Intermec Technologies Corp. v. Palm Inc.
Filing
305
MEMORANDUM OPINION. Signed by Judge Sue L. Robinson on 9/15/2011. (nmf)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
INTERMEC TECHNOLOGIES CORP., )
)
Plaintiff,
v.
PALM INC.,
Defendant.
)
)
) Civ. No. 07-272-SLR
)
)
)
Jack B. Blumenfeld, Esquire and Rodger Dallery Smith, II, Esquire of Morris, Nichols,
Arsht & Tunnell LLP, Wilmington, Delaware. Counsel for Plaintiff and Counterclaim
Defendant. Of Counsel: Carson P. Veach, Esquire, Leland W. Hutchinson, Jr.,
Esquire, David S. Becker, Esquire and Jacob D. Koering, Esquire of Freeborn & Peters
LLP.
Richard L. Horwitz, Esquire and David Ellis Moore, Esquire of Potter Anderson &
Corroon, LLP, Wilmington, Delaware. Counsel for Defendant and Counterclaim
Plaintiff. Of Counsel: Robert 1. Haslam, Esquire, Michael M. Markman, Esquire, and
Robert J. Williams, Esquire of Covington & Burling LLP.
MEMORANDUM OPINION
Dated: September 15, 2011
Wilmington, Delaware
\1. _;;L1
R6'BiNs'o ,
I. INTRODUCTION
On May 18, 2007, Intermec Technologies Corporation ("Intermec" or "plaintiff")
filed an action against Palm, Inc. ("Palm" or "defendant") for infringement of U.S. Patent
Nos. 5,349,678 ("the '678 patent"), 5,568,645 (lithe '645 patent"), 5,987,499 ("the '499
patent"), 5,468,947 ("the '947 patent"), and 5,892,971 ("the '971 patent", collectively "the
Intermec patents"). (0.1. 1) Palm filed its answer on July 2,2007, and thereafter
amended it twice. (0.1. 7; 0.1. 11; 0.1. 17) On September 11, 2007, Intermec filed a
motion to strike Palm's inequitable conduct defense from its second amended answer.
(0.1. 23) The parties stipulated, on May 23, 2008, that Intermec would withdraw its
motion to strike, and that Palm would submit its third amended answer, attached thereto
as exhibit 1. (0.1. 48) Palm's third amended answer includes various defenses and
counterclaims, two of the latter asserting infringement of Palm's U.S. Patent Nos.
6,665,803 ("the '803 patent") and 7,096,049 ("the '049 patent", collectively "the Palm
patents").
The court issued a memorandum order on June 7, 2010 denying both Palm's
motion to strike certain evidence and argument pertaining to invalidity of the Palm
patents (0.1. 210) and Intermec's cross-motion to strike supplemental opinions of Dr.
Kevin Almeroth ("Dr. Almeroth") regarding infringement of the '803 patent (0.1. 249).
(0.1. 270) On June 16,2010, the parties stipulated as to supplemental briefing relating
to Intermec's motion for summary judgment of noninfringement and invalidity of the
Palm patents (0.1. 162). (0.1. 271)
On September 14, 2010, the court issued a memorandum opinion with respect to
the Intermec patents, granting-in-part and denying-in-part Palm's motion for summary
judgment of indefiniteness (0.1. 151); denying Intermec's motion for partial summary
judgment of infringement (0.1. 152); granting-in-part and denying-in-part Intermec's
motion for partial summary judgment of certain invalidity claims (0.1. 155); granting
Palm's motion for summary judgment of non infringement (0.1. 158); and granting-in-part
and denying-in-part Intermec's motion for summary judgment of infringement and
validity (0.1. 159). (0.1. 284) Both parties agreed to mediation of the case which was
scheduled for December 14, 2010. (0.1. 288; 0.1. 289) The parties stipulated, on
February 16, 2011, to stay all claims regarding the Palm patents until the conclusion of
mediation. (0.1. 291)
On March 22,2011, Intermec filed a notice of appeal to the Federal Circuit
concerning the parties' stipulated judgment of noninfringement of the Intermec patents,
which the Federal Circuit docketed on April 6. (0.1. 303) On May 5, 2011, the parties
reported to the court that "efforts to mediate the case have not been successful." (Id.)
After consideration of the parties' respective positions on how to proceed with issues
relating to the Palm patents, the court lifted the stay. (0.1. 304)
Currently pending before the court is Intermec's motion for summary judgment of
noninfringement and invalidity of the Palm patents (0.1. 162) and Palm's motion for
summary judgment of no invalidity and infringement of the Palm patents (0.1. 175). Fact
and expert discovery is now closed. Trial has not yet been scheduled. This court has
jurisdiction under 28 U.S.C. § 1338(a) and 35 U.S.C. § 101 et seq.
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II. BACKGROUND
A. The Parties and Patents in Suit
Intermec is incorporated under the laws of the State of Delaware, and has its
principal place of business in Everett, Washington. Intermec is a wholly owned
subsidiary of Intermec, Inc. Norand Corporation ("Norand") of Cedar Rapids, Iowa, is
the assignee of the Intermec patents. In 1997, Norand was acquired by Intermec, who
owns all right and title to the Intermec patents. Intermec makes and sells data capture
equipment such as portable data collection terminals and wireless communication
systems to support them, bar code readers which may be incorporated into a terminal or
provided as an attachment, and handheld computers that can connect to the internet
and be used as cell phones. The Intermec patents relate to data capture systems, data
capture terminals, and bar code readers. The data capture systems are comprised of
computer systems communicating over radio transceivers to matching transceivers in
the data capture terminals. Intermec does not offer cellular subscription services.
Palm is incorporated under the laws of the State of Delaware, and has its
principal place of business in Sunnyvale, California. Palm provides smartphones,
cellular telephones that include the ability to run certain programs such as a calendar
application. Smartphones are also capable of connecting with the internet, thereby
enabling other applications such as email and web browsing. Internet applications
require a cellular data service subscription with a cell phone carrier. Palm does not
offer cellular subscription services.
The '803 patent was filed on November 4, 2002 as a continuation of application
No. 09/298,113, filed April 23, 1999. The '803 patent issued December 16, 2003 and is
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directed to a portable computer that determines whether an accessory device is
connected to it. The '049 patent was filed on May 25, 2001 and issued August 22,
2006. The '049 patent is directed to a handheld computer comprising a rechargeable
battery and a radio frequency ("RF") transceiver, wherein the RF transceiver is capable
of being powered by the battery and/or a battery recharger under particular
circumstances.
B. Technological Background
Portable computers, including laptop and handheld computers, are often limited
in their capabilities when compared to larger, stationary desktop computers. Various
peripheral devices may be modified or eliminated when designing a portable computer
in order to reduce weight, size and battery drain. Due to their nature, portable
computers generally require a battery to power the unit during mobile operation and
when away from standard alternating current ("Ale") power. The battery is recharged,
or the unit may be directly powered, by an Ale "recharger" connected to the unit's
"power terminal".
Additional capabilities are often added to such computers through the use of
external accessory devices. Accessory devices have been used, for example, to
provide serial, parallel and universal serial bus ("USB") communication ports, modems
and additional memory, when connected to a "communication port" of the portable
computer. Some accessory devices ("powered accessories") also provide the portable
computer with an Ale power supply when connected to the portable computer.
Portable computers are generally equipped with a "time-out" feature that turns
the computer off after a predetermined period of user inactivity. This time-out feature
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preserves battery life when the computer is being operated in a self-contained
configuration. This feature is often unnecessary when connected to a powered
accessory. In such instance, a time-out feature may not only be unnecessary, but it
may actually limit the useful capabilities of the combined portable computer and
connected accessory device. For example, an application program might display a
"stock ticker" showing current market prices obtained via a communications link. Since
the application does not require regular user interaction for such a display, the time-out
feature might turn the computer off after the predetermined time, even if powered by the
accessory.
While earlier portable computers may have contained a time-out feature, this
feature was not disabled when connected to a powered accessory through a
communications port. Instead, the time-out feature was only disabled when the
computer was attached to an
Ale recharger connected directly to the computer's power
terminal. Further, earlier portable computers were unable to identify the type of
connected accessory, thus placing the burden for doing so on the user. The user, in
manually configuring the computer to use the connected accessory, may improperly
identify the accessory to the computer. The computer might then accidentally execute
an application program that could cause damage to the accessory. To address these
issues, portable computers were designed to recognize accessories, including powered
accessories, that are connected to a communications port and to respond accordingly.
Identifying the type of accessory may also indicate whether or not the accessory
provides external power, without resort to detecting the power source itself.
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All of the issues and limitations discussed above are of critical importance with
particular respect to handheld computing devices such as "palmtops," personal digital
assistants (PDAs) and handheld computers (collectively "handheld devices" or
"handhelds"). Handheld devices are small. They are generally designed to fit in a
pocket and weigh less than a pound, severely constraining the size and energy capacity
of the battery. These devices typically support some combination of personal
information management, database functions, word processing and spreadsheets, as
well as wireless functions (such as email and telephony applications).
Wireless functions depend on one or more RF transceivers that require
substantial signal amplification for transmission, and additional power for signal
reception. Earlier handhelds did not allow RF transmission or reception when the
battery charge was depleted below a minimum level, thereby disabling communications
functions. A user could then connect the battery and/or the handheld to a recharger.
The recharger would restore the battery charge to a level permitting wireless operation.
The RF transceiver would remain disabled, however, until the battery charge reached
such a level. This problem was later addressed by allowing the power source
(recharger) to provide at least some of the power to the RF transceiver during battery
charging, permitting the use of wireless functions simultaneous with charging.
C. Asserted Claims
Palm asserts three independent claims of the each of the two patents. Included
in these independent claims are a total of six typographical errors as noted (in bold) in
the recitations that follow. Correction of these typographical errors is an issue in dispute
as discussed below.
