Voice Domain Technologies, LLC v. Apple Inc.

Filing 91

District Judge Timothy S Hillman: ORDER entered. MEMORANDUM OF DECISION ON CLAIM CONSTRUCTION. (Jones, Sherry)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
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VOICE DOMAIN TECHNOLOGIES, LLC
Plaintiff,
v.
APPLE INC.,
Defendant.
___________________________

CIVIL ACTION
NO. 13-40138-TSH

ORDER AND MEMORANDUM OF DECISION ON CLAIM CONSTRUCTION
August 4, 2015
HILLMAN, D.J.
This is a patent infringement suit involving voice recognition technology. Plaintiff Voice
Domain Technologies, LLC (“Voice Domain”) seeks a judgment that Defendant Apple Inc.
(“Apple”) infringes at least one claim of its patent, U.S. Patent No. 6,281,883 (the “‘883
Patent”), in violation of 35 U.S.C. § 271. Apple seeks declarations of non-infringement,
invalidity, and unenforceability of the ‘883 Patent. The parties seek construction of the following
ten claim terms:
(1) “peripheral”
(2) “processing system”
(3) “coupling mechanism for providing said microphone signal, said command
notification signal, said data notification signal and said cursor signal to said processing system”
(4) “microphone interpretation mechanism which, in response to said command and data
notification signals, determines when said microphone signal represents command and when it
represents data”
(5) “cursor position transducer”
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(6) “command notification signal”
(7) “data notification signal”
(8) “voice data button”
(9) “voice command button”
(10) “in response to said command and data notification signals, determines when said
microphone signal represents command and when it represents data”
I. Background
During the 1990s, inventor Bruce Barker developed a user-interface system for having
voice data and voice commands executed on a processing system. Mr. Barker filed the patent
application that became the ‘883 Patent in September 1994. Initially, the patent examiner
rejected Barker’s claims as unpatentable. The Board of Patent Appeals eventually overruled that
decision, and the Patent Office duly issued the ‘883 Patent, titled “Data Entry Device,” to Barker
on August 28, 2001. Barker, in turn, assigned the ‘883 Patent to his one-man technology
company, Voice Domain Technologies, LLC. In general, the invention of the ‘883 Patent is a
handheld data entry controller that allows a user to communicate information to a computer. In
the preferred embodiment of the invention, the user can speak into a handheld device to have a
textual transcript of the user’s speech displayed on a computer screen. The user can then
manipulate the text by sending commands from the controller to the computer. The invention
includes a handheld “peripheral” containing a microphone, buttons to indicate when the user’s
speech is voice data and when it is a voice command, and a cursor position transducer for
positioning a cursor on a screen. It also includes a “processing system” with a display screen, and
a mechanism for determining when the microphone signal sent by the user is data and when it is
a command.

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Voice Domain filed this action on November 25, 2013, alleging that Apple’s iPhone and
other devices running the Siri voice recognition program infringe the ‘883 Patent. (Docket No.
1). On March 7, 2014, Apple counterclaimed for non-infringement, invalidity and
unenforceability. (Docket No. 28). On January 13, 2015, the Court held a Markman hearing at
which the parties proposed constructions for disputed claim terms.
II. Legal Framework
Claim construction is a question of law decided by the courts. See Markman v. Westview
Instruments, Inc., 517 U.S. 370, 372, 116 S. Ct. 1384 (1996). The goal of claim construction “is
to determin[e] the meaning and scope of the patent claims asserted to be infringed.” 02 Micro
Int’l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1360 (Fed. Cir. 2008). District
courts have a duty to construe terms when the parties present a fundamental dispute regarding
the scope of a claim term. Id. at 1362. However, courts are not required to construe every
limitation present in a patent’s asserted claims, and may assign a claim term its ordinary meaning
if it resolves the dispute between the parties. Id. at 1361-62. A court correctly construes a patent
claim when the construction “stays true to the claim language and most naturally aligns with the
patent’s description of the invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir.
2005). When courts construe a claim’s meaning, they follow a hierarchical order of sources by
magnitude of deference beginning first with “the words of the claims themselves, [then] the
remainder of the specification, [followed by] the prosecution history, and [finally] extrinsic
evidence concerning relevant scientific principles, the meaning of technical terms, and the state
of the art.” Id. at 1314 (citing Innova/Pure Water, Inc. v. Safari Water Filtration Sys., 381 F.3d
1111, 1116 (Fed. Cir. 2004)).

