Celebrate International LLC v. Leapfrog Enterprises Inc. et al

Filing 132

MEMORANDUM OPINION providing claim construction for the disputed terms found in U.S. Patent 6,256,398. 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 8/28/2015. (nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

CELEBRATE INTERNATIONAL, LLC,
Plaintiff;

v.

Civil Action No. 14-261-RGA

LEAPFROG ENTERPRISES, INC., et al.,
Defendants.

MEMORANDUM OPINION
Adam W. Poff, Esq., Monte T. Squire, Esq., Samantha G. Wilson, Esq., YOUNG CONAWAY
STARGATT & TAYLOR, LLP, Wilmington, DE; Jamil N. Alibhai, Esq., Michael C. Wilson,
Esq. (argued), Robert D. McCutcheon, Esq., Jason A. Blackstone, Esq., Tiffany M. Cooke, Esq.,
MUNCK WILSON MANDALA, LLP, Dallas, TX.
Attorneys for Plaintiff Celebrate International, LLC.
Philip A. Rovner, Esq., Jonathan A. Choa, Esq., POTTER ANDERSON & CORROON LLP,
Wilmington, DE; Andrew E. Monach, Esq. (argued), Richard S.J. Hung, Esq., Barbara Barath,
Esq. (argued), MORRISON & FOERSTER, LLP, San Francisco, CA.
Attorneys for Defendants Leapfrog Enterprises, Inc., Target Corporation, Wal-Mart Stores, Inc.,
Amazon.com, Inc., and Toys "R" US-Delaware, Inc.

Augustjf, 2015

Pending before the Court is the issue of claim construction for the disputed terms found
in U.S. Patent Nos. 6,256,398 ("the '398 patent") and 6,819,776 ("the '776 patent"). 1 On
February 26, 2014, Plaintiff Celebrate International, LLC filed the present action for patent
infringement against Defendants (collectively, "Leapfrog"), alleging infringement of the '398
and '776 patents. (D.1. 1). The Court has considered the parties' joint claim construction brief
(D.I. 84),joint appendix (D.I. 85), and held oral argument on January 22, 2015. (D.I. 89).
I.

BACKGROUND
The abstract of the '776 patent describes the invention as "[a] method for decoding a

message embedded in a pattern of pixels." (D.I. 1-2 at 2). Claim 1 of the '776 patent is a
representative claim:
A device for loading address information into a data communication
application, comprising:
(a)
a reader for sensing light from a selected pattern of
pixels and determining pixel values of pixels in said pattern of
pixels, said pattern of pixels constituting a foreground visual image
that conveys recognizable information to an observer and having
embedded address information; and
(b)
processor that is adapted to recover embedded
address information from the pattern of pixels, said processor being
adapted to determine the embedded address information by
determining binary values via comparing pixel values of selected
pixels to the pixel values of pixels neighboring thereto in the pattern
of pixels and for loading the address information onto the data
communication application for communicating according to the
address information.
(Id. at 36, col. 24:53-25:2).

1

The '776 patent is a continuation of the '398 patent, and both have identical specifications. For purposes of
simplicity, all citations to the specification are to the '776 patent.

1

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. 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 LLCv. 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
claim, the patent specification, and the prosecution history. Markman v. Westview Instruments,
Inc., 52 F.3d 967, 977-80 (Fed. Cir. 1995) (en bane), ajj"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).

2

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.
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.

CONSTRUCTION OF DISPUTED TERMS
A.

The '398 and '776 Patents
1.

"pixel value(s)"
a.

Plaintiff's proposed construction: Plain and ordinary meaning, or

in the alternative, "Values relating to a characteristic of a pixel, including greyscale, brightness,
color, size, or dimensions."
b.

Defendants' proposed construction: Measurable characteristics of

a pixel, such as greyscale, brightness, color, size, or dimensions.

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c.

Court's construction: Value(s) derived from measurable

characteristics of a pixel, including greyscale, brightness, color, size, or dimensions.
During oral argument, Celebrate proposed the alternative construction: "Values relating
to a characteristic of a pixel, including greyscale, brightness, color, size, or dimensions." (D.I.
89 at 23:24-24:1). Leapfrog was amenable to this construction, so long as the word
"measurable" was included before "characteristic." (Id. at 37: 19-22). The parties agree that the
"characteristics of a pixel" used to determine "pixel value(s)" include "greyscale, brightness,
color, size, or dimensions." Thus, the key issue is whether the pixel characteristics must be
"measurable." (Id. at 37:23-25).
Celebrate argues that using "measurable characteristics" improperly limits the claim
language because the asserted claims refer to "determining" pixel values, which "may include
measuring, calculating or otherwise assigning such value." (D.I. 84 at 23). Celebrate notes that
the specification discloses two different types of pixel values-"measured pixel values" and
"transformed pixel values." (Id.). The specification states, "To create the glyph map, pixel
transformation on the glyph image is performed calculating the transformed pixel value from the
measured pixel value with an equation." (D.I. 1-2 at 32, col. 15:14-16). During oral argument,
Celebrate cited "transformed pixel values" as an example of pixel values that may be determined
using "unmeasurable characteristics." (D.I. 89 at 24:15-24). Celebrate conceded, however, that
a "transformed pixel value" must start as a "measured pixel value." (Id. at 25:6-12). The
specification does not disclose a scenario where the pixel value is determined using anything but
a "measurable characteristic." Thus, the intrinsic record supports a construction that requires
"pixel value(s)" to be determined using "measurable characteristics." Therefore, I add
"measurable" to Celebrate's alternative proposed construction.