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1. The '803 patent
Palm asserts infringement of claims 1-30 of the '803 patent, of which claims 1, 12
and 23 are in independent form. (D.I. 163 at 5) The asserted independent claims of the
'803 patent read as follows:
1. A method for operating a portable computing device, the method comprising:
coupling a signal line accessible through an outlet of the portable
computing device to a communication device;
detecting a signal on the signal line to determine whether the
communication device is actively connected to a portable
computing device; and
suspending execution of a programmed event that was to occur at a
subsequent moment in time in order to reduce power consumption
of the portable computing device.
12. A detachable assembly, comprising:
a communication device; and
a portable computing device adapted[sic] that is detachably coupleable to
the communication device, the portable computing device including:
a signal line that is adapted to couple to an output node of the
communication device; and
a processor coupled to the signal line, wherein the processor is
configured to determine when the communication device is
actively connected to the portable computing device;
wherein the processor is programmed to suspend execution
of a programmed event that would have otherwise
occurred at a susbequent[sic] moment in time in
order to reduce power consumption of the portable
computing device.
23. A portable computing device, comprising:
a signal line accessible through an outlet of the portable computing device
to a communication device;
a processor counted[sic] to the signal line, wherein the processor is
configured to determine when the communication device is actively
connected to the portable computing device; and
wherein the processor is configured to suspend execution of a
programmed event that would have otherwise occurred at a
subsequent moment in time.
2. The '049 patent
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Palm asserts infringement of claims 1-7 and 9-17 of the '049 patent, of which
claims 1 ,7 and 14 are in independent form. (0.1. 163 at 5) The asserted independent
claims of the '049 patent read as follows:
1. A handheld computer system, comprising:
a housing;
a display supported by the housing;
a processor coupled to the display;
a rechargeable battery configured to power the processor and the display;
a recharging connector coupled to the rechargeable battery;
a recharger coupled to the recharging connector; and
a radio 'frequency transceiver coupled to the processor and powerable by
the battery when the battery has a charge above a low level, the
transceiver configured to send and receive data while the battery
charge is below the low level and the recharger provides charge to
the rechargeable battery and to the transceiver, the low level being
a level at which the battery is unable to power the transceiver when
the charge is below the low level.
7. A method of transmitting data over a radio frequency (RF) link from a
handheld computer having a low battery charge, comprising:
providing the handheld computer wit[sic] a rechargeable battery having a
relatively low charge, the relatively low charges being too low to
transmit information using a transceiver of the handheld computer;
coupling the handheld computer to a recharger;
providing power from the recharger to the transceiver of the handheld
computer and the battery while the handheld computer is coupled
to the recharger;
establishing an RF link using the transceiver while the battery has a
relatively low charge and the handheld computer is coupled to the
recharger.
14. A handheld computer, comprising:
a housing;
a display supported byte[sic] housing;
a processor coupled to the display;
a rechargeable battery configured to power the processor and the display;
a recharging connector coupled to the rechargeable battery; and
a radio frequency (RF) transceiver coupled to the processor and
powerable by the battery when the battery has a charge above a
low level, the transceiver configured to send and receive data while
the bakery[sic] charge is below the low level and the recharging
connector receives power from a power source and provides power
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to the rechargeable battery and to the transceiver, the low level
being a level at which the battery is unable to power the transceiver
when the charge is below the low level.
D. The Accused Product
Palm accuses the Intermec CN3 product of infringing the Palm patents. (0.1. 163
at 5; 0.1. 209 at 1) The CN3 is a portable, handheld computing device containing one or
more RF transceivers. (0.1. 170, tab 101 at IA002824-27; 0.1. 178, ex. 39 at 1164-65)
The CN3 can use the transceiver to communicate over the internet, allowing it, for
example, to send and receive email and download programs. (ld.) It also can connect
to a cellular service provider to make telephone calls. (ld.) The CN3 is built on the
Windows Mobile 5.0 operating system and can execute most applications developed for
the Windows Mobile platform. (/d.; 0.1. 168, tab 68 at IA001565-71) The CN3 is
contained in a single housing that includes an integrated display as depicted in a
drawing taken from the user's manual. (0.1. 178, ex. 39 at 1165; id., attached ex. 0 at 2)
A docking station accessory provides both battery charging capability and data
communication connections through a 16-pin connector. (0.1. 165, tab 2 at IA000005
06; 0.1. 178, ex. 39 at 1165) This connector includes pins to carry power and various
signals between the CN3 and the docking station including one described as U[d]etection
[s)ignal pulled low of the CN3 when placed into a docking station" ("OOCK_OET"). (0.1.
165, tab 2 at IA000006; 0.1. 178, ex. 39 at 1168)
III. STANDARD OF REVIEW
A court shall grant summary judgment only if "the pleadings, depositions,
answers to interrogatories, and admissions on file, together with the affidavits, if any,
show that there is no genuine issue as to any material fact and that the moving party is
10
entitled to judgment as a matter of law." Fed. R. Civ. P. 56 (c). The moving party bears
the burden of proving that no genuine issue of material fact exists. See Matsushita
Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 n.10 (1986). "Facts that
could alter the outcome are 'material,' and disputes are 'genuine' if evidence exists from
which a rational person could conclude that the position of the person with the burden of
proof on the disputed issue is correct." Horowitz v. Fed. Kemper Life Assurance Co., 57
F.3d 300, 302 n.1 (3d Cir. 1995) (internal citations omitted). If the moving party has
demonstrated an absence of material fact, the nonmoving party then "must come
forward with 'specific facts showing that there is a genuine issue for triaL'" Matsushita,
475 U.S. at 587 (quoting Fed. R. Civ. P. 56(e)). The court will "view the underlying facts
and all reasonable inferences therefrom in the light most favorable to the party opposing
the motion." Pa. Coal Ass'n
v. Babbitt, 63 F.3d 231, 236 (3d Cir. 1995). The mere
existence of some evidence in support of the nonmoving party, however, will not be
sufficient for denial of a motion for summary judgment; there must be enough evidence
to enable a jury reasonably to find for the nonmoving party on that issue. See Anderson
v. Liberty Lobby, Inc., 477 U.S. 242, 249 (1986). If the nonmoving party fails to make a
sufficient showing on an essential element of its case with respect to which it has the
burden of proof, the moving party is entitled to judgment as a matter of law. See
Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986).
IV. DISCUSSION
A. Correction of Typographical Errors
As a preliminary matter, Intermec argues that claims 12 and 23 of the '803 patent
and claims 7 and 14 of the '049 patent (Utypo claims") are "nonsensical" as written, in
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that they contain errors, that Palm has failed to seek correction of these errors from the
United States Patent and Trademark Office ("PTO"), that the court lacks jurisdiction to
correct these errors, and that Palm has failed to show that Intermec infringes these
claims as written.1 (0.1. 163 at 5-6,17-19; 0.1. 180, ex. Bat 5,10,14-15; 0.1. 246 at 9)
Palm responds that the typo claims contain typographical errors, that the court has
jurisdiction to correct these errors, and proposes corrections for these errors. (0.1. 180,
ex. Bat 5,10,14-15; 0.1. 209 at 5-8)
1. Standards
"'[A] district court can correct a patent only if (1) the correction is not subject to
reasonable debate based on consideration of the claim language and the specification
and (2) the prosecution history does not suggest a different interpretation of the claims. '"
Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1353 (Fed. Gir.
2009) (quoting Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Gir.
2003)). Determining whether an error in a patent is correctable by the court is a twostep process. See Fargo Electronics, Inc. v. Iris, Ltd., Inc., 287 Fed. Appx. 96, 101-02
(Fed. Gir. 2008) (citing Hoffer v. Microsoft Corp., 405 F.3d 1326, 1331 (Fed.Gir.2005)).
First, the court must find that the error is evident on the face of the patent; second, the
specification and claims, as well as the prosecution history, are to be consulted in order
to ascertain whether there is only a single reasonable construction. (ld.) "Absent
evidence of culpability or intent to deceive by delaying formal correction, a patent should
not be invalidated based on an obvious administrative error." Hoffer, 405 F.3d at 1331.
1Glaims 13-22 and 24-30 of the '803 patent and claims 9-13 and 15-17 of the '049
patent depend from the typo claims.
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2. The typo claims
Palm identifies six alleged typographical errors ("typos") in the Palm patents and
offers corrections, as to four of the typos, based on language in applicants' amendment
after non-final rejection dated April 12, 2004:
Patent, term
Published language
File history
'803 patent,
term 23.1
"a processor counted to a signal
line"
"a processor coupled to a signal
line"
'049 patent,
term 7.1
"providing the handheld
computer wit a rechargeable
battery"
"providing the handheld computer
with a rechargeable battery"
'049 patent,
term 14(a)
"a display supported byte
housing
"a display supported by the
housing"
'049 patent,
term 14(b)
"the transceiver configured to
send and receive data while the
bakery charge is below the low
level"
Table 1
"the transceiver configured to
send and receive data while the
battery charge is below the low
level"
(D.I. 180, ex. Bat 10,14-15; D.I. 209 at 5-6) (emphasis modified)
Palm argues that the remaining two typos comprise an obvious misspelling and
an obvious extraneous word:
Patent, term
Published language
Alleged nature of error and
proposed correction
'803 patent,
term 12.3
"a portable computing device
adapted that is detachably
coupleable to a communication
device"
extraneous word "adapted"
should be deleted
'803 patent,
term 12.8
"programmed to suspend
execution of a programmed event
that would have otherwise
occurred at a susbequent
moment in time."
misspelled word "susbequent"
should be "subsequent"
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Table 2
(0.1. 180, ex. B at 5-6; 0.1. 209 at 5-6) (emphasis modified)
Intermec argues, as to each of the six typos, that "[t]his claim limitation is
nonsensical as written, and the specification does not include any language by which a
reasonable construction of the phrase ... can be achieved." (0.1. 180, ex. B at 5, 10,
14, 15) There is no dispute, therefore, that on the face of the patent, all six typos are
obvious errors.
