Digital Ally, Inc. v. Taser International, Inc.

Filing 204

MEMORANDUM AND ORDER- IT IS THEREFORE ORDERED that certain terms in the patent at issue are construed. Please see order for additional information. Signed by District Judge Carlos Murguia on 7/19/2018. (ydm)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF KANSAS

DIGITAL ALLY, INC.,
Plaintiff
v.
TASER INTERNATIONAL, INC.,
Defendant.

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Case No. 16-2032-CM

MEMORANDUM AND ORDER
Plaintiff Digital Ally, Inc. filed this patent infringement case in 2016, originally alleging that
technology used with body-worn camera products sold by defendant Taser International, Inc., infringe
plaintiff’s patent, U.S. Patent No. 8,781,292 (“the ‘292 patent”). Highly generalized and summarized,
plaintiff’s product is a recording system for police departments to record traffic stops from two or
more different cameras at the same time, but from different vantage points. When there is a “trigger”
like a police vehicle siren, lights, spotlight, crash event, or a certain vehicle speed, two or more
recording devices will be activated—for example, a car camera and a body cam. All of this happens
automatically, so the officer does not have to remember to manually activate his body cam or other
recording device. The recording devices each independently record the event. Plaintiff claims that
defendant’s technology, when used with certain body cameras, infringes plaintiff’s patent.
Plaintiff later amended its complaint to add another claim for patent infringement with respect
to U.S. Patent No. 9,253,452 (“the ‘452 patent”). Plaintiff voluntarily dismissed the ‘292 petition
infringement claim. Now only the ‘452 patent claim remains.

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The case is before the court for claim construction. The court conducted a Markman1 hearing
and is now prepared to issue its rulings. Three terms remain in dispute, all appearing in Claim 10 of
the ‘452 patent: “recording device manager,” “broadcast,” and “substantially simultaneously.”
I. LEGAL STANDARDS
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), guides this court’s claim construction
analysis. In Phillips, the Federal Circuit reiterated that claim terms are given their plain and ordinary
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 1313. To determine how a person of ordinary skill in the art would understand a claim term, courts
look to several sources, including “the words of the claims themselves, the remainder of the
specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles,
the meaning of technical terms, and the state of the art.” Id. at 1314.
In discussing these sources, the Federal Circuit explained that the claims themselves provide
“substantial guidance as to the meaning of particular claim terms.” Id. Moreover, the other claims in
the patent—both asserted and unasserted—can be valuable sources regarding the meaning of a claim
term. Id. Despite the primacy of the claim language, the specification “is always highly relevant to
the claim construction analysis” and “is the single best guide to the meaning of a disputed term.” Id.
But the Federal Circuit has “expressly rejected the contention that if a patent describes only a single
embodiment, the claims of the patent must be construed as being limited to that embodiment.” Id. at
1323. The prosecution history also helps demonstrate how the inventor understood the patent and
whether the inventor limited the scope of the claims to obtain his patent. Id. at 1317.

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Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996)

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“When the parties present a fundamental dispute regarding the scope of a claim term, it is the
court’s duty to resolve it.” O2 Micro Int’l, Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362
(Fed. Cir. 2008). The court bears this responsibility because “the ultimate question of construction [is]
a legal question.” Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 841, 842 (2015); see also O2
Micro, 521 F.3d at 1360 (“[T]he court, not the jury, must resolve that dispute.”) (citation omitted). For
this reason, “[a] determination that a claim term ‘needs no construction’ or has the ‘plain and ordinary
meaning’ may be inadequate when a term has more than one ‘ordinary’ meaning or when reliance on a
term’s ‘ordinary’ meaning does not resolve the parties’ dispute.” O2 Micro, 521 F.3d at 1361.
Some claim terms are written in means-plus-function (“MPF”) format. This claiming format is
allowed and defined by 35 U.S.C. § 112, ¶ 6, which allows an inventor to draft a claim in functional
terms rather than defining the structural elements or components that accomplish the function. Claim
elements that employ the word “means” are presumed to be in MPF format, and claim terms that do
not include the word “means” are presumed to not be in MPF format. Williamson v. Citrix Online,
LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015). Construction of an MPF claim term involves two steps:
identifying the function first and then identifying the structure that accomplishes the claimed function.
Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1332 (Fed. Cir. 2006).
II. DISCUSSION
A. “Recording Device Manager”
The first term at issue is “recording device manager.” Plaintiff asks the court to apply the plain
and ordinary meaning of this term, arguing that it requires no construction. Defendant argues that the
court must use MPF format under 35 U.S.C. § 112(f) because the definition is “a device for managing
recording devices.” According to defendant, the function is managing multiple recording devices by
syncing, receiving communication signals from, and sending communication signals to the devices.

