MARK S. DAVIS, District Judge.
This matter is before the Court following a Mark-man hearing, conducted for the purpose of construing nine disputed claim terms in the patents-in-suit. After careful consideration of the briefs submitted by the parties and the arguments advanced at the Markman hearing, the Court issues the following Opinion and Order detailing the claim constructions in this case.
At issue in this case are six patents: U.S. Patent No. 7,899,492 ("the '492 patent"), U.S. Patent No. 8,050,711 ("the '711 patent"), U.S. Patent No. 8,145,268 ("the '268 patent"), U.S. Patent No. 8,224,381 ("the '381 patent"), U.S. Patent No. 7,957,733 ("the '733 patent"), and U.S. Patent No. 8,135,398 ("the '398 patent"). All of the patents-in-suit claim priority to the '492 patent, which itself claimed priority to provisional application number 60/588,359, filed on July 16, 2004. The '711, '268, and '381 patents are continuations of the '492 patent and all four share a substantively identical specification ("the '492 specification"). The '733 and '398 patents are continuations-in-part of the '492 patent; these two patents share a substantively identical specification, which includes all of the '492 specification, along with additional material ("the '733 specification"). Each of the patents-in-suit describes inventions intended to resolve the inconvenience and impracticability of viewing multimedia content on the small screens of mobile terminals.
The '492, '711, '268, and '381 patents (collectively, "the '492 patent family") are each titled "Methods, Systems and Apparatus for Displaying Multimedia Information from Wireless Communication Networks." Their shared specification and respective claims are directed toward methods, systems, apparatuses, and computer-readable mediums that can be utilized to convert multimedia signals appropriate for displaying content on a mobile terminal so as to render such content appropriate for display on an alternative display terminal.
Figures 2 and 3 of the '492 specification provide two block diagrams of the MTSCM. Figure 2 "illustrates one modular breakdown for the components of the MTSCM." Id. at 4:55-56. "The MTSCM includes a mobile terminal interface module, a signal conversion module, and an external device interface." Id. at 5:9-11. "The mobile terminal interface module accommodates receiving the multimedia signal from the mobile terminal." Id. at 5:12-13. "The signal conversion module is in communication with the mobile terminal interface module and thus accesses the received multimedia signal. The signal conversion module recognizes the multimedia signal format, and processes the multimedia signal to provide a converted signal." Id. at 5:22-27. Finally, "[t]he external device interface is in communication with the signal conversion module and thus accesses the converted signal. The external device interface also allows connection to the external (e.g., display) device... [and] may provide both the feeding of the converted signal to the external device, and driving the external device." Id. at 5:34-40.
Figure 3 is another block diagram illustrating an example of the MTSCM that "includes additional detail regarding the signal conversion aspect, and illustrates examples of differing types of external devices to which the MTSCM may provide converted signals." Id. at 5:44-48. The MTSCM depicted "includes an interface/buffer module that is analogous to the previously described mobile terminal interface module" and in which "[t]he buffer and interfacing are configured to accommodate signal processing by the remaining elements." Id. at 5:57-60. The MTSCM also includes a video compress decoder that "receives the multimedia signal" and "accommodates decompression of the received multimedia signal" through a "compression/decompression (CO-DEC) module." Id. at 6:6-14. The video compress decoder "outputs a decompressed digital multimedia signal that is passed to the Digital Analog Video Encoder (DAVE) and/or the Digital/Digital Video Encoder (DDVE). The DAVE is configured to prepare signals for analog external display terminals, and the DDVE is configured to prepare signals for digital external display terminals." Id. at 6:26-32. Both the DAVE and DDVE "receive the decompressed multimedia signal and convert the signals to the format(s) and signal power level(s) required for the terminals to which they interface." Id. 6:32-36.
Although described as a "module," the MTSCM "may [also] be provided as software, firmware, hardware, or any combination thereof." Id. at 4:45-47. And, "the described functionality may alternatively be provided by an MTSCM having fewer, greater, or differently named modules from those illustrated in the figures." Id. at 4:57-60. Furthermore, although all components are shown to reside in a common location, they "may be separated such that portions of the overall functionality are respectively provided by the mobile terminal, separate intermediate housing, and/or the external display device." Id. at 4:61-67 & 5:1-3. Finally, "the MTSCM may be independently housed separately from both the mobile terminal and external
The '733 and '398 patents (collectively "the '733 patent family") are both entitled "Methods and Apparatus for Multimedia Communications with Different User Terminals." Their shared specification and respective claims are directed toward methods, systems, apparatuses, computer programs, and computer-readable mediums for providing "multimedia content to and from various different devices" through the conversion and sending or routing of such content. E.g., '733 patent 1:47-49.
The '733 specification describes several different systems including an Internet content delivery system where the "[p]rovision of Internet content is customized according to location", id. at 5:39-9:13, a "systematical solution for mobile payment," id. at 9:14-11:27, a system for "wireless management of tasks and corresponding alerts" for tasks such as "diaper management" or "home security monitoring," id. at 11:28-14:42, and a "system with mobile terminal signal conversion," id. at 14:43-19:57. For the "mobile terminal signal conversion" embodiments, the '733 family specification repeats the description and figures of the MTSCM from the '492 family specification.
The '733 specification also describes a "control system for multimedia communications between different terminals" designed to implement the '733 patent family's various applications. Id. at 19:58-60. The control system "receives, selects, converts, compresses, decompresses, and rout[e]s data" from one user terminal to another. Id. 20:17-19. The control system described provides both "a routing function and a connecting function, and functions bi-directionally," in that it "provides for the transmission and receipt of content and converts such content in both directions depending upon the connected devices and corresponding protocols used by such devices." Id. at 19:61-67. This "Management Center (MC) System" is depicted in Figure 16 of the '733 specification.
Content received by the MC System is routed to various user terminals using a "data package that identifies the destination device." Id. at 21:15-17. The destination device can be identified by a "unique device identifier" in the data package, or "by referencing portions of the received data package according to a predefined protocol." Id. at 21:18-27. For example, "if the data package contains the identifier DI
In addition to the MC System, Figure 16 depicts a Centralized HUB System ("CHS") that "communicates with the MC
The '733 specification also describes "a process for directing a television to display content using signals received from a remote location through a cellular communications network." Id. at 25:63-65. In this process, the MC System, the destination television, or a set-top box connected to the television is "equipped with processing capability for carrying out the signal conversion requirements, as described in detail... regarding the MTSCM" disclosed in the '492 specification and again in the '733 specification. Id. at 26:6-9. The television or the set-top box is also "equipped to receive the signals wirelessly from a cellular base station and provide the corresponding conversion and direction to display the content on a given channel." Id, at 25:67-26:3. "The process initiates upon receipt of video content through a cellular communications channel." Id. at 26:22-23. "[T]he content as sent ... [is] formatted as required.... The `MTSCM functionality converts such signals from the cellular network and related format to the format used by the television (e.g., SD or HD standards)." Id. at 26:28-32. "Finally, the television is directed to display the converted content on a predetermined channel," such as "a tunable channel that is otherwise unused for other forms of content." Id. at 26:41-44.
In the instant patent infringement action, plaintiff Virginia Innovation Sciences, Inc. ("VIS") alleges that defendants Samsung Electronics Co., LTD, Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively "Samsung") have directly, indirectly, and willfully infringed the patents-in-suit by making, using, offering for sale, selling, and/or importing a wide range of accused products, including smartphones, tablets, Blue-ray players, and hubs. Samsung denies any infringement, either literal or under the doctrine of equivalents, and asserts several affirmative defenses, including invalidity of all patents-in-suit, prosecution history estoppel, and other equitable doctrines. Additionally, Samsung alleges counterclaims seeking declarations of non-infringement and invalidity for each of the patents-in-suit.