There can be no reasonable debate about the proper correction of the first group
of typos as shown in table 1 above, given the file history and considering the
specification and claims. (See, e.g., '803 patent at col. 12:48; '049 patent at col. 1:60
65,2:2-5,11-13,21-29,38-43,3:57-62,5:12, 20-23, 6:19-20, 45-49,53-55)
With respect to term 12.3 of the '803 patent, the file history shows: "(Currently
Amended) A detachable assembly, comprising: a communication device; and a
portable computing device adapted to eouplethat is detachably coupleable to the
communication device." (0.1. 178, ex. 38 at 4-5) The original read: "a portable
computing device adapted to couple to the communication device." It is obvious that
the word adapted should have been removed as part of the deletion of "to couple." As
to term 12.8, "susbequent" is a clear misspelling of the word "subsequent" caused by
transposition of the letters "s" and "b," and merits no further discussion. Intermec offers
no correction, reasonable or otherwise, for these typos. The court finds that the typo
claims contain typographical errors that are obvious on the face of the patent, that there
can be no reasonable debate regarding their correction as discussed above and
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therefore construes the claims to include the corrections discussed above.
B. Claim Construction
The parties arguments regarding infringement and validity are based, in
considerable measure, on their proposed claim construction for the various asserted
claims. Having heard oral argument on, and having reviewed the papers submitted in
connection with, the parties' proposed claim construction, the court construes the
disputed claim language, consistent with the tenets of claim construction set forth by the
Unites States Court of Appeals for the Federal Circuit in Phillips v. AWH Corp., 415 F.3d
1303 (Fed. Cir. 2005), as discussed below in the context of these arguments.
C. Infringement
Palm seeks summary judgment of infringement of claims 18 and 22 of the '803
patent and claims 1,4-6,16 and 17 of the '049 patent. (0.1. 175; 0.1. 176 at 16, 24, 27)
Claims 18 and 22 of the '803 patent ultimately depend from independent claim 12.
('803 patent at col. 12:61-13:39) Claims 4-6 of the '049 patent ultimately depend from
independent claim 1, and claims 16-17 ultimately depend from independent claim 14.
('049 patent at col. 5:33-6:35) As to both patents, Intermec counters that Palm has
failed to adduce sufficient evidence to carry its burden at summary judgment. 2 (0.1. 201
2lntermec, relying on Zenith Electronics Corp. v. POI Communication Systems, Inc., 522
F.3d 1348, 1363 (Fed. Cir. 2008), argues that Palm only cites "mass numbers of pages
of the report of [Dr. Almeroth]," and does not identify what factual contentions in the
report it is relying on. Zenith was a case wherein the movant "provided no evidence
whatsoever that the [accused product] satisfie[d] the final two limitations of claim 1."
Zenith, 522 F.3d at 1363. Zenith is easily distinguished from the present case.
Intermec is not arguing here that Palm has failed to provide evidence of all limitations
but, rather, the evidence is not contained within the four corners of Palm's motion, and
that the references to such evidence are painted broadly. This argument is unavailing.
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at 25) Intermec's arguments in opposition to Palm's motion are subsumed in Intermec's
motion for summary judgment of noninfringement.
Intermec seeks summary judgment of non infringement of the asserted claims of
the '803 and '049 patents. 3 (0.1. 162) Intermec argues three points regarding the
independent claims of the '803 patent: (1) that the DOCK_DET signal does not comport
with the "signal on a signal line limitation;" (2) that the CN3 switches modes instead of
suspending a future programmed event; and (3) that the CN3's power-management
features are not suspended in response to detecting a signal on a signal line. (0.1. 163
at 19-20; 0.1. 201 at 1-2, 26, 30-32; 0.1. 246 at 1-2,5) Intermec further argues that the
CN3 does not execute a downloaded program as required by claims 18 and 22 of the
'803 patent. (0.1. 201 at 26-27) As to the independent claims of the '049 patent,
Intermec argues that the CN3 does not meet the "low level" limitation. (0.1. 163 at 21
22; 0.1. 201 at 2,28-29, 32-33; 0.1. 246 at 1-2, 6-7) With respect to dependent claim 17
of the '049 patent, Intermec argues that the CN3 lacks an "always-on email program"
and that Palm has failed to show that the email program on the CN3 "periodically
checks for new email messages without further user intervention." (0.1. 201 at 34)
1. Standards
Although it is helpful to the court to quote and pin cite at least key portions of the record
when citing to evidence in expert reports, it is not feasible to recite the contents of entire
claim charts and other evidence contained in expert reports, particularly where the
record comprises thousands of pages, as in this case.
3Claims 1-30 of the '803 patent and claims 1-7 and 9-17 of the '049 patent
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To prove direct infringement, the patentee must establish, by a preponderance of
the evidence, that one or more claims of the patent read on the accused device literally
or under the doctrine of equivalents. See Advanced Cardiovascular Sys., Inc. v.
Scimed Life Sys., Inc., 261 F.3d 1329, 1336 (Fed. Gir. 2001). To establish literal
infringement, "every limitation set forth in a claim must be found in an accused product,
exactly." Southwall Tech., Inc. v. CardinallG Co., 54 F.3d 1570, 1575 (Fed. Gir. 1995).
"If any claim limitation is absent from the accused device, there is no literal infringement
as a matter of law." Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247
(Fed. Gir. 2000). Significant to the case at bar, if an accused product does not infringe
an independent claim, it also does not infringe any claim depending thereon. Wahpeton
Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed. Gir. 1989).
To prove infringement by the doctrine of equivalents, a patentee must provide
"particularized testimony and linking argument" as to the "insubstantiality of the
differences" between the claimed invention and the accused product, or with respect to
the function/way/result test. See Texas Instruments Inc. v. Cypress Semiconductor
Corp., 90 F.3d 1558, 1567 (Fed. Gir. 1996).
Establishing the literal infringement of a means-plus-function limitation "requires
that the relevant structure in the accused device perform the identical function recited in
the claim and be identical or equivalent to the corresponding structure in the
specification." Ode tics, Inc. v. Storage Tech. Corp., 185 F.3d 1259,1267 (Fed.Gir.
1999). A patentee may show structural equivalence "if the assertedly equivalent
structure performs the claimed function in substantially the same way to achieve
17
substantially the same result as the corresponding structure described in the
specification." Id. The Odetics court differentiated between the "similar analysis" of
equivalents under the doctrine of equivalents and 35 U.S.C. § 112,1[6, noting that a
component by component analysis is not required to establish structural equivalence in
the latter. Id. Indeed, such an analysis would be improper to the extent that
[t]he individual components, if any, of an overall structure
that corresponds to the claimed function are not claim
limitations. Rather, the claim limitation is the overall
structure corresponding to the claimed function .... The
appropriate degree of specificity is provided by the statute
itself; the relevant structure is that which "corresponds" to
the claimed function Further deconstruction or parsing is
incorrect.
Id. at 1268 (internal citations omitted). Conversely, the relevant structure does not
include "structure 'unrelated to the recited function' disclosed in the patent ....
J!
Id.
(citing Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., 145 F.3d 1303, 1308
(Fed. Cir. 1998)).
To establish indirect infringement, a patent owner has available two theories:
active inducement of infringement and contributory infringement. See 35 U.S.C. §
271 (b) & (c). To establish active inducement of infringement, a patent owner must show
that an accused infringer "knew or should have known [their] actions would induce
actual infringements." DSU Med. Corp. v. JMS Co., Ltd., 471 F.3d 1293, 1306 (Fed.
Cir. 2006). To establish contributory infringement, a patent owner must show that an
accused infringer sells "a component of a patented machine ... knowing the same to be
especially made or especially adapted for use in an infringement of such patent, and not
a staple article or commodity of commerce suitable for substantial noninfringing use."
18
Golden Blount, Inc. v. Robert H. Peterson Co., 365 F.3d 1054, 1061 (Fed. Cir. 2004)
(quoting 35 U.S.C. § 271 (c)). Liability under either theory, however, depends on the
patent owner having first shown direct infringement. Joy Technologies, Inc. v. Flakt,
Inc., 6 F.3d 770, 774 (Fed. Cir. 1993).
2. The '803 patent
a. DOCK_DET as a "signal line"
All three independent claims of the '803 patent have limitations directed to a
"signal line" that is used to detect a "communications device." The parties agree that
"signal line" means "a line that carries a signal (which may be at a constant voltage
value including zero volts) devoted to indicating whether or not the handheld is docked
in a communications device." (0.1. 180, ex. B, at 1, 4-5, 10) The parties further agree
that "communications device" means "a support for holding the computing device and
that provides data transfer capabilities for the computing device with a network or
computer." (Id.) Having agreed upon the construction of these terms, the parties then
dispute the scope of the word "devoted."
Intermec argues that the word "devoted" limits the "signal line" to detecting a
connection to a "communications device," as opposed to other types of devices or
accessories. (0.1. 201 at 30-31) Intermec then proffers evidence that the CN3's
DOCK_DET signal line may be used with other than communications devices, and
argues that the DOCK_DET signal line, therefore, cannot be the signal line required by
the claims of the '803 patent as asserted by Palm. (Id.) In an earlier brief, Intermec
discussed this same limitation, explaining that "detecting the [signal] is different than
19
detecting a connection to external power, and is different than signals used for data
transfer, parity, or 'hot sync' functions," thereby emphasizing limitation of the type of
signal, not the type of device being detected. (0.1. 163 at 7,
1f 11)
Palm responds that the '803 patent specification specifically contemplates using
the signal line in connection with a variety of different peripheral devices. (0.1. 242 at 3
4) Further, Palm argues that, when in an infringing configuration where the CN3 is
inserted into a communications device, the DOCK_DET signal line is, in fact, limited to
detecting a connection to a communications device. (/d. at 4)
The independent claims of the '803 patent have no express limitations that
restrict the "signal line" to indicating coupling exclusively with a communications device.
