Transcenic Inc. v. Google Inc. et al

Filing 421

MEMORANDUM OPINION re claim construction. Signed by Judge Leonard P. Stark on 9/17/13. (ntl)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
TRANSCENIC, INC.,
Plaintiff,
C.A. No.11-582-LPS

v.
GOOGLE INC., MICROSOFT
CORPORATION, AOL INC., and
MAPQUEST, INC.
Defendants.

Richard D. Kirk, Esq., Stephen B. Brauerman, Esq., BAYARD, P.A., Wilmington, DE.
Timothy P. Maloney, Esq., Eric L. Broxterman, Esq., Christine A. Pompa, Esq., David A. Gosse,
Esq., FITCH, EVEN, TABIN & FLANNERY, Chicago, IL.
Steven C. Schroer, Esq., FITCH, EVEN, TABIN & FLANNERY, Boulder, CO.
Attorneys for Plaintiff Transcenic, Inc.
Frederick L. Cottrell, III, Esq., Jason J. Rawnsley, Esq., RICHARDS, LAYTON & FINGER,
P.A., Wilmington, DE.
Ramsey M. Al-Salam, Esq., Stevan R. Stark, Esq., PERKINS COlE LLP, Seattle, W A.
Matthew C. Bernstein, Esq., Cheng Ko, Esq., PERKINS COlE LLP, San Diego, CA.
Margaret D. Macdonald, Esq., PERKINS COlE LLP, Washington D.C.
Chad S. Campbell, Esq., PERKINS COlE LLP, Phoenix, AZ.
Victoria Q. Smith, Esq., PERKINS COlE LLP, Palo Alto, CA.
Melody K. Glazer, Esq., PERKINS COlE LLP, Madison, WI.
Attorneys for Defendants Google Inc. and Microsoft Corporation.
Jeffrey L. Moyer, Esq., RICHARDS, LAYTON & FINGER, P.A., Wilmington, DE.
Alan L. Whitehurst, Esq., Marissa R. Ducca, Esq., QUINN EMANUEL URQUHART &
SULLIVAN, LLP, Washington, D.C.
Attorneys for Defendants AOL Inc. and MapQuest, Inc.

MEMORANDUM OPINION

September 17, 20 13
Wilmington, Delaware

Presently before the Court is the issue of claim construction of various disputed terms of
U.S. Pat. No. RE 42,289 ("the '289 patent"). The '289 patent is a reissue of U.S. Patent No.
7,050,102.

I.

BACKGROUND
Plaintiff Transcenic, Inc. ("Plaintiff') filed this patent infringement action against

Defendants Google Inc., Microsoft Corp., AOL Inc., and MapQuest, Inc. (collectively,
"Defendants") on July 1, 2011, alleging infringement ofthe '289 patent. (D.I. 1, 16) The '289
patent is entitled "Spatial Referenced Photographic System With Navigation Arrangement" and
relates to a system for capturing image data along with positional information, processing the
image data, linking it to the positional information, and displaying the image data together with
interactive controls that allow a user to navigate through the image data.
The parties completed their claim construction briefing on October 5, 2012. (D.I. 200,
203, 238, 242) In addition to the briefs, the parties submitted technology tutorials (D.I. 199, 202)
and expert reports (D.I. 204, 240). The Court held a Markman hearing on November 19,2012.
(D.I. 311) (hereinafter "Tr.").

II.

LEGALSTANDARDS
"It is a bedrock principle of patent law that the claims of a patent define the invention to

which the patentee is entitled the right to exclude." Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (internal quotation marks omitted). Construing the claims of a patent presents a
question oflaw. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-78 (Fed. Cir.
1995), aff'd, 517 U.S. 370, 388-90 (1996). "[T]here is no magic formula or catechism for
conducting claim construction." Phillips, 415 F.3d at 1324. Instead, the court is free to attach

the appropriate weight to appropriate sources "in light of the statutes and policies that inform
patent law." !d.
"[T]he words of a claim are generally given their ordinary and customary meaning ...
[which is] the meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of the patent application."

