ROY S. PAYNE, Magistrate Judge.
On March 17, 2015, the Court held a hearing to determine the proper construction of the disputed claim terms in United States Patents No. 5,754,946, 5,809,428, and 5,894,506. After considering the arguments made by the parties at the hearing and in the parties' claim construction briefing (Dkt. Nos. 55, 57 & 58),
Plaintiff brings suit alleging infringement of United States Patents No. 5,754,946 ("the '946 Patent"), 5,809,428 ("the '428 Patent"), and 5,894,506 ("the '506 Patent") (collectively, the "patents-in-suit"). In general, the patents-in-suit relate to wireless messaging systems.
The '946 Patent is titled "Nationwide Communication System." The '946 Patent issued on May 19, 1998, and bears a filing date of September 21, 1993. The Abstract of the '946 Patent states:
The '428 Patent is titled "Method and Device for Processing Undelivered Data Messages in a Two-Way Wireless Communications System." The '428 Patent issued on September 15, 1998, and bears a filing date of July 25, 1996. The '428 Patent incorporates by reference the '946 Patent. '428 Patent at 1:36-39. In general, the '428 Patent relates to acknowledging receipt of data messages and probe messages. The Abstract of the '428 Patent states:
The '506 Patent is titled "Method and Apparatus for Generating and Communicating Messages Between Subscribers to an Electronic Messaging Network." The '506 Patent issued on April 13, 1999, and bears a filing date of September 5, 1996. In general, the '506 Patent relates to conveying so-called "canned" messages. The Abstract of the '506 Patent states:
The Court previously addressed the patents-in-suit in Mobile Telecommunications Technologies, LLC v. Sprint Nextel Corp., et al., No. 2:12-CV-832, Dkt. No. 162 (E.D. Tex. May 2, 2014) ("Sprint," sometimes referred to by the parties as the "Apple Markman Order") (attached to Plaintiff's opening brief as Exhibit F); see Civil Action Nos. 2:13-CV-258, 2:13-CV-259 (consolidated with Sprint). In that litigation, the Court also addressed claim construction in a Memorandum Order denying Defendant Apple Inc.'s Motion for Summary Judgment. Civil Action No. 2:12-CV-832, Dkt. No. 384 (E.D. Tex. Nov. 7, 2014) ("Apple Summary Judgment Order") (attached to Plaintiff's opening brief as Exhibit G).
The Court also provided clarification regarding the term "retransmission" in a Memorandum Order granting in part and denying in part Plaintiff's Emergency Motion for Claim Construction in Mobile Telecommunications Technologies, LLC v. Samsung Telecommunications America, LLC, No. 2:13-CV-259, Dkt. No. 81 (E.D. Tex. Dec. 11, 2014) ("Samsung Supplemental Order") (attached to Plaintiff's opening brief as Exhibit H).
Further, the Court addressed the '946 Patent and the '428 Patent in Mobile Telecommunications Technologies, LLC v. Amazon.com, Inc., No. 2:13-CV-883, Dkt. No. 79 (E.D. Tex. Nov. 5, 2014) ("Amazon") (attached to Plaintiff's opening brief as Exhibit I).
Plaintiff has organized its briefing by separating ordinary disputed terms from disputed terms that Defendant argues are means-plus-function terms. Defendant's briefing addresses the disputed terms on a patent-by-patent basis. Because Sprint and Amazon addressed the disputed terms on a patent-by-patent basis, the Court does so again here, below.
As a threshold matter, Plaintiff has argued that Defendant's indefiniteness arguments regarding various "means" terms should be rejected because Defendant has not supported its arguments with any expert testimony. Plaintiff relies upon Elcommerce.com, Inc. v. SAP AG, 745 F.3d 490 (Fed. Cir. 2014). Plaintiff acknowledges that the Elcommerce decision was vacated. Dkt. No. 58 at 6 n.5; see Elcommerce.com, Inc. v. SAP AG, 564 F. App'x 599 (Fed. Cir. June 6, 2014). Plaintiff nonetheless argues: "The vacation of El Commerce did not operate as a rejection of the Federal Circuit's reasoning. Rather, the decision was seemingly vacated as a result of the parties' settlement. The Federal Circuit in no way indicates that the underlying decision was incorrect." Dkt. No. 58 at 6 n.5. Plaintiff has cited no authority to support its argument that a vacated decision can be cited and relied upon for legal propositions contained therein. Cf. A123 Sys., Inc. v. Hydro-Quebec, 626 F.3d 1213, 1219 (Fed. Cir. 2010) (noting that a particular vacated decision was "of no precedential value").
Finally, in a Notice filed March 16, 2015, Plaintiff submits that it now asserts only Claims 1, 3, 4, 5, and 8 of the '946 Patent, Claims 8, 9, 10, 11, and 19 of the '506 Patent, and Claims 8 and 9 of the '428 Patent. Dkt. No. 61.
Shortly before the start of the March 17, 2015 hearing, the Court provided the parties with the Court's preliminary constructions of the disputed terms, based upon review of the parties' briefing, with the aim of focusing the parties' arguments and facilitating discussion. Those preliminary constructions are set forth within the discussion of each term, below.
"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 the claim scope. Phillips, 415 F.3d at 1316. In these situations, the inventor's lexicography governs. Id. The specification may also resolve the meaning of ambiguous claim terms "where the ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of the claim to be ascertained from the words alone." Teleflex, 299 F.3d at 1325. But, "[a]lthough the specification may aid the court in interpreting the meaning of disputed claim language, particular embodiments and examples appearing in the specification will not generally be read into the claims." Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); accord Phillips, 415 F.3d at 1323.
The prosecution history is another tool to supply the proper context for claim construction because a patent applicant may also define a term in prosecuting the patent. Home Diagnostics, Inc., v. Lifescan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) ("As in the case of the specification, a patent applicant may define a term in prosecuting a patent."). "[T]he prosecution history (or file wrapper) limits the interpretation of claims so as to exclude any interpretation that may have been disclaimed or disavowed during prosecution in order to obtain claim allowance." Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985).
