Mobilemedia Ideas LLC v. Samsung Electronics Co., LTD. et al

Filing 166

CLAIM CONSTRUCTION ORDER RE 145 . Case Management Statement due by 11/7/2018. Further Case Management Conference set for 11/14/2018 02:00 PM in Oakland, Courtroom 2, 4th Floor. Signed by Judge Haywood S. Gilliam, Jr. on 10/26/2018. (ndrS, COURT STAFF) (Filed on 10/26/2018)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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IRONWORKS PATENTS LLC,
Plaintiff,

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v.

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Case No. 17-cv-01958-HSG
CLAIM CONSTRUCTION ORDER
Re: Dkt. No. 145

SAMSUNG ELECTRONICS CO., LTD., et
al.,

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United States District Court
Northern District of California

Defendants.
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On May 26, 2017, MobileMedia Ideas LLC (“MMI”) filed this patent infringement action

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against Defendants Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc.

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(collectively, “Samsung”). Dkt. No. 1 (“Compl.) On March 27, 2017, MMI assigned the patents-

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in-suit to Ironworks Patents LLC (“Ironworks”). Dkt. No. 66-2. And on July 6, 2017, this Court

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permitted Ironworks to replace MMI as the Plaintiff. Dkt. No. 92. The parties now seek

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construction of eight terms found in two patents: Patent Nos. 6,427,078 (“the ’078 Patent”), and

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5,915,239 (“the ’239 Patent”) (collectively, “the Asserted Patents”).1 This order follows claim

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construction briefing, a technology tutorial, and a claim construction hearing.

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I.

LEGAL STANDARD
Claim construction is a question of law to be determined by the Court. Markman v.

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Westview Instruments, Inc., 517 U.S. 370, 384 (1996). “The purpose of claim construction is to

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determine the meaning and scope of the patent claims asserted to be infringed.” O2 Micro Int’l

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Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008) (quotation omitted).

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Despite initially proposing constructions of the term “at least one memory unit for storing said
image information,” the parties now agree that the Court need not construe that term. See Dkt.
No. 124-1, at 3 (proposing construction); Dkt. No. 157 at 6:1–4 (noting that the parties “reached
an agreement on that, and it doesn’t need to be construed”).
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Generally, claim terms should be “given their ordinary and customary meaning”—in other

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words, “the meaning that the term[s] would have to a person of ordinary skill in the art in question

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at the time of the invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en

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banc) (quotation omitted). There are only two circumstances where a claim is not entitled to its

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plain and ordinary meaning: “1) when a patentee sets out a definition and acts as his own

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lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the

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specification or during prosecution.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362,

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1365 (Fed. Cir. 2012).

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When construing claim terms, the Federal Circuit emphasizes the importance of intrinsic
evidence such as the language of the claims themselves, the specification, and the prosecution

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United States District Court
Northern District of California

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history. Phillips, 415 F.3d at 1312–17. The claim language can “provide substantial guidance as

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to the meaning of particular claim terms,” both through the context in which the claim terms are

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used and by considering other claims in the same patent. Id. at 1314. The specification is likewise

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a crucial source of information. Id. at 1315–17. Although it is improper to read limitations from

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the specification into the claims, the specification is “the single best guide to the meaning of a

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disputed term.” Id. at 1315 (noting that “the specification is always highly relevant to the claim

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construction analysis,” and that “[u]sually, it is dispositive” (quotation omitted)); see also Merck

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& Co. v. Teva Pharm. USA, Inc., 347 F.3d 1367, 1371 (Fed. Cir. 2003) (explaining that “claims

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must be construed so as to be consistent with the specification”).

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Despite the importance of intrinsic evidence, courts may also consider extrinsic evidence—

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technical dictionaries, learned treatises, expert and inventor testimony, and the like—to help

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construe the claims. Phillips, 415 F.3d at 1317–18. For example, dictionaries may reveal what

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the ordinary and customary meaning of a term would have been to a person of ordinary skill in the

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art at the time of the invention. Frans Nooren Afdichtingssystemen B.V. v. Stopaq Amcorr

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Inc., 744 F.3d 715, 722 (Fed. Cir. 2014) (“Terms generally carry their ordinary and customary

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meaning in the relevant field at the relevant time, as shown by reliable sources such as

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dictionaries, but they always must be understood in the context of the whole document—in

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particular, the specification (along with the prosecution history, if pertinent).”). Expert testimony
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can also help “to ensure that the court’s understanding of the technical aspects of the patent is

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consistent with that of a person of skill in the art, or to establish that a particular term in the patent

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or the prior art has a particular meaning in the pertinent field.” Phillips, 415 F.3d at 1318.

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Extrinsic evidence is, however, “less significant than the intrinsic record in determining the legally

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operative meaning of claim language.” Id. at 1317 (quotation omitted).

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II.

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AGREED TERMS
The parties agree on the construction of eleven terms. Dk. No. 124 (“JCCS”) at 2–3. In

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light of the parties’ agreement, the Court adopts the construction of these terms as set forth in the

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following table:

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Patent

United States District Court
Northern District of California

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’078 Patent

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Claim Term
“means for transmitting image
information processed by said
processing unit to another
location using a radio frequency
channel” [claim 1]

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’078 Patent

“means for transmitting an image
processed by said processing
means to another location using a
radio frequency channel” [claim
36]

Function: transmitting image
information processed by said
processing unit to another location using
a radio frequency channel
Structure: cellular mobile phone unit and
equivalents thereof

’078 Patent

“means for transmitting image
information comprises a cellular
mobile phone unit” [claim 2]

Function: transmitting image
information
Structure: cellular mobile phone unit and
equivalents thereof

’078 Patent

“means . . . for transmitting
image information processed by
said microprocessor to another
location using a radio frequency
channel” [claim 73]

Function: transmitting image
information processed by said
microprocessor to another location using
a radio frequency channel
Structure: cellular mobile phone unit and
equivalents thereof

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Agreed Construction
Function: transmitting image information
processed by said processing unit to
another location using a radio frequency
channel
Structure: cellular mobile phone unit and
equivalents thereof

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’078 Patent

“means for transmitting image
information transmits the image
information processed by said
microprocessor to another
location by transmitting an
electronic mail message” [claim
77]

Function: transmitting image
information processed by said
microprocessor to another location by
transmitting an electronic mail message
Structure: cellular mobile phone unit and
equivalents thereof

’078 Patent

“means for performing at least
one of transmitting an electronic
mail message, paging, and
connecting to an on-line
information service” [claim 42]

Function: performing at least one of
transmitting an electronic mail message,
paging, and connecting to an on-line
information service
Structure: cellular mobile phone unit and
equivalents thereof

’078 Patent

Function: displaying at least a portion of
“means . . . for displaying at least an image recorded by said camera unit
a portion of an image recorded
Structure: a display and equivalents
by said camera unit” [claim 38]
thereof

’078 Patent

“means for processing and for
storing at least a portion of the
image information obtained by
the camera unit for later recall
and processing” [claim 73]

Function: processing and storing at least
a portion of said image information
obtained by said camera unit for later
recall and processing
Structure: microprocessor (23) and
memory (24) within the camera unit

’078 Patent

“user interface” [claims 1 and
73]

Plain and ordinary meaning

’239 Patent

“sub-identifier” [claims 4 and
10]

A word within an identifier

’239 Patent

“identifier” [claims 4 and 10]

An entry, such as a name, associated
with each phone number

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United States District Court
Northern District of California

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III.

