RODNEY GILSTRAP, District Judge.
Before the Court are Plaintiff Sycamore IP Holdings LLC's Opening Claim Construction Brief (Dkt. No. 137), Defendants' response (Dkt. No. 142), and Plaintiff's reply (Dkt. No. 147).
The Court held a claim construction hearing on December 3, 2015.
Plaintiff brings suit alleging infringement of United States Patent No. 6,952,405 ("the '405 Patent"). (Dkt. No. 137, Ex. 1.) The '405 Patent, titled "Coding Scheme Using a Transition Indicator for Signal Transmission in Optical Communications Networks," issued on October 4, 2005 and bears an earliest priority date of December 5, 2000. The Abstract states:
Plaintiff asserts Claims 1, 3-6, 8, 11, and 15-16. (Dkt. No. 137, at 2.)
Defendants submit that the '405 Patent "was the product of Plaintiff's predecessor's attempt to influence industry standards," but "the standard ultimately issued using a different encoding and decoding scheme invented by Steven Gorshe, not the named inventors of the '405 Patent." (Dkt. No. 142, at 1.)
It is understood that "[a] claim in a patent provides the metes and bounds of the right which the patent confers on the patentee to exclude others from making, using or selling the protected invention." Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed. Cir. 1999). Claim construction is clearly an issue of law for the court to decide. Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996).
To ascertain the meaning of claims, courts look to three primary sources: the claims, the specification, and the prosecution history. Markman, 52 F.3d at 979. The specification must contain a written description of the invention that enables one of ordinary skill in the art to make and use the invention. Id. A patent's claims must be read in view of the specification, of which they are a part. Id. For claim construction purposes, the description may act as a sort of dictionary, which explains the invention and may define terms used in the claims. Id. "One purpose for examining the specification is to determine if the patentee has limited the scope of the claims." Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000).
Nonetheless, it is the function of the claims, not the specification, to set forth the limits of the patentee's invention. Otherwise, there would be no need for claims. SRI Int'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). The patentee is free to be his own lexicographer, but any special definition given to a word must be clearly set forth in the specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992). Although the specification may indicate that certain embodiments are preferred, particular embodiments appearing in the specification will not be read into the claims when the claim language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994).
This Court's claim construction analysis is substantially guided by the Federal Circuit's decision in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips, the court set forth several guideposts that courts should follow when construing claims. In particular, the court reiterated that "the claims of a patent define the invention to which the patentee is entitled the right to exclude." 415 F.3d at 1312 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To that end, the words used in a claim are generally given their ordinary and customary meaning. Id. The ordinary and customary meaning of a claim term "is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." Id. at 1313. This principle of patent law flows naturally from the recognition that inventors are usually persons who are skilled in the field of the invention and that patents are addressed to, and intended to be read by, others skilled in the particular art. Id.
Despite the importance of claim terms, Phillips made clear that "the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Id. Although the claims themselves may provide guidance as to the meaning of particular terms, those terms are part of "a fully integrated written instrument." Id. at 1315 (quoting Markman, 52 F.3d at 978). Thus, the Phillips court emphasized the specification as being the primary basis for construing the claims. 415 F.3d at 1314-17. As the Supreme Court stated long ago, "in case of doubt or ambiguity it is proper in all cases to refer back to the descriptive portions of the specification to aid in solving the doubt or in ascertaining the true intent and meaning of the language employed in the claims." Bates v. Coe, 98 U.S. 31, 38 (1878). In addressing the role of the specification, the Phillips court quoted with approval its earlier observations from Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998):
Phillips, 415 F.3d at 1316. Consequently, Phillips emphasized the important role the specification plays in the claim construction process.
The prosecution history also continues to play an important role in claim interpretation. Like the specification, the prosecution history helps to demonstrate how the inventor and the United States Patent and Trademark Office ("PTO") understood the patent. Id. at 1317. Because the file history, however, "represents an ongoing negotiation between the PTO and the applicant," it may lack the clarity of the specification and thus may be less useful in claim construction proceedings. Id. Nevertheless, the prosecution history is intrinsic evidence that is relevant to the determination of how the inventor understood the invention and whether the inventor limited the invention during prosecution by narrowing the scope of the claims. Id.; see Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (noting that "a patentee's statements during prosecution, whether relied on by the examiner or not, are relevant to claim interpretation").
Phillips rejected any claim construction approach that sacrificed the intrinsic record in favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc court condemned the suggestion made by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002), that a court should discern the ordinary meaning of the claim terms (through dictionaries or otherwise) before resorting to the specification for certain limited purposes. Phillips, 415 F.3d at 1319-24. According to Phillips, reliance on dictionary definitions at the expense of the specification had the effect of "focus[ing] the inquiry on the abstract meaning of words rather than on the meaning of claim terms within the context of the patent." Id. at 1321. Phillips emphasized that the patent system is based on the proposition that the claims cover only the invented subject matter. Id.
