ROY S. PAYNE, Magistrate Judge.
On May 30, 2014, the Court held a hearing to determine the proper construction of the disputed claim terms in United States Patents No. 8,023,580 and 8,457,228. After considering the arguments made by the parties at the hearing and in the parties' claim construction briefing (Dkt. Nos. 97, 102, and 103),
Plaintiff brings suit alleging infringement of United States Patents No. 8,023,580 ("the `580 Patent") and 8,457,228 ("the `228 Patent") (collectively, the "patents-in-suit").
The patents-in-suit are both titled "System and Method of Communication Using At Least Two Modulation Methods." The `580 Patent issued on September 20, 2011, and bears a filing date of August 19, 2009. The `228 Patent issued on June 4, 2013, and bears a filing date of August 4, 2011. The `228 Patent is a continuation of the `580 Patent. Both patents-in-suit bear an earliest priority date of December 5, 1997.
In general, the patents-in-suit relate to modulation methods for communications. Plaintiff argues that the patents-in-suit relate to the well-known "Bluetooth" wireless communication standards. See Dkt. No. 97 at 1. The Abstract of the `580 Patent is representative and states:
"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) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start by considering the intrinsic evidence. See id. 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 v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (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 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.
Shortly before the start of the May 30, 2014 hearing, the Court provided the parties with preliminary constructions of the disputed terms with the aim of focusing the parties' arguments and facilitating discussion. Those preliminary constructions are set forth within the discussion of each term, below.
Dkt. No. 97 at 6; Dkt. No. 102 at 2-3. The parties submit that the first of these terms appears in Claims 1, 2, 13, 19, 21, 22, 23, 32, 40, 41, 49, 54, 58, 59, 70, 76, 78, and 79 of the `580 Patent and Claims 1, 5, 15, 17, 18, 22, 25, 26, 37, 38, 39, 41, 47, 48, 49, and 52 of the `228 Patent. Dkt. No. 82, Ex. A at 7. The parties submit that the second of these terms appears in Claims 1, 13, 20, 22, 23, 32, 40, 49, 54, 58, 70, 77, and 79 of the `580 Patent and Claims 1, 10, 17, 18, 22, 23, 26, 37, 38, 41, 43, 47, and 49 of the `228 Patent. Id. at 9.
Shortly before the start of the May 30, 2014 hearing, the Court provided the parties with the following preliminary constructions for these disputed terms: "first modulation method" means "a first method for varying one or more characteristics of a carrier signal in accordance with information to be communicated"; and "second modulation [method]" means "a second method for varying one or more characteristics of a carrier signal in accordance with information to be communicated." Plaintiff had no opposition to these preliminary constructions. Defendants were opposed.
Plaintiff argues that "Defendants' constructions . . . confuse `modulation' with `encoding'" and import limitations from a preferred embodiment. Dkt. No. 97 at 6. Plaintiff also submits that examples of the characteristics of a carrier than can be modulated are amplitude, frequency, and phase. Id. In this regard, Plaintiff cites extrinsic dictionary definitions (quoted below) as well as statements by Defendant Samsung in an inter partes review ("IPR") filing. Id. at 7; see id., Ex. 7, 3/20/2014 Petition for Inter Partes Review of U.S. Patent No. 8,023,580 at 9 (citing The IEEE Standard Dictionary of Electrical and Electronics Terms 662 (6th ed. 1996)). Plaintiff also argues that the constituent terms "first" and "second" refer to repeated instances rather than to any distinction or incompatibility. Id. at 8. Plaintiff explains that this is a patent law convention and that this interpretation is consistent with usage of "first" and "second" in various claims as well as in the Summary section of the `580 Patent. Id. at 8-10.
As to Defendants' proposed constructions, Plaintiff argues that the patents-in-suit "never use the term `encode' at all," and Plaintiff cites the provisional patent application to which the patents-in-suit claim priority as distinguishing between "modulation" and "encoding." Id. at 11-12. Plaintiff also argues that Defendants' proposal of incompatibility between the first and second modulation methods is found in a preferred embodiment but not in the claims. Id. at 12. Plaintiff submits that such a limitation appears only in dependent claims, namely Claims 18 and 75 of the `580 Patent. Id. at 13. Further, Plaintiff argues, Defendants' proposals would improperly exclude embodiments in which "modems may be capable of using several different modulation methods." Id. (quoting `580 Patent at 1:36-37; citing id. at 5:51-54). Plaintiff likewise argues that "the USPTO examiner recognized that the claimed `first' and `second' modulation methods could be understood by a common receiver—contrary to Defendants' constructions." Dkt. No. 97 at 14. Finally, Plaintiff urges that Defendants' proposals "would render claim limitations that explicitly require `the first modulation method is different than the second modulation method' superfluous." Id. at 16 (citing `580 Patent at Claims 23, 32 & 40).
Defendants respond that "the sole disclosed embodiment of the invention has a `Trib 1'
As to the prosecution history, Defendants highlight that the patentee deleted from the specification all disclosures of what Defendants refer to as a "bilingual" trib, i.e., a trib with the ability to use two types of modulation. Id. at 9-10. Defendants also submit that the examiner statement cited by Plaintiff in its opening brief was made before the patentee deleted the disclosures of a bilingual trib. Id. at 10. Further, Defendants cite the prosecution history of ancestor United States Patent No. 6,616,838, during which the patentee stated: "The present invention is directed to the use of differing transceivers responsive to different modulation methods to the exclusion of other modulation methods...." Id. at 11 (quoting Ex. 8, 9/27/2001 First Amendment and Response at p. 6 of 10).
As to their proposed constructions, Defendants note that "encoding" appeared in the constructions that Plaintiff had proposed prior to filing its opening claim construction brief. Dkt. No. 102 at 3 & 14. Defendants also argue: "First, contrary to [Plaintiff's] arguments, `modulation' is `encoding,' as [Plaintiff's] own dictionary confirms. Second, [Plaintiff's] construction injects the complex concept of carrier waves into the definition. That concept would not assist a jury." Id. at 14 (citations omitted). Finally, Defendants argue that the claim limitations requiring "different" modulation methods are "already superfluous." Id. at 15.
Plaintiff replies to Defendants' arguments as follows: (1) whether the claims adequately distinguish prior art is a matter of validity, not claim construction, and the patentee did not anywhere state that the point of novelty was that receivers understand only one modulation method; (2) the claims should not be limited to a particular embodiment and, moreover, the patents-in-suit incorporate related patent applications that disclose bilingual tribs (see Dkt. No. 103, Ex. 30 at RIP9770); (3) the patentee removed, from the specification, references to measuring transmission line characteristics, but the patentee did not disclaim all embodiments in which multiple modulation methods could be understood by a single trib; (4) Defendants' technology tutorial submitted to this Court (Dkt. No. 103, Ex. 28) confirms that "modulation" is different than "encoding"; (5) the doctrine of claim differentiation is not overcome by any disclosures in the specification; and (6) Defendants' proposals would render superfluous the claim limitations requiring that the "first" and "second" modulation methods be "different." Dkt. No. 103 at 2-5.
