ID Image Sensing LLC v. Omnivision Technologies, Inc.

Filing 60

MEMORANDUM OPINION providing claim construction for multiple terms in claim 1 of U.S. Patent No. 7,333,145. 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 11/9/2021. (nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

ID IMAGE SENSING LLC,
Plaintiff,
Civil Action No. 20-136-RGA

V.

OMNIVISION TECHNOLOGIES, INC. ,
Defendant.

MEMORANDUM OPINION

Michael J. Farnan, FARNAN LLP, Wilmington, DE; Corby Vowell (argued), Dave R. Gunter
(argued), FRIEDMAN, SUDER & COOKE, Fort Worth, TX,
Attorneys for Plaintiff.
Kelly E. Farnan, RICHARDS, LAYTON & FINGER, P.A., Wilmington, DE; David H.
Bluestone (argued), Michael D. Educate, BARACK FERRAZZANO KIRSCHBAUM &
NAGELBERG, LLP, Chicago, IL,
Attorneys for Defendant.

Novemberj_, 2021

ANlbf.,~E:
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Before me is the issue of claim construction of multiple terms in claim 1 of U. S. Patent
No. 7,333 ,145 ("the ' 145 patent"). The parties submitted a Joint Claim Construction Brief (D.I.
52) and I heard oral argument on October 19, 2021. (D.I. 59).
I.

BACKGROUND
The ' 145 patent relates to circuitry for camera modules used in digital cameras, including

those incorporated into mobile phones, tablets, and laptops. (See ' 145 patent, 1:5-39; D.I. 52 at
2). Plaintiff asserts only claim 1 of the ' 145 patent. (D.I. 22 at ,r 21; D.I. 59 at 65 :6-10). Claim
1 recites:
A camera module comprising:
an_
rmage sensor array:.
a gain amplifier;
an indicator set to indicate whether a first flash device or a second flash
device is present; and
a plurality of storage locations;
wherein the plurality of storage locations is configured to store an exposure
time and a gain, wherein the exposure time and the gain are associated with
the first flash device in response to the indicator indicating the presence of
the first flash device, wherein the exposure time and the gain are associated
with the second flash device in response to the indicator indicating the
presence of the second flash device, wherein the image sensor array is
configured to capture an image using the exposure time, and wherein the
gain amplifier is configured to perform processing on the image using the
gain.
(' 145 patent, claim 1).
II.

LEGAL ST AND ARD
"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, 131 2
(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

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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 Phillip s,
415 F.3d at 1324) (alteration in original). 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), 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 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 (citations and internal quotation marks omitted). " [T]he ordinary meaning of a
claim term is its meaning to [an] ordinary artisan after reading the entire patent." Id. at 13 21
(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.
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. , 574 U.S. 318,3 31 (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

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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.

III.

CONSTRUCTION OF DISPUTED TERMS
1.

"an indicator set to indicate whether a first flash device or a second flash device
is present"
a. Plaintiff's proposed construction: no construction necessary
b. Defendant 's proposed construction: "a stored value identifying 1 whether a first or
second flash device is attached to a camera module"
c. Court 's construction: plain and ordinary meaning
Defendant proposes replacing "an indicator set to indicate" with "a stored value

identifying." In support of this construction, Defendant points to language in the specification
providing, "Register 200 is configured to store a flash enable/flash type indicator." ('145 patent,
3:2-3). Defendant' s argument is that a "stored value" would be what is stored in Register 200
in order to indicate what is present. The specification language, however, describes a nonlimiting embodiment. (Id. , 2:13-14; 2:24-26). As Plaintiff asserted at the Markman hearing, the
claimed "indicator" could also encompass a control circuit sending signals, or
instructions/firmware executed by a processor. (D.I. 59 at 43 : 10-20 ( citing ' 145 patent, 2:57-58,
3:33-36)). Thus, Defendant's construction improperly limits the claim scope to the disclosed
embodiment. See Phillips, 415 F.3d at 1323 .
Defendant argues that the claimed "indicator" is distinct from the "flash signal" that turns
on the flash device. (D.I. 52 at 24). It reasons that dependent claim 6 recites "the control circuit

