ROY S. PAYNE, Magistrate Judge.
On January 25, 2017, the Court held a hearing to determine the proper construction of disputed claim terms in United States Patents No. 6,865,191, 7,783,949, 8,064,919, and 8,199,792. Having reviewed the arguments made by the parties at the hearing and in their claim construction briefing (Dkt. Nos. 88, 90 & 91),
Plaintiffs PanOptis Patent Management, LLC and Optis Wireless Technology, LLC ("Plaintiffs" or "PanOptis") have alleged infringement of United States Patents No. 6,865,191 ("the '191 Patent"), 7,783,949 ("the '949 Patent"), 8,064,919 ("the '919 Patent"), and 8,199,792 ("the '792 Patent") (collectively, the "patents-in-suit") by Defendants BlackBerry Limited and BlackBerry Corp ("Defendants" or "BlackBerry"). Plaintiffs submit that the patents-in-suit relate to wireless communications and in particular the LTE standard for high-speed data in wireless communications. Dkt. No. 88 at 1.
The Court previously construed terms in the '191 Patent, the '919 Patent, and the '792 Patent in Optis Wireless Technology, LLC, et al. v. ZTE Corp., et al., 2:15-CV-300, Dkt. No. 116, 2016 WL 1599478 (E.D. Tex. Apr. 20, 2016) ("ZTE").
Shortly before the start of the January 25, 2017 hearing, the Court provided the parties with preliminary constructions with the aim of focusing the parties' arguments and facilitating discussion. Those preliminary constructions are set forth below within the discussion for each term.
"It is a `bedrock principle' of patent law that `the claims of a patent define the invention to which the patentee is entitled the right to exclude.'" Phillips, 415 F.3d at 1312 (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). Claim construction is clearly an issue of law for the court to decide. Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). "In some cases, however, the district court will need to look beyond the patent's intrinsic evidence and to consult extrinsic evidence in order to understand, for example, the background science or the meaning of a term in the relevant art during the relevant time period." Teva, 135 S. Ct. at 841 (citation omitted). "In cases where those subsidiary facts are in dispute, courts will need to make subsidiary factual findings about that extrinsic evidence. These are the `evidentiary underpinnings' of claim construction that we discussed in Markman, and this subsidiary factfinding must be reviewed for clear error on appeal." Id. (citing 517 U.S. 370).
To determine the meaning of the claims, courts start by considering the intrinsic evidence. See Phillips, 415 F.3d at 1313; see also C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc'ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the specification, and the prosecution history. See Phillips, 415 F.3d at 1314; C.R. Bard, 388 F.3d at 861. Courts give claim terms their ordinary and accustomed meaning as understood by one of ordinary skill in the art at the time of the invention in the context of the entire patent. Phillips, 415 F.3d at 1312-13; accord Alloc, Inc. v. Int'l Trade Comm'n, 342 F.3d 1361, 1368 (Fed. Cir. 2003).
The claims themselves provide substantial guidance in determining the meaning of particular claim terms. Phillips, 415 F.3d at 1314. First, a term's context in the asserted claim can be very instructive. Id. Other asserted or unasserted claims can aid in determining the claim's meaning because claim terms are typically used consistently throughout the patent. Id. Differences among the claim terms can also assist in understanding a term's meaning. Id. For example, when a dependent claim adds a limitation to an independent claim, it is presumed that the independent claim does not include the limitation. Id. at 1314-15.
"[C]laims `must be read in view of the specification, of which they are a part.'" Id. at 1315 (quoting Markman, 52 F.3d at 979 (en banc)). "[T]he specification `is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.'" Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); accord Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). This is true because a patentee may define his own terms, give a claim term a different meaning than the term would otherwise possess, or disclaim or disavow the claim scope. Phillips, 415 F.3d at 1316. In these situations, the inventor's lexicography governs. Id. The specification may also resolve the meaning of ambiguous claim terms "where the ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of the claim to be ascertained from the words alone." Teleflex, 299 F.3d at 1325. But, "[a]lthough the specification may aid the court in interpreting the meaning of disputed claim language, particular embodiments and examples appearing in the specification will not generally be read into the claims." Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); accord Phillips, 415 F.3d at 1323.
The prosecution history is another tool to supply the proper context for claim construction because a patent applicant may also define a term in prosecuting the patent. Home Diagnostics, Inc., v. Lifescan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) ("As in the case of the specification, a patent applicant may define a term in prosecuting a patent."). "[T]he prosecution history (or file wrapper) limits the interpretation of claims so as to exclude any interpretation that may have been disclaimed or disavowed during prosecution in order to obtain claim allowance." Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985).
