Hovsepian v. Apple, Inc.

Filing 158

Hovsepian v. Apple, Inc.

Doc. 158 Att. 1

EXHIBIT F

Dockets.Justia.com

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UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA SOUTHERN DIVISION
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ACACIA MEDIA TECHNOLOGIES CORPORATION, Plaintiff(s),

SA CV 02- 1040-JW(MLGx);
Consolidated Cases:

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VS.
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NEW DESTINY INTERNET GROUPST AL., )

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SA CV 02- 1048-JW(MLGx); SA CV 02- 1063-JW(MLGx); SA CV 02-1 165-JW(MLGx); SA CV 03-02 17-JW(MLGx); SA CV 03-02 18-JW(MLGx); SA CV 03-0219-JW(MLGx); SA CV 03-0259-JW(MLGx); SA CV 03-027 1-JW(MLGx); & SA CV 03-0308-JW(MLGx)
Related Cases:

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AND ALL RELATED AND/OR CONSOLIDATED CASE ACTIONS.

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SA CV 03-1 80 1-JW(MLGx); SA CV 03- 1803-JW(MLGx); SA CV 03- 1804-JW(MLGx); SA CV 03-1805-JWWLGx); & SA CV 03-1807-JW(MLGx)

MARKMAN ORDER

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I. INTRODUCTION

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This is a patent infringement case, in which the Plaintiff, Acacia Media Technologies Corporation, ("Acacia") asse* that various internet based adult entertainment providers

The Court conducted a hearing on four separate days in accordance with Markrnan v. 1 Westview Instruments, Inc., 5 17 U.S. 370 (1996), to construe the disputed terms and phrases of the asserted claims.' This Order gives the Court's construction of some of the disputed terms and phrases and invites further briefing or motions with respect to other terms.
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Prosecution History of the '702 Patent and the '992 Patent
Both the '992 patent and the '702 patent, are members of the Yurt family of patents that

includes five issued patents, all claiming a priority date of the '992 patent and sharing a common 7

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spe~ification.~ '702 patent is a division of application Ser. No. 081630,590, filed April 10, The 1996, which issued as U.S. Pat. No. 6,002,720, which is a continuation of application Ser. No. 081133,982, filed October 8, 1993, which issued as U.S. Pat. No. 5,550,863, which is a continuation of application Ser. No. 071862,508, filed April 2, 1992, which issued as U.S. Pat. No. 5,253,275, which is a continuation application of Ser. No. 071637,562, filed January 7, 1991,

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which issued as the '992 patent. 13
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STANDARDS The construction of the claims in a patent is a matter left to the province of the court.

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Markman, 5 17 U.S. at 391. A court's objective is to determine the plain meaning, if any, that those of ordinary skill in the art would apply to the language used in the patent claims. Warner v. Ford Motor Co., 33 1 F.3d 851, 854 (Fed. Cir. 2003) (citing Rexnord v. Laitram Cop., 274 F.3d 1336, 1342 (Fed. Cir. 2001)). While the court may look to pertinent art dictionaries, treatises and encyclopedias for assistance, Texas Digital S's., Inc. v. Telegenix, Inc, 308 F.3d 1193, 1202-03 (Fed. Cir. 2002), the intrinsic record is the best source of the meaning of claim language. Vitronics Coup. v. Conceptronics, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Unless the inventor

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The Court conducted hearings in the Central District of California at the Santa Ana Federal Courthouse on February 6,2004; April 9,2004; May 18,2004; and May 19,2004. The Court notes that applicants did make corrections to the specification of the '702 patent, such as adding the phrase "[tlhe receiving system recognizes copy protected programs and disables the audio-video recorder." See Miller Decl., Ex. GG ('702 prosecution history) at 21 1. Nothing in this Order shall be construed as endorsing any claimed priority dates of the patents-insuit.

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has manifested an express intent to depart from the ordinary and accustomed meaning that patent claim language has in the art, there is a heavy presumption that the inventor intended the ordinary

Group, Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001) (citation omitted). The use of extrinsic

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genuinely ambiguous after consideration of the intrinsic evidence." Interactive Gift Express, Inc.

v. Cornpuse~w Incorp., 256 F.3d 1323, 1332 (Fed. Cir. 2001).
IV. DISCUSSION A. Claim 1of the '992 Patent

There are fifty-eight claims in the '992 patent, six of which are independent claims. The Court requested that the parties submit a list of disputed terms and phrases appearing in two independent claims: claim 1, an apparatus claim, and claim 41, a method claim. The Court explained that it would construe additional terms .in the '992 patent at a later date, if requested by the parties. With the disputed terms and phrases in bold, Claim 1 of the '992 patent recites:

1. A transmission system for providing information to be transmitted to remote locations, the transmission system comprising: library means for storing items containing information; identification encoding means for retrieving the information in the items from the library means and for assigning a unique identification code to the retrieved information;
conversion means, coupled to the identification encoding means, for placing the retrieved information into a predetermined format as fonnatted data;

ordering means, coupled to the conversion means, for placing the formatted data into a sequence of addressable data blocks;
compression means, coupled to the ordering means, for compressing the formatted and sequenced data blocks;

compressed data storing means, coupled to the data compression means, for storing as files the compressed, sequenced data blocks received from the data compression means with the

unique identification code assigned by the identification encoding means; and
transmitter means, coupled to the compressed data storing means, for sending at least a portion of one of the files to one of the remote locations. ('992 patent, 20: 14-40) (emphasis added).

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A transmission system for providing information to be transmitted to

"remote location^'^
~ h e ~ a r t i request construction of the term "remote locations" that appears in claims 1, es 19,22,25,41,47 and 54 of the '992 patent. Acacia contends that the term should have its ordinary and customary meaning, such that "remote locations" means "positions or sites distant in space from the position(s) or site(s) of the transmission system." To support its position, Acacia points to various parts of the claim language and the specification.