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Defendant would be amenable to "indicating" rather than "identifying. " (D.I. 52 at 22 & n.3).
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is configured to provide the flash signal to the [first/second] flash device in response to the
indicator indicating the presence of the [first/second] flash device." Defendant contends that
since the flash signal is provided in response to the indicator, it cannot be the indicator itself.
(D.I. 52 at 24). I am not sure why this analysis would require construing "indicator" as a "stored
value." Instead, Defendant appears to be advancing its non-infringement position, which is more
appropriately resolved at a later stage in the case. (See D.I. 22 at 1 13 (alleging that the
"STROBE" flash signal in the accused product is an "indicator")).
Given the claim construction principle counseling against adding negative limitations to
constructions absent sufficient basis in the patent specification, I will decline to add the negative
limitation that the indicator is not a flash signal. See Omega Eng 'g, Inc. v. Raytek Corp., 334
F.3d 1314, 1323 (Fed. Cir. 2003 ) (declining to add a negative limitation when there was no
"express disclaimer or independent lexicography in the written description that would justify
adding that negative limitation"). If at the time of summary judgment, there appears to be a
genuine claim construction dispute, I will consider further construction.
Based on some of Plaintiff's arguments at the Markman hearing, I do want to clarify that
the plain meaning of "set to indicate" is not "configured to indicate" or "capable of indicating."
Claim 1 uses both "set to" and "configured to ." For example, claim 1 recites "the plurality of
storage locations is configured to store an exposure time and gain," "the image sensor array is
configured to capture an image," and "the gain amplifier is configured to perform processing on
the image." As Plaintiff points out, "configured to" goes to the capability of the plurality of
storage locations, the image sensor array, and the gain amplifier. (See D.I. 52 at 34). The usage
of the different terms "set to" and "configured to" indicates that the patentee intended a different
meaning for "set to" than for "configured to." See Amgen Inc. v. Sandoz Inc., 923 F.3d 1023,

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1031 (Fed. Cir. 2019) ("[D]ifferent claim terms are presumed to have different meanings."
(quoting Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008))).
"Set to indicate" requires something more than mere future capability; this term relates to the
present condition of the indicator.
Defendant also argues that " is present" should be construed as "is attached" based on a
statement made by the examiner in the notice of allowability. (D.I. 52 at 23). This construction
is merely an attempt to substitute Defendant' s word for the patentee ' s word. Simply because the
examiner used a different word is not a good reason to make such a substitution. The plain
meaning of "present" is broader than "attached." In the context of the invention, it may also be
broader. It does not appear that the patentee gave the word "present" any special meaning, and I
see no reason to believe that the jury will have any difficulty understanding and applying the
word.

2.

"store an exposure time and a gain"
a. Plaintiff's proposed construction: no construction necessary
b. Defendant 's proposed construction: "record values representing exposure time
and gain"
c. Court 's construction: plain and ordinary meaning
Defendant argues that "store" means "record values." (D.I. 52 at 35-36). I see no basis in

the ' 145 patent that supports this substitution. The patentee did not act as its own lexicographer
with respect to this term, nor has there been a clear and unambiguous disavowal of claim scope.
This term does not need additional construction beyond what the claim already provides. The
meaning of this term in the context of the claim is clear and readily understandable to the jury.
Thus, I apply the plain and ordinary meaning, which is, as always, the default in claim
construction. Phillips, 415 F.3d at 1316.
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3.

"the exposure time and the gain are associated with the [first/second] flash
device"
a. Plaintiff's proposed construction: no construction necessary
b. Defendant 's proposed construction: "the exposure time and gain parameters are
calculated differently depending on the type of flash device"
c. Court 's construction: plain and ordinary meaning
Defendant argues that "associated with" means "calculated differently." (D.I. 52 at 41-

44). In support ofthis construction, Defendant points to language in the specification stating,
"As described in FIGS. 5-10 below, host 110 calculates these parameters differently depending
on the type of flash device and the operation of image sensor array 128. Accordingly, the
parameters are associated with the type of flash device and the operation of image sensor array
128." ('145 patent, 5:13-18).
Defendant contends that the patentee acted as its own lexicographer to define the
meaning of "associated with." (D.I. 52 at 42). I do not think this language rises to the level of
lexicography. As the Federal Circuit instructs, " It is not enough for a patentee to simply disclose
a single embodiment .. . the patentee must clearly express an intent to redefine the term." MID

Prods. Inc. v. Iancu , 933 F.3d 1336, 1343 (Fed. Cir. 2019) (cleaned up). The patentee has not
clearly expressed an intent to redefine "associated with." Instead, the patentee is providing an
example of how exposure time and gain may be associated with a first/second flash device.
The plain meaning of "associated with" is broader than "calculated differently." It
implies a relationship or connection. There is no clear and unambiguous disavowal of claim
scope in the specification or prosecution history. I therefore decline to adopt Defendant' s
proposed construction and apply the plain and ordinary meaning.

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4.

"in response to the indicator indicating the presence of the [first/second] flash
device"
a. Plaintiff's proposed construction: no construction necessary
b. Defendants ' proposed construction: "the indicator indicating the presence of a
first/second flash device causes"
c. Court 's construction: plain and ordinary meaning
Defendant's proposed construction merely rephrases the plain language of the claim by

reordering the claim terms and substituting synonyms. This does not present a genuine claim
construction dispute, and I do not think this construction is necessary to clarify the plain meaning
of the claim for the jury. See C.R. Bard, Inc. v. US. Surgical Corp., 388 F.3d 858, 863 (Fed. Cir.
2004). The meaning of this term in the context of the claim is clear and readily understandable
to the jury. Thus, I apply the plain and ordinary meaning.

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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