Wi-Lan Inc. v. Sharp Corporation et al

Filing 280

MEMORANDUM OPINION re claim construction. Signed by Judge Leonard P. Stark on 4/27/2018. Associated Cases: 1:15-cv-00379-LPS, 1:15-cv-00788-LPS(etg)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

WI-LAN INC.,
Plaintiff,
V.

C.A. No. I5-379-LPS

SHARP ELECTRONICS CORPORATION,
Defendants.

WI-LAN INC.,

Plaintiff,
V.

C.A. No. I5-788-LPS

VIZIO,INC.,
Defendant.

Brian E. Faman and Michael J. Faman,FARNAN LLP, Wilmington, DE,

Monte M.Bond, Jeffrey R. Bragalone, Patrick J. Conroy, Terry Saad, and James R. Perkins,
BRAGALONE CONROY P.C., Dallas, TX,

Attorneys for Plaintiff.

Jack B. Blumenfeld and Stephen J. Kraflschik, MORRIS,NICHOLS,ARSHT & TUNNELL
LLP, Wilmington, DE,
Gianni Cutri and Joel Merkin, KIRKLAND & ELLIS LLP,Chicago, DL,
Michael W.De Vries, KIRKLAND & ELLIS LLP,Los Angeles, CA,

Adam R. Alper and James Beard, KIRKLAND & ELLIS LLP, San Francisco, CA,
Jared Barcenas, KIRKLAND & ELLIS LLP,New York, NY,

Attorneys for Sharp Electronics Corporation.

Pilar Gabrielle Kraman,YOUNG,CONAWAY,STARGATT & TAYLOR,LLP, Wilmington,
DE,

Adrian M.Pruetz and Rex Hwang, GLASER WEIL FINK HOWARD AVCHEN & SHAPIRO
LLP,Los Angeles, CA,
Attorneys for Vizio, Inc.

MEMORANDUM OPINION

April 27,2018
Wilmington, Delaware

STARK,
\J.S. District Judge:
Plaintiff Wi-LAN Inc.("Plaintiff') brought this patent infnngement suit against

Defendants Sharp Corporation, Sharp Electronics Corporation, and Vizio,Inc.("Defendants"),
alleging that Defendants infnnge Plaintiffs U.S. Patent Nos. 6,359,654(the "'654 patent") and

6,490,250(the "'250 patent"). {See generally D.I. 15)^ The '654 patent generally relates to
methods to display interlaced video on non-interlaced monitors. ('654 patent. Abstract) The
'250 patent generally relates to an integrated multimedia encoding system. ('250 patent.
Abstract)

Presently before the Court is the issue ofclaim construction. The parties submitted
technology tutorials {see D.I. 252,256), objections to such technology tutorials {see D.I. 267,

270), claim construction briefs {see D.I. 253,254,266,269), and expert declarations {see D.I.
253-1,255-3,255-4,266-1). The Court held a claim construction hearing on Februaiy 26,2018,
at which both sides presented oral argument. {See D.I. 272("Tr."))
L

LEGAL STANDARDS

The ultimate question ofthe proper construction ofa patent is a question oflaw. See Teva
Pharm. USA,Inc. v. Sandoz, Inc., 135 S. Ct. 831,837(2015){ciMngMarkman v. Westview

Instruments, Inc., 517 U.S. 370, 388-91 (1996)). "It is a bedrock principle of patent law that the

claims ofa patent define the invention to which the patentee is entitled the right to exclude."
'Docket citations are made to C.A. No. 15-379, but apply equally to corresponding filings
in C.A. No. 15-788. Plaintiff also asserted U.S. Patent No. 5,847,774 {see D.I. 15), but that

patent has since been dismissed fi"om the lawsuit. {See D.I. 216) Plaintiff filed similar
complaints against ON Corp US,Inc. and ON Corporation, Inc.(C.A. No. 15-786) and Sansui
America,Inc., Orion Electric Co., Ltd., and Orion America Inc.(C.A. No. 15-787), but those
defendants did not participate in the claim construction process leading to this Memorandum
Opinion.
1

Phillips V. AWH Corp.,415 F.3d 1303, 1312(Fed. Cir. 2005)(internal quotation marks omitted).
"[T]here is no magic formula or catechism for conducting claim construction." Id. at
1324. Instead, the Court is free to attach the appropriate weight to appropriate sources "in light
ofthe statutes and policies that inform patent law." Id.

"[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 ofordinary skill in the art in

question at the time ofthe invention, i.e., as ofthe effective filing date ofthe patent application."
M at 1312-13 (internal citations and quotation marks omitted). "[T]he ordinary meaning ofa
claim term is its meaning to the ordinary artisan after reading the entire patent." Id. 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 ofthe surroimding words ofthe claim also must be considered.

Phillips, 415 F.3d at 1314. Furthermore,"[ojther claims ofthe patent in question, both asserted
and unasserted, can also be valuable sources of enlightenment...[bjecause claim terms are

normally used consistently throughout the patent." Id.(intemal citation omitted).
It is likewise true that "[djifferences 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." Id. at 131415 (intemal 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).

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 ofthe 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." Hill-Rom Servs., Inc. v. Stryker
Corp., 155 F.3d 1367,1372(Fed. Cir. 2014){quoting Liebel-Flarsheim Co. v. Medrad,Inc., 358
F.3d 898,906(Fed. Cir. 2004))(internal quotation marks omitted).

In addition to the specification, a court "should also consider the patent's prosecution

history, if it is in evidence." Markman v. Westview Instruments, Inc., 52 F.3d 967,980(Fed. Cir.
1995), aff'd, 517 U.S. 370(1996). The prosecution history, which is "intrinsic evidence,"
"consists ofthe complete record ofthe proceedings before the PTO [Patent and Trademark

Office] and includes the prior art cited during the examination ofthe 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.