Nor is such a limitation shown to be inherent by the specification. The specification of
the '803 patent describes an embodiment wherein
the portable computer may include a signal line accessible through an
output of the portable computing device. The signal line may be
connected to a communication device such as a communication cradle.
The portable computer may detect a signal on the signal line to determine
whether the communication device is actively connected to the portable
computer.
('803 patent, Abstract) (emphasis added) Similar references to permissive coupling with
a communication cradle, or to coupling with accessories generally, are to be found
throughout the remainder of the specification. (See, e.g., id. at col. 7:66-8:2, col. 9:17
21, 45-52, col. 11: 10-14, 30-33)
The court concludes that the "signal line" of the asserted claims is not limited to
detecting a specific type of accessory such as a communications device. The court,
therefore, construes "signal line" to mean "a line that carries a signal (which may be at a
20
constant voltage value including zero volts) distinct from power, data transfer, parity, or
'hot sync' functions, that indicates whether or not the handheld is docked in a
communications device, when connected to such device."4 This construction is
consistent with the abstract and the specification: col. 7:66-8:2; col. 9:17-21,45-52; col.
10:29-31; col. 11: 10-14, 30-33.
b. Mode switching
All three independent claims of the '803 patent include a further limitation
directed to suspension of execution of a programmed event scheduled to occur in the
future ("suspension").5 (ld. at col. 11 :55-56, 12:52-54, 14:5-7) Intermec argues that
such suspension is different from switching modes ("mode switching"), that the
suspension must be performed without mode switching, and that Palm has failed to
prove infringement based on the patent requiring suspension without mode switching.
(0.1. 163 at 20) (citing id. at 8,
,-r 14)
Intermec's argument regarding the omission of mode switching is based on a
response to an office action dated June 13, 2003 ("2003 response"), wherein the
independent claims were amended to include the suspension limitation in its final form.
(0.1. 167, tab 42) Applicants then distinguished their invention over U.S. Patent No.
5,859,970 to Pleso ("Pleso"), stating:
4803 patent, claims 1, 12 and 23 (and dependent claims).
51ndependent claims 1 and 12 also require that the programmed event's objective be
reducing power consumption of the portable computing device. (ld. at col. 11 :56-57,
12:55-56)
21
What Pleaso[sic] teaches is a power detection circuit that detects when
power is received by the portable computer, and then switches a "LAN
controller" from a sleep mode to an active mode. [column 2, lines 40-54]
This is different than claim 1. In claim 1, a future occurrence of a
programmed event is suspended. The portable computing device may
already be on, but because of the communication device being detected, a
power-reduction event such as a "timeout" is disabled.
What is not happening in claim 1 is switching an internal computer to an
active state in response to detecting power. Rather, a communication
device is detected, and in response to detecting the communication
device, a programmed event that would reduce power is suspended.
(Id. at IA001207 -08) Intermec argues that the foregoing ("alleged disavowal")
constitutes a clear disavowal of mode switching. Pleso describes a portable device with
an internal LAN controller and a docking station, where "[u]pon detecting power
received by the portable device from the docking station, the portable device
automatically switches the LAN controller within the device from a low-power
consumption sleep mode to an active mode." Pleso at col. 2:46-50.
"A patentee may, through a clear and unmistakable disavowal in the prosecution
history, surrender certain claim scope to which he would otherwise have an exclusive
right by virtue of the claim language." Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d
1317, 1324 (Fed. Cir. 2009) (citing Purdue Pharma L.P. v. Endo Pharms. Inc., 438 F.3d
1123, 1136 (Fed.Cir.2006)). "Prosecution disclaimer does not apply to an ambiguous
disavowal." Computer Docking Station Corp. v. Del/, Inc., 519 F.3d 1366, 1375 (Fed.
Cir. 2008) (citations ornitted). "When the patentee has expressly defined a term in the
specification and remarks made to distinguish claims from the prior art are broader than
necessary to distinguish the prior art, the full breadth of the remark is not a clear and
unambiguous disavowal of claim scope." 3M Innovative Props. Co. v. Avery Dennison
22
Corp., 350 F.3d 1365, 1373 (Fed. Cir. 2003). "[A] disavowal, if clear and unambiguous,
can lie in a single distinction among many." Computer Docking Station, 519 F.3d at
1377 (citing Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1374 (Fed. Cir.
2007); Norian Corp. v. Stryker Corp., 432 F.3d 1356, 1362 (Fed. Cir. 2005)). "Of
course, a multitude of distinctions may serve to make any single distinction in the group
less clear and unmistakable as the pOint of distinction over prior art and as a critical
defining point for the invention as a whole. Moreover, the prosecution history must
always receive consideration in context." Id. at 1378.
The following excerpts show the relevant changes made by amendment to the
independent claims in the 2003 response:
1. (Currently Amended) ...
suspending execution of st lesst s portion of s pmgrsm, the portion of the
progfsm a programmed event that was to occur at a subsequent moment
in time in order to reduce reducing power consumption of the portable
computing device.
15. 6 (Currently Amended) ...
wherein the processor is configured to suspend execution of a
programmed event that would have otherwise occurred at a
susbequent[sic] moment in time in order to reduce suspend execution of
st lesst s portion of s pmgfsm upon detecting the communicstions device,
the portion of the pmgrsm reducing power consumption of the portable
computing device.
29. 7 (Currently Amended) ...
mesns for suspending execution of st lesst s portion of s pmgrsm, the
portion of the pmgrsm reducing pO'over consumption of the portsble
computing devicewherein the processor is configured to suspend
6Claim 15 was renumbered to claim 12 prior to issuance. (D.1. 167, tab 42 at IA001201)
7Claim 29 was renumbered to claim 23 prior to issuance. (D.1. 167, tab 42 at IA001204)
23
execution of a programmed event that would have otherwise occurred at a
subsequent moment in time.
(0.1. 167, tab 42 at IA001199-1204)
Applicants' amendments here did not remove languqge relating to mode
switching and replace it with suspension of a programmed event. Suspension of a
program, or part thereof, was replaced with suspension of a future programmed event.
In the first paragraph of the alleged disavowal, applicants distinguished their invention
over Pleso by stating what Pleso taught, including switching from a sleep mode to an
active mode. Mode switching is not mentioned in applicants' contrasting description of
their invention. This is not a clear and unambiguous disavowal of mode switching.
Indeed, the 2003 response added a new claim 30, which depends from claim 29, and
recites: "wherein the programmed event corresponds to a time-out feature that
switches the portable computing device into a low-power mode, .. ."B (/d. at 1205)
(emphasis added)
c. Suspending execution in response to detecting a signal
The parties dispute whether or not the suspension limitation is further limited to
being "in response to detecting the signal on the signal line," and as to whether the CN3
meets this limitation as construed. (0.1. 149 at 3; 0.1. 150 at 36-37; 0.1. 180, ex. Bat 2)
Palm argues that "requiring that the suspension be in response to detecting the
signal on the signal line" is a feature of an embodiment, and its importation into the
BClaim 30 was renumbered to claim 24 prior to issuance. (0.1. 167, tab 32 at IA001205)
Further, claim 14 recites: "The detachable assembly of claim 12, wherein the
programmed event corresponds to a time-out feature that switches the portable
computing device into a low-power mode.
24
claim language is improper. (D.I. 149 at 3) Palm also argues that the claims require no
temporal sequence, as argued by Intermec,9 and in the alternative, that "the suspension
would occur after the signal detection, not necessarily in response to the detection.
Nothing in the claim requires a direct causal relationship." (D.I. 220 at 5) (emphasis
retained).
Each disclosure of the suspension in the specification is related to detecting a
signal. (See, e.g., '803 patent at col. 2:23-39, col. 3:2-8, col. 6:13-16, 46-50, col. 10:6
11) Moreover, the file history demonstrates that applicants intended that the
suspension be in response to detecting the communications device.lO (See D.I. 167,
tab 42 at IA001208 )
The court, therefore, construes "suspending execution of a programmed event
that was to occur at a subsequent moment in time" to mean "in response to detecting
the signal on the signal line, stopping or postponing the future execution of a
programmed event."ll This construction is consistent with the claims, the specification:
9Relying on Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1342-43
(Fed. Cir. 2001), Intermec argues that "the steps of a method claim must be performed
in the order written when the claim language, specification and prosecution history
implicitly require performance in that order." (D.1. 150 at 36) The temporal argument is,
thus, limited to claim 1 (a method claim) and is inapplicable to claims 12 and 23
(apparatus claims).
lO"Claim 15 includes limitations that are similar to claim 1. For reasons stated above,
this claim is also allowable." (ld.) Claim 15 was renumbered to claim 12 prior to
issuance. (ld. at IA001201) "Claim 29 is similar to claims 1 and 15, except that the
limitation recited for how the processor is programmed is: 'the processor is configured
to suspend execution of a programmed event that would have otherwise occurred at a
subsequent moment in time.'" (Id. at IA001208) Claim 29 was renumbered to claim 23
prior to issua nce. (ld. at IAOO1204)
11'803 patent, claims 1, 12 and 23 (and dependent claims).
25
col. 2:22-28; col. 6: 13-6, 46-50; col. 9:60-10: 11 and figure 5, as well as the file history
(id.).
Most of the evidence adduced by Palm, with respect to the suspension, is from
Intermec product documentation showing the configuration of power management
functions based on the nature of the power source: "battery" or "external power." (0.1.
