SUNRISE TECHNOLOGIES, INC. v. CIMCON LIGHTING, INC.

Filing 76

Judge Nathaniel M. Gorton: ENDORSED ORDER entered. MEMORANDUM AND ORDERMARKMAN ORDERIn accordance with the foregoing, with respect to United States Patent No. 7,825,793:A) the preamble to claim 1 is construed as limiting;B) the wireless protocol means: the Zigbee protocol;C) end user device means: a device that collects information about a local parameter;D) employs a ZigBee protocol to communicate outside the target zone is accorded its plain and ordinary meaning;E) actuator means: a device capable of detecting, monitoring, or controlling a local parameter;F) interact with is accorded its plain and ordinary meaning;G) target zone means: a physical area that contains a local pa rameter, with the exception of a street light pole on which a communication node is mounted which node also functions as an end user device;H) within is accorded its plain and ordinary meaning;I) adjacent is accorded its plain and ordinary meaning;J) end user is accorded its plain and ordinary meaning;K) end user adapted to communicate is accorded its plain and ordinary meaning.So ordered.(Caruso, Stephanie)

United States District Court
District of Massachusetts

Sunrise Technologies, Inc.,
Plaintiff,
v.
Cimcon Lighting, Inc.,
Defendant.

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Civil Action No.
15-11545-NMG

MEMORANDUM & ORDER
GORTON, J.
Plaintiff Sunrise Technologies, Inc. (“plaintiff”) alleges
defendant Cimcon Lighting, Inc. (“defendant”) is liable for
direct, contributory, induced and willful infringement of one of
its patents for a system of communication combining devices that
monitor local parameters with a mesh network of wirelessly
linked communication nodes mounted on top of utility poles.
The Court held a Markman hearing on November 20, 2017,
during which the parties presented tutorials on the subject
technology and disputed the meaning of five groups of terms that
comprise nine claim terms in one claim of the patent-in-suit.
I.

Factual and Procedural Background
Plaintiff is the assignee of United States Patent No.

7,825,793 (“’793 patent”).

The ’793 patent was filed in May,

2007, and issued in November, 2010.

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The ’793 patent, entitled “Remote Monitoring and Control
System,” is an invention that allows for the remote monitoring
and control of household or building parameters such as home
security settings, fire alarm systems and other utilities.

The

patent is directed toward a communication system that relays
information between an end user device and a remote end user via
a node mounted on a utility pole, such as a telephone pole.
In April, 2015, plaintiff filed this action for patent
infringement against defendant.

After this Court allowed

several extensions of time to file a responsive pleading,
defendant moved to dismiss the complaint in March, 2016.
Plaintiff subsequently filed an amended complaint alleging
patent infringement under theories of direct, contributory,
induced and willful infringement, which defendant again moved to
dismiss.
In November, 2016, this Court held that plaintiff stated
claims for direct infringement, willful infringement and induced
infringement but allowed defendant’s motion to dismiss with
respect to contributory infringement.
II.

Analysis
A.

Principals of Claim Construction

In analyzing a patent infringement action, a court must
1) determine the meaning and scope of the patent claims asserted
to be infringed and 2) compare the properly construed claims to

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the infringing device. Markman v. Westview Instruments, Inc., 52
F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370
(1996).

The first step, known as claim construction, is an

issue of law for the court to decide. Id. at 979.

The second

step is determined by the finder of fact. Id.
The Court’s responsibility in construing claims is to
determine the meaning of claim terms as they would be understood
by persons of ordinary skill in the relevant art. Bell Atl.
Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d
1258, 1267 (Fed. Cir. 2001).

The meanings of the terms are

initially discerned from three sources of intrinsic evidence:
1) the claims themselves, 2) the patent specification and 3) the
prosecution history of the patent. See Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582–83 (Fed. Cir. 1996).
The claims themselves define the scope of the patented
invention. See Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc).

Claim terms are generally given their

“ordinary and customary meaning,” which is the meaning that a
person skilled in the art would attribute to the claim term. See
id. at 1312-13.