At the May 30, 2014 hearing, Defendants emphasized that the only disclosed embodiment uses monolingual tribs and that during prosecution the patentee deleted disclosure of bilingual tribs. The Court inquired where, if anywhere, the patentee stated that a trib can understand only one modulation method. Defendants responded that the patentee made that statement "by implication" by removing the disclosure of bilingual tribs. In this regard, Defendants cited the case of Abbott Laboratories v. Sandoz, Inc., 566 F.3d 1282 (Fed. Cir. 2009). As to Plaintiff's claim differentiation arguments, Defendants urged that the dependent claim "tail" cannot wag the specification "dog." See N. Am. Vaccine, Inc. v. Am. Cyanamid Co., 7 F.3d 1571, 1577 (Fed. Cir. 1993) ("The dependent claim tail cannot wag the independent claim dog.").
Plaintiff responded that the deletions were merely "housekeeping" and related primarily to test signals and to measuring transmission line characteristic rather than to the use of multilingual tribs. Plaintiff also reiterated that the patents-in-suit incorporate-by-reference related applications that disclose multilingual tribs. Finally, Plaintiff cited 01 Communique Laboratory, Inc. v. LogMeIn, Inc., 687 F.3d 1292 (Fed. Cir. 2012), for the proposition that if the prosecution history is subject to a reasonable, non-limiting interpretation, then there is no disclaimer.
Claim 1 of the `580 Patent is representative and recites (emphasis added):
As an initial matter, Defendants' proposed constructions appear to render redundant the recital of "wherein the second modulation method is of a different type than the first modulation method." Defendants have countered that "[t]he limitations of these claims requiring `different' modulation methods are . . . already superfluous" because "[Plaintiff] admits that the terms `first' and `second' . . . are used to distinguish two items that (while similarly named) are, in fact, different." Dkt. No. 102 at 15. Nonetheless, such redundancy is disfavored when construing claims. See Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) ("A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so."); see also Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1562 (Fed. Cir. 1991) (noting that "[a]ll the limitations of a claim must be considered meaningful").
As for the specification, the Background section of the `580 Patent states that prior art systems required all modems to use a single, common modulation method:
`580 Patent at 1:26-39 (emphasis added). The specification then discloses using different modulation methods:
Id. at 2:1-8 & 5:17-22 (emphasis added).
Id. at 5:23-25 & 5:42-44 (emphasis added).
Id. at 5:65-6:2 & 6:25-29.
The specification does not, however, warrant Defendants' proposed finding that the invention is framed exclusively in the realm of monolingual tribs. Instead, the specification discloses that the advantage of using multiple modulation methods is applicable to multi-lingual tribs:
`580 Patent at 2:50-57 (emphasis added).
As to the prosecution history, Defendants have focused on: (1) a statement regarding the "present invention" during prosecution of an ancestor patent; and (2) the patentee's deletion of certain paragraphs from the specification of the patents-in-suit.
First, Defendants have cited the prosecution history of ancestor United States Patent No. 6,616,838, during which the patentee stated: "The present invention is directed to the use of differing transceivers responsive to different modulation methods to the exclusion of other modulation methods...." Dkt. No. 97, Ex. 17, 9/27/2001 First Amendment and Response at 6. Yet, the `580 Patent is a continuation of a continuation of a continuation-in-part of the `838 Patent. The multiple intervening applications render the cited prosecution statement too attenuated to be deemed definitive as to the patents-in-suit, particularly given that the patentee was adding the "exclusion" language to a claim and was referring to "[t]he present invention" in the context of that claim. See id. at 6 & A-1; see also Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1078 (Fed. Cir. 2005) ("[T]he prosecution of one claim term in a parent application will generally not limit different claim language in a continuation application."); cf. Regents of the Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 943 (Fed. Cir. 2013) ("When the purported disclaimers made during prosecution are directed to specific claim terms that have been omitted or materially altered in subsequent applications (rather than to the invention itself), those disclaimers do not apply.") (quoting Saunders Grp., Inc. v. Comfortrac, Inc., 492 F.3d 1326, 1333 (Fed. Cir. 2007)).
Second, Defendants have cited the patentee's deletion of matter from the specification of the patents-in-suit. In the case of Abbott Laboratories v. Sandoz, Inc., cited by Defendants during the May 30, 2014 hearing, the court relied at least in part upon the patentee's omission of matter contained in a parent application:
566 F.3d at 1289-90, 1299 (citation omitted).
Here, by contrast, the patentee's deletion of matter relates less directly to the limitation that Defendants seek to impose. The patentee deleted the following paragraphs during prosecution of the `580 Patent:
Dkt. No. 97, Ex. 9, 3/1/2011 Reply Pursuant to 37 CFR § 1.111 at 5-6 (RIP3521-22) (emphasis added); see id. at 22 ("The MPEP suggests that the applicant modify the brief summary of the invention and restrict the descriptive subject matter `so as to be in harmony with the claims.' MPEP 1302.01, General Review of Disclosure. Accordingly, Applicant has deleted paragraphs [0042] — [0046].") (square brackets in original); see also Dkt. No. 102, Ex. 4 at p. 20 of 44 (RIP19) (Figure 8, illustrating "Trib Type A + B"); Dkt. No. 97, Ex. 9, 3/1/2011 Reply Pursuant to 37 CFR § 1.111 at 4 (RIP3520), 22 (RIP3538) & p. 34 of 34 (RIP3549) (replacing Figure 8).
This deletion of disclosure of "a tributary transceiver 66a [that has] the ability to transmit using at least two modulation methods" is notable, and Defendants argued at the May 30, 2014 hearing that a "test signal" is merely an example of a communication with a bilingual trib. Dkt. No. 97, Ex. 9, 3/1/2011 Reply Pursuant to 37 CFR § 1.111 at 5-6 (RIP3521-22). Nonetheless, Plaintiff has persuasively argued that these paragraphs relate primarily to test signals and to measuring transmission line characteristics rather than to the use of bilingual tribs. The abovequoted Sandoz case cited by Defendants is therefore distinguishable, and the patentee's deletion of matter from the specification is of no limiting effect here. See SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1286 (Fed. Cir. 2005) ("There is no clear and unmistakable disclaimer if a prosecution argument is subject to more than one reasonable interpretation, one of which is consistent with a proffered meaning of the disputed term.") (internal quotation marks omitted); see also 01 Communique, 687 F.3d at 1297 (quoting SanDisk).
Defendants also argued at the May 30, 2014 hearing that the patentee removed this matter because it was introduced in a parent continuation-in-part application. Defendants explained that if the claims of the patents-in-suit were found to rely upon this new matter, the claims would not receive benefit of the earliest priority date. Defendants concluded that the patentee deleted these paragraphs from the specification in order to eliminate this risk. Defendants' argument in this regard appears better suited to a written description challenge because validity analysis is not a regular part of claim construction. See Phillips, 415 F.3d at 1327 ("[W]e have certainly not endorsed a regime in which validity analysis is a regular component of claim construction."). Defendants' arguments regarding deletion of matter from the specification are therefore of minimal relevance during the present claim construction proceedings.
In sum, none of the prosecution history cited by Defendants contains any definitive statements that would warrant finding a disclaimer. See Omega Eng'g v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003) ("As a basic principle of claim interpretation, prosecution disclaimer promotes the public notice function of the intrinsic evidence and protects the public's reliance on definitive statements made during prosecution.") (emphasis added). Further, as explained above, the prosecution history is not otherwise sufficiently clear to justify Defendants' narrow interpretation of the present patents-in-suit.
