Dragon Intellectual Property LLC v. Apple Inc.

Filing 101

MEMORANDUM OPINION providing claim construction for the multiple terms in U.S. Patent No. 5,930,444 that are in dispute. Within five days the parties shall submit a proposed order consistent with this Memorandum Opinion suitable for submission to the jury. Signed by Judge Richard G. Andrews on 9/9/2015. Associated Cases: 1:13-cv-02058-RGA et al.(nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
DRAGON INTELLECTUAL PROPERTY,
LLC,
Plaintiff,
Civil Action No. 13-2058-RGA

v.
APPLE, INC.,
Defendant.
DRAGON INTELLECTUAL PROPERTY,
LLC,
Plaintiff,

Civil Action No. 13-2061-RGA

v.
AT&T SERVICES, INC.,
Defendant.
DRAGON INTELLECTUAL PROPERTY,
LLC,
Plaintiff,

Civil Action No. 13-2062-RGA

v.
CHARTER COMMUNICATIONS, INC.,
Defendant.
DRAGON INTELLECTUAL PROPERTY,
LLC,
Plaintiff,
V.

COMCAST CABLE COMMUNICATIONS,
LLC,
Defendant.

Civil Action No. 13-2063-RGA

DRAGON INTELLECTUAL PROPERTY,
LLC,
Plaintiff,

v.

Civil Action No. 13-2064-RGA

COX COMMUNICATIONS, INC.,
Defendant.
DRAGON INTELLECTUAL PROPERTY,
LLC,
Plaintiff,
Civil Action No. 13-2065-RGA

v.
DIRECTTV LLC,
Defendant.
DRAGON INTELLECTUAL PROPERTY,
LLC,
Plaintiff,

Civil Action No. 13-2068-RGA
v.
TIME WARNER CABLE, INC,
Defendant.
DRAGON INTELLECTUAL PROPERTY,
LLC,
Plaintiff,
Civil Action No. 13-2069-RGA
v.
VERIZON COMMUNICATIONS, INC.,
Defendant.

2

MEMORANDUM OPINION

Richard D. Kirk, Esq., Stephen B. Brauerman, Esq., Vanessa R. Tiradentes, Esq., Sara E.
Bussiere, Esq., Bayard, P.A., Wilmington, DE; Robert E. Freitas, Esq., Jason S. Angell, Esq.
(argued), QuynhChi P. Nguyen, Esq., Freitas Angell & Weinberg LLP, Redwood Shores, CA,
attorneys for Plaintiff Dragon Intellectual Property, LLC.
Richard L. Horwitz, Esq., David E. Moore, Esq., Bindu A. Palapura, Esq., Potter Anderson &
Corroon LLP, Wilmington, DE, attorneys fpr Defendant Apple Inc.
Jack B. Blumenfeld, Esq., Rodger D. Smith II, Esq., Ethan H. Townsend, Esq., Morris, Nichols,
Arsht & Tunnell LLP, Wilmington, DE; Bryant C. Boren, Jr., Esq., Michell Eber, Esq., Baker
Botts LLP, Palo Alto, CA, attorneys for Defendant AT&T Services, Inc.
Jack B. Blumenfeld, Esq., Karen Jacobs, Esq., Ethan H. Townsend, Esq., Morris, Nichols, Arsht
& Tunnell LLP, Wilmington, DE; Michael Murray, Esq., Winston & Strawn, New York, NY;
Alexandra McTague, Esq., Winston & Strawn, Silicon Valley, CA, attorneys for Defendants
Charter Communications, Inc., Comcast Cable Communications, LLC, Cox Communicatio.p.s,
Inc., Time Warner Cable, Inc., and Verizon Communications Inc.
Steven J. Balick, Esq., Lauren E. Maguire, Esq., Andrew C. Mayo, Esq., Ashby & Geddes,
Wilmington, DE; Michael D. Jay, Esq. (argued), Nandan R. Padmanabhan, Esq., Boies, Schiller
& Flexner LLP, Santa Monica, CA; Kevin G. McBride, Esq., Akin Gump Strauss Hauer & Feld
LLP, Irvine, CA; John Wittenzelner, Esq., Akin Gump Strauss Hauer & Feld LLP, Philadelphia,
PA, attorneys for Defendant DirecTV LLC.
Kelly E. Farnan, Esq., Richards, Layton & Finger, P.A, Wilmington, DE, attorney for Defendant
Time Warner Cable, Inc.