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Defendants contend that the word "locations" simply is the plural of "location" and has a commonly understood meaning of more than one place or site. Defendants assert that the dispute centers upon the term "remote." Defendants contend that the term "remote locations" should be construed to mean "more than one location selected by the user." The Court finds that the ordinary meaning of the term "remote locations" is "positions or sites distant in space from some identified place." In the context of claims 1 and 41, the ordinary meaning of the term is "positions or sites distant in space fiom the transmission system." In the context of claim 1 the term "remote locations" is described in relation to the transmission system

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in the preamble that recites "[a] transmission system for providing information to be transmitted to remote locations ..." Similarly, in claim 41 the "remote locations" are sites remote from the transmission system to which at least a portion of the file is sent. Unlike other claims of the '992 patent that describe systems responsive to requests fiom a user (e.g.,claims 19 and 47), there is no such limitation included in independent claims 1 and 41. Specifically, claims 19 and 47 contain additional limitations that the remote location be specified by the user of the system. In other words, the term "remote locations" is used consistently by the

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inventors in all claims but the inventors added additional words that limit the term to a remote location selected by the user in claims 19 and 47. Defendants' proposed construction of "remote locations" would read the limitations of claims 19 and 47 into broader claims, a construction that would violate the doctrine of claim differentiation. "It is improper for a court to add 'extraneous' limitations to a claim, that is, limitations added 'wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim."' Hoganas AB v. Dresser Indus., Inc., 9 F.3d 949,950 (Fed. Cir. 1993) (quoting E.I. D MPont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433, (Fed. Cir.), cert. denied, 488 U.S. 986 (1988); SRI Int'l v. Matsushita Elec. Corp. ofAm., 775 F.2d 1107, 1122 (Fed. Cir. 1985) ("It is settled law that when a patent claim does not contain a certain limitation and another claim does, that limitation cannot be read into the former claim in determining either validity or in£iingement."). The Court looks to the specification to determine "whether the presumption of ordinary and customary meaning is rebutted." Tex. Digital Sys., 308 F.3d at 1204; see also Inverness Med. Switz. Gmbh v. Princeton Biomeditech Corp., 309 F.3d 1365, 1371-72 (Fed. Cir. 2002). The specification discloses a configuration that does not require a user to select a particular location. Figure l g of the '992 patent shows a transmission system distributing to a receiving system, which preferably transmits requested material over airwave communication channels to a plurality of users. ('992 patent, 453-57). Also, the specification discloses "[tlhe transmission system 100 of the present invention preferably further includes transmitter means 122, coupled to the compressed data library 118, for sending at least a portion of a specific file to at least one remote location." ('992 patent, 15:61-65). Here, the specification does not overcome the heavy presumption that the plain and ordinary meaning should apply. See CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)); see also Mantech Envtl. Corp. v. Hudson Envtl. Sews., Inc., 152 F.3d 1368, 1374 (Fed. Cir. 1998) ("If the written description supports the definition of the term that is apparent from the claim limitation, then reading in a hrther limiting definition would be improper."); Specialty Composites v. Cabot Corp., 845 F.2d 98 1,987 (Fed. Cir. 1988) ("Where a

specification does not require a limitation, that limitation should not be read &om the

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specification into the claims."). 2 Next, the Court considers statements made in the prosecution history of the '992 patent, as 3 well as related patents that share the same specification, to determine whether the patentee effected a disclaimer of claim scope. Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340,

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1349-50 (Fed. Cir. 2004). Such a disclaimer-requiresclear and unmistakable statements of disavowal. See Cordis Corp. v Medtronic AYE, Inc. at e1.,339 F.3d 1352, 1358 (Fed. Cir. 2003)
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(citing Omega Eng'g. Inc. v. Raytek Corp., 334 F.3d 1314, 1325 (Fed. Cir. 2003)).

A "Petition to Make Special" allows an application to request an accelerated examination
of an application. In exchange, the applicant must conduct a preexamination search and must provide "a detailed discussion of the references, which points out, ... how the claimed subject matter is distinguishable over the references." M.P.E.P. $ 708.02. VIII (1989). In distinguishing the claimed invention from U.S. Patent No. 4,890,320 (hereinafter, "Monslow") that issued in 1989, the applicants explained that in Monslow "the viewer-chosen program is transmitted to the television receiver of the requesting viewer." (Miller Decl., Ex. B., p. 156). In distinguishing the claimed invention from U.S. Patent No. 4,506,387 (hereinafter, "Walter") that issued in 1985, the applicants explained that Walter "requires that the viewer be at the location for both ordering and viewing the audiolvideo material." Id. In distinguishingU.S. Patent No. 4,763,19 1 (hereinafter "Gordon") that issued in 1988, the applicants explained that Gordon did not disclose a provision for storage of requested programming before transmission to the user or for storage before the programming is played. Id. The Court finds that there was no clear disavowment of claim scope during the prosecution history of the '992 patent that limits the plain and ordinary meaning of the term "remote locations." While the prior art references disclosed a system where the requesting device, either a telephone or a computer, is physically located at the same location as the receiving system, the applicants distinguished the present invention in that none of the references provided for the storing of the information at the receiving system location so that the information may be played back at a later time selected by the user. Thus, the requester of the

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information may be physically located at a "remote location," because the prior art was overcome for more than one reason, creating no disavowment of claim scope. Defendants contend that the applicants clearly disavowed and thereby limited the term "remote locations'' by a statement made during the prosecution of the '720 patent application, a patent in Yurt family that issued in 1998. In the '720 patent application, the applicants amended a claim in response to an examiner's rejection. The applicants stated "to clarify remote location to which the information is transmitted is different from the accessing location at which the user is positionedwhen making the request." (Miller Decl., Ex. L, p. 502). The amendment and

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alleged disavowment were in response to the examiner's rejection of the claim as anticipated by Patent No. 5,195,092 (hereinafter, "Wilson et al. ") that issued on March 16, 1993. At the First Markrnan Hearing held on February 6,2004, Defendants asserted that

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Microsofl Corp. v. Muhi-Tech Sys., Inc. allowed a court to rely on comments made in subsequent related patent prosecutions to interpret disputed claims of previous issued patents. The Court disagrees. In Microsoff, the Federal Circuit stated that it was relying on comments directed at the common specification shared by both of the patents and was not relying on comments made regarding amendments to claims. See Microsofl, 357 F.3d at 1349 n5. During claims construction of the '992 patent that issued in 1992, it would be improper for the Court to consider a comment made during prosecution of a related patent (the '720 patent) regarding an anlendment to a claim made in 1998 to overcome 1993 prior art. See id; Georgia-

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Pac~j?c Corp. v. United States Gypsum Co., 195 F.3d 1322 (Fed. Cir. 1999). 20 Therefore, the Court finds "remote locations" to have its ordinary meaning "positions or 21 sites distant in space from some identified place or places." In claims 1 and 4 1 of the '992 patent, 22 the term "remote locations" means "positions or sites distant in space from the transmission 23 system." 24
2.

