ROY S. PAYNE, District Judge.
Before the Court is the Opening Claim Construction Brief (Dkt. No. 71) filed by Plaintiff Barkan Wireless IP Holdings, L.P. ("Plaintiff"). Also before the Court are Defendants Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Cellco Partnership d/b/a Verizon Wireless's ("Defendants'") Responsive Claim Construction Brief (Dkt. No. 80), Plaintiffs' reply (Dkt. No. 85), and Defendants' sur-reply (Dkt. No. 89). Further before the Court are Defendants' Notice of Supplemental Evidence (Dkt. No. 87), Defendants' Second Notice of Supplemental Evidence (Dkt. No. 97), and Plaintiff's Notice of Supplemental Evidence (Dkt. No. 98).
The Court held a claim construction hearing on January 29, 2019.
Plaintiff brings suit alleging infringement of United States Patents No. 8,014,284 ("the '284 Patent"), 8,559,312 ("the '312 Patent"), and 9,392,638 ("the '638 Patent"). (See Dkt. No. 71, Exs. A2012C.) The '284 Patent, titled "Cellular Network System and Method," issued on September 6, 2011, and bears an earliest priority date of August 12, 1999. The Abstract of the '284 Patent states:
The '312 Patent, titled "Systems, Devices and Methods for Providing Access to a Distributed Network," issued on October 15, 2013, and resulted from a continuation of the '284 Patent. The '638 Patent, in turn, issued on July 12, 2016. The '638 Patent is a continuation of the '312 Patent and bears the same title. Plaintiff submits that the patents-in-suit "share a common specification." (Dkt. No. 70, at 1.)
Shortly before the start of the January 29, 2019 hearing, the Court provided the parties with preliminary constructions with the aim of focusing the parties' arguments and facilitating discussion. Those preliminary constructions are noted below within the discussion for each term.
It is understood that "[a] claim in a patent provides the metes and bounds of the right which the patent confers on the patentee to exclude others from making, using or selling the protected invention." Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed. Cir. 1999). Claim construction is clearly an issue of law for the court to decide. Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996).
"In some cases, however, the district court will need to look beyond the patent's intrinsic evidence and to consult extrinsic evidence in order to understand, for example, the background science or the meaning of a term in the relevant art during the relevant time period." Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 841 (2015) (citation omitted). "In cases where those subsidiary facts are in dispute, courts will need to make subsidiary factual findings about that extrinsic evidence. These are the `evidentiary underpinnings' of claim construction that we discussed in Markman, and this subsidiary factfinding must be reviewed for clear error on appeal." Id. (citing 517 U.S. 370).
To ascertain the meaning of claims, courts look to three primary sources: the claims, the specification, and the prosecution history. Markman, 52 F.3d at 979. The specification must contain a written description of the invention that enables one of ordinary skill in the art to make and use the invention. Id. A patent's claims must be read in view of the specification, of which they are a part. Id. For claim construction purposes, the description may act as a sort of dictionary, which explains the invention and may define terms used in the claims. Id. "One purpose for examining the specification is to determine if the patentee has limited the scope of the claims." Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000).
Nonetheless, it is the function of the claims, not the specification, to set forth the limits of the patentee's invention. Otherwise, there would be no need for claims. SRI Int'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). The patentee is free to be his own lexicographer, but any special definition given to a word must be clearly set forth in the specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992). Although the specification may indicate that certain embodiments are preferred, particular embodiments appearing in the specification will not be read into the claims when the claim language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994).
This Court's claim construction analysis is substantially guided by the Federal Circuit's decision in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips, the court set forth several guideposts that courts should follow when construing claims. In particular, the court reiterated that "the claims of a patent define the invention to which the patentee is entitled the right to exclude." Id. at 1312 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To that end, the words used in a claim are generally given their ordinary and customary meaning. Id. The ordinary and customary meaning of a claim term "is 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." Id. at 1313. This principle of patent law flows naturally from the recognition that inventors are usually persons who are skilled in the field of the invention and that patents are addressed to, and intended to be read by, others skilled in the particular art. Id.
Despite the importance of claim terms, Phillips made clear that "the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Id. Although the claims themselves may provide guidance as to the meaning of particular terms, those terms are part of "a fully integrated written instrument." Id. at 1315 (quoting Markman, 52 F.3d at 978). Thus, the Phillips court emphasized the specification as being the primary basis for construing the claims. Id. at 1314-17. As the Supreme Court stated long ago, "in case of doubt or ambiguity it is proper in all cases to refer back to the descriptive portions of the specification to aid in solving the doubt or in ascertaining the true intent and meaning of the language employed in the claims." Bates v. Coe, 98 U.S. 31, 38 (1878). In addressing the role of the specification, the Phillips court quoted with approval its earlier observations from Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998):
Phillips, 415 F.3d at 1316. Consequently, Phillips emphasized the important role the specification plays in the claim construction process.
The prosecution history also continues to play an important role in claim interpretation. Like the specification, the prosecution history helps to demonstrate how the inventor and the United States Patent and Trademark Office ("PTO") understood the patent. Id. at 1317. Because the file history, however, "represents an ongoing negotiation between the PTO and the applicant," it may lack the clarity of the specification and thus be less useful in claim construction proceedings. Id. Nevertheless, the prosecution history is intrinsic evidence that is relevant to the determination of how the inventor understood the invention and whether the inventor limited the invention during prosecution by narrowing the scope of the claims. Id.; see Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (noting that "a patentee's statements during prosecution, whether relied on by the examiner or not, are relevant to claim interpretation").
Phillips rejected any claim construction approach that sacrificed the intrinsic record in favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc court condemned the suggestion made by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002) that a court should discern the ordinary meaning of the claim terms (through dictionaries or otherwise) before resorting to the specification for certain limited purposes. Phillips, 415 F.3d at 1319-24. According to Phillips, reliance on dictionary definitions at the expense of the specification had the effect of "focus[ing] the inquiry on the abstract meaning of words rather than on the meaning of claim terms within the context of the patent." Id. at 1321. Phillips emphasized that the patent system is based on the proposition that the claims cover only the invented subject matter. Id.
Phillips does not preclude all uses of dictionaries in claim construction proceedings. Instead, the court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the court emphasized that claim construction issues are not resolved by any magic formula. The court did not impose any particular sequence of steps for a court to follow when it considers disputed claim language. Id. at 1323-25. Rather, Phillips held that a court must attach the appropriate weight to the intrinsic sources offered in support of a proposed claim construction, bearing in mind the general rule that the claims measure the scope of the patent grant.
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., 572 U.S. 898, 910, 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).
The parties have submitted the following agreed-upon constructions (Dkt. No. 69, Ex. A; Dkt. No. 90-1, at 20-30), which the Court adopts:
(Dkt. No. 69, Ex. B, at 11; Dkt. No. 71, at 2; Dkt. No. 80, at 1; Dkt. No. 90-1, at 1.) The parties submit that this term appears in all Claims of the '284 Patent, all Claims of the '312 Patent, and Claims 1, 9, 17, and 27 of the '638 Patent. (Dkt. No. 69, Ex. B, at 11; Dkt. No. 90-1, at 3.)
Shortly before the start of the January 29, 2019 hearing, the Court provided the parties with the following preliminary construction: "a network device that facilitates communication between two or more networks."
Plaintiff argues that "gateway" has a readily understandable general meaning, and "[e]ach independent claim puts the term `gateway' within the context of communications networks—i.e., a network gateway." (Dkt. No. 71, at 2.) Plaintiff also argues that Defendants' proposal "has no basis in the claims, specification, or intrinsic record," "introduces various entities and concepts that have no basis in the claims," and "only serves to obfuscate—not clarify—the scope of the claims." (Id., at 3.) Alternatively, "Barkan respectfully submits that the primary definition cited in Defendants' extrinsic evidence should be used: `an entrance/exit to a communications network.'" (Id.)
Defendants respond that Plaintiff's discussion of a technical dictionary contradicts Plaintiff's assertion that jurors will readily understand this term. (Dkt. No. 80, at 1 (citing Dkt. No. 71, at 2).) Defendants also argue that "Plaintiff's brief plainly acknowledges the claimed `gateway' facilitates communications between two networks." (Dkt. No. 80, at 2 (emphasis added).) Further, Defendants note that the technical dictionary definition discussed by the parties' briefing confirms that a "gateway" is a "network node," and Defendants submit that Plaintiff has not presented any evidence to the contrary. (Id., at 3.)
Plaintiff replies that "the claim language tells the jury what is on each side of the claimed gateway," "[t]he claims already state that the gateways are connected to networks," and "[d]escribing a gateway as either `hardware or software' provides no useful information." (Dkt. No. 85, at 1.)
At the January 29, 2019 hearing, Plaintiff and Defendants presented no oral arguments as to this term and instead rested on their briefing.
Claim 1 of the '284 Patent, for example, recites (emphasis added):
The gateway recited in the claim thus involves facilitating communications between a radio-frequency link and a packet-based data network. As another example, Claim 1 of the '638 Patent recites (emphasis added):
Here, too, the claim contemplates that a "gateway" interfaces with more than one network. This understanding is also reinforced by a technical dictionary definition that the parties have discussed:
(Dkt. No. 71, Ex. J, Hargrave's Communications Dictionary 228 (SAMSUNG-0026301)
Plaintiff's proposal that a "gateway" can be merely an "entrance/exit to a communications network," although based on a portion of the above-reproduced dictionary definition, is therefore overbroad when read out of context. Defendants' proposed construction, by contrast, is consistent with the above-discussed evidence. Nonetheless, Defendants' proposal of "hardware and software" would tend to confuse rather than clarify the scope of the claims. Instead, the construction need only clarify what the parties already essentially agree upon, namely that a "gateway" is a part of a network that facilitates communication between networks. As to Defendants' proposal of "possibly dissimilar," this possibility is readily encompassed simply by not including any similarity requirement in the construction.