Even if a particular term has an ordinary and

customary meaning, however, a court may need to examine the
patent as a whole to determine if that meaning controls. Id. at
1313 (“[A] person of ordinary skill in the art is deemed to read
the claim term . . . in the context of the entire

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patent . . . .”); see also Medrad, Inc. v. MRI Devices Corp.,
401 F.3d 1313, 1319 (Fed. Cir. 2005) (noting that a court cannot
construe the ordinary meaning of a term “in a vacuum”).
Ultimately, the correct construction will be one that
stays true to the claim language and most naturally
aligns with the patent’s description of the invention.
Phillips, 415 F.3d at 1316 (quoting Renishaw PLC v. Marposs
Societa’ Per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)).
The patent specification is “the single best guide to the
meaning of a disputed term” because it
may reveal a special definition given to a claim
term . . . that differs from the meaning it would
otherwise possess . . . [such as] an intentional
disclaimer, or disavowal, of claim scope by the
inventor.
Id. at 1316, 1321.
The Court should also consult the prosecution history
to see how the inventor and PTO understood the patent and
to ensure the patentee does not argue in favor of an
interpretation it has disclaimed. Id. at 1317.
In the rare event that analysis of the intrinsic evidence
does not resolve an ambiguity in a disputed claim term, the
Court may turn to extrinsic evidence, such as inventor and
expert testimony, treatises and technical writings. Id. at 1317.
Although extrinsic evidence may be helpful in construing claims,
the intrinsic evidence is afforded the greatest weight in
determining what a person of ordinary skill would have

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understood a claim to mean. V-Formation, Inc. v. Benetton Grp.
SpA, 401 F.3d 1307, 1310-11 (Fed. Cir. 2005).
B.

Patent No. 7,825,793
1.

The Technology

The ’793 patent, entitled “Remote Monitoring and Control
System,” is an invention that allows for the remote monitoring
and control of household and building parameters such as home
security settings, fire alarm systems, air conditioning and
water heating.

The patent is directed toward a communication

system that relays information between an end user device and a
remote end user via a node mounted on a utility pole, such as a
telephone pole.
The invention of the patent is a combination and
interconnection of two existing technologies.

The first

existing technology is the end user device, installed in a
target zone, that measures and controls a local parameter such
as temperature, motion, or electricity usage.

The second

existing technology is a communication network formed of
communication nodes mounted on utility poles.

This network is a

“mesh network”, which means that one node communicates with an
adjacent node.

A mesh network can be contrasted with a

“conventional network” where all nodes communicate with a
central hub that manages network traffic.

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The ‘793 patent is novel in that it allows the
communication nodes to receive and transmit ZigBee signals to
the end user devices.

ZigBee is a low-cost, low-power, low data

rate protocol used to create a network via radio.

In prior art,

an end user device would measure a parameter, such as
electricity usage in a home.

An employee of an electrical

company could drive to the residence, and, from a vehicle,
receive a reading of electricity usage via the ZigBee protocol.
The ‘793 patent eliminates the need for this “drive-by” method.
Instead, an end user device can send a ZigBee signal to a
communication node directly or indirectly (such as through a
Local Area Network).

The communication node communicates via

the mesh network to send the relevant information to a remote
location.
2. Agreed Claim Terms
The parties agree that the term “the wireless protocol”
should be construed as “the ZigBee protocol”.

In addition, the

parties agree that the preamble to claim 1 of the ‘793 patent
should be construed as limiting.
3. Disputed Claim Terms
The parties dispute nine terms.
of claim 1 of the ‘793 patent.
Defendant contends that

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Each term is a limitation

the crux of the parties’ dispute is whether the end user
device has to be something other than what is mounted on
the street light pole, and whether the end user device
needs to communicate with a node on a street light pole via
the ZigBee protocol.
Plaintiff maintains that neither requirement need apply
while defendant avers that those requirements comprise the
invention.
I.

“end user device”

Plaintiff’s construction:
No construction necessary
Alternatively: “a device that collects information
about a local parameter”
Defendant’s construction:
“a device configured to communicate with a remote end
user through at least one communication node mounted
on a street light pole”
Plaintiff contends that the term “end user device” needs no
construction because it would be understood by a person of
ordinary skill in the art (“POSA”) reading the patent as much as
by a lay reader.

Defendant responds that its proposed

construction follows from the title of the patent, other claim
language, and the specification and figures.
The Court prefers plaintiff’s construction.
Defendant’s contention that the claim limitations “taken
together”, require that the end user be remote is unavailing.
In some embodiments, the target zone is mobile.

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See ‘793 Patent

at 6:43-45.

Where that is the case, the end user need not be at

a great distance from the target zone.

Because defendant’s

construction would read out embodiments where the end user is in
close proximity to the target zone, the Court will not adopt it.
See Openwave Sys., Inc. v. Apple Inc., 808 F.3d 509, 517 (Fed.
Cir. 2015) (affirming district court’s claim construction
because it did not read out embodiments).
Defendant’s proposed limitation that the end user device
communicate with the end user directly through a node also
conflicts with embodiments found in the patent.