DISPUTED TERMS
A.

“camera unit” (’078 Patent)
Ironworks’s Construction

Plain and ordinary meaning, no
construction necessary.

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If construed: “a data collection apparatus
for obtaining image information”

Samsung’s Construction
“camera arrangement comprising a camera,
optics, microprocessor and memory, battery,
and interface to external systems constituting an
individual component of a whole personal
communication device or whole portable
mobile cellular phone”

The Court adopts Samsung’s construction.
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The term “camera unit” appears in independent claims 1, 36, and 73, and dependent claims

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18, 38, and 46 of the ’078 Patent. JCCS, App. A at 1. Ironworks argues that “each of [the] three

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independent claims defines . . . ‘camera unit’ differently,” such that no one claim is representative.

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See Op. Br. at 9–11 (discussing MobileMedia Ideas LLC v. Apple Inc. (“MMI”), 780 F.3d 1159

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(Fed. Cir. 2015)). The following table presents the term’s usage in each independent claim:

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Claim 12

Claim 36

Claim 73

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1. A [device] portable
cellular mobile phone for
personal communication,
data collection and data
processing, which is a
small-sized, portable and
hand-held work station
including a housing and
comprising a data
processing unit comprising
a microprocessor, a display,
a user interface, a number of
peripheral device interfaces,
at least one memory unit; a
power source, and
application software,
wherein the device also
comprises:
a camera unit for
obtaining and outputting
image information
comprising:
a camera for receiving
image information; optics
connected to said camera
for passing said image
information to the
camera;
means for processing and
for storing at least a

36. A portable notebook
computer having a housing,
comprising:
a camera unit for
recording an image of a
selected object, and
having at least one
memory unit for storing an
image recorded by said
camera unit;
means, coupled to said
camera unit, for
processing an image
recorded by said camera
unit, and
means for transmitting an
image processed by said
processing means to
another location using a
radio frequency channel;
wherein at least a portion of
said camera unit is
integrated in one of said
housing of said notebook
computer and a circuit card.

73. A portable cellular
mobile phone comprising:
a built in camera unit for
obtaining image
information;
a user interface for
enabling a user to input
signals to operate the
camera unit;
a display for presenting
image information
obtained by the camera
unit;
a microprocessor adapted
to control the operations
of the camera unit in
response to input signals
from the user interface,
and to process image
information received by
the camera unit; and
means, coupled to said
microprocessor, for
transmitting image
information processed by
said microprocessor to
another location using a
radio frequency channel;
and wherein the camera

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United States District Court
Northern District of California

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The language of Claim 1 of the ‘078 Patent was modified in 2012, following reexamination by
the Patent and Trademark Office. See Dkt. No. 145-1 at 14–15. The claim as stated here reflects
deletions (in brackets) and additions (in italics) as compared to the original claim language. No
other independent claims at issue for this term were modified upon reexamination. Future
citations to the language of claim 1 are to the ’078 Patent as amended in 2012 (“Claim 1, 2012
’078 Patent”) unless otherwise noted.
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Northern District of California

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portion of said image
information obtained by
said camera unit for later
recall and processing;
at least one memory unit
for storing said image
information; and
an output coupled to said
data processing unit for
outputting image
information from said
memory unit to the
processing unit; and
wherein at least a portion of
said camera unit is located
within said housing, and
said data processing unit
processes image
information output by said
camera unit,
wherein said display
presents image
information obtained by
said camera unit, and
wherein said device further
comprises means for
transmitting image
information processed by
said processing unit to
another location using a
radio frequency channel.

unit comprises:
optics for obtaining image
information;
an image sensor for
obtaining image
information; and means
for processing and for
storing at least a portion
of the image information
obtained by the camera
unit for later recall and
processing.

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Despite Ironworks’s assertion that each independent claim “defines . . . ‘camera unit’

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differently,” Ironworks simultaneously argues that the Court need not construe the term because it

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is unambiguous. Op. Br. at 10–11. Instead, Ironworks asks the Court to give the term its “plain

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and ordinary meaning.” Id. Ironworks also contends that “camera unit,” if construed, means “a

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data collection apparatus for obtaining image information.” Id. The phrase “data collection

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apparatus” does not appear in any of the claims. Also, Ironworks’s opening brief offered no

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intrinsic or extrinsic evidence to support that construction. Ironworks’s reply, however, notes that

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a Delaware district court adopted its alternative construction in MobileMedia Ideas, LLC v. Apple
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Inc., 907 F. Supp. 2d 570, 601 (D. Del. 2012), vacated in part, 780 F.3d 1159 (Fed. Cir. 2015).

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See Reply Br. at 1. Ironworks adds that neither party to that case appealed the court’s construction

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of “camera unit.” Id.

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Ironworks further contends that Samsung’s proposed construction improperly (1) imports

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additional limitations absent from some claims, and (2) renders other claims redundant by setting

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out the same elements already recited in those claims. Op. Br. at 12. To that end, Ironworks

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asserts that both claim 1 and claim 73 define for that claim only what a camera unit “comprises,”

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with the latter stating fewer requirements than the former. Id. Ironworks contends that accepting

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one interpretation of camera unit for all claims would thus create confusion. Id.
The Court disagrees with Ironworks’s arguments and adopts Samsung’s construction. To

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United States District Court
Northern District of California

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begin, this Court must construe the term “camera unit,” because the term is ambiguous.

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Ironworks’s own position invites ambiguity: if the Court accepts that independent claims use

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“camera unit” differently, then the term’s meaning necessarily varies. Moreover, while Ironworks

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separately contends that construction is unnecessary because the Court can adopt the term’s plain

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and ordinary meaning, Ironworks provides no such plain and ordinary meaning. See O2 Micro

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Int'l Ltd., 521 F.3d at 1361 (“A determination that a claim term ‘needs no construction’ or has the

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‘plain and ordinary meaning’ may be inadequate when a term has more than one ‘ordinary’

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meaning or when reliance on a term’s ‘ordinary’ meaning does not resolve the parties’ dispute.”)

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Further, Ironworks cites no expert testimony or any other external reference to describe how a

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skilled artisan would understand the term “camera unit” at the time of the invention. See Phillips,

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415 F.3d at 1312–13.
Apart from the general flaws in Ironworks’s arguments, the Federal Circuit has addressed

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the camera unit term at issue here, and its analysis is instructive.3 See MMI, 780 F.3d 1159

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(discussing the ’078 Patent). That case highlighted that “[t]he specification explains that the

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structure of the camera unit ‘conforms to the block diagram shown in Fig[ure] 5’ of the ’078

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Although the Federal Circuit considered the meaning of the term “means for processing and for
storing” image information as it appears in claim 73, Ironworks has not asserted that this function
differs by claim. See MMI, 780 F.3d at 1167.
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patent.” Id. at 1169 (citing ’078 Patent, 4:23–25). Figure 5 appears below:

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United States District Court
Northern District of California

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And as the Federal Circuit noted: “Figure 5 illustrates that the camera unit includes a

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‘camera 14a and optics 15b, image processing unit 14c, [and] battery 21.’ The camera unit's

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image processing unit is a ‘microprocessor 23’ and ‘a number of memory units 24.’” Id. (citing

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‘078 Patent, 4:23–31, 4:37–41). This finding tracks Samsung’s proposed construction.4
The Court further disagrees with Ironworks’s characterization of Samsung’s construction

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as either overly limiting or redundant. In arguing that each claim defines “camera unit” for the

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purpose of only that claim, Ironworks contrasts the “comprising” language of claims 1 and 73.