The Court therefore hereby construes
(Dkt. No. 69, Ex. B, at 720128; Dkt. No. 71, at 3; Dkt. No. 80, at 3; Dkt. No. 90-1, at 3.) The parties submit that this term appears in all Claims of the '284 Patent and all Claims of the '312 Patent. (Dkt. No. 69, Ex. B, at 720128; Dkt. No. 90-1, at 4.)
Shortly before the start of the January 29, 2019 hearing, the Court provided the parties with the following preliminary construction: "a network that transfers packets of data from a sender to a recipient."
Plaintiff submits that its proposed construction is supported by the specification and by the prosecution history. (Dkt. No. 71, at 420125.) Plaintiff also argues that Defendants' proposal "seeks to add a mishmash of unrelated limitations to the network that are never mentioned in the intrinsic evidence" and "would arguably encompass networks that are not even packet-based—such as the circuit-switched networks explicitly distinguished in the '284 prosecution history." (Id., at 5.)
Defendants respond that "[t]he claim language is not limited to IP networks," and Defendants submit that "[p]acket-based networks that were not IP networks—such as X.25 packetbased data networks—were well-known at the time of the Asserted Patents." (Dkt. No. 80, at 3-4.) Defendants also argue that neither the specification nor the prosecution history contains any disclaimer or other support for limiting "packet-based" to "IP." (Id., at 4.)
Plaintiff replies that "Defendants' construction is wrong because it references not packets (the claim term), but `groups of data'; and because networks transmitting only such `groups of data'—such as circuit-switched networks—were squarely distinguished in the '284 prosecution history." (Dkt. No. 85, at 1.) Plaintiff also argues that "Defendants' construction is too narrow because it adds protocol limitations (control, error, and sequencing) that do not appear in the intrinsic evidence." (Id., at 1.)
At the January 29, 2019 hearing, Plaintiff and Defendants presented no oral arguments as to this term and instead rested on their briefing.
Claim 1 of the '284 Patent, for example, recites (emphasis added):
The specification discloses that "an IP network" is an example of a relevant network, and the specification further identifies "the Internet" as an example of "an IP network":
'284 Patent at 4:4201210 & 4:38201253 (emphasis added); see id. at 5:12-14 ("[N]ew base station 43 adds a new wireless cell in a location where there is available a link to an Internet network 24."), 12:41-49 ("[mobile] [u]ser 11 communicates with new base station 43, that is connected to an Internet network 24") & 14:34-39 ("A new base station 42 connects (bridges) between an Internet network 24 and the existing telephone network 23 . . . .").
Also, during prosecution, the patentee stated that "all the pending claims recite regulating access to a packet-based network (e.g. the Internet)." (Dkt. No. 71, Ex. D, Dec. 16, 2010 Amendment, at 11 (BARKAN-00000356) (p. 8 of 39 of Dkt. No. 71-6) (emphasis modified).) The patentee argued that "the cited references generally teach cellular networks, which are digital and data based, but are circuit switched." (Id. (emphasis modified).) The patentee thus referred to "the Internet" merely as an example and used the term "packet-based data network" to distinguish circuit-switched networks.
Thus, the intrinsic evidence does not limit the term "packet-based data network" to necessarily being an "IP network." Further, the extrinsic definitions cited by the parties as to "packet switching network" do not limit such networks to "IP" networks. (Dkt. No. 80, Ex. 2, Newton's Telecom Dictionary 443 (11th ed. 1996) (SAMSUNG-0038120) (defining "Packet Switching Network" as "A network designed to carry data in the form of packets").) Defendants have also submitted extrinsic evidence that an "IP network" is merely a particular type of "packetbased" network.
The remaining dispute is whether the constituent term "packet" requires construction. Defendants have cited a technical dictionary that defines "packet" as: "A group of data, control, error control, and sequence information arranged in a specific format suitable for transmission as a single unit across a network." (Dkt. No. 71, Ex. J, Hargrave's Communications Dictionary 380 (SAMSUNG-0026303).
Another technical dictionary definition submitted by Defendants defines "packet" slightly differently as: "A bundle of data, usually in binary form, organized in a specific way for transmission. Three principal elements are included in the packet: 1. Control information — destination, origin, length of packet, etc., 2. the data to be transmitted and 3. error detection and correction bits." (Dkt. No. 80, Ex. 2, Newton's Telecom Dictionary 443 (11th ed. 1996) (SAMSUNG-0038120).)
On balance, Defendants have failed to demonstrate that the constituent term "packet" requires any construction, and Defendants' proposal as to the meaning of "packet" would tend to confuse rather than clarify the scope of the claims, particularly as to the meaning of "groups." Instead, the substantive dispute between the parties can be resolved by a construction that rejects Plaintiff's proposal of limiting "packet-based data network" to necessarily being an "IP network." In so finding, the Court also hereby expressly finds that this disputed term does not encompass a circuit-switched network, as the parties appear to agree and as confirmed by the above-discussed prosecution history.
The Court therefore hereby construes
(Dkt. No. 69, Ex. B, at 1; Dkt. No. 71, at 5; Dkt. No. 80, at 5; Dkt. No. 90-1, at 4-5.) The parties submit that this term appears in all Claims of the '284 Patent and in Claims 2 and 4201255 of the '312 Patent. (Dkt. No. 69, Ex. B, at 1; Dkt. No. 90-1, at 5.)
Shortly before the start of the January 29, 2019 hearing, the Court provided the parties with the following preliminary construction: "center that provides information required for making a call and that determines and disseminates a price policy."
Plaintiff argues that its proposal is consistent with surrounding claim language, the specification, and the prosecution history. (Dkt. No. 71, at 6.) Plaintiff also argues that Defendants' proposal is "nonsensical" because "the claim language nowhere requires that the coordination center must `operate' the base stations" and because "the claim language, specification, and prosecution histories do not require that the coordination center determine or disseminate a pricing policy." (Id., at 7.)
Defendants respond that "coordination center" is a coined term that has no commonly understood meaning and is described in the specification as novel, and "[t]he specification repeatedly and unequivocally states that the new coordination center (cellular center 3) determines and disseminates the price policy." (Dkt. No. 80, at 6.) Defendants also argue that Plaintiff's interpretation is inconsistent with prosecution history. (Id., at 8.)
Plaintiff replies that "Defendants are wrong that coordination center (also called a `cellular center' or `center' in the specification) is a `coined term,' as such known centers were merely adapted for the invention." (Dkt. No. 85, at 2 (citations omitted).) Alternatively, Plaintiff argues that "[t]he pricing policy is a potential responsibility, not a mandatory one." (Id.)
At the January 29, 2019 hearing, the parties presented oral arguments as to this term.
Plaintiff has submitted that the patentee introduced this disputed term by amendment during prosecution to require information sent from a "coordination center" to the controller "over the data network." (See Dkt. No. 71, Ex. D, Dec. 16, 2010 Amendment, at 220125 (BARKAN-00000347201250) & 10201212 (BARKAN-00000355201257) (pp. 27201228 of 28 of Dkt. No. 71-5 & pp. 120122 & 720129 of 39 of Dkt. No. 71-6).)
Claim 1 of the '284 Patent, for example, recites (emphasis added):
The claim thus explicitly recites "information received over the [packet-based] data network from a coordination center," so Plaintiff's proposal of "over the packet-based data network" is unnecessary. The other claims here at issue are similar in this regard. See, e.g., '312 Patent at Cl. 2 ("wherein said gateway is further adapted to report its physical location to a coordination center via the packet based data network") (emphasis added).
As to Defendants' proposed construction, Plaintiff has argued claim differentiation based on dependent Claims 4, 11, and 19 of the '284 Patent, which recite information from a "consideration-related policy database," and the parties agree that "consideration" in this context refers to billing. For example, Claim 4 of the '284 Patent recites (emphasis added):
Because dependent Claims 4, 11, and 19 recite additional limitations beyond the "consideration-related policy database," the doctrine of claim differentiation is of limited weight here. See Wenger Mfg., Inc. v. Coating Mach. Sys., Inc., 239 F.3d 1225, 1233 (Fed. Cir. 2001) ("Claim differentiation, while often argued to be controlling when it does not apply, is clearly applicable when there is a dispute over whether a limitation found in a dependent claim should be read into an independent claim, and that limitation is the only meaningful difference between the two claims.") (emphasis added). Also, even Plaintiff's own proposed interpretation of "consideration-related policy database" (discussed below) refers to storing rather than to determining and dissemination.
Defendants have urged that "coordination center" is a coined term that has had no established meaning in the relevant art. (See Dkt. No. 80-13, Dec. 21, 2018 Lanning Decl., at ¶¶ 28-29.) The specification is consistent with Defendants' position, disclosing that "[u]nlike presently used cellular centers, the center 3 of the novel network does not need to carry the role of a switchboard." '284 Patent at 7:28-30 (emphasis added). Plaintiff has not shown otherwise. Although Plaintiff has cited disclosure regarding "presently used cellular centers" ('284 Patent at 7:28-30; see id. at 6:7-36 & 6:51-60), Plaintiff has presented no evidence of any well-known meaning of "coordination center" in the relevant art.
