Procongps, Inc. v. Star Sensor Technology, LLC., et al.,

Filing 132

CLAIM CONSTRUCTION ORDER (Illston, Susan) (Filed on 2/26/2013)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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SPIREON, INC.,

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Plaintiff,

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United States District Court
For the Northern District of California

No. C 12-01903
CLAIM CONSTRUCTION ORDER

v.

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CALLPASS TECH, LLC,

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Defendant.

/

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On February 13, 2013, the Court held a Markman hearing regarding the construction of certain

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disputed terms in two patents owned by plaintiff. Having considered the arguments of counsel and the

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papers submitted, the Court construes the disputed terms as follows.

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BACKGROUND

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This is a patent infringement action initiated by plaintiff Spireon, Inc. against defendant CallPass

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Tech LLC. Spireon asserts claims 1-6, 10-11, 13 and 18 of U.S. Patent No. 6,025,774 (the “‘774

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patent”) and claims 1-7, 10, 13, 15, 18-19 of U.S. Patent No. 6,249,217 (the “‘217 patent”). Both

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patents received Reexamination Certificates. Joint Claim Construction Statement (Dkt. 23), Ex. B and

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D.

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1.

The Patents

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According to the complaint, Spireon purchased the patents in suit on or about June 27, 2011.

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Prior to that, Spireon (previously named ProconGPS, Inc.) had obtained non-exclusive licenses for the

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patents and built a business in the vehicle finance tracking industry. Compl. (Dkt. 1) ¶¶ 11-12. Both

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patents are titled “Method for Retrieving Vehicular Collateral,” and concern location tracking in the

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subprime vehicle finance industry. According to Spireon, the improved security of collateral in the form

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of the vehicle itself has allowed auto dealers and financial institutions to “offer their products and

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services to a dramatically wider market.” Id. ¶ 12. Spireon alleges that defendant’s various products

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and services infringe the asserted patents, literally or under the doctrine of equivalents, directly or

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indirectly (through induced or contributory infringement).
The patents in suit were subject to an ex parte reexamination in the PTO requested by an

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independent third party, and in June 2011, the PTO issued a Certificates of Reexamination for each

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patent. Joint Claim Construction Statement (Dkt. 23), Exs. B and D. The independent claims of the

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United States District Court
For the Northern District of California

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patents were amended to include the use of GPS technology.1 Spireon alleges that the defendant has

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been aware of the reexamination and of the infringing status of its products, and that its infringement

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has been willful. Id. ¶¶ 15, 21.

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The patents share the same title (“Method For Retrieving Vehicular Collateral”) and written
description, which describes the method as follows:

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In accordance with the present invention, there is provided a method of securing
collateral for a loan when indicated by a loan status wherein the collateral is a
vehicle. The method provides for installing a transmitter within the vehicle. The
transmitter is capable of transmitting locational data regarding the vehicle. The
loan status is monitored for a default condition. A data link is established from a
base terminal to the transmitter of the vehicle upon an occurrence of the default
condition in the loan status. Locational data is transmitted from the transmitter of
the vehicle to the base terminal via the data link. The location of the vehicle is
determined from the locational data transmitted to the base terminal. Finally, the
vehicle is confiscated.
‘774 (Abstract)

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There is one independent claim in the ‘774 patent (disputed terms are in bold):

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1. A method of securing collateral for a loan when indicated by a loan status
wherein the collateral comprises a vehicle, the method comprising the steps of:
(a) installing a transmitter within the vehicle, the transmitter being capable of
transmitting locational data regarding the vehicle;
(b) monitoring the loan status for a default condition;
(c) establishing a data link from a base terminal to the transmitter of the