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See Op. Br. at 12. Ironworks points out that the camera unit in claim 1 comprises: “a camera,

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optics, means for processing and for storing, a memory unit, and an output.” Id.; see also ’078

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Patent, 7:51–60. Ironworks describes claim 73, in contrast, as comprising “optics, an image

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sensor, and a means for processing and for storing.” Op. Br. at 12; see also ’078 Patent, 16:13-18.

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But claim 73’s language makes clear that “image sensor” is effectively equivalent to the word

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The Court acknowledges that the Delaware district court adopted Ironworks’s “if construed”
proposal. See MobileMedia Ideas, LLC., 907 F. Supp. 2d at 601. But the Court respectfully
declines to endorse that construction, in part because the only line of the specification relied upon
by the Delaware court describes the function of the camera and not what it comprises. See id.
(discussing ’078 Patent, 3:66).
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“camera” as used in claim 1. Compare Claim 1, 2012 ’078 Patent, 1:46 (describing “a camera for

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receiving image information”), with Claim 73, ’078 Patent, 16:16 (describing “an image sensor

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for obtaining image information”). If those terms were not substantively equivalent, then claim

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73’s “camera unit” would disclose no “camera” at all, which is inconsistent with the plain

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language of the claim. The only other distinction between these claims’ “camera unit . . .

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comprising” language is claim 1’s recitation of an “output.” “Output,” however, does not appear

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in Samsung’s construction.
Although Samsung’s construction includes specific elements—e.g., “battery”—not present

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in independent claims 1, 36, and 73, the specification nonetheless supports Samsung’s
construction:

United States District Court
Northern District of California

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In principle, the structure of both camera card 15 and camera unit 14
conforms to the block diagram shown in FIG. 5. By example,
camera card 15 consists of camera arrangement 140 which
comprises camera 14a and optics 14b image processing unit 14c,
battery 21 and interface 22 to external systems . . . . Image
processing unit 14c comprises microprocessor 23 and a number of
memory units 24.

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See ’078 Patent, 4:23–31. Ironworks argues that this discussion refers to Figure 2, which provides

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“an example of the notebook computer application of the invention.” Op. Br. at 12–13. The Court

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disagrees. Although the text above uses the word “example,” it also expressly refers to Figure 5,

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which “shows a block diagram of the camera unit.” ’078 Patent, 2:11. The specification does not

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limit Figure 5 to one embodiment. Figure 5, in turn, contains the elements set forth in the above-

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quoted text. And as noted above, the Federal Circuit relied on this text and Figure 5 to identify the

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camera unit’s structure. See MMI, 780 F.3d at 1168–71 (“The specification explains that the

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structure of the camera unit ‘conforms to the block diagram shown in Fig[ure] 5’ . . . .”); Resp. Br.

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at 8.

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Ironworks urges the Court not to limit the claims based on the specification. Op. Br. 13–

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14. But this Court cannot ignore that the specification is “the single best guide to the meaning of a

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disputed term.” See Phillips, 415 F.3d at 315; Edwards Lifesciences LLC v. Cook Inc., 582 F.3d

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1322, 1331 (Fed. Cir. 2009) (holding that the district court properly construed a claim to include

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the element of “wires” where “every embodiment described in the specification and shown in the
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drawings includes wires”).
B.

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“means for processing and for storing at least a portion of said image
information obtained by said camera unit for later recall and processing”
(’078 Patent)

Ironworks’s Construction
Plain and ordinary meaning, no construction
necessary.

Samsung’s Construction

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If construed:
Function: processing and for storing at least
a portion of said image information obtained
by said camera unit for later recall and
processing
Structure: microprocessor 23 and equivalents

This is a means-plus-function element to be
construed in accordance with 35 U.S.C. §
112, ¶ 6.
Function: processing and storing at least a
portion of said image information obtained
by said camera unit for later recall and
processing
Structure: microprocessor (23) and memory
(24) within the camera unit

United States District Court
Northern District of California

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The Court adopts Samsung’s construction for the function, but adopts the following

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construction for the structure: “microprocessor (23) and memory unit (24) within the

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camera unit.”

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The term “means for processing and for storing . . . image information . . .” appears in

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independent claim 1 of the ’078 Patent. See JCCS, App. A at 1–2. Ironworks again disputes

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whether the term as used in that claim is representative of how the term is used in the claim

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language. Op. Br. at 14–16. The term also appears in independent claim 73, but the parties do not

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ask the Court to construe the term as set forth in that claim. For purposes of the analysis that

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follows, however, the following table sets forth how independent claims 1 and 73 use the term:

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Claim 1
1. A portable cellular mobile phone for personal
communication, data collection and data
processing, which is a small-sized, portable and
hand-held work station including a housing and
comprising a data processing unit comprising
a microprocessor,
a display,
a user interface,
a number of peripheral device interfaces,
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Claim 73
73. A portable cellular mobile phone
comprising:
a built in camera unit for obtaining
image information;
a user interface for enabling a user to
input signals to operate the camera
unit;
a display for presenting image
information obtained by the camera
unit;

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Northern District of California

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at least one memory unit;
a power source, and
application software,
wherein the device also comprises:
a camera unit for obtaining and outputting
image information comprising:
a camera for receiving image information;
optics connected to said camera for passing
said image information to the camera;
means for processing and for storing at
least a portion of said image information
obtained by said camera unit for later
recall and processing;
at least one memory unit for storing said
image information; and
an output coupled to said data processing unit
for outputting image information from said
memory unit to the processing unit; and
wherein at least a portion of said camera unit
is located within said housing, and said data
processing unit processes image information
output by said camera unit,
wherein said display presents image
information obtained by said camera unit,
and
wherein said device further comprises means
for transmitting image information processed
by said processing unit to another location
using a radio frequency.

a microprocessor adapted to control the
operations of the camera unit in
response to input signals from the user
interface, and to process image
information received by the camera
unit; and
means, coupled to said microprocessor,
for transmitting image information
processed by said microprocessor to
another location using a radio
frequency channel;
and wherein the camera unit comprises:
optics for obtaining image information;
an image sensor for obtaining image
information; and means for
processing and for storing at least a
portion of the image information
obtained by the camera unit for
later recall and processing.

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Samsung accurately characterizes this term as a means-plus-function term subject to 35

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U.S.C. § 112 (“Section 112”). A claim invokes Section 112 if the claim limitation is drafted in the

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means-plus-function format. See Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1097 (Fed.

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Cir. 2014) (“The use of the term ‘means’ triggers a rebuttable presumption that § 112, ¶ 6 governs

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the construction of the claim term.”). Here, the term expressly includes the word “means,” and

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Ironworks does not rebut that presumption.

