Brandywine Communications Technologies, LLC v. AT&T Corp. et al
Filing
197
ORDER by Judge Claudia Wilken CONSTRUING CLAIMS; GRANTING 149 MOTION FOR LEAVE TO AMEND INFRINGEMENT CONTENTIONS; DENYING 128 MOTION TO STRIKE INFRINGMENT CONTENTIONS. Plaintiff is required to E-FILE the amended document. (ndr, COURT STAFF) (Filed on 4/18/2014)
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IN THE UNITED STATES DISTRICT COURT
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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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BRANDYWINE COMMUNICATIONS
TECHNOLOGIES, LLC,
Plaintiff,
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No. C 12-2494 CW
v.
AT&T CORP., et al.,
Defendants.
________________________________/
United States District Court
For the Northern District of California
10
11
ORDER CONSTRUING
CLAIMS; GRANTING
MOTION FOR LEAVE
TO AMEND
INFRINGEMENT
CONTENTIONS;
DENYING MOTION TO
STRIKE INFRINGMENT
CONTENTIONS
(Docket Nos. 68,
128, 149)
Plaintiff Brandywine Communications Technologies, LLC brought
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this action against Defendants AT&T Corporation and SBC Internet
13
Services, Inc. for patent infringement.
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meaning of sixteen claim terms in five of Brandywine’s patents:
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U.S. Patent Nos. 5,251,328 (‘328 patent), 5,812,537 (‘537 patent),
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6,970,501 (‘501 patent), 7,894,472 (‘472 patent), and 5,828,657
17
(‘657 patent).
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oral argument, the Court construes the disputed terms as set forth
19
below.
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leave to amend its infringement contentions and denies Defendants’
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motion to strike.
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1
The parties dispute the
After considering the parties’ submissions and
In addition, the Court grants Brandywine’s motion for
BACKGROUND
This case is one of over forty lawsuits that Brandywine has
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filed around the country over the past two years alleging
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“infringement of six patents that generally relate to networking
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protocols, techniques, and systems for use in the provision of
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1
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The parties represent that they do not dispute the meaning of any
claims in the sixth patent in suit, U.S. Patent No. 5,206,854.
Internet connectivity via digital subscriber line (DSL)
2
technology.”
3
Litig., 959 F. Supp. 2d 1377, 1378 (J.P.M.L. 2013).
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actions have been voluntarily dismissed pursuant to settlement
5
agreements.
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cases to reach the claim construction stage.
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construction order regarding these patents was issued by a court
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in the Middle District of Florida in April 2013.
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Commc’ns Technologies, LLC v. CenturyTel Broadband Servs., LLC,
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United States District Court
For the Northern District of California
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Civil Case No. 12-0286, Docket No. 96 (M.D. Fla. April 17, 2013)
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(CenturyTel).2
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In re Brandywine Commc’ns Techs., LLC, Patent
Id.
Most of these
As a result, this is only the second of these
The first claim
Brandywine
The parties in this action originally filed their motions for
13
claim construction in April and May 2013.
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were pending, however, Brandywine filed a motion for
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centralization of its various patent infringement actions with the
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Judicial Panel on Multidistrict Litigation.
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motion, this Court vacated the scheduled claim construction
18
hearing and stayed the present action pending a decision by the
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Panel on whether to centralize these cases.
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Panel denied Brandywine’s motion.
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various actions were “being litigated in a manner that is likely
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to lead to their resolution, whether through settlement or other
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means, within a relatively short period of time” and thus
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concluded that “centralization of this litigation might hinder the
25
orderly and efficient resolution of these cases.”
While those motions
In light of that
In August 2013, the
It noted that Brandywine’s
In re
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27
28
2
Brandywine has submitted a copy of the CenturyTel court’s
unpublished claim construction order as Exhibit F to the Declaration of
Lei Sun. See Docket No. 68-7.
2
1
Brandywine Commc’ns Techs., LLC, Patent Litig., 959 F. Supp. 2d at
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1378.
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for claim construction in September 2013.
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This Court lifted the stay and heard the parties’ motions
Four months later, in January 2014, Brandywine served
5
Defendants with supplemental infringement contentions.
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promptly moved to strike those supplemental infringement
7
contentions on the grounds that Brandywine had failed to obtain
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leave of the Court, as required by this Court’s Local Rules.
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Brandywine moved for leave to amend its infringement contentions
United States District Court
For the Northern District of California
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shortly thereafter.
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Defendants
DISCUSSION
I.
Claim Construction
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A.
14
The construction of a patent is a matter of law for the
Legal Standard
15
Court.
16
(1996).
17
claims of a patent define the invention to which the patentee is
18
entitled the right to exclude.’”
19
1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water,
20
Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115
21
(Fed. Cir. 2004)).
22
Court first looks to the words of the claims.
23
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
24
Generally, the court ascribes the words of a claim their ordinary
25
and customary meaning.
26
“the ordinary and customary meaning of a claim term is the meaning
27
that the term would have to a person of ordinary skill in the art
28
in question at the time of the invention, i.e., as of the
Markman v. Westview Instruments, Inc., 517 U.S. 370, 372
“It is a ‘bedrock principle’ of patent law that ‘the
Phillips v. AWH Corp., 415 F.3d
Accordingly, in construing disputed terms, the
Id.
Vitronics Corp. v.
The Federal Circuit instructs that
3
1
effective filing date of the patent application.”
2
F.3d at 1313.
3
assist in determining the meaning of a claim term.
4
“Because claim terms are normally used consistently throughout the
5
patent, the usage of a term in one claim can often illuminate the
6
meaning of the same term in other claims.”
7
Phillips, 415
Other claims of the patent in question can also
Id. at 1314.
Id.
The Federal Circuit also instructs that claims “must be read
8
in view of the specification, of which they are a part.”
9
1315 (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967,
Id. at
United States District Court
For the Northern District of California
10
979 (Fed. Cir. 1995) (en banc)).
11
description of the invention that is clear and complete enough to
12
enable those of ordinary skill in the art to make and use it, and
13
thus the specification is “always highly relevant” to the Court’s
14
claim construction analysis.
15
“Usually, [the specification] is dispositive; it is the single
16
best guide to the meaning of a disputed term.”
17
cases, the specification may reveal that the patentee has given a
18
special definition to a claim term that differs from its ordinary
19
meaning; in such cases, “the inventor’s lexicography controls.”
20
Phillips, 415 F.3d at 1316.
21
patentee’s intentional disclaimer or disavowal of claim scope.
22
“In that instance as well, the inventor has dictated the correct
23
claim scope, and the inventor’s intention, as expressed in the
24
specification, is regarded as dispositive.”
25
are not limited to the preferred embodiment described in the
26
specification.
27
775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc; plurality opinion).
The specification must contain a
Vitronics, 90 F.3d at 1582.
Id.
In some
The specification also may reveal the
Id.
However, claims
See SRI Int’l v. Matsushita Elec. Corp. of Am.,
28
4
1
While emphasizing the importance of intrinsic evidence in
2
claim construction, the Federal Circuit has authorized courts to
3
rely on extrinsic evidence, which consists of “all evidence
4
external to the patent and prosecution history, including expert
5
and inventor testimony, dictionaries, and learned treatises.”
