ORDER RE CLAIM CONSTRUCTION

Docket Nos. 93, 102, 105

EDWARD M. CHEN, District Judge.

Plaintiffs (collectively, "UCL") have sued Defendants (collectively, "SIMO") for patent infringement. The only patent at issue is UCL's '780 patent. The Court held a Markman hearing on March 10, 2020. This order memorializes the Court's claim construction on the disputed terms.

I. FACTUAL & PROCEDURAL BACKGROUND

The '780 patent is titled "Service sharing system and apparatus." Context for the patent is provided in the section of the patent titled "Background of the Invention."

'780 patent, col. 1, ll. 22-50.

The '780 patent is directed to the above problem.

'780 patent, col. 2, ll. 54-61.

A representative claim for the '780 patent is claim 1. Claim 1 states as follows (terms to be construed are in bold):

'780 patent, claim 1 (emphasis added).

II. DISCUSSION

A. Legal Standard

Claim construction is a question of law, although it may have factual underpinnings. See Icon Health & Fitness, Inc. v. Polar Electro Oy, 656 Fed. App'x 1008, 1013 (Fed. Cir. 2016); see also Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1357 (Fed. Cir. 2016). It "serves to define the scope of the patented invention and the patentee's right to exclude." HTC Corp. v. Cellular Communs. Equip., LLC, 877 F.3d 1361, 1367 (Fed. Cir. 2017); see also O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008) (stating that "the purpose of claim construction is `to determin[e] the meaning and scope of the patent claims asserted to be infringed'").

Id. (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005)).

Phillips, 415 F.3d at 1314. Although extrinsic evidence "can shed useful light on the relevant art, . . . it is less significant than the intrinsic record in determining the legally operative meaning of claim language." Id. at 1317 (internal quotation marks omitted).

B. Terms at Issue

1. "wherein at least one SIM card providing service is insertable in the at least one SIM card read-and-write device" (claim 1)

The dispute between the parties essentially concerns the term "insertable." UCL argues that "insertable" means capable of being inserted whereas SIMO argues that "insertable" must mean actually inserted or the invention does not work, i.e., is not operable. UCL has the better argument.

First, as UCL points out, the specification for the '780 patent (intrinsic evidence) uses language stating that the SIM card "may" be inserted:

Second, the dictionary definition (extrinsic evidence) for "-able" (the adjective suffix) is "capable of, fit for, or worthy of (being so acted upon or toward) — chiefly in adjectives derived from verbs." https://www.merriam-webster.com/dictionary/-able (last visited March 10, 2020).

In response, SIMO contends that "Plaintiffs' proposed ordinary meaning of `insertable' as the `capacity of being inserted' should be rejected because it makes inserting a SIM card optional and renders the entire claimed invention inoperable." Resp. Br. at 4; see also AIA Eng'g Ltd. v. Magotteaux Int'l S/A, 657 F.3d 1264, 1278 (Fed. Cir. 2011) ("[A] construction that renders the claimed invention inoperable should be viewed with extreme skepticism."). SIMO also points to language from the patent specification using the term "inserted" without qualifications:

But SIMO's argument is not persuasive because it fails to take into account UCL's concession that, at some point in time, a SIM card is inserted in order for the invention to work; UCL's point is simply that claim 1 is an apparatus claim, one that essentially describes the structure of the claimed invention. See Reply at 4 ("[C]laim 1 does not require that a SIM card be inserted at all times . . .; it merely requires the various system components to be `configured to' perform the actions at the appropriate time."). The claim is not confined to an operative state.

Moreover, UCL's position is supported by the language in claim 1 itself:

'780 patent, claim 1 (emphasis added). The above language makes clear that a SIM card does have to be "inserted" in order for the invention to work; however, in the first element above, UCL could have, but did not, use the term "inserted" but rather "insertable." "[W]hen 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." Innova/Pure Water, Inc. v. Safari Water Filtration Sys., 381 F.3d 1111, 1119 (Fed. Cir. 2004); see also Bancorp Servs., L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367, 1373 (Fed. Cir. 2004) (stating that "the use of [different] terms [here, `surrender value protected investment credit' and `stable value protected investment credit'] in close proximity in the same claim gives rise to an inference that a different meaning should be assigned to each" — although adding that the inference "is not conclusive").