In some cases,"the district court will need to look beyond the patent's intrinsic evidence
and to consult extrinsic evidence in order to xmderstand, for example,the backgroimd science or

the meaning ofa term in the relevant art during the relevant time period." leva, 135 S. Ct. at

841. Extrinsic evidence "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 ofterms used in various fields of science and technology." Phillips, 415 F.3d
at 1318. In addition, expert testimony can be useful "to ensure that the court's xmderstanding of
the technical aspects ofthe patent is consistent with that of a person of 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." Id. Nonetheless, courts must not lose sight ofthe fact that "expert reports and
testimony [are] generated at the time of and for the pxupose oflitigation and thus can suffer firom
bias that is not present in intrinsic evidence." Id. Furthermore,"statements made by a patent
owner during an IPR [inter partes review] proceeding...can be considered for claim
construction." Aylus Networks,Inc. v. Apple Inc., 856 F.3d 1353,1362(Fed. Cir. 2017).
Overall, while extrinsic evidence "may be useful" to the court, it is "less reliable" than intrinsic
evidence, and its consideration "is unlikely to result in a reliable interpretation of patent claim

scope unless considered in the context ofthe intrinsic evidence." Id. at 1318-19. Where the
intrinsic record unambiguously describes the scope ofthe patented invention, reliance on any
extrinsic evidence is improper. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
1308 (Fed. Cir. 1999)(citing Vitronics, 90 F.3d at 1583).

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 GmbHv. Int'l Trade Comm % 505 F.3d 1351,1358(Fed. Cir. 2007)
(quoting
II.

Mfg. Co. v. U.S. Int'l Trade Comm

75 F.3d 1545, 1550(Fed. Cir. 1996)).

CONSTRUCTION OF DISPUTED TERMS
A.

'654 Patent

1.

method for displaying interlaced video data on a non-interlaced
monitor,the interlaced video data comprising a plurality of paired
fields, each pair offields being vertically offset relative to each other
by one-half of a field line spacing distance, each field comprising a

plurality of lines of video data"^
Plaintiff

Preamble is not limiting
Plain and ordinary meaning
No construction necessary
Defendants

Preamble is limiting
Court

Preamble is limiting

The parties dispute whether the preamble of claim 1 is limiting. "[A] preamble limits the
invention ifit recites essential structure or steps, or ifit is necessary to give life, meaning, and

vitality to the claim." Catalina Marketing Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801,808
(Fed. Cir. 2002)(internal quotation marks omitted). In other words,"when the preamble is
essential to imderstand limitations or terms in the claim body,the preamble limits claim scope."

Id. Moreover,"[w]hen limitations in the body ofthe claim rely upon and derive antecedent basis
from the preamble, then the preamble may act as a necessary component ofthe claimed

^This term appears in the preamble of claim 1 ofthe '654 patent.
5

invention." Pacing Techs., LLC v. Garmin Int'l, Inc., 778 F.3d 1021,1024(Fed. Cir. 2015)
(internal quotation marks omitted). "Conversely, a preamble is not limiting where a patentee
defines a structurally complete invention in the claim body and uses the preamble only to state a

purpose or intended use for the invention." Catalina Marketing,289 F.3d at 808 (internal
quotation marks omitted).

Plaintiff argues that the preamble is not limiting, because it "does not contain any steps,"
but rather "describes an intended use ofthe claimed process"- displaying interlaced video data
on a non-interlaced monitor- and the '"features that necessarily exist' in interlaced video data."

(D.I. 254 at 1-2; see also D.I. 266 at 1 (quoting Schumer v. Lab. Computer Sys., Inc., 308 F.3d

1304,1310(Fed. Cir. 2002))) Defendants argue that the preamble is limiting, because it "recites
the fi*amework essential to understand the remainder ofthe claim and provides antecedent basis
for numerous elements." (D.I. 269 at 2)

The Court concludes that the preamble is limiting because it is essential to understanding
terms in the remainder ofthe claim. For example,step(c)ofthe claim requires "correct[ing] the
vertical offset;" without the preamble, a person of ordinary skill in the art("POSA" or

"POSITA")would not know that the vertical offset is precisely "one-half ofa field line spacing
distance." ('654 patent, cl. 1)

2.

"respective buffers"^

Plaintiff

Plain and ordinary meaning
No construction necessary
Plain and ordinary meaning is "a first and second memory space'

^This term appears in claim 1 ofthe '654 patent.
6

Defendants

"separate buffers for the first field and the second field'
Court

"separate buffers for the first field and the second field'

Both sides agree that the term "respective buffers" requires that there be separate buffers
for each field. {See Tr. at 24,25,38,40) But Plaintiff argues that the claims do not require two

separate buffers each with separate memory spaces; rather, the claims permit one buffer that has

sufficient memory space to store both fields while "maintain[ing] separateness ofthe fields."
(Tr. at 29) Defendants argue that the patent teaches there must be two distinct buffers for each of
the two fields in the pair offields. {See D.I. 253 at 3; Tr. at 27-28)

The Court agrees with Defendants. In describing the background ofthe technology, the
specification notes that the prior art method of"[d]einterlacing by interleaving two fields into a

single buffer... gives very objectionable results when viewing video with rapid horizontal

action." ('654 patent at 1:47-53) This suggests that a single buffer, despite having sufficient
memory space to store both fields separately without overlap, is not covered by the patent. The
patent further provides:

[T]he present invention ... capture[s] the twofields into separate
buffers, onefor the oddfield and onefor the evenfield. When
one ofthe fields has been captured into the buffer,the buffer is
displayed, scaled to the requested dimensions on the monitor using
some scaling hardware or software.... That image is displayed
until the next field is captured into another buffer, and then the
subsequent image is displayed until the third field is captured into
either the originalfirst buffer, or into another (third) buffer. The
multiple buffering is to ensure that a video buffer is not being
updated while it is being displayed, to avoid "tearing"

{Id. at 4:43-60(emphasis added)) Moreover,the asserted claims ofthe '654 patent specify

"respective buffers"-that is, plural buffers. A POSA would understand that the patent claims
completely separate buffers, rather than just separate memory spaces in a single buffer,in order
to practice the claimed method.