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Specifically, claims 1 (quoted as amended, infra) and 11 of the ‘774 patent were amended to
include the “wherein” clauses; the previous dependent claims were deemed patentable with
amendments; and new claims 16-24 were added. With respect to the ‘217 patent, claim 11 was
cancelled; claims 1 (quoted as amended, infra) and 15 were amended; prior dependent claims were
deemed patentable with amendments; and new claims 16-26 were added.
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vehicle upon an occurrence of the default condition in the loan status;

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(d) transmitting locational data from the transmitter of the vehicle to the base
terminal via the data link;
(e) determining the location of the vehicle from the locational data transmitted
to the base terminal; and
(f) confiscating the vehicle;
wherein step (a) further comprises the step of: (1) installing a GPS positioning
signal receiver; and
wherein step (c) further comprises the step of: (1) receiving a GPS positioning
signal; and
wherein the transmitted locational data being based upon the received GPS
positional signal. (‘774 Reexamination Certificate, 1:25-47).

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The two independent claims in the ‘217 patent are similar (disputed terms are in bold):
1. A method of securing collateral for a loan when indicated by a loan status,
the collateral comprises a vehicle, a transmitter capable of transmitting locational
data regarding the vehicle is installed within the vehicle, the method comprising
the steps of:
(a) receiving a signal in response to a change in the loan status;
(b) establishing a data link from a base terminal to the transmitter upon the
receipt of the signal representative of a change in the loan status;
(c) transmitting locational data from the transmitter to the base terminal via
the data link; and
(d) determining the location of the vehicle from the locational data transmitted
to the base terminal for use in confiscating the vehicle;
wherein a GPS positioning signal receiver is installed within the vehicle and the
transmitted locational data is based upon a received GPS positioning signal.
(‘217 Reexamination Certificate, 1:27-45).

United States District Court
For the Northern District of California

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Two additional terms occur in dependent claims:

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Dependent claim 15 of ‘217 is identical to Claim 1, except that step (b) ends with “signal

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representative of the loan status being in a default condition.” (‘217 Reexamination Certificate,

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1:52-1:55).

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Dependent claim 18 recites: “The method of claim 1, further comprising establishing a data

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link from a global positioning satellite (GPS) to the GPS positioning signal receiver upon receipt

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of a transmit request signal.” (‘217 Reexamination Certificate, 2:13-16).

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2.

Prior Construction Order

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Several of the terms in the present case were previously considered in ProconGPS, Inc. v. Star

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Sensor, LLC, Case No. 11-cv-03975-SI, Dkt. No. 80 (“ProconGPS Order”), an infringement action

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asserting the same patents. Spireon (formerly ProconGPS) takes a consistent position in the present
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case.

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Term to be Construed

Prior Construction

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1. “establishing a data link from a base terminal to
the transmitter”
2. “upon an occurrence of the default condition in
the loan status”
3. “signal representative of a change in the loan
status”/“signal representative of the loan status
being in a default condition”

“establishing a data link between a
base terminal and the transmitter”
“following an occurrence of the
default condition in the loan status”
No construction necessary

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The Court rejected Star Sensor’s argument that establishing a data link from a base terminal to the

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transmitter contained a directionality requirement. Id. at 12. The Court also rejected Star Sensor’s

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United States District Court
For the Northern District of California

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arguments that “upon” should be defined as “at the time of and as a result of an occurrence” based on

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the lack of evidence that the only time a signal can be transmitted is in connection with a change in

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status or the occurrence of default condition. Id. at 12.2

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LEGAL STANDARD

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Claim construction is a matter of law. Markman v. Westview Instr., Inc., 517 U.S. 370, 372

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(1996). Terms contained in claims are “generally given their ordinary and customary meaning. Phillips

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v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). “[T]he ordinary and customary meaning of a

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claim term is the meaning that the term would have to a person of ordinary skill in the art in question

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at the time of the invention.” Id. at 1312. In determining the proper construction of a claim, a court

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begins with the intrinsic evidence of record, consisting of the claim language, the patent specification,

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and, if in evidence, the prosecution history. Id. at 1313; see also Vitronics Corp. v. Conceptronic, Inc.,

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90 F.3d 1576, 1582 (Fed. Cir. 1996). “The appropriate starting point . . . is always with the language

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of the asserted claim itself.” Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed.

