ROY S. PAYNE, Magistrate Judge.
On May 4, 2017, the Court held a hearing to determine the proper construction of disputed claim terms in United States Patents No. 8,559,369 and 9,042,306. Having reviewed the arguments made by the parties at the hearing and in their claim construction briefing (Dkt. Nos. 45, 47 & 52),
Plaintiff Barkan Wireless Access Technologies, L.P. ("Plaintiff" or "Barkan") has alleged infringement of United States Patents No. 8,559,369 ("the '369 Patent") and 9,042,306 ("the '306 Patent") (collectively, the "patents-in-suit," sometimes referred to as the "Asserted Patents") by Defendant Cellco Partnership d/b/a Verizon Wireless ("Defendant" or "Verizon"). Plaintiff submits that "[t]he patents include various claims directed to mobile devices (e.g., mobile phones), cellular network systems, and methods of providing or using mobile hotspot capabilities." Dkt. No. 45 at 1.
The '369 Patent and the '306 Patent are both titled "Wireless Internet System and Method." The '369 Patent issued on October 15, 2013, and bears an earliest priority date of February 22, 2006. The '306 Patent is a continuation of the '369 Patent, and therefore the patents-in-suit share a common specification. The Abstracts of the '369 Patent and the '306 Patent are also the same and state:
In their briefing, the parties have cited primarily the specification of the '306 Patent.
Shortly before the start of the May 4, 2017 hearing, the Court provided the parties with preliminary constructions with the aim of focusing the parties' arguments and facilitating discussion. Those preliminary constructions are set forth below within the discussion for each term.
"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, 415 F.3d at 1312 (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). 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, 135 S. Ct. at 841 (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 determine the meaning of the claims, courts start by considering the intrinsic evidence. See Phillips, 415 F.3d at 1313; see also C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc'ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the specification, and the prosecution history. See Phillips, 415 F.3d at 1314; C.R. Bard, 388 F.3d at 861. Courts give claim terms their ordinary and accustomed meaning as understood by one of ordinary skill in the art at the time of the invention in the context of the entire patent. Phillips, 415 F.3d at 1312-13; accord Alloc, Inc. v. Int'l Trade Comm'n, 342 F.3d 1361, 1368 (Fed. Cir. 2003).
The claims themselves provide substantial guidance in determining the meaning of particular claim terms. Phillips, 415 F.3d at 1314. First, a term's context in the asserted claim can be very instructive. Id. Other asserted or unasserted claims can aid in determining the claim's meaning because claim terms are typically used consistently throughout the patent. Id. Differences among the claim terms can also assist in understanding a term's meaning. Id. For example, when a dependent claim adds a limitation to an independent claim, it is presumed that the independent claim does not include the limitation. Id. at 1314-15.
"[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 (en banc)). "[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.'" Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); accord Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). This is true because a patentee may define his own terms, give a claim term a different meaning than the term would otherwise possess, or disclaim or disavow the claim scope. Phillips, 415 F.3d at 1316. In these situations, the inventor's lexicography governs. Id. The specification may also resolve the meaning of 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. But, "[a]lthough the specification may aid the court in interpreting the meaning of disputed claim language, particular embodiments and examples appearing in the specification will not generally be read into the claims." Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting 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 patent applicant may also define a term in prosecuting 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."). "[T]he prosecution history (or file wrapper) limits the interpretation of claims so as to exclude any interpretation that may have been disclaimed or disavowed during prosecution in order to obtain claim allowance." Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985).
Although extrinsic evidence can be useful, it is "less significant than the intrinsic record in determining the legally operative meaning of claim language." Phillips, 415 F.3d at 1317 (citations and internal quotation marks omitted). Technical dictionaries and treatises may help a court understand the underlying technology and the manner in which one skilled in the art might use claim terms, but technical dictionaries and treatises may provide definitions that are too broad or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert testimony may aid a court in understanding the underlying technology and determining the particular meaning of a term in the pertinent field, but an expert's conclusory, unsupported assertions as to a term's definition are entirely unhelpful to a court. Id. Generally, extrinsic evidence is "less reliable than the patent and its prosecution history in determining how to read claim terms." Id.
The parties reached agreement on constructions as stated in their February 14, 2017 Patent Rule 4-3 Joint Claim Construction and Pre-Hearing Statement (Dkt. No. 41 at 1) and their April 20, 2017 Joint Patent Rule 4-5(d) Claim Construction Chart (Dkt. No. 53, Ex. A at 2). Those agreements are set forth in Appendix A to the present Claim Construction Memorandum and Order.
Dkt. No. 45 at 2; Dkt. No. 47 at 4; Dkt. No. 53, Ex. A at 2-4. The parties submit that these terms appear in Claims 1, 9, 16, 17, 19, and 43 of the '306 Patent and Claim 1 of the '369 Patent. Id.