Phillips does not preclude all uses of dictionaries in claim construction proceedings. Instead, the court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the court emphasized that claim construction issues are not resolved by any magic formula. The court did not impose any particular sequence of steps for a court to follow when it considers disputed claim language. Id. at 1323-25. Rather, Phillips held that a court must attach the appropriate weight to the intrinsic sources offered in support of a proposed claim construction, bearing in mind the general rule that the claims measure the scope of the patent grant.
The Court hereby adopts the following agreed construction:
(Dkt. No. 132, Sept. 24, 2015 Joint Claim Construction Statement, at 2; Dkt. No. 154, Nov. 30, 2015 Amended Joint Claim Construction Chart, at 2.)
(Dkt. No. 132, Ex. B, at 7; Dkt. No. 137, at 5; Dkt. No. 142, at 25; Dkt. No. 147, at 5; Dkt. No. 154, at 2.) The parties submit that this term appears in Claims 1, 5-6, 8, and 11. (Dkt. No. 154, at 2.)
After briefing, the parties submitted an agreed-upon construction in their November 30, 2015 Amended Joint Claim Construction Chart. (Id.)
In accordance with the parties' agreement, the Court hereby construes
(Dkt. No. 132, Ex. B at 1; Dkt. No. 137, at 7; Dkt. No. 142, at 26; Dkt. No. 154, at 2.) The parties submit that this term appears in Claims 1, 4-5, 8, 11, and 15-16. (Dkt. No. 154, at 2.)
After briefing, the parties submitted an agreed-upon construction in their November 30, 2015 Amended Joint Claim Construction Chart. (Dkt. No. 154, at 2.)
In accordance with the parties' agreement, the Court hereby construes
(Dkt. No. 132, Ex. A, at 1; id., Ex. B, at 3; Dkt. No. 137, at 9; Dkt. No. 142, at 27; Dkt. No. 147, at 5; Dkt. No. 154, at 2.) The parties submit that this term appears in Claims 1, 4, 8, 11, and 16. (Dkt. No. 154, at 2.)
After briefing, the parties submitted an agreed-upon construction in their November 30, 2015 Amended Joint Claim Construction Chart. (Dkt. No. 154, at 2.)
In accordance with the parties' agreement, the Court hereby finds as to
(Dkt. No. 132, Ex. B, at 6; Dkt. No. 137, at 11; Dkt. No. 142, at 13; Dkt. No. 147, at 6; Dkt. No. 154, at 2.) The parties submit that this disputed term appears in Claims 1, 5, 8, and 11. (Dkt. No. 154, at 2.)
Plaintiff urges that "the claims and the specification provide no support for limiting the `data indicator' to a single bit," and Plaintiff argues claim differentiation as to Claim 5. (Dkt. No. 137, at 11-12.)
Defendants respond that "[t]he specification of the '405 Patent never indicates that the `data indicator' can be more than one bit and, in fact, expressly refers to the data indicator as `an indicator bit' using the singular form of the word `bit.'" (Dkt. No. 142, at 13-14.) As to Plaintiff's claim differentiation argument, Defendants respond: "The additional limitation in claim 5 is not that the data indicator is a single bit, as Plaintiff claims. Rather, the additional limitation in claim 5 is that the data indicator—which is always one bit—must be set as the first bit in an encoded data stream." (Id. at 15.)
Plaintiff replies that "[o]ther than dependent claim 5, the claims place no limit on the number of bits for a `data indicator,'" and the specification "uses permissive, non-limiting language." (Dkt. No. 147, at 6.)
At the December 3, 2015 hearing, Defendants argued that words such as "typically" in the specification indicate that there may be multiple ways to set a bit, not that there may be multiple bits instead of one bit. Likewise, as to Plaintiff's reliance upon Claim 5, Defendants argued that dependent Claims 5 and 6 refer to setting a bit to particular levels, not to using a single bit rather than multiple bits.
Claims 1, 5, and 6 of the '405 Patent, for example, recite in relevant part (emphasis added):
Claim 5 refers to "setting a first bit . . . as said data indicator." Moreover, the context provided by further dependent Claim 6 demonstrates that Claim 5 is concerned not with the number of bits but rather with logical levels. Claim 5 thus does not provide sufficiently clear support for Plaintiff's claim differentiation argument. See 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.") (emphasis added).
Further, the specification discloses using a single "indicator bit":
'405 Patent at 4:33-60 (emphasis added).
Id. at 5:18-33 (emphasis added).