Although extrinsic evidence can be useful, it is "less significant than the intrinsic record in determining the legally operative meaning of claim language." Phillips, 415 F.3d at 1317 (citations and internal quotation marks omitted). Technical dictionaries and treatises may help a court understand the underlying technology and the manner in which one skilled in the art might use claim terms, but technical dictionaries and treatises may provide definitions that are too broad or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert testimony may aid a court in understanding the underlying technology and determining the particular meaning of a term in the pertinent field, but an expert's conclusory, unsupported assertions as to a term's definition are entirely unhelpful to a court. Id. Generally, extrinsic evidence is "less reliable than the patent and its prosecution history in determining how to read claim terms." Id.
The Supreme Court of the United States has "read [35 U.S.C.] § 112, ¶ 2 to require that a patent's claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty." Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2129 (2014). "A determination of claim indefiniteness is a legal conclusion that is drawn from the court's performance of its duty as the construer of patent claims." Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005) (citations and internal quotation marks omitted), abrogated on other grounds by Nautilus, 134 S.Ct. 2120.
In general, prior claim construction proceedings involving the same patents-in-suit are "entitled to reasoned deference under the broad principals of stare decisis and the goals articulated by the Supreme Court in Markman, even though stare decisis may not be applicable per se." Maurice Mitchell Innovations, LP v. Intel Corp., No. 2:04-CV-450, 2006 WL 1751779, at *4 (E.D. Tex. June 21, 2006) (Davis, J.); see TQP Development, LLC v. Inuit Inc., No. 2:12-CV-180, 2014 WL 2810016, at *6 (E.D. Tex. June 20, 2014) (Bryson, J.) ("[P]revious claim constructions in cases involving the same patent are entitled to substantial weight, and the Court has determined that it will not depart from those constructions absent a strong reason for doing so."); see also Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 839-40 (2015) ("prior cases will sometimes be binding because of issue preclusion and sometimes will serve as persuasive authority") (citation omitted).
The parties have reached agreement on constructions for certain terms, as stated in their P.R. 4-3 Joint Claim Construction and Prehearing Statement (Dkt. No. 49 at Ex. A) and in their P.R. 4-5(d) Joint Claim Construction Chart (Dkt. No. 59 at Ex. B).
In the course of briefing, the parties have also reached agreement that the terms "means for transmitting radio frequency signals containing a message to the mobile unit," "means for receiving, from the mobile unit, radio frequency signals representing a portion of the message that the user desires retransmission," and "means for receiving a radio frequency message from the network" in the '946 Patent do not require construction. Dkt. No. 57 at 2 n.1.
The parties' agreements are set forth in Appendix A to this Claim Construction Memorandum and Order.
Dkt. No. 55 at 5; Dkt. No. 57 at 2-3 (emphasis omitted).
Shortly before the start of the March 17, 2015 hearing, the Court provided the parties with the following preliminary construction: "less than the entire displayed message."
Plaintiff argues that Defendant's proposal of substituting "part" for "portion" "is made without reason and serves only to confuse the jury." Dkt. No. 55 at 5. Plaintiff also argues that Defendant's proposed construction is inconsistent with the Court's prior rulings in Amazon as well as in the Sprint litigation involving defendants Apple Inc. ("Apple") and Samsung Telecommunications America, LLC ("Samsung"). Id.
Defendant responds that clarification is needed that, "[a]s clearly indicated by the claim language and specification, the purpose of the retransmission request is to obtain a better copy of the portion that was previously sent by the network and garbled during transmission." Dkt. No. 57 at 3. Defendant submits that "[t]he network does not send out a copy of the portion of the message containing the same errors that appeared in the original message" but instead the system retransmits the original message, or portions thereof, a second time. Id. at 4-5; see id. at 8 ("[T]here must have been a prior attempt to transmit to the mobile device the requested portions for retransmission that were not displayed.") Defendant also seeks clarification that the term "transmission" means that "[t]he network sent the message, but the mobile device did not necessarily receive it." Id. at 6. Defendant concludes that "the previous message sent by the network need not be received by the mobile unit — correctly or at all — but it must have been sent to the mobile unit." Id. at 7; see id. at 8 ("The '946 patent does not contemplate retransmission of portions for which an initial transmission attempt to the mobile device was not made, and [Plaintiff] should not be permitted to expand the scope of its claims to any such embodiments.").
Plaintiff replies that "independent claims 1, 7 and 8 contain no reference at all to a cause or reason for the retransmission request (such as an error in the message). In fact, the word `error' does not even appear in the independent claims." Dkt. No. 58 at 1. Plaintiff argues that in addition to limiting the claims to a preferred embodiment, Defendant overlooks other ways in which an error could occur, "for example, from the transmission of the message from the original sender to the base receiver ('946 Pat. at 19:10-22), or during message processing at the network operations center before retransmission to the mobile unit." Id. at 2. Further, Plaintiff argues, Claims 1 and 8 require only a "retransmission," not transmitting and retransmitting. Id. Plaintiff emphasizes that "this Court has previously rejected limiting the claims in such a way that retransmission must occur `from the same source to the same destination,' which is essentially the same position [Defendant] advances here." Id. at 3 (citing Samsung Supplemental Order at 2).
At the March 17, 2015 hearing, neither side had any objection to the Court's proposed construction except that Plaintiff maintained that the Court should include, in its construction, the findings set forth in Sprint and Amazon that Plaintiff has proposed here.
In Sprint and in Amazon, the Court construed this disputed term to mean "less than the entire displayed message." See Sprint at 21-25; see also Amazon at 10-16. In particular, in Sprint the Court found that "the term `portion' refers to something less than an entire message." Sprint at 24.
In Amazon, the Court found:
Amazon at 16. The Court likewise rejected any argument that "the only data that would qualify as a `retransmission' is the exact data that was previously displayed on the screen of the end user's device, errors and all." Id. at 15.