3.

"scaling"'*

Plaintiff

Plain and ordinary meaning
No construction necessary

Plain and ordinary meaning is "changing by a constant factor the number of lines and/or pixels
in an image"
Defendants

"changing the vertical resolution ofthe video signal by a constant factor"^
Court

"changing the vertical resolution by changing by a constant factor the number of lines and/or
pixels in a field"

Step(b)ofclaim 1 requires "scaling each ofthe fust field and second field ofeach pair of
fields to fill vertical resolution ofthe non-interlaced monitor." ('654 patent, cl. 1) While the

parties agree that scaling involves changing something by a constant factor, they disagree as to
what may be changed. {See D.I. 254 at 3; D.I. 269 at 4)

Plaintiff argues that "[t]he term 'scaling' is used throughout the specification in its broad
sense to describe various scaling methods"-line-by-line, pixel-by-pixel, vertically, and
horizontally -"and is not limited to vertical scaling oflines." (D.I. 254 at 3; see also Tr. at 45)
Plaintifffurther argues that "there is no lexicography that would limit scaling to any one

''This term appears in claim 1 ofthe '654 patent.
^In their opening brief. Defendants' proposed construction of"scaling" was "changing by
a constant factor the number oflines in the field of video data." (D.I. 253 at 4) However,in their
responsive brief, they proposed a new construction, which is the one reproduced in the table and
which the Court has considered to be Defendants' position. (D.I. 269 at 5)
8

particular type of scaling," nor is there anything in the patent'that would rise to the level of a
disavowal of any type of scaling." (Tr. at 44) Defendants counter that the '654 patent

"universally refers to scaling in the context ofadding new lines" and does not contemplate
scaling solely by changing the number ofpixels. (D.I. 253 at 5) While Defendants agree that
scaling generally can be accomplished byjust adding pixels and widening the horizontal
resolution, in Defendants' view such scaling would not practice claim limitation (b), which

requires "scaling...to fill vertical resolution ofthe non-interlaced monitor." (Tr. at 52;see also
'654 patent, cl. 1)^ Defendants are also concerned that Plaintiffs construction would improperly

permit Plaintiff to contend that there is no requirement that the vertical resolution be changed, as
long as it is filled. {See Tr. at 57) While Plaintiff conceded that simply adding pixels to widen
the resolution horizontally would be "scaling" but would not meet the rest ofthe claim limitation
- because it is not scaling to fill vertical resolution-Plaintiff also indicated that performing

horizontal scaling would meet the claim limitation as long as it filled the vertical resolution. {See
id. at 56-57) Separately, Defendants further argue that Plaintiffs construction is incorrect
because "the claimed scaling occurs on fields, not images, of video data." (D.I. 253 at 4)
(emphasis omitted)

While the Court recognizes there may be various types of scaling in general, the Court

agrees with Defendants that all references to scaling in the specification ofthe '654 patent refer
to vertical scaling oflines, rather than just horizontal scaling of pixels. {See, e.g.,'654 patent, at

Figs. 4,5,6,1:34-38,1:63-2:7,4:51-53, 5:19-64) More importantly,"the plainness ofthe claim
^Defendants indicated they would be agreeable to dropping "vertical" from their proposed
construction as long as the requirement in step(b)that scaling "fill the vertical resolution" ofthe
monitor is not eviscerated. {See Tr. at 54)

language necessarily affects what ultimate conclusions about claim construction can properly be
drawn based on the specification." Straight Path IP Grp., Inc. v. SipnetEUS.R.O.,806 F.3d

1356,1361 (Fed. Cir. 2015)("[D]isavowal is required where claim language is plain, lacking a

range of possible ordinary meanings in context."). Here,the claim language -"scaling...to fill
vertical resolution"-requires an actual change in vertical resolution. The proper resolution of

the parties' claim construction dispute must ensure that claim limitation(b)is not eviscerated.^
Further, the Court concludes that the patent refers to scaling in fields rather than scaling in
images.

4.

"adjusting"®

Plaintiff

"vertically repositioning"
Defendants

"vertically repositioning"
Court

"vertically repositioning"
At oral argument, the parties indicated that they now agree that "adjusting" should be

construed as "vertically repositioning." {See Tr. at 59-60) Accordingly,the Court will adopt that
construction.

5.

"to substantially correct for the

vertical offset between the pairs of fields"^

''Plaintiff expressed concern that Defendants will argue that an action was not "intended
to fill the vertical resolution" cannot be infnnging. (Tr. at 58) But there is no intent requirement
in the claim.

®This term appears in claim 1 ofthe '654 patent.
^This term appears in claim 1 ofthe '654 patent.
10

Plaintiff

Plain and ordinary meaning
No construction necessary
Plain and ordinary meaning is "to largely or approximately correct for the vertical offset'
Defendants
Indefinite
Court

"to largely or approximately correct for the vertical offset'
Defendants argue that the phrase "to substantially correct" renders claim 1 indefinite.