The independent claims at issue, however, recite a "data indicator," not a data indicator bit. On balance, using a single bit as a "data indicator" is a specific feature of particular disclosed embodiments that should not be imported into the claims. See, e.g., Electro Med., 34 F.3d at 1054; Phillips, 415 F.3d at 1323; Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1323 (Fed. Cir. 2008) ("the word `typically' . . . impl[ies] that the passage describes only the most common embodiment rather than the full scope of the invention"). The Court therefore hereby expressly rejects Defendants' proposed construction.
The Court accordingly hereby construes
(Dkt. No. 132, Ex. B, at 2; Dkt. No. 137, at 14; Dkt. No. 142, at 15; Dkt. No. 147, at 1; Dkt. No. 154, at 2.) The parties submit that this disputed term appears in Claims 1, 8, and 11. (Dkt. No. 154, at 2.)
Plaintiff argues that whereas "[Plaintiff's] construction is taken directly from the claim,"
"Defendants use the term `transition indicator' as a launching pad to inject numerous limitations, which the patent consistently identifies as exemplary, from certain claims and the specification into all the claims." (Dkt. No. 137, at 14-15.) In particular, Plaintiff argues that a "control code counter" limitation appears only in dependent claims, and although "certain claims provide express limitations regarding the manner in which the `logical level' of a `bit' is set," "[o]ther claims, such as claim 1, do not have any limitations directed to the logical level to which any bits are required to be set." (Id. at 15-16.) Plaintiff also urges that for the same reasons as for the term "data indicator," there is no support for limiting "transition indicator" to a single bit. (Id. at 14 n.3.) Plaintiff further emphasizes that Figure 3B of the '405 Patent is disclosed as illustrating an "example of a configuration for the encoded information stream." (Id. at 18 (quoting '405 Patent at 3:13-15 (emphasis Plaintiff's)).) As to the prosecution history, Plaintiff argues that "[t]he applicants nowhere stated, suggested or implied that the only way to base a `transition indicator on the number of control characters' is to place it as the last bit of a particular field 414 that functions as a control code counter." (Dkt. No. 137, at 20-21.)
Defendants respond that "Plaintiff's proposed construction . . . ignores most of the functionality associated with the transition indicator in an effort to read the '405 Patent broadly to cover standards that are materially different than what is disclosed in the '405 Patent." (Dkt. No. 142, at 15.) Defendants urge that the disputed term must be construed consistent with "the only description of the transition indicator that the applicants provided in the specification to describe their invention." (Id. at 19.) Further, Defendants argue, during prosecution, the patentees "distinguished the claimed `transition indicator' from the prior art by explaining that the transition indicator of claim 1 must be based on the number of control characters because it is disposed in a field that functions as a control code counter." (Id.) Finally, Defendants submit that "the transition indicator indicates the transitions within the encoded information stream" because "each location pointer and each control code has a fixed size." (Id. at 20.)
Plaintiff replies that Defendants' proposed construction "wrongly reads limitations from some claims into all the claims." (Dkt. No. 147, at 2.) Plaintiff emphasizes: "The asserted claims do not contain any limitations requiring a `field' or `control code counters,' let alone limitations requiring a `field' that includes both `control code counters' and a `transition indicator.' The claims also contain no limitations regarding the logical level at which a `transition indicator' must be set." (Id.) Plaintiff further submits that "the patent's description of the preferred embodiment is permissive and provides no `clear intention' to limit the claims to particular fields with the `transition indicator' located in a particular location of a particular field that also contains a `control code counter.'" (Id. at 3.)
At the December 3, 2015 hearing, Defendants reiterated that, during prosecution, the patentees distinguished prior art by noting that the claimed transition indicator is based on the number of control characters. Plaintiff replied that the language relied upon by Defendants appears elsewhere in Claim 1 but not other claims, and the prosecution history cited by Defendants refers to only Claim 1. Defendants also argued that Plaintiff's proposed construction, if adopted, would disable Claim 7. Plaintiff replied that Defendants' argument as to Claim 7 was not briefed and should therefore be disregarded. Alternatively, Plaintiff argued that dependent Claim 7 is of narrower scope than Claim 1 from which it depends and therefore the limitations of dependent Claim 7 should not be imported into the independent claims.
Claims 1, 8, and 11 of the '405 Patent recite (emphasis added):
The specification discloses:
Id. at 4:66-5:4 & 5:18-29 (emphasis added); see id. at 5:44-47 ("Because the first field 414 only indicates the number of control characters present, the second field 418 is provided for indicating the sequential positions of the control characters within the information group.").
Id. at 5:33-43 (emphasis added).
