Apple Computer Inc. v. Burst.com, Inc.
Filing
104
CLAIM CONSTRUCTION MEMORANDUM AND ORDER FOR US PATENT NOS 4,963,995; 5,164,839; 5,057,932 AND 5,995,705; Signed by Judge Marilyn Hall Patel on 5/8/2007. (awb, COURT-STAFF) (Filed on 5/8/2007)
<![CDATA[
Apple Computer Inc. v. Burst.com, Inc.
Doc. 104
Case 3:06-cv-00019-MHP
Document 104
Filed 05/08/2007
Page 1 of 48
1 2 3 4 5 6 7 8 9 10 11 UNITED UNITED STATES DISTRICT COURT 12
For the Northern District of California
UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA
APPLE COMPUTER v. BURST.COM, INC. Defendant. _____________________________________/ Plaintiff, No. C 06-00019 MHP Claim Construction Memorandum and Order for United States Patent Nos. 4,963,995; 5,164,839; 5,057,932 and 5,995,705
13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
Plaintiff Apple Computer, Inc. ("Apple") brought this action for declaratory relief against defendant Burst.com ("Burst"), seeking a declaration of invalidity and noninfringement on four United States patents related generally to the sharing, editing and playing of audio and video works through computers, compression, and high-speed transmission. Now before the court are the parties' claim construction briefs, filed pursuant to Patent Local Rule 4-5. Having considered the parties' arguments and submissions, and for the reasons set forth below, the court construes the disputed terms as follows.
BACKGROUND1 Burst is the assignee of the four patents at issue in this lawsuit: U.S. Patent Nos. 4,963,995 (the "`995 Patent"), 5,164,839 (the "`839 Patent"), 5,057,932 (the "`932 Patent") and 5,995,705 (the "`705 Patent"). Each of the four patents was developed by Richard Lang. The patents all relate to the sharing, editing and playing of audio and video information through computers, compression and high-speed transmission. Burst contends that its patents teach a fundamental innovation in
Dockets.Justia.com
Case 3:06-cv-00019-MHP
Document 104
Filed 05/08/2007
Page 2 of 48
1 2 3 4 5 6 7 8 9 10 11 UNITED STATES DISTRICT COURT 12
For the Northern District of California
compression and transmission of audio/video information by compressing audio/video information for transmitting in less than the time required to play the information. The four patents at issue in this lawsuit relate to various aspects of compression and transmission. The `995 Patent, issued on December 27, 1988, discloses an audio/video transceiver apparatus including compression means. It teaches an improved video recorder/transmitter with editing and copying functionality. The invention uses analog to digital conversion, compression, and intermediate storage. Abstract, `995 Patent, Payne Dec. Exh. 1 ("`995 Patent" or "`995 "). The invention of the `995 Patent can transmit and receive information in either compressed or decompressed format over fiber optic lines. Id. The `932 Patent, issued on May 5, 1989, was a continuation in part of the `995 Patent. It discloses an audio/video transceiver apparatus including compression means, random access storage means and microwave transceiver means. The `932 Patent discloses a device with additional capabilities of storing video programs in a digital format, editing the information, transferring the programs to hard copy magnetic media and transmitting the programs to a remote location. Abstract, `932 Patent, Payne Dec. Exh. 2 ("`932 Patent" or "`932 "). The invention can transmit and receive compressed or decompressed program information over fiber optic lines, phone lines or microwaves. Id. The `839 Patent, issued on October 11, 1991, is a division of the `932 Patent. The `839 Patent teaches a method for handling audio/video source information. See generally, Abstract, `839 Patent, Payne Dec. Exh. 3 ("`839 Patent" or "`839 "). The `705 Patent was issued on July 18, 1997 and teaches a burst transmission apparatus and method for audio/video information. Abstract, `705 Patent, Payne Dec. Exh. 4 ("`705 Patent" or "`705 "). The `995 Patent, along with its continuations, distinguishes the claimed invention from the prior art video cassette recorder (VCR) in several ways. The patent claims that the invention has the following capabilities: (1) "copying recorded programs from one tape or alternative storage medium to a similar or dissimilar storage medium"; (2) "editing recorded programs"; (3) "high speed 2
13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
Case 3:06-cv-00019-MHP
Document 104
Filed 05/08/2007
Page 3 of 48
1 2 3 4 5 6 7 8 9 10 11 UNITED STATES DISTRICT COURT 12
For the Northern District of California
recording"; (4) "high speed, high quality transmission and reception by optical fiber." `995 Patent at 1:3037. The `995 Patent claims that unlike traditional audio/video recorders, copying from one storage medium to another and editing through this invention will not require the costly option of using two magnetic tape decks. Id. at 2:712. The preferred embodiment of the invention supports these two features using an audio/video recording unit--which may consist of a conventional VCR--and a video control unit, comprised of an analog-to-digital converter, a digital-to-analog converter, a compressor/decompressor, a controller, a central processing unit and random access memory. Id. at 3:3740, 4:1923, 9:454. The patent also claims that the invention performs highspeed recording using the preferred embodiment of the previously described audio/video recording unit. Id. at 3:384:16. The claimed invention enables the fourth feature using a fiber optic port, incorporating a fiber optic transceiver/receiver, to communicate between a high-speed databus and a fiber optic signal line. Id. at 7:4551. The parties have jointly agreed to the construction of fourteen claim terms. Although the parties disagree as to the number of terms to be construed, this dispute boils down to sixteen specific terms which are used in various contexts throughout the patents.
13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 I.