September

!}_,

2015
3

Mi.~D

STRICT JUDGE:

Presently before the Court is the issue of claim construction of multiple terms in U.S.
Patent No. 5,930,444 ("the '444 patent"). The Court has considered the Parties' Joint Claim
Construction Brief. (D.I. 78). 1 The Court heard oral argument on May 22, 2015. (D.I. 94).

I.

BACKGROUND
On December 20, 2013, Plaintiff Dragon Intellectual Property, LLC filed ten related

patent infringement lawsuits against Apple, Inc. (C.A. No. 13-2058), AT&T Services, Inc. (C.A.
No. 13-2061), Charter Communications, Inc. (C.A. No. 13-2062), Comcast Cable
Communications, LLC (C.A. No. 13-2063), Cox Communications, Inc. (C.A. No. 13-2064),
DirecTV LLC (C.A. No. 13-2066), DISH Network, LLC (C.A. No. 13-2066), Sirius XM Radio,
Inc. (C.A. No. 13-2067), Time Warner Cable, Inc. (C.A. No. 13-2068), and Verizon
Communications, Inc. (C.A. No. 13-2069). On April 10, 2015, I stayed the action against DISH
Network pending inter partes review. (D.I. 86). On May 13, 2015, I stayed the action against
Sirius XM Radio. (C.A. 13-2067 D.I. 102).

II.

LEGALSTANDARD
"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. AWHCorp., 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, at *1 (D. Del. Sept. 4, 2013) (quoting Phillips,
415 F.3d at 1324). When construing patent claims, a court considers the literal language of the

1

Unless otherwise noted, citations to the docket are to C.A. 13-2058.

1

claim, the patent specification, and the prosecution history. Markman v. Westview Instruments,

Inc., 52 F.3d 967, 977-80 (Fed. Cir. 1995) (en bane), aff'd, 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 quotation marks and citations omitted).
"[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."

Id at 1312-13 (internal quotation marks and citations omitted). "[T]he ordinary meaning of a
claim term is its meaning to [an] ordinary artisan after reading the entire patent." Id 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." Id. at 1314 (internal citations omitted).
When a court relies solely upon the intrinsic evidence-the patent claims, the
specification, and the prosecution history-the court's construction is a determination of law.

See Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015). The court may also
make factual findings based upon consideration of extrinsic evidence, which "consists of all
evidence external to the patent and prosecution history, including expert and inventor testimony,
dictionaries, and learned treatises." Phillips, 415 F.3d at 1317-19 (internal quotation marks and
citations omitted). Extrinsic evidence may assist the court in understanding the underlying
technology, the meaning of terms to one skilled in the art, and how the invention works. Id

2

Extrinsic evidence, however, is less reliable and less useful in claim construction than the patent
and its prosecution history. Id.
"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'/ Trade

Comm'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007) (internal quotation marks and citation omitted).

III.

THE '444 PATENT
Claim I is representative and reads:
1. A recording and playback apparatus for the substantially immediate and seamless
resumption of interrupted perception of broadcast program information based upon
audio or video signals, or both, without missing the program information presented
during the interruption, comprising:
means for powering the apparatus;
a keyboard having a record key and a playback key;
a control circuit coupled responsively to said keyboard;
a memory unit coupled responsively to said control circuit, said memory unit
having a medium for storage of information, said storage medium having structure
which enables substantially random access to information stored in said medium for
retrieval of the stored information from said storage medium;
at least one input, said input being connected to a user's audio/video program signal
source and also being coupled to said memory unit so as to enable program
information presented by the signal source to be transferred to and stored in said
memory unit; and
at least one output, said output being connected to a user's audio or video display
device or both, said output further being connected to said memory unit so as to
enable the transfer of program information from said memory unit to the user's
display device, said control circuit being configured so that substantially
simultaneous recording and playback of program information is achieved when said
record key is first actuated to begin a recording by initiating storage of the
broadcast program information in said memory unit, and said playback key is
subsequently and solely actuated to begin time delay playback of the recording
from the beginning thereof by initiating retrieval of the stored program information
in said memory unit, with the interval of the time delay being the same as the time
3

elapsed between the actuation of said record key and the subsequent actuation of
said playback key.
('444 patent, col. 8, IL 28-64; Mar. 15, 2013 Certificate of Correction).
IV.