6
Phillips, 415 F.3d at 1317 (quoting Markman, 52 F.3d at 980).
7
While extrinsic evidence may be useful to the Court, it is less
8
significant than intrinsic evidence in determining the legally
9
operative meaning of claim language.
Phillips, 415 F.3d at 1317-
United States District Court
For the Northern District of California
10
18; see also C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858,
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862 (Fed. Cir. 2004).
12
to lead to a reliable interpretation of claim language unless
13
considered in the context of the intrinsic evidence.
14
415 F.3d at 1319.
Furthermore, extrinsic evidence is unlikely
Phillips,
15
B.
16
When a signal is transmitted through a communications
‘328 Patent
17
channel, its waveform or amplitude may be altered during the
18
transmission process.
19
as “distortions.”
20
(4th ed. 1999) (defining a “distortion” as the “undesirable change
21
in the waveform of a signal”).
22
technique for compensating for distortion introduced in a portion
23
of a communications channel.”
24
Undesirable alterations are typically known
See generally Microsoft Computer Dictionary 146
The ‘328 patent discloses “a
‘328 patent col. 1:7-:10.
The parties dispute four of the ‘328 patent’s claim terms.
25
Claim 2 illustrates the patent’s usage of two of these terms, both
26
of which are highlighted in bold below:
27
28
A method for use in a transceiver of a
communications system wherein a
communications channel through which a
5
signal is transmitted introduces amplitude
distortion, said method comprising the
steps of
determining less than all of the amplitude
distortion introduced within said
communications channel in response to a
signal received from said communications
channel using apparatus [sic] designed to
determine less than all of the amplitude
distortion introduced within said
communications channel; and
predistorting a transmitted signal from said
transceiver in response to said determined
amplitude distortion.
1
2
3
4
5
6
7
8
‘328 patent col. 6:6-:18.
9
United States District Court
For the Northern District of California
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12
13
14
15
16
17
18
19
20
Claim 15 illustrates how the other two disputed terms are
used:
A method for use in a communications system
wherein a signal is transmitted from a
transmitter through a communications
channel to a receiver, said communications
channel including a plurality of serially
connected channel sections which introduce
amplitude distortion into a transmitted
signal including the section adjacent said
receiver, said method comprising the steps
of
receiving a training sequence including at
least one a priori known signal and
determining the amplitude distortion
introduced only in the communications
channel section adjacent said receiver in
response to said received training
sequence.
21
‘328 patent col. 7:8-:21.
22
3, 15, and 21 of the patent.
The disputed terms appear in claims 2,
23
24
25
26
27
28
6
1.
1
2
3
“Communications Channel Including a Plurality of
Serially Connected Channel Sections Which Introduce
Amplitude Distortion into a Transmitted Signal”
(Claims 3, 15)3
The parties dispute whether every section of the
4
“communications channel” described in this term must introduce
5
distortion into the transmitted signal.
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every “section” of the communications channel must introduce
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distortion because the subject of the verb “introduce” appears to
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be “sections” rather than “plurality.”
9
argues that the term may describe any communications channel in
Defendants argue that
Brandywine, in contrast,
United States District Court
For the Northern District of California
10
which “at least one” section introduces distortion.
11
CenturyTel court adopted Defendants’ proposed construction.
12
Decl., Ex. F, April 2013 CenturyTel Order, at 14 (holding that
13
“the grammatical construction of the sentence forecloses the
14
possibility that just one channel section can introduce amplitude
15
distortion”).
16
The
Sun
The Court finds that Defendants’ proposed construction is
17
overly restrictive because it effectively construes the word
18
“plurality” to mean “all” rather than simply “a large number,”
19
which is its ordinary meaning.
20
International Dictionary 1745 (Philip Babcok Gove ed. 1993).
21
assuming that “sections” is the intended subject of “introduce,”
22
as Defendants contend,
23
distortion is still constrained by the word “plurality.”
24
25
26
27
28
4
See Webster’s Third New
Even
the number of “sections” that introduce
3
The term, “sections,” as it is used in this and other claims from
the ‘328 patent, is construed separately below.
4 While Defendants are correct that “plurality” is a singular
noun -- and, as such, cannot correctly be the subject of “introduce” -native English writers frequently treat collective nouns like
“plurality” as though they are plural. See Valerie Krishna, “The Syntax
of Error,” 1 J. Basic Writing 43, 44 (1975) (observing that collective
nouns are a common source of grammatical error).
7
1
The Court therefore adopts Brandywine’s proposed construction
2
for this claim term, which reads as follows: “communications
3
channel including a plurality of serially connected channel
4
sections, at least one of which introduces amplitude distortion
5
into a transmitted signal.”
6
7
2.
“Determining” claims (Claims 2, 15, 21)
The ‘328 patent specification discloses a method for
8
“determining the distortion introduced within a portion of a
9
communications channel” and then using that determination “to
United States District Court
For the Northern District of California
10
predistort the signal transmitted by that transceiver to
11
compensate for all or a part of the determined amplitude
12
distortion.”
13
claims use the term “determining” to describe the first part of
14
this process, during which the level of amplitude distortion is
15
initially determined.
16
‘328 patent col. 2:9-:15.
Three of the patent’s
The parties dispute whether the “determining” steps can be
17
performed by analyzing a signal that has traveled through only
18
part of the communications channel, rather than the entire
19
channel.
20
the entire channel.
21
invention described in the specification requires both the
22
transmission and receipt of “known signals” (sometimes called a
23
“training sequence”) through a given communications channel in
24
order to determine the level of amplitude distortion introduced by
25
that communications channel.
26
that this description shows that the “determining” steps require
27
an examination of a “training sequence” that has been transmitted
28
through the entire communications channel.
Defendants contend that the signal must travel through
They note that a preferred embodiment of the
Id. col. 2:17-:20.
8
Defendants argue
Two of the disputed
1
claims, however, do not contain this limitation and Defendants
2
have not identified anything in the prosecution history to suggest
3
that the “determining” steps should be construed so narrowly.
4
Moreover, several of the patent’s other claims disclose a specific
5
apparatus that uses a “training sequence” to determine the
6
amplitude distortion.
7
the “determining” steps in the three disputed claims -- two of
8
which do not refer specifically to any “training sequence” -- were
9
not meant to be construed as narrowly as Defendants suggest.
United States District Court
For the Northern District of California
10
See id. col. 8:14-:25.
This suggests that
5
Thus, because Defendants’ proposed limitation is based on a
11
preferred embodiment of the invention, their argument that the
12
“determining” claims require a known signal to traverse the entire
13
communications channel must be rejected.
14
Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir.
15
1985) (en banc; plurality opinion) (recognizing that preferred
16
embodiments in the specification should not be used to limit claim
17
language).
18
in its claim construction order.
19
20
See SRI Int’l v.
The CenturyTel court likewise rejected this argument
See CenturyTel Order 14-17.
The Court therefore adopts the following constructions of the
“determining” terms in claims 2, 15, and 21.