Shortly before the start of the May 4, 2017 hearing, the Court provided the parties with the following preliminary construction: "proxy server" means "an intermediate server that accepts requests from the device and acts on behalf of the device."
Plaintiff argues that Defendant's proposal should be rejected because "[t]he intrinsic record does not require that a `proxy server' make requests that appear to originate from an intermediate server." Dkt. No. 45 at 3.
Defendant responds that "the established meaning of a `proxy server . . . act[ing] as a proxy' at the time of invention is a server that protects privacy by hiding the origin of a request, and this is how the specification uses the term." Dkt. No. 47 at 4-5. Defendant argues that "[Plaintiff's] construction reduces the proxy server to a mere `intermediary' server, ignoring the term's established meaning and excluding the claimed function of `acting as a proxy.'" Id. at 7.
Plaintiff replies that "[t]he proxy server may (but need not) replace the IP address of the requesting entity according to claim 24 of the '306 patent." Dkt. No. 52 at 2. Further, Plaintiff argues, "even where replacement of the IP address occurs, replacing the IP address does not prevent the data packets from containing other information that identifies the second computing device." Id.
At the May 4, 2017 hearing, Plaintiff argued that the claims set forth no need for a proxy server to provide a client with anonymity. Defendant responded that the specification emphasizes privacy as "a vital aspect of the new technology" and as "important." See '306 Patent at 6:35, 9:40-41, 10:20-25 & 14:36.
Claim 16 of the '306 Patent, for example, recites in relevant part:
Plaintiff has argued that dependent Claim 23 of the '306 Patent demonstrates that "a proxy server may simply forward data packets without making the requests appear to originate from an intermediate server" (Dkt. No. 45 at 4), but Plaintiff has not shown that the "proxy server" recited in independent Claim 16 need have only the functionality set forth in dependent Claim 23.
Nonetheless, Plaintiff has cited dependent Claim 24 of the '306 Patent as well as Claim 23, and Claims 23 and 24 recite (emphasis added):
The recital of such "replac[ing]" in a dependent claim weighs at least somewhat against imposing such a limitation in the independent claim. See Phillips, 415 F.3d at 1315 ("the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim").
Turning to the specification, several disclosures refer to a proxy forwarding packets and to a proxy protecting privacy:
'306 Patent at 13:23-25, 14:49-52 & 15:1-3; see id. at 6:49-53 (similar). Plaintiff has also cited a disclosure that analogizes using a "proxy" to using "mobile IP":
Id. at 29:32-39 (emphasis added). The specification describes "Mobile IP" as using a "care-of IP address":
Id. at 4:13-33. The disclosure regarding Mobile IP thus does not require making requests appear to originate from the intermediate server. This passage discloses that "[f]or packets originating from the STA to the Internet, the STA can tunnel the packets to the Mobile-IP server, which replaces the IP address with the care-of address," not the IP address of the Mobile-IP server. Id. at 4:27-29 (emphasis added). Indeed, the disclosed purpose of Mobile IP is to facilitate roaming, not to provide anonymity.
Thus, the specification indicates that proxy servers can be useful not only for providing privacy but also for keeping track of a mobile device and also perhaps for improving handovers. See id. at 4:13-33 & 29:32-39 (quoted above); see also id. at 29:57-30:17; Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 908 (Fed. Cir. 2004) ("The fact that a patent asserts that an invention achieves several objectives does not require that each of the claims be construed as limited to structures that are capable of achieving all of the objectives.").
On balance, Defendant has not demonstrated any sufficient basis in the specification for requiring that a "proxy server" must make requests appear to originate from the intermediate server rather than directly from the device.
As to extrinsic evidence, Plaintiff has submitted a Wikipedia entry for the term "proxy server" (Dkt. No. 45 at Ex. E), but Plaintiff has not demonstrated that this evidence is contemporaneous with the filing of the patents-in-suit or is otherwise relevant. See Markman, 52 F.3d at 986 ("[T]he focus is on the objective test of what one of ordinary skill in the art at the time of the invention would have understood the term to mean."). Although Plaintiff submits that the Wikipedia entry cites a 1994 document (Dkt. No. 52 at 3), the evidence that Plaintiff is attempting to submit is the Wikipedia entry, not the 1994 document cited therein. See Dkt. No. 45 at Ex. C.
Defendant has submitted an excerpt of a textbook that discusses "proxy service firewalls" that "act as go-betweens for the network and the Internet" and that "replac[e] the IP address on the outgoing packets with their own address":
Dkt. No. 47, Ex. 3, Diane Barrett, et al., Computer Networking Illuminated 554 (2005). Of note, this passage refers to a "firewall," not a proxy server.