The Court therefore turns to the specification because "terms coined by the inventor are best understood by reference to the specification." Intervet Inc. v. Merial Ltd., 617 F.3d 1282, 1287 (Fed. Cir. 2010); accord Indacon, Inc. v. Facebook, Inc., 824 F.3d 1352, 1357 (Fed. Cir. 2016) ("terms [that] have no plain or established meaning to one of ordinary skill in the art . . . ordinarily cannot be construed broader than the disclosure in the specification"); Irdeto Access, Inc. v. EchoStar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004) ("absent . . . an accepted meaning [in the art], we construe a claim term only as broadly as provided for by the patent itself").
The specification discloses:
'284 Patent at 6:51201264 (emphasis added); see id. at 3:13201215 & 6:7201212 (similar). Defendants have also noted disclosure that "[t]he new center 3 coordinates the operation of the new base stations. . . ." Id. at 7:31-33 (emphasis added).
Nonetheless, Defendants' proposal of "coordinates the operation" might be interpreted in a manner inconsistent with the disclosure that the coordination center "does not participate in the actual call routing." Id. at 6:61-64. The Court therefore rejects Defendants' proposal in that regard. Instead, a better understanding can be achieved by adopting the above-quoted specification language that refers to "the required information for placing a call." Id. at 6:58.
As to Defendants' proposal that the "coordination center" necessarily "determines and disseminates a price policy," the specification discloses:
Id. at 7:56-64 (emphasis added).
Plaintiff has emphasized a particular passage in the specification, involving preserving caller anonymity, which contains no mention of pricing or billing. See '284 Patent at 8:30-60.
Yet, the specification repeatedly emphasizes pricing as a feature of the "novel" coordination centers: "The novel centers are also responsible for price setting, as determined by an operator there." Id. at 6:21-22 (emphasis added); see id. at 7:34-36 ("The duties of the cellular centers 3 include . . . [i]mplementing a price policy.") & 10:27-29 ("The billing policy can be written digitally by way of a digital document, with a date (and a short expiry date), signed by the cellular center.") (emphasis added). Further of note, such disclosures appear in the context that "[a]n important aspect of the present invention is the means for paying to the owner of the add-on base station for his/her services." Id. at 9:49-51; see id. at 5:27-31 ("The novel system includes means to offer an incentive to people, to motivate them to install and operate the base stations. These include means for collecting a payment for services rendered with the base station."). Plaintiff has not shown any inconsistency between these disclosures and the disclosure regarding preserving caller anonymity. See '284 Patent at 8:30-60.
Because "coordination center" has no established meaning in the relevant art, and because the patentee emphasized "price setting" and "price policy" as features of the "novel" coordination center, the Court's construction of "coordination center" should include this feature as Defendants have proposed. See, e.g., VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1317-18 (Fed. Cir. 2014) (as to term that "does not have a plain and ordinary meaning in this context, and so must be defined by reference to the specification," stating that "[t]he fact that [the feature at issue] is repeatedly and consistently used to characterize the invention strongly suggests that it should be read as part of the claim") (citations and internal quotation marks omitted); Irdeto, 383 F.3d at 1300.
The Court therefore hereby construes
(Dkt. No. 69, Ex. B, at 1; Dkt. No. 71, at 7; Dkt. No. 80, at 9; Dkt. No. 90-1, at 5.) The parties submit that this term appears in Claims 4, 11, and 19 of the '284 Patent. (Dkt. No. 69, Ex. B, at 1; Dkt. No. 90-1, at 5.)
Shortly before the start of the January 29, 2019 hearing, the Court provided the parties with the following preliminary construction: "a database on the Internet that stores information related to billing or pricing policies."
Plaintiff argues that "Defendants' contention that the database must be located `on' the Internet is unsupported by the claim language." (Dkt. No. 71, at 8.) Further, Plaintiff argues that "Defendants' argument that the consideration-related policy database must be different from `the authentication database' is unsupported by the claims or specification." (Id.)
Defendants respond that the patentee's "clear and unmistakable statements to the PTO about what the claimed consideration policy database is and why it is distinguishable from the prior art require that the database be construed as being on the Internet." (Dkt. No. 80, at 10.) Defendants also similarly argue that the patentee "unequivocally argued that these two types of databases are not the same." (Id., at 11.)
Plaintiff replies that "Defendants fail to meet their burden to show prosecution-history disclaimer that `consideration-related policy database' must be (a) located on the Internet and (b) distinct from `the authentication database.'" (Dkt. No. 85, at 3.)
At the January 29, 2019 hearing, the parties presented oral arguments as to this term.
Claim 4 of the '284 Patent, for example, recites (emphasis added):
The parties agree that "consideration" in this context refers to billing. The specification discloses as follows regarding "billing policy":
'284 Patent at 10:27201240; see id. at 7:36 & 7:56 ("price policy"); see also id. at 15:24201229 ("Billing in this case is by the receiver phone, or otherwise as set by policy of the cellular center.").
As to Defendants' proposal regarding an "authentication database," during prosecution the patentee distinguished the "Xu" reference (United States Patent No. 6,501,732):
(Dkt. No. 71, Ex. D, Mar. 1, 2010 Response, at 620127 (BARKAN-00000392201293) (pp. 520126 of 34 of Dkt. No. 71-7) (emphasis modified).)
Plaintiff has noted, however, that the statement that the billing database and authentication database "are separate and distinct entities" related not to the claimed invention but rather to "most cellular network architectures," which are described as being "well known." In other words, the patentee's statements can be fairly interpreted as arguing merely that disclosure of an authentication server does not necessarily imply disclosure of a consideration-related policy database. Consequently, no prosecution disclaimer is apparent. See Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1332 (Fed. Cir. 2004) ("Because the statements in the prosecution history are subject to multiple reasonable interpretations, they do not constitute a clear and unmistakable departure from the ordinary meaning of the term. . . ."); see also Tech. Properties Ltd. LLC v. Huawei Techs. Co., 849 F.3d 1349, 1357-58 (Fed. Cir. 2017) ("If the challenged statements are ambiguous or amenable to multiple reasonable interpretations, prosecution disclaimer is not established.").
As to whether the consideration-related policy database must be "on the Internet," Defendants have cited prosecution history in which the patentee distinguished the "Barany" reference (United States Patent No. 6,594,252):
(Dkt. No. 71, Ex. D, May 20, 2007 Response, at 3 (BARKAN-00000497) (p. 3 of 38 of Dkt. No. 71-10) (emphasis modified).) Plaintiff has noted that this passage includes the phrase "[f]or example," but the context shows that the sentence is calling out just one feature of the invention, not just an exemplary embodiment. Furthermore, the phrase "according to what is claimed" weighs heavily in favor finding that the patentee's statements have a limiting effect. Also, the patentee repeated this assertion in two later portions of the prosecution history. (See Dkt. No. 71, Ex. D, June 29, 2008 Amendment, at 4 (BARKAN-00000462) (p. 11 of 43 of Dkt. No. 71-9) ("One of the novel features of the current invention is having a consideration-relateed [sic] policy database over the Internet . . . ."); see also id., Mar. 30, 2009 Amendment, at 4 (BARKAN-00000427) (p. 6 of 30 of Dkt. No. 71-8) (same).)
These repeated, definitive statements should be given effect in the Court's construction. See Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003) ("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.").
Finally, at the January 29, 2019 hearing, Plaintiff urged that any purported disclaimer does not apply to the disputed term because the patentee subsequently amended the claims. Upon review, no relevant modification is apparent because the consideration-related policy database was recited in relation to a data network both before and after the amendments. (See Dkt. No. 71, Ex. D, Dec. 16, 2010 Amendment, at 220125 (BARKAN-00000347201250) & 10201212 (BARKAN-000003552012 57) (pp. 27201228 of 28 of Dkt. No. 71-5 & pp. 120122 & 720129 of 39 of Dkt. No. 71-6).) Further, to whatever extent the amendments might be viewed as potentially altering the earlier disclaimer, the patentee had an obligation to notify the examiner of any purported withdrawal of the disclaimer. See Hakim v. Cannon Avent Group, PLC, 479 F.3d 1313, 1315-18 (Fed. Cir. 2007) ("Although a disclaimer made during prosecution can be rescinded, permitting recapture of the disclaimed scope, the prosecution history must be sufficiently clear to inform the examiner that the previous disclaimer, and the prior art that it was made to avoid, may need to be re-visited."); see also id. at 1315-18. Plaintiff has identified no evidence of any such withdrawal.
The Court therefore hereby construes
(Dkt. No. 69, Ex. B, at 2; Dkt. No. 71, at 9; Dkt. No. 80, at 11; Dkt. No. 90-1, at 5-6.) The parties submit that this term appears in Claims 14201221, 24201237, and 40201254 of the '312 Patent and all Claims of the '638 Patent. (Dkt. No. 69, Ex. B, at 2; Dkt. No. 90-1, at 7.)
Shortly before the start of the January 29, 2019 hearing, the Court provided the parties with the following preliminary construction: "send data toward its destination by choosing from among multiple alternative links."
Plaintiff argues that "route data" "is used in its plain and ordinary sense" and "refers to sending data between certain claimed network elements." (Dkt. No. 71, at 9.) Plaintiff further urges that "the intrinsic record . . . does not require that routing of data involve selecting or determining the exact path the data takes." (Id., at 10.) Plaintiff submits that Defendants' proposal in this regard "is at odds with how packet-based data networks (such as the Internet) actually work," wherein "it is generally not possible for the sending device to select the exact `path' that data will take." (Id.)
Defendants argue:
(Dkt. No. 80, at 11-12 (citations omitted).) Defendants submit that this interpretation is consistent with the specification and is not contradicted by the prosecution history. (Id., at 12.)
Plaintiff replies that "Defendants propose a construction of `route' that they concede a POSITA would know cannot be performed by the claimed invention in a packet-based data network." (Dkt. No. 85, at 4.)