Accordingly, "insertable" does not mean actually inserted. That being said, the Court does not adopt the specific construction proposed by UCL. UCL suggests the following construction: "wherein at least one SIM card read-and-write device is configured to receive at least one SIM card that provides service." But "insertable" is with reference to the SIM card whereas "configured to receive" is with reference to the SIM card read-and-write device. Therefore, the Court adopts following construction instead (which hews more closely to the claim language): "wherein at least one SIM card providing service is capable of being inserted in the at least one SIM card read-and-write device."

2. "at least one SIM card read-and-write device, configured to simulate a read-and-write process performed by a local user equipment of a SIM card providing service sharing to a physical SIM card" (claim 1)

The above phrase in dispute comes from the first element of claim 1 of the '780 patent:

'780 patent, claim 1 (emphasis added). SIMO contends that the above phrase is indefinite and therefore claim 1 should be deemed invalid.

SIMO has

Intri-Plex Techs., Inc. v. NHK Int'l Corp., No. 17-cv-01097-EMC, 2018 U.S. Dist. LEXIS 16877, at *22-23 (N.D. Cal. Feb. 1, 2018).

In its papers, SIMO makes several arguments as to how different components of the phrase above are indefinite. Each of those arguments is addressed below.

a. What Provides the "service sharing"?

SIMO argues first that, with respect to the above phrase, it is not clear what exactly provides the "service sharing" — e.g., is it a SIM card, the SIM card read-and-write device, or a local user equipment?

The Court rejects SIMO's argument. Arguably, the above phrase could have benefited from the use of additional punctuation and is confusing if considered in isolation. However, when the specification of the patent is taken into consideration, the phrase is understandable. This is especially true give that "patents are `not addressed to lawyers, or even to the public generally,' but rather to those skilled in the art." Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 909 (2014).1

The "Background of the Invention" provides important context.

'780 patent, col. 1, ll. 22-50.

As indicated by the above, the prior art involved use of a SIM card on local user equipment to get data and voice services. The invention improves on that prior art as follows:

Or as UCL's expert, Dr. Feuerstein, testifies:

Docket No. 79-1 (Feuerstein Decl. ¶ 59).2

Thus, when SIMO asks what exactly provides the service sharing, the response is that "providing service sharing" — as used in the above phrase — modifies the noun "SIM card." In other words, it is a SIM card that provides service sharing. This makes grammatical sense in that the noun closest to the modifier "providing service sharing" is "SIM card." Thus, the above phrase could have been more clearly written as follows: "at least one SIM card read-and-write device, configured to simulate a read-and-write process (performed by a local user equipment of a SIM card providing service sharing) to a physical SIM card."

That being said, the Court notes that, even though "providing service sharing" modifies "SIM card," the SIM card is associated with "local user equipment" and, in that respect, the "local user equipment" also provides service sharing. Moreover, the "SIM card read-and-write device" emulates the read-and-write process performed by the "local user equipment" and thus is also designed to provide service sharing.

b. What is the Meaning of "service sharing"

As noted above, the disputed phrase is as follows (in bold):

'780 patent, claim 1 (emphasis added). According to SIMO, there is an indefiniteness problem with the above phrase because it is not clear what "service sharing" means above. SIMO contends that "service sharing" could be interpreted either as:

See Resp. Br. at 10. SIMO defends the latter interpretation on the basis that the patent specification at times refers to a SIM card providing service only — and not service sharing. See, e.g., '780 patent, col. 5, ll. 31-33 ("One of a plurality of SIM cards providing services may be inserted in each of the at least one SIM card read-and-write device."); '780 patent, col. 12, ll. 4-6 ("The SIM scheduling management system returns SIM providing services of the service provider 2 to the multi-channel communication device."). SIMO notes that this is also consistent with claim 1 which refers (in the first element above) to the following: "wherein at least one SIM card providing service is insertable in the at least one SIM card read-and-write device." '780 patent, claim 1.