6
21
22
23
24
25
26
27
28
5
Defendants note that Brandywine misapplied the doctrine of claim
differentiation when it raised this argument in its opening brief
because claim 19 is not dependent on any of the specific claims in
dispute here. Even if the doctrine is inapplicable here, however, the
underlying logic of Brandywine’s argument remains correct: the
inventor’s use of a more specific term -- “training sequence” -- in the
undisputed claims suggests that he deliberately omitted that term from
the disputed claims.
6 The Court rejects the alternative constructions proposed by
Defendants in their supplemental post-hearing brief because all of their
alternative constructions use a grammatical structure that is likely to
cause confusion.
9
1
Claim 2: “determining less than all of the amplitude
2
distortion introduced within said communications channel in
3
response to a signal received from said communications channel” is
4
construed as “determining less than all of the amplitude
5
distortion introduced within said communications channel in
6
response to a signal which was received from said communications
7
channel and traveled through all or part of that communications
8
channel.”
9
Claim 15: “determining the amplitude distortion introduced
United States District Court
For the Northern District of California
10
only in the communications channel section adjacent said receiver
11
in response to said received training sequence” is construed as
12
“determining the amplitude distortion introduced only in the
13
communications channel section adjacent said receiver in response
14
to said received training sequence, which traveled through all or
15
part of that communications channel.”
16
Claim 21: “determining the amplitude distortion introduced
17
within only one of said communications channel sections in
18
response to a signal received from said communications channel” is
19
construed as “determining the amplitude distortion introduced
20
within only one of said communications channel sections in
21
response to a signal which was received from said communications
22
channel and traveled through all or part of that communications
23
channel.”
24
25
26
27
28
3.
“Predistorting a Transmitted Signal from Said
Transceiver” (Claims 2, 21)
The parties’ disagreement concerning the meaning of the
“predistorting” terms has two parts.
First, they dispute whether
the “predistorting” step disclosed in claims 2 and 21 requires
10
1
that the predistortion be based on the “inverse of the amplitude
2
distortion.”
3
whether the “predistorting” steps in these claims must be
4
performed by the same transceiver that performs the “determining”
5
steps discussed above.
6
Defs.’ Claim Constr. Brief 23.
Second, they dispute
Regarding the first dispute, Defendants argue that the
7
specification expressly requires that the “predistorting” steps be
8
based on an “inverse of the amplitude distortion.”
9
they cite language from the specification which states, “In
For support,
United States District Court
For the Northern District of California
10
certain system applications, it is desirable to predistort the
11
transmitted signal from transceiver 102 based on the exact inverse
12
of the determined distortion characteristic.”
13
5:1-:18 (emphasis added).
14
is misplaced, however, because the sentence’s prefatory clause --
15
“In certain applications” -- makes clear that it is only
16
describing a preferred embodiment of the invention.
17
added).
18
proposed limitation into the “predistorting” steps.
19
CenturyTel court reached the same conclusion.
20
11-13.
21
‘328 patent col.
Defendants’ reliance on this sentence
Id. (emphasis
The claims themselves do not incorporate Defendants’
The
CenturyTel Order
Regarding the parties’ second dispute, the Court finds that
22
the “determining” and “predistorting” steps must both be performed
23
by the same transceiver.
24
construction because it refers only to one transceiver.
25
discloses a “method for use in a transceiver” for “determining
26
less than all of the amplitude distortion introduced” by a given
27
communications channel.
28
added).
The language of claim 2 supports this
Claim 2
‘328 patent col. 6:6-:11 (emphasis
The same claim discloses a method for “predistorting a
11
1
transmitted signal from said transceiver in response to said
2
determined amplitude distortion.”
3
added).
4
single transceiver.
5
6
7
8
9
United States District Court
For the Northern District of California
10
11
Id. col. 6:16-:18 (emphasis
This suggests that the two steps are performed by a
This interpretation is consistent with the specification’s
“Summary of the Invention,” which states,
the present invention covers the notion of
determining the distortion introduced within a
portion of a communications channel between
two signal transceivers by processing the
received signal at a transceiver and then
using the results of this processing to
predistort the signal transmitted by that
transceiver to compensate for all or a part of
the determined amplitude distortion.
12
Id. col. 2:8-:15 (emphasis added).
13
the “predistorting” step is performed by the same transceiver that
14
performs the “determining” step.
15
reached a different conclusion, it did not explain its reasoning.
16
The Court therefore adopts the following construction, which
This language indicates that
Although the CenturyTel court
17
omits Defendants’ proposed limitation and makes clear that the
18
“predistorting” and “determining” steps are performed by the same
19
transceiver: “adjusting a signal, to be transmitted from the same
20
transceiver that determined the amplitude distortion, to
21
compensate for amplitude distortion before the introduction of the
22
amplitude distortion.”
23
4.
“Section(s)” (Claims 15, 21)
24
The parties dispute whether the term “section(s)” should be
25
construed as “subscriber loops,” as Defendants contend, or given
26
its plain and ordinary meaning, as Brandywine contends.
27
CenturyTel court did not discuss this term in its claim
28
construction order.
12
The
1
Because the patent claims clearly distinguish between
2
“section(s)” and “subscriber loops,” Defendants’ proposed
3
construction must be rejected.
4
specifically to a communications channel that “includes two
5
subscriber loops and the communications channel section adjacent
6
said apparatus is a subscriber loop.”
7
If “section” were construed to mean “subscriber loop,” as
8
Defendants have proposed, then this claim language would be
9
redundant.
United States District Court
For the Northern District of California
10
11
Claim 6 of the patent refers
‘328 patent col. 6:44-:46.
The Court therefore finds that this term should be construed
according to its plain and ordinary meaning.
12
C.
13
When a signal is transmitted over a communications channel,
‘537 Patent
14
an unwanted “echo” of that signal is sometimes transmitted back to
15
the sender.
16
and apparatus” intended to reduce these unwanted signals.
17
patent col 1:66.
18
used in this patent and the ‘657 patent, means “a reflected signal
19
that is transmitted by one receiver, reflected by something on the
20
transmission line, and then received by the same transceiver.”
21
The ‘537 patent discloses an “echo canceling method
‘537
The parties agree that the term “echo,” as it is
The parties dispute four of the ‘537 patent’s claim terms.
22
All four of these terms appear in claim 1 of the patent, which
23
reads as follows:
24
25
26
27
28
Data communications equipment apparatus
comprising:
an echo canceler for processing an echocorrupted signal to provide an echocanceled signal, wherein the echo canceler
has a set of tap coefficients, each tap
coefficient having an initial value
determined during a half-duplex portion of
a training sequence;
13
1
2
3
4
5
6
7
8
9
United States District Court
For the Northern District of California
10
11
12
13
14
15
16
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18
19
20
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25
26
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circuitry for detecting the presence of a
residual echo signal in the echo-canceled
signal during full-duplex transmission that
is subsequent to said half-duplex portion
of the training sequence; and
a processor, coupled to the circuitry, for
adjusting each initial value of each tap
coefficient by a fixed amount when the
detected residual echo signal during full
duplex transmission is greater than a
predetermined amount.
‘537 patent col. 7:40-:55.
The disputed claim terms also appear
in claims 2, 6, 7, 12, 13, and 19.