CONSTRUCTION OF DISPUTED TERMS

1.

"broadcast program information"
a.
b.

Defendants' proposed construction: "programming information carried by the
input signal source" (proposal of Apple, Charter, Comcast, Cox, DirecTV, Time
Warner, and Verizon); "programming information transmitted to all users and
carried by the input signal source" (proposal of AT&T)

c.
2.

Plaintiff's proposed construction: no construction necessary

Court's construction: programming information transmitted to all users

"the broadcast program information"
a.

Plaintiff's proposed construction: the broadcast program information presented
after the record key is actuated and before the playback key is actuated

b.

Defendants' proposed construction: Defendants assert that all instances of
"broadcast program information" in the claims have the same meaning

c.

Court's construction: all instances of "broadcast program information" in the
claims have the same meaning

Plaintiff argues that "the broadcast program information" appearing in the body of the
claim refers to a particular portion of "broadcast program information." (D.I. 94 at 62).
Specifically, Plaintiff argues that "the broadcast program information" is the portion of broadcast
program information presented after the user presses the record key and before the user presses
the playback key. (Id.). Plaintiff maintains that "the broadcast program information" must refer
to a specific portion of broadcast program information in order to give meaning to the word
"the." (Id. at 65).
Plaintiff further argues that the surrounding claim language demonstrates that "the
broadcast program information" refers to a specific segment of broadcast program information.

4

(D.I. 78 at pp. 62-63). The claim recites that the record key is actuated "to begin a recording by
initiating storage of the broadcast program information in said memory unit." ('444 patent, col.
8, 11. 55-57). Plaintiff maintains that "the broadcast program information" is therefore the
specific program information whose storage is initiated upon actuation of the record key. (D.I.
78 at p. 64).
Defendants respond that "broadcast program information" should have the same meaning
throughout the claim. (Id at p. 19). Defendants note that "the same terms appearing in different
portions of the claims should be given the same meaning." (Id at p. 20 (quoting Fin Control

Sytems Pty, Ltd v. OAM, Inc., 265 F.3d 1311, 1318 (Fed. Cir. 2001))). Defendants argue that, if
"the broadcast program information" were not the same as "broadcast program information" in
the preamble, then "the broadcast program information" would lack an antecedent basis. (Id).
Defendants maintain that the prosecution history supports that the two uses of the terms have the
same meaning. (Id at p. 21 ). Defendants note that Plaintiff requested a certificate of correction
to add "broadcast" to the preamble. (Id). Defendants maintain Plaintiff did so to fix the lack of
antecedent basis for "the broadcast program information." (Id.).
Defendants further argue that Plaintiff's proposed construction seeks to recapture
continuous recording systems, which applicants disclaimed during prosecution. (Id. at p. 22).
Defendants maintain that Plaintiff's construction would include devices that record content
before the record key is actuated. (D.I. 94 at 77). Defendants argue that the applicants
repeatedly disclaimed such systems to overcome a prior art rejection. (Id. at 77-78).
Defendants offer two different constructions. AT&T argues that broadcast program
information is "transmitted to all users." (D.I. 78 at p. 24). AT&T introduced a technical
dictionary from the relevant period defining "broadcast message" as a "message from one user

5

sent to all users." (D.I. 79 at 59). Another technical dictionary defines "broadcast" as a
"television or radio transmission intended for public reception." (Id at 55).
The other Defendants argue that programming information is "carried by the input signal
source." (D.I. 78 at p. 17). Defendants argue that the surrounding claim language makes clear
that the programming information is carried by the input source. (Id at pp. 21-22).
I agree with Defendants that all uses of "broadcast program information" should have the
same meaning. Plaintiff has not provided a good reason to depart from this well-established
presumption. Plaintiff contends that Defendants are operating under the "mistaken idea" that
"the broadcast program information" refers back to the preamble. (D.I. 78 at p. 66). I do not
think that idea is mistaken. If "the broadcast program information" did not refer back to the
preamble, it would lack an antecedent basis.
The prosecution history further supports a construction that does not limit "the broadcast
program information" to the specific portion of programming between when the user presses the
record and playback keys. Plaintiffs construction would include continuous recording devices
(i.e., devices that are always recording content and storage is never initiated or stopped).