(D.I. 253 at 6-8) Pursuant to 35 U.S.C. § 112,"a patent's claims, viewed in light ofthe

specification and prosecution history,[must] inform those skilled in the art about the scope ofthe
invention with reasonable certainty." Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120,

2129(2014); see also Cox Commc'ns, Inc. v. Sprint Commc'n Co. LP,838 F.3d 1224,1231

(Fed. Cir. 2016)(noting relevant inquiry is "whether the 'claims,' not particular claim terms"

inform one ofscope with reasonable certainty). "Indefiniteness must be proven by clear and
convincing evidence." Sonix Tech. Co., Ltd. v. Publications Int'l, Ltd., 844 F.3d 1370,1377
(Fed. Cir. 2017).

As an initial matter, the parties dispute whether "to substantially correct for the vertical

offset" is limiting. Generally, claim language that "is only a statement of purpose and intended
result" that "does not result in a manipulative difference in the steps ofthe claim" is not limiting.
Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368,1376(Fed. Cir. 2001);see

also Syntex(U.S.A.)LLC v. Apotex, Inc., 407 F.3d 1371, 1378(Fed. Cir. 2005)(finding clause
that "simply describes the intended result" offollowing steps in claimed method was not

limiting). Defendants contend that the language here is limiting, because, as the patent specifies,

11

"[a]n important aspect ofthe present invention is the correction ofthe positional offset ofthe two
interlaced video fields." (Tr. at 71)(internal quotation marks omitted) Plaintiff responds that the

language is not limiting because step (c) merely requires adjusting (that is, vertically

repositioning) that must occur concurrently with said scaling, and that the correction language is
subsumed within the adjusting step. {See id. at 79-81) Plaintiff acknowledges that there has to

be some correcting, but contends that such correction need not be substantial, because substantial
is an intended result. {See id. at 81)

The Court agrees with Defendants that *to substantially correct for the vertical offset" is

limiting, and not merely an intended result, because the specification makes clear that "the
correction ofthe positional offset" is "[a]n important aspect ofthe [] invention." ('654 patent at

3:42-44) It is, therefore,"material to patentability." Javelin Pharms,, Inc. v. MyIan Labs. Ltd.,
2017 WL 4511352, at *3(D. Del. Oct. 10,2017). It is also, therefore, limiting.

Turning to indefiniteness, it is important to note that terms of degree are not inherently
indefinite. See Interval Licensing LLC v. AOL,Inc., 766 F.3d 1364,1370(Fed. Cir. 2014)

(stating that "absolute or mathematical precision is not required"). "Claim language employing
terms ofdegree has long been found definite where it provided enough certainty to one ofskill in
the art when read in the context ofthe invention." Id. "All that is required is some standard for

measuring the term of degree." Exmark Mfg'g Co. Inc. v. Briggs & Stratton Power Prods. Grp.,
LLC,879 F.3d 1332,1346(Fed. Cir. 2018). Whether a limitation defined in functional terms is

sufficiently definite "is highly dependent on context(e.g., the disclosure in the specification and
knowledge ofa person of ordinary skill in the relevant art area)." Enzo Biochem, Inc. v. Applera
Corp., 599 F.3d 1325, 1332-33(Fed. Cir. 2010)(internal quotation marks omitted).
12

Defendants assert that the term "substantially correct" is "highly subjective" and that the

patent "provides no objective boundaries of how one might know ifthe claim limitation is met or
not." (D.1.253 at 6) Plaintiff argues that the phrase "reflects that the adjustment cannot always
result in an exact correction, in which case substantial (i.e., less than perfect) correction is the

objective." (D.I. 266 at 2) In support. Plaintiff points to the specification, which presents "two

ways ... to deal with the vertical offset ofthe two fields." ('654 patent at 5:14-15) With respect
to the first way- displaying the odd and even fields in different positions on the display -the

specification notes that "exactly correct repositioning" only occurs when even scaling factors are
used, and that "the repositioning does not exactly correct for the vertical offset ofthe original
fields" when odd scaling factors are used. {Id. at 5:30-41) The specification further provides

that "visually more pleasing results" are obtained whenever the vertical offset is less than one
half a line. {Id. at 5:42-46) Defendants assert that these are just "ways that adjusting may be

performed, but[the patent] does not answer the question of whether there is a substantial

correction ofthe offset." (Tr. at 64-65)^®
Plaintiff counters that the specification provides that any amoxmt ofreduction in vertical
offset is a "substantial" correction. The reason is that, here,"[t]he term 'substantially' is merely

a modifier implying 'approximate' rather than 'perfect'" and that "substantially" is used in the

claim, for example,to account for when odd scaling factors are used and do not achieve an exact
^°Defendants also argue that Plaintiff admitted this first way of dealing with vertical offset
was in the prior art and, so,the specification's discussion ofthe first way cannot inform the
construction ofthe terms in claim 1. {See D.I. 269 at 6) The Court disagrees. This portion ofthe
specification still provides guidance as to the function and boundaries ofthe claim language.
The Court further agrees with Plaintiffthat the second way ofdealing with vertical offset
discussed in the specification, through vertical interpolation, also supports its construction. {See
'654 patent at 7:8-42)
13

correction. (D.I. 254 at 8-9 {citing Playtex Prods., Inc. v. Procter & Gamble Co.^ 400 F.3d 901,