!d. at 1312-13 (internal citations and quotation marks omitted). "[T]he ordinary meaning of a
claim term is its meaning to the ordinary artisan after reading the entire patent." !d. at 1321
(internal quotation marks omitted). The patent specification "is always highly relevant to the
claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of
a disputed term." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
While "the claims themselves provide substantial guidance as to the meaning of
particular claim terms," the context of the surrounding words of the claim also must be
considered. Phillips, 415 F.3d at 1314. Furthermore, "[o]ther claims ofthe patent in question,
both asserted and unasserted, can also be valuable sources of enlightenment ... [b ]ecause claim
terms are normally used consistently throughout the patent .... " !d. (internal citation omitted).
It is likewise true that "[d]ifferences among claims can also be a useful guide .... For

example, the presence of a dependent claim that adds a particular limitation gives rise to a
presumption that the limitation in question is not present in the independent claim." !d. at 131415 (internal citation omitted). This "presumption is especially strong when the limitation in
dispute is the only meaningful difference between an independent and dependent claim, and one
party is urging that the limitation in the dependent claim should be read into the independent
claim." SunRace Roots Enter. Co., Ltd. v. SRAM Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003).
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It is also possible that "the specification may reveal a special definition given to a claim

term by the patentee that differs from the meaning it would otherwise possess. In such cases, the
inventor's lexicography governs." Phillips, 415 F .3d at 1316. It bears emphasis that "[ e]ven
when the specification describes only a single embodiment, the claims of the patent will not be
read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope
using words or expressions of manifest exclusion or restriction." Liebel-Flarsheim Co. v.

Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (internal quotation marks omitted), aff'd, 481
F.3d 1371 (Fed. Cir. 2007).
In addition to the specification, a court "should also consider the patent's prosecution
history, if it is in evidence." Markman, 52 F.3d at 980. The prosecution history, which is
"intrinsic evidence," "consists of the complete record of the proceedings before the PTO [Patent
and Trademark Office] and includes the prior art cited during the examination of the patent."

Phillips, 415 F.3d at 1317. "[T]he prosecution history can often inform the meaning ofthe claim
language by demonstrating how the inventor understood the invention and whether the inventor
limited the invention in the course of prosecution, making the claim scope narrower than it would
otherwise be." Id.
A court also may rely on "extrinsic evidence," which "consists of all evidence external
to the patent and prosecution history, including expert and inventor testimony, dictionaries, and
learned treatises." Markman, 52 F.3d at 980. For instance, technical dictionaries can assist the
court in determining the meaning of a term to those of skill in the relevant art because such
dictionaries "endeavor to collect the accepted meanings of terms used in various fields of science
and technology." Phillips, 415 F.3d at 1318. In addition, expert testimony can be useful "to

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ensure that the court's understanding of the technical aspects of the patent is consistent with that
of a person of ordinary skill in the art, or to establish that a particular term in the patent or the
prior art has a particular meaning in the pertinent field." !d. Nonetheless, courts must not lose
sight of the fact that "expert reports and testimony [are] generated at the time of and for the

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purpose oflitigation and thus can suffer from bias that is not present in intrinsic evidence." !d.
Overall, while extrinsic evidence "may be useful" to the court, it is "less reliable" than intrinsic

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evidence, and its consideration "is unlikely to result in a reliable interpretation of patent claim

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scope unless considered in the context of the intrinsic evidence." !d. at 1318-19.
Finally, "[t]he construction that stays true to the claim language and most naturally
aligns with the patent's description ofthe invention will be, in the end, the correct construction."

Renishaw PLC v. Marposs Societa 'per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows
that "a claim interpretation that would exclude the inventor's device is rarely the correct
interpretation." Osram GmbH v. fTC, 505 F.3d 1351, 1358 (Fed. Cir. 2007).
In this case, the parties agree that several disputed phrases are written in means-plus-

function format. Under 35 U.S.C. § 112, ,-r 6:
An element in a claim for a combination may be expressed as a
means or step for performing a specified function without the
recital of structure, material or acts in support thereof, and such
claim shall be construed to cover the corresponding structure,
material, or acts described in the specification and equivalents
thereof.

Courts follow a two-step process when construing "means-plus-function" claim terms. Chi. Bd.

