AMOS L. MAZZANT, III, District Judge.
Before the Court are Plaintiff Orthosie Systems, LLC's ("Orthosie's") Opening Claim Construction Brief (Dkt. #48), Defendant Actsoft, Inc.'s ("Actsoft's") Responsive Claim Construction Brief (Dkt. #54), and Plaintiff's Reply Claim Construction Brief (Dkt. #55). Also before the Court are the parties' July 6, 2017 Joint Claim Construction Statement Per P.R. 4-3 (Dkt. #43) and the parties' September 18, 2017 Joint Claim Construction Statement Per P.R. 4-5(d) (Dkt. #56). The Court held a claim construction hearing on September 26, 2017, to determine the proper construction of the disputed claim terms in United States Patent No. 7,430,471 ("the '471 Patent").
The Court issues this Claim Construction Memorandum Opinion and Order and hereby incorporates-by-reference the claim construction hearing and transcript as well as the demonstrative slides presented by the parties during the hearing. For the following reasons, the Court provides the constructions set forth below.
Plaintiff brings suit alleging infringement of the '471 Patent. The '471 Patent, titled "Method and System for Monitoring a Vehicle," issued on September 30, 2008, and bears an earliest priority date of October 25, 2004. The Abstract of the '471 Patent states:
Defendant submits that Plaintiff has asserted Claims 1, 3, 4, 12, 15, 17, 18, and 26 of the '471 Patent. (Dkt. #54 at p. 1).
Claim construction is a matter of law. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995). The purpose of claim construction is to resolve the meanings and technical scope of claim terms. U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). When the parties dispute the scope of a claim term, "it is the court's duty to resolve it." O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008).
"It is a `bedrock principle' of patent law that `the claims of a patent define the invention to which the patentee is entitled the right to exclude.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). The Court examines a patent's intrinsic evidence to define the patented invention's scope. Id. at 1313-14; Bell Atl. Network Servs., Inc. v. Covad Commc'ns Grp., Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). Intrinsic evidence includes the claims, the rest of the specification, and the prosecution history. Phillips, 415 F.3d at 1312-13; Bell Atl. Network Servs., 262 F.3d at 1267. The Court gives claim terms their ordinary and customary meaning as understood by one of ordinary skill in the art at the time of the invention. Phillips, 415 F.3d at 1312-13; Alloc, Inc. v. Int'l Trade Comm'n, 342 F.3d 1361, 1368 (Fed. Cir. 2003).
Claim language guides the Court's construction of claim terms. Phillips, 415 F.3d at 1314. "[T]he context in which a term is used in the asserted claim can be highly instructive." Id. Other claims, asserted and unasserted, can provide additional instruction because "terms are normally used consistently throughout the patent." Id. Differences among claims, such as additional limitations in dependent claims, can provide further guidance. Id.
"[C]laims `must be read in view of the specification, of which they are a part.'" Id. at 1315 (quoting Markman, 52 F.3d at 979). "[T]he specification `is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.'" Id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex. Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). In the specification, a patentee may define his own terms, give a claim term a different meaning than it would otherwise possess, or disclaim or disavow some claim scope. Phillips, 415 F.3d at 1316. Although the Court generally presumes terms possess their ordinary meaning, this presumption can be overcome by statements of clear disclaimer. See SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343-44 (Fed. Cir. 2001). This presumption does not arise when the patentee acts as his own lexicographer. See Irdeto Access, Inc. v. EchoStar Satellite Corp., 383 F.3d 1295, 1301 (Fed. Cir. 2004).
The specification may also resolve ambiguous claim terms "where the ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of the claim to be ascertained from the words alone." Teleflex, 299 F.3d at 1325. For example, "[a] claim interpretation that excludes a preferred embodiment from the scope of the claim `is rarely, if ever, correct.'" Globetrotter Software, Inc. v. Elan Comput. Grp. Inc., 362 F.3d 1367, 1381 (Fed. Cir. 2004) (quoting Vitronics, 90 F.3d at 1583). But, "[a]lthough the specification may aid the court in interpreting the meaning of disputed language in the claims, particular embodiments and examples appearing in the specification will not generally be read into the claims." Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988); accord Phillips, 415 F.3d at 1323.
