zigbee is only described in the specification for use as the WPAN secure channel, which the specification expressly distinguishes from the short range communication channel used for authentication." (Dkt. #131 at p. 47).
Plaintiff replies that its proposal "is based on the patent specification, and is supported by relevant extrinsic evidence." (Dkt. #144 at p. 22).
Claim 22 of the '983 Patent, for example, recites (emphasis added):
This claim thus recites using "short range wireless communication" in the context of "managing an item status of an item."
Defendant notes that the specification refers to "short range of a few centimeters" (emphasis added):
'983 Patent at 10:17-11:28; see id. at 30:32-36 (the wireless HUB "authenticates user's identification through a short range Electromagnetic (EM) radiation").
Thus, in this embodiment, the "short-range wireless connectivity" is distinguished from communications that have "longer operational range." Id. at 10:45-50 & 11:5-8. The specification explicitly notes that the "short range wireless connection" can be separate:
'983 Patent at 30:65-31:5 (emphasis added).
Defendants fail to demonstrate, however, that the above-reproduced disclosure characterizing NFC as "short-range wireless connectivity" necessarily corresponds to the recital of "short range wireless communication" in the claims. Instead, the above-reproduced claim recites merely that "the network communication channel is separate from a wireless channel for the short range wireless communication." Of particular note, the above-reproduced disclosures refer to "3G technology for the cellular network." See '983 Patent at 10:17-27. This distinction between cellular communication and "short range" communication is also apparent in Figure 29 of the '983 Patent, as to which the specification discloses that "mobile terminal B may be in a good communication situation with respect to its cellular network" and "mobile terminal B is preferably within a short range communication distance with the mobile terminal A" using communication techniques "including but not limited to WiFi, Bluetooth, UWB, RFID, Infrared communication, etc." Id. at 37:30-41 (emphasis added).
Further, the specification discloses "Zigbee/Bluetooth," which have shorter ranges than 3G cellular networks and which the parties agree have a range of greater than a few centimeters (see Dkt. #144, Ex. 22 at p. 1 of 2 (AMZ_VIS00012144) ("Range: 50-100 feet"); see also id., Ex. 23 at p. 1 of 6 (AMZ_VIS00012150) ("Wireless range up to 70m indoors and 400m outdoors")):
'983 Patent at 13:10-17 (emphasis added). This passage is followed by disclosure that provides an example of a type of facility in which a management system could be used:
Id. at 13:47-51. This example of a "pre-school class or a day care facility" suggests that communication between a central receiver and multiple sensors would span more than, as Defendants have proposed, "a few centimeters." At the August 28, 2019 hearing, Defendants argued that this particular embodiment is not relevant to the claims at issue for the present disputed terms, but Defendants have failed to persuasively demonstrate why this is so.
This understanding is reinforced by dependent Claims 34 and 35 of the '983 Patent, which recite that the "wireless channel for the short range wireless communication" recited in above-reproduced Claim 22 "is a Zigbee channel" or "is a Bluetooth channel":
These claims depend from Claim 33, which depends from Claim 31, which in turn depends from Claim 22. The recital of "Bluetooth" in Claim 35 weighs against limiting the disputed term to Zigbee because the scope of a dependent claim is presumed to be within the scope of the claim from which it depends. See, e.g., AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1242 (Fed. Cir. 2003). Further, Claim 34 weighs against limiting the disputed term to Zigbee because "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." Phillips, 415 F.3d at 1315.
At the August 28, 2019 hearing, Defendants argued that these dependent Claims 34 and 35 should be disregarded because these claims lack support in the specification. Defendants cited no authority for disregarding these claims. In general, "dependent claims cannot broaden an independent claim from which they depend." Enzo Biochem Inc. v. Applera Corp., 780 F.3d 1149, 1156-57 (Fed. Cir. 2015) ("[A]s claim 1 is limited to indirect detection by its own plain meaning, it would be inappropriate to use the doctrine of claim differentiation to broaden claim 1 to include a limitation imported from a dependent claim, such as direct detection."). Here, as discussed above, neither the independent claims nor the specification defines or limits "short range" as referring to NFC. Instead, using NFC is a specific feature of particular embodiments that should not be imported into the claims. See Phillips, 415 F.3d at 1323.