"library means for storing items containing information" (claim 1 of the '992 patent)

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The parties request that the Court construe the phrase "library means for storing items 27 containing information" that appears in claim 1 of the '992 patent. 28

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Acacia contends that the phrase "library means for storing items having information" is

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not a means-plus-function limitation, because sufficient structure for performing the claimed
function is disclosed in the claim. Acacia contends that sufficient stmcture is elaborated in claim 1 by including the term "library." Acacia supports its position through use of a dictionary that defines the term "library" as "a place where materials are kept or a collection of such materials." Also, Acacia relies on the specification stating that "the library has a geographical location and that multiple libraries in a system may communicate with one another. ('992 patent, 2:65-66;
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6:23-30; and 15:13-1 9 . " (Acacia's Claim Construction Brief, January 8,2004).
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Defendants contend that sufficient structure is not recited in the claim. Defendants contend that the claimed function of "storing items containing information" should be construed to require that the library means must have items containing information that may be readily

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accessed for use by the transmission system, i.e., the library is part of the transmission system. Defendants contend that although a generic "library" is capable of retaining items at a particular location, a generic library does not make these items available for use by the claimed transmission system. Defendants assert that the only type of library that performs the claimed function is the "source material library" disclosed in the specification. The use of the term "means for" in a claim limitation creates a rebuttable presumption

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that the limitation is drafted in fj 112,7 6 format. NCR Corp. v. Palm, Inc., 217 F. Supp. 2d 49 1,
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502 (D. Del. 2002) (citing Kemco Sales, Inc. v. Control Papers, Co., 208 F.3d 1352, 1361 (Fed.
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Cir. 2000). One can rebut that presumption by showing that the claim itself recites sufficiently
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definite structure to perform the claimed function. Id. See also Envirco Corp. v. Clestra
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Cleanroom, Inc., 209 F.3d 1360 (Fed. Cir. 1994);' Unidynamics Corp. v. Automatic Prods. Int'l

31nEnvirco Corp. v. Clestra Cleanroom, Inc., 209 F.3d 1360 (Fed. Cir. 1994), the claim at issue described a centrifugal fan and filter assembly for clean room environments. The district court had construed "second baMe means" as a means-plus-function element and had looked to the specification to determine its corresponding structure. The first embodiment described a baffle having continuous arcuate surfaces; the district court found that the claims required such arcuate structure. Since the accused product had baffles formed of L-shaped material, the district court granted summary judgment of non-infringement. On appeal, the Federal Circuit reversed, noting that while the district court had properly

Ltd., 157 F.3d 131 1, 1319 (Fed. Cir. 1998)4 The clause "library means for storing items having information" is written such that the means-plus-function presumption of tj 1 12,y 6 does apply. See Greenberg v. Ethicon Endo Surgery, Inc., 9 1 F.3d 1580 (Fed. Cir. 1996) ("Claim drafters conventionally use the preface 'means for' (or 'step for') when they intend to invoke section 112(6), and there is therefore seldom any conhsion about whether section 112(6) applies to a particular element."); Sage Prods., 126 F.3d at 1427. "This presumption is overcome in two ways." Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1347 (Fed. Cir. 2002). "First, a claim element that uses the word 'means' but recites no function corresponding to the means does not invoke tj 112,76." Allen Eng'g Corp., 299 F.3d at 1347 (citations omitted).

In the case at hand, the presumption is not overcome by the first method because there is
a function corresponding to the means recited in the claim: "library means for storing items having information." ('992 patent, 20: 17) (emphasis added). "Second, even if the claim element specifies a function, if it also recites sufficient structure or mateiial for performing that function, tj 112,y 6 does not apply." Allen Eng'g Cop., 299 F.3d at 1347 (citations omitted). Here, the issue is whether the term "library" is a sufficient recital of structure to perform the function.

performed the first part of the analysis, it had failed to perform the second part of the analysis, which is to determine whether the means clause cited sufficient structure to stand upon its own without invoking tj 112,76 to identify the claimed structure. The court concluded that the patentee had rebutted the presumption and thus the element was not subject to tj 112, 7 6 .

41n contrast, the Federal Circuit construed "spring means tending to keep the door closed" to be means-plus-function in Unidynamics Cop. v. Automatic Prods. Int'l Ltd., 157 F.3d 1311, 1319 (Fed. Cir. 1998). The Federal Circuit agreed with the lower court that the term "spring" is a structural term, but held that the remainder of the clause was intended to invoke means-plusfunction treatment, and that the use of a structural term in the clause did not vitiate this intent, given the statement in the specification that the disclosed "spring 46 is an example of spring means tending to keep the door closed." In other words, the use of the words "is an example of' did not stop the court from limiting the claim to that example. Id.

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The Court finds that the term "library" does not provide sufficient structure to overcome the presumption that the patentees' use of the term "means for" was not intended to invoke 5 112,

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76. Even if the term "library" is considered a structural term, the remainder of the clause
invokes means-plus-function treatment, and the use of a structural term in the clause does not vitiate the patentees' intent. See Unidynamics Corp. v. Automatic Prods. Int? Ltd., 157 F.3d at 13 19 (citing Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1536, 19 USPQ2d 1367, 1369 (Fed. Cir. 1991) ("The recitation of some structure in a means-plus-function element does not preclude
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the applicability of section 112.")). Moreover, a generic library by itself is not integrated with the claimed invention and does not make the information available. A particular kind of library, a "source material library" is required in the claimed in~ention.~

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13 l4 15 16 'Every section of the specification that Acacia relies on in support of its position that "library" connotes sufficient structure, makes reference not to a "library" but instead a "source material library." See '992 patent, 2:65-66 ("Additionally, the present invention comprises a receiving system responsive to a user input identifllng a choice of an item stored in a source material library to be played back to the subscriber at a location remote from the source material library.") (emphasis added); '992 patent, 6:23-30 ("The source material library 111, ... may preferably include a single source material library or a plurality of source material libraries. ... The plurality of source material libraries ...") (emphasis added); and '992 patent, 15:13-15 ("It is possible to process orders and operate a database of available titles at multiple locations remote of the source material library 111.") (emphasis added). Moreover, comments made by the applicants during the prosecution of the '992 patent require that the library means be limited to the corresponding structure identified in the specification as the "source material library." In the First Office Action of the '992 patent application, the examiner rejected claims 1-6, and a multitude of others as being anticipated by "Lang." (Miller Decl., January 8,2004; Ex. B at 183-185). The examiner stated that "Lang discloses a videolaudio storage system which is capable of providing information to remote locations. See Fig. 2 for library means (1 I)." Id. at 183 (emphasis added). The applicants disagreed with the examiner. They asserted that Lang envisioned a library at some time in the future because Lang lacked the knowledge of how to incorporate such a library. Id. at 209. Applicants stated that they solved the problems left open in Lang. Id. The applicants further disputed whether Lang disclosed the recited identification encoding means "because the functions of the identification encoding means are to retrieve of [sic] information from the source material library means and to assign a unique identification code to the retrieved information." Id. Thus, to overcome Lang, the applicants disavowed any corresponding structure of "library means" other than a "source material library."