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Cir. 1998); see also Abtox, Inc. v. Exitron Corp., 122 F.3d 1019, 1023 (Fed. Cir. 1997).

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Accordingly, although claims speak to those skilled in the art, claim terms are construed in light

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of their ordinary and accustomed meaning, unless examination of the specification, prosecution history,

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CallPass proposes a different construction of “upon.”
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and other claims indicates that the inventor intended otherwise. See Electro Medical Systems, S.A. v.

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Cooper Life Sciences, Inc., 34 F.3d 1048, 1053 (Fed. Cir. 1994). While claims are interpreted in light

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of the specification, this “does not mean that everything expressed in the specification must be read into

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all the claims.” Raytheon Co. v. Roper Corp., 724 F.2d 951, 957 (Fed. Cir. 1983). For instance,

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limitations from a preferred embodiment described in the specification generally should not be read into

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the claim language. See Comark, 156 F.3d at 1187; see also Decisioning.com, Inc. v. Federated Dep’t

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Stores, Inc., 527 F.3d 1300, 1314 (Fed. Cir. 2008) (“[The] description of a preferred embodiment, in the

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absence of a clear intention to limit claim scope, is an insufficient basis on which to narrow the

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claims.”); Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 540 F.3d 1337, 1345-46 (Fed. Cir.

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United States District Court
For the Northern District of California

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2008) (refusing to limit claim language to the disclosed embodiment in the absence on indication that

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the inventor meant to limit the claim language). However, it is a fundamental rule that “claims must be

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construed so as to be consistent with the specification.” Phillips, 415 F.3d at 1316.

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Finally, the Court may consider the prosecution history of the patent, if in evidence. Markman,

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52 F.3d at 980. In most situations, analysis of this intrinsic evidence alone will resolve claim

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construction disputes. See Vitronics, 90 F.3d at 1583. Courts should not rely on extrinsic evidence in

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claim construction to contradict the meaning of claims discernable from examination of the claims, the

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written description, and the prosecution history. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182

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F.3d 1298, 1308 (Fed. Cir. 1999) (citing Vitronics, 90 F.3d at 1583). However, it is entirely appropriate

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“for a court to consult trustworthy extrinsic evidence to ensure that the claim construction it is tending

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to from the patent file is not inconsistent with clearly expressed, plainly apposite, and widely held

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understandings in the pertinent technical field.” Id. Extrinsic evidence “consists of all evidence external

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to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned

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treatises.” Phillips, 415 F.3d at 1317. All extrinsic evidence should be evaluated in light of the intrinsic

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evidence. Id. at 1319.

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DISCUSSION

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Courts are to determine the “ordinary and customary meaning of a claim term, [that is] the

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meaning that the term would have to a person of ordinary skill in the art in question at the time of the
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invention.” Phillips, 415 F.3d at 1312-13. Spireon notes, as it had previously stated in concurrent

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litigation, that in this case, a person of ordinary skill in the art is a person with 1-2 years in the “buy

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here pay here” or “subprime” vehicle finance industry; the patentee, Mark Forbes, was a “repo man.”

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Baum Decl., Ex. 4 (Dkt. 25-5), Chen Declaration at ¶ 10. CallPass does not dispute this standard. In

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the August 9, 2012 Claim Construction Order addressing the same patents-in-suit, the Court adopted

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this standard for a person of ordinary skill in the art in question. ProconGPS, Inc. v. Star Sensor et al,

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see Case No. 11-03975, Dkt. 80, at 6 (“ProconGPS Order”). Thus, the present patent claims are not

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addressed to an audience with significant technical expertise. Phillips further dictates:

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United States District Court
For the Northern District of California

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The inquiry into how a person of ordinary skill in the art understands a claim term
provides an objective baseline from which to begin claim interpretation. . . . In 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.
Phillips, 415 F.3d at 1312-14 (citing Brown v. 3M, 265 F.3d 1349, 1352 (Fed.Cir. 2001)).