Plaintiff asserts that "[t]he correct construction of `short range wireless communication [channel]' is one that utilizes non-licensed transmitter[s] having limited power output (as required by the FCC)." (Dkt. #119 at p. 19). Plaintiff fails to adequately support this proposed interpretation. Plaintiff cites no such explanation in the specification (see id. at pp. 16-19; see also Dkt. #144 at pp. 21-22), and the opinions of Plaintiff's expert are unpersuasive. (See Dkt. #119, Ex. 7, May 23, 2019 McAlexander Decl. at ¶¶ 10-13). In short, Plaintiff fails to justify construing "short range wireless communication" in terms of utilizing "non-licensed" transmitters.
The Court therefore rejects Plaintiff's proposed construction and Defendants' proposed construction. Nonetheless, "some construction of the disputed claim language will assist the jury to understand the claims." TQP Dev., LLC v. Merrill Lynch & Co., Inc., No. 2:08-CV-471, 2012 WL 1940849, at *2 (E.D. Tex. May 29, 2012) (Bryson, J., sitting by designation). The Court therefore construes "short range wireless communication" to refer to the disclosed technologies, as set forth in the disclosure that "[v]arious technologies may be used for these components, including but not limited to . . . Zigbee, Bluetooth, or UWB technologies." See '983 Patent at 10:17-27. Because Zigbee, Bluetooth, and UWB are set forth as examples, the construction of the seemingly generic term "short range wireless communication" should encompass other communication protocols with range similar to Zigbee, Bluetooth, and UWB.
The Court therefore hereby construes
(Dkt. #111, Ex. 1 at p. 4; Dkt. #119 at pp. 19-20; Dkt. #131 at p. 49; Dkt. #144 at p. 22; Dkt. #200, Ex. A at p. 3; id., Ex. B at p. 5 of 6; id., Ex. C at p. 3).
Plaintiff argues that "[b]ecause ZigBee has a well-known meaning in the art as referring to a category of communication protocols, this term is not indefinite." (Dkt. #119 at p. 19).
Defendants respond that "Zigbee is mentioned only three times in the specification and for two different embodiments, neither of which provides adequate written description for the recently amended claims." (Dkt. #131 at p. 49).
Plaintiff replies that "written description arguments are not proper claim construction arguments." (Dkt. #144 at p. 22).
Defendant argues that "the Court should hold that these claims lack written description under 35 U.S.C. § 112." (Dkt. #131 at p. 50). In some cases, the extent to which the written description supports a proposed construction may be taken into account as part of a claim construction analysis. See, e.g., Ruckus Wireless, Inc. v. Innovative Wireless Solutions, LLC, 824 F.3d 999, 1004 (Fed. Cir. 2016) ("The canon favoring constructions that preserve claim validity therefore counsels against construing `communications path' to include wireless communications.").
Nonetheless, the Federal Circuit has "certainly not endorsed a regime in which validity analysis is a regular component of claim construction." See Phillips, 415 F.3d at 1327. Indeed, "[w]hether a claim satisfies the written description requirement is a question of fact." See, e.g., Indivior Inc. v. Dr. Reddy's Labs., S.A., 930 F.3d 1325, 1347 (Fed. Cir. 2019) (citing Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). For purposes of the present Claim Construction Memorandum Opinion and Order, the Court hereby rejects Defendants' invalidity argument. Defendants have not presented any proposed claim construction, and the Court finds that no construction is necessary.
The Court therefore hereby construes
(Dkt. #111, Ex. 1 at p. 1; Dkt. #119 at p. 9; Dkt. #131 at p. 50; Dkt. #200, Ex. A at p. 1). The parties submit that this term appears in Claim 110 of the '983 Patent. (Dkt. #131 at p. 50; Dkt. #144 at p. 16; Dkt. #200, Ex. A at p. 1).
