GoPro, Inc. v. C&A Marketing, Inc. et al

Filing 80

CLAIM CONSTRUCTION ORDER. Signed by Judge Jon S. Tigar on July 24, 2017. (wsn, COURT STAFF) (Filed on 7/24/2017)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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GOPRO, INC.,

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Plaintiff,

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CLAIM CONSTRUCTION ORDER

v.

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Re: ECF Nos. 42, 48
C&A MARKETING, INC., et al.,

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Defendants.

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United States District Court
Northern District of California

Case No. 16-cv-03590-JST

Before the Court is Plaintiff GoPro, Inc.’s (“GoPro”) Opening Claim Construction Brief,

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ECF No. 42, and Defendants C&A Marketing, Inc., C&A Licensing, LLC, and PLR IP Holdings,

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LLC’s (collectively, “C&A”) Responsive Claim Construction Brief, ECF No. 42. The parties

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propose competing constructions of four terms of U.S. Patent No. 9,025,896 (the “’896 patent”).

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The Court will construe the terms as set forth below.

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I.

BACKGROUND

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A.

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GoPro filed its complaint in this action on June 27, 2016, alleging infringement of the ’896

Procedural History

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patent, in addition to U.S. Patent No. 9,282,226 (the “’226 patent”).1 ECF No. 1. On March 17,

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2017, the parties filed their Joint Claim Construction and Prehearing Statement pursuant to Patent

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Local Rule 4-3. ECF No. 38. In that statement, the parties agreed that the asserted claims of the

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’226 patent “require no construction and should be given their plain and ordinary meaning.” Id. at

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2. On April 28, 2017, GoPro filed its Opening Claim Construction Brief. ECF No. 42. On May

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On April 14, 2017, GoPro filed a motion for leave to amend its complaint to allege infringement
of two design patents by C&A’s Polaroid XS80, XS100, and XS100i cameras and Polaroid XS80
and XS100 Lens Replacement Kits. ECF No. 39. In reliance on representations by C&A that it
would not make, use, offer to sell, or sell within or import into the United States any of these
products after May 15, 2017 and would destroy any existing supply of these products, GoPro
agreed to withdraw its motion. ECF No. 51.

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12, 2017, C&A filed its Responsive Claim Construction Brief. ECF No. 48. C&A attached to that

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brief the supporting Declaration of Alan C. Bovik (“Bovik Declaration”). ECF No. 48-2. On May

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19, 2017, GoPro filed its Reply Claim Construction Brief. ECF No. 53. The same day, GoPro

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filed a Motion to Strike the Bovik Declaration on the ground that C&A did not properly disclose

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the testimony as required under the Court’s Patent Local Rules. ECF No. 54. By Order dated

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May 31, 2017, the Court granted the Motion to Strike, ECF No. 62, and thus does not consider the

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Bovik Declaration in construing the disputed claims. On June 15, 2017, the Court conducted a

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Markman hearing.2 ECF No. 71.

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B.

The ’896 Patent

The ’896 patent is titled “Compression and Decoding of Single Sensor Color Image Data.”

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United States District Court
Northern District of California

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ECF No. 38-2 (’896 patent) at Cover. The patent issued on May 5, 2015, but claims priority to a

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provisional application filed on March 22, 2006. Id. The patent “relates to compression and

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retrieval of video content gathered from a single-sensor imager.” Id. at 1:32-33. According to the

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patent, “[p]rofessional video cameras typically have three sensors to collect light, each filtered for

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red, green, and blue channels.” Id. at

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1:37-38. In contrast, “digital still

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photography . . . uses a single sensor

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design with individual pixels filtered

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for red, green, and blue . . . .” Id. at

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1:40-42. This “single-sensor” is

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sometimes called a “Bayer sensor.”

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Id at 1:44. Figure 1 of the ’896

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patent, reproduced here, is a graphical

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depiction of a typical Bayer sensor.3
The image data collected from Bayer sensors – known as a “RAW image” – must

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On June 15, 2017, the Court denied C&A’s motion to stay litigation pending inter partes review.
ECF No. 71.
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As shown in Figure 1, Bayer sensors typically have twice as many green cells as red cells and are
arranged in 2x2 pixel grids. ’896 patent at 2:66-3:2.
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generally be converted into YUV or RGB images that can be used by “traditional post-production

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tools.” Id. at 1:52-54. This is typically done using a process known as “De-bayer filtering (or

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demosaicing),” which the patent describes as follows:

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De-Bayer filtering (or demosaicing) is the process of interpolating
the missing color components at every pixel location. As acquired,
the Bayer sensor only collects one of the three color primaries at
every pixel site—the two other primaries are predicted via a range of
different algorithms that typically take substantial compute time for
high quality results.
Id. at 4:14-20. To compress a Bayer image into a format like MPEG, the demosaicing process

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will take a 1920x1080 plane, for example, and expand it into three separate 1920x1080 planes, one
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corresponding to each of the primary colors (red, green, and blue). See e.g. id. at 4:23-34. The
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United States District Court
Northern District of California

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disadvantage of this method is that it “increases the size of the data by 3x” and “potentially
introduces visual artifacts.” Id. The patent describes an alternative means of compressing a Bayer
image: “encoding four quarter-resolution planes versus three full-resolution planes.” Id. at 4:3437. As an example, “[a] single high definition Bayer frame of 1920x1080 interleaved red, green,

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and blue pixels can be separated into four planes of quarter-resolution images, each consisting [of]
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960x540 pixels of either the red component, blue component, or one of the two green
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components.” Id. at 3:52-56. This is shown in Figure 7, reproduced in part below:

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According to the patent, this method reduces “the computational load” resulting in “simpler

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implementations and longer camera battery life,” and reduces the size of the compressed data. Id.

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at 4:34-37. The patent describes that these planes can be used to construct a “preview” image, a

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lower resolution image that might be displayed, for example, in a viewfinder of a digital video

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camera. Id. at 4:54-5:5.
The parties dispute four claim terms in claims 1 and 10 of the ’896 patent. Claim 1 recites

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a method while Claim 10 recites the system corresponding to the method. Claim 1 is reproduced

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below, with the disputed claim terms highlighted in bold:

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1. A method for decoding an encoded image, the method
comprising:

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storing encoded image data in a non-transitory computerreadable storage medium, the encoded image data representative
of an original image at an original resolution, the original image
comprising a plurality of image planes, the encoded image data
comprising a set of encoded image planes each representative
of one or more of the image planes of the original image;

United States District Court
Northern District of California

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receiving a request for a preview of the original image, the
requested preview comprising the original image at a preview
resolution less than the original resolution; and

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in response to receiving the request for a preview of the original
image:

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accessing a subset of the set of encoded image planes, the
subset comprising less than all of the set of encoded image
planes; and

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decoding, by a processor, the accessed subset of encoded
image planes to produce the original image at the preview
resolution.

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II.

APPLICABLE LAW

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The construction of terms found in patent claims is a question of law to be determined by

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the court. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc),

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aff'd, 517 U.S. 370 (1996). “[T]he interpretation to be given a term can only be determined and

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confirmed with a full understanding of what the inventors actually invented and intended to

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envelop with the claim.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (quoting

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Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)); see also

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MySpace, Inc. v. GraphOn Corp., 672 F.3d 1250, 1256 (Fed. Cir. 2012) (when construing claims,
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courts must consider “what was invented, and what exactly was claimed.”). The “correct

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construction,” therefore, is one that “stays true to the claim language and most naturally aligns

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with the patent’s description of the invention.” Id. While not every claim term must be construed,

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“[w]hen the parties present a fundamental dispute regarding the scope of a claim term, it is the

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court’s duty to resolve it.” O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351,

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1362 (Fed. Cir. 2008); see also Every Penny Counts, Inc. v. Am. Express Co., 563 F.3d 1378,

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1383 (Fed. Cir. 2009) (“[T]he court’s obligation is to ensure that questions of the scope of the

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patent claims are not left to the jury. In order to fulfill this obligation, the court must see to it that

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disputes concerning the scope of the patent claims are fully resolved.”) (citation omitted).

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“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention.’ ”

United States District Court
Northern District of California

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Id. at 1312 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111,

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1115 (Fed. Cir. 2004)). The Federal Circuit has held that words of a claim are generally given

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their “ordinary and customary meaning,” which is the “meaning that the term would have to a

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person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective

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filing date of the patent application.” Id. at 1312-13. In some cases, the ordinary meaning of

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claim language is “readily apparent,” and “claim construction . . . involves little more than the

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application of the widely accepted meaning of commonly understood words.” Id. at 1314. In

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other cases, “determining the ordinary and customary meaning of the claim requires examination

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of terms that have a particular meaning in a field of art.” Id. Claim construction may deviate from

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the ordinary and customary meaning of a disputed term only if “a patentee sets out a definition and

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acts as his own lexicographer” or if “the patentee disavows the full scope of a claim term either in

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the specification or during prosecution.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d

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1362, 1365 (Fed. Cir. 2012) (citing Vitronics Corp v. Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed.