In some

embodiments, the end user device communicates with a node
indirectly, such as through a local area network (“LAN”). See
id. at 5:25-32.

Defendant’s proposed construction would exclude

such embodiments.
Claim 1 of the ‘793 patent specifies that the end user
device comprises
[a]n actuator adapted to interact with the local parameter
within the target zone, and a low-power consumption
communicator that has a unique communication address and is
adapted to communicate with the actuator and adapted to
communicate outside of the target zone using a wireless
protocol, . . .
Reading the claim term “in the context of the entire
patent, including the specification,” see Phillips, 415 F.3d at
1313), the Court will construe the term “end user” as “a device
that collects information about a local parameter”.

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II.

“employs a ZigBee protocol to communicate
outside the target zone”

Plaintiff’s construction:
No construction necessary
Alternatively: “use a ZigBee protocol to broadcast
information for which the end user is the final
intended recipient”
Defendant’s construction:
“adapted to transmit a ZigBee signal to the
communication node”
Plaintiff avers that the claim does not specify an intended
recipient and does not require a known endpoint.

Defendant

contends that the structure of the claim and the specification
require the end user device to communicate with a communication
node.
The specification considers that the end user devices
“could take several distinct forms”.

‘793 patent at 5:21.

One

embodiment discussed in the specification considers that the
low-power communicators (referred to as “transponders” in the
specification) could be part of a LAN and that the LAN could
include a gateway that would communicate with the light pole
device. Id. at 5:28-32.

This embodiment would be precluded

under defendant’s proposed construction and is therefore
disfavored. See Funai Elec. Co. v. Daewoo Elecs. Corp., 616 F.3d
1357, 1371 (Fed. Cir. 2010) (citing Hoechst Celanese Corp. v. BP
Chems. Ltd., 78 F.3d 1575, 1581 (Fed. Cir. 1996) (noting that “a

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claim construction that excludes a preferred embodiment is
rarely, if ever, correct”).
Defendant’s construction would limit the claim so as to
contradict the specification.

This Court declines to adopt that

interpretation and finds that no construction is needed.
III. “actuator”
Plaintiff’s construction:
No construction necessary
Alternatively: “a device capable of detecting,
monitoring, or controlling a local parameter”
Defendants’ construction:
“mechanism that activates process control equipment”
Plaintiff asserts that its alternative construction is
consistent with the claim and specification and that the claim
attributes broader functionality than just activation of process
control equipment.

Defendant maintains that the plain and

ordinary meaning of “actuator” requires it to “actuate”
something.

Defendant relies on the title of the patent, “Remote

Monitoring and Control System” as well as an engineering
dictionary defining actuator as “[a] mechanism to activate
process control equipment by use of pneumatic, hydraulic, or
electronic symbols.” See McGraw-Hill Dictionary of Electrical
and Computer Engineering 8 (2004).

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Because the term “actuator” is unlikely to be readily
understood by a layperson, the Court will construe this term.
Cf. CardioFocus, Inc. v. Cardiogenesis Corp., 827 F.Supp.2d 36,
41 (D. Mass. 2011) (explaining that claim construction may be
warranted where claim terms implicate “special knowledge
possessed by a person in the art”).
Claim 1 requires the actuator to “interact with” the local
parameter in the target zone.

The specification makes clear

that “interact with” incorporates a broader range of
functionality than monitoring and controlling.

For instance,

the specification discusses an “end user device, comprising an
actuator adapted to monitor or control a local parameter.” ‘793
patent at 10:16-17 (emphasis added).

The patent also describes

an embodiment, called “DANGER MONITORING” where
at least some of the end-user devices are capable of
monitoring chemical, biological, or radiological conditions
within the target zone . . .
Id. at 14:66-15:2.
Defendant’s requirement that the actuator “activates”
process control is inconsistent with the specification and
excludes one of the patent’s embodiments.

It will therefore be

rejected. See Kaneka Corp. v. Xiamen Kingdomway Grp. Co., 790
F.3d 1298, 1304 (Fed. Cir. 2015) (emphasizing that claim
constructions should not exclude preferred embodiments).

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The specification, in various places, describes the end
user device as “detecting”, “monitoring” or “controlling” a
local parameter. See ‘793 patent at 6:28-29 (“detecting garage
door opening”); ‘793 patent at 6:16-17 (“monitor or control a
local parameter”).

Accordingly, the Court will construe the

term “actuator” to mean “a device capable of detecting,
monitoring, or controlling a local parameter.”
IV.