Claims 1-3 of the '946 Patent recite (emphasis added):
The Summary of the Invention refers to embodiments in which messages are transmitted by a network and received by a mobile device. See '946 Patent at 5:8-40. The specification further discloses:
Id. at 17:8-23 (emphasis added). Defendant notes: "Indeed, because the errors were the result of the original message being garbled in transit, the network would not have a copy of the erroneous data to resend; it would only have a copy of the error-free original portion." Dkt. No. 57 at 4.
Nonetheless, because "errors" and an "error correcting code" are recited by dependent claims, as quoted above, the doctrine of claim differentiation weighs against interpreting independent Claim 1 as requiring errors. 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.").
In addition, the specification discloses receiving "incomplete" or "partial" messages. See '946 Patent at 9:26-28 ("If the mobile unit 624 does not completely receive the message, it can generate and broadcast a negative acknowledge signal."), 15:19-20 (similar) & 17:5-7 ("negative acknowledgment signal which indicates that the message has not been completely or properly received"). Thus, to whatever extent Defendant's proposed constructions imply the presence of an error, Defendant's proposed constructions would improperly import a specific feature from particular embodiments. See Comark, 156 F.3d at 1187.
Finally, Defendant's proposal of a "previous transmission attempt" is itself vague and would tend to confuse rather than clarify the scope of the "portion" terms. Instead, Defendant's arguments are directed primarily to Defendant's proposal of requiring a "previous transmission attempt" in the construction of "retransmission," which is a disputed term addressed separately below. For all of these reasons, and particularly given that Defendant had no objection to the Court's preliminary construction at the March 17, 2015 hearing, Defendant's proposed construction for the "portion" term is hereby expressly rejected.
As to Plaintiff's proposal that the disputed term is "not limited to the exact text that is displayed on the screen and retransmission may be requested of message portions that have not actually been displayed," Plaintiff has failed to adequately justify introducing these limitations into the construction. Because such a limitation would tend to confuse rather than clarify the scope of the claims, Plaintiff's proposed construction is hereby expressly rejected.
The Court therefore hereby construes
Dkt. No. 55 at 8; Dkt. No. 57 at 8. The parties submit that this term appears in Claims 1, 7, and 8. Plaintiff no longer asserts Claim 7. See Dkt. No. 61.
Shortly before the start of the March 17, 2015 hearing, the Court provided the parties with the following preliminary construction: "Plain meaning. Defendant's request to add `for which a previous transmission attempt was made from the communications network to the mobile unit' is rejected."
Plaintiff argues that Defendant's proposal is inconsistent with the Court's rulings in the Sprint litigation. Dkt. No. 55 at 9. Plaintiff also argues that "by adding the word `attempt,' [Defendant's] proposed construction implies a previous transmission was unsuccessful — a limitation that again violates this Court's prior rulings on the term." Id.
Defendant responds that its proposal "clarifies that the user's request is for data for which a previous transmission attempt was made from the communications network to the mobile unit." Dkt. No. 55 at 8. Defendant argues that "the initial transmission and subsequent retransmission attempts are executed by the communications network, thereby precluding the relay scenario proffered by [Plaintiff] in the Apple and Samsung cases." Id. at 9. "To be clear," Defendant submits, "[Defendant's] construction does not require that the portion of the message received by the mobile unit that the user selects for retransmission, and the portion that is retransmitted, are the same — rather, it requires that the retransmitted portion (i.e., the content that the user desires from the communication network) was part of the full message that the network previously attempted to send, but which was received with either garbled or missing portions." Id. at 11. Further, Defendant submits, Defendant's proposal of "[t]he word `attempt' does not connote failure; it is consistent with both successful and unsuccessful transmissions." Id. Finally, Defendant argues that "the understood meaning of the prefix `re' — again — connotes a previous transmission attempt from the communication network to the mobile unit." Id. at 9 (citing id., Ex. 4, Webster's Ninth New Collegiate Dictionary 978 (1988) ("again: anew"); id., Ex. 5, Webster's II New Riverside University Dictionary 977 (1984) (same)).
Plaintiff's reply brief addresses this disputed term together with the "portion" terms addressed above. See Dkt. No. 58 at 1-3.
At the March 17, 2015 hearing, Defendant was agreeable to the Court's preliminary construction. Plaintiff maintained that the Court's findings in prior cases should be incorporated into the construction.
In the Apple Summary Judgment Order, the Court found:
Apple Summary Judgment Order at 3 (internal quotation marks omitted).
In the Samsung Supplemental Order, the Court found:
Samsung Supplemental Order at 2 (emphasis omitted).
Defendant has submitted that in the prior rulings, the Court "sa[id] nothing regarding previous transmission attempts, which may result in successful or unsuccessful transmissions." Dkt. No. 57 at 11.
Defendant cites the Summary of the Invention, in particular as to the embodiment that, Defendant submits, appears to correspond to Claim 8:
'946 Patent at 5:29-40 (emphasis added). Although this passage appears in the Summary of the Invention, the "primacy of the claim language" weighs against reading this passage as limiting. Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014); see Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 977 (Fed. Cir. 2014) ("In claim construction, this court gives primacy to the language of the claims, followed by the specification."); see also Aria Diagnostics, Inc. v. Sequenom, Inc., 726 F.3d 1296, 1300 (Fed. Cir. 2013) ("Claim construction focuses primarily on the language of the claims.") (citing Phillips, 415 F.3d 1303); Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998) ("[T]he claims define the scope of the right to exclude; the claim construction inquiry, therefore, begins and ends in all cases with the actual words of the claim.").
