LEE YEAKEL, District Judge.
Before the court in the above-styled and numbered cause are Plaintiff Joao Control & Monitoring Systems, LLC's ("Joao") Opening Claim Construction Brief filed April 3, 2015 (Clerk's Doc. No. 84); Defendant Protect America, Inc.'s ("Protect America") Opening Claim Construction Brief filed April 3, 2015 (Clerk's Doc. No. 83); Joao's Responsive Claim Construction Brief filed May 8, 2015 (Clerk's Doc. No. 93); Protect America's Reply Claim Construction Brief filed May 8, 2015 (Clerk's Doc. No. 92); the parties' Notice of Supplemental Authority filed June 22, 2015 (Clerk's Doc. No. 102); Joao's Supplemental Claim Construction Brief filed June 26, 2015 (Clerk's Doc. No. 106); Protect America's Supplemental Claim Construction Brief filed June 26, 2015 (Clerk's Doc. No. 105); Joao's Notice of Supplemental Authority filed August 6, 2015 (Clerk's Doc. No. 108); the parties' Amended Joint Claim Construction Statement filed March 19, 2015 (Clerk's Doc. No. 73); and the claim-construction presentations of both parties.
The court held a claim-construction hearing on May 27, 2015. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), ail' d, 517 U.S. 370 (1996). After considering the patents and their prosecution history, the parties' claim-construction briefs, the parties' opposing expert declarations, the applicable law regarding claim construction, and argument of counsel, the court now renders its order with regard to claim construction.
The court renders this memorandum opinion and order to construe the claims of U.S. Patent Nos. 6,542,076 (the `076 Patent), 6,549,130 (the `130 Patent), 7,397,363 (the `363 Patent), 7,277,010 (the `010 Patent), 6,587,046 (the `046 Patent), and 6,542,077 (the `077 Patent) (collectively "patentsin-suit"). Joao asserts that Protect America infringes various claims of the six patents-in-suit. The patents-in-suit generally relate to "systems for remotely controlling and/or monitoring devices such as appliances or other equipment at a premises." Collectively, the patents contain 906 claims and consist of more than 500 pages.
Determining infringement is a two-step process. See Markman, 52 F.3d at 976 ("[There are] two elements of a simple patent case, construing the patent and determining whether infringement occurred. . . ."). First, the meaning and scope of the relevant claims must be ascertained. Id. Second, the properly construed claims must be compared to the accused device. Id. Step one, claim construction, is the current issue before the court.
The court construes patent claims without the aid of a jury. See Markman 52 F.3d at 979. The "words of a claim `are generally given their ordinary and customary meaning.' Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). 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. Id. at 1313. The person of ordinary skill in the art is deemed to have read the claim term in the context of the entire patent. Id. Therefore, to ascertain the meaning of a claim, a court must look to the claim, the specification, and the patent's prosecution history. Id. at 1314-17; Markman, 52 F.3d at 979. Claim language guides the court's construction of a claim term. Phillips, 415 F.3d at 1314. "[T]he context in which a term is used in the asserted claim can be highly instructive." Id. Other claims, asserted and unasserted, can provide additional instruction because "terms are normally used consistently throughout the patent." Id. Differences among claims, such as additional limitations in dependent claims, can provide further guidance. Id. Claims must also be read "in view of the specification, of which they are a part." Markman, 52 F.3d at 979. The 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." Teleflex. Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002) (internal citations omitted). In the specification, a patentee may define a term to have a meaning that differs from the meaning that the term would otherwise possess. Phillips, 415 F.3d at 1316. In such a case, the patentee's lexicography governs. Id. The specification may also reveal a patentee's intent to disclaim or disavow claim scope. Id. Such intention is dispositive of claim construction. Id. Although the specification may indicate that a certain embodiment is preferred, a particular embodiment appearing in the specification will not be read into the claim when the claim language is broader than the embodiment. Electro Med. Sys., S.A. v. Cooper Life Scis., Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994).