As to the parties' proposed constructions, "[t]he use of the terms `first' and `second' is a common patent-law convention to distinguish between repeated instances of an element or limitation." 3M Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371 (Fed. Cir. 2003). Nothing in the nature of "repeated instances" demands the incompatibility that Defendants have proposed. Cf. id. ("In the context of claim 1, the use of the terms `first . . . pattern' and `second . . . pattern' is equivalent to a reference to `pattern A' and `pattern B,' and should not in and of itself impose a serial or temporal limitation onto claim 1."). Although the above-quoted disclosures in the specification contemplate a trib that can use only one modulation method, nothing in the claim language warrants limiting the disputed terms to such a narrow construction.
The doctrine of claim differentiation also weighs against requiring incompatibility because such a limitation appears in dependent Claims 18 and 75 of the `580 Patent, which recite:
The doctrine of claim differentiation weighs against any construction of the disputed terms that would render these dependent claims superfluous. See Phillips, 415 F.3d at 1315 ("[T]he 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."); see also Liebel-Flarsheim, 358 F.3d at 910 ("[W]here the limitation that is sought to be `read into' an independent claim already appears in a dependent claim, the doctrine of claim differentiation is at its strongest."); Wenger Mfg., Inc. v. Coating Mach. Sys., Inc., 239 F.3d 1225, 1233 (Fed. Cir. 2001) ("Claim differentiation, while often argued to be controlling when it does not apply, is clearly applicable when there is a dispute over whether a limitation found in a dependent claim should be read into an independent claim, and that limitation is the only meaningful difference between the two claims.").
Defendants have countered that "any presumption created by the doctrine of claim differentiation will be overcome by a contrary construction dictated by the written description or prosecution history." Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1305 (Fed. Cir. 2011) (citations and internal quotation marks omitted); accord Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1381 (Fed. Cir. 2006) ("[C]laim differentiation can not broaden claims beyond their correct scope.") (citation and internal quotation marks omitted). On balance, Retractable is distinguishable because the above-discussed specification disclosures and prosecution history are not so clear as Defendants have urged. See Retractable, 653 F.3d at 1305 (noting that disclosures "recite that `the invention' has a body constructed as a single structure, expressly distinguish the invention from the prior art based on this feature, and only disclose embodiments that are expressly limited to having a body that is a single piece").
As to the proper construction, Defendants' proposal of "type of receiver" is vague and confusing because it is unclear whether "type" refers to the modulation method or to some other, unspecified characteristic of the receivers.
Also, Plaintiff properly argues that "encoding" is different than "modulation." For example, Plaintiff submits that the word "encode" can be defined as "to encrypt" or as "to use a code, frequently one composed of binary numbers, to represent individual characters or groups of characters in a message." Id., Ex. 4, Modern Dictionary of Electronics 341 (6th ed. 1997); id., Ex. 5, Microsoft Press Computer Dictionary 175 (3d ed. 1997); see id., Ex. 11, John G. Proakis & Masoud Salehi, Communication Systems Engineering 8-11 (1994); see also id., Ex. 12, Bernard Sklar, Digital Communications: Fundamentals and Applications 6-7 (1988).
"Modulation," by contrast, is defined as a process of varying some characteristic of a carrier signal. See Dkt. No. 97, Ex. 3, The IEEE Standard Dictionary of Electrical and Electronics Terms 662 (6th ed. 1996) ("The process by which some characteristic of a carrier is varied in accordance with a modulating wave"); see also id., Ex. 4, Modern Dictionary of Electronics 633 (6th ed. 1997) ("The process, or results of the process, whereby some characteristic of one signal is varied in accordance with another signal. The modulated signal is called the carrier and may be modulated in three fundamental ways: by varying the amplitude (amplitude modulation) by varying the frequency (frequency modulation) or by varying the phase (phase modulation)."); id., Ex. 5, Microsoft Press Computer Dictionary 313 (3d ed. 1997) ("The process of changing or regulating the characteristics of a carrier wave vibrating at a certain amplitude (height) and frequency (timing) so that the variations represent meaningful information."); id., Ex. 6, D.K. Sharma, et al., Analog & Digital Modulation Techniques: An Overview 551 (2010) ("Modulation is the process of varying some parameter of a periodic waveform in order to use that signal to convey a message."); Dkt. No. 102, Ex. 9 at RIP13523 ("Modulation is the process of encoding source data onto a continuous constant frequency signal i.e. carrier signal with frequency fc."). The specification, too, refers to a carrier in relevant contexts. See `580 Patent at 1:57 & 2:4. Finally, during oral argument as to the "different type" terms, Defendants themselves referred to modulating data onto a carrier.
Thus, even though Plaintiff itself included the word "encoding" in previously proposed constructions, Defendants' proposals of "encoding" are rejected as tending to confuse rather than clarify the scope of the claims. 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.").
The Court, having rejected Defendants' proposed constructions for the reasons set forth above, hereby construes the disputed terms as set forth in the following chart:
Dkt. No. 97 at 17; Dkt. No. 102 at 16. The parties submit that these terms appear in Claims 1 and 58 of the `580 Patent and Claims 1, 22, and 26 of the `228 Patent. Dkt. No. 81, Ex. A at 5.
Shortly before the start of the May 30, 2014 hearing, the Court provided the parties with the following preliminary construction for these disputed terms: "different families of modulation techniques, such as the FSK family of modulation methods and the QAM family of modulation methods." Plaintiff had no opposition to the preliminary construction. Defendants were opposed.
Plaintiff argues that during prosecution, the patentee defined these disputed terms by referring to "two types of modulation methods, i.e., different families of modulation techniques." Dkt. No. 97 at 18. Plaintiff further argues that "Defendants' construction, which only requires `incompatibility,' has no concept of a group of things having common characteristics. Such a construction effectively reads the word `type' right out of the claims, rendering it superfluous." Id. at 19-20.
Defendants respond:
Dkt. No. 102 at 16. Defendants also note that the word "family" does not appear in the specification. Id. at 17. Defendants suggest that the patentee used the phrase "families of modulation techniques" only in prosecution history remarks—and not in the claims—because "[i]njecting that phrase into [a] claim would have rendered it plainly unsupported by the specification and opened this portion of the claim to a written description challenge." Id. at 18. Defendants argue that Plaintiff's authorities regarding the use of "i.e." are applicable only to use of "i.e" in the specification, not the prosecution history. Id. at 19. Defendants further argue that "Defendants' construction[] gives full meaning to the word `type,' by requiring incompatibility." Id. Finally, Defendants submit that Plaintiff's proposal of "families" "only raises the further question of what constitutes a family of modulation methods." Id. at 20.
Plaintiff replies that the patentee's definition in the prosecution history is supported by disclosures of FSK (frequency-shift keying) and QAM (quadrature amplitude modulation) in the specification and in related applications cited by the specification. Dkt. No. 103 at 6. Plaintiff also argues that "nothing in the specification—certainly not the passages Defendants cite— reflects the kind of `clear and unmistakable' intent necessary to depart from the ordinary meaning and define `type' as `incompatibility.'" Id. at 6-7 (citing Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1366-67 (Fed. Cir. 2012)).