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Given that Section 112 applies, the Court’s analysis is two-fold: the Court (1) identifies the
claimed function; and then (2) determines what structure, if any, is disclosed in the specification
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that corresponds to these functions. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351–52

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(Fed. Cir. 2015). Structure disclosed in the specification must be “corresponding structure,”

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which is satisfied “if the intrinsic evidence clearly links or associates that structure to the function

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recited in the claim.” Id. at 1352. Even where structure is corresponding, it must also constitute

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“adequate corresponding structure to achieve the claimed function.” Id. (quotation omitted).

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The parties here agree that the claimed function is “processing and storing at least a portion

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of said image information obtained by said camera unit for later recall and processing.” The

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parties dispute, however, what structure corresponds to the claimed function. Ironworks’s

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proposed structure is “microprocessor 23 and equivalents.” See Op. Br. at 14. Samsung’s
proposed structure is “microprocessor (23) and memory (24) within the camera unit.” See Resp.

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United States District Court
Northern District of California

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Br. at 4–5.

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As Samsung notes, the Federal Circuit has already construed this term, albeit in the context
of claim 73:

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The specification thus clearly links two structures to the claimed
means for performing the function of processing and storing image
information obtained by the camera for later recall: “microprocessor
23” and “memory unit 24,” the processor and memory units within
the camera unit.

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See MMI, 780 F.3d at 1170. And Ironworks does not dispute this construction. See Reply Br. at 3

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n.1. Instead, Ironworks argues that claims 1 and 73 use the term differently, and that adopting

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Samsung’s construction would render redundant claim 1’s inclusion of a separate “memory unit.”

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See Resp. Br. at 16. But the Court is unpersuaded that Samsung’s recitation of “memory unit 24”

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as structure would render redundant the claim’s requirement of “at least one memory unit for

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storing said image information”: memory unit 24 could conceivably represent the “memory unit

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for storing said image information.” Moreover, the Federal Circuit relied on the specification

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generally—including column 4:23–31 and the block diagram in Figure 5—to locate corresponding

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structure for this term. See MMI, 780 F.3d at 1168–71 (“The specification explains that the

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structure of the camera unit ‘conforms to the block diagram shown in Fig. 5.’”). Ironworks does

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not explain why claim 1’s recitation of the “memory unit” would alter the Federal Circuit’s

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recitation of structure from the specification.

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The Federal Circuit rejected a similar argument in Laitram Corp. v. Rexnord, Inc., 939

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F.2d 1533 (Fed. Cir. 1991). There, the plaintiff argued that the court should not include a

3

structural limitation in its interpretation of a means-plus-function term, because doing so would

4

render redundant a dependent claim that recited that limitation. See id. at 1538. The Federal

5

Circuit disagreed, finding that the interpretation of the disputed term came from the specification,

6

and not from the dependent claim. Id. In turn, the court found that it could include the limitation

7

while avoiding the prohibition against improperly reading limitations into an independent claim

8

from a dependent one. Id. The court stressed that the related doctrine of “claim differentiation,”

9

which instructs that different claims typically have different meanings, is a “guide, not a rigid
rule.” Id. (quoting Autogiro Co. of Am. v. United States, 384 F.2d 391, 404 (Ct. Cl. 1967)). The

11

United States District Court
Northern District of California

10

Court continued:

12

Simply stated, the judicially developed guide to claim interpretation
known as “claim differentiation” cannot override the statute. A
means-plus-function limitation is not made open-ended by the
presence of another claim specifically claiming the disclosed
structure which underlies the means clause or an equivalent of that
structure. If Laitram’s argument were adopted, it would provide a
convenient way of avoiding the express mandate of section 112(6).
We hold that one cannot escape that mandate by merely adding a
claim or claims specifically reciting such structure or structures.

13
14
15
16
17
18

Id. As in Laitram, adopting the Federal Circuit’s identified structure would not run afoul of the

19

claim differentiation doctrine.

20

Separately, Ironworks notes that Samsung’s construction differs from the Federal Circuit’s

21

in that Samsung omits the word “unit” after memory. At the claim construction hearing, however,

22

Samsung said it did not object to the inclusion of “unit.” Dkt. No. 157 at 25:8–13. The Court

23

finds that there is no principled reason for omitting “unit” and thus agrees with its inclusion.

24
25
26

C.

“means, coupled to said camera unit, for processing an image recorded by said
camera unit” (’078 Patent)
Ironworks’s Construction

Samsung’s Construction
This is a means-plus-function element to be
construed in accordance with 35 U.S.C. §
112, 6.
Function: processing an image recorded by

No construction necessary.
27
28

If construed:
13

Function: processing an image recorded by
said camera unit
Structure: data processing unit or processor
4 or microprocessor 23 and equivalents5

1
2
3

said camera unit
Structure: a central processor coupled to the
camera unit

4

The Court adopts Samsung’s construction.

5

This disputed term appears in independent claim 36 of the ’078 Patent, which is

6

representative of how the term is used in the claim language. See JCCS, App. A at 2–3.

7

Claim 36
36. A portable notebook computer having a housing, comprising:
a camera unit for recording an image of a selected object, and having at least one memory
unit for storing an image recorded by said camera unit;
means, coupled to said camera unit, for processing an image recorded by said camera
unit, and
means for transmitting an image processed by said processing means to another location
using a radio frequency channel;
wherein at least a portion of said camera unit is integrated in one of said housing of said
notebook computer and a circuit card.

8
9
10

United States District Court
Northern District of California

11
12
13
14

Ironworks again argues that the Court need not construe this term, and asks the Court to

15
16

give the term its “plain and ordinary meaning.” Reply Br. at 6. Again, Ironworks failed to

17

provide the Court any such “plain and ordinary meaning,” or explain why the Court should adopt

18

such a construction.
Unlike terms already discussed by the Court, Ironworks only provided an alternative

19
20

construction for this term by way of reply. But as Samsung correctly argues, Ironworks waived

21

any alternative construction argument for this term by omitting it in the opening brief. See Resp.

22

Br. at 11 (citing Trans Video Elecs., Ltd. v. Sony Elecs., Inc., 278 F.R.D. 505, 509 (N.D. Cal.

23

2011, aff’d, 475 F. App’x 334 (Fed. Cir. 2012)). Even if Ironworks had not waived the argument,

24

the Court would find that Samsung correctly identified the structure corresponding to the agreed-

25

upon function of “processing an image recorded by said camera unit.” See Resp. Br. at 10–11; see

26

Williamson, 792 F.3d at 1352. As Samsung points out, the phrase “coupled to” suggests a

27
28

At the claim construction hearing, Ironworks noted that the inclusion of “or microprocessor 23”
in its proposed construction “was an error.” See Dkt. No. 157 at 39:3–9.
14
5

1

structure outside the camera unit for processing an image recorded by the camera unit. See Resp.

2

Br. at 10–11. Figure 3 and specification lines 3:13–14 and 2:40–41 support that reading of the

3

claim language. See id.

4
5
6
7
8
9
10

United States District Court
Northern District of California

11
12
13
14

D.

“at least one memory unit for storing an image recorded by said camera unit”
(’078 Patent)

Ironworks’s Construction
Plain and ordinary meaning, no
construction necessary.
If construed: “Memory inside the
notebook computer that can store a
picture taken by the camera”

Samsung’s Construction

No construction necessary. Plain and ordinary
meaning.

The Court holds that no construction is necessary, but that the plain and ordinary
meaning does not permit the memory unit to be outside the camera unit.
This term appears in independent claim 36 of the ’078 Patent, which is representative of
how the term is used in the claim language. See JCCS, App. A at 3.