The prosecution history is another tool to supply the proper context for claim construction because it demonstrates how the inventor understood the invention. Phillips, 415 F.3d at 1317. A patentee may also serve as his own lexicographer and define a disputed term in prosecuting a patent. Home Diagnostics Inc. v. LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004). Similarly, distinguishing the claimed invention over the prior art during prosecution indicates what a claim does not cover. Spectrum Int'l v. Sterilite Corp., 164 F.3d 1372, 1378-79 (Fed. Cir. 1988). The doctrine of prosecution disclaimer precludes a patentee from recapturing a specific meaning that was previously disclaimed during prosecution. Omega Eng'g Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). A disclaimer of claim scope must be clear and unambiguous. Middleton Inc. v. 3M Co., 311 F.3d 1384, 1388 (Fed. Cir. 2002).
Although, "less significant than the intrinsic record in determining the legally operative meaning of claim language," the court may rely on extrinsic evidence to "shed useful light on the relevant art." Phillips, 415 F.3d at 1317 (quotation omitted). Technical dictionaries and treatises may help the court understand the underlying technology and the manner in which one skilled in the art might use a claim term, but such sources may also provide overly broad definitions or may not be indicative of how a term is used in the patent. Id. at 1318. Similarly, expert testimony may aid the court in determining the particular meaning of a term in the pertinent field, but "conclusory, unsupported assertions by experts as to the definition of a claim term are not useful." Id. Generally, extrinsic evidence is "less reliable than the patent and its prosecution history in determining how to read claim terms." Id. Extrinsic evidence may be useful when considered in the context of the intrinsic evidence, Id. at 1319, but it cannot "alter a claim construction dictated by a proper analysis of the intrinsic evidence," On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133, 1139 (Fed. Cir. 2004).
In their amended joint-claim-construction statement, the parties present two terms with agreed constructions. Further, at the claim-construction hearing, Joao conceded that two of Protect America's constructions were technically correct and Joao would not object if the court adopted the constructions. The court hereby adopts the agreed construction of the claim term listed in the table below.
The parties dispute the construction of 12 terms. The following table summarizes the parties' proposed constructions of the disputed terms.
Joao argues that this phrase means "the act of stealing from the premises," whereas Protect America argues that the phrase is indefinite under Nautilus, Inc. v. Biosig Instruments, Inc. 134 S.Ct. 2120, 2124 (2014) ("[A] patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention."). The court rejects both arguments and finds the construction of this phrase facile in light of the clear claim language and the parties' agreed construction of the term "premises."
The parties agree that, in the context of the patents-in-suit, the things that may be called a "premises" include, inter alia, a "mobile home, mobile building, mobile structure . . . equipment ... machine, [or] rig." All of these items are things of which a theft may occur. The patentee is very specific in his repeated use of the turn of phrase "of the premises" in the claims. Contrary to the meaning argued by Joao, the patentee did not use the words "from the premises," "an item from the premises," or "burglary of the premises." Further, the specification does not support a construction of this term in a way other than the plain-and-ordinary English meaning of the words as they would be understood by any English speaker, much less one of skill in the art. The parties agree that premises may include things of which a theft may occur; therefore the court concludes that the term is to be given its
Protect America argues that this disputed term should be construed as a means-plus-function term, and that the claims in which the term appears are indefinite for a lack of corresponding structure in the specification. Joao argues that the term is not appropriately construed as a meansplus-function term and instead should be defined with two separate definitions: one for "a system for detecting a failure" and one for "in the at least one of . . . ."
The "means-plus-function" technique of claim drafting is a "convenience" for patentees that allows the expression of claim limitations in functional terms "without requiring the patentee to recite in the claims all possible structures" that could be used as a means in the invention. Medical Instrumentation & Diags. Corp. v. Elekta AB, 344 F.3d 1205, 1211 (Fed. Cir.2003); see also 35 U.S.C. § 112(f).
In determining whether means-plus-function construction applies, the Federal Circuit "has long recognized the importance of the presence or absence of the word `means.' Williamson v. Citrix Online, LLC, ___ F.3d ___, No. 2013-1130, 2015 WL 3687459, *6 (Fed. Cir. June 16, 2015). Where, as here, the disputed claim terms do not include the word "means," there is a rebuttable presumption that means-plus-function construction does not apply.