In sur-reply, Defendants argue that "a claimed add-on base station could select, using the gateway IP address, the path that data from a mobile device takes over the public Internet to a remote gateway as required by each claim of the '638 patent under the correct construction of `route data' by using the `source path routing' feature of the Internet Protocol." (Dkt. No. 89, at 3.)
At the January 29, 2019 hearing, Plaintiff agreed with the use of "toward" in the Court's preliminary construction, but Plaintiff urged that there should be no requirement of "multiple alternative links."
The specification discloses: "The packets are sent over an IP network to their destination. It is possible that some packets are lost during the routing, and that the packets are received in a different order." '312 Patent at 4:15-17.
Plaintiff has submitted evidence that packet-switched networks generally do not allow for the sending device to specify a "path" for data to follow. (See Dkt. No. 71, Ex. M, Charles R. Severance, Introduction to Networking: How the Internet Works, at 16-17 (SAMSUNG-0026541-42) ("Your packet has a source address and destination address and the router needs to look at the destination address to figure out how to best move your packet towards its destination. With each router handling packets destined for any of many billions of destination computers, it's not possible for every router to know the exact location and best route to every possible destination computer. So the router makes its best guess as to how to get your packet closer to its destination."); see also id., at 8 (SAMSUNG-0026537) ("routers forward each packet separately based on source and destination addresses"; "different packets may take different routes").) This evidence weighs against requiring determining a path (rather than merely moving packets toward a destination).
Defendants have submitted extrinsic dictionary definitions of "route" as meaning "to determine the path that a message or call is to take in a communications network" (Dkt. No. 71, Ex. J, Hargrave's Communications Dictionary 449 (SAMSUNG-0026305)
Yet, one of these technical dictionaries also defines "routing" as "[t]he process of determining which of several alternative routers to use in sending a data packet toward its destination." (Dkt. No. 71, Ex. J, Hargrave's Communications Dictionary 449 (SAMSUNG-0026305) (emphasis added); see id. ("The packet may travel through several networks, each with its own routers, before reaching the final destination.").) The opinions of Defendants' expert to the contrary are unpersuasive. (Dkt. No. 80-13, Dec. 21, 2018 Lanning Decl., at ¶¶ 33-36; see id., at ¶ 35 ("Only a device such as a router that is connected to a network via multiple outbound links `routes' data by selecting one of those outbound links.") (emphasis added).)
Thus, neither the intrinsic evidence nor the extrinsic evidence warrants the narrow interpretation proposed by Defendants. Instead, this evidence demonstrates that to "route data" refers merely to sending data toward a selected destination. This is consistent with the context in which the disputed term is used in the claims. For example, Claim 14 of the '312 Patent recites (formatting modified; emphasis added):
Thus, routing the data to the remote gateway is recited in relation to obtaining address information for the remote gateway. The claim therefore uses "route data" in the context of determining the proper destination (rather than in the context of selecting one of multiple available outbound links). Finally, this interpretation is consistent with the illustration of add-on base stations having just one connection to an IP network, rather than multiple alternative links. See, e.g., '312 Patent at Fig. 5.
The Court therefore hereby construes
(Dkt. No. 69, Ex. B, at 7; Dkt. No. 71, at 10; Dkt. No. 80, at 13; Dkt. No. 90-1, at 7.) The parties submit that this term appears in all Claims of the '284 Patent. (Dkt. No. 90-1, at 8.)
Shortly before the start of the January 29, 2019 hearing, the Court provided the parties with the following preliminary construction: "controlling a flow of data."
Plaintiff argues that "[t]he claims make clear that there is a distinction between `regulating data flow'—performed, for example, by the controller in claim 1—and merely facilitating data flow—performed, for example, by the interface between the gateway base station and the packetbased data network." (Dkt. No. 71, at 11.) Plaintiff submits that the specification and the prosecution history support Plaintiff's proposal of interpreting this disputed term as referring to control. (See id., at 11201212.) Plaintiff further argues that Defendants' proposed construction is unclear and lacks support in the intrinsic record. (Id.)
Defendants argue this term together with the term "a controller adapted to regulate data flow." (See Dkt. No. 80, at 13-17.) In particular, Defendants respond that "the claims do not recite anything about `access.'" (Id., at 17.) Defendants also argue that "Plaintiff's construction incorrectly changes what is claimed—i.e., the controller regulating the bidirectional flow of data between the mobile device and the data network—to the unclaimed concept of the controller unidirectionally limiting the access of the mobile device to the network." (Id.)
Plaintiff replies that "[r]egulating data flow refers to controlling access to the data network, . . . and Defendants make no attempt to rebut the unambiguous statements in the prosecution history so indicating." (Dkt. No. 85, at 4.)
At the January 29, 2019 hearing, the parties presented oral arguments. Defendants were amenable to the Court's preliminary construction.
Claim 3 of the '284 Patent, for example, depends from Claim 1, and Claims 1 and 3 recite (emphasis added):
Claim 1 thus uses both "facilitate" and "regulate," which implies that these terms have distinct meanings. Defendants' proposal of "putting or maintaining in order" might be interpreted by a finder of fact as being akin to "facilitate," so the separate recital of "facilitate" weighs at least somewhat against Defendants' proposed construction. At the January 29, 2019 hearing, Defendants also alternatively proposed that the term "regulating data flow" does not require any construction. The parties focused their oral arguments on whether "regulating data flow" necessarily refers to controlling "access."
The specification does not use "regulate" or "regulating" outside of the claims, and the disclosures cited by Plaintiff do not inform the meaning of these terms. See '284 Patent at 8:21-62 & 9:26-47 ("the center checks the authorization of the caller to sen[d] the request").
Plaintiff has also cited prosecution history in which the patentee distinguished "Johnson" (United States Patent No. 6,497,599) and "Xu" (United States Patent No. 6,501,732):
(Dkt. No. 71, Ex. D, Dec. 16, 2010 Amendment, at 10 & 12 (BARKAN-00000355 & -357) (pp. 7 and 9 of 39 of Dkt. No. 71-6) (emphasis added).)
Although the patentee distinguished Johnson and Xu as not disclosing regulating, Plaintiff has not shown that the patentee elaborated upon the meaning of regulating. In other words, Plaintiff has not shown how these statements by the patentee regarding Johnson and Xu necessarily inform the meaning of "regulating" as used in the patents-in-suit.
As to extrinsic evidence, Plaintiff has submitted a general dictionary definition of "regulate" as meaning "To control or direct according to rule, principle, or law." (Dkt. No. 71, Ex. F, The American Heritage Dictionary 705 (4th ed. 2001) (BARKAN-00004301).) Plaintiff's proposal of "controlling" is thus supported by evidence, and on balance this term "involves little more than the application of the widely accepted meaning of commonly understood words." Phillips, 415 F.3d at 1314. This understanding is also consistent with the recital in abovereproduced Claim 1 of "a controller adapted to regulate data flow."
In sum, although "regulating" refers to "controlling," Plaintiff has not shown how "regulating data flow" necessarily refers to controlling "access to the packet-based data network by the mobile device." The above-reproduced claim language does not refer to "access," and Plaintiff has not otherwise justified introducing "access" into the construction.
The Court therefore hereby construes
(Dkt. No. 69, Ex. B, at 420125; Dkt. No. 71, at 12; Dkt. No. 80, at 14; Dkt. No. 90-1, at 8.) The parties submit that this term appears in Claims 1, 2, and 4-18 of the '284 Patent. (Dkt. No. 69, Ex. B, at 4; Dkt. No. 90-1, at 8.)
Shortly before the start of the January 29, 2019 hearing, the Court provided the parties with the following preliminary construction: "Plain meaning (Not means-plus-function)."
Plaintiff argues that Defendants have not rebutted the presumption against means-plusfunction treatment for this non-means term because "[t]he structure is apparent from the claim language, which requires a controller that regulates data flow between a mobile device and a data network." (Dkt. No. 71, at 13.) Alternatively, Plaintiff submits that the specification discloses adequate corresponding structure because "[t]he specification explains that controller 54 supervises and controls the operation of the `channel electronic means' connecting the first and second channels." (Id., at 13201214.)
Defendants respond that "[t]he presumption [against means-plus-function treatment] is overcome here because `controller' neither connotes any form of structure to one of skill in the art in the context of the Asserted Patents, nor recites structure sufficient to perform the claimed function." (Dkt. No. 80, at 14.) Defendants also argue that although the parties agree the proper corresponding structure is "controller 54," this structure is insufficient because "controller 54 is merely a black box and the descriptive text merely states what controller 54 does without providing any structural information about the controller itself." (Id., at 16.)
Plaintiff replies that "[a] POSITA understands a `controller' as a specific structure capable of regulating data flow." (Dkt. No. 85, at 5.) Alternatively, Plaintiff argues that there is sufficient corresponding structure because "the specification provides specific examples of the controller's structure and operation." (Id., at 5.)
At the January 29, 2019 hearing, the parties presented oral arguments as to this term.
Claim 1 of the '284 Patent, for example, recites (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 identified no authority for the proposition that "controller" is a "nonce" term under Williamson, and Defendants have submitted no persuasive evidence that the term "controller" fails to connote structure in the relevant art. See 792 F.3d at 1350; see also Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1007-09 (Fed. Cir. 2018) (discussing "giving effect to the unrebutted presumption against the application of § 112, ¶ 6"). Nothing in the specification suggests that "controller" lacks structure. See '284 Patent at 10:59-63 ("The channel electronic means 53 implements the actual communications to connect between the channels 51 and 52. A call controller 54 supervises and controls the operation of means 53, according to commands received from a user through the control inputs 541 for the base station.").