The specification further discloses: "FIG. 6 illustrates the bit field configuration utilizing a coding scheme according to another embodiment of the present invention." Id. at 3:20-23. Figure 6 is reproduced here:
On one hand, "[i]n reviewing the intrinsic record to construe the claims, we strive to capture the scope of the actual invention, rather than strictly limit the scope of claims to disclosed embodiments or allow the claim language to become divorced from what the specification conveys is the invention." Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1305 (Fed. Cir. 2011) ("In reviewing the intrinsic record to construe the claims, we strive to capture the scope of the actual invention, rather than strictly limit the scope of claims to disclosed embodiments or allow the claim language to become divorced from what the specification conveys is the invention."); see Saffran v. Johnson & Johnson, 712 F.3d 549, 560 (Fed. Cir. 2013) (finding that "[e]xtensive, consistent usage in the specification" supported a reading that "accord[ed] with every embodiment and description presented in the . . . patent, not to mention the prosecution history").
On the other hand, "claims are not to be interpreted by adding limitations appearing only in the specification." Electro Med., 34 F.3d at 1054.
The specification discloses that the first field and second fields "may be arranged in any predetermined order." Id. at 5:65-67; see also id. at 4:56-60 (fields "may be arranged in many other predetermined orders within the encoded information stream 400") & id. at 8:18-20 (fields "can be arranged in any of a variety of different orders, as desired by the user").
Further, the specification suggests that there need not be any limitations on the encoding arrangement used in a particular implementation so long as the arrangement is known:
Id. at 6:12-23 (emphasis added); see id. at 4:27-32 ("For instance, if 12 control characters are used, four bits are the minimum number of bits required to map each of these to control codes. In another example, if eight control characters are used, three bits are required to uniquely map each of these to control codes."), 5:49-50 ("Each sub-field(s) 418
During prosecution, the patentee noted that "the transition indicator of claim 1 is based on the number of control characters, and is used to indicate the occurrence of the final control code in the encoded information stream. In contrast, the master transition of the Walker reference merely serves as a reference for frame synchronization, and as a flag indicating when a frame is composed exclusively of information words . . . ." (Dkt. No. 137, Ex. 2, Jan. 6, 2005 Amendment, at 17.) This prosecution history does not warrant finding any limitation beyond what is already recited by surrounding language in Claim 1 (quoted above), and such language does not appear in Claim 8 or Claim 11. See (id. at 21 (underlining "a transition indicator" and "a location pointer" but not the Claim 1 phrase "based on the number of control characters"); see also '405 Patent at Cl. 13 (dependent claim reciting "wherein said transition indicator is generated based on the number of control characters that are present").)
Likewise, the patentee also stated:
(Dkt. No. 137, Ex. 2, Jan. 6, 2005 Amendment, at 18 (emphasis added).) But whereas some claims include "field" limitations (see Claims 9, 10 and 20), the claims here at issue (Claims 1, 8, and 11) do not. See Phillips, 415 F.3d at 1314 ("Differences among claims can also be a useful guide in understanding the meaning of particular claim terms."); see also Woods v. DeAngelo Marine Exhaust, Inc., 692 F.3d 1272, 1285 (Fed. Cir. 2012) ("This court will not construe this otherwise clear term to include a limitation already present in some claims but not others.").
On balance, the above-discussed disclosures demonstrate that using a single bit within a field (set to a logical level opposite the logical level of preceding bits) as a "transition indicator" is an example, and nothing in the prosecution history warrants finding any disclaimer. See, e.g., Electro Med., 34 F.3d at 1054; Phillips, 415 F.3d at 1323; 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); id. at 1325-26 ("[F]or prosecution disclaimer to attach, our precedent requires that the alleged disavowing actions or statements made during prosecution be both clear and unmistakable") (emphasis added); Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1332 (Fed. Cir. 2004) ("Because the statements in the prosecution history are subject to multiple reasonable interpretations, they do not constitute a clear and unmistakable departure from the ordinary meaning of the term. . . .").
Finally, Defendants argue that the construction of "transition indicator" should take into account the recital in Claim 7 of: "based on the value of said transition indicator, determining the locations of said location pointers, said control codes, and said data words in said encoded information stream." Defendants conclude that the "transition indicator" therefore must be arranged so as to indicate all such transitions.
As Plaintiff pointed out at the December 3, 2015 hearing, this argument does not appear in Defendants' claim construction brief. (See Dkt. No. 142.) Defendants thus waived any such argument. See CardSoft, LLC v. VeriFone, Inc., 769 F.3d 1114, 1119 (Fed. Cir. 2014) ("Arguments that are not appropriately developed in a party's briefing may be deemed waived."). Moreover, even if considered, Defendants' argument as to Claim 7 is unavailing because even though the antecedent basis for "said transition indicator" in dependent Claim 7 is "a transition indicator" in independent Claim 1, dependent Claim 7 is naturally of narrower scope than the claim from which it depends—namely Claim 1. See, e.g., AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1242 (Fed. Cir. 2003) ("dependent claims are presumed to be of narrower scope than the independent claims from which they depend"). In other words, Defendants have not demonstrated that the construction of "transition indicator" throughout all claims should be limited by the language that appears in dependent Claim 7.