Although extrinsic evidence can be useful, it is "less significant than the intrinsic record in determining the legally operative meaning of claim language." Phillips, 415 F.3d at 1317 (citations and internal quotation marks omitted). Technical dictionaries and treatises may help a court understand the underlying technology and the manner in which one skilled in the art might use claim terms, but technical dictionaries and treatises may provide definitions that are too broad or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert testimony may aid a court in understanding the underlying technology and determining the particular meaning of a term in the pertinent field, but an expert's conclusory, unsupported assertions as to a term's definition are entirely unhelpful to a court. Id. Generally, extrinsic evidence is "less reliable than the patent and its prosecution history in determining how to read claim terms." Id.
The parties reached agreement on constructions as stated in their November 4, 2016 P.R. 4-3 Joint Claim Construction and Prehearing Statement (Dkt. No. 85 at Ex. A) and their January 13, 2017 Joint Claim Construction Chart (Dkt. No. 96 at Ex. A). Those agreements are set forth in Appendix A to the present Claim Construction Memorandum and Order.
The '919 Patent, titled "Radio Communication Base Station Device and Control Channel Arrangement Method," issued on November 22, 2011, and bears an earliest priority date of March 23, 2007. The Abstract of the '919 Patent states:
The Court previously construed terms in the '919 Patent in ZTE.
Dkt. No. 85, Ex. B at 11-12; Dkt. No. 88 at 2; Dkt. No. 90 at 7; Dkt. No. 96, Ex. A at 12-13.
Shortly before the start of the January 25, 2017 hearing, the Court provided the parties with the following preliminary construction: "Plain meaning (35 U.S.C. § 112, ¶ 6 does not apply)."
Plaintiffs argue that here as in ZTE, Defendants cannot overcome the presumption that this non-means term is not governed by 35 U.S.C. § 112, ¶ 6. Dkt. No. 88 at 4.
Defendants respond that "`determination unit' is not a term of art that refers to a specific type of circuit with a known structure," and "[t]he claim language does not describe how such a circuit would be `specially configured' to perform the claimed function." Dkt. No. 90 at 8.
Plaintiffs reply that "unit" has not been found to be a "nonce" term, and the Court should reach the same conclusion here as in ZTE. Dkt. No. 91 at 1.
At the January 25, 2017 hearing, Defendants emphasized testimony by Plaintiffs' expert, Dr. Richard Gitlin, agreeing that the phrase "determination unit" is not a "general term of the art." Dkt. No. 90, Ex. 18, Dec. 19, 2016 Gitlin dep. at 32:4-7.
Title 35 U.S.C. § 112, ¶ 6 provided: "An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof."
"[T]he failure to use the word `means' . . . creates a rebuttable presumption . . . that § 112, para. 6 does not apply." Williamson v. Citrix Online LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (citations and internal quotation marks omitted). "When a claim term lacks the word `means,' the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function." Id. at 1349 (citations and internal quotation marks omitted).
Williamson, in an en banc portion of the decision, abrogated prior statements that the absence of the word "means" gives rise to a "strong" presumption against means-plus-function treatment. Id. (citation omitted). Williamson also abrogated prior statements that this presumption "is not readily overcome" and that this presumption cannot be overcome "without a showing that the limitation essentially is devoid of anything that can be construed as structure." Id. (citations omitted). Instead, Williamson found, "[h]enceforth, we will apply the presumption as we have done prior to Lighting World . . . ." Id. (citing Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004)). In a subsequent part of the decision not considered en banc, Williamson affirmed the district court's finding that the term "distributed learning control module" was a means-plus-function term that was indefinite because of lack of corresponding structure, and in doing so Williamson stated that "`module' is a well-known nonce word." 792 F.3d at 1350.
As to the "a determination unit . . ." term in the '919 Patent, ZTE found:
ZTE at 53-55 (footnote omitted).
Unlike ZTE, here the parties dispute whether "reception unit" and "transmission unit" are structural.
Nonetheless, the substantive analysis of "determination unit" in ZTE is still applicable here. Defendants have cited cases in which the Court has found certain "unit" terms to be means-plus-function terms governed by 35 U.S.C. § 112, ¶ 6. See Cellular Commc'ns Equip. LLC v. HTC Corp., No. 6:13-CV-507, 2015 WL 10741012, at *12-*14 (E.D. Tex. Mar. 9, 2015);
On balance, the Court hereby expressly rejects Defendants' argument that the present disputed term is a means-plus-function term governed by 35 U.S.C. § 112, ¶ 6. Defendants have not proposed any construction other than pursuant to 35 U.S.C. § 112, ¶ 6. The Court therefore concludes that no further construction is required.