Defendant also cites the language of Claim 7, arguing that "claim 7's requirement that the transmission and retransmissions both originate at the communications network is instructive as to the intended meaning of `retransmission' as used in these claims." Dkt. No. 57 at 10 (citing Phillips, 415 F.3d at 1314 ("Because claim terms are normally used consistently throughout the patent, the usage of a term in one claim can often illuminate the meaning of the same term in other claims.")). Review of Claim 7, however, reveals no requirement as to where retransmission must occur (emphasis added):
On balance, to whatever extent Defendant has argued that the term "retransmission" itself requires a previous transmission "attempt," Defendant's argument is hereby expressly rejected as lacking support in the intrinsic evidence. To the extent Defendant relies upon surrounding claim language to make such an argument, Defendant's argument involves details of the accused instrumentalities that are not proper for the Court to consider during these claim construction proceedings. See PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998) ("[A]fter the court has defined the claim with whatever specificity and precision is warranted by the language of the claim and the evidence bearing on the proper construction, the task of determining whether the construed claim reads on the accused product is for the finder of fact.").
Moreover, as noted above, at the March 17, 2015 hearing Defendant was agreeable to the Court's preliminary construction.
Finally, Plaintiff's proposed construction may be misinterpreted by the finder of fact as characterizing the claims as a whole, rather than the term "retransmission," so Plaintiff's proposed construction is hereby expressly rejected.
The Court otherwise hereby construes
Dkt. No. 55 at 4; Dkt. No. 57 at 11. The parties submit that this disputed term appears in Claim 1 of the '946 Patent.
Shortly before the start of the March 17, 2015 hearing, the Court provided the parties with the following preliminary construction: "only upon user activation of the switch."
Both sides agreed to this construction at the March 17, 2015 hearing. Plaintiff noted its opposition to Defendant's arguments regarding the prosecution history,
Because the parties evidently do not dispute the literal scope of the disputed term, the Court does not address any doctrine of equivalents argument, or any response thereto, that might arise at a later stage of this litigation. Thus, no further construction is required.
The Court therefore hereby construes
Dkt. No. 55 at 7; Dkt. No. 57 at 12. The parties submit that this disputed term appears in Claims 5 and 6. Plaintiff no longer asserts Claim 6. See Dkt. No. 61.
Shortly before the start of the March 17, 2015 hearing, the Court provided the parties with the following preliminary construction: "Plaintiff's request for judicial correction is rejected."
Plaintiff argues that "[t]he reference to Claim 4 as opposed to Claim 7 is an obvious ministerial error as Claim 4 claims a mobile unit while Claim 7 correctly claims the communications network and describes its functions." Dkt. No. 55 at 7.
Defendant responds that "claim 5 is capable of more than one reasonable interpretation," such that "[i]t is not clear on the face of the patent whether claim 5 was intended to refer to claim 1 or 7 (or any other claim)," "and a review of the file history does not clarify the issue." Dkt. No. 57 at 12-13. Defendant notes that "the claims were initially drafted this way, and the issue was never raised by the Examiner." Id. at 13.
Plaintiff replies that "[p]atent claims should be construed to preserve their validity, if possible, and because the preamble of dependent claims 5 and 6 make clear they could only depend from claim 7 (which is the only independent claim that shares the `a communication network . . .' preamble), the Court may and should correct the obvious and harmless error." Dkt. No. 58 at 4.
Judicial correction of an error in a patent may be available "if (1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims." Novo Indus. v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003); see LG Elecs., Inc. v. Quanta Computer Inc., 566 F.Supp.2d 910, 913 (W.D. Wis. 2008) (noting the "nearly impossible standard for judicial correction of a patent" and citing Novo, 350 F.3d 1348, which "refus[ed] to correct `a' to `and' because other possibilities for correction existed").
Claims 1 and 4-7 of the '946 Patent recite (emphasis added):
On one hand, Plaintiff's proposed construction is consistent with, for example, the recital of "means for retransmitting" in Claim 5 and Claim 7. On the other hand, Claim 1, from which Claim 4 depends, recites a "communications network" as well as "retransmission" and "retransmitted." On balance, the correction proposed by Plaintiff is "subject to reasonable debate." Novo, 350 F.3d at 1354. Finally, the Blackboard case cited by Plaintiff is distinguishable as having involved a printing error upon issuance of a patent. Blackboard, Inc. v. Desire2Learn, Inc., No. 9:06-CV-155, 2007 WL 2255227, at *12 (E.D. Tex. Aug. 3, 2007) (Hines, J.) (finding that "when printing the patent, the PTO simply omitted one letter from the word" "predefined" so that the issued claim recited "redefined"; noting that "the specification never uses `redefined'").
Plaintiff's request for judicial correction is therefore denied. Novo, 350 F.3d at 1354; see LG, 566 F. Supp. 2d at 913.
As to Defendant's indefiniteness argument, however, Defendant has failed to demonstrate that the scope of the claims is not reasonably certain. Instead, antecedent basis for the terms at issue is present either explicitly or implicitly. See Energizer Holdings Inc. v. Int'l Trade Comm'n, 435 F.3d 1366, 1371 (Fed. Cir. 2006) (holding that "an anode gel comprised of zinc as the active anode component" provided implicit antecedent basis for "said zinc anode"); see also Ex Parte Porter, 25 U.S.P.Q. 2d (BNA) 1144, 1145 (B.P.A.I. 1992) ("The term `the controlled fluid' . . . finds reasonable antecedent basis in the previously recited `controlled stream of fluid.. . .'"); Manual for Patent Examining Procedure § 2173.05(e) (9th ed., Mar. 2014) (noting that "the failure to provide explicit antecedent basis for terms does not always render a claim indefinite").
The parties' dispute having thus been resolved, no further construction is necessary. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) ("Claim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement. It is not an obligatory exercise in redundancy."); see also O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) ("[D]istrict courts are not (and should not be) required to construe every limitation present in a patent's asserted claims."); Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1207 (Fed. Cir. 2010) ("Unlike O2 Micro, where the court failed to resolve the parties' quarrel, the district court rejected Defendants' construction.").
Dkt. No. 55 at 17; Dkt. No. 57 at 13-14. The parties submit that this term appears in Claim 1.
Shortly before the start of the March 17, 2015 hearing, the Court provided the parties with the following preliminary construction: "Function: `transmitting, only upon actuation of the switch, a signal to the communications network requesting retransmission of said specified portion of said message'/Structure: `input switches 1516, transmit logic 1518, transmitter 1520, and antenna 1502; and equivalents thereof.'"