Defendant has also submitted a technical dictionary definition of "proxy" as follows:
Id., Ex. 2, Newton's Telecom Dictionary 677 (21st ed. 2005). Although this definition states that a "request appears to originate from the gateway running the proxy" rather than from the client, this definition also cites an accompanying definition of "Proxy Server" that states as follows:
According to Microsoft, a proxy server has the following advantages:
Id. This definition reinforces the above-cited intrinsic evidence that a proxy server can provide many different functions.
As a whole, the extrinsic evidence submitted by Defendant is not inconsistent with finding that a "proxy server" may merely accept requests from a client and act on behalf of the client. Defendant has not established that "replacing the IP address on the outgoing packets with their own address"
The Court therefore hereby construes
Dkt. No. 45 at 5; Dkt. No. 47 at 9 & 12; Dkt. No. 53, Ex. A at 4. The parties submit that this term appears in Claims 1, 16, 17, 24, 26, 34, 35, 43, 48, 51, 60, and 61 of the '306 Patent. Id.
Shortly before the start of the May 4, 2017 hearing, the Court provided the parties with the following preliminary construction: "encapsulate data traffic."
Plaintiff argues that "[t]he claim language supports that the tunneling of data traffic, as that term is used in the claims, does not necessarily need to be accompanied by a secure path, as the claim separately recites that the data traffic is secure." Dkt. No. 45 at 5. Further, Plaintiff argues, "[t]he claim language also reveals that the tunneling of data traffic, as that term is used in the claims, need not occur between two end points." Id. at 6.
Defendant responds that surrounding claim language, as well as disclosures in the specification, demonstrate that the disputed term refers to data security, not to wrapping or encapsulating. Dkt. No. 47 at 9.
Plaintiff replies by reiterating that "the claim separately recites that the data traffic is secure." Dkt. No. 52 at 4 (citing '306 Patent at Claim 1). Plaintiff urges also that Defendant's proposal should be rejected because "the secure path is smaller than the tunnel." Dkt. No. 52 at 4.
At the May 4, 2017 hearing, Defendant argued as to Claim 1 of the '306 Patent, for example, that the "tunnel" forms a secure path from the "given device" to the proxy server. Plaintiff responded that the claim language itself recites only that data traffic is "secure from said computing device and first AP," which Plaintiff argued means that the "secure" limitation does not include the "given device" but rather begins "from" the computing device and extends to the proxy server. As to whether "tunneling" requires creating a secure path, Defendant argued that although there are multiple types of tunneling, the claims recite that the type of tunneling claimed is tunneling for security. Defendant also noted that some of the Figures in the patents-in-suit refer to encryption.
As a threshold matter, Plaintiff's argument that tunneling need not be from one "end point" to another "end point" is moot in light of Defendant's above-noted alternative proposed construction (submitted in Defendant's response brief). See Dkt. No. 47 at 11-12.
Claim 16 of the '306 Patent, for example, recites (emphasis added):
The separately recited limitation that "the data traffic is secure" weighs against Defendant's proposal that the term "tunnel data traffic" requires creating a "secure path." See, e.g., Primos, Inc. v. Hunter's Specialties, Inc., 451 F.3d 841, 848 (Fed. Cir. 2006) ("[T]he terms `engaging' and `sealing' are both expressly recited in the claim and therefore `engaging' cannot mean the same thing as `sealing'; if it did, one of the terms would be superfluous.").
In some instances, the specification refers to using tunneling to provide security or to protect privacy:
'306 Patent at 6:35-53 & 15:1-8 (emphasis added); see id. at 14:35-64 (similar); see also id. at 16:26-27 ("Preserve privacy using tunneling 485 to a trusted network site for sensitive traffic").
Nonetheless, Defendant has not shown that the specification uses the term "tunnel" necessarily with reference to creating a secure path. Instead, creating a secure path is a specific feature of particular embodiments that should not be imported into the claims. See Phillips, 415 F.3d at 1323.
As to extrinsic evidence, the parties have submitted competing technical dictionary definitions (cited below). In general, "heavy reliance on the dictionary divorced from the intrinsic evidence risks transforming the meaning of the claim term to the artisan into the meaning of the term in the abstract, out of its particular context, which is the specification." See Phillips, 415 F.3d at 1321. Nonetheless, technical dictionaries in particular may be of assistance. See id. at 1318 ("We have especially noted the help that technical dictionaries may provide to a court to better understand the underlying technology and the way in which one of skill in the art might use the claim terms.") (citation and internal quotation marks omitted).
Plaintiff has submitted a technical dictionary definition of "tunnel" that refers to encapsulating and that does not refer to a secure path:
Dkt. No. 45, Ex. F, Microsoft Computer Dictionary 532 (5th ed. 2002).