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1. “establishing a data link from a base terminal to the transmitter”
Prior Construction
establishing a data link between a
base terminal and the transmitter

Spireon
No change from prior
construction

CallPass
No construction
required

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The parties dispute whether “from a base terminal to the transmitter” includes a directionality
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requirement. Spireon contends that the Court’s previous construction of this term as “establishing a
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data link between a base terminal and the transmitter” is supported because the specification uses the
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words “between . . . and” as demonstrated by the portion of Figure 2 of the ‘774 patent, which is
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referred to as the “flow diagram of steps of the method of the present invention” (‘774: 2:57-58)
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(emphasis added):
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CallPass contends that the words “from . . . to” constitute a claim limitation and that the substitution of

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“between” “inappropriately broadens the scope of the claims.” CallPass’s Claim Construction Brief

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(Dkt. 26, “Def. Br.”) at 1. The Federal Circuit has held, however, that when references to “the present

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invention” do not use uniform language with respect to the rest of the specification, there is no clear

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disclaimer or disavowal of scope. Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121, 1136-

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37 (Fed. Cir. 2011) (collecting prior cases). Therefore, the use of “from . . . to” in some parts of the

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specification does not explicitly disclaim the “between . . . and” construction used in reference to the

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present invention in the flow chart.
Spireon also argues that the previous construction is correct because the embodiments include

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United States District Court
For the Northern District of California

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scenarios where the transmitter originates the signal, such as when the transmitter or the car is being

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tampered with. See ‘774, 5:27-37 (“the retrieval apparatus 12 and/or components thereof (e.g.,

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transmitter 14, base communication receiver 16, GPS positioning signal receiver 22, etc.) are configured

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to be capable of sensing any physical tampering therewith and transmitting a tamper signal in response

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to any sensed tampering”). Spireon further notes that a “claim interpretation that excludes a preferred

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embodiment from the scope of the claim is rarely, if ever, correct.” Pl. Reply at 6 (quoting On-Line

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Techs., Inc. v. Bodenseewerk Perkin–Elmer GmbH, 386 F.3d 1133, 1138 (Fed. Cir. 2004)).

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CallPass argues that there is no reason to construe the term, because the words “from . . . to”

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are readily understandable by a lay person, and that “actual words in a claim must be given their actual

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meaning.” Def. Br. at 6, citing Chef America Inc. v. Lamb-Wesson Inc., 358 F.3d 1371 (Fed. Cir. 2004)

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(refusing to change claim language regarding heating “to a temperature” in the range of about 400° F.

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to 850° F. to “at a temperature” even though specification supported the latter interpretation because

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“[i]t is the job of the patentee, and not the court, to write patents carefully and consistently.”). CallPass

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also points to a preferred embodiment which states:

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Upon the loan status being in a default condition 32, the base terminal 20
originates and transmits 36 a transmit signal request. The base communications
receiver 16 is configured to receive the transmit request signal from the base
terminal 20. Thus, a data link is established between the base terminal 20 and
retrieval apparatus 12 disposed within the vehicle 10.
(‘774, 4:4-13) (emphasis added).
However, CallPass does not address in its brief an embodiment where the transmitter initiates
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a data link upon tampering. See ‘774, 5:27-37. More recently, the Federal Circuit has held that the

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“court strives to reach a claim construction that does not render claim language in dependent claims

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meaningless.” Ortho-McNeil Pharm., Inc. v. Mylan Laboratories, Inc., 520 F.3d 1358, 1362 (Fed. Cir.