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Cir. 1996)).

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In claim construction, “the claims themselves provide substantial guidance as to the

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meaning of particular claim terms.” Phillips, 415 F.3d at 1314. The “context in which a term is

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used in the asserted claim,” “[o]ther claims of the patent in question, both asserted and

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unasserted,” and “[d]ifferences among claims” are all instructive. Id. “The claims, of course, do
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not stand alone” and instead “must be read in view of the specification,” which is “[u]sually . . .

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dispositive” and “the single best guide to the meaning of a disputed term.” Id. at 1315. Courts

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“normally do not interpret claim terms in a way that excludes disclosed examples in the

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specification.” Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1305 (Fed. Cir.

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2007). Additionally, the Federal Circuit has cautioned that “limitations from the specification are

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not to be read into the claims.” Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186

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(Fed. Cir. 1998). Even if a patent describes only a single embodiment, the Federal Circuit has

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“expressly rejected” the contention that the claims must be construed as being limited to that

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embodiment. Phillips, 415 F.3d at 1323. In addition to consulting the specification, “the court
should also consider the patent’s prosecution history.” Markman, 52 F.3d at 980 (citing Graham

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United States District Court
Northern District of California

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v. John Deere Co., 383 U.S. 1, 33 (1966)). However, because the “prosecution history represents

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an ongoing negotiation between the [Patent and Trademark Office] and the applicant, rather than

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the final product,” it “often lacks the clarity of the specification” and therefore “is less useful.”

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Phillips, 415 F.3d at 1317.

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Though intrinsic evidence – the claims, specification, and prosecution history – is more

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significant and reliable than extrinsic evidence, courts may also consider the extrinsic record in

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claim construction, including expert and inventor testimony, dictionaries, and learned treatises. Id.

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at 1317-18. Within the class of extrinsic evidence, dictionaries, and especially technical

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dictionaries, “can assist the court in determining the meaning of particular terminology to those of

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skill in the art” because they “endeavor to collect the accepted meanings of terms used in various

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fields of science and technology.” Id. at 1318.

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III.

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THE DISPUTED CLAIM TERMS
A. “a set of encoded image planes” (claims 1 and 10)
GoPro’s Proposed Construction

Defendants’ Proposed Construction
“image data first compressed without
demosaicing and then stored in the recording
medium as sets of data”

Plain and ordinary meaning.

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Alternatively: “image planes resulting from
modifying and compressing raw image data”

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GoPro argues that this term “is sufficiently clear on its face and would not benefit from

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claim construction.” ECF No. 42 at 7. It alternatively proposes a construction of “image planes

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resulting from modifying and compressing raw image data.” Id. C&A proposes a construction of

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“image planes resulting from modifying and compressing raw image data.” ECF No. 48 at 9.

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The Court first considers whether the term requires any construction. The words in this

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claim term are not particularly complicated or overly technical in nature. However, since the

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parties present a fundamental dispute regarding the proper scope of the claim as it relates to this

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term, failing to construe this term could result in the parties making claim construction arguments

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before the jury. O2 Micro Int’l Ltd., 521 F.3d at 1362; Every Penny Counts, Inc., 563 F.3d at
1383. Moreover, even if the meaning of this term would be clear to one of ordinary skill in the art,

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United States District Court
Northern District of California

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it may not be clear, in the context of the technical field of digital videography, to a lay jury.

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Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1360 (Fed. Cir. 2008) (“claims are construed as an

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aid to the decision-maker, by restating the claims in non-technical terms”). The Court will

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therefore construe this term.

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The parties agree that “a set of encoded image planes” requires that image data be

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compressed. C&A’s proposed construction adds to this the limitations that (1) the compression is

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performed first “without demosaicing” and (2) that the image data is then “stored in the recording

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medium as sets of data.” The Court addresses each in turn.

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GoPro contends that “[a] demosaicing concept appears nowhere in the ’896 Patent’s

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claims, nor does its specification contain any indication . . . that the patentee intended to disclaim

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or otherwise redefine ‘encoded’ as ‘compressed without demosaicing.’” ECF No. 42 at 9. GoPro

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further contends the “without demosaicing” limitation would exclude a disclosed embodiment, as

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“the specification discloses certain embodiments of the invention where demosaicing is performed

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using a de-Bayer filter.” Id. (emphasis in original). Specifically, GoPro points to an embodiment

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in the patent in which “[a] lower quality, but more efficient, de-Bayer filter can be used for real

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time preview during editing and a higher quality algorithm . . . can be used for export (e.g., to film