Plaintiff criticizes Defendants for attempting to litigate prosecution history estoppel at the claim
construction stage. (Id at p. 16). That argument misses the mark, however, because Defendants
are arguing prosecution disclaimer, not prosecution history estoppel. Prosecution disclaimer is a
core canon of claim construction. "The doctrine of prosecution disclaimer is well established in
Supreme Court precedent, precluding patentees from recapturing through claim interpretation
specific meanings disclaimed during prosecution." Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d
1314, 1323 (Fed. Cir. 2003).

6

In this case, the applicants clearly and unequivocally disclaimed continuous recording
devices. I have only once seen a clearer case of prosecution disclaimer. 2 The Patent and
Trademark Office rejected the patent six times based on U.S. Patent No. 5,134,499 ("Sata").
(D.I. 94 at 27). Sata teaches a recording device that "continuously records the video data
concerning the television program of the channel tuned by the television tuner 1." (' 499 patent,
col. 6, 11. 47-49). The applicants repeatedly distinguished Sata on the basis that Sata records
continuously, and the claimed device does not begin recording until the user actuates the record
key. (D.I. 78 at pp. 7-8,

52~54,

58, 77).

The applicants amended the claim from "said record key is first actuated to initiate
storage of the program information" to "said record key is first actuated to begin a recording by
initiating storage of the program information." (C.A. 13-2062 D.I. 79-3 at p. 292). The
applicants explained the amendment: "Claim 1 has been further amended to recite how the
structure of the instant invention begins a recording upon a first actuation of the record key ....
Accordingly, the instant invention as claimed is further distinguished from the structure of Sata,
wherein recording ... is continuous, and never initiated or stopped .... " (Id. at p. 294). The
prosecution history is replete with such disclaimers. (See, e.g., id. at pp. 296-97; C.A. 13-2062
D.I. 79 at p. 243; C.A. 13-2062 D.I. 79-2 at pp. 248, 271). Plaintiff cannot now use claim
construction to recapture continuous recording devices.
I also agree with AT&T's additional argument that broadcast program information is
"transmitted to all users." I find as a fact, based on the technical dictionaries AT&T introduced,
that "broadcast" information is information "transmitted to all users." AT&T's construction
gives meaning to "broadcast." I do not think it is necessary to construe "broadcast program

2
Vehicle Operation Technologies LLC v. Am. Honda Motor Co. Inc., 67 F. Supp. 3d 637, 650-51 & n.6 (D. Del.
2014).

7

information" as being carried by the input source. As Defendants note, the surrounding claim
language adds that requirement. It does not need to be repeated in the construction of this term.
I will therefore construe "broadcast program information" as "programming information
transmitted to all users." I will not further construe "the broadcast program information," as I
find that all instances of "broadcast program information" have the same meaning.
3.

"means for powering the apparatus"
a.

Plaintiff's proposed construction: Function: powering the apparatus. Structure:
AC power source, or alternative power sources such as DC power sources or
batteries.

b.

Defendants' proposed construction: Function: powering the apparatus. Structure:
AC power source.

c.

Court's construction: Function: powering the apparatus. Structure: AC power
source.

The parties agree that the function of this means-plus-function term is "powering the
apparatus." They also agree that the following section of the specification discloses the
structure: "It should be noted that the power source contemplated for remote control unit 46 is
batteries, as opposed to AC power source contemplated for recorder 10, however alternative
power sources may be applied to the instant invention without departure from the spirit or scope
thereof." ('444 patent, col. 6, 11. 19-23). The dispute centers on whether the structure is limited
to an "AC power source" or can also include "alternative power sources such as DC power
sources or batteries."
Plaintiff argues that the specification states that "alternative power sources" can be used.
(D.I. 78 at p. 39). Dr. Goldberg, Plaintiffs expert, reported that one of ordinary skill in the art
would understand DC power sources and batteries to be "alternative power sources." (Id at pp.
39-40). Plaintiff argues that those sources are therefore also corresponding structure.

8

Defendants respond that corresponding structure must be clearly linked to the claimed
function. (Id at p. 40 (citing Med Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d
1205, 1211 (Fed. Cir. 2003))). Though DC power sources and batteries are disclosed in the
patent, they are not linked to the function at issue. (Id at p. 42).
I agree that an AC power source is the only structure that is clearly linked to the function
of"powering the apparatus." Where a patent says alternative structures may be used but does
not identify them, the structure is limited to the example disclosed. Fonar Corp. v. Gen. Elec.