The Court held its Markman hearing in this matter on June 11, 2013 at which it heard argument concerning the disputed claim terms reviewed below. Since this hearing, there have been numerous filings in this matter and several motions remain pending before the Court, in various
In Markman v. Westview Instruments, the United States Supreme Court succinctly explained the basis for, and importance of, claim construction:
Markman v. Westview Instruments, 517 U.S. 370, 373-74, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996).
It is well-settled that a determination of infringement requires a two-step analysis: "First, the court determines the scope and meaning of the patent claims asserted" and second, "the properly construed claims are compared to the allegedly infringing device." Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed.Cir.
Focusing on the first step of the infringement analysis, the Federal Circuit has repeatedly stated that "the words of a claim `are generally given their ordinary and customary meaning,'" and that "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." Phillips, 415 F.3d at 1312-13 (quoting Vitronics, 90 F.3d at 1582). This provides "an objective baseline from which to begin claim interpretation" and is based upon "the well-settled understanding that inventors are typically persons skilled in the field of the invention and that patents are addressed to and intended to be read by others of skill in the pertinent art." Id. at 1313. As noted by the Federal Circuit:
Id. (quoting Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir.1998)). However, "`[i]n some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words.'" Acumed LLC v. Stryker Corp., 483 F.3d 800, 805 (Fed.Cir.2007) (quoting Phillips, 415 F.3d at 1314). Finally, when construing claim terms and phrases, the Court cannot add or subtract words from the claims or appeal to "abstract policy considerations" to broaden or narrow their scope. Smith-Kline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1339-40 (Fed.Cir.2005); see Quantum Corp. v. Rodime, PLC, 65 F.3d 1577, 1584 (Fed.Cir.1995) ("[I]t is well settled that no matter how great the temptations of fairness or policy making, courts do not redraft claims.").
In determining the meaning of disputed terms or phrases, the Court must first examine the claims themselves. See Phillips, 415 F.3d at 1312 (quoting Innova/Pure Water, 381 F.3d at 1115); see also Vitronics, 90 F.3d at 1582 ("[W]e look to the words of the claims themselves ... to define the scope of the patented invention."). Indeed the Federal Circuit has stated that "the claims themselves," both
The claims, however, "do not stand alone" and "`must be read in view of the specification, of which they are a part.'" Id. at 1315 (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir.1995) (en banc)); see also Vitronics, 90 F.3d at 1582 ("[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."); Multiform Desiccants, 133 F.3d at 1478 ("The best source for understanding a technical term is the specification from which it arose, informed, as needed, by the prosecution history."). The specification, as required by statute, describes the manner and process of making and using the patented invention, and "[t]hus claims must be construed so as to be consistent with the specification...." Merck & Co. v. Teva Pharms. USA, Inc., 347 F.3d 1367, 1371 (Fed.Cir.2003); see 35 U.S. § 112 (establishing the requirement that the specification describe the invention in "full, clear, concise, and exact terms..."). The Federal Circuit and Supreme Court have thus long emphasized the specification's important role in claim construction, noting that, usually, the specification "is dispositive," as it is "the single best guide to the meaning of the disputed term." Phillips, 415 F.3d at 1315 (quoting Vitronics, 90 F.3d at 1582); see Markman, 517 U.S. at 389, 116 S.Ct. 1384 (referencing the "standard construction rule that a term can be defined only in a way that comports with the instrument as a whole"); Multiform Desiccants, 133 F.3d at 1478.
In addition to the claims and specification, the Court should consider the prosecution history, which consists of the complete record of the proceedings before the United States Patent and Trademark Office ("PTO"), including the prior art cited during the examination of the patent and any subsequent reexaminations. Phillips, 415 F.3d at 1317. The prosecution history "provides evidence of how the PTO and the inventor understood the patent" and "can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Id. (citing Vitronics, 90 F.3d at 1582-83); see Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed.Cir.2005) (indicating that the purpose of consulting the prosecution history as part of claim construction is to exclude any disclaimed interpretation). "At the same time, because prosecution history represents an ongoing negotiation between the PTO and the inventor, `it often lacks the clarity of the specification and thus is less useful for claim construction purposes.'" Trading Technologies Int'l, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1352 (Fed.Cir.2010) (quoting Netcraft Corp. v. eBay, Inc., 549 F.3d 1394, 1401 (Fed.Cir.2008)).
The Court may also examine extrinsic evidence, which includes "all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Markman, 52 F.3d at 980. Expert testimony can be useful:
Phillips, 415 F.3d at 1318; see also Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1308-09 (Fed.Cir.1999). Technical dictionaries may also provide the Court with a better understanding of the underlying technology and the way in which one of skill in the art might use the claim terms. Phillips, 415 F.3d at 1318; see also Vitronics, 90 F.3d at 1584 n. 6. General usage dictionaries may also be consulted, as they are at times "useful to assist in understanding the commonly understood meaning of words." Phillips, 415 F.3d at 1322. Specifically, "[a] dictionary definition has the value of being an unbiased source `accessible to the public in advance of litigation.'" Id. (quoting Vitronics, 90 F.3d at 1585).
With the foregoing principles in mind, the Court will now examine the patents and the disputed claim terms.
In advance of the Markman hearing conducted by this Court, the parties submitted a joint claim construction and prehearing statement that included three (3) agreed upon claim terms and nine (9) disputed claim terms. The Court adopts the parties' stipulated constructions of the agreed upon terms
VIS's construction of this term is derived from a portion of the '492 specification, repeated in the '733 specification, that attempts to define the disputed term. Samsung proposes a more limited construction, based on the embodiments listed in the specifications, that requires that all "mobile terminals" be "cellular-equipped," or capable of receiving communications from a cellular communications network. At the Markman hearing, the parties agreed that a proper construction of this disputed term would include the descriptors "device" and "portable." They disagreed as to what further limitations, if any, were appropriate based on the intrinsic and extrinsic evidence. Before considering this question, the Court first addresses the argument that the patentee's attempted definition of this term should control.
Patent law allows a patentee to be a lexicographer, meaning that he may "use terms in a manner other than their ordinary meaning." Vitronics, 90 F.3d at 1582. However, "[t]o act as its own lexicographer, a patentee must `clearly set forth a definition of the disputed claim term' other than its plain and ordinary meaning." Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed.Cir.2012) (quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.Cir.2002)). Any special meaning must appear with "reasonable clarity, deliberateness, and precision" in the specification or prosecution history. Abbott Labs. v. Syntron Bioresearch, Inc., 334 F.3d 1343, 1354 (Fed.Cir.2003) (emphasis omitted) (quoting In re Paulsen, 30 F.3d 1475, 1480 (Fed.Cir.1994)). "And `[w]here the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside... the patent,' even if the terms might otherwise be broad enough to cover that feature." Medtronic Inc. v. Boston Scientific Corp., 695 F.3d 1266, 1275 (Fed.Cir. 2012) (quoting Thorner, 669 F.3d at 1366).
The '492 specification and the '733 specification both provide that:
Because the patentee failed to clearly and precisely define this claim term in the specifications, the Court gives the term its ordinary and customary meaning. See Elekta Instrument S.A. v. O.U.R. Scientific Intern., Inc., 214 F.3d 1302, 1307 (Fed. Cir.2000) (requiring a patentee acting as his own lexicographer to evince "express intent to impart a novel meaning" and to "clearly redefine [the] claim term" and noting that, when these requirements are not met, "claim terms take on their ordinary meaning").
The parties have agreed that a "mobile terminal" is a "portable device." See Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed.Cir.1999) (noting that the court need only construe claims in controversy "to the extent necessary to resolve the controversy"). However, they disagree as to what further limitations should be included in the construction of this claim term. Their main dispute is whether the term is limited to cellular-equipped devices.
