Visual Interactive Phone Concepts, Inc. v. United States Cellular Corporation

Filing 99

Enter MEMORANDUM Opinion and Order Signed by the Honorable Elaine E. Bucklo on 2/13/2014. Mailed notice (jdh)

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
VISUAL INTERACTIVE PHONE
CONCEPTS, INC.,
Plaintiff/
Counter-Defendant,
v.
U.S. CELLULAR CORP.,
Defendant/
Counter-Plaintiff.

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No. 11 C 5289

MEMORANDUM OPINION AND ORDER
U.S. Cellular Corporation (“U.S. Cellular” or “Defendant”)
has moved for summary judgment on the ground that Visual
Interactive Phone Concepts (“VIPC” or “Plaintiff”) violated 35
U.S.C. § 305 by enlarging its patent claims during a
reexamination proceedings before the U.S. Patent and Trademark
Office (“PTO”), which would render the underlying patents invalid
as a matter of law.

See Quantum Corp. v. Rodime, PLC, 65 F.3d

1577, 1584 (Fed. Cir. 1995).

Alternatively, U.S. Cellular argues

that VIPC’s claims substantively changed when they emerged from
reexamination in March 2013 and cannot be enforced before that
date.
U.S. Cellular’s motion is denied for the reasons stated
below.

1

I.
The patents-in-suit, U.S. Patent Nos. 5,606,361 (“the ‘361
patent”) and 5,724,092 (“the ‘092 patent”), were issued in 1997
and 1998, respectively, to inventors John Davidsohn and Anthony
Cinotti.1

As VIPC acknowledges, the patents disclose an

invention from a previous era of electronic commerce.
¶ 12.

Compl. at

The “primary object” of the present invention is to

provide consumers with a system for viewing products and services
on a videophone that is “easier and faster to use,” “less
expensive,” and “more user-friendly than a personal computer.”
See ‘361 Patent, Col. 2, Lines 28-33.
The claimed “videophone interactive mailbox facility system”
is comprised of three interconnected systems: (1) user stations,
(2) a central data center, and (3) vendor stations.

The user

station for this invention includes, inter alia, “a videophone
for viewing transaction information sent or received to conduct a
transaction.”

Id. at Claim 1(a).

A “videophone,” in turn, is

described in the specification as:
[A]ny device having the capabilities to receive
video/voice and/or video/text as its primary function
and which, in the future, may have additional
capabilities added to it that will enable it to perform
functions that a PC computer performs today. Further,
a videophone is defined to include cellular videophones
or wireless videophone or all videophones integrated
1

The ‘092 patent issued on March 3, 1998 is a continuation of
the ‘361 patent issued on February 25, 1997. VIPC received an
assignment of both patents on June 9, 1998.
2

with
additional
PC
technologies
and
similar
capabilities (disk storage, CDs, diskettes, and memory
in the megabyte range and up and/or keyboards).
Id. at Col. 10, lines 32-41.
VIPC allegedly disclaimed a particular construction of the
claimed “videophone” during its infringement action against
Virgin Mobile USA, LLC filed in May 2005 concerning the same
patents-in-suit.

See VIPC v. Virgin Mobile USA, LLC, No. 3:05-

cv-2661 (MLC) (D.N.J.).

In its claim construction brief from the

Virgin Mobile litigation, VIPC argued that a “videophone” should
be defined as:
[A] device with the capability of receiving and viewing
videophone messages that includes a cellular and
wireless
videophone
and
excludes
general-purpose
computers and wherein videophone messages include
moving images, still images, text and/or voice.
Id., Dkt. No. 19 at ¶ 29 (emphasis added).

VIPC now contends

that it was merely trying to distinguish its “videophone” from
desktop personal computers during the Virgin Mobile litigation.
The Virgin Mobile court ultimately held that VIPC’s
infringement action was barred by judicial estoppel, which
obviated the need to construe the underlying patent claims.

See

VIPC v. Virgin Mobile USA, LLC, 2008 WL 4192065 (D.N.J. Sept. 8,
2008) (granting summary judgment against VIPC based on its
inconsistent, bad faith representations regarding the validity of
an exclusive license agreement).