15

Claim 36

16

36. A portable notebook computer having a housing, comprising:
a camera unit for recording an image of a selected object, and having at least one memory
unit for storing an image recorded by said camera unit;
means, coupled to said camera unit, for processing an image recorded by said camera unit,
and
means for transmitting an image processed by said processing means to another location
using a radio frequency channel;
wherein at least a portion of said camera unit is integrated in one of said housing of said
notebook computer and a circuit card.

17
18
19
20
21
22
23

Both parties argue that no construction is necessary, and that the Court can adopt the

24

term’s “plain and ordinary meaning.” See Op. Br. at 17; Resp. Br. at 9. Neither party, however,

25

proffers a specific plain and ordinary meaning or submits evidence of what a person of ordinary

26

skill in the art would understand this term to mean.

27
28

At the claim construction hearing, the parties agreed that the Court need only determine
whether the plain and ordinary meaning of this term permits the memory unit to be outside of the
15

1

camera unit. Dkt. No. 157 at 32:7–21. To this end, the Court agrees with Samsung that the claim

2

naturally refers to “at least one memory unit” that is inside the camera unit, lest the phrasing “and

3

having” be written out of the claim. See Resp. Br. at 9 (citing K-2 Corp. v. Salomon S.A., 191

4

F.3d 1356, 1364 (Fed. Cir. 1999) (“Courts do not rewrite claims; instead, we give effect to the

5

terms chosen by the patentee.”)).

6
7
8

E.

“a voice controlled device comprising” (’239 Patent)

Ironworks’s Construction
Plain and ordinary meaning, no
construction necessary.

Samsung’s Construction
“A voice controlled device including all the
means in the remaining claim elements”

9
The Court holds that no construction is necessary.

11

United States District Court
Northern District of California

10

This disputed term appears in independent claims 4 and 10 of the ’239 Patent. See JCCS,

12

App. A at 5. The preamble of claim 4 is representative of how the term is used.

13

Claim 4

14

4. A voice controlled device comprising:
means for storing the telephone numbers to be selected,
means for storing at least one identifier for each telephone number to be selected,
means for receiving an identifier given in a voice form,
means for interpreting the received voice commands,
means for selecting a telephone number in response to a voice command,
wherein the identifier comprises a plurality of sub-identifiers, and the voice controlled
device comprises means for storing the sub-identifiers, and means for selecting a telephone
number in response to a voice command comprising at least two of the plurality of subidentifiers including the sub-identifier.

15
16
17
18
19
20
21
22

Samsung argues that construction of the preamble is necessary “to clarify that the devices

23

of claims 4 and 10 include the other means recited in those claims.” See Resp. Br. at 24.

24

Samsung claims that this preamble language limits the “wherein” clauses of claims 4 and 10, each

25

of which uses the “voice controlled device” language from the preamble. Id. at 24–25

26

As Samsung notes, preambles limit claims in certain situations. Id. “[A] preamble limits

27

the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and

28

vitality’ to the claim.” Catalina Mktg Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed.
16

1

Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir.

2

1999)). Preambles are not limiting, however “where a patentee defines a structurally complete

3

invention in the claim body and uses the preamble only to state a purpose or intended use for the

4

invention.” Id. (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)).

5

No construction of this term is necessary. Although Samsung claims that “voice controlled

6

device” appears elsewhere, and thus limits other claims, Samsung’s proposed construction of the

7

preamble only seeks to construe “comprising,” as meaning “all the means in the remaining claim

8

elements.” See Resp. Br. at 24–25. But, as a matter of law, the term “comprising” has a well-

9

established meaning as “including but not limited to.” See CIAS, Inc. v. All. Gaming Corp., 504
F.3d 1356, 1360 (Fed. Cir. 2007); Georgia-Pacific Corp. v. U.S. Gypsum Co., 195 F.3d 1322,

11

United States District Court
Northern District of California

10

1327–28 (Fed. Cir. 1999); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 811 (Fed.

12

Cir. 1999). Because Samsung only seeks construction of “comprising,” which has a well-

13

established meaning, the Court need not construe this term.

14
15
16

F.

“means for storing the subidentifiers” (’239 Patent)

Ironworks’s Construction
Plain and ordinary meaning, no
construction necessary.

17
18
19
20
21

If construed:
Function: storing the sub-identifiers
Structure: Memory, such as RAM, and
the control circuitry and programming
for storing sub-identifiers in the
memory, and all equivalents thereof.

Samsung’s Construction
This is a means-plus-function element to be
construed in accordance with 35 U.S.C. § 112,
¶ 6.
Function: storing the sub-identifiers
Structure: voice pattern memory and the control
circuitry and programming for storing subidentifiers in memory executing the algorithms
disclosed in cols. 4:19–37, 4:51–54

22
23

The Court adopts Samsung’s construction, but modifies the structure to reflect both

24

“voice pattern” and “voice-equivalent” memory, and that the algorithm reference should be

25

to 4:19–54.

26
27

This term appears in independent claims 4 and 10 of the ’239 Patent. See JCCS, App. A at
5. Claim 4 is representative of how the term is used in the claim language:

28
17

1
2
3
4
5
6
7

Claim 4
4. A voice controlled device comprising:
means for storing the telephone numbers to be selected,
means for storing at least one identifier for each telephone number to be selected,
means for receiving an identifier given in a voice form,
means for interpreting the received voice commands,
means for selecting a telephone number in response to a voice command,
wherein the identifier comprises a plurality of sub-identifiers, and the voice controlled
device comprises means for storing the sub-identifiers, and means for selecting a
telephone number in response to a voice command comprising at least two of the plurality
of sub-identifiers including the sub-identifier.

8
The parties’ dispute turns on what structure adequately corresponds to the agreed-upon

10

function of “storing the sub-identifiers.” See Op. Br. at 22. Ironworks argues that Samsung’s

11

United States District Court
Northern District of California

9

construction improperly reads additional limitations into the claim, in part by requiring a specific

12

algorithm as structure for the claimed function. See id. at 22–23. Ironworks contends that this

13

case falls within the “Katz exception,” which allows “a standard microprocessor” to serve as

14

“sufficient structure for ‘functions [that] can be achieved by any general purpose computer

15

without special programming.’” Id. at 23 (quoting In re Katz Interactive Call Processing Patent

16

Litg. (“Katz”), 639 F.3d 1303, 1316 (Fed. Cir. 2011)). Ironworks further argues that the claimed

17

“storing” function here can be performed by a general-purpose computer without special

18

programming. Id. Separately, Ironworks asserts that Samsung’s construction, which requires

19

memory to be “voice pattern memory,” conflicts with the specification’s disclosure of a means to

20

store contact information via “voice-equivalent memory.” Id. at 23–25.

21

Katz “identified a narrow exception to the requirement that an algorithm must be disclosed

22

for a general-purpose computer to satisfy the disclosure requirement.” Ergo Licensing, LLC v.

23

CareFusion 303, Inc., 673 F.3d 1361, 1364–65 (Fed. Cir. 2012); see also Aristocrat Techs. Austl.