LEGAL STANDARD
Claim Construction Under Markman v. Westview Instruments, Inc., 517 U.S. 370, 38990 (1996), the court
construes the scope and meaning of disputed patent claims as a matter of law. The first step of this analysis requires the court to consider the words of the claims. Teleflex, Inc. v. Ficosca N. Am., 299 F.3d 1313, 1324 (Fed. Cir. 2002). According to the Federal Circuit, the court must "indulge a `heavy presumption' that a claim term carries its ordinary and customary meaning." CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). To determine the ordinary meaning of a disputed term, the court may review a variety of sources including the claims themselves, other intrinsic evidence such as the written description and prosecution history, and dictionaries and 3
Case 3:06-cv-00019-MHP
Document 104
Filed 05/08/2007
Page 4 of 48
1 2 3 4 5 6 7 8 9 10 11 UNITED STATES DISTRICT COURT 12
For the Northern District of California
treatises. Teleflex, 299 F.3d at 1325. The court must conduct this inquiry not from the perspective of a lay observer, but rather "from the standpoint of a person of ordinary skill in the relevant art." Id. (citing Zelinski v. Brunswick Corp., 185 F.3d 1311, 1316 (Fed. Cir. 1999)). Among the sources of intrinsic evidence, the specification is "the single best guide to the meaning of a disputed term." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). By expressly defining terms in the specification, an inventor may "choose[] to be his or her own lexicographer," thereby limiting the meaning of the disputed term to the definition provided in the specification. Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 990 (Fed. Cir. 1999). In addition,"[e]ven when guidance is not provided in explicit definitional format, `the specification may define claim terms `by implication' such that the meaning may be `found in or ascertained by a reading of the patent documents.'" Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004) (quoting Bell Atl. Network Servs., Inc v. Covad Commc'ns Group, Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001)). "The specification may also assist in resolving ambiguity where the ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of the claim to be ascertained from the words alone." Teleflex, 299 F.3d at 1325. At the same time, the Federal Circuit has cautioned that the written description "should never trump the clear meaning of the claim terms." Comark Comms., Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (citations omitted); see also Tate Access Floors, Inc. v. Maxess Techs., Inc., 222 F.3d 958, 966 (Fed. Cir. 2000) ("Although claims must be read in light of the specification of which they are part, . . . it is improper to read limitations from the written description into a claim . . . ."). Likewise, the prosecution history may demonstrate that the patentee intended to deviate from a term's ordinary and accustomed meaning. Teleflex, 299 F.3d at 1326. "Arguments and amendments made during the prosecution of a patent application and other aspects of the prosecution history, as well as the specification and other claims, must be examined to determine the meaning of terms in the claims." Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995), cert. denied, 516 U.S. 987 (1995). "In particular, `the prosecution history (or file 4
13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
Case 3:06-cv-00019-MHP
Document 104
Filed 05/08/2007
Page 5 of 48
1 2 3 4 5 6 7 8 9 10 11 UNITED STATES DISTRICT COURT 12
For the Northern District of California
wrapper) limits the interpretation of claims so as to exclude any interpretation that may have been disclaimed or disavowed during prosecution in order to obtain claim allowance.'" Teleflex, 299 F.3d at 1326 (quoting Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985)). Dictionary definitions and other objective reference materials available at the time that the patent was issued may also provide evidence of the ordinary meaning of a claim. Phillips v. AWH Corp., 415 F.3d 1303, 1322 (Fed. Cir. 2005) (en banc); Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202 (Fed. Cir. 2002). A dictionary "has the value of being an unbiased source, accessible to the public in advance of litigation." Phillips, 415 F.3d at 1322 (internal quotation omitted). Thus, district courts "are free to consult such resources at any time in order to better understand the underlying technology and may also rely on dictionary definitions when construing claim terms, so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents." Vitronics, 90 F.3d at 1584 n.6. A court should be cautious, however, not to place too much reliance on dictionaries, as the resulting construction may be too broad. Phillips, 415 F.3d at 1321. Federal Circuit decisions take a less favorable view of other forms of extrinsic evidence, such as expert testimony and prior art not cited in the specification or the prosecution history, noting that "claims should preferably be interpreted without recourse to extrinsic evidence, other than perhaps dictionaries or reference books, and that expert testimony should be received only for the purpose of educating the judge." EMI Group N. Am., Inc. v. Intel Corp., 157 F.3d 887, 892 (Fed. Cir. 1998), cert. denied, 526 U.S. 1112 (1999). Although "extrinsic evidence in general, and expert testimony in particular, may be used . . . to help the court come to a proper understanding of the claims[,] it may not be used to vary or contradict the claim language . . . . Indeed, where the patent documents are unambiguous, expert testimony regarding the meaning of a claim is entitled to no weight." Vitronics, 90 F.3d at 1584. The Federal Circuit recently revisited the basic approach to claim construction in Phillips. Although Phillips consists largely of an affirmation of ten years of claim construction jurisprudence, 5
13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
Case 3:06-cv-00019-MHP
Document 104
Filed 05/08/2007
Page 6 of 48
1 2 3 4 5 6 7 8 9 10 11 UNITED STATES DISTRICT COURT 12
For the Northern District of California
it provides at least two pieces of additional guidance. First, the Federal Circuit rejected a line of cases suggesting that claim interpretation must begin with a dictionary definition of the disputed terms. Phillips, 415 F.3d at 132021. Second, the Federal Circuit emphasized that claim terms must be interpreted in light of their context, especially the language used in other claims and the specification. Id. at 1321. Taken as a whole, Phillips appears to signal a small retreat from formalism and bright-line rules in claim construction. As a result, the court will focus primarily on the intrinsic record before it. Cases cited by the parties in support of fixed "rules" of claim construction will accordingly be given somewhat less weight.
II.
Means-Plus-Function Claims Section 112(6) of the Patent Act, 35 U.S.C. section 112 ¶ 6 ("Paragraph 6" or "Section
112(6)"), provides that an element in a claim "may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof." Claims expressed in this way "shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." Id. By allowing for a patentee to recite "means-plus-function" claim elements, section 112(6) permits the inventor to describe an element of his or her invention by the result accomplished or the function served rather than describing the item or element to be used. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 28 (1996). Although the claim limitation need not recite the structure, material, or acts that comprise the means for carrying out the claimed function, the applicant must describe in the patent specification some structure which performs that function. 35 U.S.C. § 112 ¶ 6; Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 126667 (Fed. Cir. 1999). Where an element is expressed as a "means" to perform a particular function, a presumption arises that the claim element should be construed as a means-plus-function claim under section 112(6). Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 1318 (Fed. Cir. 1999). Conversely, a claim term that does not use the words "means" or "step for" is presumptively not governed by section 112(6). CCS Fitness, 288 F.3d at 1369. This presumption "is a strong one that is not readily 6
13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
Case 3:06-cv-00019-MHP
Document 104
Filed 05/08/2007
Page 7 of 48
1 2 3 4 5 6 7 8 9 10 11 UNITED STATES DISTRICT COURT 12
For the Northern District of California
overcome." Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004). However, even in the absence of express means-plus-function language, a claim may be construed to include a means-plus-function element if the proponent of the means-plus-function construction demonstrates that "the claim term fails to `recite sufficiently definite structure for performing that function.'" CCS Fitness, 288 F.3d at 1369 (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). In making this determination, the court must assess whether the "term, as a name for a structure, has a reasonably well understood meaning in the art." Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996).