The Court accordingly hereby construes
(Dkt. No. 132, Ex. B, at 3; Dkt. No. 137, at 21; Dkt. No. 142, at 22; Dkt. No. 154, at 3.) The parties submit that this disputed term appears in Claims 1, 8, and 11. (Dkt. No. 154, at 3.)
Plaintiff argues that whereas its proposed construction "comes from the express language of the claims," "Defendants depart from the claim language and fail to define what a `corresponding control character' corresponds to; where it should correspond to a control code." (Dkt. No. 137, at 21.)
Defendants argue that Plaintiff's proposed construction "is unwieldy and confusing." (Dkt. No. 142, at 23.) Defendants also argue that their proposal of "corresponding control character" is not confusing because "[i]f an information group includes multiple control characters, then the first location pointer corresponds to the control character decoded from the first control code, the second location pointer corresponds to the control character decoded from the second control code, and so on." (Id. at 24.)
Plaintiff replies that "Defendants' construction departs from the claim language without explanation and fails to make clear what the `control characters' corresponds [sic] to (they should correspond to a control code)." (Dkt. No. 147, at 10.)
At the December 3, 2015 hearing, Plaintiff argued that the claimed invention could encompass embodiments with only two locations, in which case a single bit would be sufficient as a location pointer. Defendants responded that the '405 Patent contains no disclosure of using a single-bit location pointer or of having only two locations.
Claim 1 of the '405 Patent, for example, recites (emphasis added):
The specification discloses:
'405 Patent at 4:66-5:2 (emphasis added).
Id. at 5:58-67 (emphasis added).
Id. at 6:42-49.
Id. at 8:45-9:9 (emphasis added).
On balance, use of a particular number of locations or use of a particular number of bits for a "location pointer" are specific features of disclosed embodiments that should not be imported into the claims. See, e.g., Electro Med., 34 F.3d at 1054; Phillips, 415 F.3d at 1323. Otherwise, however, Defendants properly argue that Plaintiff's proposed construction "is unwieldy and confusing." (Dkt. No. 142, at 23.)
The Court therefore hereby construes
(Dkt. No. 132, Ex. A, at 2; id., Ex. B, at 1-2; Dkt. No. 137, at 22; Dkt. No. 142, at 21; Dkt. No. 154, at 3.) The parties submit that this disputed term appears in Claims 1, 8, and 11. (Dkt. No. 154, at 3.)
Plaintiff submits: "Defendants have essentially proposed to construe `generating' to mean `setting and disposing.' Nothing in the claims, specification or prosecution history supports such a construction." (Dkt. No. 137, at 22.) Plaintiff argues that "the '405 patent only describes the setting of bits as one exemplary way to generate an item such as a transition indicator or a location pointer," and "[t]he '405 patent never describes `generating' as limited to disposing bits in a certain order or arrangement." (Id. at 23-24.)
Further, Plaintiff argues, "[w]hile Defendants' proposed construction of `transition indicator' requires that the transition indicator be a bit set `to a logical level opposite the logical level of all preceding bits within the field that functions as a control code counter,' Defendants' proposed construction of `generating a transition indicator' would further require the transition indicator to be set `to a logical level opposite the logical level of all preceding bits in an encoded information stream.'" (Id. at 24.) Plaintiff urges that "the claims of the '405 patent should not be read to require the transition indicator to be in a particular field or at a logical level opposite of any preceding bits in a field, let alone all preceding bits in the output encoded information stream." (Id. at 24-25.)
Defendants respond that their proposed construction is consistent with the disclosed "juxtaposition of one or more bits—all of which are set to the same logical level—that function as a control code counter, on the one hand, and the transition indicator bit that follows and is set to the opposite logical level, on the other . . . ." (Dkt. No. 142, at 22.) Defendants also cite prosecution history. (Id.)
Plaintiff replies that the disclosure relied upon by Defendants "does not mention `generating' or `disposing' bits strategically, and is plainly not limiting." (Dkt. No. 147, at 7.) Likewise, Plaintiff argues, "the portion of the prosecution history relied on [by Defendants] does not mention `generating' or distinguish the prior art, let alone distinguish the prior art based on the position that generating requires the strategic disposing of bits. Instead, the prosecution history merely provides a description of the preferred embodiment." (Id.)
At the December 3, 2015 hearing, Plaintiff argued that although setting a bit can be an example of "generating," combining bits that have already been set is also "generating." Defendants responded that placement of the transition indicator is important because it informs the decoder about how many location pointers and control codes will follow.
Claim 1 of the '405 Patent, for example, recites in relevant part (emphasis added):
The specification discloses a transition indicator that is the "last bit" in a particular field:
'405 Patent at 5:15-29 (emphasis added).
