Intri-Plex Technologies, Inc. v. NHK International Corporation et al

Filing 77

ORDER Re Claim Construction. Signed by Judge Edward M. Chen on 2/1/2018. (emcsec, COURT STAFF) (Filed on 2/1/2018)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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Plaintiff,

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Case No. 17-cv-01097-EMC

INTRI-PLEX TECHNOLOGIES, INC.,

ORDER RE CLAIM CONSTRUCTION

v.
NHK INTERNATIONAL CORPORATION,
et al.,

For the Northern District of California

United States District Court

Defendants.
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Plaintiff Intri-Plex Technologies, Inc. (“IPT”) has sued multiple companies for

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infringement of its „841 patent. On January 29, 2018, the parties appeared before the Court for a

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claim construction hearing. The parties have asked the Court to construe only one term, which

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appears in claims 1, 4, 7, and 10 of the „841 patent.
I.

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‘841 PATENT

The „841 patent is titled “Optimized Low Profile Swage Mount Base Plate Attachment of

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Suspension Assembly for Hard Disk Drive.” As reflected by the title, the patent relates to hard

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disk drives (“HDDs”). More specifically, the patent concerns a component – known as a “base

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plate” – of a larger structure that is ultimately used to help in the writing data to and reading data

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from the HDD surfaces.

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The specification of the „841 patent reinforces that the invention at issue relates to HDDs.

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For example, in the section “Field of the Invention,” the specification states: “This invention

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relates to disk head assemblies for supporting read/write heads adjacent rotating disks in disk

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drives.” „841 patent, col. 1:18-20. Also, in the section “Description of the Prior Art,” the

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specification pinpoints that the prior art became inefficient when “the size of the disk drive . . .

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decreased to fit in small lap top computers.” „841 patent, col. 1:64-65; see also „841 patent, col.

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1:62-2:10 (describing two problems that arose as disk drives became smaller – (1) maintaining a

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strong connection between the base plate and actuator arm boss hole and (2) poor HDD

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performance related to pre-load). And as yet another example, in the section “Summary of the

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Invention,” the specification states that “the invention is concerned with an optimized low profile

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base plate for attachment of a suspension assembly to an actuator arm in a hard disk drive.” „841

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patent, col. 2:13-15. Finally, in the section “Detailed Description of the Invention,” the

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specification explains that, “[i]n a fully assembled magnetic disk drive, an actuator harm and head

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suspension, which are elements of an actuator arm assembly, are connected end to end by a base

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plate.” „841 patent, col. 3:15-17.

an optimized design for the base plate used in HDDs – i.e., the patent “achieve[s] both high post-

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For the Northern District of California

As explained in the specification, the asserted novelty of the „841 patent is that it provides

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United States District Court

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swage torque retention and reliable gram loading.” Op. Br. at 4; see also „841 patent, col. 2:27-30

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(stating that “[t]he invention has the advantage that gram load change inherent in swaging is

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reduced and a large retention torque can be created even in low hub height configurations that

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offer limited retention torque in a standard hub geometry”). In particular, the optimized

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parameters are such as to satisfy the following equation:

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„841 patent, col. 2:21-22.

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Claim 1 of the „841 patent is a representative claim. It provides as follows:

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1.
An optimized low profile base plate for attachment
of a suspension assembly to an actuator arm in a hard disk drive
comprising:

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a flange having a flange thickness (TBP); and,

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a hub having, a hub height (HH), a hub radial width WH, a
land height hub inner surface depth (HIS), and a
lead in shoulder hub counter bore height (HCB);

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wherein

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„841 patent, claim 1 (emphasis added).1 The bolded language above is the claim language at issue.

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Although the language is found in the preamble of the claim, IPT contends that it is a limitation on

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the invention. Defendants argue to the contrary.
II.

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Claim construction is a question of law, although it may have factual underpinnings. See

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DISCUSSION

Icon Health & Fitness, Inc. v. Polar Electro Oy, 656 Fed. App‟x 1008, 1013 (Fed. Cir. 2016); see

(Fed. Cir. 2016). It “serves to define the scope of the patented invention and the patentee‟s right

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For the Northern District of California

also Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1357

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United States District Court

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to exclude.” HTC Corp. v. Cellular Communs. Equip., LLC, 877 F.3d 1361, 1367 (Fed. Cir.

