Openwave Systems Inc. v. Apple Inc. et al
MEMORANDUM OPINION regarding the claim construction of the three disputed terms. Within five days the parties should submit a proposed order, consistent with this opinion, suitable for submission to the jury. Signed by Judge Richard G. Andrews on 2/19/2014. (nms)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
Openwave Systems, Inc.,
Civil Action No. 11-765-RGA
Apple Inc., Research In Motion Ltd. and
Research In Motion Corp.,
Rodger D. Smith, II, Esq., Morris, Nichols, Arsht & Tunnell LLP, Wilmington, DE; Theodore
Stevenson, III, Esq. (argued), McKool Smith, P.C., Dallas, TX; John Shumaker, Esq., McKool
Smith, P.C., Austin, TX, attorneys for Plaintiff.
Mary Matterer, Esq., Morris James LLP, Wilmington, DE; Y. Ernest Hsin, Esq. (argued),
Gibson, Dunn & Crutcher, Palo Alto, CA; Stuart M. Rosenberg, Esq., Gibson, Dunn & Crutcher,
Palo Alto, CA, attorneys for Defendant Apple Inc.
David E. Moore, Esq., Potter, Anderson & Corroon LLP, Wilmington, DE; Morgan Chu, Esq.
(argued), Irell & Manella LLP, Los Angeles, CA; Alan J. Heinrich, Esq., Irell & Manella LLP,
Los Angeles, CA, attorneys for Defendants Research in Motion Ltd. and Research in Motion
Pending before this Court is the issue of claim construction of three disputed terms found
in U.S. Patent No. 6,405,037, U.S. Patent No. 6,430,409, and U.S. Patent No. 6,625,447.
On August 31, 2011, Openwave Systems, Inc, now known as Unwired Planet
("Plaintiff'), filed a patent infringement action (No. 11-765 D.l. 1) against Apple Inc., Research
in Motion Ltd., and Research in Motion Corp. ("Defendants"). The Court has considered the
Parties' Claim Construction Briefs (D.I. 36, 44, 56, 58) and heard oral argument on November
25, 2013. (D.I. 61).
"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) (en bane) (internal quotation marks omitted). "'[T]here is no magic formula or
catechism for conducting claim construction.' Instead, the court is free to attach the appropriate
weight to appropriate sources 'in light of the statutes and policies that inform patent law."'
SoftView LLC v. Apple Inc., 2013 WL 4758195 (D. Del. Sept. 4, 2013) (quoting Phillips, 415
F.3d at 1324). When construing patent claims, a matter of law, a court considers the literal
language of the claim, the patent specification, and the prosecution history. Markman v.
Westview Instruments, Inc., 52 F.3d 967,977-80 (Fed. Cir. 1995) (en bane), affd, 517 U.S. 370
(1996). Of these sources, "the 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."
Phillips, 415 F.3d at 1315 (internal quotations and citations omitted).
Furthermore, "the 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." Phillips, 415 F.3d at 1312-13 (internal citations and quotation marks omitted).
"[T]he ordinary meaning of a claim term is its meaning to [an] ordinary artisan after reading the
entire patent." !d. at 1321 (internal quotation marks omitted). "In some cases, the ordinary
meaning of claim language as understood by a person of skill in the art may be readily apparent
even to lay judges, and claim construction in such cases involves little more than the application
of the widely accepted meaning of commonly understood words." !d. at 1314 (internal citations
A court may consider extrinsic evidence, which "consists of all evidence external to the
patent and prosecution history, including expert and inventor testimony, dictionaries, and learned
treatises," in order to assist the court in understanding the underlying technology, the meaning of
terms to one skilled in the art and how the invention works. !d. at 1317-19 (internal quotation
marks and citations omitted). However, extrinsic evidence is less reliable and less useful in claim
construction than the patent and its prosecution history. !d.
Finally, "[a] claim construction is persuasive, not because it follows a certain rule, but
because it defines terms in the context of the whole patent." 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. Int 'I
Trade Comm 'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007) (internal quotation marks and citation
III. CONSTRUCTION OF DISPUTED TERMS
There are three terms at issue here, "mobile device" in the '037 patent, "wireless mobile
telephone" in the '409 patent, and "two way communication device" in the '409 and '44 7
patents. The parties agree that these terms should be construed as a group, and for convenience
will be referred to as "mobile device." (D.I. 36 at 7). There is only one issue, whether the terms
are to be given their plain and ordinary meaning, as Plaintiff urges, or whether the patents
disclaim mobile devices containing "computer modules," as Defendants contend. I note that the
construction ofthese terms has been previously litigated in the International Trade Commission
("ITC"). There, the Administrative Law Judge ("ALJ") sided with Defendants, construing
"mobile device" as a "portable wireless two-way communication device that does not contain a
computer module." (D.I. 38-5 at 54). While not binding, I find the ALJ's reasoning persuasive,
and I construe the terms in the same fashion.
The patents at issue are all continuations ofU.S. Patent No. 5,808,415, which was filed
on December 11, 1995. 1 Generally, the patents teach a mobile ecosystem in which remote
servers deliver applications to wireless mobile devices. At the time period in which the patents
were filed, mobile devices could only run the applications which were burned into their ROMs at
the factory or which were present in a ROM card. ('409 patent 2:25-30). In order to run different
applications, the ROM would need to be re-burned or a new memory card installed. The patents
teach using a client module to communicate with a server in order to allow mobile devices to
access more applications. ('409 patent 3:60-67). This results in an open platform, because
applications are not tied to particular devices or features ofthe network. ('409 patent 3:60-4:33).