Plaintiff argues that the claim recites the structure of a transmitter, and "the language `only upon actuation of the switch,' merely describes a condition upon when the function of transmitting is to take place." Dkt. No. 55 at 18.
Defendant responds that "[t]his term does not avoid the ambit of 35 U.S.C. § 112, ¶ 6 because it fails to provide any structure for the conditional feature of the limitation — `only upon actuation of the switch.'" Dkt. No. 57 at 14. Defendant argues that this means-plus-function term is indefinite because "[f]or computer-implemented functions, the specification must disclose a corresponding algorithm, and neither the input switch, transmit logic, nor transmitter (or accompanying disclosure) qualify as the requisite algorithm." Id.
Plaintiff replies that "to the extent § 112¶6 governs this term, the term is not computer implemented." Dkt. No. 58 at 8.
At the March 17, 2015 hearing, Plaintiff argued that to whatever extent an algorithm is required, the algorithm appears in the disputed term itself, which recites that transmission occurs "only upon actuation of the switch."
Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1371-1372 (Fed. Cir. 2003) (citations and internal quotation marks omitted).
TecSec, Inc. v. Int'l Bus. Machines Corp., 731 F.3d 1336, 1347 (Fed. Cir. 2013) (citations and internal quotation marks omitted).
The disputed term uses the word "means," thereby invoking the presumption that 35 U.S.C. § 112, ¶ 6 applies. Plaintiff has failed to rebut the presumption. Likewise, Plaintiff has not adequately justified departing from the claimed function as recited in the disputed term, including that the "transmitting" occurs "only upon actuation of the switch." As to whether sufficient corresponding structure is disclosed, the specification discloses:
'946 Patent at 15:36-45 (emphasis added).
These structures are "clearly linked or associated with the claimed function," Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1219 (Fed. Cir. 2003), and are disclosed as performing that function. See Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed. Cir. 2005) ("While corresponding structure need not include all things necessary to enable the claimed invention to work, it must include all structure that actually performs the recited function."). Although the above-quoted disclosure of "transmit logic 1518" might be read as referring to an algorithm, the specification contains no suggestion that such a structure would not be readily understood by a person of ordinary skill in the art, and "the amount of detail that must be included in the specification depends on the subject matter that is described and its role in the invention as a whole, in view of the existing knowledge in the field of the invention." See Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1385 (Fed. Cir. 2011).
The Court therefore hereby finds that for the
Dkt. No. 55 at 23-24; Dkt. No. 57 at 15. The parties submit that this term appears in Claim 5.
The parties agree that this is a means-plus-function term, and they agree upon the claimed function. Shortly before the start of the March 17, 2015 hearing, the Court provided the parties with the following preliminary construction: "Indefinite."
Plaintiff argues that "the specification states that control logic system 1304 controls `the operation of the base transmitter unit,' ('946 Pat. at 13:64-14:1), which elsewhere is identified as transmitting error correcting codes. (Id. at 4:41-46)." Dkt. No. 55 at 24.
Defendant responds that this disputed term is indefinite because "[t]he `logic' blocks/sections to which [Plaintiff] cites . . . at most describe or illustrate the recited function — not how the function is performed." Dkt. No. 57 at 16.
Plaintiff replies it "identifies special-purpose hardware, not computer-implemented structure," and "to the extent an algorithm is required, the '946 Patent specification provides extensive discussion (even incorporating a well-known treatise) regarding error correction that a PHOSITA [(person having ordinary skill in the art)] would recognize as disclosing an algorithm to perform the recited functions." Dkt. No. 58 at 10.
On one hand, the specification states: "Further information regarding error correcting codes may be found in Gallagher, `Information Theory and Reliable Communication,' Wiley 1968, which is hereby incorporated by reference." '946 Patent at 26:16-19. On the other hand, "material incorporated by reference cannot provide the corresponding structure necessary to satisfy the definiteness requirement for a means-plus-function clause." Default Proof, 412 F.3d at 1301. Finally, the "control logic 1304/1404" and "combiner 1316/1426" identified by Plaintiff are not "clearly linked or associated with the claimed function." Med. Instrumentation, 344 F.3d at 1219; see '946 Patent at 4:41-46, 13:64-14:1, 14:12-15 & 26:2-19. This lack of corresponding structure renders the disputed term indefinite. See Default Proof, 412 F.3d at 1302 ("[W]hile it is true that the patentee need not disclose details of structures well known in the art, the specification must nonetheless disclose some structure.") (citation omitted).
The Court therefore hereby finds that for the
Dkt. No. 55 at 23-24; Dkt. No. 57 at 15; Dkt. No. 59, Ex. A at p. 5 of 18. The parties submit that this term appears in Claim 3.
The parties agree that this is a means-plus-function term, and they agree upon the claimed function. Shortly before the start of the March 17, 2015 hearing, the Court provided the parties with the following preliminary construction: "Function: `extracting a corrected message from the radio frequency signal'/Structure: `display and storage logic section 1508 or 1708, and an error correcting code; and equivalents thereof.'"
Plaintiff argues that "[a] PHOSITA would understand the specification to identify structure in the mobile unit to extract this signal." Dkt. No. 55 at 25.
Defendant responds that this disputed term is indefinite because there is no algorithm disclosed for performing the claimed function and "[t]he `logic' blocks/sections to which [Plaintiff] cites . . . at most describe or illustrate the recited function — not how the function is performed." Dkt. No. 57 at 16.
Plaintiff replies as to this term together with the "means for including . . ." term addressed above. See Dkt. No. 58 at 9-10.
In Amazon, the parties reached substantive agreement as to the "display and storage logic section 1508 or 1708," but the parties disputed whether the corresponding structure must include an "error correcting code." See Amazon at 20 & 22. Here, by contrast, Defendant argues that the "logic sections" are insufficient disclosures of structure.