As noted above regarding the term "transition indicator," the specification also discloses that the first field and second fields "may be arranged in any predetermined order." Id. at 5:65-67; see also id. at 4:56-60 (fields "may be arranged in many other predetermined orders within the encoded information stream 400") & id. at 8:18-20 (fields "can be arranged in any of a variety of different orders, as desired by the user").
On balance, Defendants' proposed construction would improperly limit the claims to specific features of disclosed embodiments, particularly as to logical levels and the location of a transition indicator. See, e.g., Electro Med., 34 F.3d at 1054; Phillips, 415 F.3d at 1323. Likewise, during prosecution, the patentees stated that "the transition indicator is based on the number of control characters because it is disposed in a field 414 (preferably the last bit of the field 414) that functions as a control code counter . . . ." (Dkt. No. 137, Ex. 6, Jan. 6, 2005 Amendment, at 18 (emphasis added).)
Finally, although forms of the words proposed by Defendants, "setting" and "disposing," appear in the specification or the prosecution history, the broader term "generating" is readily understandable, and Defendants' proposal would tend to confuse rather than clarify the scope of the claims. See, e.g., '405 Patent at 6:33-35 ("generating word groups in their originally transmitted form") (emphasis added); id. at 6:44-49 ("The control characters and the decoded data words may then be combined in their proper order for outputting to the codec 340 so that the information group is generated which contains data and control characters in their originally transmitted form.") (emphasis added).
The Court therefore hereby expressly rejects Defendants' proposed construction. No further construction is necessary. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) ("Claim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement. It is not an obligatory exercise in redundancy."); see also O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) ("[D]istrict courts are not (and should not be) required to construe every limitation present in a patent's asserted claims."); Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1207 (Fed. Cir. 2010) ("Unlike O2 Micro, where the court failed to resolve the parties' quarrel, the district court rejected Defendants' construction."); ActiveVideo Networks, Inc. v. Verizon Commcn's, Inc., 694 F.3d 1312, 1326 (Fed. Cir. 2012).
The Court accordingly hereby construes
(Dkt. No. 132, Ex. A, at 3; id., Ex. B, at 2-3; Dkt. No. 137, at 22; Dkt. No. 142, at 24; Dkt. No. 154, at 3.) The parties submit that these disputed terms appear in Claims 1 and 11. (Dkt. No. 154, at 3.)
Plaintiff argues these disputed terms together with the term "generating a transition indicator," which is addressed above. (See Dkt. No. 137, at 22-24; see also Dkt. No. 147, at 6-8.)
Defendants present substantially the same arguments for these terms as for "location pointer" and "generating a transition indicator," which are addressed above. (See Dkt. No. 142, at 24-25.)
These disputed terms present substantially the same issues as the terms "location pointer" and "generating a transition indicator," which are addressed above.
Defendants' proposal of "setting and disposing" lacks adequate support and would tend to confuse rather than clarify the scope of the claims. The Court therefore hereby expressly rejects Defendants' proposed construction. No further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521 F.3d at 1362; Finjan, 626 F.3d at 1207; ActiveVideo, 694 F.3d at 1326.
The Court accordingly hereby construes
(Dkt. No. 132, Ex. A, at 3; id., Ex. B, at 4; Dkt. No. 137, at 25; Dkt. No. 142, at 28; Dkt. No. 154, at 3.) The parties submit that this disputed term appears in Claims 1, 8, and 11. (Dkt. No. 154, at 3.)
Plaintiff argues that Defendants' proposed construction is improperly limiting and "[t]he simple word `combining' is readily understandable to both a layperson and a person of ordinary skill alike." (Dkt. No. 137, at 25.) Plaintiff urges that "[t]he claims themselves place no limitations on the particular manner in which the claimed information must be combined." (Id. at 26.) "Further," Plaintiff argues, "when the applicants desired to claim particular information in particular fields of the encoded information stream they did so expressly, as in claim 10." (Id.)
Defendants respond that "[t]he '405 Patent only discloses encoded information streams in which all of the location pointers (when present) appear in a contiguous block, all of the control codes (when present) appear in a contiguous block, and all of the data words appear in a contiguous block." (Dkt. No. 142, at 29.) Defendants likewise urge that "there is no teaching in the specification how individual location pointers can be separated from one another or how control codes can be broken up within the encoded information stream." (Id.)
Plaintiff replies that "the claim requires `combining' four particular pieces of information `to form the encoded information stream,' but does not place any limit on the manner in which such `combining' must occur." (Dkt. No. 147, at 8.) Plaintiff reiterates that "only certain claims, and not the asserted ones, require specific fields." (Id.) Further, Plaintiff urges that "it is improper to read restrictive limitations from the specification into the claims in the absence of a clear intention to do so." (Id. at 9.) Finally, Plaintiff submits that the specification "indicat[es] that the placement of the bits in particular fields or in a particular order may be done at a user's discretion." (Id.)