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Having concluded that "library means" is drafted in means-plus-function form, construction of that limitation requires two steps. Asyst Techs., Inc. v. Empak, Inc., 268 F.3d 1364, 1369 (Fed. Cir. 2001). First, the Court must identify the function recited in the claim. Id. "Second, the court must identify the corresponding structure set forth in the [specification] that performs the particular function set forth in the claim." Id. The hnction of "library means" is "storing items containing information." The Court construes the term "items containing information" to mean "items containing information in analog or digital format." The limitation requiring the information be stored in analog or digital format is necessary as the conversion means element 113 only converts analog and digital inputs into a "formatted data" output.6 ('992 patent, figure 2a). To preserve validity of the patent, the applicants limited claim 1 of the '992 patent as well as other claims involving a source material library to envelop only retrieving "information in the items." ('992 patent,

20: 19). Although the specification discloses musical instruments and books being stored in the
source material library, it does not enable retrieval of such items, much less conversion of such information in the items into the required input format acceptable by the conversion means (figure 2a (1 13)). ('992 patent, figure 2a).

6Neitherthe claims nor the specification of the '992 patent disclose any structure for converting information in the "items" to analog or digital form as required by the "conversion means," before the items are stored in the library means. The claims and the specification disclose structure (figure 2a (1 13)), which converts only analog or digital information. Before the items are stored, the information in the "items" stored in the library means must out of necessity already be in analog or digital format.

The Court finds that the corresponding structure of "library means" is the "source material library," as represented by block 111 of Figure 2a of the '992 patent. The claim element covers this corresponding structure and its equivalent^.^
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"identification encoding means for retrieving the information in the items from the library means and for assigning a unique identification code to the retrieved information"

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"identification encoding means"

The parties agree that the term "identification encoder means" should be construed under

4 112,76. The identification encoding means disclosed in claim 1 of the '992 patent has two
hnctions: (1) "retrieving the information in the items from the library means" and (2) "assigning a unique identification code to the retrieved information." ('992 patent, 20: 19-21) (emphasis added). The Court will construe these two functions and then look to the specification 25 26

'In addition to reasons stated above, a "compressed data library" is not considered a
corresponding structure of a library means because it represents the corresponding structure for a "compressed data storing means." Compare claim 1 of the '992 patent col. 20, line 17 ("library means ...") with line 32 ("compressed data storing means, coupled ..."). See e.g. '992 patent at 12:48, 1259-66, and 13:9-13.

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for corresponding structure.
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retrieving the "information in the items from the library means"

The Court gives the term "retrieve" its ordinary meaning -- "to get something back." In this case, the function of the identification encoding means is to get back the information that is contained in the items which are stored in the source material library.
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assigning a "unique identification code to the retrieved information"

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Although it is undisputed that the "identification encoding means" must assign a "unique identification code," the parties dispute the meaning of the term "unique identification code." The term does not have a plain and ordinary meaning. The language of claim 1 of the '992 patent, clarifies that a unique identification code identifies information stored possibly in more than one file and that the unique identification code is stored in the presence of files containing the information to be stored. The specification refers to a "unique address code" that is not synonymous with the unique identification code. The "unique address code is an address for uniquely identifying the compressed data items stored in the compressed data library section of a library system." ('992 patent, 10:48-50). "The unique address code makes access to the requested data possible." ('992 patent, 10:64-65). Also separately defined in the specification and thus not to be considered a unique identification code is program notes and popularity codes. ('992 patent, 6:48-54). In summary, the unique identification code is not a genus that includes all other codes, such as, the popularity code, unique address code, program notes, item title, and file name. 22 Instead, the unique identification code is assigned by the identification encoding means and 23 accompanies information stored as compressed sequenced data through the data compression
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process. ('992 patent, 10:20-22). The specification is ambiguous, inter alia, with regards to whether the unique identificatiod code is assigned to"the item" or to "the information in the item."

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For instance, in the specification states: 1 2 3 4 "[plrior to being made accessible to a user of the transmission and receiving system of the present invention, the item must be stored in at least one compressed data library 118, and given a unique identification code by identification encoder 112." ('992 patent, 6:35-39).

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This passage can reasonably be read to provide that the item itself is stored and that the item itself is given a unique identification code. In artother instance, the specification describes that a file containing compressed audio and video data "is addressable through the unique identification code assigned to the data by the identification encoder 112." ('992 patent, 10:28-30). h i s language suggests that the unique identification code is assigned to "data," which means the information in the item. Similarly, the "Summary of the Invention" section of the specification describes the identification encoder means assigning a unique identification code to information retrieved from the source material library. ('992 patent, 2:33-34).

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Accordingly, the Court construes the function "assigning a unique identification code to the retrieved information" to mean "assigning a one-of-a-kind identifier to the information retrieved from an item that identifies the retrieved information through the conversion, ordering, compression, and storing processes." The Court now examines the specification for corresponding structure which performs these functions. Acacia contends that the structure corresponding to the "identification encoding means" is: (1) a human being; (2) computer software;

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(3) an identification encoder, and all equivalents.'

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8''[A]person (e.g. system operator), an identification encoder, and computer software having source material utilization capabilities, and all equivalents thereof." (Joint Claim Construction Chart, Docket Item No. 151).

Defendants contend that there is no corresponding structure because (1) human beings are
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not structures, (2) the dispatching control software disclosed in the specification is not linked to 2 3 4 5
(1) A Human Being As Corresponding Structure for the

the identification encoder, and (3) the "identification encoder" is a hnctional term that does not connote structure. The Court will consider these in order.