Co., 107 F.3d 1543, 1551-52 (Fed. Cir. 1997) ("Although [the specification] states that other
wave forms may be used, it fails to specifically identify those wave forms. Thus, under section
112, if 6, claim 12 is limited to use of a generic gradient wave form and its equivalents."); see

also Atmel Corp. v. Info. Storage Devices, Inc., 997 F. Supp. 1210, 1215 (N.D. Cal. 1998) ("A
specification that merely mentions the possibility of alternative structures without specifically
identifying them is not sufficient to expand the scope of the claim beyond the example used.").
An AC power source is the only example disclosed. The structure of "means for powering the
apparatus" is therefore limited to an "AC power source."
4.

"a keyboard having a record key and a playback key"
a.

Plaintiffs proposed construction: Plain meaning. Alternatively, "a keyboard that
has one or more keys that function as a record key and a playback key."

b.

Defendants' proposed construction: a keyboard having a record key and a
separate playback key

c.

Court's construction: a keyboard that has one or more keys that function as a
record key and a playback key

Defendants argue that the specification and figures consistently depict the record key and
playback key as separate keys. (D.I. 78 at p. 46). Defendants argue that the "and" in the
disputed term supports finding that the keys are separate. (Id. at p. 45). Plaintiff argues that
9

requiring the record and playback keys to be separate is an unjustified restriction. (Id. at p. 44).
Plaintiff maintains that there is no reason that a single key could not operate as both the record
key and the playback key. (Id at p. 44).
It is correct that the specification refers to the keys as separate, but it is the claims that

govern the scope of the invention. There is no basis for importing a limitation requiring the keys
to be separate. I think that a single key with multiple functions would fall within the scope of the
claim language. I will therefore construe "a keyboard having a record key and a playback key"
as "a keyboard that has one or more keys that function as a record key and a playback key."
5.

"record key"
a.

Plaintiff's proposed construction: Plain meaning. Alternatively, "key that, when
actuated, signals the control circuit to initiate storage of program information in
the memory unit of the device."

b.

Defendants' proposed construction: "key that, when actuated, turns on a
recording function of the apparatus to initiate recording" (proposal of Charter,
Comcast, Cox, DirecTV, Time Warner, and Verizon); "key that controls a
recording function" (proposal of Apple and AT&T)

c.

Court's construction: key that, when actuated, begins the recording process

Plaintiff argues that its proposed construction is consistent with the context of the claim
language. (D.I. 78 at pp. 48-49). Plaintiff maintains that Defendants are attempting to replace a
noun-"begins a recording"-with a verb-"begins recording." (Id. at p. 56). Plaintiff argues
that nothing in the claim language speaks to turning on or controlling a recording function. (Id.).
Plaintiff contends that there is no need to look beyond the language of the claim. (Id. at p. 55).
Defendants argue that the specification and prosecution history make clear that the device
does not begin recording until the user actuates the record key. (Id. at p. 58). The specification
states, "Basic operation of the instant invention begins with ... recorder 10 off." (' 444 patent,
col. 5, 11. 19-21). Defendants note that descriptions of "the instant invention" can serve to limit
IO

claims. (D.I. 78 at p. 58 (citing Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295,
1308 (Fed. Cir. 2007))). Defendants note that the purpose of the invention is user control over
recording. (Id.). The summary of the invention recites "user selective initiation and termination
ofrecording." (' 444 patent, col. 3, 11. 19-20).
Defendants further argue that the applicants repeatedly distinguished Sata on the basis
that it lacked a controllable record function. (D.I. 78 at pp. 52-54, 58 (collecting examples)).
For example, the applicants argued, "Where a reference teaches a device that explicitly records
continuously and all the time, it would not be obvious to add a record key to control a function
for which no control scenario is provided." (C.A. 13-2062 D.I. 79-1 at pp. 244-45). The
applicants therefore distinguished the invention by arguing that the record key controlled the
recording function. (Id.).
I

I agree with Defendants that the record key begins the recording process. The
specification makes clear that the recorder (or recording function) is off before the record key is
actuated. I do not agree with Plaintiff that Defendants are improperly reading in limitations from
the specification. When a specification describes "the instant invention," it is describing the
invention as a whole and can serve to limit claim scope. This is especially true where the
prosecution history repeatedly confirms that description. The applicants repeatedly distinguished
Sata on the grounds that the user did not control recording with the keyboard.
I will construe "record key" as "a key that, when actuated, begins the recording process."
Although this is not the exact language Defendants propose, I think it is a simpler way of saying
the same thing.
6.