At the December 3, 2015 hearing, Defendants argued that the claims use the term "combining" with reference to particular data types. Defendants also argued that the specification demonstrates that even if the order of fields is changed, like type data is kept together. Defendants therefore submitted that although the phrase "in a field" could perhaps be removed from their proposed construction, the phrase "like type data together" is compelled by surrounding claim language and by the specification.
On one hand, the specification discloses a "first field 414" that "may include bits . . . set to a first logical level for each time that a control character is detected, to function as control code counters." '405 Patent at 5:18-33. Also, the specification appears to assume that pointers for an information group are contiguous:
Id. at 8:47-50; see id. at 5:44-47 ("the second field 418 is provided for indicating the sequential positions of the control characters within the information group").
On the other hand, the claims at issue do not recite fields and do not recite that particular elements, such as location pointers, must be contiguous with one another. Claim 1 of the '405 Patent, for example, recites (emphasis added):
Also, as Plaintiff submits, the recital of "fields" in some claims but not in Claims 1, 8, and 11 weighs against introducing a "field" limitation into the construction of "combining." See Phillips, 415 F.3d at 1314 ("Differences among claims can also be a useful guide in understanding the meaning of particular claim terms."); see also Woods, 692 F.3d at 1285 ("This court will not construe this otherwise clear term to include a limitation already present in some claims but not others."). Claim 10, for example, recites (emphasis added):
The Court therefore hereby expressly rejects Defendants' proposed construction. No further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521 F.3d at 1362; Finjan, 626 F.3d at 1207; ActiveVideo, 694 F.3d at 1326.
The Court accordingly hereby construes
(Dkt. No. 132, Ex. A, at 3; id., Ex. B, at 5; Dkt. No. 137, at 27; Dkt. No. 142, at 30; Dkt. No. 154, at 3.) The parties submit that this disputed term appears in Claim 11. (Dkt. No. 154, at 3.)
Plaintiff argues that "to the extent that Defendants' proposed construction attempts to require all of the control codes be grouped together as a contiguous data set, all of the data words be grouped together as a second data set, and all of the location pointers be grouped together as a third data set, it should be rejected . . . ." (Dkt. No. 137, at 28.)
Defendants respond, in full: "While the term `combining' requires that all of the location pointers appear contiguously within the encoded information stream, all of the control codes appear contiguously within the encoded information stream, and all of the data words appear contiguously within the encoded information stream, the term `ordering' relates to the sequence of each of those data sets. As described above, the '405 Patent indicates that those data sets may be arranged in many different orders. The `ordering' term relates to the sequence or arrangement of those data sets." (Dkt. No. 142, at 30.)
Plaintiff replies: "Neither the claims nor the specification provide any reason to limit the manner in which `ordering' must occur, let alone any reason why `ordering' must be performed on `data sets,' which are not referred to by the patent at all." (Dkt. No. 147, at 10.)
At the December 3, 2015 hearing, Plaintiff argued that although the order of data must be predetermined so that encoded information can be decoded, it does not matter what the order is so long as the order is known by both the encoder and the decoder. Defendants responded by urging that the claim recites that what are ordered are data sets.
Claim 11 of the '405 Patent recites (emphasis added):
As noted above regarding the term "transition indicator," the specification discloses that the first field and second field "may be arranged in any predetermined order." Id. at 5:65-67; see also id. at 4:56-60 (fields "may be arranged in many other predetermined orders within the encoded information stream 400"); id. at 8:18-20 (fields "can be arranged in any of a variety of different orders, as desired by the user").
Also, the appearance of "combining" and "ordering" in the same claim suggests that those terms have different meanings. See CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) ("we must presume that the use of . . . different terms in the claims connotes different meanings"); see also Primos, Inc. v. Hunter's Specialties, Inc., 451 F.3d 841, 848 (Fed. Cir. 2006) ("[T]he terms `engaging' and `sealing' are both expressly recited in the claim and therefore `engaging' cannot mean the same thing as `sealing'; if it did, one of the terms would be superfluous."); Chi. Bd. Options Exch., Inc. v. Int'l Sec. Exch., LLC, 677 F.3d 1361, 1369 (Fed. Cir. 2012) (noting "[t]he general presumption that different terms have different meanings"). Further, the specification discloses:
'405 Patent at 6:36-49 (emphasis added).