DISCUSSION The following chart summarizes the court's construction of the disputed terms. The full analysis supporting each construction is below. The discussion proceeds in three parts, as agreed by the parties. First, the court considers the terms involving compression. Second, the court analyzes the parties dispute about the terms relating to transmission. Finally, the court construes the meansplus-function terms.
13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
Term I. Compression Terms "time compressed representation" "burst time period" II. Transmission Terms "transmission" "transmitting away" or "transmission . . . to a select destination"
Construction "a version of audio/video source information having a reduced number of bits" "transmission time period shorter than the time period associated with a real time representation" "sending" "sending information to an external device"
7
Case 3:06-cv-00019-MHP
Document 104
Filed 05/08/2007
Page 8 of 48
1 2 3 4 5 6 7 8 9 10 11 UNITED STATES DISTRICT COURT 12
For the Northern District of California
"audio/video source information"
"an audio and/or video work that can be received from one or more sources and that has a temporal dimension." Additionally, "work" may be a portion of a complete program, permitting subsequent steps to commence before completion of previous steps.
"editing" "multiplicity" "input means" "output means" "storage means" "random access storage means" "transmission means" "recording means" "editing means"
"modifying" "two or more; usually a fairly large number" "an input port or terminal capable of receiving audio/video source information" "an output port or terminal capable of transmitting audio/video source information" "DRAM, SRAM, CMOS, optical disc memory, bubble memory, magnetic disk and digital paper, plus equivalents. "storage that provides for random access to any given segment of stored audio/video source information" "fiber optic port, a point-to-point microwave transceiver or a satellite transceiver plus equivalents" "an audio/video recording unit such as a magnetic tape drive, WORM drive, or erasable optical disk drive, plus equivalents " "a processor executing stored editing software in ROM, a controller, and a high speed data bus, plus equivalents "
III. Means-plus-Function Terms
13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
8
Case 3:06-cv-00019-MHP
Document 104
Filed 05/08/2007
Page 9 of 48
1 2 3 4 5 6 7 8 9 10 11 UNITED STATES DISTRICT COURT 12
For the Northern District of California
"compression means"
"for video, a compressor/decompressor executing one or both of the following data compression algorithms: (i) reducing the number of bits by coding each frame independently, i.e., treating each frame as an individual image, and/or (ii) reducing the number of bits by comparing two or more frames and coding certain differences between those frames, plus equivalents; and/or for audio, a compressor/decompressor executing the following data compression algorithm: reducing the number of bits by comparing two or more samples and coding certain differences between those samples, plus equivalents"
"decompression means"
"compressor/decompressor executing a decompression algorithm consistent with the compression algorithm used, plus equivalents"
13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 9
Case 3:06-cv-00019-MHP
Document 104
Filed 05/08/2007
Page 10 of 48
1 2 3 4 5 6 7 8 9 10 11 UNITED STATES DISTRICT COURT 12
For the Northern District of California
I.
Compression Terms The parties have a fundamental dispute about the compression terms rooted in whether the
compression terms include data compression or time compression multiplexing (TCM). Burst advances the former view and Apple the latter. This issue permeates the court's construction of the disputed terms. Understanding the parties' dispute requires a brief exploration of the two types of compression as the technologies existed in 1988. The parties presented extensive briefing on the technologies involved in data compression and TCM, and the following background facts are not in dispute. Data compression is the process of reducing the number of bits required to represent audio and/or video information. Hemami Report, Payne Dec., Exh. 5, at 14 ("Hemami Report"). Data compression accomplishes this reduction on digital information in certain ways such as encoding patterns and redundancies in fewer bits. For audio information, data compression results from reducing the number of bits used to represent each sample and by coding the differences between samples rather than the entirety of each sample. Id. at 1618. Video information can be compressed in similar ways. Intraframe compression compresses each frame of a video independently and discards indiscernible information, such as the number of colors. Id. 1819. Interframe compression results from coding only the differences between frames. Id. 1921. The resulting compressed information requires less memory for storage and can be transmitted in less time than the uncompressed representation by virtue of its smaller size. The transmission time for any particular data compressed information depends on the size of the compressed information and the bandwidth, or transmission speed, of the communications channel. The bandwidth of any particular channel is necessarily approximate, and, therefore, the transmission time of compressed data is also approximate. By contrast, time compression through TCM compresses a signal in time by increasing its frequency or signaling, thereby reducing its duration. TCM does not involve reducing the number of bits of information; rather, faster transmission results from the increased frequency of the signal. TCM can be used to compress either analog or digital information. Because TCM involves 10
13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
Case 3:06-cv-00019-MHP
Document 104
Filed 05/08/2007
Page 11 of 48
1 2 3 4 5 6 7 8 9 10 11 UNITED STATES DISTRICT COURT 12
For the Northern District of California
increasing the signal frequency, the transmission time for the compressed information is known in advance of transmission. A further use of TCM is time division multiplexing, which allows multiple signals to be sent through a single channel in the same amount of time normally required to send one signal. See Gitlen, Data Communication Principles 607669 (1992). This form of multiplexing is associated with "burst transmissions" of signals at a higher frequency. See id. at Fig. 9.3; Graf, Modern Dictionary of Electronics 122 (6th ed. 1984). This technology was well-established at the time the Burst patents were filed. The prior art cited in the Burst patent applications disclosed multiplexing. For instance, the Haskell patent cited in the prosecution history discloses a system of multiplexing video signals for transmission over a single channel. See U.S. Patent No. 4,300,161, Brown Dec., Exh. K, at 1:5559 ("Haskell patent"); `705 File History, Brown Dec., Exh. L at APBU 620. As Apple's expert Dr. Halpern noted in his report, data compression and TCM are orthogonal concepts. Halpern Report, Halpern, Dec. at 12 ("Halpern Report"). Thus, the court must determine which of the two forms of compression is contemplated by the Burst patents.
13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
A.