"control circuit"

11

This was a disputed term, but the parties have agreed to adopt the plain and ordinary
meaning. (D.I. 78 at p. 62).

7.

"to begin a recording by initiating storage of the broadcast program information in said
memory unit"
a.

Plaintiff's proposed construction: to initiate storage of the broadcast program
information in the memory unit such that the information can be retrieved from
the beginning and without missing any of the program information broadcast
during the interruption

b.

Defendants' proposed construction: to begin a recording by causing the storage of
broadcast program information that otherwise would not have been stored in said
memory unit

c.

Court's construction: to begin a recording by causing the storage of broadcast
program information that otherwise would not have been stored in said memory
unit

As discussed above, the applicants disclaimed continuous recording devices during
prosecution. Defendants' construction clarifies that continuous recording devices are not within
the scope of the claim. Plaintiffs construction eliminates "to begin a recording" and instead
focuses on retrieval of information. That aspect of the device is addressed later in the claim and
does not need to be included in this term. I will therefore construe "to begin a recording by
initiating storage of the broadcast program information in said memory unit" as "to begin a
recording by causing the storage of broadcast program information that otherwise would not
have been stored in said memory unit."

8.

"to begin time delay playback of the recording from the beginning thereof'
At oral argument, the parties agreed that the plain and ordinary meaning applies. (D.I. 94

at 126-128).
9.

"means for wireless communication between said remote control unit and said control
circuit"

12

a.

Plaintiff's proposed construction: Function: providing wireless communication
between said remote control unit and said control circuit. Structure: A receiver
and transmitter interposed between the control circuit and keyboard for
communication there between so as to enable [a] keyboard to be placed within a
discrete remote control housing

b.

Defendants' proposed construction: Function: providing wireless communication
between said remote control unit and said control circuit. Structure: infrared light
emitting diode and infrared photo detector.

c.

Court's construction: Function: providing wireless communication between said
remote control unit and said control circuit. Structure: infrared light emitting
diode and infrared photo detector.

The parties agree on the function of this means-plus-function term. (D.I. 78 at p. 88).
They also agree on the portion of the specification that discloses the associated structure:
Turning now to FIGS. 3 and 4, a further embodiment of the instant invention is shown.
Therein, receiver 42 and transmitter 44 are interposed between control circuit 14 and
keyboard 16 for communication therebetween so as to enable keyboard 16 to be placed
within a discrete remote control housing 46. Although a wide variety of remote control
systems may be applied to the present invention without departure from the spirit or
scope thereof, the preferred arrangement applies infra red light emitting diode 48 to
transmitter 44 and infra red photo detector 50 to receiver 42 to achieve wireless
communication between the two.
(' 444 patent, col. 6, 11. 7-18).
Plaintiff argues that Defendants are limiting the structure to the preferred embodiment.
(D.I. 78 at p. 89). The specification states that "a wide variety of remote control systems may be
applied to the present invention without departure from the spirit or scope thereof." ('444 patent,:
col. 6, 11. 12-14). Plaintiff maintains that it is therefore improper to limit the structure as
Defendants request. (D.I. 78 at p. 89). In addition, Plaintiff argues that dependent claim 4
specifically claims an infrared wireless communication means. (Id.). Plaintiff maintains that
claim differentiation therefore supports its construction. (Id.).
Defendants respond that an infared means of wireless communication is the only
structure clearly linked to performing the function. (Id. at p. 90). Defendants further argue that
13

statements of additional, undisclosed alternatives are insufficient to disclose structure. (Id. at pp.
90-91).
As discussed above, where a patent says alternative structures may be used but does not
identify them, the structure is limited to the example disclosed. Fonar, 107 F.3d at 1551-52.
The only example disclosed is an infrared light emitting diode and infrared photo detector. In
addition, Plaintiffs claim differentiation argument is unpersuasive. The Federal Circuit has
"long held that a patentee cannot rely on claim differentiation to broaden a means-plus-function
limitation beyond those structures specifically disclosed in the specification." Saffran v. Johnson.
& Johnson, 712 F.3d 549, 563 (Fed. Cir. 2013), cert. denied, 134 S. Ct. 1023 (2014).
I will therefore construe the structure associated with "means for wireless communication!
between said remote control unit and said control circuit" as "infrared light emitting diode and
infrared photo detector."
10.