24

Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir.2008) (articulating the default rule

25

that “the structure disclosed in the specification be more than simply a general purpose computer

26

or microprocessor”). In Ergo Licensing, LLC, the Federal Circuit found that the Katz exception

27

applies only in the “rare circumstance[]” where the claimed function “can be achieved by any

28

general purpose computer without special programming.” See id. (quotation omitted) (concluding
18

1

that the function of “controlling the adjusting means” for measuring fluids delivered into a

2

patient’s body “requires more than merely plugging in a general-purpose computer”). The Federal

3

Circuit again cabined Katz in EON Corp. IP Holdings LLC v. AT&T Mobility LLC (“Eon Corp.”),

4

785 F.3d 616 (Fed. Cir. 2015), holding that Katz applies only where “the claimed function is

5

‘coextensive’ with a microprocessor itself.” Id. at 621–22.

6

Both Katz and Eon Corp. recognized that “‘storing’ data” is a function co-extensive with a

7

microprocessor. Accordingly, one component of the agreed-upon function here—“storing”—is

8

analogous to the one discussed in Katz. But the particular function of storing the subidentifiers

9

requires something more than merely “plugging in” a general-purpose computer. See Ergo
Licensing, Inc., 673 F.3d at 1365. To this end, Samsung points to the flow chart in Figure 2 and

11

United States District Court
Northern District of California

10

the specification at column 4:19–37 and 4:51–54. Those lines of the specification state: “In the

12

phase when the user wishes to store the identifier of the telephone number, the voice-control unit

13

2” must be “set to a mode in which the voice-control unit can expect to receive identifiers.” ’239

14

Patent, 4:19–24 (noting that “[t]his function mode is described in the following [lines] with

15

reference to the flow chart of FIG. 2”). Changing over to the store-identifier “function mode” is

16

subsequently accomplished either by “keying the voice-store key A or through the menu facility.”

17

Id. at 4:25–28. “The voice-recognition unit” then creates a message “‘Pronounce the identifier,’”

18

after which the user pronounces the sub-identifiers, e.g. “William,” “Matthew,” or “Herbert.” Id.

19

at 4:28–33. “Each pronounced sub-identifier” is then “stored into the voice-equivalent memory.”

20

Id. at 4:35–36. This step-by-step process articulates a “narrower construction” of the “storing”

21

function sufficient to bring the term outside the Katz exception. See Katz, 639 F.3d at 1316

22

(holding that “[a]bsent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and

23

‘storing,’ . . . those functions can be achieved by any general purpose computer without special

24

programming”).

25

Several of Ironworks’s own assertions show that the function of “storing” subidentifiers is

26

not coextensive with a general-purpose computer or microprocessor. First, Ironworks’s

27

construction identifies corresponding structure as “memory. . . and programming for storing sub-

28

identifiers in the memory.” See Op. Br. at 22. Ironworks’s assertion that this programming is
19

1

inherent to any computer-implemented function, Reply Br. at 13, is belied by the specification’s

2

specific, narrower construction. Second, Ironworks’s own citations to the specification regarding

3

voice-equivalent memory show that the storing of sub-identifiers requires special consideration of

4

how those identifiers are input—for instance, either through “keying” or “pronouncing” the

5

identifier and telephone number. See Reply Br. at 14–15. Indeed, the specification at column 4:7–

6

15 states:

7

Also the numerals from zero to nine are advantageously stored into
the voice-equivalent memory, wherein the user can store also the
telephone number by pronouncing it, wherein the voice-control unit
2 transforms the pronounced telephone number preferably to signals
corresponding to the numeral keys and stores the information on the
telephone number to the telephone number memory, wherefrom it
can be collected when calling. The user can give the telephone
number also by keying in the corresponding numerals.

8
9
10

United States District Court
Northern District of California

11

Although the Court agrees with Samsung’s proposed structure, it finds that there is no

12
13

principled reason for omitting, and thus includes, the language at column 4:38–50 of the

14

specification.6
With respect to “voice-equivalent” and “voice pattern” memory, Ironworks is correct that

15
16

the specification indicates that an identifier can be stored in either form of memory. See Reply Br.

17

at 14–15. The specification appears to use the terms interchangeably. See ’239 Patent, 3:65–4:3

18

(“According to the pronounced command, the voice-recognition means 3 forms an identifier,

19

which is stored to the voice pattern memory 4. Prior art includes several alternative

20

implementations for voice-recognition means 3 and voice-equivalent memory 4 and they are

21

known by an expert in the field.”). For that reason, the Court modifies Samsung’s structural

22

construction to include both “voice pattern memory” and “voice-equivalent memory.”

23

G.

24

“means for interpreting the received voice commands” (’239 Patent)
Ironworks’s Construction

25

Plain and ordinary meaning, no construction
necessary.

26

Samsung’s Construction
This is a means-plus-function element to
be construed in accordance with 35
U.S.C. § 112, 6.

27
28

6

At the claim construction hearing, Samsung raised no objection to this modification. Dkt. No.
157 at 65:20–66:15.
20

1

If construed:
Function: interpreting received voice commands
Structure: Voice control unit, voice recognition
circuitry/programming, a controller, RAM,
ROM and associated programming, and all
equivalents thereof

2
3
4
5

Function: interpreting the received voice
commands
Structure: Indefinite

6

The Court adopts Samsung’s construction.

7

This term appears in independent claims 4 and 10 of the ’239 Patent. See JCCS, App. A at

8

6. Claim 4 is representative of how the term is used in the claim language:

9

Claim 4

10

4. A voice controlled device comprising:
means for storing the telephone numbers to be selected,
means for storing at least one identifier for each telephone number to be selected,
means for receiving an identifier given in a voice form,
means for interpreting the received voice commands,
means for selecting a telephone number in response to a voice command,
wherein the identifier comprises a plurality of sub-identifiers, and the voice controlled
device comprises means for storing the sub-identifiers, and means for selecting a telephone
number in response to a voice command comprising at least two of the plurality of subidentifiers including the sub-identifier.

United States District Court
Northern District of California

11
12
13
14
15
16
17

The parties agree that the term is a means-plus-function term, and that the function is

18
19

“interpreting the received voice commands.” Op. Br. at 19; Resp. Br. at 11. The dispute

20

accordingly turns on whether there is sufficient corresponding structure for the term to survive

21

under Section 112. See Op. Br. at 19; 7 Williamson, 792 F.3d at 1351 (holding that a means-plus-

22

function term is indefinite “if a person of ordinary skill in the art would be unable to recognize the

23

structure in the specification and associate it with the corresponding function in the claim”).

24

Samsung argues that such a structure is lacking because the specification fails to recite an

25

algorithm for the agreed-upon function. See Resp. Br. at 12; see also Typhoon Touch Techs., Inc.

26

v. Dell, Inc., 659 F.3d 1376, 1384 (Fed. Cir. 2011) (“The usage ‘algorithm’ in computer systems

27
28

7

Ironworks omits its “plain and ordinary” meaning proposal from the briefs.
21

1

has broad meaning, ‘for it encompasses in essence a series of instructions for the computer to

2

follow’ . . . .” (quoting In re Waldbaum, 457 F.2d 997, 998 (C.C.P.A. 1972)).