Reviewing the claims and specifications, the Court finds little counseling for or against Samsung's proposed limitation. The claims describe the mobile terminal receiving "video signals" from both "cellular communications network[s]" and "wireless network communication[s]." See, e.g., '492 patent, 8:30-33; '268 patent, 8:32-35. The specifications further provide that these networks "include but are not limited to a cellular communications network or a wireless local area network." E.g., '492 patent, 3:39-41. The fact that a mobile terminal may receive multimedia content from various networks does not indicate whether it must have the capacity to receive such content from a specific type of network. It is likewise not clear from the claims and specifications, as VIS contends, that limiting this claim term to "portable cellular-equipped devices" would exclude preferred embodiments. Pl.'s Opening Claim Construction Br. 8, ECF No. 64 (citing SynQor, Inc. v. Artesyn Tech., Inc., 709 F.3d 1365, at 1378-79 (Fed.Cir.2013)).
Samsung argues that its proposed limitation is supported by the '492 patent's prosecution history, in which the patentee allegedly distinguished "mobile terminals" from prior art on the basis that the prior art disclosed devices that were "not configured to receive the claimed video signal in a cellular network communication," that is, that such devices were not cellular-equipped. Defs.' Opening Claim Construction Br. ("Defs.' Opening Br.") Ex. L at VIS-001367, ECF No. 65. The prosecution history can inform the meaning of claim language if it demonstrates "how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Phillips, 415 F.3d at 1317 (citing Vitronics, 90 F.3d at 1582-83). To limit the meaning of a claim term, however, the patentee must make "a clear and unmistakable disavowal of scope during
Here, Samsung argues that VIS limited this claim term to cellular-equipped devices during the prosecution of the '492 patent, in which the patentee distinguished "mobile terminals" from prior art — U.S. Pub. No. 2004/0177376 to Caspi et al. ("Caspi") — that disclosed "a search system for controlling a digital personal video stream manager, or DPVSM." Defs.' Opening Br. Ex. L at VIS-001366, ECF No. 65. The DPVSM "receive[d] content through the home network subsystem, via a LAN connection, so that it [could] receive and display digital content ... received by and made available through the home network subsystem," which Caspi disclosed could be "controlled by a personal computer." Id.
During the '492 patent prosecution, the patentee first distinguished the personal computer disclosed in Caspi on the basis that it was "not configured to receive the claimed video signal in a cellular network communication that is sent to the mobile terminal." Id. at VIS-001366. Although this initial distinction appears to be grounded in the device's ability to receive content from a cellular network communication, the references that follow make clear that the patentee distinguished Caspi on both the absence of a mobile terminal and the type of communications network involved. Specifically, the patentee emphasized that the computer disclosed in Caspi received content through "a conventional home broadband network environment," implemented by "conventional Local Area Network communications ... (whether wireless or wired)" and that such method of receipt "is clearly no example of a mobile terminal receiving a video signal in a cellular network communication." Id. at VIS-001367 (emphasis in original). The patentee concluded: "Caspi thus discloses neither the mobile terminal nor the type of mobile terminal communications claimed." Id. (emphases added); see also id. at VIS-001368 ("[S]ince Caspi does not disclose a mobile terminal, or receiving video signal from the claimed cellular network communication, it cannot possibly disclose [the claimed] conversion [process]." (emphasis added)).
Viewing Samsung's proposed limitation in light of all of the patentee's statements during the '492 patent prosecution, the Court concludes that the patentee did not make "a clear and unmistakable disavowal" of all devices lacking the ability to receive communications from a cellular communications network. Purdue Pharma, 438 F.3d at 1136. Rather, as VIS contends, the patentee distinguished Caspi on the basis that it did not disclose a mobile terminal and on the basis that the computer disclosed in Caspi was "not configured to receive the claimed video signal in a cellular network communication that is sent to the mobile terminal." Pl.'s Resp. Claim Construction Br. ("Pl.'s Resp. Markman Br.") 17, ECF No. 69 (quoting Defs.' Opening Br. Ex. L at VIS-001366, ECF No. 65).
Therefore, the intrinsic record does not support Samsung's proposed limitation of this claim term to "cellular-equipped" devices. The Court has considered Samsung's proffered technical dictionary definitions for "mobile phone," incorporating the definition for "cellular communications," and "cellular mobile radio telephone." Defs.' Opening Br. Exs. M & N, ECF No. 65. However, the Court does not find such extrinsic evidence particularly instructive to its analysis, especially when the intrinsic record fails to disclose
For the above reasons, the Court concludes that the claim term, "mobile terminal," is not limited to cellular-equipped devices. However, the Court agrees with the parties that some further description or limitation of this claim term — beyond the agreed — to "portable device" — is necessary. Although the Court has determined that the patentee's attempted definition of this claim term lacks sufficient clarity and precision, the Court considers the characteristics set forth in that definition when determining the term's plain and ordinary meaning. See Aventis Pharms. Inc. v. Amino Chem. Ltd., 715 F.3d 1363, 1373 (Fed.Cir.2013) ("The specification provides the `best source' for construing a claim term and determining the inventor's intent regarding use." (quoting Multiform Desiccants, 133 F.3d at 1478)).
First, the patentee's attempted definition describes "typically handheld mobile devices such as cellular phones and personal digital assistants." E.g., '492 patent, 4:37-39. VIS initially proposed a construction that included the limitation "handheld." Samsung opposed this limitation as ambiguous. At the Markman hearing, the Court inquired as to the propriety of certain size limitations, drawn from the background sections of the specifications. See, e.g., '492 patent 1:47-2:6 (describing the problems associated with the "limited size (e.g., 2x3") and capability of the mobile terminal screen" and offering a solution to such "display limitations"). Neither party supported the importation of such specific size limitations. Instead, VIS proposed an alternative limitation, drawn from the patentee's attempted definition, "convenient for handheld usage." Hr'g Tr. 56-57, June 11, 2013, ECF No. 92; e.g., '492 patent, 4:43. Based on the context of this limitation, the Court agrees that the proper construction of this term includes a requirement that "mobile terminals" be "convenient for handheld usage." Specifically, by distinguishing "desktop or laptop computers" from the claimed "mobile terminals," the patentee made "clear that the invention does not include a particular feature," that is, the feature of being inconvenient for handheld usage. Medtronic, 695 F.3d at 1275 (quoting Thorner, 669 F.3d at 1366) (internal quotation marks omitted). See also '492 patent, 4:39-43. If all devices that are inconvenient for handheld usage (including laptops and desktop computers) are expressly excluded from the claim term, then the proper construction must include a limitation that the portable device be convenient for handheld usage.
Second, and in the same vein, the specifications make clear that this claim term excludes "personal computers." E.g., '492 patent, 4:39-43 ("[S]uch devices are distinguished from personal computers, such as desktop or laptop computers, which are not designed for convenient handheld usage."). When "the specification reveals `an intentional disclaimer, or disavowal, of claim scope by the inventor, `the scope of the claim, `as expressed in the specification, is regarded as dispositive.'" SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1195-96 (Fed.Cir.2013) (quoting Phillips, 415 F.3d at 1316). Although the Court may not import limitations from the specification into the claim, it "can rely on the specification `to understand what the patentee has claimed and disclaimed.'" Id. (emphasis added) (quoting SafeTCare Mfg., Inc. v. Tele-Made, Inc., 497 F.3d 1262, 1270 (Fed.Cir.2007)). Accordingly, the Court concludes that a proper construction of this claim term expressly excludes personal computers.
Here, the patentee's attempted definition includes two examples of devices that are "mobile terminals" (cellular phones and personal digital assistants) and two examples of devices that are not (desktop or laptop computers). E.g., '492 patent, 4:37-43. These embodiments do not appear to "define the outer limits" of the claim term, but instead are exemplary. Although VIS's proposed construction of the term counsels for their inclusion, VIS cites no authority for this approach. Indeed, such proposals have traditionally been rejected, based on Phillips. See, e.g., Layne Christensen Co. v. Bro-Tech Corp., No. 09-2381-JWL, 2011 WL 3022445, at *5 (D.Kan. July 22, 2011); see also Plant Equip., Inc. v. Intrado, Inc., No. 2:09-CV-395-JRG, 2012 WL 1468594, at *11 (E.D.Tex. Apr. 27, 2012). Additionally, the Court observes that the inclusion of such examples might suggest to the factfinder that there are additional unspecified device characteristics, not included in the Court's construction, relevant to the determination of whether an accused product falls within the scope of the proposed construction. See Every Penny Counts, Inc. v. Am. Express Co., 563 F.3d 1378, 1383 (Fed.Cir. 2009) (citing O2 Micro Intern. Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361-62 (Fed.Cir.2008)) (observing that it is the court's obligation "to ensure that questions of the scope of patent claims are not left to the jury"). Accordingly, the Court does not construe this claim term to include a non-exhaustive list of exemplary embodiments.