Options Exch., Inc. v. Int'l Sec. Exch., LLC, 677 F.3d 1361, 1367 (Fed. Cir. 2012). First, the
court must identify the particular claimed function. !d. Second, the court must look to the
specification and identify the corresponding structure for that function. !d. For the second step,
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"structure disclosed in the specification is 'corresponding' structure only if the specification or
prosecution history clearly links or associates that structure to the function recited in the claim."
B. Braun Medical v. Abbott Lab., 124 F.3d 1419, 1424 (Fed. Cir. 1997).

III.

CONSTRUCTION OF DISPUTED TERMS
A.

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"database" [all claims]

Plaintiff's Proposed
Construction

"a collection of data organized for rapid search and retrieval by a
computer"

Defendants' Proposed
Construction

"file for storing data records"

Court's Construction

"a collection of data organized for search and retrieval by a
computer"

Plaintiff proposes to construe the term "database" in accordance with its plain and
ordinary meaning. Defendants, by contrast, believe that the term "database" is narrowly defined
in the specification, such that the database must: (1) be limited to a file; and (2) store "data
records." (D.I. 200 at 19; Tr. at 38, 47,64) The Court agrees with Plaintiff.
The specification does not support Defendants' proposal to limit the "database" to a
file. The words of a claim should generally be construed in accordance with their plain and
ordinary meaning, unless an exception applies, such as where the specification includes a special
definition or the inventor intentionally narrows the meaning of the claim term. See Phillips, 415
F.3d at 1312-16 (internal citations omitted). Defendants have not identified any portion of the
specification that provides a special definition or otherwise evinces a clear intent to narrow the

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The parties have also agreed on the meaning of certain claim terms. The Court will adopt the
parties' proposed constructions for these terms.

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scope ofthe term database. 2 The fact that the only embodiment of the '289 patent refers to a
database as a "file" is not sufficient to limit the claims. See Liebel-Flarsheim, 358 F.3d at 906
("Even when the specification describes only a single embodiment, the claims of the patent will
not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim
scope using words or expressions of manifest exclusion or restriction.") (internal quotation marks
omitted); MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1333 (Fed. Cir. 2007)
("[P]atent coverage is not necessarily limited to inventions that look like the ones in the figures
.... To hold otherwise would be to import limitations onto the claim from the specification,
which is fraught with 'danger."'). The Court's conclusion is also consistent with the prosecution
history, given that the Examiner did not limit the term "database" to a "file" when rejecting the
original claims over the prior art, and that applicants did not dispute the Examiner's
understanding of the term. (D.I. 242 at 3-4; Tr. at 33)
It is undisputed that Plaintiff did not invent the database concept; many different types

of databases were known in the art in 1996. (Tr. at 47) There is also no evidence (or even
suggestion) that Plaintiff's invention is dependent on any specific type of database. For this
additional reason, the Court will not limit the claim as Defendants propose.
The Court likewise is not persuaded that a database must store "data records."
Defendants contend that the specification consistently defines a database as containing data
records, citing several examples. (D.I. 200 at 20-21, Tr. at 47-49) These examples are not

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Defendants also contend that Plaintiff's construction is incorrect because it is impermissibly
broad, such that it would, for example, encompass the internet. (D.I. 200 at 21, Tr. at 49) The
Court does not agree because: ( 1) on the record presently before the Court, it is unclear whether
the internet is "a collection of data organized for search and retrieval;" and (2) other claim
limitations make clear that the claims do not encompass all of the internet.
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definitions and do not contain "expressions of manifest exclusion or restriction." Epistar Corp.
v. fTC, 566 F.3d 1321, 1334 (Fed. Cir. 2009).
Hence, the Court will adopt Plaintiffs proposed construction, but with one
modification: the Court will remove the word "rapid" from the construction. Plaintiff did not
object to this change during oral argument. (Tr. at 26)
B.