1.
“Fixed Amount” (Claims 1, 6, 12, 19)
Defendants contend that this term should be construed as
“predefined, non-variable amount.”
Brandywine, in contrast,
contends that it should be given its plain and ordinary meaning.
The Court finds that this term should be given its plain and
ordinary meaning because, as the CenturyTel court explained, the
term “does not have a technical meaning that would cause jury
confusion.”
CenturyTel Order 18; see also Phillips, 415 F.3d at
1314 (“In some cases, the ordinary meaning of claim language as
understood by a person of skill in the art may be readily apparent
even to lay judges, and claim construction in such cases involves
little more than the application of the widely accepted meaning of
commonly understood words.”).
2.
“Predetermined Amount” (Claims 1, 19)
Defendants contend that this term should be construed as
“threshold error level determined before training to indicate
incorrect training.”
Brandywine asserts that it should be given
its plain and ordinary meaning.
The CenturyTel court did not
discuss this term in its claim construction order.
28
14
1
Because this term does not have a technical meaning that is
2
likely to cause confusion, the Court finds that this term should
3
be construed according to its plain and ordinary meaning.
4
Phillips, 415 F.3d at 1314.
5
6
3.
“Residual Echo” (Claims 1, 2, 6, 7, 12, 13)
Defendants contend that the term should be construed as
7
“uncanceled echo resulting from a non-linear condition during
8
half-duplex training not present during full-duplex training”
9
while Brandywine contends that it should be construed as “portion
7
United States District Court
For the Northern District of California
10
of an echo that remains after filtering.”
11
did not discuss this term in its claim construction order.
12
The CenturyTel court
Defendants’ proposed construction would improperly limit the
13
meaning of the disputed term by requiring that the residual echo
14
result from “a non-linear condition.”
15
any compelling reasons to impose such a limitation here.
16
Furthermore, Defendants’ proposed construction would add confusing
17
and redundant language to the disputed claims by attempting to
18
describe the residual echo’s relationship to the training
19
sequences.
20
See, e.g., ‘328 patent col. 7:47-:50 (claiming “circuitry for
21
detecting the presence of a residual echo signal in the echo-
22
canceled signal during full-duplex transmission that is subsequent
23
to said half-duplex portion of the training sequence”).
Defendants have not offered
The disputed claims already contain similar language.
Thus,
24
7
25
26
27
28
Brandywine originally proposed that this term be construed
according to its plain and ordinary meaning. At the hearing, however,
the Court noted that many jurors would not be familiar with the plain
and ordinary meaning of “residual echo” and directed the parties to
propose an alternative construction for this term. Brandywine thus
proposed a new construction in a supplemental brief that it submitted
jointly with Defendants after the hearing. The Court considers
Brandywine’s alternative proposed construction here.
15
1
because Defendants’ proposed construction is unjustifiably narrow
2
and likely to confuse the jury, it must be rejected.
3
Brandywine’s proposed construction, unlike Defendants’, does
4
not impose any improper limitations on the scope of the disputed
5
term.
6
because it uses the word “filtering,” which does not appear in any
7
of the patent’s other claims.
8
adopts a modified version of Brandywine’s proposal and construes
9
the disputed term as follows: “portion of an echo that remains
United States District Court
For the Northern District of California
10
It still has the potential to cause confusion, however,
To address this problem, the Court
after an echo-cancelation process.”
11
4.
12
13
“Adjusting the Initial Value of (Each One of the
Set of) Tap Coefficient (of the Echo Canceler) by a
Fixed Amount” (Claims 1, 12, 15, 19, 22)
Defendants contend that the “adjusting” process described in
14
these claims is “distinct from the continued adaptation of the
15
echo canceler.”
16
that this construction improperly limits the scope of the disputed
17
term.
18
this term should be construed according to its plain and ordinary
19
meaning.
20
Computing Corp., 626 F.3d 1197, 1207 (Fed. Cir. 2010)).
21
Defs.’ Claim Constr. Resp. 31.
Brandywine argues
The CenturyTel court agreed with Brandywine and found that
CenturyTel Order 19 (citing Finjan, Inc. v. Secure
This Court rejects Defendants’ proposed construction for the
22
same reasons as the CenturyTel court.
23
cautioned against narrowing the scope of a claim when the
24
“additional negative limitation finds no anchor in the explicit
25
claim language.”
26
1314, 1322 (Fed. Cir. 2003).
27
negative limitation to a claim unless it finds an “express
28
disclaimer or independent lexicography in the written description
The Federal Circuit has
Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d
A court, therefore, should not add a
16
1
[of the invention] that would justify adding that negative
2
limitation.”
3
such justification here.
4
specification stating that the process of adaptive adjustment is
5
costly and difficult to implement.
6
(“Full-duplex training of the echo canceler, while theoretically
7
possible, is not practical from a price/performance viewpoint in
8
the design of data communications equipment.”).
9
language does not rise to the level of an “express disclaimer” and
Id. at 1323.
Defendants have not identified any
Instead, they point to a sentence in the
See ‘537 patent col. 3:16-:20
This broad
United States District Court
For the Northern District of California
10
therefore does not support the limitation Defendants seek to
11
impose.
12
language in the patent specification suggesting that the invention
13
is capable of adaptive adjustment.
14
inventive concept is also applicable to an echo canceler that
15
adapts in the data phase, since, typically, the echo canceler
16
adapts too slowly to the changes in the echo signal.”).
17
Defendants’ proposed construction must be rejected.
18
Indeed, this limitation would conflict with other
See id. col. 7:33-:36 (“[T]he
Thus,
The Court finds that this term should be construed according
19
to its plain and ordinary meaning.
20
understanding of the plain and ordinary meaning of this term,
21
however, the Court adopts the parties’ agreed upon definition of
22
“tap coefficients”: “settings that define the operating
23
characteristics of the echo canceler.”
To facilitate the jury’s
24
D.
25
Like the ‘537 patent, the ‘657 patent also relates to echo
‘657 Patent
26
cancellation technology.
27
from this patent: namely, “pilot signal,” which appears in claims
The parties dispute only one claim term
28
17
1
1, 3, 4, 5, and 6.
2
the patent:
3
Data communications equipment apparatus
comprising:
an echo canceler that is trained during an
echo-canceler training phase of a half
duplex training sequence with a far-end
data communications equipment while the
communication channel is operating in a
linear mode; and
a filter that filters a received signal during
the echo-canceler training phase to remove
a pilot signal transmitted by the far-end
data communications equipment before
application of the received signal to the
echo canceler to train the echo canceler on
an echo signal component thereof.
4
5
6
7
8
9
United States District Court
For the Northern District of California
10
11
12
Claim 1 illustrates how the term is used in
‘657 patent col. 8:8-:21.
The parties here dispute whether this “pilot signal”8 must
13
cause “linear operation of the communications channel.”
14
Claim Const. Brief 16.
15
required by the specification, which states, “This pilot tone is
16
of a high enough signal level to cause the above-mentioned
17
compander to achieve its linear range.”
18
Brandywine argues that the term should be construed as “a signal
19
wave transmitted over the system to indicate control or its
20
characteristics.”