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or a digital presentation format).” ECF No. 42 at 9, citing ’896 patent at 6:34-36. GoPro notes

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that C&A took the position in its April 21, 2017 petition for inter partes review that “there is no
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evidence of disclaimer in the ’896 [patent’s] specification or prosecution history that excludes any

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embodiment” and that “no construction is necessary” for the disputed terms. Id. at 7 (quoting

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C&A Marketing, Inc. v. GoPro, Inc., Petition for Inter Partes Review, Case No. IPR2017-01300 at

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C&A contends that “[t]he ’896 patent background, specification, and provisional
application consistently distinguish the prior art process of demosaicing RAW data.” ECF No. 48

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at 9. C&A argues that the patent distinguishes the prior art method of demosaicing prior to

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compression – which “increases the size of the data by 3x” and does not benefit compression (id.

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at 10, citing ’896 patent at 4:23-34) – with the claimed invention, in which “[n]o data is added or

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lost . . . as it is with de-Bayer processing” (id., quoting ’896 patent at 4:10-13). C&A also points

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United States District Court
Northern District of California

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to the provisional application to which the ’896 patent claims priority, which states that the

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“invention relies on a different processing order that delays the computationally expensive de-

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bayer operation to occur after the compression step,” ECF No. 48-4 at 3, and disparages de-Bayer

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filtering as “slow,” id. at 6. According to C&A, its construction does not exclude the embodiment

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identified by GoPro, as that embodiment describes application of a de-Bayer filter after

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compression. ECF No. 48 at 12.

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The Court begins with the words of the claims themselves. Phillips, 415 F.3d at 1314.

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The claims impose no requirement that “a set of encoded image planes” consists of image data

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compressed first without demosaicing. The claims do not mention demosaicing at all, much less

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preclude demosaicing or require compression before demosaicing. Thus, to limit the term in the

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manner sought by C&A, the Court would have to find that “clear and unmistakable statements by

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the patentee that limit the claims.” GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304,

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1309 (Fed. Cir. 2014). Under Federal Circuit law, a patentee can disavow claim scope and limit

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the claimed invention to a particular feature by, among other things, describing that feature as a

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“very important feature . . . in an aspect of the present invention” and disparaging alternatives to

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that feature. Inpro II Licensing, S.A.R.L. v. T-Mobile USA Inc., 450 F.3d 1350, 1354–55

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(Fed.Cir.2006).

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The Court agrees with GoPro that the statements in the specification of the ’896 patent do
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not rise to the level of disavowal. Inpro provides a useful contrast. There, the parties disputed the

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construction of the term “host interface” and whether the term required a “direct parallel bus

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connection.” Inpro, 450 F.3d at 1353. The Federal Circuit found that the district court properly

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construed the term to require a direct connection based on: (1) a statement in the specification that

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described the direct connection as a “very important feature” of the claimed invention; (2) the fact

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that the only “host interface” described in the patent was a direct connection; (3) the

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specification’s discussion of how a direct connection solved a problem in the prior art; and (4) the

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discussion in prosecution history of related applications of the advantage of a direct connection

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over serial connections. Id. at 1355-56. The Court does not find the statements in the ’896
patent’s specification to be as clear a disclaimer as that relied on by the Federal Circuit in Inpro.

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United States District Court
Northern District of California

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While the specification does acknowledge the limitations of demosaicing, it does not clearly state

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that the invention excludes demosaicing prior to compression. Nor does the patent state that

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compression without demosaicing is an “important feature” of the claimed invention. Moreover,

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C&A does not identify any portion of the prosecution history where the patentees distinguished

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the claimed invention over prior art based on the compression being performed without

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demosaicing.4

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The excerpts from the provisional application go further in disparaging methods requiring

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demosaicing prior to compression.5 See e.g. ECF No. 48 at 7-8. But, as C&A acknowledges, the

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patentee was “describing how ‘the invention’ is ‘different’ from the prior art . . . .” Id. at 8. C&A

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does not contend that the “invention” of the provisional application, filed eight years before the