"time compressed representation"
The term "time compressed representation" appears in every independent claim of the Burst patents. The parties have relied on the reference in claim 1 of the `839 Patent for the purposes of discussion: 1. A method for handling audio/video source information, the method comprising: receiving audio/video source information; compressing the received audio/video source information into a time compressed representation thereof having an associated burst time period that is shorter than a time period associated with a real time representation of the received audio/video source information; storing said time compressed representation of the received audio/video source information; and transmitting, in said burst time period, the stored time compressed representation of the received audio/video source information to a selected destination `839 Patent at 13:115. 11
Case 3:06-cv-00019-MHP
Document 104
Filed 05/08/2007
Page 12 of 48
1 2 3 4 5 6 7 8 9 10 11 UNITED STATES DISTRICT COURT 12
For the Northern District of California
The parties dispute whether the term "time compressed representation" had an accepted scientific or engineering meaning when it was used. Compare Hemami Report at 4243 with Halpern Report at 812. The term was not explicitly defined in the specification. The main dispute is whether the term teaches data compression. Burst argues that it does. Apple's preferred construction, however, excludes data compression in favor of a reading of "time compressed representation" to refer to time compressed multiplexing. In the alternative, Apple presents an invalidity argument in the guise of contesting Burst's construction as indefinite. First, the court will examine whether "time compressed representation" excludes data compression. Having resolved that dispute, it will construe the term and address Apple's indefiniteness argument. The literal language of "time compressed representation" tends to favor Apple's preferred construction. While "time compression" was not a widely used term at the time the patents were drafted, the ordinary meaning would suggest time compression and exclude data compression. See Halpern Report at 8. Indeed, Burst's expert concedes that, at the time the patents were filed, there were several meanings of the phrase "time compression," none of which would include data compression. Additionally, TCM would fall within the likely accepted meanings of "time compression" at the time. Hemami Report at 4243. Further, the expression "burst" was linked to TCM in describing the high-rate bursts at which information is transmitted. See Data Communication Principles at 607669; Modern Dictionary of Electronics at 122. The use of the term "burst" was unknown in the field of data compression. The presumption that the term "time compression" is meant to convey its ordinary meaning can be overcome. An inventor may "choose[] to be his or her own lexicographer" by expressly defining terms in the specification. Johnson Worldwide, 175 F.3d at 990. While the term "time compressed representation" is not defined in the specification, the intrinsic evidence establishes that "time compressed representation" refers to data compression. Indeed, the Federal Circuit has concluded that such lexicography by implication may be appropriate, particularly where the prosecution history indicates that the patentee intended to deviate from a term's ordinary and accustomed meaning. Teleflex, 299 F.3d at 1326. 12
13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
Case 3:06-cv-00019-MHP
Document 104
Filed 05/08/2007
Page 13 of 48
1 2 3 4 5 6 7 8 9 10 11 UNITED STATES DISTRICT COURT 12
For the Northern District of California
The intrinsic evidence demonstrates that "time compression representation" refers to data compression. Significantly, the parties do not dispute the fact that the specification does not disclose TCM. The specification refers in several places to data compression and data compression techniques. See, e.g., `995 Patent at 2:4251 (including as one of the objects of the patent to "provide an audio/video recorder utilizing a data compression technique for efficient storage, transmission, and reception"). The preferred embodiment describes the algorithms used for compression, "which enable the representation of a series of numbers by a reduced number of digits." Id. at 4:6368; see also id. at 5:2024 (using "data compression technique" to refer to "the above compression techniques"). The algorithms discussed in the preferred embodiment for performing the compression are types of data compression algorithms--intraframe video compression, interframe video compression, and inter-sample audio compression--which would have no relevance for TCM. See id. at 4:685:8 (intraframe video compression); id. at 5:918 (interframe video compression); id. at 5:2833 (inter-sample audio compression). The parties do not dispute that these algorithms are exclusively used for data compression and that they have no use for TCM.2 Instead, Apple notes that the patents link data compression to more efficient storage and not to faster-than-real-time transmission. See, e.g., id. at 2:4245 ("A still further object of the invention is to provide an improved audio/video recorder which maximizes storage capacity, through the use of a data compression technique."); but see id. at 2:4651 ("A still further objection of the invention is to provide an audio/video recorder utilizing a data compression technique for efficient storage, transmission, and reception of digitized audio/video program. . . ."). The court will address this argument in more detail below; however, it is not convinced that the patents limit data compression to storage. The sequence of three processes within the disputed claims--compression, storage and transmissionsupports Burst's construction. See, e.g., `839 Patent at 13:116. Burst contends that Apple's proposed construction would not conform to the sequence mandated by the claims because storing information after it had been TCM-compressed would lose the effects of compression. At the Markman hearing, Apple presented several examples of storing TCM-compressed information 13
13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
Case 3:06-cv-00019-MHP
Document 104
Filed 05/08/2007
Page 14 of 48
1 2 3 4 5 6 7 8 9 10 11 UNITED STATES DISTRICT COURT 12
For the Northern District of California
after compression to prove that it is not impossible to store a TCM-compressed file; however, none of these examples are logical uses of TCM. While storing a TCM-compressed file may be possible, doing so is not consonant with the claims of the patent. Apple's proffered reading is not the most reasonable one. Therefore, the court is persuaded that TCM does not conform to the sequence of processes in the disputed claims. The prosecution history appears, at worst, ambivalent and more likely to support Burst's construction. Apple offers two types of evidence from the prosecution history to support its view that Burst abandoned its claim to data compression. First, Apple argues that Burst's statements during prosecution to distinguish the Izeki patent excludes data compression from the meaning of disputed terms. In its statement, the applicant distinguished the Izeki patent, which "mentions data compression," as "not the equivalent by any means of [the applicant's] specifically claimed time compression." `705 File History, Brown Dec., Exh. L at APBU 551. The applicant continued to explain that the Izeki patent "contains absolutely no recognition of the need for time compression of audio/video source information or of the need for transmission of time compressed audio/video source information in a burst time period." Id. As Burst points out, this statement, read in context, suggests that the Izeki patent did nothing more than data compression, while the claimed invention combined data compression with faster than real time transmission. Id. Subsequent correspondence with the PTO confirms that the applicant did not disavow data compression because the PTO and the applicant both discuss data compression in the prior art. In particular, they referred to data compression's utility in increasing storage capacity. Fourth Office Action Brown, Dec., Exh. L at APBU 55458 (noting that using compression for increasing storage capacity was known in the prior art). Burst further emphasizes that the applicant never distinguished the Izeki patent based on the type of compression utilized. If the applicant had intended to claim TCM, then it could have easily distinguished Izeki on the basis that Izeki employed data compression. See, e.g., North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1346 (Fed. Cir. 2005) (concluding from certain description of prior art, which would have been unnecessary under proposed construction, that applicant did not intend proposed construction). Indeed, the applicant 14
13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
Case 3:06-cv-00019-MHP
Document 104
Filed 05/08/2007
Page 15 of 48
1 2 3 4 5 6 7 8 9 10 11 UNITED STATES DISTRICT COURT 12