170, tab 101, ex. C at 13-26) These documents are not shown to discuss power
management configuration based on detecting connection to a communications device.
Palm points to a single piece of evidence tying the detection of the communications
device to power management, the deposition testimony of 30(b)(6) witness Arvin
Danielson ("Danielson"):
Q: How - how does the CN3 use the DOCK_DET signal?
A: Typically it would know that then it's on an external charger, and it may
disable power management.
(0.1. 176 at 19) (citing 0.1. 178, tab 37 at 231:5-235:14) Intermec counters this
argument with Danielson's declaration, wherein Danielson states that Palm's
interpretation of his cited testimony is misleading for two reasons. (0.1. 202) First,
Danielson asserts it is misleading because the referenced statement was in the context
of a long discussion related to connecting the CN3 to a powered dock. (/d. at 5,
~
26)
Second, Danielson states that the CN3 uses detection of power, on different pins of the
interface than the DOCK_DET signal, to switch between battery and external power
modes. (0.1. 202 at 5-6) The court finds that whether or not the CN3 suspends power
management features in response to detecting a signal on a signal line is a genuine
issue of material fact, precluding summary judgment of infringement of claims 18 and 22
26
of the '803 patent. Summary judgment of non infringement of independent claims 1, 7
and 14 of the '803 patent is similarly precluded.
d. Execution of a downloaded program
Claim 18 depends from claim 17 which requires that "the portable computing
device downloads a program using the communication device once the occurrence of
the timeout feature is suspended." Claim 22 contains nearly identicallanguage. 12
Intermec argues that this means the "downloading of the program and the execution of
that program are caused by and follow after tile suspension of the timeout feature."
(0.1. 201 at 27) (emphasis retained) Palm responds that there is nothing in the claim or
specification that would suggest such causality. (0.1. 242 at 6)
The specification supports the contention that such causality exists. The '803
patent is directed to taking action based on the portable computing device detecting an
active connection to an accessory. ('803 patent at col. 1:12-15,2:16-39, figures 5 and
6) The specification teaches that U[a]nother embodiment of this invention provides for
detecting whether a communication accessory, such as a communication cradle, is
actively connected to the portable computer. The portable computer then suspends a
time-out feature" and "[t]he portable computer 100 may use the communication cradle
150 for the purpose of downloading." (Id. at col. 3:2-6, 4:24-25)
Beyond the issue of causality, the dispute here is not over a term having special
meaning to a person of ordinary skill in the art. Instead, it relates to the plain meaning
12Although the parties agree, with respect to claim 22, that "once" means "upon
suspension of the time-out feature."
27
of the word "once." As used in claim 17, "once" is a subordinating conjunction. The
dictionary defines "once," when used as a conjunction, as "at the moment when."13
The court, therefore, construes "the portable computing device downloads a
program using the communication[s] device once the occurrence of the time-out feature
is suspended" to mean "the portable computing device, without further user intervention,
downloads a program using the communications device as soon as the time-out feature
is suspended."14 This construction is consistent with claim 18 and the specification: col.
1: 12-15, 2:16-39; col. 3:2-6; col. 4:24-25 and figures 5 and 6, and flows from the plain
and ordinary meaning of "once."
Palm argues that claims 1815 and 22 are infringed because it is possible for the
CN3 to "download an upgrade operating system" and the upgraded operating system
program can display the current time or a digital image. This argument is unavailing as
it is based on Palm's proposed claim construction wherein the downloading was not
caused by suspension, and need not occur as soon as suspension took place. Palm
points to no evidence that the CN3, without further user intervention, downloads a
program using the communications device or executes a program as soon as the
time-out feature is suspended. Consequently, the court finds no infringement of claims
17, 18 and 22 of the '803 patent.
3. The '049 patent
13See Frederick C. Mish, ed., Merriam-Webster's Col/egiate® Dictionary 866 (11th ed.
2003).
14'803 patent, claim 17 (and dependent claims). Claim 22 is similarly construed.
15And thereby, claim 17 from which claim 18 depends.
28
a. "Low level"
The asserted independent claims of the '049 patent a" contain a limitation with
respect to a "low level" of battery charge or a "relatively low charge" (co"ectively "low
levellimitation").16 ('049 patent at col. 5:19-27,44-54,6:18-27) For example, claim 1
recites:
[(1)] a radio frequency transceiver coupled to the processor and
powerable by the battery when the battery has a charge above a low level,
[(2)] the transceiver configured to send and receive data while the battery
charge is below the low level and the recharger provides charge to the
rechargeable battery and to the transceiver, [(3)] the low level being a
level at which the battery is unable to power the transceiver when the
charge is below the low level.
(,049 patent at col. 5: 19-27) (brackets added) The language of claim 14 is nearly
identical. (Id. at col. 5:19-27) The plain and ordinary meaning of the claim language
clearly imposes three conditions, requiring no construction. Expressed graphically, this
corresponds to:
Power Source
Battery charge
Battery
(1) Transceiver operable
Above "low level"
External power to battery
and transceiver through
recharging connector
(Unspecified)
"Low level" -------------------------------------------------------------------------------------------------
Below "low level"
I
(3) Transceiver not operable
Diagram 1.
I (2) Transceiver operable
16Palm asserts infringement of claims including or depending from independent claims
1, 7 and 14, and excluding independent claim 20.
29
Claim 7 is a method claim containing similar limitations, with the omission of the
limitation requiring that the transceiver be operable when the battery has a charge
above a "relatively low charge" (i.e., condition (1)).
Intermec presents three arguments regarding the low level limitation. First,
Intermec argues that there must be a "specific battery level below which (a) the
transceiver on the CN3 will operate on external power; and (b) will not operate on
battery power at that voltage level." (0.1. 201 at 2, 32; 0.1. 246 at 2) This argument
roughly corresponds to conditions (2) and (3). Second, Intermec argues that there must
be a "battery voltage level at which (1) the device is operational, but (2) the radio
receiver is not" (0.1. 163 at 2, 21; 0.1. 201 at 28; 0.1. 246 at 2). Intermec fails to point to
support in the claims, specification, or file history for this construction. The claim
language at issue does not introduce limitations directed to operation of the handheld
computer or processor as opposed to the transceiver. Third, Intermec argues that
"[c]laim 1 requires a device to (1) be connected to external power, and (2) to power the
transceiver by the battery in that configuration." (0.1. 201 at 29) Intermec points to no
language here that has special meaning to a person of ordinary skill in the art; a plain
reading of claim 1 evidences no such limitation. Intermec further argues that proof of
infringement requires identification of a specific voltage level meeting the low level
limitation, and that Palm has failed to so identify the voltage level corresponding to the
low level. (0.1. 163 at 22; 0.1. 201 at 32) To prove infringement, Palm need only show
that a low level exists, such that it comports with the conditions specified by the claims.
Identification of an empirical voltage level is not required. Indeed, the claims do not
30
even require that the battery charge level be measured in volts or any other particular
unit of measure.
80th parties proffer the opinions of their experts, supported by product
documentation and physical testing, as to whether or not the CN3 meets the "low level"
limitation. (0.1. 176 at 24-29; 0.1. 201 at 18-21) The court finds that these arguments
reduce to a dispute between experts, requiring the weighing of evidence. A genuine
issue of material fact exists as to this limitation of the independent claims at issue and,
therefore, summary judgment of infringement is precluded.
b. "Always-on e-mail"
Claim 17 of the '049 patent recites: "The handheld computer of claim 15,
wherein the computer program is an always-on e-mail program." The parties dispute
the construction of "always-on e-mail program." Intermec argues that this limitation
means "[a]n e-mail program that constantly and continuously checks for new e-mail
messages." (0.1. 180, ex. 8 at 16) In support of this argument, Intermec points to the
definition, in a computer dictionary, of "[a]lways on" as "[a]n Internet connection that is
maintained continuously, whether or not the computer user is on line." (0.1. 150 at 40)
This definition does not speak to the entire limitation at issue and, in fact, relates only to
an Internet connection, not an e-mail program. Palm argues, based on the opinion of
Dr. Almeroth, that the limitation means "[a]n e-mail program that can periodically check
for new e-mail messages without requiring further user interaction." (0.1. 180, ex. 8 at
16)
80th the claims and the specification of the '049 patent distinguish between "e
mail" and "always-on e-mail," although the nature of the distinction is not expressly
31
indicated. (See, e.g., '049 patent at col. 3:9-13 and claims 16-17) Claims 16 and 17
are identical save the distinction between an ordinary e-mail program and an always-on
e-mail program. Claim 15, from which claims 16 and 17 both depend, recites: "The
handheld computer of claim 14, further comprising: a computer program running on the
processor, the computer program configured to request access to the RF transceiver."
(Id. at col. 6:28-32) Both types of program, therefore, must request access to the RF
transceiver. The specification teaches:
Accordingly, a user may utilize RF transceiver 330 while charging battery
320, even if battery 320 has a charge below a low minimum level.
Further, as may be desired, for example, in a device configured for an
"always-on" e-mail application, RF transceiver 330 will continue to receive
e-mail or be enabled to provide other types of RF communications while
battery 320 is being charged.
(ld. at col. 4:50-54) The computer dictionary definition proffered by Intermec is in
accord with the specification here, pointing to a conclusion that "always on" is
associated with a network connection that is continuously available regardless of
whether the computer user is "on line." An "always-on e-mail program" must take
advantage of an always-on network connection as compared to an ordinary lie-mail
program."
The court, therefore, construes "always-on e-mail program" to mean "an e-mail
program that can periodically check for new e-mail messages using an always-on RF
network connection without requiring further user interaction."17 This construction is
17'049 patent, claim 17.
32
consistent with claims 15, 16 and the specification: col. 3:9-13; col. 4:34-54; col. 6:28
32.