3

VIPC filed this case and several other infringement actions
in 2011.2

Shortly thereafter, an entity known as Muir Patent

Consulting, LLC filed ex parte requests with the PTO seeking
reexamination of the patents-in-suit.3

The PTO granted these

requests for reexamination and issued non-final office actions
rejecting all claims in the ‘361 and ‘092 Patents based on
citations to prior art.

Def.’s Statement of Facts (“DSOF”) at ¶¶

9, 19.
In response to the PTO’s first office actions, VIPC
attempted to place its claims in context.

Although smart phones

are now ubiquitous, VIPC argued that “the concept of a single
device that incorporates the functionality of a phone, a display
screen, a video camera, and potentially ‘additional PC
technologies’ was novel and non-obvious when the [‘361 and ‘092
Patent] application[s] [were] filed.”

Id. at Exs. F and L.

With

regard to configuration, VIPC underscored that its claimed
videophone “is not a mere collection of separate components,” but
rather “an integrated device that includes a telephone, a keypad,

2

See VIPC v. Samsung Telecommunications Am., LLC, No. 11-12945,
2012 WL 1049197, at *1 n.2 (E.D. Mich. Mar. 28, 2012) (collecting
parallel cases).
3
The patents-in-suit were subject to a prior ex parte
reexamination proceeding, which resulted in the PTO issuing
reexamination certificates for both patents in April and May
2010. Neither party asserts that the claim amendments made
during the first reexamination are relevant to the U.S.
Cellular’s pending motion for summary judgment.
4

a camera, a display screen, and additional PC technologies.”

Id.

at ¶¶ 10, 20.
The PTO identified three distinct embodiments of the claimed
videophone in its next office action addressing VIPC’s arguments.
Id. at ¶¶ 11, 21.

Adopting the “broadest reasonable

interpretation” of claim terms consistent with the specification,
see In re Hiniker Co., 150 F.3d 1362, 1368 (Fed. Cir. 1998), the
patent examiner interpreted the claimed “videophone” as “any
device having the capability to receive video/voice and/or
video/text as its primary function.”

Id. at ¶¶ at 12, 22.

In

adopting this interpretation, the PTO rejected VIPC’s argument
that the claimed videophone was necessarily a “single integrated
device.”

Id. at Exs. G and M.

Although the claimed videophone

could be configured as a single integrated device, this
configuration was simply one embodiment of the invention rather
than a limitation implicit in the claims.

Id.

VIPC then proposed to amend its claims with the following
limitation: “wherein said videophone is a single integrated
device that includes a general purpose computer and a telephone.”
Id. at ¶¶ 13, 23.

The PTO concluded that the prior art of record

failed to disclose a videophone that was a single integrated
device.

Id. at ¶¶ 16, 25.

Thus, VIPC’s amended claims were

found to be distinguishable over prior art.

5

The PTO issued

reexamination certificates for both patents, as amended, in March
2013.
II.
U.S. Cellular has moved for summary judgment on the ground
that VIPC either “enlarged” or “substantively changed” its patent
claims during reexamination.

The former argument is an

invalidity defense while the latter argument seeks to limit the
time period during which VIPC may recover damages for alleged
infringement of its patents.
In resolving the present motion, I must view the evidence
and draw all reasonable inferences in VIPC’s favor.
Liberty Lobby, Inc., 477 U.S. 242, 255 (1986).

Anderson v.

Summary judgment

is appropriate only when “there is no genuine dispute as to any
material fact and the movant is entitled to judgment as a matter
of law.”

Fed. R. Civ. P. 56(a).

U.S. Cellular must present

clear and convincing evidence to prevail on its invalidity
defense given that issued patents are presumptively valid.
Microsoft Corp. v. i4i Ltd. Partnership, 131 S.Ct. 2238, 2242
(2011).
A.
“A patentee is not permitted to enlarge the scope of a
patent claim during reexamination.”

Creo Produc., Inc. v.

Presstrek, Inc., 305 F.3d 1337, 1344 (Fed. Cir. 2002) (citing 35
U.S.C. § 305).