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2017); see also O2 Micro Int’l Ld. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir.

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2008) (stating that the purpose of claim construction is “to determin[e] the meaning and scope of

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the patent claims asserted to be infringed”) (internal quotation marks omitted).

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Words of a claim are generally given their ordinary and customary
meaning, which is the meaning a term would have to a person of
ordinary skill in the art after reviewing the intrinsic record at the
time of the invention. “In some cases, the ordinary meaning of
claim language . . . 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.” However, in many cases, the meaning of a
claim term as understood by persons of skill in the art is not readily
apparent.

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Id.

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Because the meaning of a claim term as understood by persons of
skill in the art is often not immediately apparent, and because
patentees frequently use terms idiosyncratically, the court looks to
“those sources available to the public that show what a person of
skill in the art would have understood disputed claim language to
mean.” Those sources include “the words of the claims themselves,
the remainder of the specification, the prosecution history, and

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Some of the independent claims in the patent use a slightly different equation, one with
additional parameters. See „841 patent, claims 4, 10.
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extrinsic evidence concerning relevant scientific principles, the
meaning of technical terms, and the state of the art.”

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Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005). Although extrinsic evidence “can

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shed useful light on the relevant art, . . . it is less significant than the intrinsic record in

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determining the legally operative meaning of claim language.” Id. at 1317 (internal quotation

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marks omitted).

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As noted above, in the instant case, the dispute between the parties concerns the phrase

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“optimized low profile base plate.” According to IPT, although the phrase appears only in the

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preamble of the patent claims, it is limiting in nature and therefore is subject to construction –

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although the only construction offered by IPT is “plain and ordinary meaning.” In contrast,

on the invention and therefore is not subject to claim construction. In the alternative, Defendants

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For the Northern District of California

Defendants contend that the preamble phrase “optimized low profile base plate” is not a limitation

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United States District Court

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offer the following construction for the phrase:

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A base plate having a profile with dimensions that satisfy:

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A.

General Law on Preambles
“Whether a preamble stating the purpose and context of the invention constitutes a

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limitation of the claimed process is determined on the facts of each case in light of the overall

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form of the claim, and the invention as described in the specification and illuminated in the

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prosecution history.” Applied Mats., Inc. v. Adv. Semiconductor Mats. Am., Inc., 98 F.3d 1563,

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1572-73 (Fed. Cir. 1996); see also Catalina Mktg. Int'l v. Coolsavings.com, Inc., 289 F.3d 801,

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808 (Fed. Cir. 2002) (stating that, when a court decides whether a preamble is a limitation, it must

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consider “„the entire[] . . . patent to gain an understanding of what the inventors actually invented

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and intended to encompass by the claim‟”).

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In general, a preamble limits the invention if it recites essential
structure or steps, or if it is “necessary to give life, meaning, and
vitality” to the claim. Conversely, a preamble is not limiting “where
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a patentee defines a structurally complete invention in the claim
body and uses the preamble only to state a purpose or intended use
for the invention.”

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Id.
The Federal Circuit has stated that “[n]o litmus test defines when a preamble limits claim

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scope” but acknowledges that “[s]ome guideposts . . . have emerged from various cases discussing

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the preamble‟s effect on claim scope.” Id. Examples include the following:
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“Jepson claiming[2] generally indicates intent to use the preamble to define the claimed
invention, thereby limiting claim scope.” Id.

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“[D]ependence on a particular disputed preamble phrase for antecedent basis may limit
claim scope because it indicates a reliance on both the preamble and claim body to

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define the claimed invention.” Id.
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For the Northern District of California

United States District Court

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“[W]hen the preamble is essential to understand limitations or terms in the claim body,
the preamble limits claim scope.” Id.

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

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“[W]hen reciting additional structure or steps underscored as important by the
specification, the preamble may operate as a claim limitation.” Id.

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

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“[C]lear reliance on the preamble during prosecution to distinguish the claimed

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invention from the prior art transforms the preamble into a claim limitation because

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such reliance indicates use of the preamble to define, in part, the claimed invention.”