The Court thus hereby construes
Dkt. No. 85, Ex. B at 10; Dkt. No. 88 at 3; Dkt. No. 90 at 3; Dkt. No. 96, Ex. A at 11-12.
Shortly before the start of the January 25, 2017 hearing, the Court provided the parties with the following preliminary construction: "Plain meaning (35 U.S.C. § 112, ¶ 6 does not apply)."
Plaintiffs argue that Defendants cannot overcome the presumption that this non-means term is not governed by 35 U.S.C. § 112, ¶ 6. Dkt. No. 88 at 6. Plaintiffs submit that "[l]ike `determination unit,' the claimed `reception unit' connotes structure to one of skill in the art by reciting details of how the unit functions as part of the claim." Id.
Defendants respond that this disputed term uses "unit" as a "nonce" word and fails to connote structure and, as a result, 35 U.S.C. § 112, ¶ 6 applies. Dkt. No. 90 at 4. Defendants urge that "[t]he plain language does not limit th[is] term[] to a `receiver,'" and "the '919 patent never uses the term `receiver.'" Id. at 5. Further, Defendants argue, "a `receiver,' . . . is insufficient structure for the claimed function of `receiv[ing], from a base station, allocation information indicating one or a plurality of allocated resource block(s) of uplink.'" Id.
Plaintiffs reply that "[Defendants'] attempt to distinguish between a transmission/reception unit and transmitter/receiver elevates form over substance." Dkt. No. 91 at 2.
At the January 25, 2017 hearing, the parties presented no separate oral argument as to this term apart from their arguments as to the "a determination unit . . ." term addressed above.
For substantially the same reasons set forth above as to "a determination unit . . .," the Court finds that the present disputed term is not governed by 35 U.S.C. § 112, ¶ 6.
The Court accordingly hereby expressly rejects Defendants' argument that the present disputed term is a means-plus-function term governed by 35 U.S.C. § 112, ¶ 6. Defendants have not proposed any construction other than pursuant to 35 U.S.C. § 112, ¶ 6. The Court therefore concludes that no further construction is required.
The Court thus hereby construes the
Dkt. No. 85, Ex. B at 13; Dkt. No. 88 at 3; Dkt. No. 90 at 3; Dkt. No. 96, Ex. A at 13-14.
Shortly before the start of the January 25, 2017 hearing, the Court provided the parties with the following preliminary construction: "Plain meaning (35 U.S.C. § 112, ¶ 6 does not apply)."
Plaintiffs argue that Defendants cannot overcome the presumption that this non-means term is not governed by 35 U.S.C. § 112, ¶ 6. Dkt. No. 88 at 6. Plaintiffs submit that "[l]ike `determination unit,' the claimed `transmission unit' connotes structure to one of skill in the art by reciting details of how the unit functions as part of the claim." Id. at 7.
Defendants respond as to this term together with the "a reception unit . . ." term addressed above. See Dkt. No. 90 at 3-7. Defendants argue that "a `transmitter' is insufficient structure for the claimed function of `transmit[ting] data using the allocated resource block(s) based on the allocation information.'" Id. at 5.
Plaintiffs reply that "[Defendants'] attempt to distinguish between a transmission/reception unit and transmitter/receiver elevates form over substance." Dkt. No. 91 at 2.
At the January 25, 2017 hearing, the parties presented no separate oral argument as to this term apart from their arguments as to the "a determination unit . . ." term addressed above.
For substantially the same reasons set forth above as to "a determination unit . . .," the Court finds that the present disputed term is not governed by 35 U.S.C. § 112, ¶ 6.
The Court accordingly hereby expressly rejects Defendants' argument that the present disputed term is a means-plus-function term governed by 35 U.S.C. § 112, ¶ 6. Defendants have not proposed any construction other than pursuant to 35 U.S.C. § 112, ¶ 6. The Court therefore concludes that no further construction is required.
The Court thus hereby construes the
The '792 Patent, titled "Radio Communication Apparatus and Response Signal Spreading Method," issued on June 12, 2012, and bears an earliest priority date of June 15, 2007. The Abstract of the '792 Patent states:
The Court previously construed terms in the '792 Patent in ZTE.
Dkt. No. 85, Ex. B at 15-16; Dkt. No. 88 at 9.