3

According to Ironworks, the associated structure is “voice control unit, voice recognition

4

circuitry/programming, a controller, RAM, ROM and associated programming, and all equivalents

5

thereof.” See Op. Br. at 19. In support of that structure, Ironworks cites to the specification at (1)

6

column 3:24–30, which purportedly sets forth the elements of a “voice-control unit”

7

corresponding to Figure 1; (2) Figure 3 and column 5:9–25, which Ironworks claims describes the

8

“voice recognition circuitry/programming;” and (3) column 3:65–4:6, which purportedly describes

9

how voice recognition was well known in the prior art. Id. at 20–21. Ironworks also refers the
Court to a declaration from its expert, George Valliath, in support of its argument that

11

United States District Court
Northern District of California

10

“interpreting voice commands were [sic] already well known in the art.” Id. at 21–22; see Dkt.

12

No. 145-8 (“Valliath Decl.”).

13

The Court finds Ironworks’s arguments unpersuasive. To begin, Ironworks cites no

14

authority to rebut the requirement that the specification must present an algorithm as a name for

15

structure of the claimed function. See Aristocrat Techs. Austl. Pty Ltd., 521 F.3d at 1334; Triton

16

Tech of Tex., LLC v. Nintendo of Am., Inc., 753 F.3d 1375, 1378 (Fed. Cir. 2014) (“Failure to

17

disclose the corresponding algorithm for a computer-implemented means-plus-function term

18

renders the claim indefinite.”). Ironworks does not identify a “step-by-step procedure” for the

19

function of “interpreting the received voice commands.” And the lines of the specification to

20

which Ironworks refers make clear that a “voice-recognition means” is but one component of a

21

broader “voice-control” unit. See ’239 Patent, 3:26–30 (“A voice-control unit 2 comprises

22

advantageously a voice-recognition means 3, a voice pattern memory 4, a controller unit 5, read-

23

only memory 6, random access memory 7, speech synthesizer 8 and a[n] interface 9.”). Figure 1

24

accordingly shows a “SPEECH RECOGN.” box “3” that is located within the voice control unit

25

box, “2.” And while column 5:9–25 could set forth a sufficiently specific step-by-step procedure

26

for the operation of the voice-control unit, Ironworks expressly disclaims that the “voice control

27

unit” is corresponding structure for the “means for interpreting the received voice commands.”

28

Reply Br. at 7 (“First, the proposed structure is not limited to the ‘voice control unit.’”).
22

1

Ironworks’s arguments regarding the prior art likewise miss the mark. Even if voice

2

recognition technology was well-known from the prior art, that does not mean an artisan of

3

ordinary skill would have recognized an algorithm as structure from the specification. Rejecting

4

an analogous argument in Triton Tech, the Federal Circuit explained:

5
6
7
8
9

The fact that various numerical integration algorithms may have
been known to one of ordinary skill in the art does not rescue the
claims. A bare statement that known techniques or methods can be
used does not disclose structure. The district court correctly
recognized that although a person of skill in the art might be able to
choose an appropriate numerical integration algorithm and program
it onto a microprocessor, the patent discloses no algorithm at all.’
753 F.3d at 1379 (quotations and citations omitted). Ironworks admits in its reply that its expert

11

United States District Court
Northern District of California

10

entirely skips over the fundamental inquiry of whether there is an algorithm for structure. See

12

Reply Br. at 9 (“Valliath does not use the word ‘algorithm’ because Samsung never before raised

13

that specific argument.”). Indeed, Valliath speaks primarily to whether the “the means for

14

interpreting voice commands was already well known in the art” at the time of the invention. See

15

Valliath Decl. ¶¶ 21–24. Valliath’s identification of structure suffers from the same flaws as

16

Ironworks’s construction: Valliath relies on identical lines from the specification. See id. ¶¶ 28–

17

29 (“In the specific context of words used in the ’239 patent and its Figures, one of ordinary skill

18

in the art would have understood that the ’239 patent discloses a structure of the voice control unit,

19

voice recognition circuitry, a controller, RAM, ROM and associated programming, (and

20

equivalents) [for interpreting the received voice commands].”).

21

Although Ironworks omits the argument from its opening brief, it asserts in its reply that

22

the specification does disclose an algorithm. See Reply Br. at 9 (citing ’239 Patent, 5:9–25; 6:1–

23

57). Even if the Court were to consider this argument, it fails. As discussed, column 5:9–25 sets

24

forth a step-by-step process corresponding to the “voice control unit 2.” So too with column 6:1–

25

57. These lines describe how the “voice-control unit 2 defines probability to all the sub-identifier

26

compositions,” and reaches the “final result of the [voice] recognition.” ’239 patent, 6:8–11.

27

These lines likely adequately describe structure corresponding to the “voice control unit 2.” But

28

by Ironworks’s own admission, the “voice control unit” is not equivalent to the “means for
23

1

interpreting the received voice commands.” While Ironworks asserts that algorithms can be

2

designed to accomplish more than one function, see Reply Br. at 10, the lines cited by Ironworks

3

are entirely silent as to the “voice-recognition means 3,” or the term at issue here: “a means for

4

interpreting the received voice commands.” As a result, the Court finds that the term is indefinite

5

under Section 112.

6

H.

7
8
9

“means for selecting a telephone number in response to a voice command
comprising at least two of the plurality of sub-identifiers including the subidentifier” / “means for selecting a telephone number in response to a voice
command comprising a combination of several sub-identifiers” (’239 Patent)

Ironworks’s Construction

10

United States District Court
Northern District of California

11
12
13
14
15
16
17
18
19
20

Plain and ordinary meaning, no
construction necessary.
If construed:
Function: Selecting a telephone
number in response to a voice
command comprising at least two of
the plurality of sub-identifiers / a
combination of several sub-identifiers.
Structure: Voice control unit, voice
recognition circuitry/programming, a
controller, RAM, ROM and associated
programming, and all equivalents
thereof.

21
22
23

Samsung’s Construction
Function: selecting a telephone number in
response to a voice command comprising at least
two of the plurality of sub-identifiers including the
sub-identifier in which: (i) the sub-identifiers need
not be pronounced in the voice command in the
order they appear in the identifier; (ii) the voice
command may include fewer than all of the subidentifiers in the identifier; and (iii) additional
words that do not match any of the stored subidentifiers may be pronounced in the voice
command, but are ignored
selecting a telephone number in response to a
voice command comprising a combination of
several sub-identifiers in which: (i) the subidentifiers need not be pronounced in the voice
command in the order they appear in the identifier;
(ii) the voice command may include fewer than all
of the sub-identifiers in the identifier; and (iii)
additional words that do not match any of the
stored sub-identifiers may be pronounced in the
voice command, but are ignored
Structure: voice control unit, voice recognition
circuitry/programming, a controller, RAM, ROM,
executing the algorithm disclosed in cols. 4:55–
5:22, 6:7–11, or 6:40–57

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The Court adopts Ironworks’s identification of the function and Samsung’s
identification of the structure.
The first term appears in independent claim 4 of the ’239 Patent, and the second term
appears in independent claim 10 of the ’239 Patent. See JCCS, App. A. at 6–8. Claim 4 is
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representative of how the terms are used in the claim language:
Claim 4
4. A voice controlled device comprising:
means for storing the telephone numbers to be selected,
means for storing at least one identifier for each telephone number to be selected,
means for receiving an identifier given in a voice form,
means for interpreting the received voice commands,
means for selecting a telephone number in response to a voice command,
wherein the identifier comprises a plurality of sub-identifiers, and the voice controlled
device comprises means for storing the sub-identifiers, and means for selecting a
telephone number in response to a voice command comprising at least two of the
plurality of sub-identifiers including the sub-identifier.