Plaintiff has submitted technical dictionary definitions of "controller," thereby reinforcing that the term "controller" refers to a known class of structures. (See Dkt. No. 85, Ex. I.1, IBM Dictionary of Computing 145 (1994) ("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."); see also id., Ex. H.1, The IEEE Standard Dictionary of Electrical and Electronics Terms 217 (6th ed. 1996); Dkt. No. 71, Ex. L, Newton's Telecom Dictionary 152 (11th ed. 1996) (BARKAN-00004292).) The opinions of Defendants' expert to the contrary are unpersuasive. (See Dkt. No. 80-13, Dec. 21, 2018 Lanning Decl., at ¶¶ 37-40.)
This interpretation 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").
Finally, Defendants have not shown that the term "controller" is 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). Defendants' reliance on the Media Rights case is similarly unpersuasive. See Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1373 (Fed. Cir. 2015) (finding "compliance mechanism" to be a meansplus-function term).
The Court therefore concludes that Defendants have failed to rebut the presumption against means-plus-function treatment, and Defendants have not presented any alternative proposed construction. Thus, no further construction is necessary.
The Court accordingly hereby construes
(Dkt. No. 69, Ex. B, at 6; Dkt. No. 71, at 15; see Dkt. No. 90-1, at 8-9.) The parties submit that this term appears in all Claims of the '312 Patent. (Dkt. No. 69, Ex. B, at 6; Dkt. No. 90-1, at 9.)
Shortly before the start of the January 29, 2019 hearing, the Court provided the parties with the following preliminary construction: "Controller adapted to facilitate data flow (Not meansplus-function)."
Plaintiff argues that Defendants have not rebutted the presumption against means-plusfunction treatment for this non-means term because "[t]he structure is straightforward from the claim language alone." (Dkt. No. 71, at 15201216.) Alternatively, Plaintiff argues that "[b]y implementing and supervising communications between channels, the call controller 54 both enables data flow (data facilitation) and controls access (data regulation) between the claimed communication channels." (Id., at 16.)
Defendants respond that "`connection regulator' is a coined nonce term that has no known meaning—and does not connote any form of structure—to one of one of ordinary skill in the art." (Dkt. No. 80, at 17.) Defendants argue that "[t]he claims here are indefinite because the specification fails to disclose corresponding structure that is both clearly linked to, and adequate to perform, the claimed function." (Id., at 18.)
Plaintiff replies that "[a] regulator is a well-known structure in the art." (Dkt. No. 85, at 5.) Alternatively, Plaintiff argues that "[t]he specification provides sufficient structure for a skilled artisan to know and understand what structure corresponds to the limitation." (Id., at 6.)
At the January 29, 2019 hearing, the parties presented oral arguments as to this term.
Claim 1 of the '312 Patent, for example, recites (emphasis added):
Defendants' expert has opined that although the term "regulator" has structural meaning in some contexts (such as "voltage regulator" in the context of electrical circuits), the term "connection regulator" has no structural meaning in any relevant art. (See Dkt. No. 80-13, Dec. 21, 2018 Lanning Decl., at ¶¶ 42-44; cf. Williamson, 792 F.3d at 1351 (regarding the term "distributed learning control," noting that "the presence of modifiers can change the meaning of `module'" but "the presence of these particular terms does not provide any structural significance to the term `module' in this case"); Adv. Ground Info. Sys., Inc. v. Life360, Inc., 830 F.3d 1341, 1348 (Fed. Cir. 2016) ("Irrespective 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).").
Plaintiff's expert attempts to analogize to an automotive voltage regulator, through which "the battery charging current is regulated by intermittently connecting the generator to the battery." (Dkt. No. 85, Ex. Y, Jan. 8, 2019 Lomp Decl., at ¶ 43.) Although a voltage regulator might involve connecting and disconnecting, Plaintiff has not shown how this use of a connection in a known structure demonstrates that the term "connection regulator" refers to a known structure or class of structures.
Nonetheless, the specification discloses:
'312 Patent at 10:62-11:2 (emphasis added); see id. at Figs. 2 & 5-7.
On balance, this disclosure demonstrates that the recital of "connection regulator" in the claims of the '312 Patent aligns with the disclosures regarding "call controller 54" as well as with the recitals of a "controller" in the claims of the '248 Patent. The opinions of Plaintiff's expert are further persuasive in this regard. (See Dkt. No. 98, Ex. A, Jan. 22, 2019 Lomp dep. at 185:18-186:21.)
Defendants urged at the January 29, 2019 hearing that "connection regulator" should not be interpreted as referring to a controller because different terms are presumed to have different meanings, even as between different patents, when the claims at issue stem from the same specification. Even assuming that such a presumption arises, "[d]ifferent terms or phrases in separate claims may be construed to cover the same subject matter where the written description and prosecution history indicate that such a reading of the terms or phrases is proper." Nystrom v. TREX Co., Inc., 424 F.3d 1136, 1143 (Fed. Cir. 2005). The context provided by the above-cited portions of the specification support reading "connection regulator" as referring to a controller.
Finally, the extrinsic technical dictionary definitions of "regulator" cited by Plaintiff provide additional support. (See Dkt. No. 85, Ex. W, Comprehensive Dictionary of Electrical Engineering 542 (1999) (defining "regulator" as "a controller designed to maintain the state of the controlled variable at a constant value, despite fluctuations of the load"); id., Ex. V, The Illustrated Dictionary of Electronics 671 (2d ed. 1982) (defining "regulator" as: "1. A device that automatically holds a quantity to a constant value, e.g., voltage regulator. 2. A device by means of which a quantity may be varied, e.g., potentiometer, rheostat, variable autotransformer."); id., Ex. S, Modern Dictionary of Electronics 637 (7th ed. 1999) (defining "regulator" as "1. A device whose function is to maintain a designated characteristic at a predetermined value or to vary it according to a predetermined plan. 2. A device used to maintain a desired output voltage or current constant regardless of normal changes to the input or to the output load.").)
Defendants have therefore failed to rebut the presumption against means-plus-function treatment, and the Court interprets the phrase "connection regulator" as referring to a controller.
The Court accordingly hereby construes
(Dkt. No. 69, Ex. B, at 3; Dkt. No. 71, at 16; Dkt. No. 80, at 19; Dkt. No. 90-1, at 9.) The parties submit that this term appears in Claims 15201218, 21, 25201227, 30201231, 41201243, and 47201248 of the '312 Patent and Claims 120122, 420126, 9201210, 12201214, 17, 20, 22201224, 27, 30, 32201234, and 36 of the '638 Patent. (Dkt. No. 69, Ex. B, at 3; Dkt. No. 90-1, at 10.)
Shortly before the start of the January 29, 2019 hearing, the Court provided the parties with the following preliminary construction: "Plain meaning."
Plaintiff submits that "[e]very juror will be familiar with the public Internet." (Dkt. No. 71, at 16.) Plaintiff argues that Defendants' proposal should be rejected because "[t]he network comprising the `public Internet' is not the same as the network of devices that are assigned public IP addresses." (Id., at 17.)
Defendants respond by distinguishing between public and private IP addresses and by asserting that "Plaintiff fails to offer any explanation of what the public Internet is, much less explain what one of ordinary skill in the art understands it to be, other than to say it is one type of packet-based data network." (Dkt. No. 80, at 19.)
Plaintiff replies that "Mr. Lanning [Defendants' expert] admitted that devices which are not part of the public Internet can be assigned public IP addresses," and "[t]he jury will readily understand the meaning of `public Internet.'" (Dkt. No. 85, at 6.)
At the January 29, 2019 hearing, the parties presented oral arguments as to this term.
Claim 15 of the '312 Patent depends from Claim 14, which in turn depends from Claim 1. Claims 1, 14, and 15 recite (emphasis added):
This claim language contains no suggestion that the patentee used the term "Internet" to have any meaning other than its general, well-known meaning.
The specification discloses:
'284 Patent at 5:9-11. Defendants have not shown that this disclosure of being "directly connected" to the Internet necessarily implies that every device connected to the Internet must have a public IP address. Conversely, Defendants have not persuasively shown that a device that has been given a public IP address is necessarily on the "public Internet." (See Dkt. No. 98, Ex. A, Jan. 4, 2019 Lanning Dep. at 63:22-64:10 ("So in my mind, even if a closed private network uses public IP addresses, that's not the public internet."); see also Lextron Sys., Inc. v. Microsoft Corp., No. C-04-0588, 2005 WL 6220089, at *8 (N.D. Cal. June 1, 2005) (Walker, C.J.) ("there is only one `Internet'").)
On balance, Defendants' concerns regarding the distinction between "public" networks and "private" networks is addressed by the disputed term itself specifying "public." The opinions of Defendants' expert regarding "public" IP addresses are therefore unpersuasive. (See Dkt. No. 80-13, Dec. 21, 2018 Lanning Decl., at ¶¶ 45-49.)
Defendants argue that "it is clear to one of ordinary skill in the art that the base station must use a public rather than a private IP address" (Dkt. No. 80, at 20), but Defendants' have not shown how the term "public Internet" purportedly imposes any limitation as to the address of a base station. To whatever extent Defendants are arguing that Plaintiff's contentions are inconsistent with the requirement of a packet-based data network comprising the public Internet, any such dispute raises factual questions regarding infringement rather than any legal question for claim construction. See PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998) ("after the court has defined the claim with whatever specificity and precision is warranted by the language of the claim and the evidence bearing on the proper construction, the task of determining whether the construed claim reads on the accused product is for the finder of fact"); see also Eon Corp. IP Holdings LLC v. Silver Spring Networks, Inc., 815 F.3d 1314, 1318-19 (Fed. Cir. 2016) (citing PPG).