907(Fed. Cir. 2005));see also Enzo,599 F.3d at 1333(noting "substantially" can denote "either

language ofapproximation or language of magnitude"))
Defendants assert there are no objective boimdaries as to when any change that lessens the
amount of offset is considered to be a substantial correction. (See Tr. at 69) In particular,

according to Defendants,"[w]hether an adjustment would 'substantially' correct the vertical
offset between the relevant pair offields would depend entirely on the subjective perspective of
the viewer." (Id. at 73) For example, according to Defendants, the picture quality could be

affected by various other factors, including the content ofthe video, other technology in the

monitor, the type of display screen, and the power supply circuitry. (See id. at 75) In Plaintiffs
view, however,the claim language does not depend on the subjective perspective ofthe viewer
because a POSA would know to perform the adjustment whenever it would result in a vertical
offset that is less than half a line, which is an objective standard. (See id. at 86-87,93) In other

words, when the adjustment would result in any amount ofimprovement,the patent teaches that
such adjustment would still be worth doing, because it will produce "visually more pleasing
results than when the data is not adjusted." ('654 patent at 5:44-45; see also Tr. at 96-97)
The Court finds Plaintiffs arguments persuasive. In the context ofthe claim and the

^ ^Defendants cite cases finding terms of degree indefinite where, unlike here, the patents'
specifications failed to provide any guidance on the objective boundaries ofthe term. See, e.g..
Interval Licensing, 766 F.3d at 1371 (finding "imobtrusive manner" to be highly subjective,
where "sufficient guidance is lacking in the written description ofthe asserted patents"); Vstream
Techs., LLC v. PLR Holdings, LLC,2016 WL 6211550, at *7(E.D. Tex. Sept. 27,2016)(finding
"sufficiently correct" indefinite, because "[t]he specification does not provide any guidance as to
what 'criteria' would be appropriate"); FairfieldIndus., Inc. v. Wireless Seismic, Inc., 2015 WL
1034275, at *15(S.D. Tex. Mar. 10, 2015)(finding specification did not offer any objective
boundaries).
14

patent's specification,"substantially" is a modifier used to account for the varying amoimts of
correction that may occur when the adjusting step is performed,recognizing that the functional

goal ofthe adjusting step is to get as close to exactly correct repositioning as possible. Rather

than being a term of magnitude,"substantially" here is a term of approximation. A POSA,when
reading the claim in light ofthe specification, would know with "enough certainty" that it should
perform the adjusting step whenever it would result in any amount of correction to the vertical

offset, because any reduction in vertical offset would be an improvement. See Exmark,879 F.3d
at 1346. Defendants have failed to prove, by clear and convincing evidence,that the claim as a

whole, when viewed in light ofthe specification, does not inform a POSA with reasonable
certainty ofthe scope ofthe claim. The Court will construe the term as having its plain and
ordinary meaning, which is "to largely or approximately correct for the vertical offset."

6.

"said adjusting is performed concurrently with said scaling"*^

Plaintiiff
"said adjusting is performed at or about the same time as said scaling, and before displaying
the fields"
Defendants

"the adjusting and scaling steps must overlap, either by interleaving or simultaneous
execution, such that one cannot complete before the other begins"
Court

"the adjusting and scaling steps must overlap, either by interleaving or simultaneous
execution, such that one cannot complete before the other begins"
Plaintiff insists that the adjusting and scaling steps happen "before displaying the fields."

(D.I. 254 at 5) Defendants respond that "[n]othing about the phrase 'where said adjusting is
performed concurrently ^vith said scaling' leads to the conclusion that the steps need only be

'-This term appears in claim 1 ofthe '654 patent.
15

performed 'before displaying the fields.'" (D.I. 269 at 10-11) The Court agrees with
Defendants. Further, Plaintiffs proposed construction,"about the same time," is, as Defendants

argue, unreasonably broad and vague. (D.I. 253 at 10;see also D.I. 269 at 10)
Plaintiffs reference to claims 6 and 7, which are dependent on claim 1 and add the

requirement that the step of scaling must be performed before (cl. 6)or after (cl. 7)the step of
adjusting, does not alter the Court's conclusion. {See D.I. 254 at 6-7) "It is axiomatic that a
dependent claim cannot be broader than the claim from which it depends." Alcon Research, Ltd.
V. Apotex Inc.., 687 F.3d 1362, 1367(Fed. Cir. 2012). Defendants explain that "claims 6 and 7
are consistent with Defendants' construction," because while the steps overlap, claim 6 requires
the scaling step to start before the adjusting step and claim 7 requires the adjusting step to start

before the scaling step. (D.I. 269 at 11;see also Tr. at 123) In other words, claims 6 and 7 do
not state that the first step must be completed before the second step begins.

7.

"vertical interpolation between at least adjacent lines"'^

Plaintiff

Plain and ordinary meaning
No construction necessary

Plain and ordinary meaning is "the process ofdetermining new values using at least known
values from vertically adjacent lines"
Defendants

"calculating values for new pixels between at least vertically adjacent lines using known
values"^^
Court

"calculating values for new pixels between at least vertically adjacent lines using known
values"

'^This term appears in claims 4 and 9 ofthe '654 patent.
'^'Defendants' argument that claim 9 ofthe '654 patent is indefinite will be considered
separately.
16

The specification contains numerous references to "interpolation" in the context of
averaging the pixel in the line above with the pixel in the line below to achieve the pixel data for
the missing line between. {See, e.g.,'654 patent at 6:20-31, 6:48-51, 6:56-61) The specification

also recognizes that interpolation may be conducted in other ways, such as "by using three or
more input lines and using a more complex filter." {Id. at 7:34-36) The Court agrees with

Defendants that however interpolation is achieved in the claimed method it involves a calculation
to determine the pixel value between the two or more sampled lines.
8.