At the May 30, 2014 hearing, Defendants argued that "family" is a much broader term than "type" because modulation methods could be grouped together in any number of ways, such as analog as opposed to digital or phase modulation as opposed to frequency modulation. Defendants also argued that Plaintiff's interpretation is inconsistent with dependent Claim 43 of the `228 Patent, which recites that "at least one" of the first and second modulation methods uses phase modulation.
Plaintiff responded by reiterating that Defendants' proposed construction fails to give meaning to the constituent term "type." Plaintiff also argued that Defendants' proposal is overly restrictive because it could be read to mean that different FM radio stations use "incompatible" methods merely because they transmit at different frequencies. Plaintiff urged that the claims contemplate the use of non-incompatible modulation methods so long as they are different.
The Summary section of the specification states: "Another advantage of the present invention is that a master transceiver can communicate seamlessly with tributary transceivers or modems using incompatible modulation methods." Id. at 2:55-57 (emphasis added). Nonetheless, "[t]he court's task is not to limit claim language to exclude particular devices because they do not serve a perceived `purpose' of the invention. . . . An invention may possess a number of advantages or purposes, and there is no requirement that every claim directed to that invention be limited to encompass all of them." E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1370 (Fed. Cir. 2003); accord Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 540 F.3d 1337, 1345 (Fed. Cir. 2008) (discussing E-Pass). Defendants' proposal that different "types" of modulation methods must be "incompatible" would improperly limit the claims to a preferred embodiment. See Comark, 156 F.3d at 1187.
Moreover, although it appears in the Summary of the specification as quoted above, the word "incompatible" is unclear and, as Plaintiff has argued, would tend to raise issues concerning the manner or degree of compatibility. Along those lines, uncertainty might arise as to whether modulation methods must be completely incompatible in all respects or could instead be partially compatible. At the May 30, 2014 hearing, the Court expressed concern as to the clarity of "incompatible." Defendants responded that the disputed terms require that the modulation methods be different "waveforms," different "ways to modulate" data onto a carrier, or simply "not the same." These suggestions, however, merely restate that the methods are "different." This adds little, if anything, to the disputed terms themselves, which recite "modulation method [] of a different type" and "different types of modulation methods." Defendants' proposal of "incompatible" is therefore rejected.
The Court turns to whether Plaintiff is correct that the patentee gave the disputed terms an "express definition." Dkt. No. 97 at 19.
"The specification acts as a dictionary `when it expressly defines terms used in the claims or when it defines terms by implication.'" Bell Atl. Network Servs., 262 F.3d at 1268 (quoting Vitronics Corp., 90 F.3d at 1582). "When a patentee acts as his own lexicographer in redefining the meaning of particular claim terms away from their ordinary meaning, he must clearly express that intent in the written description. We have repeatedly emphasized that the statement in the specification must have sufficient clarity to put one reasonably skilled in the art on notice that the inventor intended to redefine the claim term." Merck, 395 F.3d at 1370 (citations omitted). "[A] patentee may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning, as long as the special definition of the term is clearly stated in the patent specification or file history." Vitronics, 90 F.3d at 1582.
During prosecution, the patentee amended claims so as to add the word "type," and the patentee stated:
Dkt. No. 97, Ex. 9, 3/1/2011 Reply Pursuant to 37 CFR § 1.111 at 20 (RIP3536); see id. at 7 (RIP3523) (amending claims). Generally, "i.e." signals an explicit definition. See, e.g., Abbott Labs. v. Novopharm Ltd., 323 F.3d 1324, 1327, 1330 (Fed. Cir. 2003) (finding that the patentee used "i.e." to define a term not known in the art at the relevant time); but see Pfizer, Inc. v. Teva Pharm., USA, Inc., 429 F.3d 1364, 1373 (Fed. Cir. 2005) (specification referred to "saccharides (i.e. sugars)" but also contained further discussion under a section titled "Saccharides," and the court concluded that "the patentee clearly intended for this section to address the meaning of the same term").
The significance of the patentee's use of "i.e." in the prosecution history—as opposed to in the specification—is perhaps less clear. On one hand, some authorities caution against relying upon potentially "self-serving" statements in the prosecution history. See Biogen, Inc. v. Berlex Labs., 318 F.3d 1132, 1140 (Fed. Cir. 2003) ("Representations during prosecution cannot enlarge the content of the specification, and the district court was correct in relying on the specification in analyzing the claims."); see also Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1270 (Fed. Cir. 1986) ("For example, a Citation [of Prior Art] filed [with the PTO] during litigation might very well contain merely self-serving statements which likely would be accorded no more weight than testimony of an interested witness or argument of counsel. Issues of evidentiary weight are resolved on the circumstances of each case."). Also, as Defendants have pointed out, dependent Claim 43 of the `228 Patent is at least somewhat at odds with Plaintiff's interpretation to the extent that it would require that only one, instead of "at least one," of the first and second modulation methods can be phase modulation.
On the other hand, a "claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history." CCS Fitness v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (emphasis added); accord Home Diagnostics, 381 F.3d at 1356; Advanced Fiber Techs. (AFT) Trust v. J&L Fiber Servs., Inc., 674 F.3d 1365, 1374 (Fed. Cir. 2012); see Vitronics, 90 F.3d at 1582 (quoted above). Such authorities weigh in favor of construing the disputed term in accordance with the patentee's express definition in the prosecution history.
At the May 30, 2014 hearing, Defendants urged that because the patentee's definition was set forth after the examiner had indicated that the claims were allowable, the definition was self-serving and was not part of the usual back-and-forth negotiation that informs the meaning of claim terms. Plaintiff properly countered, however, that the patentee provided the definition in connection with amending some of the claims so as to introduce the word "types." See Dkt. No. 97, Ex. 9, 3/1/2011 Reply Pursuant to 37 CFR § 1.111 at 20 (RIP3536) (quoted above); see also id. at 7 (RIP3523) (amending claims). Thus, to whatever extent Defendants are correct that the prosecution history can only define a term in the context of developing allowable claims, the patentee's definition in this case can properly be considered.
The patentee's express definition is also consistent with disclosure in the specification of various categories of modulation methods. See `580 Patent at 2:1-8 ("some applications (e.g., internet access) require high performance modulation, such as quadrature amplitude modulation (QAM), carrier amplitude and phase (CAP) modulation, or discrete multitone (DMT) modulation"); see also id. at 5:17-20 (similar).
Such a definition is also consistent with the extrinsic dictionary definitions submitted by Plaintiff, which define "type" as "a class, kind, or group set apart by common characteristics" and "family" as "a group of things having common characteristics." Dkt. No. 97, Ex. 22, Merriam-Webster's Dictionary and Thesaurus 291, 858 (2007); see id., Ex. 23, The American Century Thesaurus 129 (1995) (listing "type" as a synonym for "family").
On balance, the patentee's lexicography should be given effect in the Court's construction. See Vitronics, 90 F.3d at 1582; see also Abbott Labs., 323 F.3d at 1327, 1330; CCS Fitness, 288 F.3d at 1366; Advanced Fiber Techs., 674 F.3d at 1374. As to Defendants' concerns, any dispute regarding whether accused modulation techniques are from different "families" is a factual dispute regarding infringement rather than a legal dispute for claim construction. See PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998) (noting that "the task of determining whether the construed claim reads on the accused product is for the finder of fact").