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Id.
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“[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

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A “Jepson” claim is one that contains (1) a preamble that recites an
old device, process, or combination, (2) a transition phrase such as
“wherein the improvement comprises,” and (3) a body which states
the new elements or improvements upon the old device, process, or
combination. The preamble in a Jepson claim constitutes “a
limitation for purposes of determining patentability and
infringement.”
Xilinx, Inc. v. Altera Corp., No. 93-20409 SW, CIVIL NO. 96-20922 SW, 1998 U.S. Dist. LEXIS
14774, at *6-7 (N.D. Cal. July 30, 1998).
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structure or steps of the claimed invention.” Id. at 809.

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“[P]reamble language merely extolling benefits or features of the claimed invention

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does not limit the claim scope without clear reliance on those benefits or features as

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patentably significant.” Id.
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“[P]reambles describing the use of an invention generally do not limit the claims

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because the patentability of apparatus or composition claims depends on the claimed

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structure, not on the use or purpose of that structure.” Id. “[S]tatements of intended

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use or asserted benefits in the preamble may, in rare instances, limit apparatus claims,

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but only if the applicant clearly and unmistakably relied on those uses or benefits to
distinguish prior art.” Id.

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For the Northern District of California

United States District Court

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B.

“Base Plate”
Although the entire phrase “optimized low profile base plate” is at issue, both parties

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consider each term of the phrase separately. The Court adopts this approach and addresses first

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the term “base plate.”

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According to Defendants, “base plate” is not limiting in nature because it is simply a label

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for or description of the structurally complete invention set forth in the body of the claim – i.e., a

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flange and hub with certain dimensions. Although Defendants do not cite IMS Technology, Inc. v.

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Haas Automation, Inc., 206 F.3d 1422 (Fed. Cir. 2000), in their papers, the case is one example of

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a situation where the Federal Circuit found a preamble not limiting on that basis.

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In IMS, the plaintiff was a manufacturer of machine tools and machine tool controls. See

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id. at 1425. The patent owned by the plaintiff related “generally to a control for a machine tool,

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such as a milling machine, which is used to cut or remove material from an object, referred to as a

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workpiece, through a machining operation.” Id. at 1426. The preamble of claim 1 of the patent

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read: “„1. A programmable microcomputer control apparatus for controlling the relative motion

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between a tool and a workpiece comprising . . . .‟” Id. at 1427. The district court construed the

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preamble as limiting – i.e., “to a „control system for machine tools rather than an entire machine

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tool apparatus.‟ To the extent that the district court‟s claim interpretation preclude[d] a finding of

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infringement by a machine tool apparatus that include[d] the claimed control-related limitations,”
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the Federal Circuit found that the district court had erred. Id. The circuit court explained:

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The phrase “control apparatus” in the preamble merely gives a
descriptive name to the set of limitations in the body of the claim
that completely set forth the invention. Its use does not limit the
claims . . . to a control apparatus that is separate from the machine
tool. The claim is infringed by any apparatus encompassing all of
the limitations in the body of the claim. Such an infringing
apparatus may be a machine tool apparatus that includes the claimed
control features or a control apparatus that is separate from and
communicates with a machine tool apparatus.

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Id. (emphasis added); see also Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1370 (Fed. Cir.

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2010) (holding that the term “photoselective vaporization” as used in the preamble was simply “a

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label for the overall invention and not a limitation on the claims”) (emphasis added); Schmalz, Inc.

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Sep. 6, 2017) (stating that the term in the preamble was simply “a name for the structurally

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For the Northern District of California

v. Better Vacuum Cups, Inc., No. 16-10040, 2017 U.S. Dist. LEXIS 144280, at *9 (E.D. Mich.

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United States District Court

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complete invention”); cf. Am. Med., 618 F.3d at 1359 (stating that, “[i]f the preamble „is

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reasonably susceptible to being construed to be merely duplicative of the limitations in the body of

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the claim (and was not clearly added to overcome a [prior art] rejection), we do not construe it to

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be a separate limitation‟”).

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IPT protests that its invention does not cover any kind of structure made up of a flange and

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hub (with certain dimensions); rather, its invention concerns a component of a HDD specifically.