"a database" [claims 1, 2, 6, 8, 35, 43, 51, and 77]

Plaintiff's Proposed
Construction

"one or more databases"

Defendants' Proposed
Construction

To the extent the Court chooses to construe this phrase, the term
"a" should be given its plain and ordinary meaning of "one."
Thus "a database" should be construed to mean "one file for
storing data records"

Court's Construction

"one or more databases"

The parties' dispute is whether "a database" must be limited to a single database or can,
instead, include one or more databases. When used in open-ended claims, the article "a" is
typically interpreted to mean "one or more." See KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d
1351, 1356 (Fed. Cir. 2000) (internal citations omitted). Defendants contend that this general
rule should not apply in this case. According to Defendants, because claim 1 uses the phrase "a
database," while claim 10 uses the phrase "at least one database," there is a presumption that
these two phrases have different meanings. (See D.l. 200 at 22) (citing Modine Mfg. Co. v. fTC,
75 F.3d 1545, 1551 (Fed. Cir. 1996)) This presumption, however, does not compel a narrow
construction in this case. As the Federal Circuit has explained, "the article 'a' receives a singular
interpretation only in rare circumstances when the patentee evinces a clear intent to so limit the
article." KCJ Corp., 223 F.3d at 1356. The Court does not discern from the language of claims
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1 and 10 a clear intent on the part of the inventors to limit the scope of claim 1. Moreover,
Defendants' proposed construction would- as Defendants concede (Tr. at 73-74)- exclude the
inventors' preferred embodiment, a result that is "rarely, if ever correct." Vitronics, 90 F.3d at
1583.

C.

"image" 3 [all claims]

Plaintiff's Proposed
Construction

"a representation of something photographed by a camera
system"

Defendants' Proposed
Construction

"recorded or captured video frame"

Court's Construction

Plain and ordinary meaning

There are two issues in dispute: (1) whether an image must be captured by a video
camera; and (2) whether an image is limited to single frame of the camera. The Court concludes
that neither limitation is required.
With respect to the video camera issue, none of the claims explicitly refers to a "video
camera." Although Defendants correctly note that the sole embodiment of the '289 patent
describes using a video camera, they fail to identify any "expressions of manifest exclusion or
restriction" or other evidence that demonstrates an intent to limit the scope of the claims. Epistar

Corp., 566 F.3d at 1334. The prosecution history also supports the Court's construction. During
prosecution, the Examiner relied on still-camera systems to reject the claims of the '289 patent,

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The parties agree that the Court's construction ofthe term "image" will also resolve their
dispute with respect to the phrase "the images captured at a same position as a prior displayed
image and depicting a closer or further away field of view than that of the prior displayed image."
(See Tr. at 7) Having resolved the parties' dispute with respect to "image," the Court will not
separately construe the "images captured" phrase.
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and the inventors did not attempt to distinguish the claims on that basis. (D.I. 242 at 8)
Defendants also propose limiting the term "image" to the frame captured by the camera
-nothing more and nothing less. (D.I. 238 at 4-5; Tr. at 97-100) According to Defendants,
"images that are viewed are precisely those images that are captured, not images created by
piecing together the captured images." (D.I. 238 at 4) Defendants seek to exclude partial frames
and multiple frames stitched or superimposed together from the scope of the term "image."
Although the Court agrees that an "image" is captured by a camera, the Court will not narrow
this term as Defendants propose. The specification supports the conclusion that combined
images are within the scope of the invention. (See '289 patent, Col. 2, 11. 6-8) ("Devices are
known which combine images by matching features common to each of two or more images, i.e.
superimposing.") Nothing in the specification clearly excludes partial or combined images from
the scope of the claims.
Having resolved the parties' disputes, the Court concludes that no construction of the
term "image" is required.

D.

"orientation of the image" [claims 1, 2, 6, and 8]

Plaintiff's Proposed
Construction

This phrase is not ambiguous and does not require construction.
If the court determines that this phrase requires construction, the
court should construe it to mean: "pitch, roll, or yaw of the
image"

Defendants' Proposed
Construction

"pitch, roll, and yaw of the camera when the video frame was
recorded or captured"

Court's Construction

Plain and ordinary meaning

There are two issues for the Court: (1) whether orientation refers to one of pitch, roll, or
yaw, or instead refers to all three of those parameters; and (2) whether the word "orientation"

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refers to the orientation of the camera when the image was captured, or orientation of the image
itself.
As to the first issue, the Court concludes that "orientation of the image" does not require
all three parameters (pitch, roll, and yaw). The Court's construction is consistent with use of the
word "orientation" in the claims. See Phillips, 415 F .3d at 1314 ("claim terms are normally used
consistently throughout the patent"). Defendants contend that "common sense" requires limiting
the claim to all three orientation parameters, and that not knowing all three parameters would
"frustrate the objectives" of the invention. (D.I. 200 at 15-16) But, as even Defendants