The prosecution history is another tool to supply the proper context for claim construction because a patentee may define a term during prosecution of the patent. Home Diagnostics Inc. v. LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) ("As in the case of the specification, a patent applicant may define a term in prosecuting a patent"). The well-established doctrine of prosecution disclaimer "preclud[es] patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution." Omega Eng'g Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). "Indeed, by distinguishing the claimed invention over the prior art, an applicant is indicating what the claims do not cover." Spectrum Int'l v. Sterilite Corp., 164 F.3d 1372, 1378-79 (Fed. Cir. 1988) (quotation omitted). "As a basic principle of claim interpretation, prosecution disclaimer promotes the public notice function of the intrinsic evidence and protects the public's reliance on definitive statements made during prosecution." Omega Eng'g, 334 F.3d at 1324. However, the prosecution history must show that the patentee clearly and unambiguously disclaimed or disavowed the proposed interpretation during prosecution to obtain claim allowance. Middleton Inc. v. 3M Co., 311 F.3d 1384, 1388 (Fed. Cir. 2002). Statements will constitute disclaimer of scope only if they are "clear and unmistakable statements of disavowal." See Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1358 (Fed. Cir. 2003). An "ambiguous disavowal" will not suffice. Schindler Elevator Corp. v. Otis Elevator Co., 593 F.3d 1275, 1285 (Fed. Cir. 2010) (citation omitted).
Although "less significant than the intrinsic record in determining the legally operative meaning of claim language," the Court may rely on extrinsic evidence to "shed useful light on the relevant art." Phillips, 415 F.3d at 1317 (quotation omitted). Technical dictionaries and treatises may help the Court understand the underlying technology and the manner in which one skilled in the art might use claim terms, but such sources may also provide overly broad definitions or may not be indicative of how terms are used in the patent. Id. at 1318. Similarly, expert testimony may aid the Court in determining the particular meaning of a term in the pertinent field, but "conclusory, unsupported assertions by experts as to the definition of a claim term are not useful." Id. Generally, extrinsic evidence is "less reliable than the patent and its prosecution history in determining how to read claim terms." Id.
The parties submitted the following agreement in their July 6, 2017 Joint Claim Construction Statement Per P.R. 4-3 (Dkt. #43), which the Court adopts as agreed-upon:
(Dkt. #43 at p. 1; Dkt. #54 at p. 2; Dkt. #56, Exhibit A at p. 2).
(Dkt. #43, Exhibit A at p. 1; Dkt. #48 at p. 6; Dkt. #54 at pp. 4, 22; Dkt. #55 at p. 5; Dkt. #56, Exhibit A at p. 4).
Plaintiff argues that, based on disclosures in the specification, "[a] proper construction of `received operator identification information' must . . . comprehend both information received by a system at the vehicle and information received by mechanisms separate or independent of the vehicle." (Dkt. #48 at p. 7). Plaintiff also argues that Defendant's proposal "merely adds passive-voice surplus that muddles — not clarifies — the disputed term." (Dkt. #48 at p. 7).
Defendant responds that "[i]t is not clear from the term itself, in the context of the claims, what received the `operator identification information' or where such `operator identification information' was received." (Dkt. #54 at p. 4). Defendant argues that its proposal is supported by the specification as well as by the context in which the disputed term appears in the claims. (Dkt. #54 at p. 5).
Plaintiff replies that because the claim recites "any" received operator identification information, "[t]he use of `any' [rather than `the'] indicates the possibility of a variety of sources, as well as a variety of information types — a broader construction than that proposed by the Defendant." (Dkt. #55 at p. 6). Plaintiff argues that "[p]roper construction of `received operator identification information' must . . . comprehend both information received by a system at the vehicle and information received by mechanisms separate or independent of the vehicle." (Dkt. #55 at p. 6).
