Cisco Systems, Inc. v. Teleconference Systems, LLC et al

Filing 300

SECOND CLAIMS CONSTRUCTION ORDER. Signed by Judge JEFFREY S. WHITE on 3/16/12. (jjoS, COURT STAFF) (Filed on 3/16/2012)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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CISCO SYSTEMS, INC.,

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For the Northern District of California

United States District Court

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No. C 09-01550 JSW

Plaintiff,
v.
TELECONFERENCE SYSTEMS, LLC, et al.,

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SECOND CLAIMS
CONSTRUCTION ORDER

Defendants.

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No. C 10-01325 JSW

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TELECONFERENCE SYSTEMS, LLC,
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Plaintiff,
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v.
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TANDBERG, INC., et al.,
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Defendants.
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No. C 10-05740 JSW
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TELECONFERENCE SYSTEMS, LLC,
Plaintiff,

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v.
AT&T CORP., et al.,
Defendants.
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The Court has been presented with a technology tutorial and briefing on the construction

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of claim terms Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). This Order

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construes the tenth claim term selected by the parties which appear in the patent at issue in this

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case, United States Patent No. 6,980,526 (“the ‘526 Patent”) called the “Multiple Subscriber

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Videoconferencing System.”

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BACKGROUND

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Teleconference Systems, LLC and Margalla Communications, Inc.’s (“Plaintiffs”)

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contends that Cisco System, Inc., HSBC USA, Inc., Baxter Healthcare Corporation, Applied

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Materials, Inc., Wachovia Corporation, Staples, Inc., Enbridge Holdings (U.S.), L.L.C., General
Electric Company, SAP America, Tandberg, Inc., Avago Technologies U.S. Inc, Bayer

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For the Northern District of California

United States District Court

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Corporation, One Communications Corp., AT&T Corporation, and Frito-Lay North America,

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Inc. (collectively referred to as “Defendants”) infringe the ‘526 Patent.

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The Court shall address additional facts as necessary in the remainder of this Order.

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ANALYSIS
A.

Legal Standard.
“It is a bedrock principle of patent law that the claims of a patent define the invention to

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which the patentee is entitled the right to exclude.” Innova/Pure Water, Inc. v. Safari Water

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Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004). The interpretation of the scope and

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meaning of disputed terms in patent claims is a question of law and exclusively within the

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province of a court to decide. Markman, 517 U.S. at 372. The inquiry into the meaning of the

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claim terms is “an objective one.” Innova/Pure Water, 381 F.3d at 1116. As a result, when a

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court construes disputed terms, it “looks to those sources available to the public that show what

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a person of skill in the art would have understood the disputed claim language to mean.” Id. In

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most cases, a court’s analysis will focus on three sources: the claims, the specification, and the

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prosecution history. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995)

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(en banc), aff’d, 517 U.S. 370 (1996). However, on occasion, it is appropriate to rely on

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extrinsic evidence regarding the relevant scientific principles, the meaning of technical terms,

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and the state of the art at the time at the time the patent issued. Id. at 979-981.
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The starting point of the claim construction analysis is an examination of the specific

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claim language. A court’s “claim construction analysis must begin and remain centered on the

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claim language itself, for that is the language that the patentee has chosen to particularly point

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out and distinctly claim the subject matter which the patentee regards as his invention.”

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Innova/Pure Water, 381 F.3d at 1116 (internal quotations and citations omitted). Indeed, in the

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absence of an express intent to impart a novel meaning to a term, an inventor’s chosen language

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is given its ordinary meaning. York Prods., Inc. v. Cent. Tractor Farm & Family Center, 99

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F.3d 1568, 1572 (Fed. Cir. 1996). Thus, “[c]laim language generally carries the ordinary

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meaning of the words in their normal usage in the field of the invention.” Invitrogen Corp. v.
Biocrest Mfg., L.P., 327 F.3d 1364, 1367 (Fed. Cir. 2003); see also Renishaw v. Marposs

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For the Northern District of California

United States District Court

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Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998) (recognizing that “the claims define

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the scope of the right to exclude; the claim construction inquiry, therefore, begins and ends in

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all cases with the actual words of the claim”). A court’s final construction, therefore, must

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accord with the words chosen by the patentee to mete out the boundaries of the claimed

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invention.

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The court should also look to intrinsic evidence, including the written description, the

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drawings, and the prosecution history, if included in the record, to provide context and

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clarification regarding the intended meaning of the claim terms. Teleflex, Inc. v. Ficosa N. Am.

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Corp., 299 F.3d 1313, 1324-25 (Fed. Cir. 2002). The claims do not stand alone. Rather, “they

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are part of ‘a fully integrated written instrument.’” Phillips v. AWH Corp., 415 F.3d 1303, 1315

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(Fed. Cir. 2005) (en banc) (quoting Markman, 52 F.3d at 978). The specification “may act as a

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sort of dictionary, which explains the invention and may define terms used in the claims.”

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Markman, 52 F.3d at 979. The specification also can indicate whether the patentee intended to

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limit the scope of a claim, despite the use of seemingly broad claim language. SciMed Life Sys.,

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Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001) (recognizing

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that when the specification “makes clear that the invention does not include a particular feature,

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that feature is deemed to be outside the reach of the claims of the patent, even though the

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language of the claims, read without reference to the specification, might be considered broad

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enough to encompass the feature in question”).