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acknowledge, there are several claims (e.g., claim 10) that require measuring only one parameter:
the yaw orientation. (Tr. at 141) Defendants' proposed construction is inconsistent with the
language of claim 10 and would render that claim nonsensical.
Defendants contend that the'289 patent explicitly defines "orientation" as requiring all
three parameters. (D.I. 200 at 15) (citing Col. 22, ll. 14-16 ("Activating the Orientation View
command causes a child window 10180 to open up, displaying the orientation ofthe camera

(pitch, roll, and yaw) graphically.") (emphasis added)) The Court does not agree. The quoted
statement is made in the context ofFIG. 19, which describes a specific embodiment of the
movie-mapper program. In the embodiment of FIG. 19, all three parameters (pitch, roll, and
yaw) are recorded, and thus all three parameters are displayed. There is no indication in the
specification that the inventors intended to limit the scope of their claims to the embodiment
described in FIG. 19.
The prosecution history also supports the Court's construction. For example, the original
parent application (08/383,471) to the '289 patent included claims to the "orientation of said

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camera." The Examiner rejected those claims over Kojima, which disclosed "orientation" in
only one direction- the azimuth. (D.I. 180-3 at TRS000000662-664 and 668) In response, the
applicants amended the claims to specify that "orientation of said camera" includes "at least yaw
and pitch data." If the phrase "orientation of said camera" already required all three parameters
(pitch, roll, and yaw), as Defendants contend, the amendment would be redundant and
inconsistent with the specification. Moreover, other claims in the '471 application (e.g., claim
21) expressly required "orientation of said camera" to be defined "about three axes of rotation."
Defendants also contend that the phrase "orientation of the image" refers to the
orientation of the camera at the time the image was captured. (D.I. 238 at 8) Defendants'
proposed construction would, thus, replace the word "image" with the word "camera." The
Court will not rewrite the claims as Defendants propose. 4
The Court's conclusion is supported by the claim language. For instance, claim 1 of the
'289 patent refers to both "orientation ofthe image" and "camera position and orientation."
Since both "orientation of the image" and "camera orientation" are found in the same claim,
these terms are presumed to have different meaning. See Acumed LLC v. Stryker Corp., 483 F.3d
800, 807 (2007). Defendants offer no evidence to rebut this presumption.

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Plaintiff does not dispute that there is a relationship between the "orientation of the image" and
the orientation of the camera. (Tr. at 118)

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E.

"yaw orientation of the respective image" [claims 10, 22, 23, 35, 43, 51, and
77]

Plaintiff's Proposed
Construction

This term is not ambiguous and does not require construction

Defendants' Proposed
Construction

"yaw of the camera when the image was recorded"

Court's Construction

Plain and ordinary meaning

The parties' dispute over the phrase "yaw orientation of the respective image" is
substantively identical to their dispute over "orientation of the image." The Court's resolution is
the same as well.
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"camera path" [claims 1, 2, 10, 23, 31, 35, and 43]

Plaintiff's Proposed
Construction

"the path along which the camera traveled"

Defendants' Proposed
Construction

"sequential positions of a camera that recorded or captured the
video frames"

Court's Construction

"the path along which the camera has traveled"

Defendants' concern with Plaintiff's construction is that it may include portions of a
predetermined path where the camera has not traveled. (Tr. at 160-61) To address this concern,
the Court will modify Plaintiff's construction to make clear that the claimed "camera path"
includes only the path along which the camera has traveled, and does not include any portion of a
path over which the camera has not yet traveled. At the hearing, the parties agreed that the
Court's clarification would resolve their dispute. (Tr. at 162-63)

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G.