'^the adjusting step is achieved by vertical
interpolation between at least adjacent lines>»15

Plaintiff

Plain and ordinary meaning
No construction necessary
Plain and ordinary meaning is "the adjusting step is achieved by vertically repositioning either

the first or second field ofthe pair offields using the process of determining new values using
at least known values from vertically adjacent lines"
Defendants
Indefinite
Court

"the adjusting step is achieved by calculating values for new pixels between at least vertically
adjacent lines using known values"

Defendants argue that "[ujnequivocal statements made by the patentee during prosecution
render this claim indefinite to one of ordinary skill in the art." (D.I. 253 at 12) In its Office

Action rejecting claim 1,the PTO determined that prior art "Bolger teaches correcting line of
video information for video information pixels having vertical offset in position" and found the
claim obvious. (D.I. 231-3 at 135-36) In response,the patentee proposed an amendment and

'^This term appears in claim 9 ofthe '654 patent.
17

stated,"Bolger merely teaches deriving additional lines of video information by 'repeating

previously displayed lines, or interpolating the video information pixels of adjacent lines to form
an intermediate line of video information pixels having signal value averaged from adjacent line

pixels," which it stated was "different from the method described in the present claims as
amended." {Id. at 158) The patentee further stated,"Bolger does not teach 'adjusting one ofthe

first field or second field ofthe pair offields to substantially correct for the vertical offset
between the pairs offields.'" {Id.)

Defendants argue that "the patentee made clear that claim 1's 'adjusting step' does not

include vertical interpolation of adjacent lines, which is the very adjusting expressly required by
claim 9," and "[bjecause the scope of claim I's 'adjusting step' does not include what claim 9
recites, claim 9 recites an impossibility and is indefinite." (D.I. 253 at 12-13) Plaintiff responds

that the specification teaches that''scaling of video data can be performed by interpolation

between adjacent lines, without performing an adjustment to correct the vertical offset between
fields." (D.I. 266 at 6) Thus,Plaintiff argues that the patentee's "statements during prosecution
are easily reconciled with claim 9 by understanding that scaling by vertical interpolation does
not, in itself, result in 'adjusting' for the vertical offset between pairs offields." {Id.)
The Court agrees with Plaintiff. Defendants have failed to establish indefiniteness.

18

B.

'250 Patent

1.

*'an apparatus for adjusting rates of

the input multimedia data streams"'^
Plaintiff

Preamble is not limiting
Plain and ordinary meaning
No construction necessary
Defendants

Preamble is limiting

"an apparatus ofthe multimedia encoding system that performs rate adjustment ofthe input
multimedia data streams"
Court

Preamble is limiting

The parties first dispute whether the preamble of claim 1 is limiting. Plaintiff argues the
language is not limiting because it merely provides an intended purpose for the claimed apparatus
and does not recite an essential structure or give necessary life, meaning, or vitality to the claim.
(D.I. 254 at 11) Defendants coimter that the preamble is limiting for four reasons: it'"(1)

provides antecedent basis for a claim term,(2)is essential to help imderstand the claim terms,(3)
provides any additional steps or structure that is underscored as important by the specification,
[and](4) was relied on during prosecution."' (D.I. 253 at 13-15)(quoting Mayne Pharma Int7
Pty Ltd. V. Merck & Co., Inc., 2016 WL 7441069, at *7(D. Del. Dec. 27, 2016)).
The Court concludes that the preamble is limiting for at least two reasons. First, the
preamble provides antecedent basis for the terms "input multimedia data streams" and "output
multimedia data stream," because those terms are initially introduced in the preamble and

referred back to in the following claim limitations. Second,the preamble was relied on during

'^This term appears in the preamble ofclaim 1 ofthe '250 patent.
19

prosecution. After the examiner initially rejected claim 1 for "failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention"(D.L 231-4 at 82),
the examiner withdrew its rejection after the applicant amended the preamble to "recite[]
inventive elements" and "define the invention" {id. at 98,119).

Turning to the parties' dispute as to the proper construction ofthis term. Plaintiff
contends that Defendants' rearrangement ofthe words "for adjusting rates" to "that performs rate
adjustment" provides no definition or helpful clarification. (D.I. 254 at 11-12) The Court agrees.

Plaintiff also argues that Defendants' addition of"multimedia encoding system""seeks to

improperly impose a limitation on the apparatus that is not present in the claim." {Id. at 12)
Defendants insist that the claimed apparatus "must be a part of a multimedia encoding system,
and cannot exist outside ofthat system," because "[t]he specification repeatedly and consistently
discloses that the apparatus that performs rate adjustment is part ofa multimedia encoding
system." (D.I..253 at 15) But the Court agrees with Plaintiff that the "system" in claim 1 is
already defined as "a system for combining input multimedia data streams to form an output
multimedia data stream." (D.I. 254 at 12) Defendants' proposed construction is incorrect

because the Federal Circuit "has expressly rejected the contention that if a patent describes only a
single embodiment,the claims ofthe patent must be construed as being limited to that
embodiment." Liebel-Flarsheim, 358 F.3d at 906. Moreover, Defendants' construction would

introduce ambiguity by using a term that has no antecedent basis and has not been defined. {See
Tr. at 127)

Accordingly,the Court finds that the preamble ofclaim 1 ofthe '250 patent is limiting.

20

2.