21
proposed construction, finding that Brandywine’s proposed
Defs.’
Defendants contend that this limitation is
‘657 patent col. 2:7-:9.
The CenturyTel court rejected Defendants’
22
23
24
25
26
27
28
8
According to the General Service Administration’s (GSA) Glossary
of Telecommunications Terms, a pilot signal is a “signal, usually a
single frequency, transmitted over a communications system for
supervisory, control, equalization, continuity, synchronization, or
reference purposes.” GSA, Telecommunications: Glossary of
Telecommunications Terms (1996), http://www.its.bldrdoc.gov/fs-1037/fs1037c.htm (last visited April 14, 2014, 4:00 p.m.). Federal courts
routinely use the GSA Glossary to aid in their construction of patents
issued in the telecommunications field. See, e.g., Northpoint Tech.,
Ltd. v. MDS Am., Inc., 413 F.3d 1301, 1316 (Fed. Cir. 2005) (citing
glossary for claim construction purposes).
18
1
construction was closer to the term’s plain and ordinary meaning.
2
See CenturyTel Order 19-21.
3
This Court likewise rejects Defendants’ proposed
construction.
5
for support applies only to an embodiment of the invention which
6
is designed specifically to address situations where the compander
7
is “not linear in the signal range of the returned far-end echo
8
signal during the half-duplex training phase.”
9
While the pilot signal might cause “linear operation of the
10
United States District Court
For the Northern District of California
4
communication channel” in this embodiment, the claims do not
11
require that it does so in every embodiment of the invention.
12
Accordingly, Defendants’ proposed construction is too narrow and
13
must be rejected.
14
The “pilot tone” description that Defendants cite
Id. col. 4:3-:4.
The Court therefore adopts the following construction of
15
“pilot signal,” which is a modified version of Brandywine’s
16
proposed construction: “a signal transmitted over the system for
17
control or reference purposes.”
18
E.
19
When multiple communications providers share a common
‘501 Patent
20
communication channel -- for instance, when two telephone
21
companies share a single telephone wire -- those providers
22
typically use different ranges of the frequency spectrum to avoid
23
interfering with each other’s transmissions.
24
1:23-:41.
25
different frequency ranges is known as “spectrum management.”
26
‘501 patent relates generally to “spectrum management” technology.
27
Id.
‘501 patent col.
The process by which such providers select and use
28
19
The
1
The parties dispute four of the ‘501 patent’s claim terms.
2
Three of these disputed terms appear in claim 1 of the patent,
3
which reads as follows:
4
5
6
7
8
9
United States District Court
For the Northern District of California
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
An apparatus comprising:
a modem connected to a subscriber loop, the
modem being capable of operating in one or
more modes that are compatible with one or
more spectrum management classes defined by
a standard, each spectrum management class
defining power spectral density (PSD)
requirements, the modem being configured to
automatically select a mode that is
compatible with at least one of the
spectrum management classes;
a plurality of transceivers, each transceiver
corresponding to one of the modes, wherein
the modem electrically couples a
corresponding transceiver to the subscriber
loop upon selecting one of the modes;
a selector, the selector selecting one of the
transceivers to be electrically coupled to
the subscriber loop; and
an Automatic Class Measurement device in
communication with the selector, the
Automatic Class Measurement device being
configured to automatically select a mode
that is compatible with at least one of the
spectrum management classes and to cause
the selector to select one of the
transceivers to be electrically coupled to
the subscriber loop.
‘501 patent col. 11:65-12:18.
The fourth disputed claim term appears in claim 12, which is
quoted and discussed below.
Every claim of the ‘501 patent
contains one or more disputed terms.
1.
“A Plurality of Transceivers (Each Transceiver
Corresponding to One of the Modes)” (Claims 1, 5,
12)
Brandywine contends that the phrase “a plurality of
transceivers,” as it is used in this term, means “two or more
27
28
20
1
hardware and/or software transceivers.”9
2
“plurality of transceivers” means “two or more hardware
3
transceivers.”
4
construction because it found that a “transceiver” is a piece of
5
physical hardware.
6
to read additional possibilities into the claim language that
7
negate the clear language and intent of the claim.”).
8
similarly concludes that a “plurality of transceivers” means “two
9
or more hardware transceivers.”
United States District Court
For the Northern District of California
10
Defendants argue that
The CenturyTel court adopted Defendants’ proposed
CenturyTel Order 6-7 (“The Court is unwilling
This Court
Brandywine contends that the CenturyTel court’s reasoning is
11
flawed because its construction was based on a dictionary
12
definition of “transceiver,” rather than intrinsic evidence in the
13
patent and the prosecution history.
14
Newton, Newton’s Telecom Dictionary (11th ed. 1996)).
15
CenturyTel court’s reliance on the dictionary definition, however,
16
was entirely proper because it relied on the definition for a
17
limited purpose -- namely, to determine whether a transceiver
18
constituted a “physical device” -- and the definition it cited did
19
not conflict with any intrinsic evidence.
20
F.3d at 1584 n.6 (“Judges are free to consult [extrinsic evidence]
21
at any time in order to better understand the underlying
22
technology and may also rely on dictionary definitions when
23
construing claim terms, so long as the dictionary definition does
24
not contradict any definition found in or ascertained by a reading
25
of the patent documents.”).
See id. at 7 (citing Harry
The
Vitronics Corp., 90
The CenturyTel court also noted that,
26
9
27
28
After the claim construction hearing, Brandywine revised its
proposed construction of this term. Its revised proposal must be
rejected for the same reasons that its original proposal must be
rejected.
21
1
at the hearing in that case, “Plaintiff appeared to concede . . .
2
that a transceiver is a physical device.”
3
CenturyTel Order 7 n.3.
Accordingly, the Court adopts Defendants’ proposed
4
construction of the disputed term: “two or more hardware
5
transceivers available for connection, one at a time, to the
6
subscriber line.”
7
2.
8
9
United States District Court
For the Northern District of California
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
10
“Automatic Class Measurement Device” (Claims 1, 5,
12)
This term refers to a device that is part of a larger
apparatus claimed by the ‘501 patent.
scope of the device’s capabilities.
The parties dispute the
Brandywine asserts that the
device is “capable of performing tests to determine which
transceiver should be connected to a subscriber line.”
Claim Constr. Brief 23.
Pl.’s
Defendants contend that the device is
merely capable of “identifying allowable spectrum management
classes based on line tests.”
Defs.’ Claim Constr. Brief 6.
The
CenturyTel court did not discuss this term in its claim
construction order.
The plain language of the disputed claims illustrates that
Brandywine’s proposed construction is overbroad.
Claims 1, 5, and
12 all expressly state that the “Automatic Class Measurement
device” is “configured to automatically select a mode that is
compatible with at least one of the spectrum management classes.”
‘501 patent col. 12:16-:17, 12:55-:58, 14:16-:19 (emphasis added).
In light of this language, Brandywine’s proposed construction,
26
27
10
28
Both parties agreed to the second part of this construction,
beginning with the word “available.”
22
1
which omits any reference to “spectrum management classes,” must
2
be rejected.