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See Op. Br. at 7 (stating that the “invention is directed to a particular HDD component”).

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The Court agrees with IPT. As an initial matter, the Court notes that, at the hearing,

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Defendants expressly conceded that the invention at issue relates to the HDD context specifically.

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Moreover, as IPT argues, the situation here is ultimately similar to that in Deere & Co. v. Bush

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Hog, LLC, 703 F.3d 1349 (Fed. Cir. 2012), where the court found the preamble limiting in nature.

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In Deere, the patent at issue disclosed “an „easy clean dual wall deck‟ for a rotary cutter.”

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Id. at 1352. “[R]otary cutters . . . are pulled behind a tractor and [are] used to mow wide swaths of

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ground.” Id. The specification explained that, during use of a rotary cutter, debris accumulates on

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the top of the cutter deck and, if not cleaned off, the debris retains moisture which leads to the

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deck rusting out. The prior art rotary cutters had structural components that made it difficult to

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clean the deck (if mounted on top of the cutter deck) or that interfered with efficiency (if mounted
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underneath the deck). The patent at issue addressed these prior art problems by disclosing “a dual-

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wall deck that encloses the structural components in a torsionally-strong box.” Id. Claim 1 of the

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patent recited “[a] rotary cutter deck comprising,” inter alia, a lower deck wall, an upper deck

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wall, front and rear portions, and right- and left-hand end wall structures to define a box section

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having torsional stiffness. Id. at 1353.
The trial court found that the preamble term “rotary cutter deck” was limiting in nature and

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defined it as “„the blade housing on a power mower.‟”3 Id. at 1357. The Federal Circuit agreed

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with the trial court that the term was limiting even though in the preamble. It noted first that
[t]he recitation of a “rotary cutter deck” in Claim 1 is necessary to
understand the subject matter encompassed by the claim, which
otherwise generally recites deck walls that “define a box section
having torsional stiffness.” Unlike non-limiting preamble terms,
“rotary cutter deck” does not merely state a name or a use for the
claimed box section. Rather, the term describes a “fundamental
characteristic of the claimed invention” that informs one of skill in
the art as to the structure required by the claim. For example, that
the claim is drawn to a “rotary cutter deck” informs the meaning of
the “torsional stiffness” limitation – the claimed structure must
possess sufficient stiffness to withstand the torsional loads imposed
by the operation of a rotary cutter.

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For the Northern District of California

United States District Court

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Id. at 1358.
The Federal Circuit went on to emphasize that the specification established the phrase

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“rotary cutter deck” as a limitation.
The specification repeatedly refers to the “present invention” as “an
improved deck for a rotary cutter,” or a “rotary cutter deck.” The
title of the patent, the summary of the invention, and every drawing
describe the invention as a deck for a rotary cutter. The
specification explains that the invention addresses a concern specific
to rotary cutter: the need for a cutter deck that is smooth and easy to
clean, but does not reduce cutting efficiency. In sum, the
specification underscores the importance of “rotary cutter deck” as a
limitation of the claimed invention.

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Id.

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As IPT asserts, Deere is analogous to the instant case. First, that the term “base plate” is

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limiting in nature is suggested by the fact that it informs the meaning of the equation in the body

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The term “rotary cutter deck” appeared only in the preamble of the claims, although it provided
an antecedent basis for “said deck” in one claim. See Deere, 703 F.3d at 1357.
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of the claim. The optimized design reflected in the equation takes into account that the base plate

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is being used in a HDD specifically – i.e., the design takes into account the issues of torque

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retention capability and pre-load changes.
Second, the title of the patent uses the term “base plate” (specifically, in the hard disk drive

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context) as does the summary of the invention. See „841 patent, col. 2:13-15 (summary of the

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invention) (“Briefly the invention is concerned with an optimized low profile base plate for the

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attachment of a suspension assembly to an actuator arm in a hard disk drive.”). In addition, the

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background of the invention describes the invention as a “base plate” in the hard disk drive

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context. See „841 patent, col. 1:18-22 (“This invention relates to disk head assemblies for

profile base plate for attaching a head suspension assembly to a head actuator arm.”). Finally, the

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For the Northern District of California

supporting read/write heads adjacent rotating disks in disk drives and more particularly, to a low