Defendant has submitted a competing definition of "tunneling" that refers to providing a secure path:
Dkt. No. 47, Ex. 2, Newton's Telecom Dictionary 677 (21st ed. 2005).
On balance, the technical dictionary definition submitted by Defendant pertains to a specific secure "VPN" context that does not warrant importing a "secure path" limitation into the meaning of "tunnel." Further, as quoted above in Claim 16 of the '306 Patent, for example, the claims separately recite limitations as to how "the data traffic is secure."
Because the above-discussed analysis relies in part upon the recital that "the data traffic is secure," and because the parties disputed the meaning of this language at the May 4, 2017 hearing, the Court here resolves the dispute. At the May 4, 2017 hearing, the parties addressed Claim 1 of the '306 Patent, which recites in relevant part (emphasis added):
Plaintiff argued that the "secure" limitation does not apply to data traffic from the given device to the computing device. Plaintiff's interpretation of "secure from" as setting forth a starting point is not supported by the context in which this language appears. Notably, the limitation "the data traffic is secure from said computing device and first AP" is not followed by any recitation of where the data traffic is secure to. Thus, a better reading of this usage of "secure from" is that the data traffic passing from the given device to the proxy server is secure "from" the computing device and the first AP in the sense that the data cannot be accessed by the computing device or the first AP. Substantially the same analysis applies to all of the "data traffic is secure" limitations in the independent claims of the '306 Patent.
The Court thus hereby construes
Dkt. No. 45 at 7; Dkt. No. 47 at 12; Dkt. No. 53, Ex. A at 4. The parties submit that this term appears in Claims 1, 4, 5, 7, 8, 16, 17, 22, 24-26, 28-36, 43, 46, 48-50, 52, 53, and 62 of the '306 Patent and Claims 1 and 3 of the '369 Patent. Id.
Shortly before the start of the May 4, 2017 hearing, the Court provided the parties with the following preliminary construction: "WiFi public hotspot."
Plaintiff argues that the specification refers to "WiFi hotspots" as well as "cellular cells." Dkt. No. 45 at 7-8 (citing '306 Patent at 2:56-59 & 5:16-26).
Defendant responds that the specification sets forth a lexicography. Dkt. No. 47 at 12 (citing '306 Patent at 1:30-33 & 2:19-22).
Plaintiff replies that "[t]he parenthetical [cited by Defendant] explains that WiFi public hotspots can be one species of access points." Dkt. No. 52 at 6. Plaintiff argues that this is apparent from the plain meaning of "access point," and Plaintiff also cites several dependent claims. Id. at 6-7.
At the May 4, 2017 hearing, Plaintiff reiterated the arguments set forth in its briefing. Plaintiff emphasized its arguments that the specification discloses two different types access points, WiFi and cellular. Defendant responded that Plaintiff cannot identify any disclosure that contradicts the lexicography. Also, Defendant submitted that the dependent claims cited by Plaintiff did not appear in the original application but instead were added during prosecution several years later.
"To act as its own lexicographer, a patentee must `clearly set forth a definition of the disputed claim term' other than its plain and ordinary meaning." Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)).
On one hand, the specification refers to a "WiFi AP," which could be read as implying that not all "APs" are "WiFi." '306 Patent at 2:36 & 5:35; cf. Phillips, 415 F.3d at 1314 ("[T]he context in which a term is used in the asserted claim can be highly instructive. To take a simple example, the claim in this case refers to `steel baffles,' which strongly implies that the term `baffles' does not inherently mean objects made of steel."). The specification also discusses cellular communication networks. See, e.g., '306 Patent at 5:27-42.
On the other hand, the specification twice discloses:
'306 Patent at 1:30-33 & 2:19-22; '369 Patent at 1:26-29 & 2:14-17.
This disclosure explicitly defines the term "Access Points" to mean "WiFi public hotspots." Although the parenthetical uses the word "or," the sentence that follows (reproduced above) refers to "[t]hese APs" providing a WiFi connection for "WiFi-enabled devices" that are "refer[red] to as STA," thus reinforcing that the patentee here used "or" as part of a lexicography. See, e.g., Pause Tech., LLC v. TiVo, Inc., 419 F.3d 1326, 1335 (Fed. Cir. 2005) (as to disclosure of "fixed duration or `time window,'" finding that "the use of the quotation marks and the context of the surrounding text shows that this phrase does not specify two alternative time intervals but simply describes in different words the same interval") (emphasis added). Also, as Defendant emphasized at the May 4, 2017 hearing, it is noteworthy that the above-reproduced disclosure capitalizes the words "Access Points." Thus, the above-reproduced disclosure uses "AP" as an abbreviation for "WiFi public hotspots," and the specification uses the abbreviations "AP" and "STA" extensively.