For the Northern District of California
distinguished Haskell, a patent that teaches TCM, on the basis that it teaches TCM. In the amendments to the application which resulted in the`705 Patent, the applicant noted that "Izeki teaches a compression technique without transmission. . . . Haskell [] teach[]es a system for time compression multiplexing so that multiple clients can receive audio/video information in real time." `727 Application, August 7, 1997 Preliminary Amendment, Def.'s Exh. L at APBU 62021. Apple also points to statements in Burst's patent application before the European Patent Office to establish that Burst disclaimed data compression. The patent examiner rejected certain claims on the basis that the phrase "time compression" was not supported in the specification. The examiner noted that "compression of information refers to a reduction of a number of digits." File History for European Patent `561, Brown Dec., Exh. T at APBU 41534243. In response, the applicant deleted the word "time" from the claims. File History for European Patent `561, Brown Dec. Exh. W at APBU 415441. However, this deletion does not indicate that Burst disclaimed data compression but rather that it discarded the "time compression" formulation in order to clarify that it meant data compression. The evidence from the prosecution history does not convince the court that the applicant disclaimed data compression. Second, Apple draws the court's attention to the inventor's amendment of the original claims to demonstrate that Burst abandoned data compression. However, this history is consistent with Burst's construction. Apple argues that, in its original claims, the patentee claimed data compression. `932 File History, Brown Dec., Exh. O, at APBU 167.3 However, the PTO rejected each of the claims in the application, citing patents which showed the transmission of data compressed video. Id. at APBU 199207. In response, the inventor, along with a new patent lawyer, amended the claims. These amendments cancelled all existing claims and introduced new ones with the term "time compressed representation" in them for the first time. Id. at APBU 212. However, the introduction of a new term does not conclusively demonstrate that Burst disavowed data compression in the original language. In short, the prosecution history is inconclusive on this issue. It certainly does not rise to the level of highly persuasive evidence necessary for a construction that excludes the preferred embodiment, as does Apple's construction which reads data 15
13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
Case 3:06-cv-00019-MHP
Document 104
Filed 05/08/2007
Page 16 of 48
1 2 3 4 5 6 7 8 9 10 11 UNITED STATES DISTRICT COURT 12
For the Northern District of California
compression out of "time compressed representation." See Elekta Instrument S.A. v. O.U.R. Scientific Intern., Inc., 214 F.3d 1302, 1308 (Fed. Cir. 2000) (concluding on the basis of clear prosecution history and "the unambiguous language of the amended claim" that construction which excluded the preferred embodiment is appropriate); Plastipak, 415 F.3d at 134546 (describing the high level clarity of the disclaimer in the prosecution history). In sum, the court finds that the Burst patents do not exclude data compression. The term "time compressed representation" appears in eight phrases throughout the patents, frequently in a format with "burst time period." Burst's proposed construction of "time compressed representation" includes that term along with other language connecting it to terms such as "the burst time period." Apple argues that these are distinct terms, and the court agrees. Therefore, the court will consider the two terms separately. The parties agree that there was no accepted meaning in the relevant community for "time compressed representation" at the time of the patent application. The relevant part of Burst's proposed construction is as follows: a [digital] version of audio/video source information having a reduced number of bits [that allows data transfer / that is received / being received] over an external communications link. Burst argues that "time compressed representation" contains three elements: 1) a temporal element; 2) a compression element; and 3) a transmission and/or reception element. The temporal element proposed by Burst is the crux of the dispute. Burst argues that the word "time" in the disputed term refers to the "associated burst time period" that appears in most of the phrases containing the disputed term. Burst construes "burst time period" to mean a transmission time period which is shorter than the time required for normal playback. By contrast, Apple argues that the temporal element of this term refers to TCM and that the "burst time period" is a transmission time period known at the time of compression to be shorter than the time required to play the source information in real time. The court must address whether the temporal element refers to TCM or the concept of faster-than-real-time transmission. The court adopts the latter construction for the following reasons. The more reasonable interpretation of the temporal element refers to faster-than real-time 16
13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
Case 3:06-cv-00019-MHP
Document 104
Filed 05/08/2007
Page 17 of 48
1 2 3 4 5 6 7 8 9 10 11 UNITED STATES DISTRICT COURT 12
For the Northern District of California
transmission. Burst argues that the sequence presented in the claims excludes TCM. Several of the claims require compression and then storage of the "time compressed representation" before transmission. See, e.g., `995 Patent, claim 1; `839 Patent, claim 1. TCM requires immediate transmission after multiplexing; storage of the data after multiplexing but before transmission is, therefore, inconsistent with TCM. Apple's proposed construction would also give the word "compression" two meanings: data compression and TCM. Apple acknowledges that the compressor/decompressor 26 in Figure 2 runs data compression algorithms. Therefore, for the specification to accommodate both data compression and TCM, the word "compression" must accommodate both meanings. Such a reading would render claims such as claim 1 of the `839 Patent nonsensical. The prior art disclosed in the patent does not support Apple's proposed construction. The court has reviewed the treatment of the Izeki patent, which explicitly disclosed data compression, in the Burst patent application. As Apple notes, the applicant distinguished Izeki in amendments to its `727 Patent application (which resulted in the `705 Patent) in response to the PTO's rejections of its application. The first relevant PTO rejection occurred in February 1997 and noted that Izeki disclosed an apparatus for receiving, compressing and storing audio/video information and later transmitting the information to another apparatus. `705 File History, Brown Dec., Exh. L at APBU 582. In its first response, Burst distinguished Izeki by noting that "Izeki teaches a compression technique without transmission." Id. at APBU 620. The PTO's second rejection was identical to the first. Id. at APBU 625. In response, Burst's amendments noted that Izeki "does not provide for burst transmission of video programs over a communications channel" but rather is "intended to facilitate production of a master tape." Id. at APBU 64950. Based on this history, Apple argues that the Burst patents contemplate "burst" transmission through TCM, while Izeki discloses data compression. As noted earlier, the court is not persuaded that such statements amount to a disclaimer of data compression. Apple also argues that the treatment of the Haskell patent in the file history indicates that the Burst patents necessarily include TCM. Haskell is a patent for TCM of video signals for transmission to multiple users in real time. In distinguishing Haskell in the patent 17
13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
Case 3:06-cv-00019-MHP
Document 104
Filed 05/08/2007
Page 18 of 48
1 2 3 4 5 6 7 8 9 10 11 UNITED STATES DISTRICT COURT 12
For the Northern District of California