Based on the same evidence considered in Amazon, the Court reaches the same construction here. See Amazon at 21-25; see, e.g., '946 Patent at 14:66-15:35 ("The receiver 1506 is connected to a display and storage logic section 1508 to process the received signal.").
As to whether a sufficient algorithm is disclosed, the reference to an "error correcting code" is sufficient. See Typhoon Touch, 659 F.3d at 1385 ("[T]he amount of detail that must be included in the specification depends on the subject matter that is described and its role in the invention as a whole, in view of the existing knowledge in the field of the invention."); see also Default Proof, 412 F.3d at 1302 ("the patentee need not disclose details of structures well known in the art"); '946 Patent at 26:16-19. Unlike for the term "means for including an error correcting code in the radio frequency signals containing the message data," addressed above, here the necessary linkage, between the claimed function and the corresponding structure disclosed in the specification, is present. See id. at 14:66-15:35.
The Court therefore hereby finds that for the
Dkt. No. 55 at 21; Dkt. No. 57 at 16-17. The parties submit that this term appears in Claim 1.
Shortly before the start of the March 17, 2015 hearing, the Court provided the parties with the following preliminary construction: "Function: `receiving said specified portion retransmitted from the communications network and displaying the received portion on the display'/Structure: `receiver 1506, display and storage logic section 1508 or 1708, and display 1514; and equivalents thereof.'"
Plaintiff argues that "these terms clearly recite the structure of a receiver in the claim terms themselves" and, alternatively, the specification discloses receivers. Dkt. No. 55 at 22-23.
Defendant responds that the function of "displaying . . ." "requires computer-implemented software for presenting the retransmitted portion in displayable form," and "the identified structure — `receiver 1506 and equivalents thereof' — is clearly insufficient to accomplish all recited functions, particularly `displaying the received portion on the display.'" Dkt. No. 57 at 17.
Plaintiff replies by reiterating that "the claim discloses sufficient structure in the form of a receiver and a display," and "[t]o the extent computer-implemented structure is required, a general-purpose computer without special programming can perform the recited functions." Dkt. No. 58 at 9.
Apex, 325 F.3d at 1371-1372 (citations and internal quotation marks omitted).
TecSec, 731 F.3d at 1347 (citations and internal quotation marks omitted).
The disputed term uses the word "means," thereby invoking the presumption that 35 U.S.C. § 112, ¶ 6 applies. Plaintiff has failed to rebut the presumption. See Apex, 325 F.3d at 1371-1372; see also TecSec, 731 F.3d at 1347.
The specification discloses:
'946 Patent at 14:66-15:11 (emphasis added).
Thus, the "receiver 1506," "display and storage logic section 1508," and "display 1514" are disclosed as structures "clearly linked or associated with the claimed function." Med. Instrumentation, 344 F.3d at 1219. Because the specification links the claimed function to such structures rather than to a general-purpose computer, no algorithm is required. See, e.g., Net MoneyIN Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008); WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999). Alternatively and in addition, even if the "display and storage logic section 1508" were deemed to be a general-purpose processor, no algorithm need be disclosed for the function of displaying. See In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible narrower construction of the terms `processing,' `receiving,' and `storing,' . . . those functions can be achieved by any general purpose computer without special programming. As such, it was not necessary to disclose more structure than the general purpose processor that performs those functions."). Defendant's argument regarding the purported failure to meet the algorithm requirement is therefore hereby rejected.
The Court accordingly hereby finds that for the
Dkt. No. 55 at 18-19; Dkt. No. 57 at 17; Dkt. No. 49, Ex. B at p. 4 of 10. The parties submit that this term appears in Claim 7. Because Plaintiff no longer asserts Claim 7 (see Dkt. No. 61), the Court does not construe this term.
Dkt. No. 55 at 18-19; Dkt. No. 49, Ex. B at p. 4 of 10. The parties submit that this term appears in Claim 6. Because Plaintiff no longer asserts Claim 6 (see Dkt. No. 61), the Court does not construe this term.
Dkt. No. 55 at 11; Dkt. No. 57 at 18. The parties submit that this term appears, for example, in Claim 8.
Shortly before the start of the March 17, 2015 hearing, the Court provided the parties with the following preliminary construction: "predefined sequence of characters."
Plaintiff argues that the specification "does not limit canned messages to a specific type of message," and "[t]he prosecution history likewise shows the proper scope of the invention as transmitting and relaying message codes in place of commonly used, predefined messages." Dkt. No. 55 at 12. Plaintiff also submits that the Court's previous construction relied upon a dictionary definition that also distinguishes between information that is visible to a user and information that is not visible to a user. Id. at 13.
Defendant argues that "[Plaintiff's] construction is divorced from the claim language and specification, which clearly indicate that the claimed messages consists [sic] of data intended to be viewed by a user." Dkt. No. 57 at 19. Defendant argues that the Court properly found in Sprint that "canned message" was used throughout the specification to refer to a "phrase" and "text," and the asserted claims require the "canned message" to be "displayed." Id. at 19-20.
Plaintiff replies that "[t]he '506 Patent itself describes canned messages as `commonly used' and does not limit a canned message to any specific type of message." Dkt. No. 58 at 4. Plaintiff argues that "[t]he inclusion of the term `characters' does not clarify the issue for the jury—it merely raises the issue of what constitutes a character." Id. Further, Plaintiff submits: "[Plaintiff] never argues that a canned message is not viewable by a user. Rather, [Plaintiff] argues that there is no requirement that the entire sequence of characters that make up the canned message be viewable by the user." Id. at 4-5.
At the March 17, 2015 hearing, Defendant expressed agreement with the Court's preliminary construction but nonetheless urged that at least part of a "canned message" must be for viewing by a user.
In Sprint, the Court construed this disputed term to mean "predefined sequence of characters." Sprint at 71. The Court reaches the same construction here as in Sprint and for substantially the same reasons. See id. at 67-71.