''input multimedia data streams'*'^
"output multimedia data stream"

"input multimedia data streams"

"output multimedia data stream"

Plaintiff

Plaintiff

"individual elementary audio or video

"combined audio and video stream"

streams"

Defendants

Defendants

"individual elementary video or audio streams "a combined video and audio stream that is
output from the apparatus for adjusting rates"
that are input to the apparatus for adjusting
rates"
Court

Court

"individual elementary audio or video streams "combined audio and video stream that are
output from the system"
that are input to the system"

Defendants agree with Plaintiffs constructions, except that they include an additional

phrase in each construction to demonstrate that each data stream is entering or exiting a "shared
common reference point." (D.I. 253 at 16) Defendants assert that the common reference point is

the "apparatus for adjusting rates." {Id.) Defendants argue that "[t]he claim language itself
demonstrates the proper relationship between these claim limitations." {Id.) For example,
according to Defendants,"the preamble makes clear that the apparatus for adjusting rates

specifically adjusts the rates ofthe input multimedia data streams." (D.I. 269 at 16) Defendants
also point to the specification, which "repeatedly and consistently discloses that the elementary
media data streams {i.e., the claimed 'input multimedia data streams') are input into the

apparatus for adjusting rates, and that those streams are combined to form a single combined
multimedia data stream {i.e., the claimed 'output multimedia data stream'), which is output from

^^This term appears in claims 1 and 4 ofthe '250 patent.
'^This term appears in claims 1 and 6 ofthe '250 patent.
21

the apparatus for adjusting rates." (D.I. 253 at 16-17)(citing '250 patent at 1:62-67,2:11-15,
3:44^8,4:6-9,4:20-28,6:14-20, Fig. 2)

Plaintiff argues that'the claim language does not limit the input and output streams to a

particular device," nor does "the specification describe the input and output data streams to be
tied directly to an 'apparatus for adjusting rates.'" (D.l. 254 at 13) In particular. Plaintiff

contends that "the 'apparatus' of claim 1 is recited to be part ofa larger system -'a system for
combining input multimedia streams to form an output multimedia data stream.'" (Jd, at 14)

Additionally, Plaintiff points out that Defendants "do not identify any portion ofthe specification
that describes the elementary data streams and the combined data streams being input or output

from an 'apparatus for adjusting rates,"' and that "[t]o the contrary,the claims explicitly relate
the input and output streams to the ''system'' recited in the preamble." (D.l. 266 at 8)

The Court agrees with Plaintiffthat Defendants' construction would incorrectly limit the
input and output multimedia data streams to entering and exiting an apparatus for adjusting rates.

The claim language states that the apparatus is just one component ofthe entire "system for
combining input multimedia data streams to form an output multimedia data stream." ('250

patent, cl. 1) Furthermore, the specification, particularly the portions cited by Defendants,refers
to many different components ofthe system that are involved in adjusting the data rates and
combining input streams to form an output stream.

The Court does agree v^th Defendants to the limited extent that Plaintiffs construction
does not completely account for the "input" and "output" modifiers. The input and output
streams are entering or exiting from the "system for combining input multimedia data streams to

22

form an output multimedia data stream" as a whole. Plaintiff does not dispute this. {See D.I. 266
at 8)

Accordingly, the Court has put together its own constructions, as shown above.
3.

"a multimedia processor, coupled to the data rate analyzer"

Plaintiff

Plain and ordinary meaning
No construction necessary

Plain and ordinary meaning is "a multimedia processor, directly or indirectly connected to the
data rate analyzer"
Defendants

"a multimedia processor connected to the data rate analyzer, where the multimedia processor is
separate from,and not a sub-component of, the data rate analyzer"
Court

"a multimedia processor connected to the data rate analyzer, where the multimedia processor is
separate from,and not a sub-component of, the data rate analyzer"
Plaintiff argues that one of ordinary skill in the art would understand the term "coupled"
to mean that"two components are cormected, either directly or indirectly," rendering Defendants'

proposed requirement that the two components "be separate, where one is not a sub-component
ofthe other," improper. (D.I. 254 at 18-19) Plaintiff also points to Figure 7 in the patent, which
shows that a "data rate analyzer 724 is a sub-component ofthe multimedia processor 250." {Id.

at 19)(citing '250 patent, at Fig. 7,6:35-37, referring to "a second data rate analyzer 724 in the

multimedia processor 250") Defendants respond that "[t]he data rate analyzer in claim 1
expressly relates to the data rate analyzer that determines the data rate ofthe output multimedia
data stream, i.e., data rate analyzer 700, not the data rate analyzer that determined the data rate of

'^This term appears in claim 1 ofthe '250 patent.
23

individual elementary streams, i.e., data rate analyzer 724." (D.I. 269 at 17) On this dispute the
Court agrees with Defendants.
Defendants also direct the Court to the specification's use ofthe word "coupled." For

example,the summary ofthe invention states that "[a] unified memory module is coupled to the
multimedia encoders," and Figure 2 shows that those components are separate (and neither is a
sub-component ofthe other). ('250 patent at 2:4-5; see also id. at 2:11-12("A stream processor

is coupled to the unified memory module and the multimedia encoders.")and Fig. 2; Tr. at 138)
On the other hand,the patent uses the word "in" when referring to sub-components: such as "a
second data rate analyzer 724 in the multimedia processor 250," which is the data rate analyzer to
which Plaintiffis referring. (Tr. at 140;'250 patent at 6:35-37) The Court agrees with
Defendants that the patent consistently uses "coupled" to refer to components that are not sub

components of each other and "in" to refer to components that could be sub-components ofeach
other.

4.