Identification Encoding Means"

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To support its argument that a human being is disclosed in the specification as correspondirrg structure for the "identification encoding means," Acacia refers to a passage in the specification which mentions a human being: FIG. 7 is a flow chart 400 of a preferred method of distribution of the present invention. The distribution method is preferably responsive to requests identifying inforpation to be sent from the transmission system 100 to remote locations. Method 400 assumes that the items have already been stored in compressed data library 118. As illustrated in FIG. 7, the first step of the distribution method 400 involves retrieving the information for selected items in the source material library 111, upon a request by a user of the distribution system (step 412). This is analogous to taking books off of a shelf at the local public library after the person has decided that he or she would like to read them.

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('992 patent, 18:46-59) (emphasis added). Defendants contend that this reference to a person taking books off of a library shelf as analogous to a distribution "method" is not disclosure of a human being as corresponding structure of "identification encoding means." Defendants point out that the specification refers to a method and make no reference to the structure under consideration. In addition, Defendants point out that in the cited analogy the item itself is retrieved by the person. The claim requires corresponding structure for retrieving "the information in the item." The Court finds that the language of claim 1 supports Defendants' position. As discussed above, corresponding structure to the "identification encoding means" must retrieve "the information in the items from the library means." ('992 patent, 20: 19-20) (emphasis added)?

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Claim 1 of the '992 patent recites, in pertinent part, that: 1. A transmission system for providing information to be

The specification describes "retrieving the information for selected items in the source material library" and does not mention retrieving the item itself." ('992 patent, 1853-56). Except for the Figure 7 analogy above to a library user, there is no other discussion in the specification which could be understood by one skilled in the relevant art as disclosing a human being as corresponding structure for performing the functions of the "identification encoding means." ('992 patent, 20: 19-20)." Therefore, the Court finds that there is no disclosure in the specification of a human being
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as corresponding structure for the identification encoding means. Accordingly, the Court declines to include a human being as corresponding structure in its construction of the "identification encoding means."
(2)

The Dispatching Control Software As Corresponding Structure to the "Identification Encoding Means."

Acacia contends that a computer software program, the dispatching control software, is disclosed as corresponding structure of the "identification encoding means." Computer software that performs uncommon functions can be corresponding structure in a means-plus-function element if the algorithm or enabling software is disclosed. See Medical Instrumentation & Diagnostics Corp., 344 F.3d at 1211 ("The correct inquiry is to look at the

transmitted to remote locations, the transmission system comprising: library means for storing items containing information; identification encoding means for retrieving the information in the items from the library means and for assigning a unique identification code to the retrieved information; ... ('992 patent, 20: 14-22). ''The Court notes that the elements of the patent under consideration do not claim a structure for retrieving the items themselves. The Court leaves for later consideration the effect, if any of no structure for retrieving the items from the library means.
' I Because the specification of the '992 patent, does not disclose a human being as a corresponding structure for the identification encoding means, the Court does not reach the legal issue of whether a human being can even be a corresponding structure.

disclosure of the patent and determine if one of skill in the art would have understood that disclosure to encompass software for digital-to-digital conversion and been able to implement such a program, not simply whether one of skill in the art would have been able to write such a software program."); S3, Inc. v. Nvidia, 259 F.3d 1364, 1369 (Fed. Cir. 2001) ("The claims are directed to the invention that is described in the specification; they do not have meaning removed from the context from which they arose.") (internal quotations omitted).

In the specification, no algorithm for the "dispatching control s o f ~ a r e "is~ ' disclosed to
explain howthe information in the items stored in the source material library is allegedly retrieved by the software. See W S Gaming, Inc. v. Int? Game Tech, 184 F.3d 1339, 1348-49 (Fed. Cir. 1999); see also Tehrani v. Hamilton Med., Inc., 321 F.3d 1355, 1362-63 (Fed. Cir. 2003).

In addition, in a means-plus-function claim element, in order for a structure disclosed in
the specification to qualify as "corresponding," there must be language in the specification, which would lead one skilled in the art to link that structure to the function. Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1313 (Fed. Cir. 200 1) (finding particular structures not to be corresponding structures because "one skilled in the art would not perceive any clear link or association between these structures and the [recited] function of connecting adjacent elements together"). The specification does not disclose the dispatching control software as structure for the identification encoder means, but instead discloses using the software to receive requests from the remote order processing and item database, and to send requests for information through the distribution system. ('992 patent, 1754-57). In other words, the dispatching control software, inter alia, controls the flow of requests, and maintains a list of the available titles in a particular compressed data library when particular titles are not available in the compressed data libraries. The dispatching control software is not a corresponding structure for the identification encoding means because it does not retrieve "the information in the items" but instead manages the '*To the extent the "identification encoder," which is discussed later in this order, is computer software, the specification does not disclose any algorithm or enabling software. 17

28

"efficientuse of the available distribution channels." ('992 patent, 17:65-66). "It is not proper to look to the knowledge of one skilled in the art apart from and unconnected to the disclosure of the patent." Medical Instrumentation & Diagnostics Corp., 344 F.3d at 1212. Here, one skilled in the art would not link the dispatch control software, which is linked to other functions, with the retrieving function of the identification encoding means.I3 Therefore, the Court declines to include "dispatching control software" as corresponding structure in its
-

construction of "identification encoding means."

(3)

An Identification Encoder As Corresponding Structure of the "Identification Encoding Means."

The Court now turns its attention to Acacia's contention that the specification discloses an apparatus identified as "identification encoder" as corresponding structure for the "identification encoding means." The term "identification encoder" is used in the specification. In the specification of the '992 patent, the patentees explain that "[plrior to being made accessible to a user of the transmission and receiving system of the present invention, the item must be stored in at least one compressed data library 118, and given a unique identification code by identification

encoder 112." ('992 patent, 6:35-39). Figures 2a and 2b of the '992 patent demonstrate that the
unique identification code must be assigned by the identification encoding process, Figure 2a (1 12), prior to the information being compressed and stored in the compressed data library, Figure 2b (1 18). A preferred embodiment describes that the transmission system having a "compressed data storing means, coupled to the compression means, for storing as a file the

28

l 3 The specification does not support Acacia's contention that the dispatching control software coordinates the retrieval of information and items from the source material library. (Plaintiffs Supp. Briefing Re Identification Encoding Means, p. 4-7). The specification of the '992 patent states that "[tlhe dispatch software may also preferably coordinate network traffic, source material libraw 111 utilization, source material library contents, and connection costs." ('992 patent, 17:6 1-64). The specification discusses dispatching control software with performing the function of managing the flow of requests such that there is effective utilization of the system not retrieving infohation in the items.