Plaintiff argues that "the specification teaches that merchants may provide purchase-related information, such as coupons or other purchase incentive information to users who may be interested in purchasing products sold by the merchants," and "[t]he specification explains that the merchants may also be provided with, or already have, the relevant shipping information in connection with the purchase request." (Dkt. #119 at p. 9).
Defendants respond that "[t]he '983 patent describes `merchant information' consistent with its plain meaning." (Dkt. #131 at p. 50). Defendants also argue that Plaintiff's proposed construction should be rejected because "[a]lthough `merchant information' may include purchase information, it may also be other information, such as which merchants are `local,' and advertisements from those local merchants." (Id. at p. 51).
Plaintiff replies that "[e]ach example of `merchant information' provided in the specification is information that is related to the purchase of items." (Dkt. #144 at p. 16).
The specification discusses information provided to and by a merchant, "[f]or example, a merchant provided with an indication of local applicability for certain content may wish to make advertisements, coupons, or the like available to the users in that domain." '983 Patent at 8:49-52 (emphasis added). Similarly, regarding an embodiment involving diaper condition updates, the specification discloses: "[T]he delivery of locally applicable Internet content may be provided in conjunction with the diaper update. Also, a local merchant (and corresponding server) 814 that sells diapers is able to present a coupon or other incentive to the user in conjunction with the determination that a diaper is wet by the DCSM 812." Id. at 14:60-66 (emphasis added); see id. at 15:3-8 ("information provided by the local merchant"); see also id. at 15:39-44 ("Once the authorization is obtained, payment is sent 868 to the Local Merchant server 814 to complete the transaction, and the receipt, confirmation and other information may be fed back to the WHUB 804 regarding the same. For physical product like diapers, the WHUB will have provided (or the Local Merchant may already have) the shipping address."); id. at 25:34-63 ("access to information related to the locally applicable Internet content, with commercial incentives such as coupons or advertisements being delivered to users").
Plaintiff urges that "in the context of the patents-in-suit, `merchant information' is information that may be provided to or by a merchant that is related to a purchase request" (Dkt. #119 at p. 9), but Claim 110 of the '983 Patent recites that "the merchant information relevant to the replenishment of the inventory of the item is sent to a user of the item" (emphasis added):
Based on this context provided by surrounding claim language, "merchant information" is not necessarily information provided to or by a merchant but rather can be information about a merchant. The specification is consistent with this understanding, referring to "merchant information" that might be "cached" prior to an inventory running low:
'983 Patent at 15:10-23 (emphasis added).
In sum, Plaintiff fails to support its arguments that "merchant information" must be information provided to or by a merchant or must be related to purchases.
The Court therefore hereby construes
(Dkt. #111, Ex. 1 at p. 1; Dkt. #119 at p. 9; see Dkt. #200, Ex. A at p. 1; id., Ex. D at p. 1). The parties submit that this term appears in Claim 110 of the '983 Patent and Claims 1 and 29 of the '443 Patent. (Dkt. #131 at p. 51; Dkt. #144 at p. 17; see Dkt. #111, Ex. 1 at p. 1; see also Dkt. #200, Ex. A at p. 1; id., Ex. D at p. 1).
Plaintiff argues that "[t]he surrounding language of claim 110 makes clear that this claim term is directed to inventory replenishment of an item." (Dkt. #119 at p. 9).
Defendants respond that Plaintiff's proposed construction should be rejected because "[c]hanging the term `requirement' to `required characteristic' only creates ambiguity and suggests that the claim term potentially excludes requirements relating to quantity." (Dkt. #131 at p. 52).
Plaintiff replies that "the `requirement of the item' recited in the claim is a reference to a required characteristic of the item being replenished, such as the item brand, or the size or quantity of the item being replenished." (Dkt. #144 at p. 17).