Plaintiffs argued that Defendants cannot overcome the presumption that this non-means term is not governed by 35 U.S.C. § 112, ¶ 6. Dkt. No. 88 at 10. Plaintiffs submitted that "[t]he claimed `spreading unit' connotes structure to one of skill in the art by reciting details of how the unit functions as part of the claim." Id.
Defendants responded: "After further consideration of PanOptis's brief and expert declaration, BlackBerry agrees that the term `spreading unit' does not need construction, and is not subject to § 112 ¶ 6." Dkt. No. 90 at 12; see id. at 12 n.6 ("Although the term `unit' is a nonce word, the term `spreading unit' differs from the other `unit' terms addressed in this brief.").
Plaintiffs replied: "Blackberry no longer seeks construction of `a spreading unit.' Accordingly, PanOptis does not address the term herein." Dkt. No. 91 at 2 n.3 (citation omitted).
Because this term is thus no longer disputed, the Court does not further address this term.
Dkt. No. 85, Ex. B at 17; Dkt. No. 88 at 9; Dkt. No. 90 at 12; Dkt. No. 96, Ex. A at 17-18.
Shortly before the start of the January 25, 2017 hearing, the Court provided the parties with the following preliminary construction: "Plain meaning (35 U.S.C. § 112, ¶ 6 does not apply)."
Plaintiffs argue that Defendants cannot overcome the presumption that this non-means term is not governed by 35 U.S.C. § 112, ¶ 6. Dkt. No. 88 at 11. Plaintiffs submit that "[t]he claimed `transmission unit' connotes structure to one of skill in the art by reciting details of how the unit functions as part of the claim." Id. at 12.
Defendants respond that "the term `transmitting unit' merely uses a nonce term with functional descriptions." Dkt. No. 90 at 12. Defendants argue that, similar to the "transmission unit" term in the '919 Patent, "the claims contain no structure for performing the recited function." Id. at 13. Further, Defendants argue, "the '792 patent claims a `transmitting unit,' not a `transmitter.'" Id.
Plaintiffs reply: "Again, [Defendants] elevate[] form over substance by trying to distinguish a `transmitting unit' from a transmitter." Dkt. No. 91 at 3.
At the January 25, 2017 hearing, the parties presented no separate oral argument as to this term apart from their arguments as to the "a determination unit . . ." term addressed above.
For substantially the same reasons set forth above as to "a determination unit . . ." in the '919 Patent, the Court finds that the present disputed term is not governed by 35 U.S.C. § 112, ¶ 6.
The Court accordingly hereby expressly rejects Defendants' argument that the present disputed term is a means-plus-function term governed by 35 U.S.C. § 112, ¶ 6. Defendants have not proposed any construction other than pursuant to 35 U.S.C. § 112, ¶ 6. The Court therefore concludes that no further construction is required.
The Court thus hereby construes the
Dkt. No. 85, Ex. B at 15; Dkt. No. 88 at 12; Dkt. No. 90 at 9; Dkt. No. 96, Ex. A at 19.
Shortly before the start of the January 25, 2017 hearing, the Court provided the parties with the following preliminary construction: "Plain meaning (Reject Defendants' proposal of `cannot be the same as')."
Plaintiffs argue: "The plain claim language requires only that one or more cyclic shift values associated with one orthogonal sequence is different from one or more cyclic shift values associated with another. Blackberry's proposed construction, in contrast, requires that none of the cyclic shift values associated with one orthogonal sequence be the same as any cyclic shift value associated with another orthogonal sequence." Dkt. No. 88 at 14.
Defendants respond that "[t]he patent consistently teaches this `difference' as every cyclic shift value associated with a given orthogonal sequence is unique compared to values associated with a second orthogonal sequence." See Dkt. No. 90 at 10 (citing '792 Patent at Figs. 7, 10, 12, 13).
Plaintiffs reply: "The independent claims require that `a cyclic shift value associated with the first orthogonal sequence is different from a cyclic shift value associated with the second orthogonal sequence,' but BlackBerry argues that as [sic] each cyclic shift value is unique to a particular orthogonal sequence." Dkt. No. 91 at 3 (emphasis Plaintiffs').
At the January 25, 2017 hearing, Defendants urged that the specification discloses three distinct embodiments that correspond to Figures 7-10, 11-12, and 13-14, respectively, and Defendants argued that only the second embodiment is claimed. In response, Plaintiffs acknowledged that the specification sets forth no embodiment with partial overlap of cyclic shift values, but Plaintiffs maintained that the claims contain no limitation that would preclude partial overlap.