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2008) (citing Rambus Inc. v. Infineon Tech. AG, 318 F.3d 1081, 1093 (Fed. Cir. 2003)). In particular,

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claim 7 of the ‘774 patent recites:

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7. The method of claim 1 wherein the transmitter is capable of sensing any
physical tampering therewith and transmitting a tamper signal in response to any
sensed tampering, step (c) further comprises the step of: (1) establishing the data
link from the base terminal to the transmitter upon the sensing of any physical
tampering with the transmitter.

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(‘774, 7:33-39) (The ‘217 patent contains similar claim as claim 8). In this claim, it is the transmitter

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United States District Court
For the Northern District of California

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which is being tampered with and which must initiate the data link, but the data link is still described

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as “from the base terminal to the transmitter.” Therefore, this use of the words “from . . . to” suggests

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that “establishing a data link” does not have a directional requirement and is the same as “between.”

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At oral argument, CallPass argued that the dependent claim should be interpreted as the

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transmitter sends a tampering signal directly to the financial institution, which then initiates establishing

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the data link from the base terminal to the transmitter. Such an interpretation, while plausible, is not the

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most reasonable interpretation of the patent language. Figure 1 shows the transmitter/receiver unit in

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the car communicating with the base terminal and the GPS satellite only, and there is no separate direct

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link to the financial institution. The communication between the transmitter/receiver and the base

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terminal is indicated to be moving in both directions by the curved lines emanating from each end.

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Figure 2 includes a “Verify Operation” 52 and “Tampering” 54 check steps, which proceed directly to

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“Establish A Data Link Between Base Terminal and Transmitter/Receiver” 34 step. Finally, the

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specification states: “In addition, the transmitter is capable of sensing any physical tampering therewith

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and a tamper signal is transmitted in response to any sensed tampering via data link.” (‘774, 1:67-2:3)

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(emphasis added). This interpretation is also consistent with the “[t]hus, a data link is established”

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specification language quoted supra. See ‘774, 4:4-13. There is no separate step describing contact

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between the transmitter/receiver and any other device that could then initiate the data link. Requiring

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the addition of such a step would add significant content to the claims and specification that is not

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present there.
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In Ortho-McNeil, the Federal Circuit distinguished the facts from Chef America, finding that:

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Chef America does not require this court or the district court to interpret [the
word “and”] according to its most common usage in the dictionary. To the
contrary, this court and the district court must interpret the term to give proper
meaning to the claim in light of the language and intrinsic evidence. Giving
“and” its most common dictionary meaning would produce in this case the
nonsensical result of. . . rendering several other dependent claims meaningless.

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520 F.3d at 1362. The Court finds that Ortho-McNeil applies here, and the most reasonable
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interpretation of “from . . . to” in light of the specification and the dependent claim is that no
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directionality is required; thus, the Court maintains it previous construction. Therefore, the Court
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United States District Court
For the Northern District of California

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construes establishing a data link from a base terminal to the transmitter as: establishing a data
link between a base terminal and the transmitter.

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2. “upon an occurrence of the default condition in the loan status”
Prior Construction
Spireon
following an occurrence of the
No change from prior
default condition in the loan status construction

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CallPass
immediately following or
very soon after an
occurrence of the default
condition in the loan
status

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CallPass seeks to add “immediately” or “very soon” to the construction because it is concerned
that the “Plaintiff intends to abuse the construction by using the word ‘following’ in a way that does not
mean ‘upon.’ Instead, Plaintiff apparently intends to assert that the claims encompass locating a vehicle
by GPS at any time after a loan goes into default, even coincidentally.” Def Br. at 8. (emphasis in the
original). CallPass cites dictionaries for the differences of meaning between “upon” and “following.”
However, CallPass does not present any intrinsic evidence that supports the view that “upon” is intended
to mean “immediately or very soon after” in the context of the patent.3
Spireon rebuts this accusation, and argues that “immediately” or “very soon” would introduce
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CallPass refers to Edgar Allen Poe’s poem “The Raven,” which begins with “Once upon a
midnight dreary….” to argue that “upon” means “on a dreary midnight, not to events that happened on
some other day, month, or year that was after that dreary midnight.” Id. That is, however, not relevant
to the term being construed, as “once upon” is “used at the beginning of children's stories to mean ‘a
long time ago’” or “used in a slightly literary way when referring to something that happened in the
past.” Cambridge Advanced Learner's Dictionary & Thesaurus © Cambridge University Press;
http://dictionary.cambridge.org/dictionary/british/once-upon-a-time
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further ambiguity.