Having carefully considered the parties' proposed constructions and the arguments advanced at the Markman hearing, particularly with reference to the intrinsic record, the Court adopts the below construction of "mobile terminal."
This disputed claim term is found only in the dependent claims of the '268 and '381 patents. See, e.g., '268 patent, 8:61-62; '381 patent, 9:14-18. The parties
Samsung contends that the language of several dependent claims requires the Court to construe this claim term as a mere enclosure; specifically, that the dependent claims "wherein the conversion device resides in a housing of the alternative display terminal" preclude a construction of "housing" as a device. E.g., '268 patent, 8:61-62; '381 patent, 10:5-7. The Court does not read the claim language to require such a limited construction.
First, the claims cited by Samsung in support of their proposed construction do not disclose the proper construction of the disputed claim term. Rather, they indicate that an alternative display terminal can have a "housing" and that the conversion device (MTSCM) can reside in that "housing." See, e.g., '268 patent, 8:61-62, 9:44-46; '381 patent, 8:62-63. The relationship of this disputed term vis-a-vis other claim terms is instructive, but, alone, does not require the limited construction that Samsung proposes. Indeed, the language of the '381 patent's dependent claims, and of the specifications, indicates the "housing" is, as VIS contends, a device.
Unlike the brief descriptions of this term cited by Samsung, several dependent claims in the '381 patent describe the "housing," in detail, as an active and integral part of the claimed video signal conversion process. Specifically:
'381 patent, 9:14-18, 9:33-37, and 9:38-39 (emphases added). See also id. at 10:26-31, 10:39-43, 11:21-12:3, 12:13-17, and 12:18-19 (describing nearly identical dependent claims which depend from other independent claims). Thus, the majority of the claims that use the disputed term contemplate a device capable of receiving and transmitting video signals and, in some embodiments, processing such signals. A construction limiting the term "housing" to mean "enclosure," specifically excluding or without reference to such capabilities, is insufficient. VIS's proposed construction, "device," therefore, better conveys the meaning of the claim term.
Samsung attempts to distinguish the '381 patent's detailed descriptions of this claim term on the ground that the '268
As noted above, however, the dependent claims on which Samsung relies do not require the limited construction it proposes. Nor is Samsung's proposed limitation supported by the specifications, which, importantly, are substantively identical across the '268 and '381 patents. In describing the functionality of the MTSCM as depicted in Figure 1, the specifications observe that "[i]n the illustrated embodiment, a mobile terminal signal conversion module (MTSCM) resides within a separate housing, outside the cellular phone." E.g., '268 patent, 3:55-57. The specifications continue: "The cellular phone is connected to the MTSCM. This may be accommodated by a cable connection that interfaces the cellular phone to the MTSCM housing. Through this connection, the MTSCM receives the video signal from the cellular phone." E.g., '268 patent, 4:4-8 (emphasis added). Finally, "following the signal conversion, the MTSCM provides the converted video signal to the external display terminal," a process that "may be accommodated through a connection between the MTSCM housing and the external display terminal as shown." E.g., '268 patent, 4:33-39. Similarly, in describing Figure 2, the specifications note that "the overall functionality of the MTSCM may be separated such that portions of the overall functionality are respectively provided by the mobile terminal, separate intermediate housing, and/or the external display device." Id. at 5:2-6 (emphasis added). Thus, like the bulk of the claims including this term, the specifications contemplate a device capable of receiving and transmitting video signals and, in some embodiments, performing at least some portion of the claimed conversion process.
Based on the claims and specifications, the Court concludes that this term is properly construed to be a "device." This conclusion is not undermined by the fact that the specifications also use the term "intermediate device" in describing the claimed process. Although different words in a patent are generally assigned different meanings, any inference arising from the use of such distinct terms may be discounted if the terms "are very similar in meaning." Innova/Pure Water, 381 F.3d at 1119-20 (rejecting distinct constructions of the terms "connected" and "associated"). Here, it is clear that the specifications use the terms "housing" and "intermediate device" interchangeably.
'381 patent, 4:64-5:6 (emphases added). When terms lack discernibly different meanings, "the patentee [may have simply]
Having carefully considered the parties' proposed constructions and the arguments advanced at the Markman hearing, particularly with reference to the intrinsic record, the Court adopts the below construction of "housing."
The crux of the parties' dispute respecting this term is whether a "converted video signal" requires some change to the underlying video content. VIS maintains that this term does not require construction because, as used in the specification, the term simply requires that the video signal has changed. Samsung argues for a narrow construction requiring some change to the underlying video content, based on the prosecution history. VIS maintains that Samsung's construction is improper because it would exclude all embodiments of the claims at issue and because it is based on a misinterpretation of statements reflected in the prosecution history of the '492 patent. The Court concludes that Samsung's proposed construction is inconsistent with the plain language of all independent claims in the '492, '711, '268, and '381 patents and is not clearly required by the prosecution history and, therefore, should be rejected.
The term "converted video signal" is used in several of the '492, '711, '268, and '381 patents' independent and dependent claims. Although it is referenced twice in the corresponding specifications, the term is not further defined in either the claims or the specification. In determining the proper construction of this disputed term, the Court looks first to the claims themselves, considering not only the use of the same term across claims, but also "the context of the surrounding words." ACTV, Inc. v. Walt Disney, Co., 346 F.3d 1082, 1088 (Fed.Cir.2003); see also Phillips, 415 F.3d at 1314.
The independent claims in the '492, '711, '268, and '381 patents describe methods, systems, apparatuses, computer memories storing program code, and non-transitory computer readable mediums storing program code that contemplate the receiving, processing, and providing of video signals to accommodate the reproduction of video content by an alternative display terminal. See '492 patent, 8:26-50, 9:10-31, and 10:6-29; '711 patent, 8:26-44, 8:62-9:15, and 9:36-10:10; '268 patent, 8:29-50, 9:12-33, 10:10-29; '381 patent, 8:30-51, 9:40-61,
First, all of the '492 family independent claims expressly distinguish "video signals" from "video content." See, e.g., '492 patent, 8:26-31 (describing "[a] method comprising: receiving by a conversion module a video signal appropriate for displaying a video content on a mobile terminal). Generally, different words in a patent are construed as having different meanings, unless the intrinsic evidence reveals that the words are given very similar meanings. See Innova/Pure Water, 381 F.3d at 1119-20. Here, the plain language of the claims contemplate that the video signal supports the display of the video content, and thus that the two terms have different meanings. Nothing in the claims or specifications counsels otherwise.
Second, the plain language of the claims also indicates that the video content is not changed during the claimed signal conversion processes. Generally, if a patent repeatedly employs the same word, that word is presumed to have the same meaning. See Phillips, 415 F.3d at 1314. The claims use the same term, "video content," to describe the content displayed both before and after the claimed conversion processes. See, e.g., '492 patent, 8:26-50 (describing first the receipt of "a video signal appropriate for displaying a video content on a mobile terminal," the processing of that signal to produce a converted video signal, and the provision of the converted video signal "to the alternative display terminal to accommodate displaying the video content by the alternative display terminal"). Thus there is a presumption that the same content is displayed at both ends of the claimed processes, albeit on different display terminals.