On balance, Defendants' proposed construction is consistent with the intrinsic evidence, and "some construction of the disputed claim language will assist the jury to understand the claims." See TQP Dev., LLC v. Merrill Lynch & Co., Inc., No. 2:08-CV-471, 2012 WL 1940849, at *2 (E.D. Tex. May 29, 2012) (Bryson, J.). Defendants' proposal of the parenthetical "(data sets)," however, would tend to confuse rather than clarify the scope of the claims and is therefore omitted from the Court's construction.
The Court accordingly hereby construes
(Dkt. No. 132, Ex. A, at 1 & 2; id., Ex. B, at 1 & 3; Dkt. No. 137, at 28; Dkt. No. 142, at 23-24 & 26; Dkt. No. 154, at 4.)
After briefing, in their November 30, 2015 Amended Joint Claim Construction Chart, the parties submitted agreed-upon constructions for "information groups" and "multi-word information groups." (Dkt. No. 154, at 4.)
Plaintiff argues that "as no one would have difficulty understanding the meaning of a plural term based on the construction of its singular form, these terms do not need separate construction." (Dkt. No. 137, at 28.) Further, Plaintiff submits, "it appears that Defendants are improperly attempting to read a limitation into the claims that requires more than one location pointer present every time the plural form of that phrases [sic] is used. It is clear from the language of the claims, however, that the plural forms of this word can be used to refer to a single location pointer." (Id. at 29.) Plaintiff urges that "[c]onsistent with the language of the claims, if only one control character is present, only one control code and location pointer would be generated." (Id.) Finally, Plaintiff argues that "it is entirely unclear what is required under Defendants' proposed construction for something to constitute a `set.'" (Id. at 30.)
Defendants argue these terms together with their singular forms. (See Dkt. No. 142, at 24-25 & 26-27.)
Plaintiff replies that "Defendants nowhere explain why the terms . . . should be separately construed or require construction." (Dkt. No. 147, at 10.)
At the December 3, 2015 hearing, Plaintiff reiterated that the term "location pointers" could refer to a single location pointer. Defendants responded that construing the plural "location pointers" as being potentially singular would re-write the claims and would thus be improper.
Claims 1, 8, and 11 of the '405 Patent recite (emphasis added):
In general, the plural form of a noun refers to two or more, as found in Markem-Imaje Corp. v. Zipher Ltd., 657 F.3d 1293, 1297 (Fed. Cir. 2011), and Leggett & Platt, Inc. v. Hickory Springs Manufacturing Co., 285 F.3d 1353, 1357 (Fed. Cir. 2002). The Court addressed these and other relevant cases in Calypso Wireless, Inc., et al. v. T-Mobile USA, Inc., No. 2:08-CV-441, Dkt. No. 281 at 27-32 (E.D. Tex. Dec. 3, 2012) (discussing Flash Seats, LLC v. Paciolon, Inc., No. 07-575-JJF, 2010 WL 184080 (D. Del. Jan. 19, 2010), aff'd, 469 Fed. App'x 916 (Fed. Cir. 2012), Every Penny Counts, Inc. v. Bank of Am. Corp., No. 2:07-CV-42-FTM-29SPC, 2008 WL 4491113 (M.D. Fla. Sept. 29, 2008), and MOAEC, Inc. v. Pandora Media, Inc., No. 07-CV-654-BBC, 2008 WL 4500704 (W.D. Wis. Sept. 30, 2008)).
In some cases, however, a plural term does not necessarily require two or more. For example:
Dayco Prods., Inc. v. Total Containment, Inc., 258 F.3d 1317, 1328 (Fed. Cir. 2001); see Versa Corp. v. Ag-Bag Int'l Ltd., 392 F.3d 1325, 1330 (Fed. Cir. 2004) (as to the term "means . . . for creating air channels," noting that "in context, the plural can describe a universe ranging from one to some higher number, rather than requiring more than one item").
The parties' agreed-upon construction for "information groups" and "multi-word information groups" requires two or more. (See Dkt. No. 154, at 4.)
The "location pointers," however, correspond to "one or more control characters." See '405 Patent at Cls. 1, 8 & 11 (quoted above). That is, each of the "location pointers" corresponds to a particular control character and there need only be "one or more" control characters. Dayco and Versa are therefore analogous. See 258 F.3d at 1328 (quoted above) & 392 F.3d at 1330 (quoted above).
The Court therefore hereby construes the disputed terms as set forth in the following chart:
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.
Within thirty (30) days of the issuance of this Memorandum Opinion and Order, the parties are hereby ORDERED, in good faith, to mediate this case with the mediator designated and appointed in this case. As a part of such mediation, each party shall appear by counsel and by at least one corporate officer possessing sufficient authority and control to unilaterally make binding decisions for the corporation adequate to address any good faith offer or counteroffer of settlement that might arise during such mediation. Failure to do so shall be deemed by the Court as a failure to mediate in good faith and may subject that party to such sanctions as the Court deems appropriate.