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specification:

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Spireon argues that “following” captures the meaning as described in the

The method of the present invention may further include monitoring 30 the
status of the loan to [sic] for a delinquent condition 50 and subsequently
establishing 34 a data link from the base terminal to the transmitter 14 upon an
occurrence of the delinquent condition.

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(’774, 4:24-29) (emphasis added). Spireon notes that in the context of loan payments, time is measured
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in business days, and there may be a delay in real time between actions, such as when “a default
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condition occurs when a vehicle holder fails to make a payment by the close of business on a Friday
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United States District Court
For the Northern District of California

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(i.e., pay day). In that case, the ‘establishing a data link’ step might occur on the following day, or even
the following Monday.” Pl. Br. at 10.
The Court finds that because a person of ordinary skill in the art would have experience with
subprime loan financing, rather than technology of signal transmission, it is a reasonable interpretation
of the patent language that “upon” may mean the following business day and may include a delay in real
time between loan status change and transmission of signal. A reasonable jury is unlikely to interpret
“following” or “upon” to mean that no connection to default loan status was intended by the patentee,
as CallPass fears. At oral argument, both parties conceded that “following on” substantially captures
the meaning of “upon” in the claims, and the Court finds “following on” to be essentially synonymous
with “following.” Therefore, the Court construes upon an occurrence of the default condition in the
loan status as: following an occurrence of the default condition in the loan status.

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3. “signal representative of a change in the loan status” (‘217, Claim 1) and
“signal representative of the loan status being in a default condition” (‘217, Claim 15)
Prior Construction
No construction
necessary

Spireon
No construction
necessary

CallPass
signal that provides data regarding the
loan status /
signal that provides data regarding the
loan status being in a default condition

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CallPass argues that construction of this term is necessary because “Plaintiff asserts that the

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signal need not represent anything.” Def. Br. at 10. CallPass contends that this is a “broadening

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redefinition engaged in by Plaintiff” motivated by infringement analysis. Id. at 11. Spireon, however,
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does not seek a broadening redefinition but seeks to present the term to the jury as it is stated in the

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claim. Further, the definition proposed by CallPass does not add anything to the term itself because a

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“signal representative of a change in loan status” provides data about the loan status, namely that the

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status has changed or the default condition has occurred. Spireon likens the signal to a “check engine”

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light on a car that does not communicate the precise status of the engine, but is representative of change

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in status of the engine. Spireon further notes that the car’s transmitter would be unable to utilize any

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additional data about the loan status (which is true of the base terminal described, as well) but only

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responds to the signal by establishing a link and transmitting locational data. Because CallPass does

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not offer sufficient evidence to require the construction of this term and the proposed definition does

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United States District Court
For the Northern District of California

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not add clarity to its plain meaning, the Court again declines to construe the term unnecessarily. See

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O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1361 (Fed. Cir. 2008) (“Claim

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construction ‘is not an obligatory exercise in redundancy.’”) (quoting U.S. Surgical Corp. v. Ethicon,

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Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997)).