SIMO's interpretation is far fetched. Notably, nothing in the patent (including the specification) talks about "sharing to a physical SIM card," which is what the SIMO's interpretation requires. Furthermore, SIMO's interpretation would be grammatically awkward — i.e., "at least one SIM card read-and-write device, configured to simulate a read-and-write process performed by a local user equipment of a SIM card providing service[,] sharing to a physical SIM card." Sharing what to a physical SIM card?

SIMO is correct that different words in the same claim are usually afforded different meanings (i.e., "service[-]sharing" and "service"). But SIMO ignores the fact that "service[-]sharing" is a kind of service; furthermore, it is clear from the patent as a whole (including the specification) that the service to be provided by the invention is service sharing specifically. See, e.g., '780 patent, col. 6, ll. 1-12 ("The SIM scheduling management 41 selects appropriate SIM from SIM cards inserted in the SIM card read-and-write device 42 according to the location of a user equipment and the type of service requested by a subscriber, and in consideration of a network environment of the subscriber and subscriber attributes; and assigns the selected SIM to the subscriber, thereby implementing an international, any-network (any-service provider), any-technology and mode, implementing sharing of the services corresponding to individual or a group SIM.").

SIMO protests that the prosecution history (intrinsic evidence) supports its position. But the argument is not well taken. For example, it is true that the claim as originally drafted (then-known as claim 12) did refer to "at least one SIM card read-and-write device, configured to simulate a read-and-write process performed by local user equipment of a SIM card providing service sharing a physical SIM card." Docket No. 93-2, at 34 (prosecution history). That is, the claim as originally drafted referred to "a SIM card providing service sharing a physical SIM card," and not "a SIM card providing service sharing to a physical SIM card" (as stated in current claim 1). However, the omission of "to" appears to have been an administrative-type of mistake that UCL corrected or at least an error addressed after the patent examiner determined that the claim was "subject to restriction and/or election requirement." Docket No. 93-2, at 121.

SIMO points out that, during the prosecution of the patent, UCL also made another change to the claim then-known as claim 12:

Docket No. 93-2, at 162-63 (prosecution history) (strike out and emphasis in original). But this is not a clear disavowal of claim scope. See Poly-America, L.P. v. API Indus., Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016) (noting that a "disavowal need not be explicit" but it "must be clear and unequivocal"; "the standard for disavowal is exacting, requiring clear and unequivocal evidence that the claimed invention includes or does not include a particular feature" — notably, "[a]mbiguous language cannot support disavowal"). "Service" does not necessarily exclude service sharing which can be a kind of "service."

Accordingly, the Court rejects SIMO's contention that there is indefiniteness based on a lack of clarity about what "service sharing" means.

c. What is the Meaning of "simulate"?

SIMO next contends indefiniteness based on the use of the term "simulate":

'780 patent, claim 1 (emphasis added). According to SIMO, "simulate" must be given its plain and ordinary meaning as the term is not defined in the specification, and UCL is construing "simulate" to mean the "complete opposite." Resp. Br. at 13. SIMO maintains that "something simulated is a representation of an action but not the real action," and, "[b]ecause `simulate' means to imitate but not do the same thing as, the claim language `simulate a read and write process' is indefinite. It is not clear what kind of read-and-write process would be imitated, but not actually performed . . . ." Resp. Br. at 15 (emphasis added).