4

Additionally, the phrase "relating to" in Celebrate's alternative proposed construction is
broader than the claim language and specification allow. During oral argument, I proposed the
construction"[values] derived from measurable characteristics of a pixel," instead. (Id. at 27: 13). Celebrate found this construction to be "superior" to Leapfrog's proposed construction as
well. (Id. at 29:7-21 ). I agree. I also think "derived from" is a more accurate way of stating
how the values are determined from the measurable characteristics. Thus, I replace the phrase
"relating to" with "derived from" in Celebrate's alternative proposed construction.
2.

"said pattern of pixels constituting a foreground visual image that conveys

[recognizable]/[understandable] information to an observer"
a.

Plaintiff's proposed construction: Said pattern of pixels including a

foreground visual image that conveys [recognizable]/[understandable] information to an
observer.
b.

Defendants' proposed construction: The pixels for which pixel

values are determined form, make up, or compose a foreground visual image that conveys
recognizable/[understandable] information to a human observer.
c.

Court's construction: Said pattern of pixels composing, at least a

portion of, a foreground visual image that conveys [recognizable]/[understandable] information
to an observer.
During oral argument, Celebrate identified two issues in dispute with respect to this term:
(1) what the "pattern of pixels" refers to; and (2) what "constituting" means. (Id. at 41:12-21).

The language of claim 1 immediately preceding the disputed term provides an antecedent basis
for "said pattern of pixels," stating "a reader for sensing light from a selected pattern of pixels
and determining pixel values of pixels in said pattern of pixels." (D.I. 1-2 at 36, col. 24:55-57).

5

Celebrate argues that the "pattern of pixels" refers to both the pixels making up the foreground
image and the pixels that are embedded in the image whose values are determined. (D.I. 84 at
25). LeapFrog, on the other hand, argues that the "pattern of pixels" refers only to the pixels
whose values are determined. (Id. at 29).
Celebrate asserts that the pixels that make up the encoded message do not have to be the
same pixels that make up the foreground image. (Id. at 26). Celebrate cites Figures 7 and 8A of
the specification for support. (D.I. 1-2 at 9, figs.7 & 8A). The specification explains, "FIG. 7 is
the image of pixels displaying the word 'Webstar' (i.e., the foreground image) without any
embedded message," and Figure 8A is the same image "[a]fter embedding the message
according to a method of the present invention." (Id. at 29, col. 9:56-60). In Figure 8A, "[t]he
presence of the encoded message is indicated by the presence of dots, i.e., black pixels in the
white area and white pixels in the black area." (Id. at col. 9:64-67). The specification states,
"The pixel appearance representing the encoded message data is not obtrusive and is
unrecognizable by casual viewing by a viewer under normal lighting." (Id. at col. 10: 10-12).
Thus, Celebrate argues that the "pattern of pixels" includes the pixels making up the foreground
image that are discernable to the human eye and the pixels embedded into that image with
encoded information that can only be read by the "reader." (D.I. 84 at 28).
Leapfrog contends that the claim language requires the pixels whose values are
determined to "constitute" a "foreground visual image," meaning the pixels embedded with
information must "form, make up, or compose" the entire foreground image. (Id. at 29-30).
Leapfrog further asserts that the patentee disclaimed the processing of pixels that do not
comprise the foreground visual image during prosecution. LeapFrog cites the prosecution
history, where the patentee argued that the prior art references "do[] not process a foreground

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image nor do they decode an embedded message from a pattern of pixels by determining binary
value via comparing pixel values of neighboring selected pixels." (D.I. 70-7 at 50). The claimed
invention processes a foreground image and decodes an embedded message by comparing the
pixels whose values are determined with the surrounding foreground pixels. This is consistent
with the patentee's statement during prosecution and Celebrate's current position. Thus, the
patentee did not disclaim Celebrate's proposed construction.
I agree with Celebrate that the "pattern of pixels" refers to both the foreground and
embedded pixels. The specification makes clear that the claimed invention has two purposes:
"[O]n a visual level, images and words can be displayed for a human to appreciate and read, yet
on a less obvious level, a message embedded in the image can be read by a machine." (D.I. 1-2
at 25, col. 2:31-34). Figure 8A shows a foreground image that is made of both foreground pixels
and pixels containing encoded information. The encoded pixels are embedded into the
foreground image in order to make the image readable to the decoding device. The embedded
pixels, however, do not make up the entire foreground image. Thus, the "pattern of pixels"
refers to both foreground and embedded pixels, which together "constitute" the "foreground
visual image." Therefore, I reject Leapfrog's proposed construction, and adopt a construction
closer to the one proposed by Celebrate.
3.

"binary value(s)"
a.