The Court therefore hereby expressly rejects Defendants' proposed construction, and no further construction is necessary. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) ("Claim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement. It is not an obligatory exercise in redundancy."); see also O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) ("[D]istrict courts are not (and should not be) required to construe every limitation present in a patent's asserted claims."); 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."); ActiveVideo Networks, Inc. v. Verizon Commcn's, Inc., 694 F.3d 1312, 1326 (Fed. Cir. 2012); Summit 6, LLC v. Samsung Elecs. Co., Ltd., 802 F.3d 1283, 1291 (Fed. Cir. 2015).
The Court accordingly hereby construes
(Dkt. No. 69, Ex. B, at 7; Dkt. No. 80, at 20; Dkt. No. 90-1, at 11; see Dkt. No. 71, at 18.) The parties submit that these terms appear in Claims 1-16, 18-19, and 28 of the '638 Patent and Claim 13 of the '312 Patent. (Dkt. No. 90-1, at 12.)
Shortly before the start of the January 29, 2019 hearing, the Court provided the parties with the following preliminary constructions: "hardware that includes means to destroy its contents or delete information stored therein, if someone tries to tamper with it"; and "unit that includes means to destroy its contents or delete information stored therein, if someone tries to tamper with it."
Plaintiff argues that Defendants' proposal should be rejected because "[t]he specification is clear that the information-destruction implementation is merely one form of claimed tamperproofing." (Dkt. No. 71, at 18.) Plaintiff submits that "`[t]amper' is susceptible to its plain and ordinary meaning, and neither party seeks to construe it." (Id.) As to "tamper-free unit," Plaintiff submits that "[t]he specification contemplates that the base stations' anti-tamper features may be implemented not only through hardware (as discussed above), but also through other mechanisms associated with the base station unit, such as software-based solutions." (Dkt. No. 71, at 19.)
Defendants respond that these terms "are not terms of art and have no established customary meaning in the art of cellular communications," and "the sole teaching in the patents regarding what `tamper-free' means is that the box includes means to destroy or delete its contents if there is attempted tampering." (Dkt. No. 80, at 20.)
Plaintiff replies that "tampering is a well-understood term" and "the specification examples of tamper-free units do not make tampering impossible, but merely inhibit tampering." (Dkt. No. 85, at 7.)
At the January 29, 2019 hearing, the parties presented oral arguments as to this term.
Claim 1 of the '638 Patent, for example, recites in relevant part (emphasis added):
The specification discloses:
'284 Patent at 6:22-25, 10:41-49 (emphasis added).
Plaintiff has argued that the "means to destroy its contents or delete the information therein" is merely a preferred feature. See UltimatePointer, L.L.C. v. Nintendo Co., Ltd., 816 F.3d 816, 822 (Fed. Cir. 2016) ("We have cautioned against importing limitations from the specification into the claims when performing claim construction . . . .").
Yet, what is set forth as preferred in this disclosure is the "tamper-free" feature itself. The language relied upon by Defendants explains the meaning of "tamper-free" in this context.
Plaintiff argues that "the jury will likewise understand what it means for something to be resistant to tampering," but the term here at issue is "tamper-free," not tamper-resistant. Although Plaintiff has submitted an extrinsic dictionary definition of "free" as meaning "[n]ot hampered or restricted in its normal operation," Plaintiff has not shown how this extrinsic definition has any bearing upon the meaning of "tamper-free" in the context of the claims. (Dkt. No. 71, Ex. O, Merriam-Webster's Collegiate Dictionary 464 (10th ed. 1997) (BARKAN-00004272).)
Indeed, Plaintiff has not rebutted the opinions of Defendants' expert that "tamper-free" has had no established meaning in the relevant art. (See Dkt. No. 80-13, Dec. 21, 2018 Lanning Decl., at ¶ 60 ("The apparently narrower term `tamper-free' is also unclear and perhaps more so because, in addition to the uncertainty associated with terms like `tamper-resistant,' it is not clear to one of ordinary skill in the art as to whether the term `tamper-free' is intended to connote something more than tamper-resistant."); see also id., at ¶¶ 58-59.) This absence of established meaning provides further support for interpreting "tamper-free" in accordance with the above-reproduced specification disclosure. See Irdeto, 383 F.3d at 1300 ("absent . . . an accepted meaning [in the art], we construe a claim term only as broadly as provided for by the patent itself").
At the January 29, 2019 hearing, Plaintiff urged that a person of ordinary skill in the art would recognize that encryption does not make tampering impossible. Plaintiff concluded that the disclosure regarding documents "encrypted so as to prevent tampering" shows that to "prevent tampering" means merely to make tampering more difficult. '284 Patent at 6:22-25. Plaintiff has not shown support in the intrinsic or extrinsic evidence for drawing such inferences, and the Court finds none.
The Court therefore hereby construes "
(Dkt. No. 69, Ex. B, at 8; Dkt. No. 71, at 19; Dkt. No. 80, at 21; Dkt. No. 90-1, at 12.) The parties submit that this term appears in Claims 1201216 of the '638 Patent. (Dkt. No. 69, Ex. B, at 8; Dkt. No. 90-1, at 13.)
Shortly before the start of the January 29, 2019 hearing, the Court provided the parties with the following preliminary construction: "Plain meaning (Not indefinite)."
Plaintiff argues that the meaning of this term is readily apparent based on surrounding claim language and disclosures in the specification. (See Dkt. No. 71, at 19201220.)
Defendants respond that "independent claims 1 and 9 of the '638 patent are indefinite because there was no common understanding among those of ordinary skill in the art of what the `transmission power of conventional base stations' is, and the patent does not define one." (Dkt. No. 80, at 21.)
Plaintiff replies that Defendants "attempt to obfuscate a simple, easily-understood feature—that the patented device is a less powerful alternative to conventional cell towers that consumers can install in homes or businesses." (Dkt. No. 85, at 7.)
At the January 29, 2019 hearing, the parties presented oral arguments as to this term.
Claim 1 of the '638 Patent, for example, recites in relevant part (emphasis added):
As a threshold matter, the portions of the specification cited by Plaintiff regarding "a relatively high transmit power" and a "regular base station" do not provide any clear meaning for the disputed term. '284 Patent at 1:29-33 & 3:63-64; see id. at 16:47-49 ("a high power transmitter or a large antenna").
Further, Defendants have submitted evidence that there was no particular "conventional" transmission power at the relevant time. Instead, transmission power has had a wide range. (See Dkt. No. 80, Ex. 5 at 14 (SAMSUNG-0030141) (defining classes with power ratings ranging from 2.5W to 640W); see also id., Ex. 4; Dkt. No. 80-13, Dec. 21, 2018 Lanning Decl., at ¶ 68 ("If we include GSM 900 micro- and pico-base stations, the variance extends even further down to 13 dBm (about 0.02 W) to 24 dBm (about 0.2512 W). Thus, in GSM 400 and 900 networks at the time of the purported invention of the Asserted Patents, the `transmission power of a conventional base station' may potentially represent a range of possible transmission powers in which the highest maximum nominal transmission power (640 W) was about 32,000 times greater than the lowest maximum nominal transmission power (0.02 W).") (citations omitted); id., at ¶¶ 67-69.)
Nonetheless, this evidence regarding "micro- and pico-base stations" is not relevant in the context of the subsequent claim language reciting "produc[ing] a cell smaller than macrocells of conventional base stations." Plaintiff has submitted sufficient evidence that the term "macrocell" has been known in the relevant art. (See Dkt. No. 71, Ex. L, Newton's Telecom Dictionary 361 (11th ed. 1996) (BARKAN-00004288) ("macrocell is a new word for what we used to call a `cell'"); see also Dkt. No. 80, Ex. 6, Robin Coombs and Raymond Steele, Introducing Microcells into Macrocellular Networks: A Case Study, 47 IEEE Transactions on Communications 568 (Apr. 1999) (SAMSUNG-0026282) (referring to "conventional size cells, often called macrocells").)
The disclosure that the invention may employ "antenna towers," cited by Defendants, does not disturb this understanding because the use of a tower does not necessarily imply any particular transmission power. See '284 Patent at 15:53-58. Instead, the disputed term is directed to transmission power lower than the transmission power of any known base station for a "macrocell" at the time of the invention. See Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1326 (Fed. Cir. 2008) ("The use of `conventional' to modify `Internet browser' and `web browsing software' denotes a reference to web browsers in existence at the time of the alleged invention . . . ."), abrogated on other grounds by Travel Sentry, Inc. v. Tropp, 877 F.3d 1370 (Fed. Cir. 2017); see also PC Connector Solutions, LLC v. SmartDisk Corp., 406 F.3d 1359, 1363 (Fed. Cir. 2005) (discussing "conventional" as referring to "technologies existing at the time of the invention").
Thus, on balance, the disputed term sufficiently "inform[s] those skilled in the art about the scope of the invention with reasonable certainty." Nautilus, 572 U.S. at 910; see id. at 909 n.5; see also Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014) ("We do not understand the Supreme Court to have implied in Nautilus . . . that terms of degree are inherently indefinite.").
The Court therefore concludes that Defendants have failed to show indefiniteness. See Sonix, 844 F.3d at 1377. Defendants have not presented any alternative proposed construction, and no further construction is necessary.
The Court accordingly hereby construes
(Dkt. No. 69, Ex. B, at 9; Dkt. No. 71, at 22; Dkt. No. 80, at 23; Dkt. No. 90-1, at 13-14.) The parties submit that this term appears in Claims 1201216 of the '638 Patent. (Dkt. No. 69, Ex. B, at 9; Dkt. No. 90-1, at 15.)