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United States District Court

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specification explains that the invention addresses a concern specific to a base plate used in a hard

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disk drive. See „841 patent, col. 1:62-65 (“Problems with this method of mounting transducer

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heads have arisen as the need for increased data storage capacity in hard disk drives has grown and

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the size of the disk drive has decreased to fit in small lap top computers.”).
Accordingly, contrary to what Defendants contend, “base plate” is not simply a “a name

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for the structurally complete invention.” Schmalz, 2017 U.S. Dist. LEXIS 144280, at *9. The

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term is not “merely duplicative of the limitations in the body of the claim.” Am. Med., 618 F.3d at

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1359. Instead, it is essential in giving meaning and context to the body of the claim, consistent

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with the title, summary, and specification of the patent.
The Court therefore agrees with IPT that “base plate” is a limiting term even if in the

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preamble only. The only remaining question is whether “base plate” should be further defined.

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IPT argues “no,” asserting that the Court may rest on the term‟s plain and ordinary meaning. And

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practically speaking, Defendants do not disagree as their proposed definition of the larger phrase

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“optimized low profile base plate” repeats the term “base plate.” The Court, therefore, need not, at

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this juncture, provide any specific construction for the term “base plate.”

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C.

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“Optimized”
The second term at issue is “optimized.” Here, the Court does not agree with IPT‟s
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position that “optimized” as used in the preamble is a limiting term. As Defendants point out, that

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argument is contrary to Federal Circuit authority holding that “a preamble generally is not limiting

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when the claim body describes a structurally complete invention such that deletion of the preamble

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phrase does not affect the structure or steps of the claimed invention.” Catalina Mktg., 289 F.3d at

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809. “Optimization” is what the equation in the body of claim 1 provides (i.e., an optimized

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design). Thus, the use of the term “optimized” in the preamble is essentially duplicative of the

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equation in the body of claim 1 (or the relevant equation in the other claims). See „841 patent, col.

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2:21-22 (“The optimized parameters are such as to satisfy the following equation: . . . .”); see also

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Am. Med., 618 F.3d at 1359 (stating that, “[i]f the preamble „is reasonably susceptible to being

added to overcome a [prior art] rejection), we do not construe it to be a separate limitation‟”).

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For the Northern District of California

construed to be merely duplicative of the limitations in the body of the claim (and was not clearly

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United States District Court

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D.

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“Low Profile”
The parties‟ main dispute turns on the term “low profile” – i.e., whether this preamble term

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is limiting in nature. IPT argues that “low profile” must be deemed limiting because “the „841

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Patent discloses exemplary base plate dimensions that have a geometry metric value above 5” but,

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“because the geometry metric value is the result of a ratio, an object with those dimensions in

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kilometers (or miles) would result in the same geometry metric value.” Op. Br. at 7-8 (emphasis

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in original). “To read the „841 Patent as covering such objects would be „divorced from reality‟” –

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especially since the invention is directed at base plates used in hard disk drives. Op. Br. at 8. In

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short, according to IPT, “low profile” is a necessary term that provides the scale of the

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optimization formula.

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The Court finds that “low profile” is, indeed, limiting based on Federal Circuit authority

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holding that, “when reciting additional structure or steps underscored as important by the

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specification, the preamble may operate as a claim limitation.” Catalina Mktg., 289 F.3d at 808.

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Poly-America, L.P. v. GSE Lining Technology, Inc., 383 F.3d 1303 (Fed. Cir. 2004), is a good

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example of such a case. There, the Federal Circuit agreed with the patent holder that “the

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[preamble] phrase „blown-film‟ is a limitation” because “[t]he specification is replete with

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references to the invention as a „blown-film‟ liner, including the title of the patent itself and the
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„Summary of the Invention.‟” Id. at 1310. The court also noted that “[t]he phrase is used

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repeatedly to described the preferred embodiments, and the entire preamble „blown-film textured

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liner‟ is restated in each of the patent‟s seven claims.” Id.

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General Electric Co. v. Nintendo Co., 179 F.3d 1350 (Fed. Cir. 1999), is another example.