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The Court agrees with C&A that its arguments in its petition for inter partes review (“IPR”) that
the claims required no construction do not constitute an admission for purposes of the claim
construction in the district court litigation. See ECF No. 48 at 13. As C&A notes, it merely stated
that the construction of the claims did not matter for purposes of its IPR. Id. Moreover, given that
that the Patent Trial & Appeal Board (“PTAB”) applies a different standard of claim construction
than this Court, C&A could conceivably take different positions in PTAB proceedings than in this
Court. See In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278 (Fed. Cir. 2015) (discussing
Congress’s intent that the PTAB apply the “broadest reasonable interpretation” standard in
construing claims in inter partes review).
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Where a patent incorporates a provisional patent application by reference, the statements in the
provisional application can serve to limit the scope of the claims. See In re MyKey Tech. Inc. Pat.
Litig., No. MDL 13–02461 GAF (PLAx), 2014 WL 2740733 at *21-22 (C.D. Cal. Jun. 17, 2014);
Microsoft Corp. v. Multi-Tech. Sys., Inc., 357 F.3d 1340, 1348 (Fed. Cir. 2004).
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’896 patent, is the same as that claimed in the ’896 patent. Indeed, the provisional application

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describes its invention as “RAW Bayer compression occurring within the camera itself or with the

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camera tethered to an external device that performs the Bayer compression.” ECF No. 48-1 at 8.

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In contrast, the ’896 patent claims a method of image compression using single-sensor color

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imagers, and a method of providing a preview image at a lower resolution than the original

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captured image. See ’896 patent at Abstract, Claim 1.

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Moreover, the Court agrees with GoPro that one of the embodiments disclosed in the ’896

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patent appears to describe demosaicing RAW image data before compression. The patent explains

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that in this embodiment a “lower quality, but more efficient, de-Bayer filter can be used for realtime preview during editing” and “a high quality algorithm, which may be computationally

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United States District Court
Northern District of California

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slower, can be used for export (e.g., to film or a digital presentation format).” ’896 patent at 6:34-

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38 (emphasis added). Though not explicit, this statement appears to contrast the use of a de-Bayer

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filter for “real-time preview,” using uncompressed data, with the high quality images ultimately

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exported for display on a larger screen, which presumably must be compressed. Given that

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C&A’s proposed limitation of “without demosaicing” would exclude this embodiment, it is likely

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incorrect. Epos Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1347 (Fed. Cir. 2014) (“a

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claim construction that excludes the preferred embodiment . . . is rarely, if ever, correct . . . .”).

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Thus, the Court declines to limit the term “a set of encoded image planes” to image data

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compressed without demosaicing.

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The Court next considers whether the term “a set of encoded image planes” requires that

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image data is “stored in the recording medium as sets of data” as proposed by C&A. The parties

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agree that the set of encoded image plans is initially “stored in the recording medium.” ECF No.

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42 at 7; ECF No. 49 at 12. But GoPro contends that C&A’s proposed limitation of “stored in the

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recording medium” requires “that the encoded image planes must forever remain [in the storage

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medium] throughout the decoding process,” which is incorrect because “they must necessarily be

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read out of storage to be decoded.” ECF No. 42 at 10. C&A responds that its proposal does not

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require that encoded image planes remain forever in storage, and agrees with GoPro that image

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planes must necessarily be read out of storage as part of the decoding process. GoPro further
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contends that the additional limitation proposed by C&A is unnecessary because claim 1 explicitly

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recites “storing encoded image data in a non-transitory computer-readable storage medium,” with

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encoded image data “compris[ing] a set of encoded image planes.” ECF No. 42 at 10, citing ’896

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patent, at Claim 1. The Court agrees with GoPro that the limitation “stored in the recording

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medium” is unnecessary in light of the surrounding claim language that already requires the

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encoded image data, comprising a set of encoded image planes, to be stored in a computer-

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readable storage medium. C&A argues that some construction is necessary because without the

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added limitation “compression can have two meanings: (1) reduced-size data for storage and (2)

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reduced-size data for transmission.” ECF No. 48 at 15. However, since neither party argues that
the latter meaning of compression applies, there is no danger that the parties will improperly

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United States District Court
Northern District of California

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advance different claim interpretations in front of the jury. Id.; cf. O2 Micro Int’l Ltd., 521 F.3d at

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1362. The Court therefore rejects the portion of C&A’s construction requiring a set of encoded

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image planes to be “stored in the recording medium.”

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The parties’ dispute regarding “sets of data” appears to be grammatical – GoPro contends

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that the plural “sets of data” is inconsistent with the singular “set of image planes,” while C&A

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responds that “sets of data” refers to the plural “image planes.” ECF No. 42 at 11; ECF No. 48 at

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16. As the Court will not construe the “a set of encoded image planes” to require that image data

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be “stored in the recording medium,” the Court need not address whether the image data must be

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stored in the recording medium “as sets of data.”