In determining whether a patent claim was
6

impermissibly enlarged, a court “must analyze the scope of the
claim prior to reexamination and compare it with the scope of the
claim subsequent to reexamination.”

Id.

“A reexamined claim

that is broader in any respect is considered to be broader than
the original claim even though it may be narrower in other
respects.”

Id.

“[A] violation of 35 U.S.C. § 305 is an

invalidity defense in a patent infringement action” that will
result in judgment against the patentee.

Quantum Corp. v.

Rodime, PLC, 65 F.3d 1577, 1584 (Fed. Cir. 1995).
U.S. Cellular argues that a simple comparison between VIPC’s
claim construction brief from the Virgin Mobile litigation and
its amended claims establishes a violation of 35 U.S.C. § 305.
Recall that VIPC argued during the Virgin Mobile litigation that
its claimed videophone “excludes general purpose computers.”
VIPC later amended its claims during reexamination to state that
its claimed videophone “includes a general purpose computer.”
Although excluding and then including something from a patent
claim appears to constitute an enlargement, VIPC’s claim
construction argument was not a legally binding disclaimer that
narrowed the scope of its claims.

Thus, U.S. Cellular’s argument

that VIPC enlarged its claims during reexamination is based on a
faulty premise.
As a general matter, “[a] patentee is bound by
representations made and actions that were taken in order to
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obtain the patent.”

Typhoon Touch Tech., Inc. v. Dell, Inc., 659

F.3d 1376, 1381 (Fed. Cir. 2011).

This principle finds

expression in the related doctrines of specification and
prosecution disclaimer.

“Where the specification makes clear

that the invention does not include a particular feature, that
feature is deemed to be outside the reach of the claims of the
patent, even though the language of the claims, read without
reference to the specification, might be considered broad enough
to encompass the feature in question.”

SciMed Life Sys. v.

Advanced Cardiovascular, 242 F.3d 1337, 1341 (Fed. Cir. 2001).
Similarly, “where [a] patentee has unequivocally disavowed a
certain meaning to obtain his patent, the doctrine of prosecution
disclaimer attaches and narrows the ordinary meaning of the claim
congruent with the scope of the surrender.”

Omega Eng’g, Inc. v.

Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003); see also
Spectrum Intern., Inc. v. Sterilite Corp., 164 F.3d 1372, 1379
(Fed. Cir. 1998) (“This principle applies with equal force to
arguments made by a patentee to sustain the patentability of
claims during reexamination.”).
VIPC argued that its claimed videophone did not include
“general purpose computers” during the Virgin Mobile litigation.
U.S. Cellular concedes, as it must, that VIPC’s argument does not
appear in the specification or prosecution history for the
patents-in-suit.

See Dkt. No. 69 at 8.
8

Thus, the traditional

disclaimer doctrines cited above are not directly on point.

To

the extent that U.S. Cellular’s argument sounds in judicial or
collateral estoppel, these doctrines also provide no support
given that VIPC’s claim construction arguments in the Virgin
Mobile litigation were never ruled upon.

See Walton v. Bayer

Corp., 643 F.3d 994, 1002 (7th Cir. 2011) (“Absent success in a
prior proceeding, a party's later inconsistent position
introduces no risk of inconsistent court determinations, and thus
poses little threat to judicial integrity.” (internal quotation
omitted)).
With traditional disclaimer and estoppel doctrines providing
only indirect support, U.S. Cellular’s argument boils down to the
assertion that “[a] patentee’s statements in any portion of the
public record can be a [legally binding] disclaimer.”
69 at 8-9 (emphasis added).

Dkt. No.

No case cited in U.S. Cellular’s

briefs supports this sweeping proposition.

The “public record”

that informs claim construction and may contain legally binding
disclaimers is far more limited than U.S. Cellular suggests:
The claims, specification, and file history, rather
than extrinsic evidence, constitute the public record
of the patentee's claim, a record on which the public
is entitled to rely. In other words, competitors are
entitled to review the public record, apply the
established rules of claim construction, ascertain the
scope of the patentee's claimed invention and, thus,
design around the claimed invention.