application, the Burst patents note that Haskell employs TCM for real-time delivery and that the subject invention relates to "a delivery technique that uses compression to transmit a time compressed representation in a burst time period" shorter than real time. `705 File History at APBU 620. Notably, the application used the phrase "a delivery technique that uses compression" not the phrase "time compression multiplexing." Therefore, the treatment of Haskell does not mean that the Burst patents employ TCM for faster-than-real-time transmission. The court concludes that the temporal aspect of the term does not refer to TCM. The compression aspect of the term, Burst argues, is that the representation is the result of the compression process. This reading finds support in the specification. For example, claim 1 of the `839 Patent teaches "[a] method for . . . compressing the received audio/video source information into a time compressed representation thereof." `839 Patent at 13:16. The compressing, as noted above, is data compression. As the parties agree, the result of data compression is a reduction in the number of bits. Accordingly, the representation is the product of the data compression process. At the Markman hearing, Apple explained that TCM could result in a representation. The use of the word "representation" seems better suited to data compression. A "representation" is the result of reducing bits from the original audio/video information. According to Burst, "time compressed representation" contains a third element related to transmission/reception. The claims refer to the "time compressed representation" as "transmitting" in a burst time period and that the time compressed representation is "received" in a burst time period. See `839 Patent, claim 1. Burst argues that this context imbues "time compressed representation" with a transmission/reception element that requires transmission over an external link. The court is not convinced that the phrase "time compressed representation" necessarily contains a transmission element. The plain language of the term does not suggest transmission. The inventor demonstrated his ability to adequately describe transmission where he intended. Where the inventor chose to describe transmission, he used separate nomenclature for doing so. Indeed, it would be redundant to include a transmission element in the term "time compressed representation" when Burst offers a similar construction for the term "transmission." Therefore, the court declines 18
13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
Case 3:06-cv-00019-MHP
Document 104
Filed 05/08/2007
Page 19 of 48
1 2 3 4 5 6 7 8 9 10 11 UNITED STATES DISTRICT COURT 12
For the Northern District of California
to adopt Burst's transmission limitation on the term "time compressed representation." Finally, Apple challenges Burst's construction on the grounds that the claims link compression and faster-than-real-time transmission but Burst's preferred construction does not. As a result, Apple contends that the court should not adopt Burst's construction of "time compressed representation" because it is indefinite. Apple states that the disclosed technology, data compression, would not by itself enable the stated option of faster-than-real time transmission. Thus, Apple reasons that the patents-in-suit must teach TCM in addition to data compression because data compression alone is insufficient to perform the claimed function. However, this much is acknowledged in the patents themselves. Compare `995 Patent at 7:5564 (noting that transmission of a video over a fiber optic line would take "less time than it would take to view the program") with `995 Patent at 8:4957 ("[T]he time required to communicate a video program over a convention phone line may exceed the time it takes to view the program."). While the patent discloses various transmission technologies, only one of them, a fiber optic line, would have been able to transmit compressed data faster-than-real-time. But, Apple notes, the fiber optic line would have achieved faster-than-real-time transmission of uncompressed data; therefore, the data compression does not enable the claimed function. At the Markman hearing, Apple argued that Burst's specification citations would reflect only the law of nature that compressed signals would be transmitted faster than uncompressed. Apple's indefiniteness argument boils down to one based on invalidity. This type of invalidity argument, the Federal Circuit warns, is not a proper consideration at claim construction: While we have acknowledged the maxim that claims should be construed to preserve their validity, we have not applied that principle broadly, and we have certainly not endorsed a regime in which validity analysis is a regular component of claim construction. Instead, we have limited the maxim to cases in which the court concludes, after applying all the available tools of claim construction, that the claim is still ambiguous. In such cases, we have looked to whether it is reasonable to infer that the PTO would not have issued an invalid patent, and that the ambiguity in the claim language should therefore be resolved in a manner that would preserve the patent's validity. Pfizer, Inc. v. Teva Pharmaceuticals, USA, Inc., 429 F.3d 1364, 1376 (Fed Cir. 2005). Because the court has concluded that there is no ambiguity in the relevant claims, Apple's argument is best 19
13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
Case 3:06-cv-00019-MHP
Document 104
Filed 05/08/2007
Page 20 of 48
1 2 3 4 5 6 7 8 9 10 11 UNITED STATES DISTRICT COURT 12
For the Northern District of California
reserved for a later stage of litigation. Apple also uses this argument to attack the limitation in Burst's construction that the representation "allows" transfer in shorter than the time required for normal playback. This, too, is an invalidity argument best reserved for later. The court construes "time compressed representation" to mean "a version of audio/video source information having a reduced number of bits."
B.
"burst time period"
The term "burst time period" and the related phrase, "having an associated time period," appear in various forms in the `995 Patent, the `932 Patent, and the `839 Patent claims. Claim 1 of the `839 Patent contains representative usages: 1. A method for handling audio/video source information, the method comprising: receiving audio/video source information; compressing the received audio/video source information into a time compressed representation thereof having an associated burst time period that is shorter than a time period associated with a real time representation of the received audio/video source information; storing said time compressed representation of the received audio/video source information; and transmitting, in said burst time period, the stored time compressed representation of the received audio/video source information to a selected destination `839 Patent at 13:115. The parties have agreed to construe all of the variant phrases together. The construction of "burst time period" involves the parties' dispute of whether the "burst time period" is limited to a transmission time period that is of definite duration and known at the time of compression. Burst points to the language of approximation used in the patent specification to describe transmission rates, on which the duration of the transmission period is based. See `839 Patent at 8:1518 (referring to fiber optic bandwidth as "about 200 Megabytes/second"). However, this language does not preclude a construction that would require a fixed time period. TCM would permit a known transmission time period even with fiber optic cable. Apple reads "burst time period" in the context of the phrases "having an associated burst time period" and "said burst 20
13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
Case 3:06-cv-00019-MHP
Document 104
Filed 05/08/2007
Page 21 of 48
1 2 3 4 5 6 7 8 9 10 11 UNITED STATES DISTRICT COURT 12
For the Northern District of California
[transmission] time period" to require a known transmission time. See, e.g., `995 Patent, claim 1 (having formulation); `705 Patent, claim 1 (said formulation). According to Apple, the claim language further shows that the "associated burst time period" is created and associated with the time compressed representation during compression and before transmission. If the time period is approximate or not known, then the representation cannot "have" an associated time period during compression nor can one be "associated" with the representation during compression. The words "associated" and "said" time period do not necessarily suggest a fixed period of known duration. Rather, these words are used in a way to permit comparison between the transmission time and the playback time. See, e.g., `995 Patent, claim 1 (referring to the time compressed representation "having an associated time period that is shorter than a time period associated with a real time representation of said audio/video source information."). Indeed, the specification indicates that transmission times will be approximate. `839 Patent at 12:411 ("Thus, the invention can be used to receive and transmit programs via microwaves at an accelerated rate similar to and at least as fast as, the transmission and reception of programs over optical fibers.") TCM permits a transmission period to be known and associated with the representation during compression; data compression does not. This is consistent with the court's construction of "time compressed representation" as not requiring TCM. Therefore, the "burst time period" does not require a definite time period known at the time of compression. Burst's construction of burst time period as a "transmission time period shorter than the time period associated with a real time representation" is consistent with the court's construction of "time compressed representation." The court accordingly adopts Burst's construction.
