MiiCs & Partners America Inc. et al v. Funai Electric Co. Ltd. et al

Filing 550

MEMORANDUM ORDER: The MOTION for Partial Summary Judgment of Non-Infringement (D.I. 176 ) is GRANTED. Signed by Judge Richard G. Andrews on 12/1/2017. (nms)

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IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

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MiiCs & PARTNERS, INC., et al.,
Plaintiffs,

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V.

FUNAI ELECTRIC CO., LTD., et al.,

Civil Action No. 14-804-RGA

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Defendants.

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SAMSUNG DISPLAY CO., LTD.,
Intervenor.

MEMORANDUM ORDER

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Presently before the Court is Intervenor Samsung Display Co. 's Motion for Partial
Summary Judgment of Non-Infringement of U.S. Patent No. 5,995,176("the'176 patent"). 1
(D.I. 387). I have considered the parties' briefing. (D.I. 390, 421, 460, 528, 529). I held oral
argument on November 16, 2017. (D.I. 535) ("Tr."). For the reasons that follow, I will grant
Samsung's motion as to the ' 176 patent.
Samsung moved for partial summary judgment on the basis that the accused products do
not infringe asserted claims 1 and 4 of the '176 patent. (D.I. 390 at 24). It is clear from the
parties' briefing that the issue here boils down to one of claim construction. I therefore
requested at oral argument that the parties submit supplemental briefing on the claim
construction issue.

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I previously granted Samsung's motion for partial summary judgment (D.1. 387) as to the '589and'190
patents. (DJ. 548).

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As I understand it, Samsung's motion turns on whether a limitation in the asserted claims
is drawn to capability or instead requires a particular structural configuration. The disputed
limitation reads, "said liquid crystal layer being divided into a plurality of regions having
different orientation of liquid crystal for one of said pixel electrodes." (' 176 patent, 5 :46-48).
Plaintiffs argue the asserted claims, and, more specifically, the disputed limitation, are drawn to
capability (D.I. 528 at 1), while Samsung argues they are structural (D.I. 529 at 1). The parties
agree that if the limitation is not drawn to capability, then the accused devices do not directly
infringe the asserted claims of the '176 patent. (See Tr. at 73:23-25, 81 :16-19; see also Tr. at
80:6-15).
To support their argument that the claims are drawn to capability, Plaintiffs point to
Figures 8A, 8B, 9A, and 9B, which, according to Plaintiffs, show that "the invention of the '176
patent enables the orientation of the liquid crystals to be controlled through an externally applied
voltage." (D.I. 528 at 3). Further, according to Plaintiffs, "The specification confirms that every
instance of 'being' in the claim is directed to the capability of the device when turned on-i.e.,

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when it performs its function as a television." (Id. at 7). To construe the claim language as
structural, Plaintiffs contend, would be to ignore the claim language and the nature of the
accused products. (Id.; Tr. at 83: 18-23). Further, Samsung's construction, Plaintiffs assert,
would read the word "being" out of the claims. (D.I. 528 at 7; Tr. at 81 :12-82:8). Contrary to
Samsung's contentions, Plaintiffs argue, the specification makes clear that the word "being" in
dependent claims 2 and 3 refers to the capability provided by the recited structure. (D.I. 528 at
7). Finally, Plaintiffs assert that the' 176 patent file history, which shows that the patentee