Not only do the '492 family independent claims use the same term to describe the content displayed on both ends of the conversion process, but, when describing the display of such content after that process, the independent claims describe the content using a definite, as opposed to indefinite, article. Id. at 8:47-50 (describing the provision of the converted video signal to the alternative display terminal "to accommodate displaying the video content" (emphasis added)). Generally, the use of a definite article will not be construed to somehow implicate a new element. Edward D. Manzo, Patent Claim Construction in the Federal Circuit § 2:31 (2011) ("The introduction of a new element is accomplished through the use of an indefinite article and not through the use of a definite article.") (citing Tuna Processors v. Hawaii Int'l Seafood, 327 Fed.Appx. 204, 210 (Fed.Cir.2009) (nonprecedential)). Thus, when a claim uses a definite article in its discussion of a term, that term is construed "as referring to an element that has been established earlier in a claim." Id. Here, the '492 family independent claims use the same term, "video content," before and after the video signal is converted, introducing it first with an indefinite article (suggesting that such content is a new element) and then with a definite article (suggesting that the video content is the same content referenced earlier in the claim).
The plain language and context of the '492 family independent claims in which the term "video content" appears, reveal that the disputed term, "converted video signal" does not contemplate a change to the underlying video content. Rather, as VIS argues, the term requires only a change to the video signal identified at the beginning of the claim. See Pl.'s Opening
The '492 specification supports VIS'S proposed construction. Although this specification does not assign any special meaning to the disputed term, it does contain revealing statements as to the advantages of the claimed inventions that assist the Court in its construction. See ICU Med. v. Alaris Med., 558 F.3d 1368, 1375 (Fed.Cir.2009) (quoting Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed.Cir.2005)) (holding that it is "entirely proper to consider the functions of an invention in seeking to determine the meaning of particular claim language" and adding functional language from the specification to define the degree to which the claimed spike was required to be pointed). Indeed, "the problem the inventor was attempting to solve, as discerned from the specification and prosecution history, is a relevant consideration" when construing a disputed term. CVI/Beta Ventures, 112 F.3d 1146, 1160 (Fed.Cir. 1997) (citing Applied Materials v. Advanced Semiconductor Materials, 98 F.3d 1563, 1573 (Fed.Cir.1996)). Ordinarily, the final construction should align with the purpose of the patented invention. See, e.g., Anascape v. Nintendo, 601 F.3d 1333, 1337 (Fed.Cir.2010); Innovad Inc. v. Microsoft Corp., 260 F.3d 1326, 1332-33 (Fed.Cir.2001).
Here, the specification generally describes the evolution and functionality of handheld mobile terminals, including the capacity to support high rate multimedia data services resulting in "rich multimedia information being destined for display on the small screens typical of cellular phones (or the like)." E.g., '492 patent, 1:40-42. The written description goes on to state that "[t]he limited size (e.g., 2x3") and capability of the mobile terminal screen may render enjoyment of the high rate data flow applications inconvenient, and in some instances useless." Id. at 1:47-50. It concludes that: "What is needed is a solution to the problem of diminished user enjoyment of mobile terminals because of display limitations." Id. At 2:4-6. Thus, the patented inventions were designed to solve the problems associated with attempting to view video content on the small displays of mobile terminals. Their stated purpose is to enable users to display that same content on a large display terminal. Reading the disputed term in light of the specification's description supports the construction of "converted video signal" as "a video signal that has been changed," and counsels against including a limitation that the underlying video content is also changed.
Samsung does not contend that the claims or specification require its proposed limitation. Rather, Samsung contends that the patentee's statements during the prosecution of the '492 patent counsel against applying the plain and ordinary meaning of this disputed claim term, because the patentee allegedly disclaimed any construction that does not require a change to the underlying video content. VIS denies any disclaimer and alleges that Samsung's argument is based on an incomplete reading of the prosecution history.
The prosecution history can inform the meaning of claim language "by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Phillips, 415 F.3d at 1317. However, "[c]laim language and the specification generally carry greater weight than the prosecution history." HTC Corp. v. IP-Com GmbH & Co., KG, 667 F.3d 1270, 1276 (Fed.Cir.2012). As the Federal Circuit
During the '492 patent prosecution, the examiner rejected some of the pending claims in light of U.S. Patent 5,880,732 ("Tryding") and U.S. Publication No. 2002/0102998 ("Lin"). Tryding disclosed "a method and apparatus enabling the usage of a remote display monitor for presenting display data from a mobile telephone" through the generation of a "communications link between the mobile telephone and a receiver of a display monitor" that "enables the transmission of numerical and textual data intended to be displayed on ... the larger screen of the remote display monitor." Defs.' Opening Markman Br. Ex. E at Abstract, ECF No. 65. Lin disclosed the transmission of rich content across a mobile device and an auxiliary rendering device "so that the content can be transcoded to a format suitable for the auxiliary rendering device." Id. Ex. F at Abstract.
In distinguishing Tryding, the patentee argued that, among other things:
Id. Ex. H at VIS-001681-82 (emphases added). Samsung reads the above explanation to limit "conversion of the video signal" to conversions of the underlying content. Defs.' Opening Markman Br. 17-18, ECF No. 65. VIS argues that the statements concerning content conversion were referring to "conversion of the underlying signal content" and not the multimedia/data content. Pl.'s Resp. Markman Br. 12, ECF No. 69.
Here, the patentee's statements specifically distinguish Tryding based on its failure to disclose "converting" and "processing" signals. However, in describing the absence of such conversion or processing, the Applicant apparently refers to conversion of the display content (i.e., the "alphanumeric data" or "underlying content (video or otherwise)"). Considering the patentee's statements in full, and in light of the parties arguments at the Markman hearing, the Court concludes that they do not rise to the level of a specific disclaimer. Although the references to conversion of display content are somewhat problematic, the patentee's statements regarding Tryding are clearly concerned with distinguishing the claimed video signal conversion on the basis that Trying simply disclosed passing data through a cellular phone to an external display with only minimal processing to accommodate transmission over the established communication link. Furthermore, all of the patentee's bases for distinguishing Tryding concern the absence of a video signal conversion, while only two of those statements refer to converting the display content. Thus, the entirety of the Applicant's statements concerning Tryding do not limit video signal conversion to those conversions that also alter the underlying content.
This construction is supported by the Applicant's later summary of its position regarding Tryding:
Defs.' Opening Markman Br. Ex. J at VIS-001638-39, ECF No. 65 (bolded emphases added). Again, the Applicant emphasized Tryding's failure to disclose a converted video signal. Although these statements similarly referenced content conversion, they again, do not rise to the level of a clear disclaimer.
After distinguishing Tryding, the patentee addressed Lin, stating:
Id. Ex. H at VIS-001682-83 (bolded emphases added). Unlike Tryding, the patentee's statements regarding Lin do not refer at all to converting video content. The same is true of the patentee's later summary of its argument regarding Lin, which recites much of the above and then provides:
Id. Ex. J at VIS-001640.
Considered in full, the patentee's statements during the prosecution of the '492 patent do not clearly limit video signal conversions to conversions including a change to the underlying video content. Rather, they repeatedly describe this term as converting signals to produce display formats and power levels appropriate for
Having carefully considered the parties' arguments, the Court concludes that the plain meaning of this term is clear from its use in the claim terms themselves and the specification. Accordingly, the Court agrees with VIS that this term does not require construction. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed.Cir.1997) ("The Markman decisions do not hold that the trial judge must repeat or state every claim term in order to comply with the ruling that claim construction is for the court. Claim construction... is not an obligatory exercise in redundancy.").
VIS contends that this term does not require construction. Samsung proposes a construction that limits the term to those "multimedia content items" that, themselves, identify their intended destination device. Neither party's position requires the Court to construe the terms "multimedia content item" or "destination device." Rather, the Court need only construe "destined" to determine whether this portion of the disputed term requires that the multimedia content item uniquely identify its destination device. See Vivid Techs., 200 F.3d at 803.