Defendant's proposed construction, which would seemingly require that the entire content of a "canned message" must be "for viewing by a user," lacks adequate support. Instead, the dictionary definition submitted by the parties in this case and in Sprint demonstrates that a "message" can include parts that are not viewed by a user. See Dkt. No. 55, Ex. E, Newton's Telecom Dictionary 373 (11th ed. 1996)) ("A sequence of characters used to convey information or data. In data communications, messages are usually in an agreed format with a heading which establishes the address to which the message will be sent and the text which is the actual message and maybe some information to signify the end of the message.").
On balance, neither side has adequately justified departing from the construction reached in Sprint. The Court therefore hereby expressly rejects the parties' proposed constructions.
The Court accordingly hereby construes
Dkt. No. 55 at 13; Dkt. No. 57 at 22. The parties submit that this term appears in Claim 8.
Shortly before the start of the March 17, 2015 hearing, the Court provided the parties with the following preliminary construction: "Plain meaning."
Plaintiff argues that no construction is necessary because "[e]ach portion of the identified term is clearly defined within the claims, specification, and prosecution history and used in a consistent manner." Dkt. No. 55 at 14.
Defendant responds that "[t]he claim language, specification, and prosecution history fail to provide any objective criteria that would allow one skilled in the art to distinguish between an `appropriate canned message' and `inappropriate canned message.'" Dkt. No. 57 at 22-23.
Plaintiff replies that "[Defendant] ignores that it is the device that performs this `selecting' step of the method claim and thus, a person of ordinary skill in the art would understand that the `appropriate' message from a file is simply carrying out a command initiated by a user causing the device to retrieve the canned message that corresponds to a predetermined code." Dkt. No. 58 at 5.
At the March 17, 2015 hearing, Defendant reiterated that the specification provides no standard for determining what is "appropriate."
The specification refers to retrieving an "appropriate" canned message by using a message code:
'506 Patent at 2:28-35 (emphasis added).
Claim 8 of the '506 Patent, however, recites (emphasis added):
Thus, although Plaintiff argues that "appropriate" refers to "retriev[ing] the canned message that corresponds to a predetermined code" (Dkt. No. 58 at 5), the claim instead recites selection of an "appropriate" message "for transmission to the second terminal." In other words, the claim requires that from among the canned messages contained in the "second file of canned messages and message codes," an "appropriate canned message" is selected for transmission.
Such a reading is also supported by the specification:
'506 Patent at 3:50-58 (emphasis added).
The remaining issue is whether the claim is rendered indefinite by reciting selection of a message according to, in the words of the specification, what the "calling party wishes." Id.
On one hand, claim scope cannot depend upon the "unpredictable vagaries of any one person's opinion." Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014) (quoting Datamize, 417 F.3d at 1350). On the other hand, references to what is "desired," for example, are not necessarily inappropriate. See, e.g., Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1316-17 (Fed. Cir. 2007) (construing claims reciting "desired" tooth positions).
Here, the above-quoted context of the claim demonstrates that the scope of the claim does not turn on subjective opinion. That is, the claim does not recite that the particular desire of a user has any impact on the operation of the claimed invention (other than simply determining which of several possible messages will be transmitted). In other words, although the subjective desire of the user may determine the content of the message that is transmitted, the particular content of a transmitted message has no relevant effect on the manner of operation of the claimed invention. Thus, although an expression of the subjective desire of a user may be a necessary input, that subjective desire is not itself a limitation. As a result, the word "appropriate" does not render the claim scope subjective.
The Court therefore hereby expressly rejects Defendant's indefiniteness argument. No further construction is necessary.
The Court accordingly hereby construes
Dkt. No. 55 at 25-26; Dkt. No. 57 at 24.
Plaintiff proposes the constructions that the parties agreed upon in Sprint. See Sprint at 78-79.
Shortly before the start of the March 17, 2015 hearing, the Court provided the parties with the following preliminary construction: "Function: `retrieving the file of canned messages and the file of canned multiple response options from the memory'/Structure: `CPU 110, ROM 112 (including stored application program for controlling terminal operation) and system bus 130 (which interconnects system components such as CPU 110, ROM 112, and RAM 114); and equivalents thereof.'"
Plaintiff argues that "the '506 Patent specification clearly identifies the calling terminal as performing the function of retrieving the associated canned message, message code, and/or response option from the file." Dkt. No. 55 at 26 (citing '506 Patent at 3:56-58 & 4:46-48). "The specification also explains," Plaintiff submits, "that terminal 10 consists of CPU 110, ROM 112, RAM 114, as well as other components not related to the recited function." Dkt. No. 55 at 26 (citing '506 Patent at 7:44-54).
Defendant responds that the "conclusory passages" relied upon by Plaintiff "are wholly devoid of any description of the necessary steps to carry out the claimed functions." Dkt. No. 57 at 26 (citing '506 Patent at 3:56-58 & 4:46-48).
Plaintiff replies that "the specification provides that specified hardware (terminal 10) performs the `retrieving' functions," and "[w]ere an algorithm required, a PHOSITA would recognize the specification to provide sufficient disclosure in prose and flow-chart format." Dkt. No. 58 at 10.
At the March 17, 2015 hearing, Defendant emphasized that the specification contains no disclosure of how CPU 110 operates or what the "application program" is.
Claim 19 of the '506 Patent recites (emphasis added):
"[A] means-plus-function claim element for which the only disclosed structure is a general purpose computer is invalid if the specification fails to disclose an algorithm for performing the claimed function." Net MoneyIN, 545 F.3d at 1367; see WMS Gaming, 184 F.3d at 1349 ("In a means-plus-function claim in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.").