Shortly before the start of the January 29, 2019 hearing, the Court provided the parties with the following preliminary construction: "Plain meaning (Not indefinite)."
Plaintiff argues that "[t]he concept of the size of the cell created by the base station as compared to the size of the cell created by a macrocell is straightforward, and should be given its plain and ordinary meaning." (Dkt. No. 71, at 22.) Plaintiff further argues that "definiteness only requires `reasonable certainty' as to its coverage, and a POSITA would understand that the limitation does not cover cell sizes associated with conventional macrocell sites, even ones with small cells." (Id., at 23 (citation omitted).)
Defendants respond that this term is indefinite because "there was no common understanding among those of ordinary skill in the art regarding the size of `macrocells of conventional base stations.'" (Dkt. No. 80, at 23.)
Plaintiff replies that "[b]ecause a POSITA would know of the cell sizes corresponding to conventional base stations, Defendants not only failed to meet their burden, but disproved their indefiniteness theory with the evidence they submitted." (Dkt. No. 85, at 9.)
At the January 29, 2019 hearing, the parties presented oral arguments as to this term.
The specification uses the term "cell" to refer to an area. See '284 Patent at 1:38-40 ("As more users are to be served in a specific area, the cells are made smaller, and more base stations have to be installed."); see also id. at 4:32-34 ("Once this device, the base station 41, is bought and operated by its owner, it generates a wireless cell in its surroundings."). Plaintiff has also submitted extrinsic evidence explaining that "[a] city or county is divided into smaller `cells'" and "[b]y controlling the transmission power, the radio frequencies assigned to one cell can be limited to the boundaries of that cell." (Dkt. No. 71, Ex. L, Newton's Telecom Dictionary 118 (11th ed. 1996) (BARKAN-00004291).)
Defendants have submitted evidence of a broad range of possible sizes for cells, such as with a radius ranging from half of a kilometer up to 50 kilometers. (See Dkt. No. 80-13, Dec. 21, 2018 Lanning Decl., at ¶¶ 71-74; see also Dkt. No. 80, Ex. 4, at 6 (SAMSUNG-0026458).) This evidence also shows that some cellular standards do not specify a minimum cell size. (See id.) Defendants have also cited testimony in which Plaintiff's expert purportedly gave inconsistent answers regarding the size of a macrocell. (See Dkt. No. 97, Ex. A, Jan. 22, 2019 Lomp dep. at 57:19-58:12, 74:7-22, 81:6-16 & 98:12-99:1.) Still, the above-cited evidence submitted by Defendants demonstrates that persons of ordinary skill in the art have had a reasonably welldefined understanding of the size of a "cell," and Defendants' own evidence uses the term "macrocells" to refer to "conventional size cells." (Dkt. No. 80, Ex. 6, Robin Coombs and Raymond Steele, Introducing Microcells into Macrocellular Networks: A Case Study, 47 IEEE Transactions on Communications 568 (Apr. 1999) (SAMSUNG-0026282); see Muniauction, 532 F.3d at 1326; see also PC Connector, 406 F.3d at 1363 (discussing "conventional" as referring to "technologies existing at the time of the invention").)
The disputed term is thus directed to a cell size smaller than that of any "macrocell" at the time of the invention, and the disputed term sufficiently "inform[s] those skilled in the art about the scope of the invention with reasonable certainty." Nautilus, 572 U.S. at 910. The Court therefore concludes that Defendants have failed to show indefiniteness. See Sonix, 844 F.3d at 1377. Defendants have not presented any alternative proposed construction, and no further construction is necessary.
The Court accordingly hereby construes
(Dkt. No. 80, at 24; Dkt. No. 90-1, at 15; see Dkt. No. 69, Ex. B, at 10; see also Dkt. No. 71, at 23.) The parties submit that this term appears in Claims 5, 6, 13, 14, 23, 24, 33, and 34 of the '638 Patent. (Dkt. No. 69, Ex. B, at 10; Dkt. No. 90-1, at 15.)
Shortly before the start of the January 29, 2019 hearing, the Court provided the parties with the following preliminary construction: "Indefinite" (based on IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005)).
Plaintiff argues that "[j]urors will know exactly what this phrase means—that the add-on base stations are Internet-capable devices that consumers can install on their own." (Dkt. No. 71, at 23.) Plaintiff also argues that "[t]his claim term is not an improper mixed method/apparatus claim (and also has patentable weight) because it contains limitations describing a `structure'— the add-on base station with access to the Internet—by `reciting its capabilities'—the capability to be owned and installed by an entity other than a telephone network operator." (Id., at 24 (citation omitted).)
Defendants respond that "[t]hese limitations are indefinite because they impermissibly mix an apparatus and a method." (Dkt. No. 80, at 24.) In particular, Defendants argue that the claims "do not recite `capable of' or any similar phrase, and instead affirmatively require that the add-on base station `is owned and installed' by an individual or entity." (Id., at 25.)
Plaintiff replies: "The limitation simply recites the plug-and-play nature of the claimed device (which the Patents-in-Suit distinguish from the expensive, static infrastructure associated with conventional macrocells, such as cell towers, that are installed only by telephone service providers). This term places a design limitation on the claimed structure: that the base station be configured for installation by non-telecom carriers." (Dkt. No. 85, at 9.)
At the January 29, 2019 hearing, Plaintiff and Defendants presented no oral arguments as to this term and instead rested on their briefing.
Microprocessor Enhancement Corp. v. Tex. Instruments Inc., 520 F.3d 1367, 1374 (Fed. Cir. 2008).
Claims 5 and 6 of the '638 Patent, for example, recite:
Plaintiff has cited the Federal Circuit's UltimatePointer decision for the proposition that IPXL does not apply where the limitation at issue "reflects the capability of th[e] structure rather than the activities of the user." 816 F.3d at 827. Plaintiff has similarly cited this Court's statement in Motion Games that an "apparatus claim that simply contains functional limitations that describe a structure by reciting its capabilities is not an indefinite mixing of claim forms." Motion Games, LLC v. Nintendo Co., Ltd., No. 6:12-CV-878, 2015 WL 11170167, at *2 (E.D. Tex. Jan. 16, 2015) (Love, J.) (citation and internal quotation marks omitted).
Such authorities are distinguishable because here the above-reproduced claims do not recite a mere capability. Instead, the claims recite that the add-on base station actually "is owned and installed by an individual or entity" (rather than a telephone service provider). This action language in the dependent claims contrasts with, for example, the recitals of "adapted to" in Claim 1 of the '638 Patent, and Claim 1 contains no indication that the add-on base station has already been installed. Thus, at best, "it is unclear whether infringement of [the claim] occurs when one creates a system that allows the user to [own and install the add-on base station], or whether infringement occurs when the user actually [owns and installs the add-on base station]." IPXL, 430 F.3d at 1384; see also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1318 (Fed. Cir. 2011) ("Like the language used in the claim at issue in IPXL (`wherein . . . the user uses'), the language used in Katz's claims (`wherein . . . callers digitally enter data' and `wherein . . . callers provide. . . data') is directed to user actions, not system capabilities."). The same analysis also applies to Claims 13, 14, 23, 24, 33, and 34 of the '638 Patent.
The Court therefore hereby finds that Claims 5, 6, 13, 14, 23, 24, 33, and 34 of the '638 Patent are
(Dkt. No. 69, Ex. B, at 10; Dkt. No. 71, at 25; Dkt. No. 80, at 26; Dkt. No. 90-1, at 15.) The parties submit that this term appears in Claims 8201213 & 39201252 of the '312 Patent. (Dkt. No. 69, Ex. B, at 10; Dkt. No. 90-1, at 16.)
Shortly before the start of the January 29, 2019 hearing, the Court provided the parties with the following preliminary construction: "unique identity and a cryptographic key associated with one another in a certificate issued by a certificate authority."
Plaintiff argues that "Defendants' attempt to limit the unique identifier to `a certificate issued by a certifying authority' has no basis." (Dkt. No. 71, at 26.) Indeed, Plaintiff argues, "there is no mention of a `certifying authority' anywhere in the claims or specification" and "the specification explicitly does not limit the means for achieving the unique identity." (Id. (citing '284 Patent at 2:34201246 & 11:25201226).)
Defendants respond that their proposed construction "reflects the ordinary meaning of this claim phrase in the field of cryptography because cryptographic keys are bound to unique identities by a certificate issued by a certifying authority." (Dkt. No. 80, at 26.) Defendants also argue that the specification is consistent with this interpretation. (Id., at 26-27.)
Plaintiff replies that Defendants' proposed construction "is an attempt to import a limitation into the claim regarding how the binding is accomplished." (Dkt. No. 85, at 9.)
At the January 29, 2019 hearing, the parties presented oral arguments as to this term.
As a threshold matter, the dictionary definitions of "bind" cited by Plaintiff do not pertain to the field of cryptography and are therefore unpersuasive. (See Dkt. No. 71, Ex. G, Microsoft Press Computer Dictionary 50-51 (3d ed. 1997) (BARKAN-00004279-80) ("To associate two pieces of information with one another. The term is most often used with reference to associating a symbol (such as the name of a variable) with some descriptive information (such as a memory address, a data type, or an actual value)."); see also id., Ex. I, IBM Dictionary of Computing 64 (1994) (BARKAN-00004261).)
The disputed term appears in Claims 8 and 39 of the '312 Patent, which recite (emphasis added):
Plaintiff has cited disclosure in the specification that "[v]arious means may be used to achieve the unique identity of each add-on base station":
'284 Patent at 11:6-30 (emphasis added).