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The structure consists of housing, controller, receiver and transmitter (or transceiver), internal clock,
communications port, power source, and their equivalents. Alternatively, defendant argues that the
term is indefinite.
The term “recording device manager” does not include the word “means” and, therefore, is
presumed to not be in MPF format. Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161
F.3d 696, 703–04 (Fed. Cir. 1998). Defendant can rebut this presumption if the intrinsic and extrinsic
evidence so warrants. Id. at 704. In determining whether defendant rebuts this presumption, “the
focus remains on whether the claim as properly construed recites sufficiently definite structure to
avoid the ambit of § 112, ¶ 6.” Id.
Defendant has not rebutted the presumption. Defendant did not present testimony from a
person of ordinary skill in the art to show that the claim term “fails to ‘recite sufficiently definite
structure’ or else recites ‘function without reciting sufficient structure for performing that function.’”
Williamson, 792 F.3d at 1349 (citation omitted). And the specification adequately recites structure.
See, e.g., Phillips, 415 F.3d at 1311 (“The claims and the specification unmistakably establish that the
‘steel baffles’ refer to particular physical apparatus.”). When the claim does not recite the term
“means,” the court may consult the intrinsic and extrinsic evidence to determine whether the
“challenger has rebutted the presumption that a claim limitation . . . connotes sufficiently definite
structure to those of skill in the art.” Inventio AG v. ThyssenKrupp Elevator Americas Corp., 649 F.3d
1350, 1357 (Fed. Cir. 2011), overruled on other grounds by Williamson, 792 F.3d at 1349. Defendant
failed to meet its burden.
The court does not believe that it would be helpful to the progression of the case, however, to
rule that construction of “recording device manager” is unnecessary. Although the term is not in MPF
format, the court still finds that construction is proper. Specifically, the court determines that a

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“recording device manager” should be defined as “a device that receives a trigger signal from a law
enforcement vehicle and, in response, broadcasts at least one communication signal including
correlation data to two recording devices, instructing the first recording device to begin recording the
first set of record data and instructing the second recording device to begin recording the second set of
record data.” This definition is derived from the claim itself and is consistent with the specification.
B. “Broadcast”
The court next examines the term “broadcast.” Again, plaintiff asks the court to apply the
plain and ordinary meaning of this term, arguing that it requires no construction. Defendant asks the
court to define “broadcast” as “sending a transmission simultaneously to two or more synced
recording devices.” The key issue here is whether the definition should include the word “synced.”
The court determines that the term “broadcast” should be construed as “sending a transmission
simultaneously to two or more recording devices.” There is no requirement in the claim that the
devices be synced. The claims define the scope of the invention—not the specification. Ariad
Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1347 (Fed. Cir. 2010). Claim 10 does not include the
term “synced,” and the court will not import it from the specification.
C. “Substantially Simultaneously”
Finally, plaintiff argues that the court should define “substantially simultaneously” as “at the
same time or nearly the same time.” Defendant argues that the term is indefinite. The court agrees with
plaintiff’s definition of this term, and construes the term to mean “at the same time or nearly the same
time.” Although the term “substantially” is one of approximation, see Apple Inc. v. Samsung Elecs. Co.,
Ltd., 786 F.3d 983, 1003 (Fed. Cir. 2015), this does not mean that it is per se indefinite, Bausch & Lomb,
Inc. v. Alcon Labs., Inc., 64 F. Supp. 2d 233, 241 (W.D.N.Y. 1999). The court recognizes that
reasonable clarity is required, but that “absolute precision is unattainable.” Nautilus, Inc. v. Biosig

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Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). The court concludes that one skilled in the relevant art
would understand that “substantially simultaneously” merely allows for a slight difference in the time
the recording devices begin recording. It is not so uncertain as to render the term indefinite.
IT IS THEREFORE ORDERED that certain terms in the patent at issue are construed as set
forth above.
Dated this 19th day of July, 2018, at Kansas City, Kansas.

s/ Carlos Murguia___________________
CARLOS MURGUIA
United States District Judge

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