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There, the patent at issue was directed to devices for retrieving stored picture information from the

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memory of a computer and displaying that information on a standard television screen or other

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display device (e.g., monitor). See id. at 1352. The alleged infringer argued that there was no

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infringement because claim 1 requires a bit map display device and the accused products did not

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meet this limitation. The question for the Federal Circuit was whether a bit map display device

– i.e., “„[a] system for displaying a pattern on a raster scanned display device by mapping bits

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For the Northern District of California

was a limitation on claim 1; the only reference in claim 1 to a bit map display was in the preamble

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United States District Court

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from a display location in a memory associated with a computer onto the raster.‟” Id. at 1361.

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The court found that the preamble was a limitation.
Here, the „125 specification makes clear that the inventors were
working on the particular problem of displaying binary data on a
raster scan display device and not general improvements to ally
display systems. In light of the specification, to read the claim
indiscriminately to cover all types of display systems would be
divorced from reality. The invention so described is restricted to
those display devices that work by displaying bits, which is not true
with respect to all display systems recited in just the body of the
claim. “Thus, we conclude that the claim preamble in this instance
does not merely state a purpose or intended use for the claimed
structure. Rather, those words do give „life and meaning‟ and
provide further positive limitations to the invention claims.”

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Id. at 1361-62; see also Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251,

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1256-57 (Fed. Cir. 1989) (rejecting alleged infringer‟s argument that that preamble term “optical

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waveguide” was not a limitation and simply stated an intended use; “[t]o read the claim in light of

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the specification indiscriminately to cover all types of optical fibers would be divorced from

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reality”).

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In the instant case, the specification indicates that the preamble phrase “low profile” should

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be considered a limitation. Similar to the situation in Poly-America, here, the preamble phrase

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“low profile” is part of the title of the patent itself (“Optimized Low Profile Swage Mount Base
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Plate Attachment of Suspension Assembly for Hard Disk Drive”) and the summary of the

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invention. See „841 patent, col. 2:14-16 (summary of the invention) (“Briefly, the invention is

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concerned with an optimized low profile base plate for attachment of a suspension assembly to an

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actuator arm in a hard disk drive.”) (emphasis added); „841 patent, col. 2:27-30 (summary of the

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invention) (“The invention has the advantage that gram load change inherent in swaging is

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reduced and a large retention torque can be created even in low hub height configurations that

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offer limited retention torque in a standard hub geometry.”) (emphasis added). Also, the preamble

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phrase “low profile” is restated in each of the patent‟s independent claims. See „841 patent, claims

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1, 4, 7, 10. Finally, the background of the invention emphasizes that the invention is a low profile

assemblies for supporting read/write heads adjacent rotating disks in disk drives and more

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For the Northern District of California

base plate specifically. See „841 patent, col. 1:18-22 (“This invention relates to disk head

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United States District Court

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particularly, to a low profile base plate for attaching a head suspension assembly to a head actuator

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arm.”) (emphasis added); „841 patent, col. 2:7-8 (“It is therefore desirable to provide a base plate

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that has a lower profile than a conventional base plate . . . .”) (emphasis added). This is

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underscored by the prosecution history. See Op. Br., Ex. B (affidavit submitted to the PTO on

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behalf of IPT) (stating that “there was a long felt need for the invention as evidenced by customers

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requiring a low profile base plate that has a lower profile than a conventional base plate, a torque

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retention capability comparable to existing products with a reduced pre-load change caused by the

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swaging process, needs that are well known in the industry wherein disk drives are becoming

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smaller and faster”) (emphasis added). And it is clear from the title, summary, and specification

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that the scale of the invention is such that it applies to HDDs.

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The arguments that Defendants make in their responsive brief are not persuasive. For

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example, as noted above, in its opening brief, IPT argued that “low profile” must be deemed a

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limitation even though appearing in the preamble only because otherwise “an object with [certain]

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dimensions in kilometers (or miles)” would satisfy the equation in, e.g., claim 1. Op. Br. at 8

26

(emphasis in original). In response to IPT‟s argument, Defendants argued that this was an

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“insincere” concern because “base plates are components of a hard disk drive and none of the

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accused or prior art base plates at issue in this case is so impractically sized in kilometers.” Resp.
12

1

Br. at 7. But if anything, this argument of Defendants underscores why “low profile” is in fact

2

part of the invention claimed: the body of claim 1 does not refer to HDDs; “low profile” is not

3

duplicative of anything in the body of the claim.