18

compressed sequenced data with the unique identification code received fiom the data compression means." ('992 patent, 10: 18-22) (emphasis added). The specification describes that a file containing compressed audio and video data "is addressable through the unique
identification code assigned to the data by the identification encoder 112." ('992 patent,

10:28-30). Although the specification identifies a structure called an "identification encoder" ( block 112 in Figure 2a), because the Court is construing a means-plus-function claim, the Court must examine thespecification to determine the substance of the identified structure.and to determine if the identified structure performs the required functions. Other than the term itself, the specification contains no description of the structure of an "identification encoder." It is unclear whether it is hardware, software, or as claimed with another element, a human being. Thus, the issue is whether the use of the term, "identification encoder," without further description connotes sufficient structure to define the bounds of the invention. Acacia contends "identification encoder" can be computer software. However, the specification only defines the identification encoder by its function of assigning a unique identification code and does not disclose any structure, not even computer software.

In a means-plus-function claim, the patentee must disclose sufficient structure in the
specification that one of ordinary skill in the art would recognize as being capable of performing the claimed hnction.I4 In the absence of such a link, the Court cannot create one. Medical Instrumentation &Diagnostics Corp. v. Elekta AB, 344 F.3d 1205 (Fed. Cir. 2003). 21
In the Medical Instrumentation &Diagnostics Corp. case, the lower court concluded that

22 "the specification is not very explicit in its disclosures of a means for performing a
l 4 The '992 patent issued in 1992. Prior to 1994, the United States Patent and Trademark Office ("PTO") did not examine applications for compliance with the corresponding structure requirement of 8 112, T[ 6. See In re Donaldson, 16 F.3d 1189, 1194 (Fed. Cir. 1994). In In re Donaldson, the Federal Circuit ended the "PTO's sweeping and long-standing practice of not applying paragraph six during examination." Id. The Federal Circuit explained that "the fact that the PTO may have failed to adhere to a statutory mandate over an extended period of time does not justify its continuing to do so." Id.

digital-to-digital conversion." Medical Instrumentation & Diagnostics Corp., 344 F.3d at 121 1. Nevertheless, the lower court concluded that because techniques for performing those conversions were known to those of skill in the art at the time the application was filed, a person of skill in the art would understand software to be a corresponding structure for the converting function. Id. On appeal, the Federal Circuit explained that the patentee, MIDCO, presented evidence before the district court that a skilled programmer at the time of the application's filing could
-

have written a program for digital-to-digital conversion of image size. Id. at 1212. Also, MIDCO provided examples of programs for digital-to-digital image conversion that would have been available at the time the patent was filed. Id. The Federal Circuit noted, however, that none of the examples of programs for digital-to-digital conversion were cited in the patent. Id. After acknowledging that a district court should look at the disclosure from the point of view of one skilled in the relevant art, id. (citing Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1376 (Fed. Cir. 2001), the Federal Circuit reversed the lower court because its inquiry was not correct. The Federal Circuit explained that "[tlhe correct inquiry is to look at the disclosure of the patent and determine if one of skill in the art would have understood that disclosure to encompass software for digital-to-digital conversion and been able to implement such a program,

not simply whether one of skill in the art would have been able to write such a software program." Id. (emphasis added) citing (Atmel Cop. v. Info. Storage Devices, Inc., 198 F.3d
1374, 1380 (Fed. Cir. 1999); see also Omega Eng'g, Inc. v. Raytek Cop., 334 F.3d 1314, 1331-32 (Fed. Cir. 2003) (explaining that statements from experts cannot be used to "rewrite the patent's specification" to create a clear link where the language in the specification provides none). "It is important to determine whether one of skill in the art would understand the specification itself to disclose the structure, not simply whether that person would be capable of implementing that structure." Medical Instrumentation & Diagnostics Corp., 344 F.3d at 1212 (citing Atmel, 198 F.3d at 1382 ("Fulfillment of the 8 112, '1[ 6 trade-off cannot be satisfied when there is a total omission of structure. There must be structure in the specification.")).

In this case, the Court cannot define the term "identification encoding means" because

1
0

there is no corresponding structure in the specification that is linked to the functions recited in the claims." If the Court adopts this finding as its final conclusion on this matter, this would render claims 1,3,4,5,9, 10 and 11 of the '992 patent indefinite. The Court invites Acacia to file a motion for an evidentiary hearing on the issue of

f ll
7
8

1

whether one of skill in the art could identify a corresponding structure and determine the bounds of the "identification encoding means" in view of the specification. The Court invites the Defendants to file a motion for summary judgment that the term "identification encoding means" is indefinite, rendering claims 1,3,4, 5,9, 10 and 1 1 of U.S.

9

Patent 5,132,992 to be invalid, respectively, pursuant to 35 U.S.C. $ 112, f 2. At the same time, Defendant may file a motion for summary judgment pursuant to 5 1 12,f 1.I6 The Court will consider these invited motions in accordance with the procedure set forth in the "Conclusion" section of this Order.
I//

/I/
///

I//

"The encoding means identified in claim 1 of the '992 patent has two functions: (1) "retrieving the information in the items from the library means" and (2) "assigning a unique identification code to the retrieved information." ('992 patent, 20:19-21). Although the specification does disclose a human being assigning a unique identification code, it does not disclose what structure he uses to accomplish this fbnction other than the identification encoder (Figure 2a (1 12)). As mentioned above, the specification does not disclose any structure for the term "identification encoder." Thus, the Court is unable to define a corresponding structure to the "identification encoding means" that is linked to the function of "assigning a unique identification code."
l6 Section 112,f2 is directed at the claims of the invention, while § 112, f 1 is directed at the relationship of the claims to the specification. Federal Circuit case law allows a district court to address validity under § 112,12 during claim construction. Notwithstanding, the Court postpones ruling on the validity of claims under 8 112, 12 until the parties have had an opportunity to present expert testimony. In the interest of time and progressing the litigation initiated in 2002, the Court will also address motions for summary judgment regarding 5 112,f 1 on terms that the Court has construed or attempted to construe.

1

1

II

4.