Nonetheless, although Plaintiff proposes merely "different families of modulation techniques," the patentee's definition in the prosecution history includes examples, namely "the FSK family of modulation methods and the QAM family of modulation methods."
The Court accordingly hereby construes
Dkt. No. 97 at 20; Dkt. No. 102 at 23. The parties submit that the first of these terms appears in Claims 1, 23, 32, and 58 of the `580 Patent and all asserted claims of the `228 Patent. Dkt. No. 81, Ex. A at 11. The parties further submit that the second of these terms appears in Claim 40 of the `580 Patent and that the third appears in Claims 49 and 54 of the `580 Patent. Id. at 14 & 16.
Shortly before the start of the May 30, 2014 hearing, the Court provided the parties with the following preliminary constructions for these disputed terms: "communication[s] device" means "a device that sends or receives information"; "device that transmits" means "a device that sends information"; and "logic configured to transmit" means "logic configured to send information." Plaintiff had no objection to these preliminary constructions. Defendants were opposed.
Plaintiff argues that "[t]he words in these terms do not have specialized meanings, have not been otherwise defined by the patentee, and are easily understood based on their ordinary meaning." Dkt. No. 97 at 21. As to Defendants' proposals of "wires" and a "circuit-switched network," Plaintiff responds that such constructions are contrary to the recital in the claims of a generic "communication medium." Id. at 22. Plaintiff urges that the brief mention of wires in the specification is insufficient to redefine the disputed terms. Id. at 22-23. To the contrary, Plaintiff argues, during prosecution the patentee deleted text from the specification that referred to "lines." Id. at 23. Finally, Plaintiff notes that the words "circuit" and "switched" do not appear in the claims or the written description. Id. at 24.
Defendants respond that "[w]ireless networks are never mentioned in the patents-in-suit," despite wireless networks being well-known at the time the patent applications were filed, and "[t]he only example of a network mentioned in the text of the patents is a two-wired system of the prior art, upon which the alleged invention of the patents is an improvement." Dkt. No. 102 at 23; see id. at 24. Defendants also express concern that Plaintiff's proposed constructions "provide no boundaries, and as read could encompass a tin can connected to a string." Id. at 24. Finally, Defendant Blackberry proposes that the claimed invention is limited to circuit-switched networks because, "by design," "[d]evices on a packet-switched network can use different communication languages or modulation methods." Id. at 25. Blackberry cites several extrinsic treatises in support of this proposition and concludes that "[p]ut simply, in a packet-switched network there is no compatibility problem for the patents to solve, and the purported invention is unnecessary." Id. at 25-26.
Plaintiff replies that the patents-in-suit "do not limit the invention to wired or wireless `modems'/'communication media' because both were well-known at the time." Dkt. No. 103 at 8 (citations and footnote omitted). Plaintiff also argues: "Defendants read too much into the Figures. Communications medium 94 is depicted as a line in Figs. 3-4, but that does not imply a wire any more than the absence of a line implies wireless." Id. at 8 n.7. As to Blackberry's proposal, Plaintiff replies that the patents-in-suit do not refer to "circuit-switched" or "packet-switched" networks because "the patents-in-suit are not concerned with low-level network switching protocols, but rather with `sending transmissions modulated using at least two types of modulation methods.'" Id. (quoting `580 Patent at 2:30-31). Plaintiff also submits that "Blackberry has zero evidence to support its claim that devices on a packet-switched network can use different [] modulation methods by design." Id. (quoting Dkt. No. 102 at 25).
At the May 30, 2014 hearing, Defendants again highlighted the use of a solid line in the Figures to illustrate the communication medium. Defendants argued that the appropriate way to illustrate wireless communication would have been with an antenna or with a series of three closely-spaced curved lines. Defendants also noted that the provisional patent application refers to a "two-wire" modem. See Dkt. No. 97, Ex. 13 at 5. Finally, Defendant Blackberry presented no oral argument on its proposals of "circuit-switched" and instead submitted its proposed constructions on the briefing.
Although Plaintiff has proposed that no constructions are required, the parties have presented a "fundamental dispute regarding the scope of . . . claim term[s]," and the Court has a duty to resolve that dispute. O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362-63 (Fed. Cir. 2008).
As a threshold matter, Defendants have not argued that their proposals of a wired network or a circuit-switched network are supported by anything within the claims at issue. The issue, then, is whether Defendants' proposed limitations are adequately supported by anything in the specification or the extrinsic evidence cited by the parties.
As to Defendants' proposals of requiring a wired network, the specification only once refers to wires:
`580 Patent at 4:51-54. This passage is insufficient to limit the claims to wired networks, particularly given that it refers to a discussion of only one or two of the Figures. See id. at 3:40-4:50; see also Comark, 156 F.3d at 1187. Moreover, Defendants have acknowledged that the "foregoing discussion" referred to in this passage is a discussion of "a two-wired system of the prior art." Dkt. No. 102 at 23.
In several other instances, the specification refers to a "communication medium," but those disclosures do not address whether the medium is wired or wireless. See `580 Patent at 2:52-54 ("One advantage of the present invention is that it provides to [sic, for] the use of a plurality of modem modulation methods on the same communication medium."), 3:40-44 ("With reference to FIG. 1, a prior art multipoint communication system 22 is shown to comprise a master modem or transceiver 24, which communicates with a plurality of tributary modems (tribs) or transceivers 26-26 over communication medium 28.") & 5:44-46 ("The master transceiver 64 communicates with trib 66 over communication medium 94.").
Defendants also argue that Figures 3 and 4 depict a wired network because the "communication medium 94" is illustrated by either solid line connectors (Figure 3) or a solid line (Figure 4). See Dkt. No. 102 at 24. First, as Plaintiff has urged, any argument that solid lines cannot represent a wireless network is conclusory speculation. Second, even if Figures 3 and 4 were interpreted as depicting a wired network, "patent coverage is not necessarily limited to inventions that look like the ones in the figures. To hold otherwise would be to import limitations [i]nto the claim[s] from the specification, which is fraught with danger." MBO Labs. Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1333 (Fed. Cir. 2007).
Thus, the specification does not support limiting the claims to wired networks. This conclusion is reinforced by prosecution history in which the examiner rejected claims that recited a "communications device" and "logic configured to transmit" based on the "Siwiak" reference, which discloses a wireless communications system. Dkt. No. 97, Ex. 14, 9/1/2010 Office Action at 2-4 (RIP72-74); id., Ex. 20 at 13 & 20 (RIP23 & RIP30) (application claims); see id., Ex. 15, U.S. Pat. No. 5,537,398 (Siwiak) at 2:24-41 ("The messaging system includes a plurality of geographically distributed messaging transmitters, each comprising means for generating a radio frequency signal."); see also Salazar v. Procter & Gamble Co., 414 F.3d 1342, 1347 (Fed. Cir. 2005) ("Statements about a claim term made by an Examiner during prosecution of an application may be evidence of how one of skill in the art understood the term at the time the application was filed."). Finally, although the weight that the specification amendments should be given here is unclear, it is worth noting that the patentee deleted paragraphs from the specification that referred to "transmission line characteristics." Id., Ex. 9, 3/1/2011 Reply Pursuant to 37 CFR § 1.111 at 5-6 (RIP3521-22) (emphasis added).