9

Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed.
Cir. 1996); see also Phillips Petrol. Co. v. Huntsman Polymers
Corp., 157 F.3d 866, 872 (Fed. Cir. 1998) (noting that
interference proceedings are also part of the public record).4
In short, U.S. Cellular’s argument that VIPC impermissibly
enlarged its claims during reexamination is based on the faulty
premise that VIPC made a legally binding disclaimer concerning
claim scope during the Virgin Mobile litigation.5

No court has

held that a claim construction argument that was never ruled on
in prior litigation nonetheless operates as a legally binding
disclaimer in future cases.

I therefore deny U.S. Cellular’s

motion for summary judgment based on VIPC’s purported violation
of 35 U.S.C. § 305.
B.
As a fallback position, U.S. Cellular argues that VIPC
substantively changed its claims during the second reexamination
proceeding such that it should be estopped from enforcing the
patents-in-suit before March 2013.

This argument cannot be

resolved before claim construction and is therefore premature.

4

The Leahy-Smith America Invents Act, signed into law on
September 16, 2011, replaced interference proceedings with
derivation proceedings. See Pub. L. No. 112-29, § 3(I) (amending
35 U.S.C. § 135).
5
In light of my holding that a claim construction argument is
not a legally binding disclaimer, I need not decide whether
VIPC’s purported disclaimer was “clear and unmistakable.” Omega
Eng’g, 334 F.3d at 1326.
10

“Unless a claim granted or confirmed upon reexamination is
identical to an original claim, the patent cannot be enforced
against infringing activity that occurred before issuance of the
reexamination certificate.”

Bloom Eng’g v. N.A. Mfg. Co., Inc.,

129 F.3d 1247, 1250 (Fed. Cir. 1997) (citing 35 U.S.C. §§ 252,
307(b)).

“‘Identical’ does not mean verbatim, but means at most

without substantive change.”

Id. (citing Seattle Box Co. v.

Indus. Crating & Packing, Inc., 731 F.2d 818, 827-28 (Fed. Cir.
1984)).

“[A] claim amendment made during reexamination following

a prior art rejection is not per se a substantive change.”
Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1347 (Fed. Cir. 1998).
Instead, courts determine whether a patent claim substantively
changed during reexamination by “analyz[ing] the claims of the
original and the reexamined patents in light of the particular
facts, including the prior art, the prosecution history, other
claims, and any other pertinent information.”

Laitram Corp. v.

NEC Corp., 952 F.2d 1357, 1362-63 (Fed. Cir. 1991).

This

analysis is akin to ordinary claim construction.
U.S. Cellular argues that VIPC substantively changed its
claims during reexamination because the “videophone” claimed in
the original patents was not “a single integrated device that
includes a general purpose computer and a telephone.”6
6

VIPC

The patent examiner applied the “broadest reasonable
interpretation” rule in determining that VIPC’s videophone was
not necessarily a single integrated device. This determination
11

counters that its claimed “videophone” always included this
limitation, which was simply made explicit during reexamination.
See Bloom Eng’g, 129 F.3d at 1250 (“An amendment that clarifies
the text of the claim or makes it more definite without affecting
its scope is generally viewed as identical[.]”).

The appropriate

time to resolve this dispute over the scope of VIPC’s original
claims--and, by extension, whether VIPC substantively changed its
claim during reexamination--is during claim construction
proceedings in this case.

“Numerous courts have held that the

inquiry of whether two claims are identical should not occur
until after formal claim construction.”

Etagzm, Inc. v.

Quiksilver, Inc., No. SACV 10-0300 DOC (MLGx), 2012 WL 2135497,
at *2 (C.D. Cal. June 11, 2012) (collecting cases).
Therefore, U.S. Cellular’s motion for partial summary
judgment on the ground that VIPC substantively changed its claims
during reexamination is denied as premature.

is not binding during judicial claim construction because a
court’s goal is to identify the one “correct” interpretation of
claim terms. Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d
1367, 1378-79 (Fed. Cir. 2012).
12

III.
U.S. Cellular’s motion for summary judgment is DENIED for
the reasons stated above.
ENTER ORDER:

_____________________________
Elaine E. Bucklo
United States District Judge

Dated: February 13, 2014

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