At the September 26, 2017 hearing, Plaintiff argued that Defendant's proposal would improperly exclude the "key check-out" embodiment disclosed in the specification. See '471 Patent at 4:4-14. Defendant responded that this embodiment, cited by Plaintiff, is not covered by the claims at issue because whereas this embodiment discloses checking out a key at the control center, Claims 1 and 15 recite transmitting received operator identification information to the control center. Defendant also argued that this disclosed embodiment is incomprehensible because, for example, the disclosure contains an unmatched parenthesis.
Claim 1 of the '471 Patent recites:
'471 Patent at 6:18-29 (emphasis added).
The recital of "transmitting any received operator identification information to the control center" implies that the operator identification information was received somewhere other than the control center. Defendant's proposed construction, however, goes much farther by requiring that the information is "received by a monitoring system on or in the vehicle."
Defendant has not adequately supported such a narrow construction. On the contrary, the specification appears to contemplate that operator identification information could be received by a system that is outside of the vehicle:
'471 Patent at 4:4-14 (emphasis added).
As a threshold matter, Defendant argued at the September 26, 2017 hearing that this disclosure is incomprehensible because of the presence of an unmatched parenthesis. Although this indeed appears to be a typographical error, a fair reading is that either the apparently errant parenthesis can be ignored or, alternatively, it can be presumed that a closing parenthesis should appear at the end of the sentence. In either case, Defendant has not persuasively demonstrated that this error renders the passage incomprehensible.
Defendant also argues that this passage from the specification "sheds little, if any, light at all on the meaning of the claim term `received operator identification information'" because this passage "does not disclose what receives `operator information,' where such information is received, or the mechanism by which it is received." (Dkt. #54 at p. 6). Regardless of whether such disclosures are present or not, however, the above-reproduced passage explains that the mechanisms disclosed as being used by a monitoring system on or in a vehicle can alternatively be "located separately and/or operat[ed] independently of the vehicle." See '471 Patent at 4:4-14 (emphasis added).
Finally, as to Defendant's argument at the September 26, 2017 hearing that the above-reproduced disclosed embodiment is expressly excluded by the claims, Defendant's argument appears to assume that this passage from the specification discloses checking out a key at the control center. Therefore, Defendant has urged, this disclosure is inconsistent with the recital in the claims of transmitting to the control center. However, this passage discloses merely that the checking out of a key is "made known to the control center." Id. at 4:7 (emphasis added). As a result, Defendant has not shown any inconsistency between this disclosure and the claims at issue.
On balance, the above-reproduced disclosure demonstrates that a "monitoring system on or in the vehicle" is merely one embodiment that, accordingly, should not be imported into the construction. See Constant, 848 F.2d at 1571; see also Phillips, 415 F.3d at 1323. The Court therefore expressly rejects Defendant's proposed construction.
The Court accordingly construes
(Dkt. #43, Exhibit A at p. 2; Dkt. #48 at p. 8; Dkt. #54 at pp. 7, 22; Dkt. #55 at p. 7; Dkt. #56, Exhibit A at p. 5).
Plaintiff argues that "[t]he dispute for this term stems from defendant's improper attempt to read specific and unnecessary limitations from the specification into the term, and the fact that defendant's proposal merely rewords the term without clarifying it." (Dkt. #48 at p. 8). Plaintiff urges that "there is no logical reason to assume or believe that a person skilled in the field of the invention would look at the '471 patent — with its multiple references to `time interval' — and be confused, but then somehow have that confusion resolved by `time period.'" (Dkt. #48 at p. 9). "Furthermore," Plaintiff argues, "the examples from the specification generally refer to `time interval' and `time constraints' in a broader context, while references to `predetermined time interval' appear in the context of specific examples." (Dkt. #48 at p. 9).
Defendant responds that its proposal properly "clarifies that `a time interval' is not an open-ended time period, but rather a time of particular duration determined in advance." (Dkt. #54 at p. 8). Defendant argues that its proposed construction "is explicitly supported by the intrinsic evidence of the '471 Patent specification." (Dkt. #54 at p. 8) (citing '471 Patent at 2:26-39, 3:53-61, 4:20-29). Defendant emphasizes that "[a]ll the examples of `time intervals' in the specification are predetermined time periods." (Dkt. #54 at p. 9).