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C&A’s only criticism of GoPro’s proposed construction is that it requires “modifying”

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RAW image data, which, according to C&A, is inconsistent with one of the embodiments

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disclosed in Figure 7 of the ’896 patent. ECF No. 48 at 14. According to C&A, in Figure 7,

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“RAW image data is separated into individual color planes and compressed,” and “[t]he

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compressed RAW data is unmodified; it is still RAW data.” Id. Figure 8, in contrast, discloses

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“differencing” of raw image data, which C&A says is modification of raw image data. Id. GoPro

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responds that separating an image into individual color planes, even without differencing, is

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“modification” of the image data, which is consistent with the embodiment disclosed in Figure 7.

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ECF No. 53 at 7. GoPro further contends that in the ’896 patent, “only modified raw image data is
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compressed.” Id. at 7. Here, the Court agrees with C&A. Nothing in the claims or specification

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requires “modifying” raw image data. Separating raw image data into planes corresponding to

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different colors does not modify the underlying image data. The patent’s only reference to

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“modifying” image data is in reference to “differencing,” which is not disclosed in Figure 7. See

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’896 patent, at 3:4:6-8 (referring to “modified image planes” as a result of “differencing the

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channels”).

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Northern District of California

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The Court therefore construes the term “a set of encoded image planes” as “image planes
resulting from compressing raw image data.”
B.

“encoded image data” (claims 1 and 10)

GoPro’s Proposed Construction

Defendants’ Proposed Construction
“data obtained from an image sensor (i.e. RAW
data) and then compressed without
demosaicing”

Plain and ordinary meaning.

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Alternatively: “data that consists of a set of
encoded image planes”

GoPro argues that this term requires no construction. ECF No. 42 at 9. It alternatively

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proposes a construction of “data that consists of a set of encoded image planes.” Id. C&A

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proposes a construction of “data obtained from an image sensor (i.e. RAW data) and then

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compressed without demosaicing.” ECF No. 48 at 17.

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The Court agrees with GoPro that this term requires no construction. It consists of three
straightforward, non-technical terms that a lay juror would have no trouble understanding.

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Moreover, the claims themselves provide a straightforward definition of “encoded image data”:

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“data representative of an original image at an original resolution . . . comprising a set of encoded

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image planes . . . .” ’896 patent at Claims 1, 10. The Court has already construed “a set of

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encoded image planes,” and in doing so resolved the parties’ primary dispute with respect to the

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“encoded image data” term – whether image data must be compressed without demosaicing. The

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Court therefore finds that this term should be given its plain and ordinary meaning. O2 Micro

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Int’l Ltd., 521 F.3d at 1362 (“district courts are not (and should not be) required to construe every

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limitation present in a patent’s asserted claims”).

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2
3

C.

“a set of encoded image planes each representative of one or more image
planes of the original image” (claims 1 and 10)

GoPro’s Proposed Construction
Plain and ordinary meaning.

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5
6

Alternatively: “a set of encoded image planes,
each encoded image plane representative of one
or more image planes of the original image”

Defendants’ Proposed Construction
“image data first compressed without
demosaicing and then stored in the recording
medium as sets of data, each set of data
corresponding to an image plane of the sensor”

7

GoPro again argues that this phrase requires no construction. ECF No. 42 at 13. It

8

alternatively proposes a construction of “a set of encoded image planes, each encoded image plane

9

representative of one or more image planes of the original image.” Id. C&A proposes a
construction of “image data first compressed without demosaicing and then stored in the recording

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United States District Court
Northern District of California

10

medium as sets of data, each set of data corresponding to an image plane of the sensor.” ECF No.

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48 at 16. With respect to this phrase, the parties dispute the same issues the Court already

13

resolved with respect to the term “a set of encoded image planes.” Given the Court’s construction

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of “a set of encoded image planes,” the Court concludes that the larger phrase requires no further

15

construction.

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D.

“access[ing] a subset of the set of encoded image planes” (claims 1 and 10)

GoPro’s Proposed Construction
Plain and ordinary meaning.

Defendants’ Proposed Construction
“accessing some but not all of the encoded
image planes of a frame”

Alternatively: “accessing less than all of the set
of encoded image planes”
GoPro again argues that this phrase requires no construction. ECF No. 42 at 11. It

22

alternatively proposes a construction of “accessing less than all of the set of encoded image

23

planes.” Id. C&A proposes a construction of “accessing some but not all of the encoded image

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planes of a frame.” ECF No. 48 at 18. The parties dispute two aspects of their respective

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proposals: (1) the proper construction of “subset”; and (2) whether the term requires accessing

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“image planes of a frame.”

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2
3
4
5
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1.