Intermec argues that Palm has failed to adduce evidence that the accused
always-on e-mail program, Microsoft Outlook, "periodically checks for new email
messages without further user intervention," asserting that Palm only points to evidence
that the email program makes use of the POP3 and IMAP4 protocols without further
explanation. (0.1. 201 at 29) Palm responds that it has provided a "detailed element by
element claim chart citing[sic] setting forth, and describing the evidence that the CN3
infringes each element with explanatory text and expert opinion." (0.1. 242 at 14) (citing
0.1. 213, ex. 43, attached ex. 0 at 84-105, 107-09)18 The evidence contained in Dr.
Almeroth's infringement report is in accord with Intermec's allegations. (0.1. 213, ex. 43,
attached ex. 0 at 111-14) (discussing infringement of claims 15-17) The evidence
points to the use of Microsoft Outlook, and to use of the POP3 and IMAP protocols, but
lacks any showing that messages are (periodically) received without user intervention.
Although the version of Microsoft Outlook present on the CN3 may, in fact, have this
capability, Palm has failed to adduce such evidence of record. The court, therefore,
finds no infringement of claim 17 of the '049 patent.
D. Invalidity
1. Indefiniteness, enablement and written description
a. Standards
18The cited page ranges, in fact, discuss claims 11-14.
33
(1) Indefiniteness
Indefiniteness is a question of law. Amgen Inc. v. F. Hoffman-LA Roche Ltd.,
580 F.3d 1340, 1371 (Fed. Cir. 2009) (citing Praxair, Inc. V. ATMI, Inc., 543 F.3d 1306,
1319 (Fed. Cir. 2008)). That is, "[a] determination that a patent claim is invalid for
failure to meet the definiteness requirement of 35 U.S.C. § 112 [112] is a legal
conclusion that is drawn from the court's performance of its duty as the construer of
patent claims[.]" Biomedino, LLC V. Waters Technologies Corp., 490 F.3d 946, 949
(Fed. Cir. 2007) (citation omitted); see also Exxon Research and Engineering Co. v.
u.S., 265 F.3d 1371, 1376 (Fed. Cir. 2001) (rejecting argument that underlying
questions of fact may preclude summary judgment on indefiniteness, as "a court may
consider or reject certain extrinsic evidence in resolving disputes en route to
pronouncing the meaning of claim language").
Section 112 requires that a patent "shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject matter which the applicant
regards as his invention." 35 U.S.C. § 112,112. As explained by the Federal Circuit,
[t]he primary purpose of the definiteness requirement is to ensure that the claims
are written in such a way that they give notice to the public of the extent of the
legal protection afforded by the patent, so that interested members of the public,
e.g., competitors of the patent owner, can determine whether or not they infringe.
All Dental Prodx, LLC v. Advantage Dental Prods., Inc., 309 F.3d 774, 779-80 (Fed. Cir.
2002) (citing Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17,28-29
(1997)). In other words,
[a] patent holder should know what he owns, and the public should know
what he does not. For this reason, the patent laws require inventors to
34
describe their work in "full, clear, concise, and exact terms," 35 U.S.C. §
112, as part of the delicate balance the law attempts to maintain between
inventors, who rely on the promise of the law to bring the invention forth,
and the public, which should be encouraged to pursue innovations,
creations, and new ideas beyond the inventor's exclusive rights.
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 731 (2002).
A determination as to whether the definiteness requirement has been met
"requires construction of the claims according to the familiar canons of claim
construction." All Dental Pradx, LLC, 309 F.3d at 779-80. Claims that are not
amenable to construction or are insolubly ambiguous are indefinite. Halliburton Energy
Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008). As with every
construction issue, the focus of the indefiniteness inquiry is on the meaning that claim
terms would have to one of ordinary skill in the art "at the time of the invention, i.e., as of
the effective filing date of the patent application." Phillips, 415 F.3d at 1313 (citing
Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed.
Cir. 2004)).
Although a patentee need not define his invention with mathematical precision in
order to comply with the definiteness requirement, In re Marasi, 710 F.2d 799, 802-03
(Fed. Cir. 1983), a claim is deemed sufficiently definite only if "one skilled in the art
would understand the bounds of the claim when read in light of the specification."
Exxon Res. & Eng'g Co. v. U.S., 265 F.3d at 1375. Therefore, even if a claim term's
definition can be reduced to words, it "is still indefinite if a person of ordinary skill in the
art cannot translate the definition into meaningfully precise claim scope." Halliburton,
514 F.3d at 1251. In this regard, a claim term is indefinite if the patent does not provide
35
an "objective anchor" or "yardstick against which potential infringers may measure their
activities." Girafa.com v. lAC Search & Media, Inc., Civ. No. 07-7B7-SLR, 2009 WL
3074712, at *2 (D. Del. Sept. 25, 2009).
In sum, the indefiniteness standard of 35 U.S.C. § 112,1[2 is met "where an
accused infringer shows by clear and convincing evidence that a skilled artisan could
not discern the boundaries of the claim based on the claim language, the specification,
and the prosecution history, as well as her knowledge of the relevant art area." Id.
Because both claim construction and indefiniteness are questions of law, these issues
are amenable to summary judgment.
(2) Enablement
The statutory basis for the enablement requirement is found in 35 U.S.C. § 112,
paragraph 1, which provides in relevant part:
The specification shall contain a written description of the invention and of
the manner and process of making and using it, in such full, clear, concise
and exact terms as to enable any person skilled in the art to which it
pertains, or with which it is most nearly connected, to make and use the
same.
The Federal Circuit has explained that "patent protection is granted in return for
an enabling disclosure of an invention, not for vague intimations of general ideas that
mayor may not be workable .... Tossing out the mere germ of an idea does not
constitute enabling disclosure." Genentech, Inc. v. Novo Nordisk AlS, 10B F.3d 1361,
1366 (Fed. Cir. 1997). To satisfy the enablement requirement, a specification must
teach those skilled in the art how to make and to use the full scope of the claimed
invention without undue experimentation. Genentech, 10B F.3d at 1365. The
36
specification need not teach what is well known in the art. Hybritech v. Monoe/onal
Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986).
"If an invention pertains to an art where the results are predictable, ... a broad
claim can be enabled by disclosure of a single embodiment ... and is not invalid for
lack of enablement simply because it reads on another embodiment of the invention
which is inadequately disclosed." Spectra-Physics, Inc.
V.
Coherent, Inc., 827 F.2d
1524, 1534 (Fed. Cir. 1987) (citations omitted).
The enablement requirement is a question of law based on underlying factual
inquiries. In re Wands, 858 F.2d 731,737 (Fed. Cir. 1988). Enablement is determined
as of the filing date of the patent application. In re Brana, 51 F.3d, 1560, 1567 n.19
(Fed. Cir. 1995). The use of prophetic examples does not automatically make a patent
non-enabling. The burden is on one challenging validity to show, by clear and
convincing evidence, that the prophetic examples together with the other parts of the
specification are not enabling. Atlas Powder CO. V.
I. du Pont De Nemours & Co., 750
F.2d 1569, 1577 (Fed. Cir. 1984).
Some experimentation may be necessary in order to practice a claimed
invention; the amount of experimentation, however, "must not be unduly extensive." Id.
at 1576.
The test for whether undue experimentation would have been required is
not merely quantitative, since a considerable amount of experimentation is
permissible, if it is merely routine, or if the specification in question
provides a reasonable amount of guidance with respect to the direction in
which the experimentation should proceed to enable the determination of
how to practice a desired embodiment of the invention claimed.
37
PPG Indus. Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564 (Fed. Cir. 1996) (quoting
Ex parle Jackson, 217 U.S.P.Q. 804, 807 (1982)). A court may consider several factors
in determining whether undue experimentation is required to practice a claimed
invention, including: (1) the quantity of experimentation necessary; (2) the amount of
direction or guidance disclosed in the patent; (3) the presence or absence of working
examples in the patent; (4) the nature of the invention; (5) the state of the prior art; (6)
the relative skill of those in the art; (6) the predictability of the art; and (7) the breadth of
the claims. Wands, 858 F.2d at 737. These factors are sometimes referred to as the
"Wands factors." A court need not consider every one of the Wands factors in its
analysis. Rather, a court is only required to consider those factors relevant to the facts
of the case. See Amgen, Inc. v. Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1213 (Fed.
Cir. 1991).
(3) Written description
"Written description is a statutory requirement set forth in 35 U.S.C. § 112."
Billups-Rothenberg, Inc. v. Associated Reg'l and Univ. Pathologists, Inc., No.