"key means for enabling user control of the rate or sequence or both of transfer of
program information from said memory unit to the user's display device"

a.

Plaintiff's proposed construction: Function: enabling the user to control the rate
or sequence, or both, of the transfer of program information from the memory unit'
to the user's display device. Structure: keys on the keyboard that, when actuated, ·
cause the control circuit to vary the rate or sequence, or both, of the transfer of
program information from the memory unit to the user's display device.

b.

Defendants' proposed construction: Function: enable user control of the rate or
sequence or both of transfer of program information from said memory unit to the!
user's display device. Structure: a discrete remote control with fast forward,
reverse, pause and frame advance keys.

c.

Court's construction: Function: enabling the user to control the rate or sequence, ,
or both, of the transfer of program information from the memory unit to the user's
display device. Structure: a discrete remote control with fast forward, reverse,
pause, and frame advance keys.

14

1

The parties generally agree on the function, with only a few minor differences in
wording. The dispute centers on the associated structure. The parties agree that the structure of
"key means" is disclosed in the following section of the specification:
Turning now to FIG. 5, a more elaborate variation of remote control unit 46 is shown,
which like the remote control of FIG. 4, is contemplated for use in conjunction with a
receiver equipped recorder as shown in FIG. 3. The enhanced remote control has
additional function keys intended for use during time delay playback by recorder 10, as
described above and initiated by user actuation of playback key 20. These additional
function keys include fast forward 52 and reverse 54, pause 56, and frame advance 58.
Control circuit 14 is adapted to respond to user actuation of these keys by controlling the
rate and sequence with which stored information retrieved from memory unit 12 is
transferred to outputs 24 for display.
('444 patent, col. 6, 11. 24-37).
Plaintiff contends that Defendants are improperly limiting the structure to a discrete
remote control. (D.I. 78 at p. 93). Plaintiff argues that "remote control" does not appear in the
claim language. (Id). Plaintiff maintains that its construction is properly tied to the function.

(Id at p. 95).
Defendants contend that the only keys clearly linked to the recited function are fast
forward, reverse, pause, and frame advance keys. (Id at p. 94). Defendants note that the
specification states that the function keys are on a remote control: "The enhanced remote control
has additional function keys ... includ[ing] fast forward 52 and reverse 54, pause 56, and frame
advance 58." (Id (quoting '444 patent, col. 6, 11. 24-33)). Defendants argue that it is irrelevant
that the claim language does not reference a remote control or the specific keys. (Id at p. 97). It
notes that the structure of a means-plus-function terms is that which the specification clearly
links to the recited function. (Id.).
Plaintiffs proposed construction is essentially anything that performs the recited
function. It runs afoul of the well-established principle that the structure of a means-plus-

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function claim must be clearly linked to the recited function. See Med. Instrumentation, 344
F.3d at 1211. The only function keys recited in the specification are fast forward, reverse, pause,
and frame advance keys. ('444 patent, col. 6, 11. 32-33). The structure is therefore limited to the
keys disclosed.
In addition, I agree with Defendants that the remote control is a discrete unit. The
specification describes Figure 5-which the parties agree discloses the structure-as "a more
elaborate variation ofremote control unit 46." (Id. col. 6, 11. 24-25). The remote control is
described earlier in the specification as "a discrete remote control housing 46." (Id. col. 6, 11. 1112). Therefore, the only structure that is linked to the recited function is a discrete remote
control.
I will therefore construe the function of "key means for enabling user control of the rate
or sequence or both of transfer of program infonnation from said memory unit to the user's
display device" as "enabling the user to control the rate or sequence, or both, of the transfer of
program information from the memory unit to the user's display device." I will construe the
corresponding structure as "a discrete remote control with fast forward, reverse, pause and frame
advance keys."

V.

CONCLUSION
Within five days the parties shall submit a proposed order consistent with this

Memorandum Opinion suitable for submission to the jury.

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