“interact with”

Plaintiff’s construction:
No construction necessary
Alternatively: “detect, monitor, or control”
Defendants’ construction:
“monitor and control”
The parties largely restate their arguments presented in
constructing “actuator” for their proposed construction of the
term “interact with”.

Both proposed constructions add

unnecessary language to a readily understandable term.

The

Court declines to construe the term and will give it its plain
and ordinary meaning. See Harris Corp. v. IXYS Corp., 114 F.3d
1149, 1152 (Fed. Cir. 1997) (rejecting construction of a term
that “contribute[d] nothing but meaningless verbiage”).
V.

“target zone”

Plaintiff’s construction:
No construction necessary

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Alternatively: “a physical area that contains a local
parameter”
Defendants’ construction:
“a physical area that does not include a street light
pole”
Plaintiff asserts that “target zone” needs no construction
because it would be understood by a POSA reading the patent and
that the claim language does not purport to limit the “target
zone” in any way.

Defendant emphasizes that the claims require

at least one end user device that is not mounted on a street
light pole.
At the Markman hearing, plaintiff argued that the same
light pole mounted device could, in different contexts, act as
an end user device (by monitoring and controlling a street
light) and a communication node (by sending a Zigbee signal to
another light pole mounted communication node).

Plaintiff

conceded that no language in the patent contemplates this “dualfunction theory” but noted that a patentee is entitled to a
patent’s full scope absent disavowal.
The Court finds that neither party’s construction is
appropriate.

Plaintiff is correct that defendant’s construction

would mistakenly exclude a public park that had a light pole in
it but defendant is correct that the target zone must be
different from a light pole.

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The parties agree that a public park can be a target zone.
For instance, the park could contain a pond with an end user
device monitoring the water level of the pond.

That end user

device could communicate with a communication node on a light
pole within the park and that communication node could then
communicate with another communication node mounted on a light
pole outside the park.
an embodiment.

Defendant’s construction excludes such

At the hearing, defendant contended that the

target zone in that instance would not be the park but could,
instead, be the pond.

That is a fair construction but, if the

parameter was the electricity usage in the entire park, it would
result in a strange, donut-shaped target zone that would exclude
islands of light poles.

Accordingly, defendant’s proposed

construction is unacceptable.
Plaintiff proposes an over-broad construction of the term
“target zone”.

While the Court agrees that the term is broad,

it is not unlimited.

Specifically, plaintiff’s “dual-function”

target zone theory is unavailing.

Claim language must be “read

in the context of the specification.” Verizon Servs. Corp. v.
Vonage Holdings Corp., 503 F.3d 1295, 1312 (Fed. Cir. 2007)
(citing Phillips, 415 F.3d at 1315).

The patent provides a

lengthy list of possible embodiments, including a residence,
warehouse, business building, parking lot, storage yard,
stationary or moving vehicle or “any other stationary or mobile

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entity that merits monitoring or control.”

See ‘793 Patent at

6:40-45.
Plaintiff’s dual function theory is not, however,
compatible with the language of the claim.

In plaintiff’s

proposal, the light pole bearing the dual-function communication
node/end user device would constitute the target zone, but in
that instance the end user device would not be “within the
target zone”. See ‘793 Patent at 17:33.
Furthermore, plaintiff’s proposed construction may well
render the claim obvious in light of the prior art of
communication networks consisting of communication nodes on
light poles. See Becton, Dickinson & Co. v. Tyco Healthcare
Grp., LP, 616 F.3d 1249, 1255 (Fed. Cir. 2010) (quoting
Whittaker Corp. v. UNR Indus., Inc., 911 F.2d 709, 712 (Fed.
Cir. 1990) (“[C]laims are generally construed so as to sustain
their validity, if possible.”).
The Court will adopt a construction that “stays true to the
claim language and most naturally aligns with the patent's
description of the invention.” Medicines Co. v. Mylan, Inc., 853
F.3d 1296, 1309 (Fed. Cir. 2017) (quoting Phillips, 415 F.3d at
1312).
theory.

That description does not include the dual-function
Accordingly, the Court will construe “target zone” to

mean “a physical area that contains a local parameter, with the

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exception of a street light pole on which a communication node
is mounted which node also functions as an end user device.”
VI.