As to extrinsic evidence, Plaintiff has submitted two news articles from the relevant time period that use the phrase "wireless modem." Dkt. No. 103, Ex. 33, Ericsson announces its M2190 OEM Wireless Modem, first PCMCIA modem for mobile data connectivity, Business Wire, Nov. 2, 1994; id., Ex. 34, A Wireless Modem that Could Leave `Em in the Dust, BusinessWeek, Feb. 24, 1997. Use of the word "modem" in the patents-in-suit is therefore insufficient to require a wired network. Finally, Plaintiff has submitted a dictionary definition of "medium," in the context of "information transfer," as not being limited to wires but rather being any "vehicle capable of transferring data." Dkt. No. 97, Ex. 3, The IEEE Standard Dictionary of Electrical and Electronics Terms 643 (6th ed. 1996).
In sum, Defendants have failed to justify limiting the claims to wired networks. The Court therefore turns to the additional proposals by Defendant Blackberry.
Blackberry has submitted extrinsic evidence in support its argument that the claimed invention only has relevance in circuit-switched networks, not packet-switched networks. Dkt. No. 102, Ex. 11, Gurdeep S. Hura & Mukesh Singhal, Data and Computer Communications: Networking and Internetworking 130-31 (2001) ("In the case of packet-switched networks, stations with different data rates can communicate with each other, and the necessary conversion between different data rates is done by the network, while in the case of circuit-switched networks, both stations must have the same data rate."); id., Ex. 12, William Stallings, Data and Computer Communications 254-55 (5th ed. 1997) ("In [a] circuit-switching network, the connection provides for transmission at a constant data rate. Thus, each of the two devices that are connected must transmit and receive at the same data rate as the other . . . ."; "A packetswitching network can perform data-rate conversions. Two stations of different data rates can exchange packets because each connects to its node at its proper data rate."); id., Ex. 13, Youlu Zheng & Shakil Akhtar, Networks for Computer Scientists and Engineers 125 (2002) ("Whereas. . . two networks connected by a circuit switch must operate at the same speed, packet switching can connect networks operating at different speeds.").
A circuit-switched network, at least in the context of Blackberry's proposals, appears to be a species of wired network. The Court therefore rejects Blackberry's proposals based on the Court's rejection of Defendants' proposals of "over wires," above.
Alternatively, even if Blackberry is proposing a circuit-switched network limitation that can be either wired or wireless, Blackberry's above-cited reliance on extrinsic evidence is disfavored. See Phillips, 415 F.3d at 1322 ("There is no guarantee that a term is used in the same way in a treatise as it would be by the patentee. In fact, discrepancies between the patent and treatises are apt to be common because the patent by its nature describes something novel.").
As to Blackberry's reliance on the purpose of the invention (avoiding the inefficiencies of requiring all devices to use the same modulation method), Blackberry is correct as a general matter that "the problem the inventor was attempting to solve, as discerned from the specification and the prosecution history, is a relevant consideration." CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1160 (Fed. Cir. 1997).
Nonetheless, "[t]he court's task is not to limit claim language to exclude particular devices because they do not serve a perceived `purpose' of the invention. . . . An invention may possess a number of advantages or purposes, and there is no requirement that every claim directed to that invention be limited to encompass all of them." E-Pass, 343 F.3d at 1370; accord Howmedica, 540 F.3d at 1345 (discussing E-Pass).
Blackberry has also cited Applied Materials, Inc. v. Advanced Semiconductor Materials America, Inc., 98 F.3d 1563, 1573 (Fed. Cir. 1996). In Applied Materials, the patent specification disclosed a problem of electrostatic contamination in the context of a "cold purge" from a chamber:
Id. at 1571, 1573. The limitation imposed in Applied Materials was thus founded on intrinsic disclosures regarding circumstances in which the stated problem presented itself. Here, by contrast, Blackberry relies upon extrinsic evidence in support of the proposed "circuit-switched" limitation. The patents-in-suit contain no reference to circuit-switched networks. Applied Materials is therefore distinguishable.
The Court accordingly rejects Defendants' proposed "over wires" and "circuit-switched" limitations. The parties are otherwise in agreement as to the proper meaning of the disputed terms, as set forth by Plaintiff's alternative proposed constructions. Although the plain and ordinary meaning of the disputed terms may well be readily understandable once Defendants' proposed limitations have been rejected, the existence of common ground in the parties' proposals is notable and should be given effect.
As to Defendants' statement that Plaintiff's proposals would "encompass a tin can connected to a string" (Dkt. No. 102 at 24), Defendants' concern is unwarranted because other claim language appropriately limits the scope of the claims. Further, to whatever extent Defendants' concern relates to validity, such arguments are of limited relevance during claim construction proceedings. See Phillips, 415 F.3d at 1327 ("[W]e have certainly not endorsed a regime in which validity analysis is a regular component of claim construction.").
For all of these reasons, the Court hereby construes the disputed terms as set forth in the following chart:
Dkt. No. 97 at 24; Dkt. No. 102 at 20. The parties submit that the first of these disputed terms appears in dependent Claims 29, 31, and 36 of the `228 Patent. Dkt. No. 81, Ex. A at 20. The parties submit that the second of these disputed terms appears in dependent Claim 51 of the `228 Patent. Id. at 21.
Shortly before the start of the May 30, 2014 hearing, the Court provided the parties with the following preliminary constructions for these disputed terms: "training signal" means "a transmission that signifies the beginning of a transmission sequence and determines one or more properties of the transmission sequence"; and "trailing signal" means "a transmission that signifies the end of a transmission sequence." Plaintiff had no opposition to these preliminary constructions. Defendants were opposed.
Plaintiff argues that Defendants' proposals "improperly limit the claims to part of a preferred embodiment, in which some training and trailing signals `can have a different intended destination from the subsequent data transmission.'" Dkt. No. 97 at 25. Plaintiff explains that "[w]hile in a preferred embodiment some of the training and trailing signals have a different intended destination than the data transmission, others do not." Id. at 26 (discussing `580 Patent at Figure 8). Plaintiff also argues that Defendants' proposal of "distinct" is vague and "has zero support in the record." Dkt. No. 97 at 25 & 27. Plaintiff submits that "[t]he specification focuses on the order and function of the components—not their `distinctness.'" Id. at 27.
As to "training signal," Defendants respond that the "capab[ility] of having a different intended destination from the subsequent data transmission" is "central to the alleged invention." Dkt. No. 102 at 20. Defendants explain:
Dkt. No. 102 at 21. As to their proposal of a "distinct" transmission, Defendants argue that the specification "uniformly depicts the training signal as a discrete communication." Id. at 22 (citing `580 Patent at Fig. 5).
As to "trailing signal," Defendants respond that "the specification teaches that, just as the training signal notifies a type A trib of an impending change to type B modulation, the trailing signal notifies the type A trib that the type B data transmission is over. The trailing signal must be capable of having a different intended destination from the corresponding data transmission for the same reasons as the training signal." Dkt. No. 102 at 22 (citing `580 Patent at 6:16-19). Finally, Defendants emphasize that their proposals "state that the training and trailing signals `can have' different intended destinations from the intervening data transmissions, not that they must." Id. at 23.