2010-1401, 2011 WL 1601996, at *4 (Fed. Cir. Apr. 29, 2011). "The written description
requirement requires the inventor to disclose the claimed invention so as to 'allow
persons of ordinary skill in the art to recognize that [the inventor] invented what is
claimed.'" Id. (quoting Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010) (en banc)) (brackets in original). The "level of detail required to satisfy the
written description requirement varies depending on the nature and scope of the claims
and on the complexity and predictability of the relevant technology." Ariad, 598 F.3d at
38
1351 (citing Capon v. Eshhar, 418 F.3d 1349, 1357-58 (Fed.Cir.2005)). "To overcome
the presumption of validity of patents, the accused must show that the claims lack a
written description by clear and convincing evidence." Hynix Semiconductor Inc. v
Rambus Inc., Nos. 2009-1299, 2009-1347, 2011 WL 1815978, at *12 (Fed. Cir. May
13,2011) (citing ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1376
(Fed.Cir.2009)).
b. Claims 3 and 9 of the '049 patent
Claim 3 of the '049 patent recites: "The handheld computer system of claim 1,
wherein the recharger includes a recharger connector configured to couple to the
recharging connector." Claim 9 of the '049 patent recites: 'The method of claim 7,
further comprising: coupling the handheld computer to a synchronization cradle, the
synchronization cradle having a charger connector." Intermec asserts that: (1) the
specification does not provide a definition of the terms "recharger connector" or "charger
connector" as used in claims 3 and 9; (2) neither is shown in the figures of the '049
patent; (3) "there is no dictionary definition for the terms;" (4) figure 3 shows the
recharger connected directly between a power source and the recharging connector;
and (5) figure 3 is the only figure that depicts the recharger. (0.1. 163 at 27-28) As a
result, Intermec argues "[c]laim 3 fails for indefiniteness and for lack of enablement and
written description," and that claim 9 fails similarly. (0.1. 150 at 40; 0.1. 163 at 28-29)
Intermec, however, has no apparent difficulty in understanding the term "recharger" as
used in its invalidity argument: "Finally, Koenck '523 discloses ... a recharger for
recharging the rechargeable battery." (0.1. 163 at 26)
"In some cases, the ordinary meaning of claim language as understood by a
39
person of skill in the art may be readily apparent even to lay judges, and claim
construction in such cases involves little more than the application of the widely
accepted meaning of commonly understood words." Phillips, 415 F.3d at 1314 (citing
Brown v. 3M, 265 F.3d 1349,1352 (Fed. Cir. 2001». Intermec does not argue that the
terms "recharger," "charger," or "connector" have any special meaning to one of
ordinary skill in the art. The language of claim 3, itself, defines a "recharger connector"
as a "connector configured to couple to the recharging connector," which is included as
part of the recharger. ('049 patent at col. 5:30-32) Chargers/rechargers were as
ubiquitous at the time of the '049 patent application as they are now, and the dictionary
defines both as devices for charging storage batteries. 19 Claim 3 is not indefinite merely
because the recharger is only shown in a single figure, sans the recharger connector.
"[A]n applicant is not required to describe in the specification every conceivable and
possible future embodiment of his invention." Rexnord Corp. v. Laitram Corp., 274 F.3d
1336, 1344 (Fed. Cir. 2001). As these terms are amenable to construction, they are not
indefinite. Intermec fails to point to evidence that claims 3 and 9 of the '049 patent are
invalid for lack of enablement or written description.
2. Anticipation
a. Standards
Under 35 U.S.C. § 102(a), "[a] person shall be entitled to a patent unless the
invention was known or used by others in this country, or patented or described in a
printed publication in this or a foreign country, before the invention thereof by the
19See Frederick C. Mish, ed., Merriam-Webster's Col/egiate® Dictionary 208, 1038 (11th
ed.2003).
40
applicant for patent." A claim is anticipated only if each and every limitation as set forth
in the claim is found, either expressly or inherently described, in a single prior art
reference. Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987).
[A]nticipation requires that each limitation of a claim must be found in a
single reference. Although [the Federal Circuit has] permitted the use of
additional references to confirm the contents of the allegedly anticipating
reference, ... we have made clear that anticipation does not permit an
additional reference to supply a missing claim limitation.
Teleflex, Inc.
V.
Ficosa North America Corp., 299 F.3d 1313, 1335 (Fed. Cir. 2002).
That is, additional references may be used only to shed light on what a prior art
reference' would have meant to those skilled in the art at that time, not for a specific
teaching, as this would be indicative of an attempt to improperly "combine the teachings
of the references to build an anticipation." Studiengesel/schaft Kohle, m.b.H. v. Dart
Industries, Inc., 726 F.2d 724, 727 (Fed. Cir. 1984).
A single prior art reference may expressly anticipate a claim where the reference
explicitly discloses each and every claim limitation. However, the prior art need not be
ipsissimis verbis (Le., use identical words as those recited in the claims) to be expressly
anticipating. Structural Rubber Prods. CO.
V.
Park Rubber Co., 749 F.2d 707, 716 (Fed.
Cir. 1984). A single prior art reference also may anticipate a claim where one of
ordinary skill in the art would have understood each and every claim limitation to have
been disclosed inherently in the reference. Continental Can Co. USA Inc.
V.
Monsanto
Co., 948 F .2d 1264, 1268 (Fed. Cir. 1991). The Federal Circuit has explained that an
inherent limitation is one that is necessarily present and not one that may be
established by probabilities or possibilities. Id. That is, "the mere fact that a certain
thing may result from a given set of circumstances is not sufficient." Id. "[I]nherency
41
operates to anticipate entire inventions as well as single limitations within an invention."
Schering Corp. v. Geneva Ph arms. Inc., 339 F.3d 1373, 1380 (Fed. Cir. 2003). The
recognition of an inherent limitation by a person of ordinary skill in the art before the
critical date is not required to establish inherent anticipation. Id. at 1377.
An anticipation inquiry involves two steps. First, the court must construe the
claims of the patent in suit as a matter of law. Key Pharms.
V.
Hercon Lab. Corp., 161
F.3d 709, 714 (Fed. Cir. 1998). Second, the finder of fact must compare the construed
claims against the prior art to determine whether the prior art discloses the claimed
invention. Id.
b. The '803 patent
Intermec alleges that one or more claims of the '803 patent are anticipated by
three earlier Intermec products, the 944X Trakker Reader (UTrakker") and the Intermec
6620 and 6640 models.
(1) The Trakker
As an initial matter, the parties dispute whether the Trakker qualifies as prior art
to the '803 patent. (D.1. 163 at 13; D.1. 209 at 14) The '803 patent was filed on
November 4,2002 as a continuation of application No. 09/298,113, filed April 23, 1999,
and no earlier priority date is claimed. ('803 patent at col. 1:5-6) Intermec proffers the
testimony of its expert, Steven E. Koenck (UKoenck"), that the Trakker was "in use and
on sale at least as early as 1988," more than 10 years before the priority date of the
'803 patent. (D.1. 163 at 13 ~ 39) (citing D.1. 157 at 3 ~ 5) Palm has not adduced any
evidence to the contrary. Instead, Palm argues that Koenck "points to no evidence
whatsoever - let alone admissible evidence - to support this contention." (D.1. 209 at
42
15) In his supplemental expert report, Koenck explains that his opinion regarding the
priority date of the Trakker is based on a Trakker user manual (marked as copyrighted
in 1988 and 1989) and a circuit board in the mating 40D dock marked as copyrighted in
1987 (D.1. 274, ex. Cat 1f1f 28,31) Printed copyright dates on product documentation
and circuit boards are the types of evidence which may reasonably be relied upon by
experts in the field to determine an approximate date of manufacture, use, sale or offer
for sale of an electronic product so marked. In the absence of any allegation or
evidence to the contrary, the court finds that the Trakker is prior art to the '803 patent.
As discussed above, all three independent claims of the '803 patent include a
suspension limitation, wherein the suspension must be in response to detecting a signal
on a signal line. Intermec asserts Koenck found that "when the Trakker was connected
through pin 8 of the connector of the devices to a powered or unpowered dock or to
ground, the Trakker suspended tl1e automatic shut-off feature that would normally time
out during battery operation," presumably to show that the suspension was in response
to the signal and not based merely on detection of external power. (D.1. 273 at 4) (citing
D.1. 274, ex. Cat 1f1f 39-40) (emphasis added). Intermec admits that "detecting the
Docked Signal is different than detecting a connection to power." (D.1. 163 at 71f 11)
The cited portion of Koenck's supplemental expert report does identify a signal,
IOSENS,20 that is alleged to correspond to the signal on a signal line limitation.
Significantly, Koenck explains that "the 944X User Manual discloses that the 944X
device included power management features that would disable an automatic power-off
2°IOSENS refers to IOSENSE/IOSENS(bar).
43
feature in the presence of power." (0.1. 274, ex. C at,-r 41) (emphasis added).
Koenck further states that he "tested an actual Trakker and determined that this
suspension of the automatic shut-off feature occurs when the Trakker is placed in a
powered 400 dock." (Id.) Koenck makes no reference in the cited sections to testing
using an unpowered dock as asserted by Intermec, nor does he state that the
suspension is in response to detecting a signal on a signal line. Intermec only attempts
to show that the Trakker uses IOSENS to determine it is in a dock, and that placing the
Trakker in a dock results in the suspension. (0.1. 282 at 7-8) As the pin connector on
the Trakker carries both the IOSENS signal and power, such a showing does not rise to
the level of clear and convincing evidence that suspension takes place in response to
detecting a signal on a signal line as opposed to merely detecting power. Intermec has
failed to show that the Trakker anticipates each and every limitation of the claims of the
'803 patent as construed by the court.
(2) The Intermec 6620 and 6640 models
Intermec did not raise the issue of anticipation of the '803 patent by its model
6620 and 6640 products in its briefs in support of its motion for invalidity of the '803
patent (0.1. 163; 0.1. 246). Instead, it was Palm that raised the issue in its opening brief
for summary judgment of no invalidity of the '803 patent (0.1. 176) arguing that Koenck,
in his expert report on invalidity of the '803 patent (0.1. 178 at tab 33), based his
opinions on inadmissible Wikipedia articles. Intermec argues that the 6620 and 6640
products anticipate claims 6, 18 and 22 of the '803 patent, responding that its Chief
Technology Officer "can testify and confirm, for example, that the 6640 Product came
with the Windows 98 operating system installed ...." (0.1. 201 at 36) Palm argues,
44
inter alia, that such evidence was never before disclosed and will prejudice Palm, that
such evidence is legally insufficient and uncorroborated.