SIMO's argument is not persuasive. There is no real dispute between the parties that "simulate" means something along the lines of "imitate." See Resp. Br. at 15 (SIMO's position) (stating that "`simulate' means to imitate"); Docket No. 79-1 (UCL's position) (Feuerstein Decl. ¶ 60) (testifying that "a POSITA [person of ordinary skill in the art] at the time of the invention would understand to `simulate' means to imitate or emulate the way in which another system or process works"). SIMO assumes, however, that something is not "imitated" when the same result is achieved. But the invention at issue has clearly been designed to achieve the same result as the prior art (i.e., service sharing); it is simply the way of accomplishing the result that makes the invention different. This is consistent with the claim language, namely, that a "process" is being simulated or imitated, not the end result.

d. Interpreting "to" to mean "of"

SIMO's next argument is not entirely clear but appears to be related to its argument in Part II.C.1, supra. Below is the phrase at issue from claim 1:

'780 patent, claim 1 (emphasis added). According to SIMO, UCL takes the position that the SIM card read-and-write device is "configured to simulate a read-and-write process" "to a physical SIM card" (i.e., the language bolded above) — reading out entirely the nonbolded language in between. See Resp. Br. at 17 (arguing that UCL lacks support for moving `to a physical SIM card' from the end of the phrase to directly after `configured to simulate a read-and-write process"). SIMO also argues that this interpretation cannot be accepted because the specification of the patent talks about reading and writing of a SIM card, not to. See, e.g., '780 patent, col. 7, ll. 38-40 ("The SIM card read-and-write chip 421, under control of a SIM card management unit 423, implements read and write of a SIM card inserted in the SIM card slot 422.") (emphasis added); '780 patent, col. 6, ll. 17-19 ("In the embodiments of the present invention, the multi-channel communication device 43 may support read and write of one or a plurality of physical SIM cards") (emphasis added).

As indicated above, see Part II.C.1, the Court agrees with UCL that the SIM card read-and-write device is configured to simulate a read-and-write process (performed by a local user equipment) to a physical SIM card. Furthermore, the excerpts above from the patent specification — referring to reading and writing of a SIM card — ultimately supports UCL's interpretation that the nonbolded language between "configured to simulate a read-and-write process" and "to a physical SIM card" should effectively be put in a parenthetical (i.e., so as to modify "read-and-write process"). Finally, the Court is not troubled by the fact that the claim uses "to" while the patent specification uses "of." The claim uses the word "to" because it is talking about a "read-and-write process." In contrast, the patent specification simply references reading and writing, and not a process specifically.

e. "to a physical SIM card"

Finally, SIMO argues that "to a physical SIM card" lacks any written description3: "[T]he specification lacks any support for read-and-write process being performed `to a physical SIM card.' Plaintiffs completely ignore this point, and seek to resolve this discrepancy by redefining `to' as `of.'" Resp. Br. at 18. This argument is simply a variant of the one directly above, and therefore is rejected. As indicated above, SIMO argues that the specification of the patent refers to reading and writing of a SIM card, not to. But the claim may use the term "to" because it is talking about a read-and-write process.

f. Summary

For the foregoing reasons, the Court does not find indefiniteness and adopts UCL's construction, and not SIMO's.

3. "a SIM database configured to store SIM data on the at least one SIM card of the at least one SIM card read-and-write device" (claim 1)

The parties' dispute concerning the above phrase is about the word "on." SIMO argues that "on" must be interpreted to mean a physical location — i.e., a SIM database is configured to store SIM data physically on the SIM card. UCL argues in response that "on" is a word that can mean "of" or "about" — e.g., a book "on" minerals is a book "about" minerals. See Docket No. 79-1, at 21 (definition of "on" provided in Merriam Webster) (providing as the twelfth definition (out of twelve): "ABOUT, CONCERNING <a book minerals>").