3
Similarly, Defendants’ proposal to add the limitation, “based
4
on line tests,” to this term must also be rejected.
5
patent claims nor the specification requires that the “Automatic
6
Class Measurement device” rely exclusively on “line tests” to
7
identify spectrum management classes or select an appropriate
8
mode.
9
Neither the
The Court therefore adopts the following construction of this
United States District Court
For the Northern District of California
10
term: “a device capable of identifying allowable spectrum
11
management classes to determine which transceiver should be
12
connected to a subscriber line.”
13
3.
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
“Spectrum Management Classes (Defined by a
Standard)” (Claims 1-13)
The parties dispute whether or not the term “spectrum
management classes” is indefinite.
Defendants contend that the
term is indefinite because, when the ‘501 patent was issued, the
Federal Communications Commission (FCC) had not yet finalized its
“deployment rules for identifying the available Spectrum
Management Class or Classes.”
‘501 patent col. 6:31-:32.
Further, the patent itself acknowledges that these rules “even
once finalized, are always subject to change.”
Id. col. 6:32-:33.
Thus, Defendants argue, because these spectrum management rules
lacked a stable and unchanging definition at the time the patent
was issued, the claims that refer to “spectrum management classes”
must be found indefinite.
The CenturyTel court rejected this
argument and found that this term was not indefinite.
Order 4-6.
23
CenturyTel
1
The Federal Circuit has held that claims should only be
2
deemed indefinite if they are “insolubly ambiguous, and no
3
narrowing construction can properly be adopted.”
4
Engineering Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir.
5
2001).
6
to make them operable or to sustain their validity.”
7
Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004).
8
9
Exxon Research &
At the same time, “courts may not redraft claims, whether
Chef Am.,
Here, the claims that use the term “spectrum management
classes” are not indefinite.
The specification expressly outlines
United States District Court
For the Northern District of California
10
the purpose of these spectrum management classes, noting that they
11
would be defined by a set of standards designed to “minimiz[e] the
12
potential for cross-talk interference in twisted pair subscriber
13
loop cables that are shared by multiple service providers.”
14
patent col. 1:31-:34.
15
these standards would be based on criteria such as “(1) transmit
16
signal power spectral density (PSD) requirements, (2) transmit
17
signal average power requirements, (3) transverse balance
18
requirements, (4) deployment restrictions based upon the
19
subscriber loop characteristics, and (5) loop assignment
20
guidelines.”
21
management classes” is sufficient to illustrate the term’s meaning
22
to a person of ordinary skill in the art.
23
‘501
The specification further explains that
Id. col. 1:42-:47.
This discussion of “spectrum
While Defendants note that the FCC’s specific spectrum
24
management standards are subject to change, this variability in
25
the official standards does not render the patent claims
26
indefinite.
27
would not be considered indefinite merely because they refer to
28
state speed limits that are subject to change.
By way of analogy, the claims of a radar-gun patent
24
As noted above,
1
the ‘501 patent identifies a clear set of measurable criteria on
2
which the “spectrum management classes” are based and the claimed
3
invention purports to have the capacity to distinguish among those
4
classes.
5
based on the same criteria identified in the patent, the claims
6
referring to “spectrum management classes” are sufficiently
7
definite.
8
9
Thus, as long as the “spectrum management classes” are
Defendants’ efforts to analogize this case to Datamize, LLC
v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005), are
United States District Court
For the Northern District of California
10
not persuasive.
11
term “aesthetically pleasing” was indefinite because aesthetic
12
value is not measurable.
13
‘501 patent identifies a specific set of measurable criteria,
14
outlined above, incorporated into the term “spectrum management
15
classes.”
16
In Datamize, the Federal Circuit held that the
Id. at 1347.
Here, in contrast, the
Accordingly, the Court rejects Defendants’ argument that
17
“spectrum management classes” is indefinite and adopts the
18
following construction of this term, which Brandywine proposed in
19
the parties’ post-hearing brief: “requirements for data
20
transmission equipment designed to minimize interference with
21
other nearby data transmitters.”
22
23
24
25
26
27
28
4.
“The Modem Electrically Couples” (Claim 12)
The parties dispute whether this term renders claim 12 of the
patent indefinite.
Claim 12 reads, in relevant part, as follows:
A system for communicating over a subscriber
loop, the system comprising:
a first modem located at a subscriber premise,
the first modem being capable of operating
in one or more modes that are compatible
with one or more spectrum management
classes defined by a standard, each
25
1
2
3
4
5
6
7
8
9
United States District Court
For the Northern District of California
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
spectrum management class defining power
spectral density (PSD) requirements;
a second modem located at a central office,
the second modem being capable of operating
in one or more modes that are compatible
with one or more of the spectrum management
classes;
a subscriber loop electrically coupling the
first modem to the second modem wherein the
first and second modems cooperate with each
other to determine which of the spectrum
management classes are compatible with the
subscriber loop;
a plurality of transceivers, each transceiver
corresponding to one of the compatible
modes, wherein the modem electrically
couples a corresponding transceiver to the
subscriber loop upon selecting one of the
modes; . . . .
‘501 patent col. 13:25-14:14.
Defendants contend that this claim
is indefinite because it fails to identify whether the term “the
modem electrically couples” refers to the first or second modem
mentioned in this claim.
The CenturyTel court agreed and
concluded that “the meaning of this term is not ascertainable by
one of ordinary skill in the art and is thus indefinite.”
CenturyTel Order 9.
As noted above, claims should only be deemed indefinite if
they are “insolubly ambiguous.”
265 F.3d at 1375.
Exxon Research & Engineering Co.,
Brandywine contends that the disputed claim is
not “insolubly ambiguous” because it can simply be construed to
refer to each of the two modems mentioned earlier in the claim.
For support, it points to language from the prosecution history
suggesting that claim 12 -- which combined three previously
asserted claims -- was supposed to contain a preamble that read:
“The system of [another claim], wherein each of the first and
second modems further comprises . . . .”
2004 Claim Amendments, at 8.
Sun Decl., Ex. T, March
According to Brandywine, the patent
26
1
applicant “left off the preamble” in the process of amending these
2
claims.
3
CenturyTel court did not have the benefit of this aspect of the
4
prosecution history when it issued its claim construction order.
5
Pl.’s Claim Constr. Brief 28.
Brandywine notes that the
Brandywine’s analysis of the prosecution history does not
6
support its proposed construction because it does not explain why
7
the preamble was omitted and why it should now be read back into
8
the claim.
9
preamble was omitted due to error by the U.S. Patent and Trademark
Brandywine does not assert, for instance, that the
United States District Court
For the Northern District of California
10
Office (PTO).
11
350 F.3d 1348, 1354 (Fed. Cir. 2003) (holding that, in certain
12
circumstances, a “district court can act to correct an error in a
13
patent by interpretation of the patent where no certificate of
14
correction has been issued”).
15
made such an allegation, this Court would only be permitted to
16
correct the error if it was “evident from the face of the patent.”
17
Group One, Ltd. v. Hallmark Cards, Inc., 407 F.3d 1297, 1303 (Fed.
18
Cir. 2005).
19
that claim 12 is missing the omitted preamble that Defendants
20
cite; claim 12 has a preamble.