Plaintiff replies that "there are a number of non-`predetermined' time intervals that could fall within the scope of this term — leading to the proper conclusion that this term should be broadly construed to comprehend time intervals that are not predetermined as well as those that are." (Dkt. #55 at p. 7).
The parties appear to essentially agree that the following disclosures in the specification are relevant to this disputed term:
'471 Patent at 2:29-54, 3:53-61, 4:20-29.
The third above-reproduced passage refers to whether information is received "within a predetermined time interval of the activation." Id. at 4:24-25. Likewise, the first above-reproduced passage states that "[t]he time interval can include a predetermined time radius extending before and after the detection." Id. at 2:31-33. These explicit disclosures of "predetermined" suggest that a "time interval" is not necessarily "predetermined." Cf. Phillips, 415 F.3d at 1314 ("the claim in this case refers to `steel baffles,' which strongly implies that the term `baffles' does not inherently mean objects made of steel").
Defendant has also argued that dependent Claims 3 and 17 demonstrate that the "time interval" must be predetermined because otherwise there would be no way to determine when the recited alarm should trigger. (Dkt. #54 at p. 9). Defendant further clarified at the September 26, 2017 hearing that Defendant's proposal of "predetermined" means determined in advance of performing the recited method steps. Plaintiff responded that Defendant is presenting a false dichotomy in this regard because time intervals are not necessarily only either predetermined or indeterminate.
On balance, Claims 3 and 17 do not recite or imply any limitation that would require the time interval to be determined before any method step is performed. Defendant has argued that such an interpretation is necessary for operability, but Defendant has not made an adequate showing in this regard. For example, Defendant has not demonstrated that the time interval could not be determined "on-the-fly," so to speak, such that the time interval could be adjusted based on events that occur during operation.
The Court therefore expressly rejects Defendant's proposed construction. No further construction is necessary. See U.S. Surgical, 103 F.3d at 1568 ("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, 521 F.3d at 1362 ("[D]istrict courts are not (and should not be) required to construe every limitation present in a patent's asserted claims."); Summit 6, LLC v. Samsung Elecs. Co., Ltd., 802 F.3d 1283, 1291 (Fed. Cir. 2015).
The Court accordingly construes
(Dkt. #43, Exhibit A at p. 2; Dkt. #48 at p. 11; Dkt. #54 at pp. 10, 22; Dkt. #55 at p. 8; Dkt. #56, Exhibit A at p. 6).
Plaintiff argues that "defendant's proposal adds unnecessary and limiting language that does nothing to clarify the disputed term." (Dkt. #48 at p. 11). Plaintiff also submits that "[i]f `the presence of a landmark' requires clarification, then `a landmark within a predetermined distance' is the construction that is most consistent with the specification and the original claim language." (Dkt. #48 at p. 12). Further, Plaintiff argues, Defendant's proposal "inserts unnecessary passive voice language that does nothing to meaningfully clarify the term." (Dkt. #48 at p. 12).
Defendant responds that "[w]ithout clarification of the what, where, and when of the claimed detecting, step [E] of claim 1 is hopelessly indefinite." (Dkt. #54 at p. 11). Defendant argues that its proposed construction is "explicitly supported by the intrinsic evidence of the '471 Patent specification." (Dkt. #54 at p. 11) (citing '471 Patent at 3:9-21).
Plaintiff replies that "[t]he `on or in' limitation [proposed by Defendant] precludes a large number of possible embodiments that would otherwise satisfy the original `at the vehicle' limitation." (Dkt. #55 at p. 9).
At the September 26, 2017 hearing, Defendant reiterated its argument that clarification is required as to what is doing the recited detecting.
Claim 1 of the '471 Patent recites:
'471 Patent at 6:18-29 (emphasis added).
The disputed term itself refers to "detecting at the vehicle." Nonetheless, Defendant's proposal of "on or in" is narrower than "at." Admittedly, the specification discloses an embodiment in which a "parking stall will provide location and/or identification information of the parking stall to the monitoring system on or in the vehicle." '471 Patent at 3:17-19 (emphasis added). Nonetheless, this is merely one embodiment that, accordingly, should not be imported into the construction. See Constant, 848 F.2d at 1571; see also Phillips, 415 F.3d at 1323. Likewise, Defendant's proposal of requiring a "monitoring system" lacks support in the claim language, and such a limitation should not be imported from the specification. See id.