The disputed term appears in several independent and dependent claims in the '733 and '398 patents. See '733 patent, 29:10-32, 29:48-58, 30:4-28, 30:29-59, 31:1-34, 31:37-67, 32:35-47, 32:60-33:24, 33:45-34:3, 34:19-32, 34:48-35:15, 35:36-36:12; and 36:13-47; '398 patent, 29:10-29, 29:61-30:16, 30:17-49, 30:50-31:18, 31:19-54, 31:55-32:10, 32:11-34, 35:46-56, 36:16-27, and 36:53-64. All such claims refer to the multimedia content item as 1) having "originated from a source located outside a home location" or "designated location," and 2) as being "destined for a destination device located within the home location," or vice-versa (originating from a source in the home or designated location and destined for a device outside the home).
The independent claims that employ the disputed term do so in reference to the first step of the claimed conversion processes and methods — the receipt of a multimedia content item. The subsequent steps in these processes and methods describe various uses for the destination device's signal format, address, and communications protocol, although not all claims
Similarly, many of the dependent claims fail to disclose the source of the information identifying the multimedia content's destination. Instead, they generally describe the use of such information. See, e.g., '733 patent, 29:40-43 ("The method of claim 4, where the destination device is recognized to be the television based upon the use of an address corresponding to the television by the mobile terminal."); id. at 32:28-31; and id. at 34:12-18. See also, id. at 34:37-40 ("The computer program product of claim 46, wherein a mapping table maps the identified destination device to an appropriate communications protocol, signal format and address.") (emphases added). Although the majority of dependent claims do not describe the source of the identifying information, some do provide for specific sources. These dependent claims state that:
The claims describing specific sources of destination device-identifying information depend from some, but not all, of the '733 and '398 patents independent claims.
Generally, dependent claims are construed to have a narrower scope than the claims from which they depend. See Phillips, 415 F.3d at 1315. "For example, the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim." Id. at 1314-15 (citing Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed.Cir. 2004)). See Dow Chem. Co. v. United States, 226 F.3d 1334, 1341-42 (Fed.Cir. 2000) (concluding that an independent claim should be given broader scope than a dependent claim to avoid rendering the dependent claim redundant).
Here, some of the dependent claims contain limitations requiring that the destination device be identified by 1) a data package received in connection with the
Turning next to the relevant specification (the '733 specification), the language therein provides that the functionality of the MC System depicted in Figure 16 "includes receipt, conversion and transmission of content in two directions. It also includes facilities for mapping and routing content to various connected devices and data storage...." E.g., '733 patent, 20:29-33. Although the '733 specification states that, in at least one embodiment, content is received and converted "in both directions depending upon the connected devices and corresponding protocols used by such devices," id. at 19:61-67, it does not assign a default method for identifying the specifically intended destination device. Rather, as do the dependent claims, the specification discusses only potential ways to identify such device. See, e.g., id. 20:16-22:49.
All of the means for identifying a destination device discussed in the '733 specification contemplate the same identification methods included in the dependent claims discussed above.
'733 patent, 22:35-42 (emphases added). This described embodiment contemplates identification of the destination device through the operation of software and/or hardware that independently provides a data package.
In sum, both the claim terms and the specification describe a number of ways to identify the destination device to which a multimedia content item will be routed. All of these methods are described in dependent claims or by examples provided in the specification. The fact that the specification describes "preferred embodiments or specific examples" should not be relied upon to limit otherwise broad claim language. Tex. Instruments, Inc. v. U.S. Intern. Trade Com'n, 805 F.2d 1558, 1563 (Fed.Cir.1986). See also, Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 540 F.3d 1337, 1345 (Fed.Cir.2008) (noting that the Federal Circuit has repeatedly held that a single embodiment in the specification is "insufficient to limit otherwise broad claim language."). There is simply nothing readily apparent in the patents, themselves, requiring that the multimedia content item contain a unique device identifier, as Samsung proposes. Indeed, doing so would appear to exclude the other methods of identification described (such as user commands and data packages derived independently from the multimedia content item via the operation of software or hardware).
Generally, the court should "not interpret claim terms in a way that excludes disclosed examples in the specification." ArcelorMittal France v. AK Steel Corp., 700 F.3d 1314, 1321 (Fed.Cir.2012) (quoting Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1305 (Fed. Cir.2007)). Samsung argues that the final construction of this disputed term need not contemplate all of the embodiments reviewed above, because such embodiments are "alternative" and not "preferred" embodiments. Defs.' Reply Markman Br. 4, ECF No. 70 (quoting TIP Sys., LLC v. Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, 1373 (Fed.Cir.2008)) ("[T]he mere fact that there is an alternative embodiment disclosed in the [asserted] patent that is not encompassed by the district court's claim construction does not outweigh the language of the claim, especially when the court's construction is supported by the intrinsic evidence."). However, the '733 specification does not, as did the specification in TIP Systems, express a preference for one embodiment over the others. Id. Rather, the '733 patent family includes only broadly drafted independent claims that do not specify how the destination device is to be identified and a variety of exemplary embodiments for accomplishing such identification in their dependent
For the above reasons, the Court rejects Samsung's proposed construction of this term. Having rejected Samsung's proposal, the Court agrees with VIS that no other construction of the instant term is necessary, as such term is comprised of easy to comprehend language with a clear meaning, and claim construction "is not an obligatory exercise in redundancy." Ethicon, 103 F.3d at 1568. Notably, "[t]he task of comprehending [claim] words is not always a difficult one," and in some cases claim construction "`involves little more than the application of the widely accepted meaning of commonly understood words.'" Acumed LLC, 483 F.3d at 805 (quoting Phillips, 415 F.3d at 1314). Because the disputed language includes commonly understood words with widely accepted meanings, made clear by the context in which the language is used, the Court finds it unnecessary to adopt a construction that differs from the plain language of the disputed term.
The parties' dispute concerning this term centers on the proper construction of "predetermined channel." Samsung argues for a construction that limits "predetermined channel" to selectable frequencies, such as traditional television channels, based on the relevant specification and the examiner's statements during the '733 patent's prosecution history. VIS contends that the term does not require construction or, alternatively, that it should be given the broad construction, "communication pathway."
As Samsung observes, the relevant specification (the '733 specification), uses the term "channel" in varying contexts. Defs.' Opening Markman Br. 10, ECF No. 65. Compare '733 patent, 20:1-9 (describing the receipt of content via a "channel" "in a fashion similar to that used for accessing traditional television channels") with id. at 25:22-29 (describing "communication channels" used to transmit data, including direct and wireless connections). Because such references could be read as giving the term "channel" a broader or narrower meaning, depending on the context, the
Before turning to the heart of the parties' dispute, the Court observes that the latter half of VIS's alternative construction provides a representative example of a communication pathway. For the reasons stated in the above analysis of VIS's similar proposal regarding the construction of "mobile terminal," the Court concludes that a construction of this disputed term including such exemplary language, which does not "define the outer limits of the claim term," is improper. Phillips, 415 F.3d at 1323; see also supra § IV(1)(d)(iii)(2). Accordingly, this aspect of VIS's proposed construction is rejected.
The term "establishing a predetermined channel" appears in nearly all of the '733 and '398 patents' independent claims.
Wherein the sending comprises:
E.g., '733 patent, 29:25-32 (emphases added). The '733 patent family claims do not further define the term "predetermined channel." Each of the '733 and '398 patents does, however, contain dependent claims that alternatively reference "predetermined channel[s]" and "predetermined tunable channel[s]." See, e.g., '733 patent, 32:32-34; '398 patent, 34:30-40. Reviewing the claim language, the Court finds little that clearly supports one party's proposed construction over the other.
Similarly, '733 specification refers to both "predetermined channel[s]" and "predetermined tunable channel[s]." Compare '733 patent, 3:21-32 (summarizing the claimed invention and describing one embodiment that "displays the video content at a predetermined tunable channel") with id. at 26:41-55 (describing an embodiment of the claimed process in which the final step comprises directing the television "to display the converted content on a predetermined channel" and providing alternative embodiments of the predetermined channel, including a "tunable channel" or a
Id. at 25:13-29. The parties disagree as to whether "channel" is used interchangeably among the terms "predetermined channel" and "communication channel." Samsung contends that the term is given a distinct meaning in each context, while VIS argues that a "tunable channel" is merely one example of the many "communication channels" disclosed in the '733 specification.