"conversion means, coupled to the identification encoding means, for placing the retrieved information into a predetermined format as formatted data; ordering means, coupled to the conversion means, for placing the formatted data into a sequence of addressable data blocks" a. "conversion means"

The parties do not dispute the meaning of the term conversion means. For clarification of 7 8 The specification discloses the "converter," figure 2a (1 13), as the corresponding structure. The 9 10 11 12 13 14 15 specification explains that "after identification encoding is performed by identification encoder 112, the retrieved information is placed into a predetermined format as formatted data by the converter 113." ('992 patent, 659-63). The specification defines the inputs to the converter as how the term interacts with other disputed terms, the Court notes the meaning of the term. The fbnction of the conversion means is to "place retrieved information into a predetermined format."

I 11 II

data in analog or digital form. ('992 patent, 6:62-66) ("The items stored in source material library 111 and encoded by identification encoder 112 may be in either analog or digital form. Converter 113 therefore includes analog input receiver 127 and digital input receiver 124."). b. "ordering means"

Pursuant to 8 1 12,76, the "ordering means, coupled to the conversion means" limitation of claim 1 of the '992 patent recites the function of "placing items into a sequence of addressable

18
data blocks." The corresponding structure of the ordering means is the "time encoder (Figure 2a 19 20
21

I II
11

(1 14)" ('992 patent, 759-8:2 and 859-62). The claim element covers this corresponding
structure and its equivalents. c. "coupled to"

The Court construes the phrase "coupled to" to have its plain and ordinary meaning, which is "directly connected to or attached to." See e.g. Webster's Ninth New Collegiate Dictionary 298 (1991) (defining "couple" to mean: to connect for consideration together); see

23 24 25

also CCS Fitness, 288 F.3d at 1366 (holding that there is a heavy presumption that a claim term carries its ordinary and customary meaning). The term "coupled to" as used in the claims and specification means two elements are directly attached to one another such that using a diskette

26

27 I1 --

28

to transfer information from one to another would mean that the two computers are not "coupled to" one another."

d.

"placing the formatted data into a sequence of addressable data blocks" (claim 1 and 41 of the '992 patent)

In light of the Court's construction of the term "ordering means," the phrase "placing the
formatted data into a sequence of addressable data blocks" does not require construction.
5.
-

"compressed data sto-ring means, coupled to the data compression means, for storing as files the compressed, sequenced data blocks received from the data compression means with the unique identification code assigned by the identification encoding means" a. "compressed data storing means" (claim 1 of the '992 patent)

Pursuant to 8 112, fi 6 , the functions of the "compressed data storing means" inherent in the phrase "for storing as files" are (1) creating a file and (2) storing the file. The corresponding structure for creating and storing a file is the compressed data formatter 117. The claim element covers this corresponding structure and its equivalents. The corresponding structure for storage of the file is the compressed data library 118.18 ('992 patent, figure 2a and 2b). The claim element covers this corresponding structure and its equivalents.

b.

"coupled to" (claim 1 of the '992 patent)

As explained above, the Court construes the phrase "coupled to" to have its plain and

Similarly, transferring a diskette from one computer to another would not make the two computers "in data communication with" one another. See '702 patent claims.
l7

'' The Court does not address in this Order whether the specification of the '992 patent discloses sufficient structure for any term, in particular, the "compressed data formatter." See Atmel, 198 F.3d at 1382 (holding that Section 112, fi 6 "represents a quid pro quo by permitting inventors to use a generic means expression for a claim limitation provided that the specification indicates what structure(s) constitute(s) the means." "If our interpretation of the statute results in a slight amount of additional written description appearing in patent specifications compared with total omission of structure, that is the trade-off necessitated by an applicant's use of the statute's permissive generic means term.").

ordinary meaning, which is "directly connected to or attached to." 1

B.
2 3 4 5
-

Claim 41 of The '992 Patent

-

With the disputed terms and phrases in bold font, claim 41 of the '992 patent recites: 4 1. A method of transmitting information to remote locations, the transmission method comprising the steps, performed by a transmission system, of:

"1

storing items having information in a source material library;
retrieving the information in the items fiom the source material library; assigning a unique identification code to the retrieved information; placing the retrieved information into a predetermined format as formatted data;

placing the formatted data into a sequence of addressable data blocks;
l3

11

compressing the formatted and sequenced data blocks;

storing, as a file, the compressed, formatted, and sequenced data blocks with the assigned unique identification code; and sending at least a portion of the file to one of the remote locations.
('992 patent, 24:53 - 25:5).

16

II
II

1.

"storing items having information in a source material library1' (claim 41 of the '992 patent)

l8 19 20 21 22 23

The parties request that the Court construe the term "storing items having information in a source material library" that is an element in claim 41 of the '992 patent. Claim 41 in pertinent

II

part recites: "[a] method of transmitting information to remote locations, the transmission method comprising the steps, performed by a transmission system, of: storing items having information in a source material library." ('992 patent, 24:54-56).

24 25
26 27 28

11 I1

Acacia construes the phrase to mean "the act of placing items having information in a source material library for later use where a source material library is a place where source material is kept or a collection of such material, source material are physical things at the point of origin or procurement, items having information are units or members of groups which have

II11

24

information, and information is any meaning assigned to data by known conventions." (Joint Claim Construction Chart, Docket Item No. 151). Acacia rebuts Defendants' assertion that the transmission system has readily accessible for use original source items of the transmission system in a library by citing the '992 patent, col. 18, lines 53-59, stating that act of retrieving the information for items is analogous to taking books off a shelf at the local public library. Defendants construe "storing items having information in a source material library" to mean that "the transmission system has readily accessible for use (stores) original source items of the transmission system in a library," where library requires organization of the items. (Joint Claim Construction Chart, Docket Item No. 151). Defendants assert that Acacia initially required a library to be a collection of materials "arranged for ease of use" and that once Acacia abandoned its previous position Defendants added the phrase "organized collection." The Court finds that the plain and ordinary meaning of the term "library" could mean either a collection of books or a place where books could be stored. The specification supports defining library to be a collection of original material, which contains analog or digital information, that the transmission system may convert, compress, and transmit. In other words, the specification defines the source material library as a collection of original sources of information. In the transmission system described in claim 41 of the '992 patent, the Court construes the phrase "storing items having information in a source material library" to mean "adding items having information to a collection of existing materials."
2.