The court examines the entire claim phrase in examining the structure at issue. The claim recites an apparatus wherein the at least one of a number of different types of previously enumerated systems or equipment "is a system for detecting a failure in the at least one of
Having determined that a means-plus-function construction is appropriate, the court must perform two steps in construing the claim: "First, the court must determine the claimed function. Second, the court must identify the corresponding structure in the written description of the patent that performs the function." Noah Sys., 675 F.3d at 1311. "Structure disclosed in the specification qualifies as a `corresponding structure' if the intrinsic evidence clearly links or associates that structure to the function recited in the claim." Williamson, 2015 WL 3687459, at *10.
Here, the function of the claim is clear from the claim language. The recited function is: "detecting a failure in the at least one of a premises system, a premises equipment system, a premises component, a premises device, a premises equipment, and a premises appliance, wherein the detecting system provides information regarding the failure." The true issue before the court with regard to this term is whether the specification discloses corresponding structure that performs the claimed function.
The court, after a thorough examination of the specification and consideration of the parties' experts' conflicting declarations, concludes that it does not. The specification discusses no structure that is capable of detecting a failure or performing the function of detecting a failure; the only time detecting a failure is discussed, the language of the specification mirrors the language used to claim the function. No structural component is taught or implied. The court finds a complete lack of any structural component associated with the claimed function and determines that a person of skill in the art would not comprehend—with reasonable certainty—the specification to support the claimed function with corresponding structure. Nautilus, 134 S.Ct. at 2124.
Due to this complete lack of structural support in the specification, the court concludes that the term "a system for detecting a failure in the at least one of . . ." is
Joao argues that this pair of terms should be given its plain and ordinary meaning; however, Joao also provides the court with a proposed definition of what it believes that ordinary meaning to be. Protect America contends that its definition, with language taken directly from the patents' specification, is the proper definition.
The court first looks to the disputed claim language itself. The three dependent claims where the disputed terms appear describe either a system or apparatus, each of which "perform[s] a systematic check of at least one of a status and a state of the at least one of a premises system, a premises device, a premises equipment, a premises equipment system, and a premises appliance." Although the phraseology could be more precise, the meaning is readily understood with minimal parsing. The "systematic check" is performed on all of the components of the system or apparatus, such components to include a premises system, a premises device, a premises equipment, a premises equipment system, and a premises device. All components are included because of the use of "the" in the "the at least one of" clause in the claim. If the clause had read simply "at least one of," the meaning would not have required all of the components to be checked. As is, however, "the at least one" implies that there will be at least one, and possibly many, components and they all are checked. The "systematic check" checks a status or a state—or both—of the components listed.
This interpretation is bolstered by the specifications' sole reference to a "systematic check:"
`076 Patent 58:48-55 (emphasis added). This passage confirms that the "systematic check" is performed on any and all of the system components that are part of the system or apparatus.
The court concludes that the term "performing a systematic check of at least one of a status and a state of the at least one of a premises system, a premises device, a premises equipment, a premises equipment system, and a premises appliance" is construed to mean
The parties briefed and argued these three terms together, as they appear together in the patent claims. Protect America asserts that the "agent" terms are indefinite in light of the patents' specification and the lack of a fixed meaning of these terms in the art at the time of invention. Joao counters that the patentee incorporated by reference two books that provide clear definitions of the agent terms, and which would have been known and understood by a person of ordinary skill in the art at the time of the invention.
An external book or publication that is incorporated by reference into a patent becomes part of the intrinsic record. Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308, 1323 (Fed. Cir. 2010) (citing Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1329 (Fed.Cir.2001) ("When a document is `incorporated by reference' into a host document, such as a patent, the referenced document becomes effectively part of the host document as if it were explicitly contained therein.")). Although Joao's proposed definitions appear to be derived primarily from one of the two incorporated references, the strength of those definitions are directly contradicted by additional statements contained in both of the references. The court concludes, after a review of the two incorporated references, that there was no single agreed-upon definition of the "agent" terms which a skilled artisan would have understood—with reasonable certainty—based on the terms' use in the claim language alone. Furthermore, the court concludes that the specification to which the artisan would turn to resolve any ambiguities in the terms' definition provides no additional guidance to discern the exact contours of the "agent" terms with any degree of reasonable certainty. Nautilus, 134 S.Ct. at 2124.