The disputed term, however, refers to a "unique identity bound to a cryptographic key" (not merely a "unique identity" in isolation). Defendants have cited disclosure regarding a "digital certificate" that binds a cryptographic key:
'284 Patent at 8:9-20 (emphasis added).
This disclosure suggests that "binding" means something more than Plaintiff's suggestion of merely associating. The claims reinforce this distinction by reciting both "associated" and "bound," thereby implying that those terms have different meanings. See '312 Patent at Cl. 39 ("each respective gateway is associated with a respective unique identity bound to a cryptographic key") (emphasis added); see also id. at Cl. 8 ("said gateway is associated, with a unique identity bound, to a cryptographic key") (emphasis added); Innova/Pure Water, 381 F.3d at 1119 ("when an applicant uses different terms in a claim it is permissible to infer that he intended his choice of different terms to reflect a differentiation in the meaning of those terms").
Defendants have cited extrinsic evidence that cryptographic certificates can be issued by a "certificate authority":
(Dkt. No. 71, Ex. M, Charles R. Severance, Introduction to Networking: How the Internet Works 94-95 (BARKAN-0026553-54).) At the January 29, 2019 hearing, Defendants urged that a certificate authority is necessary for the general public to be able to use the claimed invention as disclosed in the specification. Defendants have also submitted the opinions of their expert in this regard. (See Dkt. No. 80-13, Dec. 21, 2018 Lanning Decl., at ¶¶ 75-77.)
Yet, the specification contains no disclosure of any certificate authority, let alone any disclosure that using a certificate authority is essential to the claimed invention. Thus, although the specification demonstrates that the disputed term uses "bound" to refer to the use of a certificate, Defendants have not shown any definition, disclaimer, or other evidence that would compel requiring a certificate authority.
The Court therefore hereby construes
(Dkt. No. 69, Ex. B, at 11; Dkt. No. 71, at 26; Dkt. No. 80, at 27; Dkt. No. 90-1, at 16.) The parties submit that this term appears in all Claims of the '638 Patent. (Dkt. No. 69, Ex. B, at 11; Dkt. No. 90-1, at 17.)
Shortly before the start of the January 29, 2019 hearing, the Court provided the parties with the following preliminary construction: "repeatedly send updates."
Plaintiff argues that this term "refers to the provision by the base stations of certain geographical and operational-status information to a coordination center." (Dkt. No. 71, at 27.) Further, Plaintiff urges that "[j]urors will readily understand what it means for an update to be `recurrent.'" (Id.) Plaintiff argues that Defendants' proposal of "repeatedly" should be rejected because "the specification is clear that the recurrent updates need not occur with any frequency." (Id.)
Defendants respond that construction is appropriate to preclude Plaintiff from contending that this limitation could be satisfied by a single update. (Dkt. No. 80, at 27-28.)
Plaintiff replies that Defendants' proposal of replacing "recurrent" with "repeated" should be rejected because it adds nothing beyond plain meaning. (Dkt. No. 85, at 10.)
At the January 29, 2019 hearing, Plaintiff and Defendants presented no oral arguments as to this term and instead rested on their briefing.
Plaintiff acknowledges that this term requires transmitting more than one update. (See Dkt. No. 71, at 27.) Defendants do not contend that their proposal requires a fixed interval between updates. (See Dkt. No. 80, Ex. 12, The American Heritage Dictionary of the English Language 1462 (4th ed. 2000) (SAMSUNG-0038714) (defining "recurrent" as "occurring or appearing again or repeatedly").) Defendants' proposed construction thus reflects the agreed-upon meaning of this term, and construction is appropriate to expressly reject any interpretation of the term that would encompass transmitting only a single update.
The Court accordingly hereby construes
(Dkt. No. 69, Ex. B, at 12; Dkt. No. 71, at 28; Dkt. No. 80, at 28; Dkt. No. 90-1, at 17.) The parties submit that this term appears in all Claims of the '638 Patent. (Dkt. No. 69, Ex. B, at 12; Dkt. No. 90-1, at 17.)
Shortly before the start of the January 29, 2019 hearing, the Court provided the parties with the following preliminary construction: "repeatedly issuing an operating license."
Plaintiff argues: "Jurors will understand what it means for a device to be licensed to operate. That the license issuance recurs is likewise readily understandable to a jury." (Dkt. No. 71, at 28.) Plaintiff also argues that Defendants' proposal should be rejected because "[e]ven if it were proper to read exemplary specification terms into the claim (it is not), Defendants' construction would fail because it misreads the specification." (Id.)
Defendants respond that "the term `recurrently' requires repeated instances of conduct." (Dkt. No. 80, at 28.) Defendants further argue that the specification "teaches that an `operating license' has two characteristics: (1) it is an actual document—e.g., a `certificate' or other digital document, and not just an abstract concept like `permission'; and (2) it indicates to the rest of the communication system that the holder of the license is permitted to access the network." (Id., at 28-29.) Defendants urge that their proposed construction "accurately captures both of these aspects of what an `operating license' is in the context of the claims and specification." (Id., at 29.)
Plaintiff replies that "[t]he passages [Defendants] cite define the term certificate, not operating license." (Dkt. No. 85, at 10.)
At the January 29, 2019 hearing, Plaintiff and Defendants presented no oral arguments as to this term and instead rested on their briefing.
Claim 1 of the '638 Patent, for example, recites in relevant part (emphasis added):
The specification discloses:
'284 Patent at 9:34-43 (emphasis added).
Defendants' proposal includes specific features of this particular disclosed embodiment, but these features should not be imported into the claims in the absence of any showing of lexicography or disclaimer. No such showing has been made. See, e.g., CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) ("[T]he 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).
Construction is nonetheless appropriate here, consistent with the construction of the aboveaddressed term "transmit recurrent updates," to expressly reject any interpretation of the term that would encompass issuing only a single operating license.
The Court accordingly hereby construes
(Dkt. No. 69, Ex. B, at 12; Dkt. No. 71, at 29; Dkt. No. 80, at 29; Dkt. No. 90-1, at 18.) The parties submit that this term appears in Claims 1, 2, and 4201218 of the '284 Patent, all Claims of the '312 Patent, and all Claims of the '638 Patent. (Dkt. No. 69, Ex. B, at 12; Dkt. No. 90-1, at 20.)
Shortly before the start of the January 29, 2019 hearing, the Court provided the parties with the following preliminary construction: "configured to."
Plaintiff submits that this term is used "to describe the operational capabilities of the claimed apparatuses—such as the base station controller." (Dkt. No. 71, at 29.) Plaintiff argues that "[b]ecause the jury will understand what it means for the base stations to be `adapted to' achieve that operational capability, there is no need to construe the term." (Id.) Further, Plaintiff argues that "[t]here is nothing in the claim language or specification limiting `adapted to,' or otherwise indicating that the term bears anything other than its plain and ordinary meaning." (Id., at 29.)
Defendants respond by citing Federal Circuit precedents regarding "adapted" and by noting that Plaintiff previously alternatively proposed (in its P.R. 4-2 claim construction disclosures) that "adapted to" means "configured to." (Dkt. No. 80, at 29-30.)
Plaintiff replies that "[t]he goal of [Defendants'] word substitution is to get a narrower scope to exclude devices `capable of' performing recited functions and include those devices presently `configured' to perform such functions." (Dkt. No. 85, at 10.) Plaintiff argues that "Defendants' construction fails because it lacks specification support." (Id.)
At the January 29, 2019 hearing, the parties presented oral arguments as to this term.
Claim 1 of the '284 Patent, for example, recites (emphasis added):
As another example, Claim 1 of the '638 Patent recites in relevant part (emphasis added):
Plaintiff argues that "adapted to" could be interpreted as encompassing potential configuration rather than only actual configuration. Plaintiff cites the decision by the Federal Circuit in Aspex Eyewear, particularly the statement that "[i]n common parlance, the phrase `adapted to' is frequently used to mean `made to,' `designed to,' or `configured to,' but it can also be used in a broader sense to mean `capable of' or `suitable for.'" Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012). Plaintiff has cited no decision, however, in which the Federal Circuit has construed "adapted to" as encompassing mere capability, that is, the mere possibility of being appropriately configured.
On balance, Plaintiff's arguments are unpersuasive, and construction is appropriate to preclude an overly broad reading of "adapted to." See Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1330 (Fed. Cir. 2001) ("[T]hat a device is capable of being modified to operate in an infringing manner is not sufficient, by itself, to support a finding of infringement."); see also Aspex Eyewear, 672 F.3d at 1349 ("Amended claim 23 refers to the arms and magnetic members as `adapted to extend across respective side portions' of a primary frame. In that context, the phrase `adapted to' is most naturally understood to mean that the arms and magnetic members are designed or configured to accomplish the specified objective, not simply that they can be made to serve that purpose."); In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014).
Plaintiff has cited Profectus Technology, LLC v. Huawei Technologies Co., Ltd., No. 6:11-CV-474, 2014 WL 1575719, at *8 (E.D. Tex. Apr. 17, 2014), in which the Court found that the phrase "adapted to" (as part of a larger disputed term) did not require construction. In Profectus, the parties did not dispute whether "adapted to" encompassed mere capability rather than actual configuration. Profectus is therefore distinguishable. Here, construction is appropriate to resolve the particular dispute raised by the parties in the present case.
The Court accordingly hereby construes
The Court adopts the constructions set forth in this opinion for the disputed terms of the patent-in-suit, and in reaching conclusions the Court has considered extrinsic evidence. The Court's constructions thus include subsidiary findings of fact based upon the extrinsic evidence presented by the parties in these claim construction proceedings. See Teva, 135 S. Ct. at 841.
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.