Plaintiff has noted that a connection to an AP may be a wired connection. '306 Patent at 11:42-44. Plaintiff has not shown, however, that wired and WiFi connections are mutually exclusive. Further, immediately following this disclosure of a wired connection to "AP 10," the specification refers to a wireless connection to "AP 10," which is thus consistent with an "AP" having wireless capability. Id. at 11:42-46.
Plaintiff has also noted a disclosure that refers to "APs (or the cellular cells)." Id. at 2:58. Read in context, however, the parenthetical serves to identify "cellular cells" as an alternative rather than as being within the scope of "APs":
'306 Patent at 2:52-61 (emphasis added). Likewise, Plaintiff's citation of disclosures regarding WiFi-enabled cellular phones is unpersuasive. See id. at 2:41-42 ("Another approach is to have a handset which supports both WiFi and Cellular, and handover the conversation from WiFi to Cellular.").
Plaintiff's other submissions, namely a technical dictionary definition and constructions of "access point" in unrelated cases, are unpersuasive and do not disrupt the above-discussed lexicography set forth in the patents-in-suit. See Dkt. No. 45, Ex. G, Newton's Telecom Dictionary 86 (23d ed. 2007) (defining "access point" as: "Basically a device that connects a computer to a network"); see also Agere Sys., Inc. v. Broadcom Corp., No. 03-3138, 2004 WL 1737495, at *4 (E.D. Pa. Aug. 2, 2004) (construing "access point" as "an element in a network that provides access to the network infrastructure"); Univ. of Fl. Research Found., Inc. v. Motorola Mobility LLC, 3 F.Supp.3d 1374, 1378 (S.D. Fla. Feb. 19, 2014) (construing "wireless access point" as "[d]evice that communicates a wireless protocol signal wirelessly"). That is, even though the term "access point" may have a broader meaning outside of the patents-in-suit, the above-cited lexicography applies here. See Phillips, 415 F.3d at 1316 ("[T]he specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor's lexicography governs.").
Finally, Plaintiff has cited various dependent claims that refer to "cellular":
Dkt. No. 52 at 6-7. For example, dependent Claims 4-6 of the '306 Patent recite:
Plaintiff thus argues that because the dependent claims must be within the scope of the claims from which they depend, the recital of "cellular" in the dependent claims demonstrates that the term "access point" must encompass cellular access points.
On balance, the presence of dependent claims that refer to "cellular" does not outweigh the above-discussed lexicography set forth in the specification. Cf. Cornell Univ. v. Illumina, Inc., No. CV 10-433, 2017 WL 89165, at *8 (D. Del. Jan. 10, 2017) (Stark, J.) (finding that "the claim-differentiation presumption is overcome by the patent's definition of" the term at issue) (citing Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1305 (Fed. Cir. 2011) ("any presumption created by the doctrine of claim differentiation will be overcome by a contrary construction dictated by the written description or prosecution history") (citation and internal quotation marks omitted); citing Phillips, 415 F.3d at 1316 (quoted above)). This is particularly the case where, as here, the dependent claims at issue were added very late in the prosecution of the patent.
The Court therefore hereby construes
Dkt. No. 45 at 10; Dkt. No. 47 at 15; Dkt. No. 53, Ex. A at 4-7. The parties submit that this term appears in Claims 1, 6, 10, and 14 of the '306 Patent and Claims 1 and 3 of the '369 Patent. Id.
Shortly before the start of the May 4, 2017 hearing, the Court provided the parties with the following preliminary construction: "Plain meaning (not means-plus-function)."
Plaintiff argues that this is not a means-plus-function term because "[t]he limitation recites sufficient structure for a person of skill in the art to be able to configure components for implementing the requirements of the limitation in an AP module." Dkt. No. 45 at 11. In particular, Plaintiff argues that "AP" refers to "access point," which has a well-known structural meaning in the relevant art. See id. Further, Plaintiff urges, "the limitation itself describes how the communication to and from the access point takes place in considerable detail." Id. at 12. Alternatively, Plaintiff argues that even if this disputed term is found to be a means-plus-function term, the specification links the claimed function to a "computing device" such as a laptop computer. Id. at 13-14. Plaintiff urges that no algorithm is required but, alternatively, submits that "one skilled in the art would understand that the specification identifies the components within the wireless enabled computing device that are used to implement each function." Id. at 16. Plaintiff argues that Defendant's proposed algorithms "describe features unrelated to the functions cited in the limitation." Id. at 20.