“subset”

GoPro contends that, if this phrase is construed at all, the term “subset” should be
construed as “less than all” based on its definition in the claims themselves. ECF No. 42 at 16
(“However, the claim defines ‘subset’ immediately after its use: ‘the subset comprising less than
all of the set of encoded image planes.’”) (citing ’896 patent at 7:24-25). C&A counters that “less
than all” is ambiguous because it could include a null set, since none is “less than all.” ECF No.
48 at 18. According to C&A, this would “render the claim language absurd.” Id.

7
The claims require that the decoder access a subset of the encoded image planes for
8

purposes of generating a preview image: “a decoder configured to, in response to receiving the

9
request a preview of the original image . . . access a subset of the set of encoded image planes . . .
10
and decode the accessed subset of encoded image planes to produce the original image at the

United States District Court
Northern District of California

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preview resolution.” ’896 patent at 8:17-23. If “subset” could refer to none, as would be possible
under GoPro’s “less than all,” construction, accessing and decoding none of the set of encoded

13
image planes could meet this limitation. Put another way, the claim could be met by generating a
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preview image without ever accessing or decoding image planes. During the Markman hearing,
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GoPro confirmed that, in its view, this would fall within the scope of the claims:
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The drafter says “less than all” and there is no dispute that in math ‒
this is an uncontrovertible mathematical truth, that less than all or a
subset includes something called the empty set, which is nothing.
So from a ‒ using the word “subset” in a patent dealing with a lot of
math, a person of ordinary skill in the art would understand that you
could, in fact, access none of the encoded image planes and still
meet the claim.
Hrg. Tr. at 15:22-16:5.

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On one hand, “courts may not redraft claims, whether to make them operable or to sustain

22
their validity.” Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004); see
23

also Haemonetics Corp. v. Baxter Healthcare Corp., 607 F.3d 776, 781 (Fed. Cir. 2010) (“we

24
construe claims with an eye toward giving effect to all of their terms . . . even if it renders the
25
26
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claims inoperable or invalid”) (internal citation omitted). On the other hand, construing “subset”
as “less than all” – allowing the claim to be satisfied by accessing none of the encoded image
planes – would effectively read out the entire decoding step, because there would be no encoded

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14

1

image planes to decode. Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006)

2

(“claims are interpreted with an eye toward giving effect to all terms in the claim.”). Moreover, in

3

construing the claims the Court must always consider what the patentees actually invented when

4

considering the patent as a whole. MySpace, Inc., 672 F.3d at 1256 (when construing claims,

5

courts must consider “what was invented, and what exactly was claimed.”). The Court is

6

confident that the patentees did not intend to – and did not – claim display of a preview image

7

without any decoding. Indeed, decoding appears to be at the heart of the claimed invention, as

8

evidenced by the title of the patent: “Compression and Decoding of Single Sensor Color Image

9

Data.” Thus, the Court will adopt C&A’s construction of “subset” as “some but not all.”
“of a frame”

E.

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United States District Court
Northern District of California

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The crux of the dispute with respect to C&A’s proposed addition of the “of a frame”

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limitation is whether the claimed method (and the corresponding system) must operate on a single

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frame – one of several images that make up a video – or whether it can instead be applied to a

14

video as a whole.

15

GoPro contends that C&A’s proposed addition of the phrase “of a frame” is an improper

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attempt “to limit the set of encoded image planes to one frame.” ECF No. 42 at 16. GoPro notes

17

that the word “frame” does not appear anywhere in the claims, suggesting the claims are not so

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limited. Id. at 13. GoPro argues that the patent clearly relates to video compression, which

19

necessarily involves multiple frames rather than a single frame as suggested by C&A’s

20

construction. Id. at 17.

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C&A responds that “[t]he text of the patent is . . . clear that the claimed systems and

22

methods are directed to decoding an individual image or individual frame of a video, not a video

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as a whole made up of multiple frames.” ECF No. 48 at 19. It points to Figure 7 of the patent,

24

which depicts “Bayer compression,” and separates a “Source Bayer image in memory buffer” into

25

four image planes. C&A notes that the ’896 patent’s specification describes a “Bayer image” as a

26

“single high definition Bayer frame.” ’896 patent, at 3:52-56. C&A further contends that the “of

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a frame” limitation is also consistent with the provisional application, which explains that “a

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single high definition Bayer frame can be separated into four planes.” ECF No. 48 at 19. C&A
15

1

warns that GoPro seeks to broaden the claim for purposes of advancing its infringement claims,

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and without a clarifying construction “could mislead the factfinder into believing the claim term is

3

far broader than the disclosure supports.” Id. at 20.