There is a presumption that "the same claim term in the same or related patents carries the same construed meaning." Omega Eng'g, 334 F.3d at 1334. However, the same claim term may be given different constructions in light of the context in which that term is used within the claims and specification. Aventis Pharms., 715 F.3d at 1374 (citing Microprocessor Enhancement Corp. v. Tex. Instruments, Inc., 520 F.3d 1367, 1375 (Fed. Cir.2008) (holding that, despite the presumption of consistent use of claim terms, there is no requirement that a claim term be construed uniformly, particularly where doing so would lead to a "nonsensical reading")). Here, the specification discusses "tunable channels" in only exemplary terms, while describing several types of "communication channels" in relation to all of the disclosed embodiments of the claimed system depicted in Figure 16. Compare id. at 20:5-9 (disclosing one embodiment in which "channels" are used to access and view content "in a fashion similar to that used for accessing traditional television channels") with id. at 25:14-29 (summarizing the general features of the claimed system and listing several different types of "communication channels" that may be used to implement the claimed data transmission). Accordingly, the reference to "traditional television channels" on which Samsung relies is summarized in the broader discussion of "communication channels," suggesting that the term "channel" is, as VIS contends, given the same meaning across the references contained in the specification. To fully resolve this question, however, the Court considers the prosecution history related to this disputed term.
In support of its proposed limited construction of "predetermined channel[s]," Samsung relies on an email from the examiner to the patentee in which a proposed amendment was discussed with reference only to the embodiment describing the provision of content through "channels" analogous to "traditional television channels." Defs.' Opening Markman Br. Ex. A at VIS-0001197, ECF No. 65. Samsung contends that the examiner's statement weighs in favor of their limited construction of "predetermined channel" because it shows that the "claim language was intended to reflect the description of a
Generally, "unilateral statements by an examiner do not give rise to a clear disavowal of claim scope by an applicant." Salazar v. Procter & Gamble Co., 414 F.3d 1342, 1347 (Fed.Cir.2005). Although an examiner's statement "may be evidence of how one skilled in the art understood the term at the time the application was filed," id., a full review of the '733 patent's prosecution history reveals, as VIS argues, that Samsung's proposed limitation was rejected during the course of the '733 patent's prosecution. The Notice of Allowance specifically removed references to "tunable channels" when describing the operation of the "predetermined channel" in the relevant independent claims. See Defs.' Opening Markman Br. Ex. B at VIS-001843 (striking the language "directing the destination device to display the multimedia content item at a predetermined tunable channel" and replacing it with a sending process comprised of several steps involving a "predetermined channel"); id. at VIS-001845 (same); id. at VIS-001855 (same). This change, which occurred after the email exchange on which Samsung relies, reveals that any limitation of this disputed term to "tunable" channels was expressly rejected. Thus, whatever the examiner's initial recommendations, "predetermined channels" were clearly contemplated as encompassing more than "tunable channels" when the Notice of Allowability issued. In light of this clear indication of meaning, the Court concludes that the prosecution history does not support Samsung's proposed limitation. The claim language and specification do refer to "predetermined tunable channels," however such references are exemplary and must be read in context of the specification's broader discussion of the various communication channels used to implement the claimed invention and the prosecution history's clear rejection of the proposed limitation.
The removal of "tunable channel" from the language of the independent claims further informs the Court's analysis of the inclusion of that term in two of the '733 patent's dependent claims. Generally, "the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim." Phillips, 415 F.3d at 1314-15. Here, the '733 patent's prosecution history confirms what the Court is entitled to presume — that the '733 patent's independent claims describing the establishment of a "predetermined channel" are not limited, as the related dependent claims are, to "tunable channels." Absent such limitation, Samsung's proposed construction is inapposite.
Samsung's argument that the specification distinguishes between "channels" and "connections" does not convince the Court otherwise. See Defs.' Opening Markman Br. 12, ECF No. 65. The discussion on which Samsung relies in support of this distinction describes alternative embodiments for the final step of a claimed "process for directing a television to display content using signals received from a remote location through a cellular communications network." '733 patent, 25:63-66; see also id. at 26:41-55 (describing the final step of that process as, and alternatively describing the "predetermined channel" as, a "tunable channel" or "[a] given channel on a set top box" provided "through a conventional connection to the television such as HDMI, component cable, S-video or other connection"). Samsung's attempt to discern a marked distinction
Considering the intrinsic record as a whole, the Court finds that any discussion of "predetermined channels" as tunable or selectable frequencies is exemplary only. Accordingly, the Court concludes that a broader reading, based on the '733 specification's discussion of several types of "communication channels," is appropriate.
In arguing for this broader construction, VIS proposes a definition of "predetermined channel" as "communication pathway." This proposal is based on several of the '398 patent's dependent claims, which describe methods for "establishing the predetermined channel," that include "managing a communication path for ... transporting the multimedia content item to the destination device." E.g., '398 patent 32:56-64 ("[S]aid managing includes initiating the communication path, and said initiating the communication path includes engaging in an authentication procedure with the destination device prior to said transporting the multimedia content item to the destination device over the communication path."). Reviewing these dependent claims in context, the Court concludes that they employ the term "communication path" interchangeably with "channel." Although the dependent claims further limit the process by which such channels are established, those limitations do not inform the referenced "communication path[s]," which, in context, are clearly used to describe the channels established through the process described in these dependent claims.
Likewise, the specification employs the terms "pathway" and "channel" interchangeably to describe the means by which data or content is delivered across various devices. See, e.g., '733 patent, 8:49-54 ("The locally applicable content may be sent and delivered upon request by users" over various "communication pathways," such as radio or cellular networks.); id. at 10:37-42 (describing communications via "separate secure communication channel[s]," such as wireless personal area networks and wireless hubs); id. at 23:23-28 (describing communications of "consumer electronic items ... with the CHS through wireless channels such as Bluetooth, UWB, NFC, or wire line connection"). This construction is further supported by the extrinsic evidence before the Court. Specifically, the technical definitions provided by Samsung define a "channel" to include a "[s]ignal transmission or processing path dedicated to specific signal or signal component, e.g., `chrominance channel,'" Defs.' Opening Markman Br. Ex. C, ECF No. 65 (emphasis added), and "a route along which information may travel or be stored in a data-processing system or computer," id. Ex. D (emphasis added).
Having carefully considered the parties' proposed constructions and the arguments advanced at the Markman hearing, particularly with reference to the intrinsic record and the Notice of Allowability's express rejection of Samsung's proposed limitation, the Court adopts the below construction of "establishing a predetermined channel."
This disputed term appears in all of the claims cited in the above discussion of the term "establishing a predetermined channel." The parties' proposed constructions are tied to their respective views concerning the proper construction of that term and, in particular, of the "predetermined channel."
The parties agree that "a navigational command" involves the selection of the predetermined channel (however construed).
The term "navigational," however, does not occur in a vacuum. Rather, it modifies the "command to the destination device" provided for in the claim term. Claim construction should give meaning to the entire term. See, e.g., Bicon, 441 F.3d at 950 ("[C]laims are interpreted with an eye toward giving effect to all terms in the claim."). VIS's proposed construction incorporates both the command and the purpose of such command (i.e., navigating) by construing "navigational command to the destination device" as "a command to the destination device to select" the predetermined channel. Samsung's proposed construction fails to similarly incorporate both aspects of this portion of the claim term. While Samsung's proposal contemplates the need for navigation by including the phrase "upon selection," it does not appear to give any meaning to that portion of the term requiring a "command to the destination device." Instead, Samsung's construction merely specifies that the predetermined channel is selected from among a plurality of channels.