At the September 26, 2017 hearing, Defendant urged that Plaintiff's opening brief conceded that the detecting is done by a monitoring system on or in the vehicle. Plaintiff responded that no such concession appears in Plaintiff's opening brief, and the Court finds none in Plaintiff's opening brief, Plaintiff's overview of the technology, or in Plaintiff's discussion of the present disputed term. (See, e.g., Dkt. #48 at p. 2 ("The system of the '471 patent detects movement or activation of a vehicle via a monitoring system installed at the vehicle."); Dkt. #48 at p. 12 ("The act of detecting is performed at the vehicle.")).
As to Defendant's proposal of the landmark being within a predetermined distance "from the vehicle," Defendant's proposal in this regard is appropriate based on the context of the disputed term as a whole. See Phillips, 415 F.3d at 1314 ("In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words."); see also TQP Dev., LLC v. Merrill Lynch & Co., Inc., No. 2:08-CV-471, 2012 WL 1940849, at *2 (E.D. Tex. May 29, 2012) (Bryson, J.) ("some construction of the disputed claim language will assist the jury to understand the claims"). At the September 26, 2017 hearing, Plaintiff maintained that Defendant's proposal of "from the vehicle" is superfluous, but Plaintiff did not otherwise appear to have any substantive disagreement with this interpretation. Plaintiff has stated: "If the act of `detecting' is being performed at the vehicle, then context dictates that `within a predetermined distance' is in reference to the vehicle also." (Dkt. #48 at p. 12).
The Court therefore construes
(Dkt. #43, Exhibit A at p. 2; Dkt. #48 at p. 13; Dkt. #54 at pp. 12-13, 22; Dkt. #55 at p. 9; Dkt. #56, Exhibit A at p. 8).
Plaintiff submits that "[t]he dispute here duplicates the arguments already presented for the first and second disputed terms [(`received operator identification information' and `received within a time interval')]." (Dkt. #48 at p. 13; see Dkt. #55 at p. 6).
Defendant similarly submits that this term "requires construction for the same reasons that the terms `received operator identification information' and `received within a time interval' require construction." (Dkt. #54 at p. 13).
Likewise, at the September 26, 2017 hearing, the parties agreed that no separate argument was needed as to this disputed term.
For substantially the same reasons set forth above as to the terms "received operator identification information" and "received within a time interval," the Court construes
(Dkt. #43, Exhibit A at p. 3; Dkt. #48 at p. 14; Dkt. #54 at pp. 14, 15, 22; Dkt. #55 at p. 10; Dkt. #56, Exhibit A at p. 9).
Plaintiff argues: "The dispute for this term stems, once again, from defendant's improper attempt to read unnecessary limitations from the specification into the term, and the fact that defendant's proposal passively and improperly rewords the term without clarifying it." (Dkt. #48 at p. 14). For example, Plaintiff argues that "[t]ransmitting is broader than merely sending." (Dkt. #48 at p. 14) (citing '471 Patent at 2:55-65).
Defendant responds: "The use of `transmitting location coordinates,' in the context of the claim, does not identify what is doing the transmitting or where the thing doing the transmitting is located. Without clarifying the what and the where of the transmitting step, the scope of claims 4 and 18 is indefinite." (Dkt. #54 at p. 14). Defendant argues that its proposed construction "finds explicit intrinsic support in the '471 Patent specification." (Dkt. #54 at p. 15) (citing '471 Patent at 2:55-57). Finally, as to Plaintiff's argument that "transmitting" is broader than "sending," Defendant alternatively "agrees to use `transmitting' in the construction of this claim term." (Dkt. #54 at p. 15).
Plaintiff replies that Defendant's alternative proposal is "surplusage accomplishing nothing in the way of clarification for one skilled in the art." (Dkt. #55 at p. 11).