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amended the patent title to be more descriptive, supports a finding that the claims are drawn to
capability. (Id. at 7-8). 2
Samsung counters by arguing that the plain meaning of the claim limitation is structural.
(D.I. 529 at 1). It notes the claims do not use any of the words the Federal Circuit has generally
found to indicate capability. (Id. at 4). Samsung further argues the patent specification describes
the liquid crystal layer in structural terms. (Id. at 2 (citing '176 patent, 1:65-2:7, 1: 11-14)).
Samsung cites to additional language from claim 1, including, "openings being provided in said
pixel electrodes," which it argues is a "plainly structural feature of the liquid crystal display
apparatus, always present in the device whether the device is ON or OFF." (Id. at 3). According
to Samsung, "a bias voltage being applied to said conductive light shield layers," is similarly
structural. (Id. at 4). Finally, Samsung argues, "the fact that liquid crystal displays may be
designed to be used in their ON state does not imply the disputed limitation is directed to
function or capability." (Id.).
I am not persuaded that the disputed limitation is drawn to capability. The '176 patent
unquestionably covers an apparatus. (See '176 patent, 5 :42 (claiming a "liquid crystal display
apparatus")). "A patent applicant is free to recite features of an apparatus either structurally or
functionally." In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). The Federal Circuit has
held that use of the words "for" or "programmable," among others, indicates that the patentee is
claiming an apparatus in terms of its functionality. See Finjan, Inc. v. Secure Computing Corp.,
626 F.3d 1197, 1204-05 (Fed. Cir. 2010) (finding claim terms reciting components with specific

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Plaintiffs further argue, "Contrary to Defendants' assertions, the claims are not limited to twisted
nematic ("TN") mode LCD devices." (D.I. 528 at 4). I do not understand Samsung to be arguing that the
claims are limited to TN mode devices, and, in fact, Samsung represented to the Court at oral argument
that its motion is not based on the argument that "the claims are directed to one design or the other." (Tr.
at 75:1-10). I find it unnecessary, therefore, to address Plaintiffs' argument on that point.
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purposes, "for preventing execution" and "for obtaining a Downloadable," to be directed to
capability) (emphasis in original); Intel Corp. v. US. Int'! Trade Comm 'n, 946 F.2d 821, 832
(Fed. Cir. 1991) (finding use of the word "programmable" to suggest capability). Further, in its
cases considering whether claim limitations are drawn to capability, the Federal Circuit has
repeatedly emphasized that "the language of the claims, as well as the nature of the accused
product, dictates whether an infringement has occurred." E.g., Fantasy Sports Props., Inc. v.

Sportsline.com, Inc., 287 F.3d 1108, 1118 (Fed. Cir. 2002). Where "a claim[] recites capability
and not actual operation, an accused device 'need only be capable of operating' in the described
mode." Finjan, 626 F.3d at 1204 (internal citation omitted).
Here, the disputed limitation, "said liquid crystal layer being divided into a plurality of
regions," is not drawn to capability. ('176 patent, 5:46-47). Nothing in the limitation or the
surrounding claim language suggests that "being divided" refers to the capability of the
apparatus to "orient[] the liquid crystal layer into a plurality of liquid crystal regions having
different orientations." (D.I. 528 at 1). Contrary to Plaintiffs' assertions, the word "being" does
not somehow transform the limitation into one drawn to capability. Rather, the claims use the
word "being" followed by a past participle, for example, "divided," to indicate that a particular
structural feature is present in the invention.
That the disputed limitation is not properly understood as drawn to capability is further
supported by the remaining language in asserted claim 1 and the other claims of the '176 patent.
Claim 1 contains the limitation, "openings being provided in said pixel electrodes." (' 176 patent,
5:48-49; see also 6:25-26, 60-61). "Openings" are clearly structural features. Again, use of the
word "being" after "openings" does change the nature of the limitation. Further, claims 2 and 3,
which depend from claim 1, recite, "said TFTs being connected to one of said pixel electrodes,"