"a data rate analyzer, coupled to the

output multimedia data stream"^^
Plaintiff

Plain and ordinary meaning
No construction necessary

Plain and ordinary meaning is "a data rate analyzer, directly or indirectly connected to the
output multimedia data streams"
Defendants

Indefinite
Court

"a data rate analyzer connected to the output multimedia data stream, where the data rate
analyzer is separate from,and not a sub-component of, the output multimedia data stream'

^°This term appears in claim 1 ofthe '250 patent.
24

Defendants argue this claim term is indefinite because it ''recites that a physical
component (i.e., the data rate analyzer)is 'coupled to' an intangible stream (i.e., the output
multimedia data stream)" and a POSA "would not have understood with reasonable certainty

how a data rate analyzer could be coupled to an intangible data stream." (D.I. 253 at 18)

Defendants provide no support for this assertion. By contrast, Plaintiffs expert, Dr. Sayood,
opined that a POSA would understand that whether coupled to a signal or a component,the term
has the same meaning. (See D.I. 266 at 10) Defendants have failed to meet their burden to show
indefiniteness.

The Court does not, however, adopt Plaintiffs proposed construction, as it is inconsistent
with the Court's findings above,including how the patent claims use the term "coupled."
Accordingly, the Court has adopted its own construction.

5.

"determining the data rate"^'

Plaintiff

Plain and ordinary meaning
No construction necessary

Plain and ordinary meaning is "computing the number of bits transmitted or received over a
given period oftime"
Defendants

"determining the actual number of bits transmitted over a given period oftime'
Court

"determining the number of bits transmitted over a given period oftime'

The parties' proposed constructions are similar but differ in two respects. First, Plaintiffs
construction refers to transmitting and receiving bits, whereas Defendants' refers only to

transmitting bits. Defendants argue that since the term is referring to the output multimedia data

^'This term appears in claim 1 ofthe '250 patent.
25

stream, only the transmission ofbits is determined. {See D.I. 253 at 18-19) Plaintiff does not

dispute that the term is limited to determining the data rate ofthe output stream. {See D.I. 266 at
9) Hence,the Court's construction refers only to transmitting of bits.
Second, Defendants insert the word "actual" in their construction, because "the term

'actual' is repeatedly used in the specification and prosecution history to describe the bit rate
being determined by the patented invention." (D.I. 269 at 19) Plaintiff counters that the term
"actual" is only used when comparing the actual data rate to the target data rate. {See D.I. 254 at

15) The Court will not include "actual" in its construction because the distinction between actual
and target data rate is already clear; that is, the first step ofthe claim refers to "determining the
data rate ofthe output multimedia data stream" while the second step compares that "determined
output multimedia data stream data rate" to a target data rate. ('250 patent, cl. 1)

6.

"target output data stream data rate"^^

Plaintiff

"adjustable parameter input to the multimedia processor providing the optimal or maximum
data rate ofthe output multimedia data stream"
Defendants

Plain and ordinary meaning
No construction necessary

Plain and ordinary meaning is "a data rate chosen by a user or other source to specify the
optimal or maximum data rate for the output multimedia data stream"
Court

"the optimal or maximum data rate for the output multimedia data stream at a given point in
time"

Again,the parties largely agree on the proper construction ofthis term, and the Court

discusses just their differences. First, Plaintiff argues that "the 'target' rate is not merely a.fixed

^^This term appears in claim 1 ofthe '250 patent.
26

maximum data rate ofthe system, but, instead is an adjustable parameter that can be modified to

account for changes in the system capacity." (D.I. 254 at 16) The patent's specification provides

that "[t]he target data rate 226 is preferably adjustable as the system's needs and capabilities
change." ('250 patent at 6:66-7:1)(emphasis added) The Court agrees with Defendants that the
adjustable nature ofthe target rate is a preferred embodiment, not a claim limitation, so the Court

will not import it as a requirement in the claims. {See D.I. 269 at 19-20) However, by including
in its construction "at a given point in time," the Court intends to make clear that the "target
output data stream rate" could be adjusted, i.e., have different values at different times.
Second,Plaintiff argues that "the target data rate must be a parameter input to the

multimedia processor," because only a multimedia processor is recited in claim 1, even though
the specification provides that a target data rate may be input to the stream processor as well.
(D.I. 254 at 17;'250 patent at 6:66-7:2, cl. 1) Plaintiff claims this is important because "it
indicates that this value cannot be fixed within the multimedia processor." (D.I. 254 at 17)

Defendants contend that the term "parameter" is improper because it is unspecified and the
determined data rate must be able to be compared to it. {See D.I. 269 at 20) The Court

concludes that regardless of whether the target data rate is referred to as a parameter, the
determined data rate can still be compared to it. It is not necessary for the construction to include
the multimedia processor.

27

7.

"generating rate control signals for adjusting

the data rates of the input multimedia data streams"^^
Plaintiff

"generating signals providing rate control information for increasing, decreasing or
maintaining the data rates ofthe input multimedia data streams"
Defendants

"generating rate control signals to change the data rates ofthe input multimedia data streams"
Court

"generating rate control signals for increasing, decreasing or maintaining the data rates ofthe
input multimedia data streams"

The Court agrees with Plaintiff that the construction ofthis term should allow for the
scenarios where "the data rate ofthe elementary stream is(1)increased,(2)decreased, or(3)

maintained." (D.L 254 at 18) While Defendants argue that a"change" is required, they
acknowledge that the specification refers to the possibility of maintaining the data rate. {See D.I.

269 at 20) Accordingly,the Court will construe "generating rate control signals for adjusting the

data rates ofthe input multimedia data streams" as "generating rate control signals for increasing,
decreasing or maintaining the data rates ofthe input multimedia data streams."
III.

CONCLUSION

The Court construes the disputed terms as explained above. An appropriate Order
follows.

^^This term appears in claim 1 ofthe '250 patent.
28