Claim 110 of the '983 Patent refers to "a requirement of the item being included in the information about the inventory of the item." Defendants urge that Plaintiff's proposal of "required characteristic" "suggests that the claim term potentially excludes requirements relating to quantity." (Dkt. #131 at p. 52). Plaintiff replies that its proposal of "required characteristic" can refer to a quantity of the item being replenished. (Dkt. #144 at p. 17; see Dkt. #119 at pp. 9-10).
Plaintiff cites disclosure regarding keeping track of diaper inventory and replenishing when appropriate:
'983 Patent at 15:2-28 (emphasis added).
Introducing the word "characteristic," however, would not be readily understood by a finder of fact as referring to quantity. Plaintiff's proposed construction would therefore tend to confuse rather than clarify the scope of the claims. Introducing this potential confusion into the claims is unwarranted, particularly in light of the substantial agreement between the parties that the word "requirement" can refer to quantity. (See Dkt. #119 at pp. 9-10; see also Dkt. #131 at p. 52; Dkt. #144 at p. 17). The Court therefore hereby expressly rejects Plaintiff's proposed construction. No further construction is necessary. See O2 Micro, 521 F.3d at 1362 ("[D]istrict courts are not (and should not be) required to construe every limitation present in a patent's asserted claims."); see also Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1207 (Fed. Cir. 2010) ("Unlike O2 Micro, where the court failed to resolve the parties' quarrel, the district court rejected Defendants' construction."); Summit 6, LLC v. Samsung Elecs. Co., Ltd., 802 F.3d 1283, 1291 (Fed. Cir. 2015).
The Court accordingly hereby construes
(Dkt. #111, Ex. 1 at pp. 7-9). The parties submit that these terms appear in Claims 22, 62, 117, and 128 of the '983 Patent. (Id.; see Dkt. #119 at p. 26).
Plaintiff argues that "[t]he claimed `input interface' and `network interface' are part of well-known classes of structures." (Dkt. #119 at p. 26).
Defendants respond that "Amazon and HTC no longer seek construction of the `input interface' and `network interface' `configured to' claim terms." (Dkt. #131 at p. 37 n.12).
Plaintiff replies that Defendants did not brief these terms and therefore the Court should not apply 35 U.S.C. § 112, ¶ 6. (Dkt. #144 at p. 16).
These terms are no longer being presented for construction, so the Court does not further address these terms.
The parties disputed whether this term is governed by 35 U.S.C. § 112, ¶ 6. (Dkt. #111, Ex. 1 at pp. 36-37; see Dkt. #200, Ex. F at pp. 9-10). The parties submitted that this term appears in Claim 9 of the '918 Patent. (Id.)
Plaintiff submits: "Although Defendants identified this as a claim term for construction, this claim term does not actually exist. In the Certificate of Correction for the '918 patent, the words `mobile terminal' were replaced with `wireless signal conversion apparatus.' '918 patent, Certificate of Correction. Thus, this non-existent term should not be construed by the Court." (Dkt. #119 at p. 31).
Defendants' response brief acknowledges the correction. (See Dkt. #131 at p. 31 n.11; see also Dkt. #119, Ex. 2, Oct. 24, 2017 Certificate of Correction (p. 71 of 71 of Ex. 2)).
Because this term no longer exists, the Court does not further address this term.
"Defendants no longer seek a construction that the
Defendants previously asserted indefiniteness as to the term "particular information content" in claims of the '918 Patent. (Dkt. #111, Ex. 1 at p. 3). Defendants' response brief does not address this term. (See Dkt. #145.) To whatever extent Defendants maintain their assertion of indefiniteness, the Court hereby rejects Defendants' assertion of indefiniteness as unsupported, and the Court hereby construes
The Court adopts the constructions set forth in this opinion for the disputed terms of the patents-in-suit. The parties are ordered that they may not refer, directly or indirectly, to each other's claim construction positions in the presence of the jury. Likewise, the parties are ordered to refrain from mentioning any portion of this opinion, other than the actual definitions adopted by the Court, in the presence of the jury. Any reference to claim construction proceedings is limited to informing the jury of the definitions adopted by the Court.