4

Defendants protest that if the term “low profile” is a limitation on the invention, then the

5

invention must be deemed invalid because “low profile” is indefinite. Defendants have the burden

6

of establishing indefiniteness by clear and convincing evidence. See TecSec v. Int'l Bus Machines

7

Corp., 731 F.3d 1336, 1349 (Fed. Cir. 2013). Generally, “a patent is invalid for indefiniteness if

8

its claims, read in light of the specification delineating the patent, and the prosecution history, fail

9

to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”

Co. v. Mylan Inc., No. 13-CV-04001-LHK, 2014 U.S. Dist. LEXIS 159527, at *13-14 (N.D. Cal.

12
For the Northern District of California

Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014); see also Takeda Pharm.

11

United States District Court

10

Nov. 11, 2014) (noting that, prior to Nautilus, “the Federal Circuit applied an „insolubly

13

ambiguous‟ standard to indefiniteness questions” but “the Supreme Court rejected the insolubly

14

ambiguous standard and replaced it with a „reasonable certainty‟ standard”).

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Whether a claim is indefinite or definite is a question of law. See DDR Holdings, LLC v.

16

Hotels.com, L.P., 773 F.3d 1245, 1260 (Fed. Cir. 2014). But while “[i]ndefiniteness is . . . a legal

17

determination arising out of the court‟s performance of its duty construing the claims,” “[l]ike

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enablement, definiteness, too, is amenable to resolution by the jury where the issues are factual in

19

nature.” BJ Servs. Co. v. Halliburton Energy Servs., 338 F.3d 1368, 1372 (Fed. Cir. 2003).

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Defendants argue that “low profile” is indefinite because it “is a relative term with no

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understood meaning.” Resp. Br. at 5. In response, IPT notes that “relative terms and words of

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degree do not render patent claims invalid” so long as the claim terms inform those skilled in the

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art about the scope of the invention with reasonable certainty. One-E-Way, Inc. v. Int’l Trade

24

Comm’n, 859 F.3d 1059, 1063 (Fed. Cir. 2017) (adding that “[o]ne must bear in mind . . . that

25

patents are not addressed to lawyers, or even to the public generally, but rather to those skilled in

26

the relevant art”) (internal quotation marks omitted).

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For example, in 1923, the Supreme Court “uph[eld] as definite a
patent for an improvement to a paper-making machine, which
provided that a wire be placed at a „high‟ or „substantial elevation.‟”
13

Nautilus, 134 S. Ct. at 2129 n.5 (citing Eibel Process, 261 U.S. at
58). The Court explained that these relative terms – “substantial”
and “high” – were sufficiently definite because “„readers . . . skilled
in the art of paper making and versed in the use of the . . . machine‟
would have „no difficulty . . . in determining . . . the substantial
[elevation] needed‟ for the machine to operate as specified.” Id.
(quoting Eibel Process, 261 U.S. at 65-66).

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2
3
4
5

Id.
In One-E-Way, the Federal Circuit noted that

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[t]his historical practice continues today. In one of our postNautilus decisions, we upheld as definite a claim that employed the
relative term “substantially centered.” Apple Inc. v. Samsung Elecs.
Co., 786 F.3d 983, 1002 (Fed. Cir. 2015), rev’d and remanded on
other grounds, 137 S. Ct. 429, 196 L. Ed. 2d 363 (2016). The claim
term, used in a patent relating to a user-interface feature, required
that a selected portion of an electronic display be enlarged and
“substantially centered” on the display. Id. (quoting U.S. Patent No.
7,864,163 (Claim 50)). The patent challenger had failed to adduce
any evidence showing that the person of ordinary skill would lack
reasonable certainty in the claim's scope, while the patent owner had
presented expert testimony that skilled artisans would interpret
“substantially centered” in the patent “to mean essentially centered
except for a marginal spacing to accommodate ancillary graphical
user interface elements.” Id. at 1003. Moreover, the expert‟s
suggested interpretation of “substantially centered” paralleled the
patent specification's disclosure. Id. Relying on these disclosures,
the court concluded that “substantially centered” was not indefinite.
Id.