21
reincorporate that language into the claim, the Court finds that
22
claim 12 is indefinite.
23
See, e.g., Novo Indus., L.P. v. Micro Molds Corp.,
Further, even if Brandywine had
Here, it is not evident from the face of the patent
Because it would be improper to
Although Brandywine asserts that it is premature to rule on
24
indefiniteness at the claim construction stage, the Federal
25
Circuit has made clear that indefiniteness is a legal question
26
that district courts may decide prior to trial.
27
Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 705 (Fed.
28
Cir. 1998) (“A determination of claim indefiniteness is a legal
27
Personalized
1
conclusion that is drawn from the court’s performance of its duty
2
as the construer of patent claims.”).
3
district have recognized that “it is appropriate for [district
4
courts] to address indefiniteness issues at the claim construction
5
stage.”
6
938511, at *3 (N.D. Cal.).
7
factual disputes sufficient to preclude the Court from finding
8
that claim 12 indefinite at this stage.
9
United States District Court
For the Northern District of California
10
F.
Other courts in this
Eon Corp. IP Holdings LLC v. Aruba Networks Inc., 2014 WL
Brandywine has not identified any
‘472 Patent
The ‘472 patent, like the ‘501 patent, relates to spectrum
11
management technology.
12
specifications.
13
The two patents share nearly identical
The parties dispute three of the ‘472 patent’s claim terms.
14
All three disputed terms appear in claim 1, which reads as
15
follows:
16
17
18
19
20
21
22
23
24
A method comprising:
measuring subscriber loop characteristics;
identifying a first allowable class
corresponding to the measured subscriber
loop characteristics, where the allowable
class is chosen from a group of predefined
spectrum management classes;
selecting an operating transceiver from a
group of transceivers within a device,
where each transceiver is configured to
communicate in a respective at least one
[sic] of the predefined spectrum management
classes, and where the selected operating
transceiver is configured to communicate in
the first allowable class; and
enabling the operating transceiver.
25
‘472 patent col. 11:60-12:5.
26
claims 6, 8-11, 15, 17-19, and 22.
The disputed terms also appear in
27
28
28
1.
1
2
3
4
5
6
7
8
9
United States District Court
For the Northern District of California
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
“(Enabling the / Selecting an) Operating
Transceiver (from a Group of Transceivers Within a
Device)” (Claims 1, 8)
The parties dispute whether the “enabling”/“selecting” steps
described by this term must be “automated.”
Defendants contend
that these steps must be automated because the patent’s title and
abstract both use the words “automatic” and “automatically” to
describe generally how the invention operates.
court rejected this argument.
11
The CenturyTel
See CenturyTel Order 11 (“Upon
consideration of the arguments presented, the Court finds that
Defendants’ proposed construction would require the Court to
inappropriately limit the words of the method steps more than
necessary.”).
This Court, too, rejects Defendants’ proposed construction of
these terms.
The use of the words “automatic” and “automatically”
in the title and abstract is not sufficient to justify the
“automated” limitation that Defendants propose.
These sections of
the patent describe the invention in general terms without
reference to the individual steps disclosed in the disputed
claims.
The language of claims 8 and 13 further suggests that
Defendants’ suggested limitation is improper.
Claim 8 discloses a
“computer-readable medium containing a program designed to perform
the steps of: . . . selecting an operating transceiver from the
group of transceivers . . .; and enabling the operating
transceiver.”
‘472 patent col. 12:28-:43.
11
See ‘472 patent, Title (“Method
selection and operation of a subscriber
(emphasis added)), Abstract (“The modem
operation that is compliant with one or
Classes.” (emphasis added)).
29
Claim 13, which is
and apparatus for automatic
line spectrum class technology”
automatically selects a mode of
more of the Spectrum Management
12
1
dependent on claim 8,
2
“program” is “further designed to perform the step of
3
automatically selecting, based on the measured characteristics,
4
one of the transceivers that is compatible with at least one of
5
the spectrum management classes.”
6
under the doctrine of claim differentiation, it would be improper
7
to construe claim 8 (the independent claim) as limited by the word
8
“automatically,” which appears in claim 13 (the dependent claim).
9
The Court therefore construes these terms according to their
discloses a process wherein the same
Id. col. 12:57-:61.
Thus,
13
United States District Court
For the Northern District of California
10
plain and ordinary meaning, without Defendants’ proposed addition.
11
It construes “enabling the operating transceiver” as “enabling the
12
operating hardware transceiver.”
13
“selecting an operating transceiver from a group of transceivers
14
within a device” as “selecting an operating hardware transceiver
15
from a group of transceivers within a device.”
16
2.
17
18
19
Similarly, it construes
14
“Measuring Subscriber Loop Characteristics” (Claims
1, 6)
The parties dispute whether this term requires that the
“measuring” step in claims 1 and 6 be performed by “analyzing a
20
21
12
22
23
24
25
26
27
28
Technically, claim 13 is dependent on claim 12, which is in turn
dependent on claim 8. This distinction is irrelevant since all of these
claims refer to the same computer “program.”
13
Defendants argue that, if these steps are not performed in an
“automated” manner, these claims would be invalid because they would not
be directed to patentable subject matter under 35 U.S.C. § 101. Because
the parties only addressed this issue cursorily in their claim
construction briefs, the Court reserves judgment on this question until
the parties have briefed the issue more fully.
14 Brandywine’s proposed constructions for these terms referred to
“software” transceivers. The Court has therefore added the word
“hardware” to these constructions to make clear that, as previously
explained, the word “transceiver” refers to a piece of physical hardware
in this context.
30
1
test signal.”
2
by an excerpt from the specification that states:
3
Defendants argue that this limitation is required
Measurement of loop reach may be accomplished
by transmitting from one end of the loop, such
as from the CO 2, a signal with a known
spectral content and measuring at the other
end, such as at the DEC, the level at various
frequencies across the frequency band of
interest.
4
5
6
7
‘472 patent col. 7:52-:63.
8
be construed as “determining subscriber loop characteristics.”
9
The CenturyTel court adopted Brandywine’s proposed construction.
United States District Court
For the Northern District of California
10
11
Brandywine argues that the term should
CenturyTel Order 9-10.
This Court finds that each party’s proposed construction is
12
inadequate here.
13
because the excerpt they cite for support is permissive rather
14
than mandatory and, as such, does not justify the limitation they
15
have proposed.
16
loop reach may be accomplished . . . .” (emphasis added)).
17
Because they fail to identify any other language from the patent
18
to support this limitation, their proposed construction must be
19
rejected.
20
Defendants’ proposed construction is not tenable
See ‘472 patent col. 7:52-:63 (“Measurement of
Brandywine’s proposed construction -- which replaces
21
“measuring” with “determining” -- must also be rejected.
22
Brandywine asserts that “measuring” and “determining” mean the
23
same thing, it has not adequately justified the need for this
24
substitution.
25
and the fact that the patent claims use “determining” and
26
“measuring” in different contexts suggests that the inventor may
27
have understood the two words to have different meanings in the
28
context of the patent.