Plaintiff's proposed construction: Logical value(s) expressed in

one or more bits (Os and/or ls).
b.

Defendants' proposed construction: Values that are expressed as

either '1' or 'O.'

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c.

Court's construction: Values that are expressed using only Os

and/or ls.
The parties stipulated to this construction. (D.I. 87).
4.

"determining binary values via comparing pixel values of selected pixels

to the pixel values of pixels neighboring thereto" 2
a.

Plaintiff's proposed construction: Plain and ordinary meaning, and

"via" "by way of' or "no further construction is necessary"
b.

Defendants' proposed construction: The binary value is

determined by and depends upon comparing the relative pixel values of selected pixels with the
pixel values of pixels neighboring thereto.
c.

Court's construction: No construction is necessary.

The terms "pixel value(s)" and "binary value(s)" have already been construed above.
The parties agree that "[t]he claims containing the phrase 'determining binary values' call for
either a comparison of pixel[] values or brightness values." (D.I. 84 at 49). Leapfrog highlights
that "[t]he only disclosed method for decoding an embedded message is to compute the 'cell
contrast (CC) for each pixel, i.e.[,] the absolute difference of that pixel value from the average of
those pixels surrounding it." (Id). Leapfrog's proposed construction, however, adds limitations
that are not supported by the intrinsic record. The claim language makes clear how binary values
are determined. The remaining words in the disputed terms, including "determining," "via," and

2

This exact term appears in claims 1 and 2 of the '776 patent. Similarly worded terms appear in claims 10
("determine binary value of a pixel using contrast of brightness to compare pixel values of selected pixels to the
pixel value of said pixel"), 15 ("determining binary values ... via contrasting the brightness of selected pixels to the
brightness of pixels neighboring thereto"), and 18 ("determining binary values using contrast of brightness to
compare pixel values of selected pixels to the pixel values of pixels neighboring thereto") of the '77 6 patent and
claim 20 ("determining binary values ... via contrasting the brightness of selected pixels to the brightness of pixels
neighboring thereto") of the '398 patent. The Court's construction applies equally to all of these terms.

8

"using," are ordinary English words that a juror would have no trouble understanding. Thus, the
disputed terms may be given their plain and ordinary meaning. No construction is necessary.
5.

"receiving light from a display"
a.

Plaintiff's proposed construction: Surface, such as a monitor or

printed paper, having a visual image.
b.

Defendants' proposed construction: An electronic device, such as

a cathode ray tube monitor, liquid crystal display or printer, which generates text or images that
can be viewed by a human observer.
c.

Court's construction: An electronic device, such as a cathode ray

tube monitor, liquid crystal display or printer.
The term "display" only appears in claim 9, describing "[a] method for loading
information into a data communication application, comprising ... receiving light from a display
that shows a pattern of pixels." (D.1. 1-2 at 37, col. 25:49-51). The specification provides
explicit examples of "displays," including a "CRT monitor, liquid crystal display, printer, and
the like." (Id. at 35, col. 22: 18-20). The specification goes on to state, "In the case of a printer,
a hard copy 2010 with the visual image, which includes an embedded message can be obtained
by printing on a medium such as paper." (Id. at col. 22:20-22). Thus, there is a distinction
between the "printer" itself serving as the "display," and the "paper" serving as a medium to
print the "visual image." Figure 20A provides clear evidence of this distinction:

9

~2008

Display

~2010

Hard Copy

"'--2000

FIG. 20A

(Id. at 22, fig.20A). The specification also provides that "a user interface 2004 can be connected

to the display 2008 for controlling the display." (Id. at 35, col. 22:22-25). This statement would
not make sense if a "display" could be printed paper. Thus, printed paper is not a "display."
6.

"address information"
a.

Plaintiff's proposed construction: Information relating

to/identifying location.
b.

Defendants' proposed construction: Information for connecting to

a web site, URL or Internet address.
c.

Court's construction: Information identifying (electronic) location.

The term "address information" appears in claims 1 and 2, but does not appear at all in
the specification. The specification states, "[T]he present invention provides a technique to
embed a message in a visual image without obtrusive features that draw attention from the visual
image." (D.I. 1-2 at 26, col. 3:66-4:2). "An example of such is embedding a hyperlink address
such as a URL address ("web-site address["]) in an image printed on paper." (Id. at col. 4:2-5).
The specification also teaches that "[t]he present technique provides a process, as well as a
device to enable a web site to be printed to retain the visual image, yet allowing an electronic
reader to read the image and direct the web browser to connect to that web site." (Id. at 25, col.
2:19-23). Every time the word "address" is used in the specification it is referring to a website,
IO

URL, or Internet address. Thus, the embedded "address information" generally identifies an
electronic location.
7.

"data communication application"
a.

Plaintiff's proposed construction: Plain and ordinary meaning.

b.

Defendants' proposed construction: An application that

communicates data from one device to another.
c.

Court's construction: No construction is necessary.

Leapfrog's proposed construction adds a limitation that the data must communicate
"from one device to another," which is not supported by the specification. The term "data
communication application" does not appear at all in the specification. The term is made of
ordinary English words that a jury would not have trouble understanding. Therefore, no
construction is necessary.
IV.

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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