The specification discloses that using different cyclic shift values can reduce loss of performance that would otherwise be caused by inter-code interference:
'792 Patent at 9:1-57 (emphasis added).
Claim 4 of the '792 Patent, for example, recites (emphasis added):
The claims do not preclude an orthogonal sequence from having more than one cyclic shift value associated with it. For example, dependent Claim 8 recites (emphasis added):
Defendants' proposal of "cannot be the same as" would mean that in above-reproduced Claim 4, for example, a cyclic shift value associated with the first orthogonal sequence cannot be the same as any cyclic shift value associated with the second orthogonal sequence.
Defendants have not demonstrated anything in the claim language that would preclude partial overlap between cyclic shift values associated with the first orthogonal sequence and cyclic shift values associated with the second orthogonal sequence. Likewise, no disclaimer to such effect is evident in the specification. See Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1366-67 (Fed. Cir. 2012) ("It is . . . not enough that the only embodiments, or all of the embodiments, contain a particular limitation. We do not read limitations from the specification into claims; we do not redefine words. Only the patentee can do that. To constitute disclaimer, there must be a clear and unmistakable disclaimer."); see also Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 908 (Fed. Cir. 2004) ("The fact that a patent asserts that an invention achieves several objectives does not require that each of the claims be construed as limited to structures that are capable of achieving all of the objectives.").
As to the prosecution history cited by Defendants, which appears in the file history of the parent United States Patent Application No. 13/165,538 (which issued as United States Patent No. 8,179,947), the patentee argued as follows regarding the "Kwak" reference, United States Patent No. 7,929,415:
Dkt. No. 90, Ex. 16, Sept. 28, 2011 Response at 5 (POWIRE62_0000101) (emphasis in original).
The patentee thus distinguished Kwak as disclosing complete overlap. That is, the patentee distinguished Kwak because Kwak associated all of the same cyclic shift values (the 6 ZC sequences) with both of the two orthogonal sequences (the 2 W-H codes). Plaintiffs here are not proposing that such complete overlap is within the scope of the claims at issue. Instead, Plaintiffs persuasively argue that there is no limitation precluding partial overlap. See Omega Eng'g Inc. 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).
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); Summit 6, LLC v. Samsung Elecs. Co., Ltd., 802 F.3d 1283, 1291 (Fed. Cir. 2015).
The Court accordingly hereby construes
The '949 Patent, titled "Method and Apparatus for Controlling a Transport Format of a Retransmission," issued on August 24, 2010, and bears an earliest priority date of April 1, 2004. The Abstract of the '919 Patent states:
Dkt. No. 85, Ex. B at 4-5 & 6-7; Dkt. No. 88 at 16-17; Dkt. No. 90 at 22; Dkt. No. 96, Ex. A at 4-6.
Shortly before the start of the January 25, 2017 hearing, the Court provided the parties with the following preliminary construction: "Plain meaning (35 U.S.C. § 112, ¶ 6 does not apply)."
Plaintiffs argue that Defendants cannot overcome the presumption that these non-means terms are not governed by 35 U.S.C. § 112, ¶ 6. Dkt. No. 88 at 17.
Defendants respond that "[a]s with `transmission unit' and `reception unit' in the '919 patent, the terms `transmitting unit' and `receiving unit' merely use a nonce term with functional descriptions . . . ." Dkt. No. 90 at 23. Defendants further argue: "Even if `transmitting unit' and `receiving unit' are understood to connote a generic `transmitter' and a `receiver,' those terms do not recite structure sufficient for performing the specific claimed functions at issue, i.e., `transmit[ting] an uplink data packet via the uplink data channel from the transmitting apparatus' and `receiv[ing] a feedback message via an acknowledgment channel from the receiving apparatus.'" Id. at 24.
Plaintiffs reply that "[a]s with the similar terms in the other patents, [Defendants'] attempts to distinguish a transmitting/receiving unit from a transmitter/receiver elevates form over substance." Dkt. No. 91 at 7.
At the January 25, 2017 hearing, the parties presented no separate oral argument as to these terms apart from their arguments as to the "a determination unit . . ." term addressed above.
For substantially the same reasons set forth above as to "a determination unit . . ." in the '919 Patent, the Court finds that the present disputed terms are not governed by 35 U.S.C. § 112, ¶ 6.