"multiple images aligned in a panorama" [claim 18]

Plaintiff's Proposed
Construction

This phrase is not ambiguous and does not require construction.
If the court determines that this phrase requires construction, the
only term that requires construction is the term "images", which
the parties have already proposed constructions

Defendants' Proposed
Construction

"two or more stored video frames arranged next to each other on
a display"

Court's Construction

Plain and ordinary meaning

The sole dispute is whether a "panorama" should be construed narrowly to cover only
frames that are arranged next to each other, as Defendants contend. The Court concludes that, in
the context of the '289 patent, the word "panorama" does not have such a narrow meaning.
Defendants' proposed construction is largely based on the example of a "panoramic
view" shown in FIG. 20 of the '289 patent, in which three frames are arranged next to each other
on a display. (D.I. 200 at 17-19) Defendants believe that the claims should be limited to this
specific embodiment. There is no evidence, however, that the inventors intended to limit the
claims to this embodiment. See Liebel-Flarsheim, 358 F.3d at 906. Rather, the specification
explicitly acknowledges that "[ d]evices are known which combine images by matching features
common to each of two or more images, i.e. superimposing." ('289 patent at Col. 2, 11. 6-8) The
specification further explains that position and orientation information of the camera may be used
to "permit[] images to be joined or sequenced for viewing .... " (!d. at Col. 2, 11. 20-26)
According to the specification, this is an improvement over the prior art because it can help to
avoid distortions that can occur when attempting to join images by matching their edges. (!d.)

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However, nothing in the specification requires limiting a panorama to only two or more images
arranged next to each other.
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The prosecution history also supports the Court's construction. For example, the
Kojima patent- cited by the Examiner as disclosing a "panorama"- describes panoramas as
being formed from "images [that] are partially overlapped with adjacent ones." (U.S. Pat. No.
5,262,867 at Col. 1, 11. 39-44)

H.

"launch pad control" [claims 19, 32, and 43]

Plaintiff's Proposed
Construction
Defendants' Proposed
Construction

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"selectable control overlaid on an image for executing an
associated application program"
"a control that automatically executes an associated application
program when the spatial location of a displayed frame lies
within a defined area for the control"

Court's Construction

"selectable control overlaid on an image for executing an
associated application program"

Defendants contend that a launch pad control must automatically execute an associated
application program when a frame is selected. Plaintiff responds that a launch pad control only
needs to be "selectable" and, thus, may be user activated. The Court agrees with Plaintiff.
The starting point for claim construction is the claim language. See Interactive Gift
Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001). The claims require a
computing device "to receive control signals in response to selection of at least one of the one or
more launch pad controls." (See, e.g., claim 19) (emphasis added) The associated application
program is executed "in response to receiving the control signals." (Id.) Because the plain
language of the claims requires "selection" of the launch pad control before the application
program is executed, the Court will not limit the claims as Defendants propose. The portion of
the specification cited by Defendants does not explicitly require the associated application
program to be "automatically execute[ d]," and, thus, does not clearly and unambiguously limit
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the scope of the claims.
I.

"associated application program" [claims 19, 32, and 43]

Plaintiff's Proposed
Construction

This phrase is not ambiguous and does not require construction.
If the court determines that this term requires construction, the
court should construe it to mean: "application program
associated with launch pad control"

Defendants' Proposed
Construction

"an independently executable program separate from the
spatially referenced photographic system"

Court's Construction

Plain and ordinary meaning

At the hearing, the parties agreed that the phrase "associated application program" does
not require construction. (See Tr. at 166-67)
J.

"means for displaying" [claims 1 and 2]

Plaintiff's Proposed
Construction

Function: "displaying, along with an image, a view of the
camera path and an indication of the camera position and
orientation when the image was recorded"
Structure: A computer programmed to implement in
conjunction with a computer graphic user interface the Plan or
Elevation functions and any of the Yaw, Pitch, Roll or
Orientation functions of the Movie Mapper program 325,
disclosed in Figures 19 to 35, Col. 3:14-38 and Col. 19:64 to
Col. 74 ofthe '289 patent; Appendix C in the '471 application,
and Figures 25-30 of the '471 application

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Defendants' Proposed
Construction

Function: "displaying, along with an image, a view of the
camera path and an indication of the camera position and
orientation when the image was recorded"
Structure: plan view: XY child window 10120 ofFig. 19, plan
view: XY child window 2526 ofFig. 25 ofUS. App. Ser. No.
08/383,471 ("the '471 application"), and software algorithm
described in PLANVIEW.H and PLANVIEW.CPP in the '471
application; indications 2536 ofFig. 25 ofthe '471 application,
orientation window 10180 ofFig. 19, and software algorithm
described in ORIENTVW.H ORIENTVW.CPP from the '471
application