The Court construes the remaining portion of this disputed claim term, "for the predetermined channel," in accordance with the construction adopted for the preceding claim term, "establishing a predetermined channel." Accordingly, the construction given to "predetermined channel" is reflected in the construction of this term.
Having carefully considered the parties' proposed constructions and the arguments advanced at the Markman hearing, the Court adopts the below construction of "in conjunction with a navigational command to the destination device for the predetermined channel."
The parties dispute whether these claim terms are means-plus-function claims governed by 35 U.S.C. § 112(f). Because these terms are used interchangeably across the '492 patent family's nearly identical claims and because the parties advance the same arguments as to the applicability of § 112(f) to each term, the Court considers the claims together.
Pursuant to 35 U.S.C. § 112(f), a claim element can be expressed as a means for performing a specified function without reciting the structure or material that performs the claimed function. 35 U.S.C. § 112(f); accord Power Integrations, Inc. v. Fairchild Semiconductor Intern., Inc., 711 F.3d 1348, 1363-64 (Fed.Cir.2013). Whether a claim is in means-plus-function form is a question for the court during claim construction. See Inventio AG v. ThyssenKrupp Elevator Americas Corp., 649 F.3d 1350, 1356 (Fed.Cir.2011).
To determine whether § 112(f) is operative, courts generally apply two presumptions. First, it is presumed that, § 112(f) applies to claims that use the word "means" and recite performance of a function. See Rembrandt Data Techs., LP v. AOL, LLC, 641 F.3d 1331, 1340 (Fed. Cir.2011). Conversely, when a claim does not use the word "means," courts presume that the claim is not governed by § 112(f). Power Integrations, 711 F.3d at 1364; see also Phillips, 415 F.3d at 1311. Both presumptions are rebuttable by a preponderance of the evidence, however the Federal Circuit has emphasized that "the presumption flowing from the absence of the term `means' is a strong one that is not readily overcome." Lighting World v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir.2004).
Here, the disputed claim terms do not use the word "means;" rather, they use "conversion module," "conversion device," and "processing unit." However, just because a claim does not include the catch-word does not mean that § 112(f) does not apply. "If ... the claim term recites a function without reciting sufficient structure for performing that function, the presumption [against the application of § 112(f) ] falls and means-plus-function claiming applies." Power Integrations,
The mere presence of a functional expression in a claim is not sufficient to invoke § 112(f). See TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir.2008). "The proper inquiry is whether the claim limitation itself, when read in light of the specification, connotes to the ordinarily skilled artisan a sufficiently definite structure for performing the identified functions." Power Integrations, 711 F.3d at 1365 (citing Apex, Inc. v. Raritan Comp., Inc., 325 F.3d 1364, 1373 (Fed.Cir. 2003)). The Federal Circuit has held that:
Inventio AG, 649 F.3d at 1357 (emphasis added).
A review of the intrinsic record here reveals that the disputed terms, used in nearly identical contexts across the '492 patent family, are not means-plus-function claims. First, the claims Samsung cites in support of a means-plus-function construction are method claims describing a method for processing signals to accommodate reproduction by an alternative display terminal. See, e.g., '492 patent, 8:25-50. The fact that a method discloses a device used in the performance of that method without specifying the structure of that device is not surprising, given the invention being claimed (i.e., the method).
Second, the cited claims include dependent claims that suggest structure, such as location and other specified features. For example, claim 5 of the '492 patent discloses a method "wherein the conversion module resides in the alternative display terminal." '492 patent, 8:61-62. In another example, claim 10 to the '268 patent describes "[t]he method of claim 1, wherein the conversion device includes the mobile terminal and an intermediary between the mobile terminal and the alternative display terminal." '268 patent, 9:9-11. See also '492 patent, 9:42-46 (describing "[t]he system of claim 12, wherein the means for receiving the video signal, means for processing the video signal to produce the converted video signal, and means for providing the converted video signal to the display terminal reside in a conversion module within the alternative display terminal."). Thus, at least some of the related dependent claims disclose a sufficient structure to avoid means-plusfunction claiming. See Power Integrations, 711 F.3d at 1364.
Third, the patents-in-suit disclose means-plus-function claims that do not include the disputed terms. For example, claim 12 of the '492 patent is a means-plus-function claim that discloses a "system for processing signals to accommodate reproduction by an alternative display terminal comprising means for receiving a video signal[,] ... means for processing the video signal[,] ... and means for providing the converted video signal to the alternative display terminal." '492 patent, 9:10-31. Because this claim uses the word "means," there is a presumption that it is a means-plus-function claim. See Rembrandt Data Techs., 641 F.3d at 1342. Notably, the disputed terms ("conversion module," "conversion device," and "processing unit") are not disclosed anywhere in this claim. Reading the specification (which
Fourth, when determining whether the disputed terms are claimed as means-plus-function under § 112(f), the Federal Circuit has recommended that the Court consider the intrinsic and extrinsic evidence to determine whether the terms state a sufficiently definite structure. Here, the '492 patent claims include "conversion modules." Looking to the shared specification, the Court finds that it discloses and teaches the "mobile terminal signal conversion module" and describes this invention at length. The Court reads the disputed term "conversion module," to include the MTSCM taught in the specification and, accordingly, determines that this disputed term has a sufficiently definite structure to avoid means-plus-function claiming.
Having determined that "conversion module" has such sufficiently definite structure, the Court concludes that proper constructions of the other disputed terms, "conversion device" and "processing unit," include the same structure, as those terms are used in the same manner and to describe the same inventions in the '711, '268, '381 claims. When terms lack discernibly different meanings, "the patentee [may have simply] used different words to express similar concepts, even though" doing so is a "confusing drafting practice." Innova/Pure Water, 381 F.3d at 1120 (citing Bancorp Servs., LLC v. Hartford Life Ins. Co., 359 F.3d 1367, 1373 (Fed.Cir. 2004) (noting that the correspondence between a reference in a claim and one in the specification "provides substantial support" for the "contention that, as used in the patent, the terms ... are equivalent")). Here, although the claims across the patents-in-suit employ different terms to describe the module or device that accomplishes the claimed video signal conversion process, the identical contexts in which these terms are used compels the conclusion that, although grammatically distinct, the terms lack discernibly different meanings. This construction is supported, at least in part by the relevant shared specification, which, in its sole reference to "conversion device," employs the term interchangeably with the more-frequently used "conversion module." See, e.g., '492 patent, 5:4-8 ("The MTSCM may also be provided in the form of a chipset, configured for inclusion in a mobile terminal, dedicated separate signal conversion device, or external display terminal, and to provide the described mobile terminal signal conversion functionality."). Additionally, as Samsung acknowledges, the relevant prosecution histories suggest that the choice to use one term over another across the '492 patent was based primarily on the "language particulars that are preferred by the [PTO]." Defs.' Opening Markman Br. 28 & Ex. Q at VTS-002517 (noting that the term conversion module has been replaced with the term conversion device).
Considering the intrinsic record in full, the Court concludes, for all of the reasons stated above that none of these disputed terms lacks sufficient structure to justify application of means-plus-function claiming. There is a strong presumption against the application of such claiming in this case and the Court finds that such presumption has not been rebutted. In the absence of any alternative proposed
For the reasons set forth above, the Court issues this Opinion and Order as the construction of the disputed claim terms in the '492 patent family and the '733 patent family.
The Clerk is
It is SO
Id. at 21:27-45. In addition to received requests and data packages, the '733 specification also discloses the identification of a destination device through a predetermined processing category. Id. at 21:24-27 ("Additionally, or alternatively, the MC System (and/or CHS) can obtain formatting, address, and other information by referencing portions of the received data package according to a predefined protocol."). Accordingly, the '733 specification describes, in exemplary' terms, all of the potential means of identifying the destination device contemplated by the dependent claims discussed above. However, the '733 specification's description of the predetermined protocols teaches that the processing categories described in the claim terms do not, themselves, identify the destination device, but instead obtain information regarding the device already identified by another means, such as the data package.