Defendant responds that "module" is a nonce term and that the modifier "AP" does not impart any particular structural meaning to "module." Dkt. No. 47 at 16. Defendant also submits that "[d]uring prosecution of the '369 Patent, the Patent Office found this term to be a means-plus-function term and examined it with that understanding." Id. at 17. Further, Defendant argues, the specification fails to disclose any corresponding structure for the claimed functions of "causing said computing device to serve the given device as a second AP having a second APID, distinct from the first APID . . ." and "tunnel data traffic . . . such that . . . the given device operates on the network [with/using] a [second] public IP address distinct from the first public IP address. . . ." Id. at 18-21.
Plaintiff replies that "[i]n light of the subsequent amendments and examiner interviews, the examiner's comments provide little claim construction guidance." Dkt. No. 52 at 7. Plaintiff also argues that "a PHOSITA [(person having ordinary skill in the art)] would understand AP identification to simply be an identifier for an access point." Id. at 8.
At the May 4, 2017 hearing, Defendant emphasized that the "AP module" is not itself an access point but rather is recited as something that sets up connections with access points.
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, the modifier "AP" provides structural meaning to this "module" term. See id. at 1351 (noting that "the presence of modifiers can change the meaning of `module'"). The term "AP," which is an abbreviation for "access point," is a distinct disputed term that is addressed separately above. Although Defendant argued at the May 4, 2017 hearing that the "AP module" is not itself an "AP," the modifier "AP" as construed by the Court nonetheless limits the disputed term to a particular class of structures.
Finally, Defendant has emphasized that, during prosecution of the '369 Patent, the Examiner expressly stated that "`AP module' has been interpreted under 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA), sixth paragraph, because it uses a non-structural term `module' coupled with functional language `adapted to' without reciting sufficient structure to achieve that function. Furthermore, the non-structural term is not preceded by a structural modifier." Dkt. No. 45, Ex. M, Mar. 13, 2013 Office Action at 2 (M43). In light of the Court's above construction of "access point," however, this "module" term is indeed preceded by a structural modifier that limits the disputed term to a particular class of structures.
The Court therefore finds that 35 U.S.C. § 112(f) does not apply. Defendant has not proposed any construction in the event that 35 U.S.C. § 112(f) does not apply. The Court thus finds that no further construction is necessary.
The Court accordingly hereby construes
Dkt. No. 45 at 21; Dkt. No. 47 at 22-23; Dkt. No. 53, Ex. A at 7-9. The parties submit that this term appears in Claim 1 of the '306 Patent and Claim 1 of the '369 Patent. Id.
Shortly before the start of the May 4, 2017 hearing, the Court provided the parties with the following preliminary construction: "Means-plus-function/Function: `(1) wirelessly connect said computing device to an IP based network via a first wireless access point (AP) having a first AP Identification (APID); and (2) wirelessly communicate with other wireless enabled computing devices'/Structure: `a wireless network card, and equivalents thereof.'"
Plaintiff argues that "communication" modifies "module" such that the presumption against means-plus-function treatment is not rebutted. Dkt. No. 45 at 21-22. Further, Plaintiff submits, "the claim limitation describes the roles of the communication module in considerable detail." Id. at 23. Alternatively, Plaintiff argues that the specification discloses that, in Plaintiff's words, "the laptop or STA (or more generically, `computing device') is the structure that performs the functions." Id. at 24. Plaintiff urges that no algorithm is required but, alternatively, submits that "one skilled in the art would understand that the specification identifies the components within the wireless enabled computing device that are used to implement each function." Id. at 25. Plaintiff further argues that Defendant's proposed algorithms "are not linked or associated with the `communication module' limitations. . . ." Id.
Defendant responds that "module" is a nonce word and that the modifier "communication" does not impart any particular structural meaning to "module." Dkt. No. 47 at 23. Defendant argues that the specification fails to disclose any corresponding structure for the claimed functions. Id. at 24.
Plaintiff replies by reemphasizing the opinions and examples provided by Plaintiff's expert. Dkt. No. 52 at 8 (citing Dkt. No. 45, Ex. C, Mar. 15, 2017 Kirkendoll Decl. at ¶ 58; see id. at Exs. 4 & 5). Further, Plaintiff argues that "the claim limitation's operation also describes elements of structure, e.g., `wirelessly connect said computing device to an IP based network via a first wireless access point (AP) having a first AP Identification (APID).'" Id. at 9 (emphasis omitted).
At the May 4, 2017 hearing, Defendant urged that the corresponding structure cannot merely be a wireless network card because the claimed function, which involves simultaneous communications, is identified in the specification as being a point of novelty. Defendant also emphasized that, during prosecution, the examiner identified software as the corresponding structure and the patentee did not object.
Legal principles regarding 35 U.S.C. § 112(f) are set forth above in the discussion of the "AP module . . ." term.