At the September 26, 2017 hearing, Defendant further argued that the transmitting must be performed by the disclosed monitoring system because otherwise the claims would ensnare old prior art involving, for example, a person reading coordinates and calling them in (using some form of wireless communication).
Claim 4 of the '471 Patent, for example, depends from Claim 3, which in turn depends from Claim 1. Claims 1, 3, and 4 of the '471 Patent recite:
'471 Patent at 6:18-30, 39-45 (emphasis added).
The specification discloses that a monitoring system can transmit location information, such as geographic coordinates, or a signal itself can be used to triangulate a location:
'471 Patent at 2:55-3:7 (emphasis added).
Defendant argues that Plaintiff agrees that location information is transmitted by a "monitoring system" because Plaintiff stated as follows in its opening brief: "The `transmitting' performed by the monitoring system is actually a relay of coordinates sent from the GPS system." (Dkt. #54 at p. 18) (quoting Dkt. #48 at pp. 14-15). Plaintiff was referring, however, to "the excerpt of the specification" cited by Defendant. (See Dkt. #48 at pp. 14-15). Thus, no concession or agreement is apparent as to the meaning of this disputed term.
On balance, Defendant's proposal of "the monitoring system in, on, or near the vehicle" should not be imported from the specification into the construction. See Constant, 848 F.2d at 1571; see also Phillips, 415 F.3d at 1323. Also of note, the claims of the '471 Patent are method claims, and Defendant has not shown any limitation in the claims requiring the step of "transmitting location coordinates" to be performed by any particular structure. See Cox Commc'ns, Inc. v. Sprint Commc'n Co. LP, 838 F.3d 1224, 1229 (Fed. Cir. 2016) ("All of the asserted claims are method claims, and the point of novelty resides with the steps of these methods, not with the machine that performs them."), cert. denied, 137 S.Ct. 2267 (2017); cf. Microprocessor Enhancement Corp. v. Tex. Instruments Inc., 520 F.3d 1367, 1374 (Fed. Cir. 2008) ("A single patent may include claims directed to one or more of the classes of patentable subject matter, but no single claim may cover more than one subject matter class. IPXL Holdings[, LLC v. Amazon.com, Inc.], 430 F.3d [1377,] 1384 [(Fed. Cir. 2005)] (holding indefinite a claim covering both an apparatus and a method of using that apparatus).").
The Court therefore expressly rejects Defendant's proposed construction. No further construction is necessary. See U.S. Surgical, 103 F.3d at 1568 ("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, 521 F.3d at 1362 ("[D]istrict courts are not (and should not be) required to construe every limitation present in a patent's asserted claims."); Summit 6, 802 F.3d at 1291.
The Court accordingly construes
(Dkt. #43, Exhibit A at p. 3; Dkt. #48 at p. 15; Dkt. #54 at pp. 16, 22; Dkt. #55 at p. 11).
Plaintiff argued that "the difference between `co-located with' and `located on or in' — for the purposes of two dependent claims — is not of sufficient materiality to merit the time and resources of the Court." (Dkt. #48 at p. 15). Alternatively, Plaintiff argued that "the defendant's proposal is unnecessary, and conflicts with embodiments disclosed in the '471 patent specification." (Dkt. #48 at p. 15).
Defendant responded that construction is necessary because "[t]he use of `a Global Positioning System receiver co-located with the vehicle', in the context of the claim, does not clearly identify where the Global Positioning System receiver is located." (Dkt. #54 at p. 16).
Plaintiff replied: "While Plaintiff still contends that Defendant's proposal[] does nothing to actually clarify the disputed term, Plaintiff is willing to agree to the Defendant's modified proposal." (Dkt. #55 at p. 11).
Based on this agreement between the parties (see id.; see also Dkt. #56, Exhibit A at p. 3), the Court hereby construes
(Dkt. #43, Exhibit A at p. 3; Dkt. #48 at p. 17; Dkt. #54 at pp. 18, 22; Dkt. #55 at pp. 11-12; Dkt. #56, Exhibit A at p. 10).