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For the Northern District of California

United States District Court

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Id.
And in One-E-Way itself, the Federal Circuit held that the term “virtually free from

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interference” was not indefinite and that the term meant preventing one user from eavesdropping

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on another. See id. at 1063-64. The court noted that “[t]he specification repeatedly highlights

21

[the] private-listening feature of the claimed invention. And in each repetition, the specification

22

states that private listening is „without interference‟ from other users‟ wireless audio transmission

23

devices.” Id. at 1064. In addition, the prosecution history confirmed the above construction of the

24

term. “During prosecution of the related parent patent, the applicant explained that term „virtually

25

free from interference‟ results in the ability to listen without eavesdropping.” Id. at 1064-65.

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While the court admitted that it had not defined the term “in a technical sense,” it explained that

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the lack of a technical definition does not render the term indefinite.
As demonstrated by the specification and prosecution history
discussed above, the applicant used the term "interference" in a non14

technical manner to simply mean that the wireless headphone user is
able to listen without eavesdropping. This interpretation is
consistent with the specification and prosecution history and
provides a clear line such that it informs those skilled in the art
about the scope of the invention with reasonable certainty. For the
purposes of definiteness, the term is not required to have a technical
measure of the amount of interference.

1
2
3
4
5

Id. at 1066.

indefiniteness as the Federal Circuit did in One-E-Way. While, as IPT notes, the „841 patent does

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provide one example of what constitutes “low profile,” see, e.g., col. 4:1-19 (chart reflecting

9

typical invention dimensions),4 it is not clear what height would take a base plate outside of the

10

category of “low profile.” Cf. Core Wireless Licensing S.A.R.L. v. Apple Inc., No. 15-cv-05008-

11

PSG, 2016 U.S. Dist. LEXIS 72935, at *35-36 (N.D. Cal. June 3, 2016) (finding the term

12
For the Northern District of California

In the instant case, the Court does not have a sufficient record to make a determination on

7

United States District Court

6

“substantially impair the quality of the user information” indefinite; noting that, “[a]t least on one

13

point, the specification seems clear: stealing a single frame would fall within the claimed

14

invention[,] [b]ut the edges of the claim are murkier” and based on the “„zone of uncertainty,‟”

15

concluding indefiniteness); see also Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371

16

(Fed. Cir. 2014) (stating that “a patent does not satisfy the definiteness requirement of § 112

17

merely because „a court can ascribe some meaning to a patent's claims‟[;] [t]he claims, when read

18

in light of the specification and the prosecution history, must provide objective boundaries for

19

those of skill in the art,” and “a term of degree fails to provide sufficient notice of its scope if it

20

depends „on the unpredictable vagaries of any one person‟s opinion‟”) (emphasis in original).

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At the hearing, IPT contended that one skilled in the art would be able to ascertain and

22

describe the boundaries of “low profile” perhaps based on prior art and/or dimensions of HDDs at

23

the time. But no evidence has been presented by either party on what one skilled in the art would

24

or would not know. Accordingly, at this juncture of the proceedings, the Court finds that “low

25

profile” is a limitation on the invention but specific construction of the term – including whether

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28

4

Column 4 of the patent indicates that the typical invention dimension for HH + TBP is 0.269mm +
0.150mm, or 0.419mm. Thus, one skilled in the art would infer that 0.419mm would be low
profile.
15

1

or not the term is sufficiently definite – is otherwise not possible based on the record before the

2

Court at this time. Nor is the Court prepared at this juncture to rule on indefiniteness as a matter

3

of law. Defendants may, in the future, seek a ruling on indefiniteness after further development of

4

the record.
III.

5
6

CONCLUSION

For the foregoing reasons, the Court finds that the terms “low profile” and “base plate” –

7

although appearing in the preamble only – are limitations on the invention claimed in the „841

8

patent. In contrast, the term “optimized” is not a limitation.

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10

IT IS SO ORDERED.

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For the Northern District of California

United States District Court

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Dated: February 1, 2018
______________________________________
EDWARD M. CHEN
United States District Judge

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