13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
II.
Transmission Terms The second group of terms includes several terms related to transmission. The court will
consider each of these in turn.
21
Case 3:06-cv-00019-MHP
Document 104
Filed 05/08/2007
Page 22 of 48
1 2 3 4 5 6 7 8 9 10 11 UNITED STATES DISTRICT COURT 12
For the Northern District of California
A.
"transmission"/ "transmitting away" /"transmission . . . to a select destination"
The term "transmission" appears in various forms including "transmission away"; "transmitting away" and "transmitting . . . to a select destination." These terms appear in a total of eleven claims in all of the Burst patents. Claim 1 of the `995 Patent is indicative. 1. An audio/video transceiver apparatus comprising: input means for receiving audio/visual source information; compression means, coupled to said input means, for compressing the said audio/video source information into a time compressed representation thereof having an associated time period that is shorter than a time period associated with a real time representation of said audio/video source information; random access storage means, coupled to said compression means, for storing the time compressed representation of said audio/video source information; and output means, coupled to said random access storage means, for receiving the time compressed audio/video source information stored in said random access storage means for transmission away from said audio/video transceiver apparatus. `995 Patent at 10:5811:7. The parties agree that "transmission" should be understood as "sending." The first issue in dispute is where the information is sent when the patent uses the term "transmitting away" or "transmitting . . . to a select destination." Burst contends that the information is sent to an external device. Apple disputes this construction, asserting that the inventor disclaimed sending information to an external device when he distinguished his patent from the Izeki prior art. Apple's argument turns on its particular understanding of the depiction of the reproduction device in Figure 1 of the Izeki patent. See U.S. Patent No. 4, 974,178 at Fig. 1 ("Izeki patent"). Apple contends that the dotted line surrounding the reproduction device in the Izeki patent indicates that it is external to the Izeki apparatus. The court is unwilling to conclude that Izeki teaches transfer of information to external devices based on this dotted line. In fact, Figure 1 of the Izeki patent includes a printer which is commonly considered an external device and it is not outlined with dotted lines. Id. In addition, the prosecution history of the Burst patents shows that the inventor distinguished the invention from Izeki by arguing that the Izeki prior art "is simply not concerned with transmitting audio/video information away from the apparatus to one or more receivers." Id., `705 File History, Brown Decl, Exh. L at APBU 652. The inventor contended that the Izeki prior art 22
13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
Case 3:06-cv-00019-MHP
Document 104
Filed 05/08/2007
Page 23 of 48
1 2 3 4 5 6 7 8 9 10 11 UNITED STATES DISTRICT COURT 12
For the Northern District of California
is an apparatus for editing and storing audio/video source information within the apparatus and without external transmission. Izeki Patent at 1:1015. Therefore, Burst did not disclaim sending information to external devices. Apple argues that the proper construction of "transmitting away" should be "sending information to a remote location," attempting to distinguish between sending information to devices that are local and devices that are remote. However, the term "remote" injects further ambiguity into the claim construction, and Apple offers no test to distinguish between devices that are local and devices that are remote, stating only that the difference is a matter of degree. Though the term "remote" is used in the patents, it is not used universally in association with transmission and should not be a limit on the term "transmission." Compare `995 Patent at 10:1420 (using term "remote"), with id. at 11:38 (not using term "remote"). The second issue is whether the construction of "transmission" should be limited to sending information to devices capable of playback. Burst argues that the patent teaches transfer of information between transceiver devices that are capable of playback, relying on language in the `995 patent specification. The key language discussed by Burst appears in the `932 Patent specification: "The VCR-ET can receive/transmit a video program . . . from/to a variety of sources . . . For example, a video program may be communicated at an accelerated rate from the first VCR-ET to a second VCR-ET . . ." `932 Patent at 8:1823 (emphasis added). This language does not support Burst's contention; it indicates that transferred information may be to a device capable of playback, but not that it must. The court is unwilling to adopt such a limitation. Burst further contends that when the patent refers to transmission time it is relative to the duration of real-time playback of the audio/video source information. See, e.g., `995 Patent at 7:6066. Burst suggests that this reference implies that the device receiving the information must be capable of playback. This conjecture is insufficient to limit transfer of information solely to devices capable of playback. Accordingly, the court finds that "transmission" means "sending", and "transmitting away" or "transmission . . . to a select destination" means "sending information to an external device".
13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
23
Case 3:06-cv-00019-MHP
Document 104
Filed 05/08/2007
Page 24 of 48
1 2 3 4 5 6 7 8 9 10 11 UNITED STATES DISTRICT COURT 12
For the Northern District of California
B.