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(' 176 patent, 5:58; see also id. at 6:39-40), "said conductive light shield layers being connected
to a gate electrode" (' 176 patent, 5 :59--60; see also id. at 6:40-41 ), and "said conductive light
shield layers being connected to a respective one of said storage capacitor lines"(' 176 patent,
5:65--67; see also id. at 7:5--6). Each of these limitations similarly describes a structural feature
of the apparatus, that is, a certain component "being connected" to another.
Claims 6 through 10 contain similar limitations, as well as the phrase "being performed."
(E.g., '176 patent, 6: 11-12 ("a plurality of different rubbing operations being performed upon

said first oriented layer")). In light of the specification, which describes the "rubbing operations"
in the context of a method of manufacturing (e.g., id. at 3:64-4: 11), "being performed" is
properly understood as "having been performed" during the manufacture of the "oriented layer."
Thus, again, the word "being" does not change the nature of the limitation so as to be drawn to
capability.
There is, however, one limitation that uses the word "being" in such a way that seems to
suggest capability or function. That limitation reads, "a bias voltage being applied to said
conductive light shield layers." (Id. at 5:53-54). "[A] bias voltage being applied" seems to
indicate the apparatus' underlying capability to be turned on or made active. Ideally, "being"
ought to have the same meaning throughout the claims. Rexnord Corp. v. Laitram Corp., 274
F.3d 1336, 1342 (Fed. Cir. 2001) ("[A] claim term should be construed consistently with its
appearance in other places in the same claim or in other claims of the same patent.");
Phonometrics, Inc. v. N Telecom Inc., 133 F.3d 1459, 1465 (Fed. Cir. 1998) ("A word or phrase
used consistently throughout a claim should be interpreted consistently."). Nevertheless, that
this limitation, which includes the word "being," seems drawn to capability, does not mean all

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limitations, including the one at issue, are drawn to capability. As explained above, the various
other limitations that use the word "being" clearly recite structural features of the apparatus.
While I agree with Plaintiffs that the claims appear to be directed to the apparatus in the
on state, I do not believe that means the claims are drawn to capability. Rather, the claims
appear to describe the apparatus in terms of its structural configuration when turned on. The
nature of the accused products does not change the analysis. As Plaintiffs note, the accused
products are "television[s] having one, single mode of operation - turned on to display images."
(D.I. 528 at 7). The claims, however, are not limited to televisions, and, that the accused
products have one mode of operation is inconsequential. It is undisputed that the accused
products do not meet the limitation at issue when sold, at which point they are in the off state.
(D.I. 390 at 25-26; D.I. 421 at 24-25; Tr. at 75:4-5, 76:4-6). While the parties agree the
accused products meet the limitation when the televisions are turned on (see D.I. 421 at 25; D.I.
390 at 25-27), Plaintiffs have pled only direct infringement.
Further, Plaintiffs' reliance on Finjan is unavailing. In Finjan, the non-method claims at
issue "recite[d] software components with specific purposes." 626 F.3d at 1205. Those
components included, among others, "a logical engine for preventing execution" and "a
communications device for obtaining a Downloadable." Id. (emphasis in original). As Plaintiffs
note, the court found this language "describe[d] capabilities without requiring that any software
components be 'active' or 'enabled."' Id. Unlike the claims in Finjan, however, the '176 patent
claims nowhere recite a component of the apparatus followed by the word "for" with a
corresponding purpose or function for that component. Thus, Finjan is distinguishable.
Finally, I am not persuaded by Plaintiffs' argument that certain portions of the
specification and the file history indicate the claims are drawn to capability. Plaintiffs cite to

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descriptions in the specification of how the application of an external voltage serves a
"stabilizing" function (D.I. 528 at 3 (citing' 176 patent, 5: 1-8, 30-36)) and how the recited
structures function "to substantially increase the capacity of the pixels" (id. at 4 (quoting '176
patent, 3:9-13)). Plaintiffs note further that after the patent examiner objected to the original
title of the '176 patent, the applicant amended the title to include the language, "Capable of
Shielding Leakage of Light through the Discontinuity of Orientation." (Id. at 8 (quoting Exh.
E)). Although the patent title and the descriptions in the specification upon which Plaintiffs rely
refer to certain functions of the invention, that does not mean the patent claims those functions.
To the contrary, the plain language of the claims indicates it does not.
Thus, I find that the disputed limitation is not drawn to capability. Samsung's motion
(D.I. 387) is therefore GRANTED as to the' 176 patent.

Entered this

J_ day of December, 2017.

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