"storing, as a file, the compressed, formatted, and sequenced data blocks with the assigned unique identification code" (claim 41 of the '992 patent)

As a preliminary matter, the disputed phrase "storing, as a file, the compressed, . . ." is not a step-plus-hnction claim element as asserted by defendants IT1 and Offendale. The claim does not employ the "step for" language that signals the drafler's intent to invoke § 112, TI 6; rather the claim employs the phrase "A method . . . comprising the steps . . . of," which is an acceptable way to draft method claims. See Masco Corp. v. United States, 303 F.3d 1316, 1327 (Fed. Cir. 2002). "Courts must be cautious before adopting changes that disrupt the settled expectations of 25

the inventing community." Id. (citations omitted). Defendants IT1 and Offendale have failed to overcome the presumption that claim 4 1 should not be construed as a step-plus-function claim. The parties dispute the meaning of the term "with." Consistent with the Court's claim construction of the term unique identification code, the Court construes the term "with" to mean "accompanying or in the presence of' such that sequenced data blocks are accompanied by a corresponding unique identification code when stored. The Court construes the phrase "storing, as a file, the compressed, formatted, and sequenced data blocks with the assigned unique
-

identification code" to mean "storing, as a file, the compressed, formatted, and sequenced data blocks accompanied by its unique identification code." C. The '702 Patent

The '702 patent has 42 claims, three of which are independent claims -- 1, 17 and 27. Every claim of the '702 patent is directed toward a "communication system," which comprises both a transmission system and a reception system. Independent claim 1 with the font of the disputed terms and phrases in bold recites: 1. A communication system comprising: a transmission system at a first location in data communication with a reception system at a second location, wherein said transmission system comprises a sequence encoder, an identification encoder, and a compressed data library in data communication with said identification encoder, wherein said identification encoder gives items in said compressed data library a unique identification code; and wherein said reception system comprises a transceiver in data communication with said transmission system, a storage device in data communication with said transceiver, user playback controls in data communication with said storage device, a digital compressor in data communication with said storage

device, and a playback device in data communication with said digital decompressor. ('702 patent, 19:26-47).

1.

"a transmission system at a first location in data communication with a reception system at a second location" (claims 1,17 and 27 of the
'702 patent)

Independent claims 1, 17, and 27 of the '702 patent all recite "a transmission system at a
-

first location in data communication with a reception system at a second location." This claim limitation is made up of the following constituent phrases: "transmission system," "reception system," "in data communication with," "at a first location," and "at a second location." Each phrase will be addressed individually.

a.

"transmission system'' (various claims of the '702 and '992 patents)

Acacia's proposed construction of the term "transmission system" is: "an assembly of elements, such as people, machines, andlor methods, capable of functioning together to transmit

signal^."'^ In support of its construction, Acacia relies on IEEE Standard Dictionary o f
Electrical and Electronic Terms, Fifth Ed. 1405 (1993) (hereinafter "IEEE Dictionary") that defines "transmission system" to mean "in communication practice, an assembly of elements capable of functioning together to transmit signal waves" and one of nineteen different definitions of the term "system" regarding s o h a r e that recites "[a] collection of people, machines, and methods organized to accomplish a set of specific functions." (Plaintips Claim Construction Brief May 7,2004 at 14). Acacia contends that the specification supports its plain and ordinary meaning of the term "transmission system" that includes humans acting as system operators. See Plaintiffs Claim

l9 Plaintiff also contends that the "transmission system may be located in one facility or may be spread over a plurality of facilities." The Court will address Plaintiffs contention inpa in connection with "at a first location" and "at a second location."

Construction Brief (May 7, 2004) at 14 (citing '702 patent, 8:29-32; 10:36-39; 1059-63; and 14:13-26). Defendants' proposed construction of the term "transmission system" is the IEEE

Dictionary definition of the term that recites "as assembly of elements capable of functioning
together to transmit signal waves," where Defendants contend that "signal waves" are "electric signals." (Defendants' Claim Construction Brief May 7,2004 at 8) (citing Miller Decl., ex. NN at 575). Defendants contend that the Court need not define "elements" as used in the IEEE
-

Dictionary definition of the term "transmission system" because the claims of the '702 patent
state the elements that comprise a transmission system, and that list does not include a human operator. Also, Defendants assert that a human cannot be a part of a claim because a human is not patentable subject matter as defined by 35 U.S.C.

8

101.20

The Court finds "transmission system" to mean "an assembly of elements, hardware and software, that function together to convert items of information for storage in a computer compatible form and subsequent transmission to a reception system."
b.

"reception system"

The parties' respective positions regarding "reception system" are reciprocal to their respective positions regarding "transmission systems." The term "reception system" does not appear in the specification. Plaintiffs proposed construction of a "reception system" is: "an assembly of elements, such as people, machines, andlor methods, capable of functioning together to receive signals." Whereas, the Defendants' proposed construction is "an assembly of elements that function together to receive electrical signals from the transmission system." 22

II

The Court construes "reception system" to mean "an assembly of elements, hardware and software, capable of functioning together to receive items of information."

23

X

20

Title 35 U.S.C. 8 101 (1952) recites that: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

c.

"in data communication with"

Acacia's proposed construction of the phrase "in data communication with" is one of two

IEEE definitions of the term "data communication," which is "the movement of encoded
information by means of communication techniques." See Plaintiffs Claim Construction Brief (May 7,2004) at 17 (citing IEEE dictionary at 305, Block Decl., ex. 11). Defendants' contend that the phrase "in data communication with" never appears in the specification. Relying on a IEEE dictionary definition, Defendants' contend that "in data communication with" should be construed to mean "connected to allow transfer of electrical signals." The plain and ordinary meaning to one of ordinary skill in the art of the phrase "in data communication with" is "one or more devices connected such that data is being transferred between the devices in real-time." Acacia's proposed construction does not account for the words "in" and "with" that indicate two or possibly more devices are in real-time connection with one another.

A thorough review of the specification does not reveal the use of the phrase "in data
communication with," although the phrase is used in every independent claim of the '702 patent. Thus, the specification does not rebut the plain and ordinary meaning, and neither does the prosecution history. The Court construes "in data communication with" to mean "one or more devices connected such that data is being transferred between the devices in real-time."

d.

"at a first location"

The issue is whether claims reciting "a transmission system at a first location" limit the system to being located at a particular location notwithstanding the disclosures in the specification and use of the word "comprising" in the claims. Case law from the United States Court of Appeals for the Federal Circuit supports a finding that articles "an" or "an" may mean "one or more than one" in particular instances, especially in claims that use the transitional term "comprising." See E l h y M g Co. v.