"audio/video source information"
This term as well as "audio/visual source information" appear in each of the four patents-insuit in a total of over sixty claims. A representative usage is reproduced above in claim 1 of the `995 Patent. The parties agree that "video" and "visual" are equivalent, and that "audio/video source information" denotes a "work" having a "temporal dimension" as opposed to a photograph or text. However, both parties wish to further clarify this construction. The intrinsic evidence supports Burst's construction of the term as "an audio and/or video work that can be received from one or more sources and that has a temporal dimension." The `995 specification states that the invention is capable of "receiv[ing] an input signal from a source such as a television camera, a conventional VCR, a television tuner, or another VCR, etc." `995 Patent at 7:24, see also `995 Patent at 7:238:2 (describing other sources of input). Likewise, the prosecution history discusses "an audio/video transceiver having the ability to receive audio/video source information from a variety of signal sources." Amendment "A", `995 File History, Payne Dec., Exh. 9 at ABPU 89. Apple's failure to support its objection to "from a variety of sources" inclines the court to accept Burst's construction of "audio/video source information" as meaning "an audio and/or video work that can be received from one or more sources and that has a temporal dimension." Though both parties agree to use "work" to define "audio/video source information," they interpret the term differently. Apple insists that "work" means a complete work, i.e. an entire song or video as opposed to a portion thereof. Under Apple's proposed construction, the patents disclose a sequential process such as that in Mantech Envtl. Corp. v. Hudson Envtl. Serv. Inc., 152 F.3d 1368, 137576 (Fed. Cir. 1998). There, the claim covered a process for rehabilitating a hydrocarbon-contaminated stretch of ground water. The Federal Circuit found that the claim inherently disclosed sequential steps, where each step necessarily relied upon the completion of the prior. Id. at 1376. This case differs from Mantech. Though the steps of Burst's patents are necessarily sequential, each step need not be performed on an entire work before commencement of the 24
13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
Case 3:06-cv-00019-MHP
Document 104
Filed 05/08/2007
Page 25 of 48
1 2 3 4 5 6 7 8 9 10 11 UNITED STATES DISTRICT COURT 12
For the Northern District of California
subsequent step. Rather, the patent covers a sequential and potentially continuous system. The `995 Patent specification states that "[o]nce received in the second VCR-ET's memory . . . the digitized program ca[n] then either be viewed directly from memory or transferred to storage . . . either in its entirety or in random segments, based on user preference." `995 Patent at 10:15 (emphasis added); see also id. at 9:1722 (describing interim storage before storage of entire program is complete). Here, a latter step may be initiated on a portion of some "work" that has been processed in a prior step, though the remainder of the same "work" is still being processed in the earlier step. Apple's argument on this issue relies upon its reading of Mantech to insert the term "complete" into the definition of work. However, the intrinsic evidence suggests no limitation that "work" should include only complete works. The court concludes that "audio/video source information" is equivalent to "an audio and/or video work that can be received from one or more sources and that has a temporal dimension." Additionally, "work" may be a portion of a complete program, permitting subsequent steps to commence before completion of previous steps.
13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
C.
"editing"
The disputed term, "editing," appears in two claims of the `705 Patent and in multiple claims in both the `995 Patent and the `839 Patent. Claim 2 of the `995 Patent is illustrative: 2. An audio/video transceiver apparatus as in claim 1 further comprising editing means, coupled to said random access storage means for editing the time compressed representation of said audio/video source information stored in said random access storage means and for restoring the edited time compressed representation of said audio/video source information in said random access storage means; and wherein said output means is operative for receiving the edited time compressed representation of said audio/video source information stored in said random access storage means for transmission away for said audio/video transceiver apparatus. `995 Patent at 11:819. Both parties agree that "editing" means "modifying." The court first looks at the ordinary meaning of "editing" to determine its definition, which can be found by examining the claim. Teleflex, 299 F.3d at 1325. Editing is described in the specifications as rearranging, altering, 25
Case 3:06-cv-00019-MHP
Document 104
Filed 05/08/2007
Page 26 of 48
1 2 3 4 5 6 7 8 9 10 11 UNITED STATES DISTRICT COURT 12
For the Northern District of California
changing, deleting, inserting, enhancing, superimposing, removing, increasing or decreasing volume or frequency components, and filtering. `995 Patent at 6:2733 (rearranging), 6:4448 (deleting, inserting, enhancing, selecting), 9:1454 (superimposing, altering, removing, adding components); `839 Patent at 12:4652 (rearranging, increasing or decreasing volume, enhancing through filtering techniques). The court finds that "modifying" encompasses all of these functions and is the proper definition of the term "editing." Apple argues that "editing" should be narrowed to mean "modifying the representation of the audio/video source information, not including the creation of playlists or modification of metadata." The court finds no reason to carve out these two functions, and the ordinary meaning of "editing" will not bear such limitations. Both of the disputed functions could conceivably be a form of "editing" if they involve modification of some object. This determination is properly a part of infringement analysis not claim construction. "A claim is construed in the light of the claim language, the other claims, the prior art, the prosecution history, and the specification, not in light of the accused device." SRI Int'l v. Matsushita Elec. Corp. of America, 775 F.2d 1107, 1118 (Fed. Cir. 1985). Thus, it would be improper for the court to construe "editing" with respect to modifying metadata or creating a playlist because these features are a part of the accused device.
13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
D.
"multiplicity"
This term appears in each of the patents, in a total of nine claims. A representative usage of "multiplicity" is: 19. An audio/video transceiver apparatus as in claim 17 in combination with a video library, coupled via a communication link with said audio/video transceiver apparatus, said video library storing a multiplicity of items of audio/video source information in said time compressed representation for selective retrieval, in said associated burst time period over said communications link. `995 Patent at 13:411. The court construes "multiplicity" as "two or more; usually a fairly large number." Although Burst argues that claim construction is unnecessary for "multiplicity," the parties cite to extrinsic evidence indicating that the understandings of the average person and one of ordinary skill in the art 26
Case 3:06-cv-00019-MHP
Document 104
Filed 05/08/2007
Page 27 of 48
1 2 3 4 5 6 7 8 9 10 11 UNITED STATES DISTRICT COURT 12
For the Northern District of California
may differ. Burst's definition from a standard dictionary reads: "a large number." American Heritage Dictionary 822 (2d College ed. 1982). Apple's definition, however, reads: "two or more; usually a fairly large number." Robert C. Faber, Landis on Mechanics of Patent Claim Drafting App. D-14 (5th ed. 2006). While the difference appears minimal, it embodies the parties' dispute regarding "multiplicity" and indicates that jurors would benefit from direction regarding the use by one skilled in the art. The patents employ "multiplicity" in two different ways; both contexts support Apple's construction. In one instance, the term describes a "multiplicity of video frames collectively representing at least one full motion video program." `705 Patent at 12:3840. In another instance, the term is used in connection with a "video library storing a multiplicity of items of audio/video source information. . . ." `995 Patent at 13:78. Apple's definition of multiplicity is supported by the claim language, since a video library constructed by a user may only include a limited number of items. Defining "multiplicity" as "two or more; usually a fairly large number" is also consistent with the usage in the `705 Patent, where the "frames collectively representing at least one full motion video program" indicates that they are numerous. `705 Patent at 12:3840. Thus, the court accepts Apple's construction of "multiplicity."
13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
III.
Means-Plus-Function Terms The final group of terms requires analysis pursuant to 35 U.S.C. section 112, paragraph 6.
For a subset of these
]]>
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?