For these reasons, the court concludes that the terms "intelligent agent," "software agent," and "mobile agent" are
Joao argues that the court should not construe this term because it was not timely disclosed by Protect America. However, Joao provides no explanation of how construing this term would prejudice Joao, particularly in light of the fact that the term was disclosed nearly two months before the parties' opening claim-construction briefs were due. In addition, Joao briefed the term and presented argument on the term at the claim-construction hearing. The court OVERRULES Joao's objection to the inclusion of this term in the court's construction.
The court does, however, agree with Joao that this term is not indefinite. The words "associated with" are a common English phrase with a clear meaning and connotation, and the fact that the phrase is used in a patent claim does not somehow render the words ambiguous. A skilled artisan reading the claims would certainly be able to ascertain, with reasonable certainty, the contours of each of the claims where "associated with" is used. Moreover, contrary to its arguments, Protect America cannot sincerely contend that "associated with" is ambiguous to the point of indefiniteness in light of the parties' agreed definition of "premises," a construction that contains the phrase "parcel of land associated with the building" (emphasis added).
The court concludes that the term "associated with" is to be given its
The parties spend the bulk of their briefing, as well as the bulk of their argument in the claimconstruction hearing, on the above-listed collection of various "device" terms.
Joao primarily argues that Protect America's approach to construction is incorrect. Joao contends that the terms should be construed identically across the patents, that the terms do not require means-plus-function constructions, and that the claim language surrounding the occurrence of each of the terms clearly provides structure and meaning. Joao additionally argues, in a somewhat obtuse fashion, that the patentee acted as his own lexicographer in defining certain of these terms through unsolicited "remarks" sent to the United States Patent and Trademark Office ("PTO") during the prosecution of the `010 Patent, and that these "constructions" carry the day. Joao has argued this point in other litigations on the same or related patents. See e.g. Joao Control & Monitoring Sys., LLC v. Digital Playground, Inc., No. 12-cv-6781, Dkt. No. 119 (S.D.N.Y. Aug. 6, 2015). Here, however, the court need not address Joao's lexicography arguments because the court's conclusions regarding these terms is based upon an examination and analysis of the claim language itself, as well as the specification that supports the various claims. The patentee's communications with the PTO, though arguably part of the intrinsic record for certain of the patents-in-suit and part of the extrinsic record on others, see id., do not substantively change the court's analysis in construing this set of claim terms in the context of the patents currently before the court.
The court, after undertaking a thorough examination of each of the asserted claims in which the disputed device terms appear, concludes that, although the claims do not use the term "means for," each of the claims where the device terms appear employs purely functional claiming without reciting sufficient structure in the claims to perform the function described.
The court further agrees with Protect America that the specification supporting the claims does not contain a sufficiently definite disclosure of structure to inform with reasonable certainty a person of skill in the art exactly which structure is capable of performing each function. Nautilus, 134 S.Ct. at 2124. Each claim is reasonably clear, due to the functional nature of the patentee's claim language, as to what comprises the unique function of each of the means-plus-function claims. However, the specification's disclosure of supporting structure is extremely broad and generic. Despite a through examination of the specification, the court finds no clear description or disclosure of structure that serves to "pay the price" of employing the sort of functional claiming allowed under Section 112, paragraph 6. Med. Instrumentation, 344 F.3d at 1211. The competing declarations of the parties' experts—declarations that predictably reach opposite conclusions—further serve to highlight that a person of skill in the art could not determine with reasonable certainty the bounds of any disclosed structure which performs each of the function claimed. The lack of sufficient structural detail found in the patents-in-suit's specifications is fatal to Joao's claim-construction position. The court concludes that the device terms are indefinite because of inadequate disclosure of structure to support the functions claimed.
The court therefore concludes that the terms "control device" (first, second, third), "processing device" (first, second, third), "a communication device", "a video recording device," and "a monitoring device," as used in the disputed asserted claims, are indefinite.
For the above reasons, the court construes the disputed claims as noted and so ORDERS. No further claim terms require construction.