There is, however, an exception to the general rule requiring an algorithm. Specifically, when the corresponding structure is a general purpose computer, an algorithm is required unless the recited function can be achieved by any general purpose computer without special programming. In re Katz, 639 F.3d at 1316 ("Absent a possible narrower construction of the terms `processing,' `receiving,' and `storing,' . . . those functions can be achieved by any general purpose computer without special programming. As such, it was not necessary to disclose more structure than the general purpose processor that performs those functions."); accord Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012) ("In In re Katz, we held that `[a]bsent a possible narrower construction' of the terms `processing,' `receiving,' and `storing,' the disclosure of a general-purpose computer was sufficient. . . . In other words, a general-purpose computer is sufficient structure if the function of a term such as `means for processing' requires no more than merely `processing,' which any general-purpose computer may do without any special programming.") (citations omitted); but see id. ("It is only in the rare circumstances where any general-purpose computer without any special programming can perform the function that an algorithm need not be disclosed.").
The claimed functions here, which require merely retrieving files from memory, are "functions [that] can be achieved by any general purpose computer without special programming." Katz, 639 F.3d at 1316. In particular, the function of "retrieving" from memory is analogous to the "storing" function that Katz identified as an example of a function for which no special programming is required. Id.
Because the structures agreed upon in Sprint, and proposed by Plaintiff here, amount to a general-purpose processor and associated components, the Court adopts those structures here. Although these structures include an "application program for controlling terminal operation" that presumably may have additional capabilities, what is claimed is merely "retrieving," which can be performed by any general-purpose computer without special programming. See id.
The Court therefore hereby expressly rejects Defendant's indefiniteness arguments and finds that for the term
Dkt. No. 55 at 27-28; Dkt. No. 57 at 26-27.
The parties agree that this is a means-plus-function term, and they agree upon the claimed function.
Shortly before the start of the March 17, 2015 hearing, the Court provided the parties with the following preliminary construction: "Function: `selecting one of the canned messages and at least one of the multiple response options appropriate for the selected canned message for communication to a designated other message terminal'/Structure: `terminal keypad 126; or a mouse; or a cursor; and equivalents thereof.'" At the March 17, 2015 hearing, the parties agreed to the Court's preliminary construction.
The Court accordingly hereby finds that for the term
Dkt. No. 55 at 9; Dkt. No. 57 at 28. The parties submit that this term appears in Claim 8.
In Sprint, the Court construed "probe message" to mean "a message that is generated to locate a mobile unit." See Sprint at 43-48.
In Amazon, the Court "adopt[ed] the following construction for `probe message' agreed-upon by the parties at the October 17, 2014 hearing: `a message that is generated by the network operations center to locate a mobile unit for the purpose of determining whether the mobile unit can be reached.'" Amazon at 10; see id. at 7-10.
Shortly before the start of the March 17, 2015 hearing, the Court provided the parties with the following preliminary construction: "a message that is generated to locate a mobile unit."
Plaintiff submits that "the primary purpose of the '428 Patent is determining whether the mobile unit is available," which Plaintiff argues is supported by Amazon as well as by expert opinion and by extrinsic technical dictionary definitions. Dkt. No. 55 at 10.
Defendant responds that in Amazon "the Court simply adopted the parties' agreed construction," and "[t]hough the Court correctly construed `probe message' in the Sprint case, [Plaintiff's] attempts to twist the Court's construction have created the need for additional clarification." Dkt. No. 57 at 28. Defendant also argues that the extrinsic evidence cited by Plaintiff actually contradicts Plaintiff's proposed construction. Id. at 29.
Plaintiff replies that "[a]lthough probe messages are used for other purposes in related patents, the claims of the '428 Patent only use the probe to determine if the mobile unit can be reached because, if not, the network stores the message." Dkt. No. 58 at 5-6. Plaintiff also notes that it "agrees with [Defendant] to remove the requirement that the probe message be generated by the NOC [(network operations center)]." Id. at 6.
At the March 17, 2015 hearing, Defendant agreed to the Court's preliminary construction.
The Court hereby expressly rejects Plaintiff's proposed construction (which was the substantially agreed-upon construction in Amazon) because, in particular, Plaintiff appears to be interpreting the phrase "for the purpose of determining whether the mobile unit can be reached" as a statement of the sole purpose or function of a probe message. Instead, for the reasons set forth in Sprint, the Court reaffirms the finding in Sprint that "[t]he intrinsic evidence . . . consistently demonstrates that although a probe message need not itself specify a location or contain location information, a probe message is generated for locating a mobile unit." Sprint at 47; see id. at 43-48; see also '428 Patent at 1:39-40, 4:15-40 & 7:59-8:5; '946 Patent
Nonetheless, Defendant's proposal of the phrase "for the specific purpose of determining the location" might be read in an excessively narrow fashion by the finder of fact. For example, a finder of fact might read Defendant's proposal as requiring determination of Global Positioning System (GPS) coordinates. As quoted above, Sprint found that "a probe message need not itself specify a location or contain location information." Sprint at 47. Further, Defendant has not demonstrated that a response to a probe message must specify a location such as GPS coordinates.
Instead, as Plaintiff argued in Amazon, "the `location' of a mobile unit does not necessarily mean a geographic location, but rather a network location—including whether a unit is even located in the network (that is, its status in the network)." Amazon at 9 (emphasis added). The Court agrees with Plaintiff's explanation in this regard, albeit with the caveat that mere "status in the network" is insufficient. Instead, the Court's construction refers to, as Plaintiff puts it, "geographic location" or "network location." Id.
The Court therefore hereby construes
Dkt. No. 55 at 10; Dkt. No. 57 at 29. The parties submit that this term appears in Claim 8.
The parties in Sprint and Amazon did not present "data message" as a disputed term for construction or as a term for agreed-upon construction.
Shortly before the start of the March 17, 2015 hearing, the Court provided the parties with the following preliminary construction: "Plain meaning." At the March 17, 2015 hearing, both sides agreed to this preliminary construction.
The Court accordingly hereby construes
The Court adopts the constructions set forth in this opinion for the disputed terms of the patents-in-suit.
Further, the Court finds a lack of sufficient corresponding structure as to the term "means for including an error correcting code in the radio frequency signals containing the message data" in Claim 5 of the '946 Patent.
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.
Dkt. No. 49 at Ex. A; Dkt. No. 57 at 2 n.1; Dkt. No. 59 at Ex. B.