4

The parties’ dispute became clearer at the Markman hearing. C&A explained that its

5

proposed addition of “of a frame” does not preclude video processing as GoPro suggests.

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According to C&A, the claimed invention is about “encoding and then doing a preview mode

7

decode or fast decode of each image,” and the claims “as written, read[] only on [] single frame

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processing, but you can do it over and over and over again.” Hrg. Tr. at 33:3-7. In argument,

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C&A focused on Figure 7, which depicts an embodiment of the claimed invention, in which a
single frame is separated into four image planes, two green, one red, and one blue. ’896 patent at

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United States District Court
Northern District of California

10

Fig. 7. In the embodiment, a subset of the planes – three of the four planes, discarding the extra

12

green plane – is used to reconstruct a full color, lower resolution preview image. According to

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C&A, Figure 7 clearly shows that the claimed invention operates on frames rather than an entire

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video. C&A argues that in the absence of the “of a frame” limitation, generating a lower quality

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preview of a video by simply reducing frame rate – for example, taking out one out of every three

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frames – could satisfy the claims. This is because, if each frame consists of encoded image planes,

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accessing a subset of frames of a video would necessarily mean accessing a subset of the encoded

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image planes. The problem with this, according to C&A, is that the patentees did not invent the

19

concept of reducing frame rate, and that is not the invention claimed by the patent. See Hrg. Tr. at

20

31:5-39:6.

21

GoPro conceded at the hearing that the claimed invention could be used to process video

22

by compressing and decoding one frame at a time, with the process repeated for each frame. Id. at

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46:24-47:6 (stating that the claimed invention could be carried out on a “frame-by-frame basis”).

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GoPro also did not dispute that, in its view, the “access[ing] a subset of the encoded image planes”

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limitation could be met by simply reducing frame rate. Id. at 47:20-49:20. Yet, GoPro conceded

26

that it did not invent the concept of reducing frame rate. Id. at 50:5-9.

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This is a close issue. The Court starts with the words of the claims themselves, which do
not use the word “frame” or explicitly limit the claim to compression of a single frame. Vitronics,
16

1

90 F.3d at 1582 (“we look to the words of the claims themselves . . . to define the scope of the

2

patented invention”). However, the Court agrees with C&A that the patent cannot be fairly read as

3

pertaining to reducing frame rate. Indeed, the patent contains no discussion of frame rate

4

reduction. Given GoPro’s admission that, in the absence of any further limiting construction,

5

frame rate reduction would fall within the scope of the claims, and that it did not invent the

6

concept of frame rate reduction, the Court concludes that the addition of the “of a frame”

7

limitation is necessary and consistent with the patent’s description of the claimed invention.6

8

Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)

9

(“Ultimately, the interpretation to be given a term can only be determined and confirmed with a
full understanding of what the inventors actually invented and intended to envelop with the

11
United States District Court
Northern District of California

10

claim.”).
The Court therefore construes the term “access[ing] a subset of the set of encoded image

12
13

planes” as “access[ing] some but not all of the encoded image planes of a frame.”

14

///

15

///

16

///

17

///

18

///

19

///

20

///

21

///

22

///

23

///

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25
26
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6

The Court is cognizant of the general rule that “forbids biasing the claim construction process to
exclude or include specific features of the accused product or process.” Wilson Sporting Goods
Co. v. Hillerich & Bradsby Co., 442 F.3d 1322, 1331 (Fed. Cir. 2006). Here, however, the
parties’ discussion at the hearing of the infringement issues in the case helped the Court
understand the nature of the parties’ dispute over claim scope, which was not immediately clear
from the papers. The Federal Circuit has found consideration of infringement issues as context in
construing claims does not run afoul of this general rule. See id.
17

1

CONCLUSION

2

For the foregoing reasons, the Court construes the disputed claim terms as follows:

3

Court’s Construction

Claim Term
4
5

“a set of encoded image planes” (claims 1 and
10)

“image planes resulting from compressing raw
image data”

6

“encoded image data” (claims 1 and 10)

Plain and ordinary meaning

7

“a set of encoded image planes each
representative of one or more image planes of
the original image” (claims 1 and 10)

No construction necessary. See construction
for “a set of encoded image planes.”

“access[ing] a subset of the set of encoded
image planes” (claims 1 and 10)

“access[ing] some but not all of the encoded
image planes of a frame”

8
9
10

United States District Court
Northern District of California

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IT IS SO ORDERED.
Dated: July 24, 2017

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______________________________________
JON S. TIGAR
United States District Judge

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