Essentially, this is a server side solution which allows mobile devices to leverage the greater
processing power present on servers. In fact, the goal of the invention was to overcome the
limitations present in prior art devices which combined a computer module with a wireless
The patents share a common specification. (D.I. 36 at 11).
communication module. ('409 patent 3:30-33).
The present issue is whether the claims cover mobile devices which contain a computer
module, or whether the specification disclaimed embodiments containing a computer module. As
an initial matter, Plaintiff objects to the ALJ's claim construction because it reads out a preferred
embodiment, namely a mobile device containing a microcontroller. (D.I. 36 at 9). This argument
is without merit. The patents themselves distinguish between a microcontroller and a computer
module. For instance, the '409 patent describes a cellular telephone which "utilizes only a
microcontroller ... and does not require a separate computer module as in the prior art." (' 409
patent at 15:60-63 ). While a microcontroller may indeed be a type of computer module, as
pointed out by Plaintiff, see D.l. 36 at 10, the specification distinguishes between the two. The
ALJ's construction, when read in light of the specification, makes clear that only computer
modules, not including microcontrollers, are outside the scope ofthe claims. The ALJ's
construction therefore does not read out the preferred embodiment of the invention.
Plaintiffs main argument is that the specification does not disclaim mobile devices
having a computer module because the statements in the specification are not clear nor
unambiguous. See Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1306
(Fed. Cir. 2011) ("[T]o disavow claim scope, the specification must contain expressions of
manifest exclusion or restriction, representing a clear disavowal of claim scope.") (internal
citation and quotation marks omitted). Again, this argument fails to carry the day. "Where the
specification makes clear that the invention does not include a particular feature, that feature is
deemed to be outside the reach of the claims of the patent, even though the language of the
claims, read without reference to the specification, might be considered broad enough to
encompass the feature in question." SciMed Lifo Sys., Inc. v. Advanced Cardiovascular Sys., Inc.,
242 F.3d 1337, 1341 (Fed. Cir. 2001).
Here, the specification makes clear that the invention does not encompass mobile devices
containing computer modules. The following excerpts exemplify that such combinations are
Fundamental design and cost problems arising directly from the approach taken by the
designers of these intelligent communication devices have limited widespread market
acceptance of these devices. The combination of a wireless communication module with
a computing module leads to a device that is too bulky, too expensive, and too inflexible
to address the market requirements. ('409 patent at 1:52-60).
According to the principles of this invention, the prior art limitations of combining a
computer module with a wireless communication module have been overcome. In
particular, a two-way data communication device of this invention, such as a cellular
telephone, two-way pager, or telephone includes a client module that communicates with
a server computer over a two-way data communication network. ('409 patent at 3:30-37).
The client module of this invention is lightweight, and thus requires only lightweight
resources in a two-way data communication device. Consequently, the client module can
use existing resources in such a device and therefore does not add to the cost of the twoway data communication device. ('409 patent at 6:27-33).
The client module is small ... and requires only low processing power congruent with the
memory chips and built-in microcontrollers in two-way data communication
devices ... Thus, unlike the prior art attempts at an intelligent telephone, the cost, size, and
battery life of either cellular telephones, two-way pagers, or telephones that incorporate
this invention are not adversely affected. ('409 patent at 9:9-18).
While Plaintiff maintains that these excerpts merely tout the advantages ofthe invention, the
Court interprets these statements as clear disparagement of the prior art. Such "repeated
derogatory statements ... reasonably may be viewed as a disavowal of that subject matter from the
scope ofthe [p]atent's claims." Chicago Bd. Options Exch., Inc. v. Int'l Sec. Exch., LLC, 677
F.3d 1361, 1372 (Fed. Cir. 2012) (citing Honeywell Int'l, Inc. v. ITT Indus., Inc., 452 F.3d 1312,
1319 (Fed. Cir. 2006)). Lastly, and most tellingly, the patent itself specifies that, "cellular
telephone 100 is not a combination of a computer module and a wireless communication module
as in prior art attempts to create an intelligent telephone" ('409 patent at 14:45-50), and that,
"cellular telephone 100 utilizes only a microcontroller found in telephone 100 and does not
require a separate computer module as in the prior art." ('409 patent at 15:60-63).
Lastly, Plaintiff argues that if the Court finds a surrender of subject matter, the following
construction should be adopted: "a portable wireless two-way communication device that does
not require a separate computer module but uses the available circuitry and software resources of
said two-way communication device for voice and data operations." (D.I. 56 at 5). It appears that
this construction is an attempt to include devices where the computer module is integrated with
the wireless communication module. The fact that now, almost 15 years later, circuit design has
advanced to the point where computer modules may be integrated with wireless communication
modules is irrelevant. The patents disclaim mobile devices containing computer modules. I
construe the term "mobile device" 2 as a "portable wireless two-way communication device that
does not contain a computer module." 3
Within five days the parties should submit a proposed order, consistent with this opinion,
suitable for submission to the jury.
As well as the other "mobile device" terms.
I make clear that this construction does not read out embodiments including microcontrollers.
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