Plaintiff replies that although one of the disclosed embodiments is consistent with Defendants' proposed constructions, Figure 8 illustrates a "communication session 170" in which "the training signal, communication signal, and trailing signal all have the same intended destination—the Type A transceiver." Dkt. No. 103 at 9. Finally, Plaintiff argues that "the specification focuses on the order and function of the transmitted components, not whether they are `distinct.'" Id.
At the May 30, 2014 hearing, Defendants reiterated that the destinations need not necessarily be different. Nonetheless, Defendants explained, that capability is a limitation because the central purpose of a training signal is to instruct a trib to ignore a subsequent transmission. Defendants also submitted that they would be amenable to substituting the word "discrete" for the word "distinct" in Defendants' proposed constructions.
Plaintiff responded that a "training signal" can also be useful for enabling a master to change modulation methods when communicating with a bilingual trib, perhaps to overcome interference by using a more robust modulation method.
The disputed terms appear in Claims 29, 31, 36, and 51 of the `228 Patent, which recite (emphasis added):
Nothing in these dependent claims requires that the recited "training signal" or "trailing signal" must be capable of having a different intended destination than the data transmission. Claims 31 and 36 depend from Claim 29, which in turn depends from independent Claim 26. Claim 26 recites the antecedent basis for "the first transmission sequence" recited in Claim 29 (emphasis added; formatting modified):
Claim 26 thus recites "first transmitted signals" that include a "first transmission sequence" using a first modulation method and a "second transmission sequence" using a second modulation method. The "first transmission sequence" indicates a change from the first modulation method to the second modulation method, and "the second transmission sequence includes a payload portion that is transmitted after the first transmission sequence." The "first transmitted signals" also "include first address information that is indicative of the slave device being an intended destination of the payload portion." Claim 26 further recites "second transmitted signals" with limitations comparable to those of the "first transmitted signals," except that both transmission sequences are transmitted using the first modulation method.
Nowhere does Claim 26 recite that the first transmission sequence must be able to have an intended destination different from that of the subsequent payload. Claim 26 thus contains no support for imposing any such limitation on the "training signal" that is recited in dependent Claims 29, 31, and 36. Similarly, nothing in the claims suggests any such limitation as to the "trailing signal" recited in Claim 51.
Defendants have submitted that, in some cases, disclosure of a critical feature for achieving a central objective can warrant limiting the claims accordingly. See Alloc, 342 F.3d at 1369-70 (noting that the "specification . . . criticizes prior art floor systems without play" and finding that the "specification read as a whole leads to the inescapable conclusion that the claimed invention must include play in every embodiment"); see also Honeywell Int'l, Inc. v. ITT Indus., 452 F.3d 1312, 1318 (Fed. Cir. 2006) ("The written description's detailed discussion of the prior art problem addressed by the patented invention, viz., leakage of non-metal fuel filters in EFI [(electronic fuel injection)] systems, further supports the conclusion that the fuel filter is not a preferred embodiment, but an only embodiment.").
This is not such a case. The specification uses the terms "training signal," "training sequence," "trailing signal," and "trailing sequence" several times but does not mandate that such signals or sequences be capable of having a different intended destination than a data transmission. For example, the specification discloses:
`228 Patent at 4:3-5:7 (emphasis added).
Id. at 6:4-13 & 6:27-44 (emphasis added).
Id. at 7:11-21 (emphasis added). Contrary to Defendants' arguments, the specification does not establish that the sole purpose of a training signal, for example, must be to notify a trib that the trib will not understand the subsequent data transmission because that data is intended for a different trib. See Dkt. No. 102 at 21-22.
As to extrinsic evidence, Plaintiff has cited a dictionary definition of "header" as: "Identification or control information placed at the beginning of a file or message. Contrast: trailer." Dkt. No. 97, Ex. 3, The IEEE Standard Dictionary of Electrical and Electronics Terms 479 (1996). Plaintiff has also cited definitions of "trailer" as: "Identification or control information placed at the end of a file or message. Contrast: header"; and "The contiguous control bits following a transmission that contain information used for such purposes as bit error detection and end-of-transmission indication. Contrast: header." Id. at 1126.
The claims, specification, and extrinsic evidence are therefore all consistent with Plaintiff's proposal that a "training signal" marks the beginning of a communication session and a "trailing signal" marks the end of a communication session.
As to Defendants' proposals, Defendants have not argued that "training signal" and "trailing signal" are coined terms that the patentee defined in relation to what Defendants have argued is the sole purpose of the invention. To the extent that the specification discloses training and trailing signals that have destinations different from those of associated data transmissions, that capability is a feature of preferred embodiments and should not be imported into the claims. See Comark, 156 F.3d at 1187 ("[The specification] simply details how the video delay circuit is to be used in a single embodiment of the invention."). TThe Court therefore rejects Defendants' argument that the "training signal" and "trailing signal" must be capable of having a different intended destination than an associated data transmission.
Similarly, as noted above, Defendants have relied upon items 106, 126, and 138 in Figure 5 to support their argument that the "training signal" and "traiiling signal" must be "distinct" or "discrete" transmissions. Figure 5 is reproduced here:
Defendants have failed to demonstrate that this illustration of a preferred embodiment is limiting. See MBO Labs., 474 F.3d at 1333 ("patent coverage is not necessarily limited to inventions that look like the ones in the figures"). Defendants' proposals in this regard are therefore rejected.
As to the proper constructions, Plaintiff's use of the word "signifies" is supported by the specification, particularly as to the term "trailing signal." See `228 Patent at 4:43-45 ("master transceiver 24 transmits data 36 to trib 26a followed by trailing sequence 38, which signifies the end of the communication session") & 7:19-21 ("master transceiver 64 transmits a trailing sequence 134 using type A modulation signifying the end of the current communication session"). The above-quoted disclosures demonstrate that a "training signal" should be construed in a similar manner.
Finally, at the May 30, 2014 hearing, Plaintiff had no objection to Defendants' proposal that a "training signal" must "establish[] properties of a subsequent data transmission."
The Court accordingly hereby construes the disputed terms as set forth in the following chart:
Dkt. No. 97 at 27; Dkt. No. 102 at 26. The parties submit that this term appears in Claim 31 of the `228 Patent. Dkt. No. 81, Ex. A at 19.
Shortly before the start of the May 30, 2014 hearing, the Court provided the parties with the following preliminary construction for this disputed term: "adjusting signal parameters in the receiver." Plaintiff had no opposition to the Court's preliminary construction. Defendants were opposed.
Plaintiff argues that "just as there are many different `signal levels'—Defendants' dictionary acknowledges `voltage, current, power, phase shift, or frequency,' to name a few— there are many different ways to compensate those signal levels. For example, the frequency or phase shift of a signal may be compensated independent of the signal's amplitude." Dkt. No. 97 at 28.
Defendants respond that "[t]echnical dictionaries [(quoted below)] define `signal level' as the strength or power of a signal." Dkt. No. 102 at 26. Defendants argue that Plaintiff's proposed construction "fails to give meaning to the word `level.'" Id. at 27. Defendants explain that "frequency represents the number of signal cycles in a given time period, and phase reflects the signal's position on the x-axis (time). These are not measures of the signal's `level,' i.e., its strength or power." Id. Defendants argue that their multiple, unambiguous dictionary definitions outweigh Plaintiff's "lone and secondary definition." Id. at 28.