“within”

Plaintiff’s construction:
No construction necessary
Alternatively: “at least partially inside”
Defendants’ construction:
“completely inside of”
Both parties contend that the plain and ordinary meaning of
the word “within” supports their proposed construction.
Defendants do not overcome the “presumption in favor of the
ordinary meaning” as understood by a POSA. Anchor Wall Sys.,
Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1306
(Fed. Cir. 2003).
The term “within” requires no construction.
VII. “adjacent”
Plaintiff’s construction:
No construction necessary
Alternatively: “next to or adjoining”
Defendants’ construction:
“completely outside and nearby”
The analysis of the term “adjacent” follows that of the
term “within”.

The Court declines to add unnecessary verbiage

to an otherwise clear term. See Harris Corp., 114 F.3d at 1152.

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VIII. “end user”
Plaintiff’s construction:
No construction necessary
Alternatively: “an entity monitoring or controlling a
local parameter through a system comprising end user
devices”
Defendants’ construction:
“person”
Plaintiff maintains that the term “end user” need not be
limited to a natural person because the term could refer to an
entity, a system or a group of persons.

Defendant responds that

the plain meaning of “end user” is a person and that the patent
includes no instances where an end user is anything other than a
person.
The patent specification provides for “a remote end user,
who might be an operator at a fuel delivery dispatch facility.”
See ‘793 Patent at 1:28-29.

Plaintiffs contend that the

operator could be an automated system.

The Court agrees.

Similarly, the end user could be a group of persons monitoring a
parameter at a remote location.

Both of these possibilities

would be excluded under defendant’s proposed construction, which
would be unnecessarily limiting.
Defendant is correct that the patent primarily contemplates
that the end user will be a human person.

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Nonetheless, the

Court will not limit the claims scope merely because the term
has a narrower meaning in an embodiment. See SanDisk Corp. v.
Memorex Prods., Inc., 415 F.3d 1278, 1286 (Fed. Cir. 2005).
The Court finds that the term “end user” needs no
construction.
IX. “end user adapted to communicate”
Plaintiff’s construction:
No construction necessary
Alternatively: “an entity monitoring or controlling a
local parameter through a system comprising end user
devices capable of communicating”
Defendant’s construction:
Indefinite.
Defendant, relying on its construction of “end user” as
“person”, contends that the term “end user adapted to
communicate” is indefinite because it is not clear how to
determine whether a given person is “adapted to communicate”.
A patent is invalid for indefiniteness
if its claims, read in light of the specification
delineating the patent, and the prosecution history, fail
to inform, with reasonable certainty, those skilled in the
art about the scope of the invention.
Dow Chem. Co. v. Nova Chemicals Corp. (Canada), 803 F.3d
620, 625 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 2452 (2016)
(quoting Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct.
2120, 2124 (2014)).
As an initial matter, the Court notes that indefiniteness
should be resolved at the summary judgment stage rather than

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upon claim construction. See Amax, Inc. v. ACCO Brands Corp.,
2017 WL 4621780, at *7 (D. Mass. Oct. 13, 2017) (citing Biosig
Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374 (Fed. Cir.
2015)) (explaining that indefiniteness is inappropriate for the
claim construction stage because it involves the high “clear and
convincing proof” standard).
As defendant explained at the Markman hearing, its
indefiniteness contention is entirely dependent on its “end
user” construction.

Because the Court has already declined to

construe the term “end user” as “person”, there is no reason to
believe that a POSA would not understand the patent with
reasonable certainty.

Nonetheless, the Court will postpone any

indefiniteness determinations for a later stage.
The Court declines to construe the term “end user adapted
to communicate”.
MARKMAN ORDER
In accordance with the foregoing,
with respect to United States Patent No. 7,825,793:
A)

the preamble to claim 1 is construed as limiting;

B)

“the wireless protocol” means:
“the Zigbee protocol”;

C)

“end user device” means:
“a device that collects information about a local
parameter”;

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D)

“employs a ZigBee protocol to communicate outside
the target zone” is accorded its plain and
ordinary meaning;

E)

“actuator” means:
“a device capable of detecting, monitoring, or
controlling a local parameter”;

F)

“interact with” is accorded its plain and
ordinary meaning;

G)

“target zone” means:
“a physical area that contains a local parameter,
with the exception of a street light pole on
which a communication node is mounted which node
also functions as an end user device”;

H)

“within” is accorded its plain and ordinary
meaning;

I)

“adjacent” is accorded its plain and ordinary
meaning;

J)

“end user” is accorded its plain and ordinary
meaning;

K)

“end user adapted to communicate” is accorded its
plain and ordinary meaning.

So ordered.
/s/ Nathaniel M. Gorton_____d
Nathaniel M. Gorton
United States District Judge
Dated November 22, 2017

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