The Court accordingly hereby expressly rejects Defendants' argument that the present disputed terms are means-plus-function terms governed by 35 U.S.C. § 112, ¶ 6. Defendants have not proposed any constructions other than pursuant to 35 U.S.C. § 112, ¶ 6. The Court therefore concludes that no further construction is required.
The Court thus hereby construes the
Dkt. No. 85, Ex. B at 1; Dkt. No. 88 at 18; Dkt. No. 90 at 14, 16 & 17; Dkt. No. 96, Ex. A at 1 & 2.
Shortly before the start of the January 25, 2017 hearing, the Court provided the parties with the following preliminary constructions:
At the January 25, 2017 hearing, the parties agreed to the Court's preliminary constructions.
The Court therefore hereby construes the disputed terms as set forth in the following chart:
Dkt. No. 85, Ex. B at 4; Dkt. No. 88 at 21; Dkt. No. 90 at 18; Dkt. No. 96, Ex. A at 1.
Shortly before the start of the January 25, 2017 hearing, the Court provided the parties with the following preliminary construction: "Plain meaning (Reject Defendants' proposal of `sufficient but not more than required')."
Plaintiffs argued that Defendants' proposal "reads out some of the disclosed embodiments." Dkt. No. 88 at 22. Further, Plaintiffs argued, Defendants' proposal "imports unnecessary ambiguity into the claims regarding how one would measure that which is `sufficient but not more than required for' successful decoding." Id. Instead, Plaintiffs argued, the specification demonstrates that "one of ordinary skill would understand that a `transport format for a retransmission' is simply a restricted transport format, specifying the modulation scheme, code rate, etc., to be used in retransmission." Id. at 23. Plaintiffs also argued claim differentiation as to dependent Claim 7. Id. at 25.
Defendants responded that their proposed construction "reflects the alleged invention and the patent's disparagement of prior art methods." Dkt. No. 90 at 18. Defendants submitted that the patent "teaches precisely what restriction must be indicated to the UE in order to achieve the alleged benefits of the invention." Id. at 19. Defendants argued that "the '949 patent expressly describes how to determine a transport format that is sufficient, but not more than required." Id. at 21 (citing '949 Patent at 16:29-34).
Plaintiffs replied that "there is no disavowal justifying BlackBerry's proposed departure from plain meaning." Dkt. No. 91 at 7.
At the January 25, 2017 hearing, Plaintiffs reiterated that Defendants' proposed construction would inappropriately demand a level of precision that is not feasible, as demonstrated by the evidence discussed in the parties' briefs. Plaintiffs highlighted the opinion of Plaintiffs' expert that the disputed term "transport format for a retransmission" refers to a "restricted" transport format. See Dkt. No. 88, Ex. 6, Dec. 7, 2016 Gitlin Decl. at ¶ 86.
In response, Defendants presented an alternative proposed construction: "transport format restricted relative to the original transmission for a retransmission."
Plaintiffs replied that Defendants' alternative proposal was needlessly wordy. Nonetheless, Plaintiffs stated that if the Court finds that construction is appropriate, then Plaintiffs had no substantive objection to Defendants' alternative proposal.
On balance, the Court finds that construction is appropriate so as to reflect the substantive agreement reached by the parties at the January 25, 2017 hearing.
The Court therefore hereby construes
The '191 Patent, titled "System and Method for Sending Multimedia Attachments to Text Messages in Radiocommunication Systems," issued on March 8, 2005, and bears an earliest priority date of August 12, 1999. The Abstract of the '191 Patent states:
The Court previously construed terms in the '191 Patent in ZTE.
Dkt. No. 85, Ex. B at 19; Dkt. No. 88 at 25-26; Dkt. No. 90 at 25; id. at 26 n.16; Dkt. No. 96, Ex. A at 36.
Shortly before the start of the January 25, 2017 hearing, the Court provided the parties with the following preliminary construction: "Plain meaning (35 U.S.C. § 112, ¶ 6 does not apply)."
Plaintiffs argue that Defendants cannot overcome the presumption that this non-means term is not governed by 35 U.S.C. § 112, ¶ 6. Dkt. No. 88 at 26. Plaintiffs urge that "[a] `processor' is the name of a specific structure or class of structures known to one of skill in the art at the time the '191 patent was filed." Id.
Defendants respond that "the `processor' term of the '191 patent is defined only according to the function it performs, and does not connote structure," and "while claim 17 recites the function performed by the processor—i.e., `associating a text message with an attachment'—it does not describe how the processor performs that function." Dkt. No. 90 at 26.
Plaintiffs reply that surrounding claim language and the specification demonstrate that the disputed term is structural. Dkt. No. 91 at 9.