Plaintiff replies that the extrinsic dictionary definitions cited by the parties do not limit "signal level" to "amplitude." Dkt. No. 103 at 10.
At the May 30, 2014 hearing, Defendants acknowledged that frequency and phase are characteristics that may be said to have a "level," but Defendants maintained that a person of ordinary skill in the art at the relevant time would have understood "signal level" as referring to amplitude. Plaintiff responded that none of the evidence cited by Defendants refers to "amplitude." Defendants replied that they would have no objection to a construction that referred to "strength" instead of "amplitude." Defendants nonetheless reiterated that in no event should the disputed term encompass frequency or phase.
Claim 31 of the `228 Patent recites:
Claim 31 depends from Claim 29 and, in turn, Claim 26, but nothing in these claims informs the meaning of "signal level compensation." Likewise, the specification identifies "signal level compensation" as one of the uses of training signals (see `580 Patent at 3:53-56), but the specification does not otherwise discuss the term.
Plaintiff submits a technical dictionary definition of "compensation" as: "The controlling elements which compensate for, or offset, the undesirable characteristics of the process to be controlled in the system." Id., Ex. 4, Modern Dictionary of Electronics 184 (6th ed. 1997). This aspect of the disputed term does not appear to be in dispute. Instead, the parties disagree on the scope of the term "signal level."
Plaintiff has cited a technical dictionary definition of "signal level" as: "The magnitude of a signal parameter or element, such as the magnitude of the electric field strength, voltage, current, power, phase shift, or frequency." Dkt. No. 97, Ex. 27, Communications Standard Dictionary 906 (3d ed. 1996). As Defendants have noted, however, that same dictionary alternatively defines "signal level" as: "A measure of the power of a signal at a specified point in a communications system." Id.
Defendants have also submitted additional dictionaries that define "signal level" in terms of power. Dkt. No. 102, Ex. 14, Dictionary of Communications Technology 401 (2d ed. 1995) ("The strength of a signal, generally expressed in either units of voltage or power."); id., Ex. 15, Newton's Telecom Dictionary 544 (11th ed. 1996) ("The strength of a signal, generally expressed in either absolute units of voltage or power, or in units relative to the strength of the signal at its source."); id., Ex. 16, Dictionary of Telecommunications 250 (1981) ("The magnitude of a signal at a point in a telecommunication circuit. This can be expressed as an absolute power level in decibels relative to one milliwatt (dBm).") (italics omitted).
In reply, Plaintiff has cited extrinsic articles that refer to signal "frequency level" and signal "phase level." Dkt. No. 103, Ex. 38, Hamid Nawab, et al., Diagnosis Using the Formal Theory of a Signal-Processing System 373 (1987); id., Ex. 39, Marco Antonio Chamon & Gerard Salut, Particle Filtering of Radar Signals for Non-Cooperating Target Imaging 1041 (1998); see id., Ex. 40, U.S. Pat. No. 3,953,798 at 3:56-63. Plaintiff argues these articles establish that frequency and phase can each have a "level."
These competing definitions and usages demonstrate why extrinsic sources must be considered with caution. See Phillips, 415 F.3d at 1321 ("[H]eavy 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. * * * [T]here may be a disconnect between the patentee's responsibility to describe and claim his invention, and the dictionary editors' objective of aggregating all possible definitions for particular words."); see also id. at 1322 ("There is no guarantee that a term is used in the same way in a treatise as it would be by the patentee. In fact, discrepancies between the patent and treatises are apt to be common because the patent by its nature describes something novel.").
On balance, because the specification refers to "phase . . . modulation" as well as "amplitude modulation" (see id. at 2:5-6), the Court rejects Defendants' reliance on extrinsic evidence and accordingly rejects Defendants' proposal to limit the disputed term to amplitude. See Phillips, 415 F.3d at 1321.
The Court therefore hereby construes
Dkt. No. 97 at 29; Dkt. No. 102 at 28. The parties submit that this term appears in Claim 22 of the `228 Patent. Dkt. No. 81, Ex. A at 21.
Shortly before the start of the May 30, 2014 hearing, the Court provided the parties with the following preliminary construction for this disputed term: "Plain meaning."
Plaintiff argues that "[t]he plain and ordinary meaning of the instant term is apparent on its face and from the context of the surrounding claim language." Dkt. No. 97 at 29. Plaintiff further argues that Defendants' proposed construction "inject[s] an `instead of the first modulation method' limitation" that "is unnecessary, because it does not help to clarify or explain the meaning of the instant term." Id. at 30.
Defendants respond that "[t]he specification discloses a training signal that indicates a change to a different modulation method." Dkt. No. 102 at 28. Defendants argue: "Claim 22 therefore must be construed to require an indication of an impending change to a second modulation method (i.e., that "the second modulation method will be used instead of the first modulation method"), not simply that a second modulation method will be used." Id. at 29. Defendants conclude that "[p]ermitting the claim to encompass a mere indication of the forthcoming modulation method, rather than a change to that method, would result in a failure of both the written description and enablement requirements under [35 U.S.C.] Section 112(a)." Id. at 30.
Plaintiff replies that "Defendants' construction adds unnecessary verbiage to an unambiguous claim." Dkt. No. 103 at 10.
At the May 30, 2014 hearing, Plaintiff acknowledged that the disputed term and the surrounding claim language require a change from one modulation method to another modulation method. Plaintiff maintained that because this is clear on the face of the claim, no construction is necessary. Plaintiff concluded that Defendants' proposed construction should be rejected as tending to introduce a new limitation or as otherwise confusing the meaning of the claim. Defendants responded that clarification is warranted because the entire purpose of the purported invention is to notify and then to change modulation methods.
The Summary of the Invention refers to a "change in modulation":
`228 Patent at 2:27-31 & 2:51-56 (emphasis added). The specification similarly discloses:
Id. at 6:27-44 (emphasis added); see id. at Figs. 5, 7 & 8 (illustrating "Change to Type B").
Claim 22 of the `228 Patent, which is the only claim that contains the disputed term, recites (emphasis added):
On balance, the recital that the "first portion is modulated according to a first modulation method"—coupled with the recital in the disputed term that "the second modulation method will be used for modulating the payload data in the payload portion of the first communication"—is clear on its face.
Further, as noted above, Plaintiff has agreed that the disputed term and the surrounding claim language require a change from one modulation method to another modulation method.
Defendants' proposed clarification is therefore unnecessary and would tend to confuse rather than clarify the scope of the claim. 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."); 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.").
The Court accordingly hereby expressly rejects Defendants' proposed construction and hereby construes
The Court adopts the constructions set forth in this opinion for the disputed terms of the patents-in-suit.
The parties are ordered that they may not refer, directly or indirectly, to each other's claim construction positions in the presence of the jury. Likewise, the parties are ordered to refrain from mentioning any portion of this opinion, other than the actual definitions adopted by the Court, in the presence of the jury. Any reference to claim construction proceedings is limited to informing the jury of the definitions adopted by the Court.