Although
The word “measuring” is not complex or technical
31
1
Thus, because this term uses straightforward language, the
2
Court finds that “measuring subscriber loop characteristics”
3
should be construed according to its plain and ordinary meaning.
4
Neither party has presented compelling reasons for adopting a
5
different construction for this term.
6
3.
7
The parties’ dispute regarding this term mirrors their
8
9
United States District Court
For the Northern District of California
10
11
12
13
14
15
16
17
18
19
dispute regarding the same term from the ‘501 patent.
adopt the same construction for this term that it adopted for the
term “spectrum management classes” in the ‘501 patent:
“requirements for data transmission equipment designed to minimize
interference with other nearby data transmitters.”
II.
Brandywine’s Amended Infringement Contentions
A.
of good cause and by order of the Court.
(a) a claim construction by the Court
different from that proposed by the party
seeking amendment; (b) recent discovery of
material, prior art despite earlier diligent
search; and (c) recent discovery of nonpublic
information about the Accused Instrumentality
which was not discovered, despite diligent
efforts, before the service of the
Infringement Contentions.
23
24
28
Patent L.R. 3–6.
Examples of good cause include
22
27
Legal Standard
A party may amend its infringement contentions upon a showing
21
26
For the
reasons outlined above, see supra Section I.E.3, the Court will
20
25
“(Predefined) Spectrum Management Classes” (Claims
1, 8-11, 15, 17-19, 22)
Patent L.R. 3-6.
Patent Local Rule 3–6 “serves to balance the
parties’ rights to develop new information in discovery along with
the need for certainty in legal theories at the start of the
case.”
Apple, Inc. v. Samsung Elecs. Co., Ltd., 2012 WL 5632618,
32
1
at *2 (N.D. Cal.) (citing O2 Micro Int’l, Ltd. v. Monolithic Power
2
Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006)).
3
The good cause inquiry considers first whether “the party
4
seeking leave to amend acted with diligence in promptly moving to
5
amend when new evidence [was] released.”
6
1363.
7
question is whether the party ‘could have discovered [the new
8
information] earlier had it acted with the requisite diligence.’”
9
Apple, 2012 WL 5632618, at *6 (citing Google, Inc. v. Netlist,
O2 Micro, 467 F.3d at
“In considering the party’s diligence, the critical
United States District Court
For the Northern District of California
10
2010 WL 1838693, at *2 (N.D. Cal.)).
11
party to show diligence.
12
party was not diligent in amending its infringement contentions,
13
it does not need to consider the question of prejudice to the non-
14
moving party.
15
district court’s decision refusing leave to amend upon finding the
16
moving party was not diligent, without considering the question of
17
prejudice to the non-moving party).
18
was arguably not diligent, the court retains discretion to grant
19
leave to amend.
20
amend infringement contentions, even though court found plaintiff
21
failed to establish diligence, because of lack of prejudice to
22
defendant).
Id.
The burden is on the moving
If the court finds that the moving
See 02 Micro, 467 F.3d at 1368 (affirming the
However, even if the movant
Apple, 2012 WL 5632618, at *6 (granting leave to
23
B.
24
Brandywine originally filed its infringement contentions in
Analysis
25
October 2012 and served its supplemental infringement contentions
26
on Defendants in January 2014, just over a week before the close
27
of fact discovery.
28
flesh out a handful of theories set forth in its original
Its supplemental infringement contentions
33
1
infringement contentions and add a new theory based on induced
2
infringement.
3
leave to amend its infringement contentions, it eventually filed a
4
motion for leave to amend in February 2014, soon after Defendants
5
filed their motion to strike the supplemental infringement
6
contentions.
7
Although Brandywine initially failed to move for
Brandywine contends that it served its supplemental
8
infringement contentions on Defendants at the earliest possible
9
opportunity and that its failure to move promptly for leave to
United States District Court
For the Northern District of California
10
amend was inadvertent.
11
infringement contentions are based on information that it
12
discovered less than two weeks before it served its supplemental
13
contentions on Defendants.
14
infringement theories were based on information that it obtained
15
from third-party depositions and 38,000 pages of documents that
16
Defendants produced in January 2014.
17
According to Brandywine, its supplemental
Specifically, it asserts, its amended
Because Brandywine’s supplemental infringement contentions
18
appear to be based at least in part on newly discovered
19
information, the Court finds that it acted diligently in serving
20
its amended infringement contentions in January 2014 and seeking
21
leave to amend shortly thereafter.
22
that Brandywine could have obtained this information sooner had it
23
acted with greater diligence during discovery, the record does not
24
support this argument.
25
subpoenas at a relatively early stage of discovery but was
26
ultimately delayed in taking depositions of the relevant third
27
parties because this action was stayed only a few days after those
28
subpoenas were issued.
Although Defendants contend
Brandywine served its third-party
34
1
In any event, even if Brandywine was arguably not diligent in
2
seeking to amend its infringement contentions, the Court may still
3
grant it leave to amend because Defendants have not suffered undue
4
prejudice here.
5
Brandywine’s supplemental contentions essentially expand on its
6
previous infringement contentions and do not add any new patent
7
claims or products.
8
Brandywine asserted -- the theory that Defendants induced
9
infringement by competitive local exchange carriers -- was
Apple, 2012 WL 5632618, at *5.
As noted above,
The only new infringement theory that
United States District Court
For the Northern District of California
10
subsequently abandoned because it was not raised or discussed in
11
Brandywine’s expert report.
12
amendments to its infringement contentions were limited in scope.
13
Furthermore, Brandywine proposed these amendments at a relatively
14
early stage in the case, well before Defendants’ expert reports
15
were due and eight months before trial was set to begin.
16
extent that Defendants needed additional time to take discovery or
17
otherwise respond to Brandywine’s proposed changes, they could
18
have sought a stipulation to amend the case management schedule,
19
as they had previously done when they required additional time for
20
discovery.
21
They did not do so and have not shown that they suffered prejudice
22
as a result of their inability to take additional discovery.
23
Accordingly, Brandywine is granted leave to file its supplemental
24
infringement contentions.
25
Hewlett-Packard Co., 2013 WL 5955548, at *2 (N.D. Cal.) (granting
26
motion for leave to amend infringement contentions where the
27
plaintiff’s “proposed amendments to its infringement contentions
28
do not add new patent claims or new products” and the defendants
Thus, Brandywine’s proposed
To the
See Docket No. 97, Stipulation to Amend Case Schedule.
See Linex Technologies, Inc. v.
35
1
had “sufficient time to review [the] amended infringement
2
contentions”).
3
CONCLUSION
4
For the reasons set forth above, the Court construes the
5
disputed claim language in the manner explained; GRANTS
6
Brandywine’s motion for leave to amend its infringement
7
contentions (Docket No. 149); and DENIES Defendants’ motion to
8
strike Brandywine’s supplemental infringement contentions (Docket
9
No. 128).
United States District Court
For the Northern District of California
10
11
12
The Court will hear all dispositive motions and Daubert
motions on June 5, 2014 at 2:00 p.m.
IT IS SO ORDERED.
13
14
15
Dated:
4/18/2014
CLAUDIA WILKEN
United States District Judge
16
17
18
19
20
21
22
23
24
25
26
27
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