The Court agrees with UCL that "on," as used in the above phrase, does not implicate physical location. Most tellingly, the patent specification contains the following language: "The SIM database 411 stores SIM data of the SIM card inserted on the SIM card read-and-write device. . . ." '780 patent, col. 8, ll. 5-6. In addition, other parts of the patent specification indicate that SIM data would not be pinned to a physical location on the SIM card. See, e.g., '780 patent, col. 8, ll. 13-17 (stating that "the SIM data stored in the SIM database 411 comprises various communication modes in different regions and of different service providers") (emphasis added). Finally, it would make little sense for "on" to mean a physical limitation when that would mean embodiments disclosed in the patent specification would be excluded from claim 1. See Resp. Br. at 22 (SIMO not disputing that its construction "would exclude the preferred embodiments"). As UCL points out, the Federal Circuit has stated that "[a] claim construction that excludes a preferred embodiment is `rarely, if ever, correct.' A construction that excludes all disclosed embodiments . . . is especially disfavored." Kaneka Corp. v. Xiamen Kingdomway Grp. Co., 790 F.3d 1298, 1304 (Fed. Cir. 2015) (emphasis in original). SIMO, in response, cites Lucent Technologies, Inc. v. Gateway, Inc., 525 F.3d 1200 (Fed. Cir. 2008), where the Federal Circuit stated: "[W]here we conclude that the claim language is unambiguous, we have construed the claims to exclude all disclosed embodiments." Id. at 1215-16. But, in the instant case, there is ambiguity, if only by virtue of the language in the patent specification using the word "of." See '780 patent, col. 8, ll. 5-6 ("The SIM database 411 stores SIM data of the SIM card inserted on the SIM card read-and-write device . . . .") (emphasis added).

SIMO protests still that it was the use of the word "on" — i.e., the limitation it placed — that prompted the patent examiner to give approval to the invention over the prior art. See Resp. Br. at 19 (arguing that, "in the notice of allowance, the examiner repeated and emphasized the `on' limitation in his reasons for allowing the patent over the prior art"). But contrary to what SIMO suggests, the notice of allowance does not specifically call out the word "on". Moreover, nothing in the notice of allowance indicates an understanding of "on" to implicate physical location.

Accordingly, the Court adopts UCL's proposed construction over SIMO's.

4. "SIM function"

Below is the broader context for the term "the SIM function":

'780 patent, claim 1 (emphasis added). According to SIMO, "the SIM function" is indefinite because it lacks an antecedent basis in claim 1 (i.e., "a SIM function"), and nothing in the patent, including the specification, sets "the outer boundaries of `the SIM function.'" Resp. Br. at 24. In short, what SIMO means here is that there are many functions of a SIM and, without further clarity as to which function is implicated, there is an indefiniteness problem.

The lack of an antecedent basis for "the SIM function" is not dispositive. As the Federal Circuit has noted: "The Manual of Patent Examining Procedure (`MPEP') states: `the failure to provide explicit antecedent basis for terms does not always render a claim indefinite. If the scope of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not indefinite.'" Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1359 (Fed. Cir. 2001).4 For example, in In re Downing, 754 F. App'x 988 (Fed. Cir. 2018), the Federal Circuit did not find the absence of an antecedent basis for "the end user" a problem because it was, in essence, obvious what was meant by the term:

Id. at 996.

The instant case is not quite like Downing in that claim 1 of the '780 patent does not, in and of itself, make obvious what is meant by "the SIM function." On the other hand, the patent specification does shed light on what "the SIM function" means. There are at least two places in the specification that talk about what function a SIM provides:

Admittedly, the patent specification does not expressly define "the SIM function" as a means by which a service provider authenticates a subscriber, thus enabling the subscriber to use her user equipment to get services provided by the service provider. However, implicitly, that is how the functioning of a SIM is described. And because that is how the functioning of a SIM is described, the fact that a SIM could provide other additional functions does not render the term indefinite in this context. (In its papers, SIMO did not identify other such functions; however, it identified at least one other function at the claim construction hearing.).

Accordingly, the Court rejects SIMO's contention that "the SIM function" is indefinite. That being said, the construction that UCL provides is also problematic — e.g., referring to "functions" (plural) rather than "function" (singular) and failing to provide any specificity on what the function actually is. The Court adopts the following construction instead: "the function of a SIM, i.e., a means by which a service provider authenticates a subscriber, thus enabling the subscriber to use her user equipment to enjoy services provided by the service provider."

III. CONCLUSION

For the foregoing reasons, the Court adopts the above claim constructions.

IT IS SO ORDERED.