Unlike the "AP module . . ." term, the "communication module . . ." term does not recite any distinct structure, and the term does not modify the word "module" with any language that imparts structure. Williamson is analogous:
Williamson, 792 F.3d at 1351. Plaintiff submits the opinion of its expert that "commercial devices have been sold that were known as `communication modules' and one of ordinary skill in the art would have known of such devices." Dkt. No. 45, Ex. C, Mar. 15, 2017 Kirkendoll Decl. at ¶ 58; see id. at Exs. 4 & 5. On balance, however, Plaintiff has not persuasively demonstrated that the disputed term refers to a particular class of structures or that the disputed term's use of the word "communication" is structural rather than functional. Further, the disputed term does not contain a "recitation of . . . operation in sufficient detail to suggest structure to persons of ordinary skill in the art." Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1320-21 (Fed. Cir. 2004).
The "communication module . . ." term is thus a means-plus-function term governed by 35 U.S.C. § 112(f). The parties agree that the claimed function is: "(1) wirelessly connect said computing device to an IP based network via a first wireless access point (AP) having a first AP Identification (APID); and (2) wirelessly communicate with other wireless enabled computing devices."
As to the corresponding structure, the specification discloses that performing wireless communication between a device and an access point and between a device and other devices is carried out by a wireless network card:
'306 Patent at 11:30-50 (emphasis added); see id. at 31:22-24 ("The present application discloses a STA which has a capability of communicating in two or more channels in parallel (for example, by using two wireless network cards).") (emphasis added).
The opinion of Plaintiff's expert is persuasive that a "wireless network card" is also known as a wireless "network interface controller" ("NIC") and is a well-known structure. See Dkt. No. 45, Ex. C, Mar. 15, 2017 Kirkendoll Decl. at ¶ 60.
Because a wireless network card is a specialized device rather than a general-purpose computer (see id.), the algorithm requirement does not apply. See, e.g., WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999) ("In a means-plus-function claim in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm."). Defendant has argued that "[a] wireless network card would need to be specifically programmed to perform" the claimed function of establishing two wireless connections. Dkt. No. 47 at 25; see id., Ex. 1, Apr. 6, 2017 Houh Decl. at ¶ 56. This argument perhaps might bear upon enablement but does not appear relevant to the present claim construction dispute. See Phillips, 415 F.3d at 1327 ("we have certainly not endorsed a regime in which validity analysis is a regular component of claim construction").
The Court therefore hereby finds that
Dkt. No. 45 at 26; Dkt. No. 47 at 26; Dkt. No. 53, Ex. A at 9. The parties submit that this term appears in Claims 1, 2, 4-10, 14, 16, 17, 19, 21, 23-26, 35-37, 39, 41-46, 48, 56, 58, 61-63, 65, 67, and 68 of the '306 Patent and Claims 1-5 and 7 of the '369 Patent. Id.
Shortly before the start of the May 4, 2017 hearing, the Court provided the parties with the following preliminary construction: "Plain meaning."
Plaintiff argues that it "requests that the Court construe the term `computing device' to avoid potential confusion by jurors who may think that `computing device' is limited to a device exhibiting a computer form factor, e.g., laptop or tablet computer, and may not include other devices, such as smartphones." Dkt. No. 45 at 26.
Defendant responds that "[t]he term `computing device' does not require construction" because "[t]here is no dispute about the scope of this claim term related to either non-infringement or invalidity." Dkt. No. 47 at 26. Defendant argues that Plaintiff's proposed construction would incorrectly "suggest to the jury that the Asserted Patents explicitly contemplated a tablet and a phone as the claimed `computing devices.'" Id. at 26-27.
Plaintiff replies that the specification indeed discloses WiFi-enabled cellular phones. Dkt. No. 52 at 9-10.
At the May 4, 2017 hearing, the parties presented no oral argument and instead rested on their briefing as to this disputed term.
Plaintiff has not demonstrated that the parties have any substantive dispute as to the term "computing device." See Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) ("[A]lthough the claims are construed objectively and without reference to the accused device, only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy."). Plaintiff's proposed list of examples would thus tend to confuse rather than clarify the scope of the claims and is accordingly hereby expressly rejected.
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. 45 at 27; Dkt. No. 47 at 27; Dkt. No. 53, Ex. A at 10.
Shortly before the start of the May 4, 2017 hearing, the Court provided the parties with the following preliminary construction: "Plain meaning."
Plaintiff submits that it "requests that the Court construe the term `computing device' to avoid potential confusion by jurors who may think (or be led to believe) that `wireless' is limited to WiFi communications." Dkt. No. 45 at 27.