Legal principles regarding 35 U.S.C. § 112, ¶ 6 are set forth above as to the "a determination unit . . ." term in the '919 Patent.
Claim 17 of the '191 Patent recites (emphasis added):
Here, "processor" is not a "nonce" term but rather connotes a class of structures. In reaching this conclusion, the Court applies substantially the same analysis that the Court applied in SyncPoint Imaging, LLC v. Nintendo of America Inc., No. 2:15-CV-247, 2016 WL 55118, at *18-*21 (E.D. Tex. Jan. 5, 2016). In particular, the Court hereby expressly rejects Defendants' arguments that the "processor" term fails to recite sufficient structure because the claim "does not describe how the processor performs that function" and that "mere disclosure of a generic data processor cannot denote sufficient structure with respect to the functions performed." Dkt. No. 90 at 26 & 27; see Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) ("where a claim is not drafted in means-plus-function format, the reasoning in the Aristocrat line of cases does not automatically apply, and an algorithm is therefore not necessarily required") (discussing Aristocrat Techs. Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328 (Fed. Cir. 2008)). Furthermore, whether recitation of a "processor for" performing a function is governed by § 112, ¶ 6 depends on whether the stated objectives and operation of the processor connote sufficiently definite structure. Global Equity Management (SA) Pty. Ltd. v. Expedia, Inc., No. 2:16-cv-95, 2016 WL 7416132, at *29 (E.D. Tex. Dec. 22, 2016); Uniloc USA, Inc. v. Autodesk, Inc., No. 2:15-cv-1187, 2016 WL 3647977, at *20 (E.D. Tex. July 7, 2016); See, e.g., Finjan, Inc. v. Proofpoint, Inc., No. 13-cv-05808-HSG, 2015 U.S. Dist. LEXIS 162504, at *31-*32, 2015 WL 7770208 (N.D. Cal. Dec. 3, 2015) ("processor [for performing a function]" found to be sufficiently definite structure because the claim described how the processor functions with the other claim components); Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1319-21 (Fed. Cir. 2004) ("circuit [for performing a function]" — similar to "processor [for performing a function]" — found to be sufficiently definite structure because the claim recited the "objectives and operations" of the circuit).
Here, the term "processor" as used in Claim 17 of the '191 Patent refers to a recognized class of structures. See Dkt. No. 88, Ex. 8, Hargrave's Communications Dictionary 410 (2002) ("In a computer, the functional unit that interprets and executes instructions. A processor consists of at least an instruction control unit and an arithmetic unit.") (POWIRE62_0020260); see also id., Merriam-Webster Dictionary 394 (2005) ("CPU") (POWIRE62_0020294); id., McGraw-Hill Dictionary of Scientific and Technical Terms 1676 (6th ed. 2003) ("1. A device that performs one or many functions, usually a central processing unit. Also known as engine. 2. A program that transforms some input into some output, such as an assembler, compiler, or linkage editor.) (POWIRE62_0020270).
Finally, although Defendants have cited St. Isidore Research, LLC v. Comerica Inc., No. 2:15-CV-1390, 2016 WL 4988246, at *14 (E.D. Tex. Sept. 19, 2016), in which the Court found certain "processor configured" terms to be means-plus-function terms, St. Isidore itself noted that "[t]he Court has typically found `processor' to connote sufficient structure to avoid the application of § 112, ¶ 6 in different circumstances." Id., at *15. Here, Claim 17 of the '191 Patent (reproduced above) sets forth detail regarding the operation of the "processor." See, e.g., Linear Tech., 379 F.3d at 1320. Surrounding claim language recites more than merely "associating a text message with an attachment," such as "adding information to the text message that identifies a server" and "sending the attachment to a server." This context imparts additional structural significance and understandability to the "processor." Also of note, "[t]he amount of detail required to be included in claims depends on the particular invention and the prior art." Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1385 (Fed. Cir. 2011) (citation and internal quotation marks omitted).
On balance, the Court hereby expressly rejects Defendants' argument that the present disputed term is a means-plus-function term governed by 35 U.S.C. § 112, ¶ 6. Defendants have not proposed any construction other than pursuant to 35 U.S.C. § 112, ¶ 6. The Court therefore concludes that no further construction is required.
The Court thus hereby construes the
Dkt. No. 85, Ex. B at 20; Dkt. No. 88 at 28; Dkt. No. 90 at 28; id. at 30 n.19; Dkt. No. 96, Ex. A at 36-37.