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United States District Court
Northern District of California

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The parties dispute both the claimed function and its corresponding structure. Ironworks’s

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functional construction parallels the language of the term itself—i.e. “selecting a telephone

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number in response to a voice command comprising at least two of the plurality of sub-identifiers /

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a combination of several subidentifiers.” See Op. Br. at 24. Ironworks argues that Samsung’s

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identification of function improperly imports into the claim embodiments referenced during

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reexamination of this patent. See Op. Br. at 25–26. As for the corresponding structure, Ironworks

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identifies the same structure that it identified for the above-discussed term “means for interpreting

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the received voice commands.” Id. at 27. Ironworks cites the same lines of the specification—

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Figure 1 and column 3:24–30—as showing structure for this term. Id. at 27. And Ironworks

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argues that an algorithm is not required because “the ’239 patent specifically discloses a structure

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that is not limited to a general purpose computer or microprocessor.” Id.

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In support of its construction of function, Samsung relies primarily on the doctrine of

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prosecution disclaimer. Specifically, Samsung argues that MobileMedia—the entity that assigned

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the patent to Ironworks after patent prosecution was complete—repeatedly asserted that the

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claimed means of performing the function of “selecting a telephone number in response to a voice

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command” was limited to the “three defining characteristics” that its construction sets forth: that

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“(1) the sub-identifiers need not be pronounced in the voice command in the order they appear in

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the identifier; (2) the voice command may include fewer than all of the sub-identifiers in the
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identifier; and (3) additional words that do not match any of the stored sub-identifiers may be

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pronounced in the voice command, but are ignored.” See Resp. Br. at 17–18. Samsung contends

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as to structure that an algorithm is required, and that such an algorithm is stated by “two iterative

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probability-based algorithms at 4:55–5:22, 6:7–11 and 6:40–57.” Id. at 19.

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Turning first to function, the Court is not persuaded by Samsung’s prosecution disclaimer

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arguments. The statements upon which Samsung relies for its functional limitations recite “three

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advantages not found in the prior art.” See Dkt. No. 151-5 at 27–28. This does not rise to the

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level of disavowal required to evoke the doctrine. See, e.g., Thorner, 669 F.3d at 1366. And

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although Samsung might be correct that the Federal Circuit does not require “explicit redefinition
or disavowal,” it typically relies on clear guidance in the specification or prosecution history

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United States District Court
Northern District of California

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before reading limitations into claims. See Trustees of Columbia Univ. in City of N.Y. v. Symantec

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Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016); Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d

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1324, 1330 (Fed. Cir. 2012) (requiring “clear limiting descriptions of the invention in the

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specification or prosecution history”); Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314 (Fed.

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Cir. 2003) (“But where the patentee has unequivocally disavowed a certain meaning to obtain his

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patent, the doctrine of prosecution disclaimer attaches and narrows the ordinary meaning of the

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claim congruent with the scope of the surrender.”). Samsung here cites no such clear guidance to

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support reading in the three specific limitations included in its functional construction.

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Samsung also points to a statement of MobileMedia that the “sub-identifiers must be stored

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in the device so as to be usable separately in the selection of the associated telephone number.”

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See Resp. Br. at 18. But Samsung’s three functional limitations are silent as to storage. Nor does

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Ironworks’s construction speak to how sub-identifiers are stored. Samsung thus has not shown

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that Ironworks is estopped from advocating this functional interpretation, and the Court thus

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adopts Ironworks’s broader construction of function.

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As to structure, Section 112 requires an algorithm because the claimed function is not co-

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extensive with a general-purpose computer or microprocessor. See Ergo Licensing, 673 F.3d at

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1364–65. In its reply, Ironworks only disputes that an algorithm is required—it does not expressly

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respond to Samsung’s identification of an algorithm in columns 4:55–5:22, 6:7–11 and 6:40–57.
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See Reply Br. at 11–12. The lines of the specification cited by Samsung provide a step-by-step

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process for a “means for selecting a telephone number in response to a voice command

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comprising. . .” That is corresponding structure sufficient under Aristrocrat Techs. and

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Williamson.8

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IV.

CONCLUSION
The Court CONSTRUES the disputed terms as follows:

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Patent

Claim Term

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9
’078

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“camera unit”

United States District Court
Northern District of California

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Construction
“camera arrangement comprising a
camera, optics, microprocessor and
memory, battery, and interface to
external systems constituting an
individual component of a whole
personal communication device or
whole portable mobile cellular phone”

’078

“means for processing and for storing at
least a portion of said image information
obtained by said camera unit for later
recall and processing”

Function: processing and storing at least
a portion of said image information
obtained by said camera unit for later
recall and processing
Structure: microprocessor (23) and
memory unit (24) within the camera unit

’078

“means, coupled to said camera unit, for
processing an image recorded by said
camera unit”

Function: processing an image recorded
by said camera unit
Structure: a central processor coupled to
the camera unit

’078

“at least one memory unit for storing an
image recorded by said camera unit”

No construction necessary, but the plain
and ordinary meaning does not permit
the memory to be outside the camera
unit

’239

“a voice controlled device comprising”

No construction necessary

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Even if an algorithm were not required, it is not clear how the “voice control unit, voice
recognition circuitry/programming, a controller, RAM, ROM and associated programming, and all
equivalents thereof” adequately describes corresponding structure for this claimed function. That
is especially so considering (1) Ironworks cites this same exact structure as performing the abovediscussed “means for interpreting the received voice commands;” and (2) Ironworks relies on
virtually identical lines from the specification for its structural construction of that term, see, e.g.,
’239 Patent, 3:24–30.
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’239

“means for storing the subidentifiers”

Function: storing the sub-identifiers
Structure: voice pattern and voiceequivalent memory, and the control
circuitry and programming for storing
subidentifiers in memory executing the
algorithms disclosed in cols. 4:19–54

’239

“means for interpreting the received voice
commands”

Function: interpreting the received voice
commands
Structure: Indefinite

’239

Function: Selecting a telephone number
in response to a voice command
“means for selecting a telephone number
comprising at least two of the plurality
in response to a voice command
of sub-identifiers / a combination of
comprising at least two of the plurality of
sub-identifiers including the sub-identifier” several sub-identifiers.
/ “means for selecting a telephone number Structure: voice control unit, voice
in response to a voice command
recognition circuitry/programming, a
comprising a combination of several subcontroller, RAM, ROM, executing the
identifiers”
algorithm disclosed in cols. 4:55–5:22,
6:7–11, or 6:40–57

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United States District Court
Northern District of California

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In addition, the Court SETS a further case management conference (“CMC”) for

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Wednesday November 14, 2018 at 2:00 p.m. The Court DIRECTS the parties to consult this

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Court’s order granting the parties’ joint motion to stay discovery, which sets forth deadlines that

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are triggered by this claim construction order. See Dkt. No. 165. The Court also DIRECTS the

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parties to meet and confer before the CMC to discuss a proposed case schedule through trial and to

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submit a joint CMC statement by Wednesday November 7.

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IT IS SO ORDERED.
Dated: 10/26/2018
______________________________________
HAYWOOD S. GILLIAM, JR.
United States District Judge

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