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Intent to limit the claims can be demonstrated in a number of ways. For example, if the

the disputed claim term in either the specification or prosecution history,” a court will defer to

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that definition. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). In

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order to so limit the claims, “the patent applicant [must] set out the different meaning in the

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specification in a manner sufficient to give one of ordinary skill in the art notice of the change

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from ordinary meaning.” Innova/Pure Water, 381 F.3d at 1117. In addition, a court will adopt

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an alternative meaning of a term “if the intrinsic evidence shows that the patentee distinguished

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For the Northern District of California

patentee “acted as his own lexicographer,” and clearly and precisely “set forth a definition of

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United States District Court

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that term from prior art on the basis of a particular embodiment, expressly disclaimed subject

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matter, or described a particular embodiment as important to the invention.” CCS Fitness, 288

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F.3d at 1367. For example the presumption of ordinary meaning will give way where the

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“inventor has disavowed or disclaimed scope of coverage, by using words or expressions of

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manifest exclusion or restriction, representing clear disavowal of claim scope.” Gemstar-TV

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Guide Int’l Inc. v. ITC, 383 F.3d 1352, 1364 (Fed. Cir. 2004). Likewise, the specification may

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be used to resolve ambiguity “where the ordinary and accustomed meaning of the words used in

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the claims lack sufficient clarity to permit the scope of the claim to be ascertained from the

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words alone.” Teleflex, 299 F.3d at 1325.

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However, limitations from the specification (such as from the preferred embodiment)

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may not be read into the claims, absent the inventor’s express intention to the contrary. Id. at

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1326; see also CCS Fitness, 288 F.3d at 1366 (“[A] patentee need not ‘describe in the

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specification every conceivable and possible future embodiment of his invention.’”) (quoting

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Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1344 (Fed. Cir. 2001)). To protect against this

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result, a court’s focus should remain on understanding how a person of ordinary skill in the art

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would understand the claim terms. Phillips, 415 F.3d at 1323.

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If the analysis of the intrinsic evidence fails to resolve any ambiguity in the claim

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language, a court then may turn to extrinsic evidence, such as expert declarations and testimony
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from the inventors. Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1367 (Fed. Cir. 2003)

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(“When an analysis of intrinsic evidence resolves any ambiguity in a disputed claim term, it is

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improper to rely on extrinsic evidence to contradict the meaning so ascertained.”) (emphasis in

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original). When considering extrinsic evidence, a court should take care not to use it to vary or

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contradict the claim terms. Rather, extrinsic evidence is relied upon more appropriately to

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assist in determining the meaning or scope of technical terms in the claims. Vitronics Corp. v.

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Conceptronic, Inc., 90 F.3d 1576, 1583-84 (Fed. Cir. 1996).

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Dictionaries also may play a role in the determination of the ordinary and customary

comparable sources are often useful to assist in understanding the commonly understood

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For the Northern District of California

meaning of a claim term. In Phillips, the Federal Circuit reiterated that “[d]ictionaries or

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United States District Court

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meanings of words....” Phillips, 415 F.3d at 1322. The Phillips court, however, also

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admonished that district courts should be careful not to allow dictionary definitions to supplant

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the inventor’s understanding of the claimed subject matter. “The main problem with elevating

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the dictionary to ... prominence is that it focuses the inquiry on the abstract meaning of the

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words rather than on the meaning of claim terms within in the context of the patent.” Id. at

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1321. Accordingly, dictionaries necessarily must play a role subordinate to the intrinsic

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evidence.

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In addition, a court has the discretion to rely upon prior art, whether or not cited in the

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specification or the file history, but only when the meaning of the disputed terms cannot be

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ascertained from a careful reading of the public record. Vitronics, 90 F.3d at 1584. Referring to

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prior art may make it unnecessary to rely upon expert testimony, because prior art may be

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indicative of what those skilled in the art generally understood certain terms to mean. Id.

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B.

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Claim Construction.
The parties have clarified that they seek construction of the term “configuring the switch

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to connect calls” as the tenth term. Plaintiffs contend that this term does not need construction

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because it will be readily comprehensible to the finder of fact. Defendants counter that the term

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should be construed to mean “registering subscriber terminal network addresses at the

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videoconferencing services switch using registration messages from the subscriber terminals.”
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Plaintiffs do not dispute that “configuring the switch” may include registering subscriber

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terminal network addresses, but argue that there is no support in the ‘526 Patent for limiting the

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term in this manner. Upon review of the intrinsic evidence, the Court agrees. “Configuring”

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may include, but is not limited to, registering subscriber terminal network addresses.

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Accordingly, the Court rejects Defendants’ proposed construction. Moreover, as Plaintiffs note

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in their reply brief, Defendants have not provided any explanation as to why a jury would

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struggle with understanding the term “configuring.” Therefore, the Court finds that this term

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does not need construction.

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CONCLUSION
Based on the analysis set forth above, the Court adopts the foregoing construction of the

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For the Northern District of California

United States District Court

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term “configuring the switch to connect calls.” The parties are ordered to submit a further joint

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case management report pursuant to Patent Standing Order ¶ 13 by no later than May 4, 2012.

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The Court further orders that the motion filed by Teleconference Systems, LLC (“TS”) for leave

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to serve and file supplemental infringement contentions is HEREBY STRUCK without

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prejudice. In its motion, TS noted that the Court had not yet construed this tenth term and

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stated that, depending on the Court’s construction of this term, additional modification or

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supplementation of TS’s infringement contentions may be necessary. The Court prefers to

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adjudicate any requests to supplement infringement contentions in one motion, as opposed to

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successive motions. Therefore, now that the Court has issued its construction of the remaining

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term, the parties may consider whether they seek any additional changes or supplementation of

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their infringement contentions. TS may amend its motion to address the Court’s construction of

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the term “configuring the switch to connect calls.” If TS does not seek leave to further

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supplement its infringement contentions, then TS may simply refile its motion.

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IT IS SO ORDERED.

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Dated: March 16, 2012
JEFFREY S. WHITE
UNITED STATES DISTRICT JUDGE

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For the Northern District of California

United States District Court

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