Defendant responds that "[t]he `wireless' claim terms do not require construction" because "[t]here also is no dispute about the scope of this claim term related to either non-infringement or invalidity." Dkt. No. 47 at 27.
Plaintiff replies:
Dkt. No. 52 at 10.
At the May 4, 2017 hearing, the parties presented no oral argument and instead rested on their briefing as to these disputed terms.
Defendant has not argued that the term "wireless" is limited to "WiFi," and Plaintiff has not shown that a finder of fact would be likely to interpret the term "wireless" to mean "WiFi." Further, as to Plaintiff's arguments regarding "access point," that term is a distinct disputed term addressed separately above.
The Court therefore hereby expressly rejects Plaintiff's proposed constructions. See Vivid Techs., 200 F.3d at 803 (quoted above). No further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521 F.3d at 1362; Finjan, 626 F.3d at 1207; ActiveVideo, 694 F.3d at 1326; Summit 6, 802 F.3d at 1291.
The Court accordingly hereby construes
Dkt. No. 45 at 27; Dkt. No. 47 at 28; Dkt. No. 53, Ex. A at 26-27. Plaintiff submits that this term appears in Claims 42 and 68 of the '306 Patent. Dkt. No. 45 at 27.
Shortly before the start of the May 4, 2017 hearing, the Court provided the parties with the following preliminary construction: "a service that converts between IP addresses used in one network and IP addresses used in another network."
Plaintiff argues that Defendant's proposal is too narrow because "the NAT disclosed in the preferred embodiment converts IP addresses between two private networks." Dkt. No. 45 at 28. Plaintiff explains that "[a] NAT simply modifies the network address information in IP packet headers in order to remap one IP address space into another." Id.
Defendant responds that "[Defendant's] construction is literally the one that [Plaintiff] originally proposed, and is supported by the dictionary definition [Plaintiff] submitted with its initial disclosures to prove the term's plain and ordinary meaning." Dkt. No. 47 at 28. Defendant explains that "[Plaintiff] now seeks to broaden the plain and ordinary meaning of the term, seeking a construction that would permit conversion of any IP address to any other IP address (unlike the private to public conversion understood in the art)." Id.
Plaintiff replies by citing the opinion of its expert that the NAT disclosed in the preferred embodiment converts IP addresses between two private networks. Dkt. No. 52 at 10.
At the May 4, 2017 hearing, the parties presented no oral argument and instead rested on their briefing as to this disputed term.
Claim 42 of the '306 Patent, for example, recites:
The specification discloses:
'306 Patent at 11:33-67; see id. at 21:3-5 ("NAT device that need[s] to relate an internal IP address and port number with an external IP address and port number")
With reference to this disclosure, Plaintiff's expert has persuasively opined that NAT service can be provided between two private networks, such as one between the AP 10 and the laptop 11 and another between the laptop 11 and the other STAs. Dkt. No. 45, Ex. C, Mar. 15, 2017 Kirkendoll Decl. at ¶ 46.
Further, Defendant has not shown any intrinsic definition or disclaimer that would warrant imposing any private-to-public limitation. To the extent such requirements appear in the extrinsic evidence that Defendant has cited, Defendant has not shown that such extrinsic evidence should override the above-discussed embodiment involving private-to-private network address translation. See Dkt. No. 47, Ex. 6, Microsoft Computer Dictionary 357 (5th ed. 2002) (NAT n. Acronym for Network Address Translation. The process of converting between IP addresses used within an intranet or other private network and Internet IP addresses. This approach makes it possible to use a large number of addresses within the private network without depleting the limited number of available numeric Internet IP addresses. Variations of NAT displaying similar functions include IP aliasing, IP masquerading, and Port Address Translation."); see also Phillips, 415 F.3d at 1317 ("[W]hile extrinsic evidence can shed useful light on the relevant art, we have explained that it is less significant than the intrinsic record in determining the legally operative meaning of claim language.") (citations and internal quotation marks omitted).
As to the proper construction, the parties are otherwise in substantial agreement. That is, apart from Defendant's proposed private-to-public limitation, the parties essentially agree that a NAT service provides conversion between IP addresses in one network and IP addresses in another network.
The Court therefore hereby construes
The Court adopts the constructions set forth in this opinion for the disputed terms of the patents-in-suit.
As noted above, the Court hereby
The parties are ordered to not refer to each other's claim construction positions in the presence of the jury. Likewise, in the presence of the jury, the parties are ordered to refrain from mentioning any portion of this opinion, other than the actual definitions adopted by the Court. The Court's reasoning in this order binds the testimony of any witnesses, and any reference to the claim construction proceedings is limited to informing the jury of the definitions adopted by the Court.
Dkt. No. 41 at 1; Dkt. No. 53, Ex. A at 2.