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4. “method of securing collateral for a loan” (‘217, Claim 1, 15; ‘774, Claim 1)
Prior Construction
Not subject to
construction. The Court
declined to construe the
term “loan”

Spireon
No construction
necessary

CallPass
method of locating property that a
lender has a right to take from a
borrower if the borrower fails to
meet the terms of a loan

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CallPass argues that “while a jury would readily understand the word ‘loan,’ it may not

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understand that collateral is pledged against the loan, giving the lender the right to take it back if the

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borrower fails to meet the terms of the loan.” Def. Br. at 11. Spireon responds that the preamble term

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needs no construction because the claims require that the collateral be a vehicle and points to consistent

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language in the specification. Pl. Br. at 12; see ’774 Reexamination Certificate, claims 1, 15 (“the

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collateral comprises a vehicle”), ’217 Reexamination Certificate, claim 1 (“wherein the collateral

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comprises a vehicle”).4

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The Federal Circuit has addressed when a preamble in a claim should be considered limiting:

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[C]lear reliance on the preamble during prosecution to distinguish the claimed
invention from the prior art transforms the preamble into a claim limitation
because such reliance indicates use of the preamble to define, in part, the claimed
invention. . . .Without such reliance, however, a preamble generally is not
limiting when the claim body describes a structurally complete invention such
that deletion of the preamble phrase does not affect the structure or steps of the
claimed invention. . . . Thus, preamble language merely extolling benefits or
features of the claimed invention does not limit the claim scope without clear
reliance on those benefits or features as patentably significant. . . .
Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1375 (Fed.
Cir. 2001) (steps of claimed method are performed the same way regardless of
whether, as stated in the preamble, a reduction of hematologic toxicity occurs).

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United States District Court
For the Northern District of California

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Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809-10 (Fed. Cir. 2002) (internal
citations omitted).
CallPass contends that the following phrase in the file wrapper supports its proposed
construction: “The loan is secured by knowing where the collateral is located.” Def. Br. at 12, (citing
Harkins Dec. Ex. 9, ‘774 Reexamination File Wrapper, Ex Parte Reexamination Final Office Action,
12/17/2010, p. 63; ‘217 Reexamination File Wrapper, Ex Parte Reexamination Final Office Action,
12/17/2010, p. 3.). However, CallPass fails to show how this statement supports its definition or that
it constitutes “clear reliance on the preamble during prosecution to distinguish the claimed invention
from the prior art.” Catalina Mktg., 289 F.3d at 809. The Court finds that as in Bristol-Myers, the steps
of claimed method would be performed the same way regardless of the proposed construction. Id. See
also Intirtool, Ltd. v. Texar Corp., 369 F.3d 1289, 1296 (Fed. Cir. 2004) (“In short, the preamble adds
nothing to this highly detailed claim and thus cannot be considered to give ‘life, meaning, and vitality’
to it.”); Marrin v. Griffin, 599 F.3d 1290 (Fed. Cir. 2010) (finding that the preamble is not a limitation
on claim scope). Without a showing of clear reliance on the preamble in the prosecution history, or the
need to construe the term, the Court declines to construe method of securing collateral for a loan.

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The loan process is further described in sufficient detail in the “Background of the Invention”
section of the specification. (‘774, 1:10-48).
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5. “establishing a data link from a global positioning satellite (GPS) to the GPS positioning
signal receiver upon receipt of a transmit request signal” (‘217, Claim 18, ‘774 Claim 18)”

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The parties agree that this term is resolved by the constructions of previously discussed terms:
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“establishing a data link from . . . to . . .” and “upon.” Def. Br. at 13, Pl. Reply at 11. Therefore,
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the Court construes establishing a data link from a global positioning satellite (GPS) to the GPS
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positioning signal receiver upon receipt of a transmit request signal as establishing a data link
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between a global positioning satellite (GPS) and the GPS positioning signal receiver following
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receipt of a transmit request signal.
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CONCLUSION

United States District Court
For the Northern District of California

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For the foregoing reasons and for good cause shown, the Court adopts the constructions set forth

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above.

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IT IS SO ORDERED.

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Dated: February 26, 2013

________________________
SUSAN ILLSTON
United States District Judge

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