Because the court finds that Intermec has failed to point to evidence of record
that establishes that the 6620 and 6640 products meet every limitation of each of the
alleged anticipated claims, the court does not reach these arguments. Claims 6, 18 and
22 of the '803 patent are dependent claims that include all of the limitations of the
claims from which they depend. Assuming arguendo that all of its proffered evidence
were admissible, Intermec has failed to pOint to evidence that the 6620 and 6640
products meet the suspension limitation of the independent claims of the '803 patent, as
construed by the court.
c. The '049 patent
(1) The Intermec model 700 Mono
Intermec argues that "Palm itself has demonstrated that the '049 patent claims
are invalid by accusing a prior art product of infringement, namely Intermec's 700
Mono product." (0.1. 201 at 37) (emphasis in original) Intermec points to Palm's
response to its interrogatory number 10, Palm's preliminary infringement contentions
(0.1. 169, tab 87). (0.1. 201 at 23,-r 60) In addition to disputing the priority of the model
700 Mono, Palm argues that Intermec has failed to show that each element of the
asserted claims of the '049 patent is found in the 700 Mono device, and that Palm never
accused the 700 Mono device of infringement. Instead, Palm asserts, it considered
accusing the 700 Color device of infringement, but decided not to do so when it
determined that it lacked required elements of the '049 patent claims.
A review of Palm's preliminary infringement contentions shows that references to
45
700 series products were based on user manuals for the 700 Color series computers.
The court is unable to locate a single reference to the 700 Mono device in Palm's
preliminary infringement contentions which are so heavily relied upon by Intermec.
Regardless of whether or not the 700 Mono is prior art to the '049 patent, Intermec has
failed to show by clear and convincing evidence that the 700 Mono anticipates any of
tile claims of the '049 patent.
(2) U.S. Patent No. 4,885,523 ("Koenck '523")
Koenck '523 relates to a rechargeable battery conditioning system for batteries
used in portable computerized devices, particularly handheld devices that have means
for storing data pertinent to battery operating parameters. (Koenck '523 at col. 1: 33-37)
The system provides for significant portions of the conditioning circuitry to be disposed
external to the battery operated portable device. (Id. at col. 1:66-2:5) The disclosed
system is particularly advantageous in situations where the portable computing device
needs to be recharged away from AC power, such as in delivery operations, where the
unit must be maintained in a mobile environment that is subject to extremes in
temperature. (Id. at col 1: 48-54) Such a system allows for optimal battery performance
and maximum battery life. The inventor of Koenck '523 is Steven E. Koenck, Intermec's
expert. (Id. at [75]) Koenck '523 incorporates by reference the detailed description of
figures 1 through 17 of U.S. Patent No. 4,709,202 to Koenck, et al. ("Koenck '202").21
21"The detailed description of FIGS. 1 through 17 is incorporated herein by reference to
the specification at col. 4, line 25, through col. 66, line 4, of the incorporated U.S. Pat.
No. 4,709,202." (Koenck '523 at col. 6:42-45)
46
Intermec argues that Koenck '523 anticipates the asserted independent claims of
the '049 patent. (0.1. 163 at 26) (citing 0.1. 174, tab 118 at,-r,-r 34-39,41-49) Intermec
asserts that Koenck '523 discloses each of the "basic elements" of the product claims
alleging disclosure of the first five elements of claims 1 and 1422 plus the sixth element
of claim 1.23
The seventh and final element of claim 1 is the low level limitation, common to all
three asserted independent claims, as discussed above. Relying on Koenck's invalidity
report, Intermec further argues that
Koenck '523 discloses the basic elements of the method claim of Claim 7,
in that the device includes a rechargeable battery that, by its nature, can
be discharged, a transceiver that, by its nature, requires power to operate,
and a recharger for recharging the rechargeable battery."
In addition to disclosing these basic elements, Koenck '523 discloses a
device that will power the transceiver on the device when plugged into a
dock. According to Palm, this is all that is required to infringe the claim,
and presumably to meet the "low level" limitation.
(ld. at 26-27) (internal citations omitted)
Palm responds by arguing that Koenck '523 does not teach: (a) a handheld
computer system; (b) a recharger that provides charge to both the battery and the
transceiver directly; and (c) a transceiver that can transmit when the power source is
connected but the battery level is too low to power transmission. (0.1. 209 at 21-22)
22"Specifically, Koenck '523 discloses each of the basic elements of the product claims,
showing a housing, a display supported by the housing, a processor coupled to the
display, a rechargeable battery configured to power the processor and the display, and
a recharging connector coupled to the rechargeable battery." (0.1. 163 at 26) (internal
citations omitted)
23"[A] recharger coupled to the recharging connector." ('049 patent at col 5: 18)
47
All asserted independent claims include the term "handheld computer" in the
preamble, the one independent method claim including it in the body of the claim as
well. The parties dispute the meaning of this term, with Palm arguing that "handheld
computer" means "an integrated computing system within a single housing that can be
stored in a pocket and used while carried in one hand." (0.1. 149 at 4) Intermec
proposes, that the term should be construed as "[a] computing device that can be easily
moved by hand from one location to another during operation." (0.1. 180, ex. Bat 12)
Neither party offers argument as to why the claim preamble should be construed as a
limitation. (See, e.g., 0.1. 149 at 4; 0.1. 150 at 38; 0.1. 220 at 7-8; 0.1. 221 at 3-4) The
court finds that the preambles of the asserted independent claims do not recite
additional structure or steps underscored as important by the specification and holds,
therefore, that the preambles do not impose additional limitations. See Catalina Mktg.
Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002).
Moreover, the specification teaches that "[h]andheld computing devices,
'palmtops,' 'palmhelds,' personal digital assistants (POAs), or handheld computers
typically weigh less than a pound and fit in a pocket," thus, not all handheld computers
do so. ('049 patent at col. 1:7-9) (emphasis added) Further, the term "handheld
computer" is used in both the '049 patent and Koenck '523,24 and neither party has
shown that a person of ordinary skill in the art would interpret the two uses differently in
context. The court finds that the term "handheld computer" does not require
24Koenck '523 refers to "hand-held" in reference to various devices, but discloses the
more specific "hand-held computer" as an example in a reference to U.S. Ser. No.
104,653, entitled "Hand-held Computer System," which is incorporated by reference in
its entirety. (Koenck '523 at col. 18:38-44)
48
construction, and holds that "handheld computer" is not a limitation of the asserted
independent product claims. Assuming arguendo that "handheld computer" was a
limitation of the asserted independent product claims of the '049 patent, the court finds
that Koenck '523 discloses a handheld computer.
Palm's second and third arguments, (b) and (c) above, are a part of the low level
limitation. While the low level limitation requires that the recharger provide charge to
both the battery and transceiver through the recharging connector, it does not require
that the recharger provide charge to the battery and the transceiver directly, as argued
by Palm.25
Intermec, in reply, argues that Koenck '523 discloses
"an external charger ... providing power simultaneously to both the
internal rechargeable batteries and operating circuitry from[sic] the
transceiver ... "a regulation circuit ... enablil1g the portable computer to
run independently off either external charger input or the battery," and a
"rechargeable battery means that can be drained to a charge too low to
power the transceiver" such that "operation of the transceiver is enabled if
the battery charge is very low."
(0.1. 246 at 18) (citing 0.1. 174, tab 118 at
~
59,61,82) Intermec alleges that the
regulation circuit enables the portable computer to run independently from the charger
or battery, yet fails to point to evidence establishing that the recharger can provide
sufficient power to enable the RF transceiver to "send and receive data" as required.
The specification of Koenck '523 teaches: "Omission of a current sense resistor such
25"[T]he recharger provides charge to the rechargeable battery and to the transceiver."
('049 patent at col. 5:23-24) U[P]roviding power from the recharger to the transceiver of
the handheld computer and the battery while the hand-held computer is coupled to the
recharger." (/d. at col. 5:49-51) "[A] rechargil1g connector coupled to the rechargeable
battery; and ... the recharging connector receives power from a power source and
provides power to the rechargeable battery and to the transceiver." (Id. at col. 6:16-24)
49
as 24-30 is particularly advantageous where the battery is to supply relatively high
peak current as in portable radio frequency (RF) terminals which communicate data on
line to a base computer station [sic] an RF link." (Koenck '523 at cols. 17:67-18:3)
(emphasis added) Intermec does not point to evidence that the charge supplied by the
recharger in Koenck '523 is sufficient to supply this relatively high peak current required
of the transceiver when the battery charge is too low to do so. Without a further
showing, it is possible that the recharger may provide current sufficient to recharge the
battery and to operate other functions of the handheld computer, yet be insufficient to
allow concurrent operation of the transceiver. The court finds that Intermec has failed to
adduce clear and convincing evidence showing that the low level limitation of the '049
patent is found in Koenck '523 and holds, therefore, that Koenck '523 does not
anticipate the claims of the '049 patent. 26
v.
CONCLUSION
For the aforementioned reasons, Palm's motion for summary judgment of no
invalidity and infringement of the '803 and '049 patents is granted-in-part with respect to
no invalidity of either patent, and is otherwise denied. Intermec's motion for summary
26The parties make additional arguments regarding dependent claims of the '049 patent.
Because the court finds that the independent claims of the '049 patent are not
anticipated, the court does not reach these arguments.
Intermec also briefly raises the issue of obviousness in its reply brief: "Mr. Koenck
offers the opinion that, based on Koenck '523 and Miller '183 and his own experience,
"it would have been obvious to combine the cradle charger of Miller' 183 with the
charger of the '523 patent." (D.I. 246 at 18) (citing D.I. 174, tab 118 at,-r 71) Intermec's
argument only addresses the additional limitation of claim 2 of the '049 patent and does
not offer any explanation as to how Koenck '523 in view of Miller '183 and the
knowledge of one of ordinary skill in the art renders each and every element of claim 2
obvious.
50
judgment of nOll-infringement and invalidity of the '803 and '049 patents is granted-in
part with respect to no infringement of claims 17, 18 and 22 of the '803 patent and no
infringement of claim 17 of the '049 patent, and otherwise denied.
An appropriate order will issue.
51
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