Court's Construction

Function: "displaying, along with an image, a view of the
camera path and an indication of the camera position and
orientation when the image was recorded"
Structure: A computer programmed to implement in
conjunction with a computer graphic user interface the Plan or
Elevation functions and any of the Yaw, Pitch, Roll or
Orientation functions of the Movie Mapper program 325,
disclosed in Figures 19 to 35, Col. 3:14-38 and Col. 19:64 to
Col. 74 ofthe '289 patent; Appendix C in the '471 application,
and Figures 25-30 of the '471 application

The parties agree that the "means for displaying" is a means-plus-function term within
the meaning of35 U.S.C. § 112, ,-r 6. The parties also agree that the function ofthis term is
"displaying, along with an image, a view of the camera path and an indication of the camera
position and orientation when the image was recorded." The parties disagree, however, as to the
specific structure that corresponds to the identified function. The Court will adopt Plaintiffs
proposed construction.
The Court's construction is supported by the specification. The parties agree that the
software algorithm for displaying the "plan view" is part of the structure. Plaintiff believes that
the software algorithm for the "elevation view" should be included as well. The Court agrees.

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prosecution history clearly links or associates that structure to the function recited in the claim."
B. Braun Medical, 124 F.3d at 1424. Here, the specification states that "[a]ctivating the
Elevation command causes an Elevational View: XZ child window 10130 to open up, displaying
the camera path of movement as seen from the side, rather than from the top. The display in all
other respects is identical to the plan view display just described." ('289 patent at Col. 21, ll. 5256) The specification thus clearly links the software algorithm for the elevational view to the
function of displaying "a view of the camera path."
With respect to the function of displaying "an indication of the camera position and
orientation," Defendants propose to limit the corresponding structure to include only the software
algorithm necessary to display orientation window 10180 ofFIG. 19. Defendants' proposed

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construction would exclude other disclosed orientation windows (e.g., Yaw View window
10140) because those windows only display a single orientation parameter (yaw, pitch, or roll),
and, as explained above, Defendants would limit the term "orientation" to require all three
parameters. (D.I. 200 at 15-16) The Court has already rejected Defendants' argument with
respect to "orientation." For the same reasons, the Court will reject Defendants' proposed
structure for displaying "an indication of the camera position and orientation."
Finally, contrary to Defendants' argument, Plaintiffs construction does not encompass
"the entire movie mapper program." (D.I. 238 at 19) Rather, Plaintiffs construction only covers
"the Plan or Elevation functions and any of the Yaw, Pitch, Roll or Orientation functions of the
Movie Mapper program," which are the functions that are necessary to display "a view of the
camera path" and "an indication of the camera position and orientation."

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K.

Arguments Under 35 U.S.C. § 112

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Defendants contend that certain claim terms are indefinite under 35 U.S.C. § 112. In
general, these claim terms fall into two categories: (1) claim terms that include the word
"substantially;" and (2) claim terms that include the word "generally." (D.I. 200 at 27-30) The
Court is not persuaded with respect to either category. See generally Personalized User Model

LLP v. Google, Inc., 2012 WL 295048, at *22 (D. Del. Jan. 25, 2012) (stating Court "does not
permit summary judgment arguments, including indefiniteness arguments, during the claim
construction phase of the litigation"). A claim term is sufficiently definite to be construed unless
it is "insolubly ambiguous." Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 124950 (Fed. Cir. 2008); see also Pharmastem Therapeutics, Inc. v. Viacell, Inc., 2003 WL 124149, at
* 1 n.l (D. Del. Jan. 13, 2003). Defendant has failed to establish "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." Halliburton, 514 F.3d at 1249-50.
Having found that the terms "substantially" and "generally," as used in the '289 patent,
are not insolubly ambiguous, the Court concludes that no further construction for these claim
terms is required.

IV.

CONCLUSION
For the foregoing reasons, the Court will construe the disputed claim terms of the '289

patent consistent with this Memorandum Opinion. An appropriate Order follows.

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