Plaintiff argued that "construction of this single choice — appearing in a list of choices embedded in two dependent claims — is not of sufficient materiality to merit the time and resources of the Court." (Dkt. #48 at p. 17). Alternatively, Plaintiff argued that "defendant has simply restated plain language in a manner that makes the disputed term more — not less — difficult to understand." (Dkt. #48 at p. 17). Plaintiff also argued that the meaning of the disputed term is clear in light of context provided by disclosure in the specification. (Dkt. #48 at pp. 17-18) (citing '471 Patent at 3:36-48).
Defendant responded that its proposed construction "provides the required clarity" for this disputed term, which Defendant argued would otherwise be indefinite. (Dkt. #54 at p. 18).
Plaintiff replied that "Defendant's proposal does not clarify the disputed term — rather, it opens the term up to numerous ambiguities that were not present in the original language." (Dkt. #55 at p. 12).
At the September 26, 2017 hearing, the parties reached agreement that this term should be construed to mean "information about the vehicle, as opposed to the vehicle's activity or mechanical or operational status."
The Court therefore adopts the parties' agreement that
(Dkt. #43, Exhibit A at p. 4; Dkt. #48 at p. 18; Dkt. #54 at pp. 20, 22; Dkt. #55 at p. 12; Dkt. #56, Exhibit A at p. 7).
Plaintiff argues: "The dispute here stems from the same improprieties in the defendant's proposal that permeate its previous proposals." (Dkt. #48 at p. 18). Plaintiff urges that "the defendant's proposal offers clarification where none is needed, with language that doesn't clarify." (Dkt. #48 at p. 19).
Defendant responds: "The use of `detecting at the landmark the presence of a vehicle', in the context of the claim, does not identify what is doing the detecting, where the thing doing the detecting is located, or when the detecting occurs. Without clarification of the what, where, and when of the claimed detecting, step [E] is hopelessly indefinite." (Dkt. #54 at p. 20). Defendant argues that its proposal is "explicitly supported by the intrinsic evidence of the '471 Patent specification." (Dkt. #54 at p. 20) (citing '471 Patent at 3:21-28).
Plaintiff replies: "As noted in Plaintiff's [Opening] Brief, the extra language of the Defendant's proposal adds nothing substantive for one skilled in the art." (Dkt. #55 at p. 13).
Claim 15 of the '471 Patent recites:
'471 Patent at 7:24-36 (emphasis added).
The parties have cited the following disclosure in the specification:
'471 Patent at 3:21-28 (emphasis added).
Substantially the same analysis applies here as for the above-discussed analogous term "detecting at the vehicle the presence of a landmark" in Claim 1 of the '471 Patent. The disputed term itself refers to "detecting at the landmark," so Defendant's proposal of "on, in, or at" is superfluous and would tend to confuse rather than clarify the scope of the claims. At the September 26, 2017 hearing, upon inquiry, Defendant had no objection to replacing "on, in, or at" with simply "at."
Nonetheless, Plaintiff acknowledged that "the presence of a vehicle at a landmark may be understood as a vehicle within a predetermined distance of that landmark." (Dkt. #48 at p. 20). Plaintiff also states that "one skilled in the field of the invention" "would understand that a device was utilized — and the landmark itself was not doing the detecting." (Dkt. #48 at p. 19). At the September 26, 2017 hearing, Plaintiff argued that the landmark could itself be a device, such as a tollway gantry. On balance, however, Defendant's proposal of "by a device at a landmark" is sufficiently clear in this regard and will assist the finder of fact in understanding the claim. See TQP, 2012 WL 1940849, at *2 (Bryson, J.) ("some construction of the disputed claim language will assist the jury to understand the claims").
The Court therefore construes
The Court adopts the constructions set forth in this opinion for the disputed terms of the patents-in-suit. The parties are ordered that they may not refer, directly or indirectly, to each other's claim construction positions in the presence of the jury. Likewise, the parties are ordered to refrain from mentioning any portion of this opinion, other than the actual definitions adopted by the Court, in the presence of the jury. Any reference to claim construction proceedings is limited to informing the jury of the definitions adopted by the Court.