Shortly before the start of the January 25, 2017 hearing, the Court provided the parties with the following preliminary construction: "Plain meaning (Reject Defendants' proposal of requiring `different communications protocol[s]' or `different transport mechanism[s]')."
Plaintiffs argue that "BlackBerry's proposed construction improperly imports limitations into the claim and unnecessarily exchanges words." Dkt. No. 88 at 28. In particular, Plaintiffs argue that "Claim 17 does not require use of a particular protocol, much less two different protocols as BlackBerry's proposed construction would insert." Id. at 29.
Defendants respond that their proposal "reflects the express teaching in the specification, that the claimed system transmits text messages using a first transport protocol, such as SMS [(Short Message Service)], and sends attachments using a second protocol, such as WAP [(Wireless Access Protocol)]." Dkt. No. 90 at 28. Further, Defendants argue: "[I]n the ZTE case, the dispute centered over whether the claims require two separate transmissions (rather than merely the use of two communication protocols), and whether the text message must actually reach the receiving terminal. See ZTE Order at 42-43. The Court has not had the opportunity to consider and rule on the issues presented by the parties in this case." Id. at 29.
Plaintiffs reply: "Blackberry erroneously attempts to read in limitations from the specification to support its construction, contrary to the plain language of the claims and statements in the file history." Dkt. No. 91 at 10 (footnote omitted).
Claim 17 of the '191 Patent recites, in relevant part:
In ZTE, the Court found:
ZTE at 42-43. The Court construed "sending the attachment to a server" and "transmitting the text message to the receiving terminal's phone number based address" to have their plain meaning. Id. at 44.
The Court in ZTE thus found a requirement of "different paths." Id. at 43. ZTE did not involve any dispute as to whether those different paths must use "different communications protocol[s]" or "different transport mechanism[s]," as Defendants have proposed here. Dkt. No. 90 at 28; id. at 30 n.19.
Defendants argue that "[e]very embodiment in the '191 patent teaches that the claimed system transmits text messages and sends attachments using distinct protocols for transport." Dkt. No. 90 at 28 (citing '191 Patent at 3:6-11, 5:20-36 & 6:15-17). No such requirement of using distinct protocols for transport is apparent in the claim language, and Defendants have not identified any relevant definition or disclaimer that would support Defendants' proposal. See Thorner, 669 F.3d 1366-67 ("It is . . . not enough that the only embodiments, or all of the embodiments, contain a particular limitation. We do not read limitations from the specification into claims; we do not redefine words. Only the patentee can do that. To constitute disclaimer, there must be a clear and unmistakable disclaimer."). On the contrary, the specification implies that the transport mechanisms are not limited to the arrangement set forth in the preferred embodiment because "the present invention can also be applied where other types of equipment originate the message, e.g., PSTNs or data networks." '191 Patent at 7:13-15.
The prosecution history cited by Defendants is likewise unavailing in this regard. The patentee stated that "attachments can be processed by the terminals using the existing text messaging protocols, such as SMS, without using an email client." Dkt. No. 90, Ex. 17, June 30, 2004 Amendment at 6 (POWIRE62_0001633). This does not rise to the level of a definitive statement that the claimed invention is limited to the protocols used in the preferred embodiment or that different transport mechanisms must be used for the text message and the attachment respectively. See Omega Eng'g, 334 F.3d at 1324 ("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).
Also of note, Claims 4 and 12 of the '191 Patent recite, respectively: "wherein transmitting the text message and receiving the attachment are performed using wireless access protocol (WAP)"; and "wherein the means for transmitting a message and for receiving the attachment employ wireless access protocol (WAP)." Although Claims 4 and 12 do not depend from the claim here at issue, the absence of any analogous protocol limitation in Claim 17 of the '191 Patent is noteworthy. See Phillips, 415 F.3d at 1314 ("Other claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment as to the meaning of a claim term.").
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; Summit 6, 802 F.3d at 1291.
The Court accordingly hereby construes
The Court adopts the constructions set forth in this opinion for the disputed terms of the patents-in-suit.
The parties are ordered to not refer to each other's claim construction positions in the presence of the jury. Likewise, in the presence of the jury, the parties are ordered to refrain from mentioning any portion of this opinion, other than the actual definitions adopted by the Court. The Court's reasoning in this order binds the testimony of any witnesses, and any reference to the claim construction proceedings is limited to informing the jury of the definitions adopted by the Court.
Dkt. No. 85 at Ex A; Dkt. No. 96, Ex. A at 13 & 37-38.