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The Claim Language
Claim construction analysis begins with the words of a patent’s claims. See Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). “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, 415 F.3d at 1312 (citing Innova/Pure Water, 381 F.3d at 1115). In
many instances, how a term is used “within the claim provides a firm basis for construing the
term.” Id. at 1314. The underlying principle of claim construction is that claim terms “are
generally given their ordinary and customary meaning”—that 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.”
Phillips, 415 F.3d at 1312-13 (citing Vitronics, 90 F.3d at 1582; Innova/Pure Water, 381 F.3d at
1116). There are two exceptions to this plain-meaning rule: “(1) when a patentee sets out a
definition and acts as his own lexicographer, or (2) when the patentee disavows the full scope of
a claim term either in the specification or during prosecution.” Thorner v. Sony Computer Entm’t
Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing Vitronics, 90 F.3d at 1580).
The Specification Language
The claim language does not stand alone. It is well-established that “the claims ‘[are]
read in view of the specification, of which they are a part.’” Meyer Intellectual Properties Ltd. v.
Bodum, Inc., 690 F.3d 1354, 1368 (Fed. Cir. 2012) (quoting Markman, 52 F.3d at 979). The
specification language serves the “purpose of better understanding the meaning of the claim; but
not for the purpose of changing it, and making it different from what it is.” White v. Dunbar, 119
U.S. 47, 51-52, 7 S. Ct. 72 (1886). 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. This is because the specification “may reveal a

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special definition given to a claim term . . . [or] an intentional disclaimer, or disavowal, of claim
scope by the inventor.” Phillips, 415 F.3d at 1316.
Although courts must interpret the meaning of a claim in light of the specification, it is
improper to import limitations from the specification into the claims. See Phillips, 415 F.3d at
1323. The claims themselves, “not specification embodiments, define the scope of patent
protection.” Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009). 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.”
Phillips, 415 F.3d at 1323. To avoid improperly importing limitations from the specification into
the claims, courts must recall “that the purposes of the specification are to teach and enable those
of skill in the art to make and use the invention.” Id. “[T]he line between construing terms and
importing limitations can be discerned with reasonable certainty and predictability if the court’s
focus remains on understanding how a person of ordinary skill in the art would understand the
claim terms.” Id.
The Patent Prosecution History
In construing claim terms, courts should also consider the patent’s prosecution history.
Phillips, 415 F.3d at 1317. The prosecution history is the final record of negotiation between the
applicant and the United States Patent and Trademark Office and refers to the prior art
throughout the patent examination. Id. The file history can inform a claim term’s meaning “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. However, because the file history represents an ongoing negotiation between the PTO
and the inventor, rather than the final product of that negotiation, “it often lacks the clarity of the

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specification and thus is less useful for claim construction purposes.” Netcraft Corp. v. eBay,
Inc., 549 F.3d 1394, 1401 (Fed. Cir. 2008) (quoting Phillips, 415 F.3d at 1317). As with the
specification, courts must “not rely on the prosecution history to construe the meaning of the
claim term to be narrower than it would otherwise be unless a patentee limited or surrendered
claim scope through a clear and unmistakable disavowal.” 3M Innovative Properties Co. v.
Tredegar Corp., 725 F.3d 1315, 1322 (Fed. Cir. 2013).
Extrinsic Evidence
The final level of the claim construction framework is extrinsic evidence, which is “all
evidence external to the patent and prosecution history, including expert and inventor testimony,
dictionaries, and learned treatises.” Phillips, 415 F.3d at 1317. This type of evidence helps guide
courts in “determin[ing] what a person of ordinary skill in the art would understand claim terms
to mean.” Id. at 1319. “[C]onsultation of extrinsic evidence is particularly appropriate to ensure
that [a judge’s] understanding of the technical aspects of the patent is not entirely at variance
with the understanding of one skilled in the art.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182
F.3d 1298, 1309 (Fed. Cir. 1999). Extrinsic sources, however, are less reliable than intrinsic
evidence for several reasons. See Phillips, 415 F.3d at 1318-19. These include the fact that
extrinsic evidence is independent from the patent document, creates a risk of potential bias, and
may be of marginal relevance. See id. (describing reasons extrinsic evidence is less reliable than
the patent and its prosecution history).

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III. Claim Construction Analysis
The ‘883 Patent concludes with three claims. The parties identify ten claim terms for
construction, all of which are contained in independent Claim 1 of the ‘883 Patent. Claim 1, with
the disputed terms emphasized, reads:
1. A data entry system comprising a handheld peripheral and a processing system,
wherein
said handheld peripheral comprises:
a microphone signal representative of a user’s voice,
a voice command button for providing a command notification signal
indicating whether said voice command button is asserted,
a voice data button for providing a data notification signal indicating
whether said voice data button is asserted,
a cursor position transducer for providing a cursor signal representative of
a desired cursor position on a display screen of said processing system,
and
a coupling mechanism for providing said microphone signal, said
command notification signal, said data notification signal, and said cursor
signal to said processing system; and wherein
said processing system comprises:
said display screen, and
microphone interpretation mechanism which, in response to said
command and data notification signals, determines when said microphone
signal represents command and when it represents data
U.S. Patent No. 6,281,883, col.4 ll.25-49 (filed Sep. 8, 1994) (hereinafter “’883 Patent, col._
ll.__”). Each of the disputed terms are discussed, in turn, below. For ease of reference, the
disputed terms and constructions of each party are displayed in chart form.

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A.
Disputed Term

“peripheral” and “processing system”
Apple’s Construction

“peripheral”

“device for providing
communication or inputs to a
separate and distinct computer”

“processing
system”

“a computer which receives
inputs or communication from a
separate and distinct peripheral”

Voice Domain’s Construction
plain meaning; alternatively, “a
device that provides
communications or inputs”
plain meaning; alternatively, “a
system of one or more processors
that receives inputs or
communications from a
peripheral”

“Peripheral” appears in Claim 1 of the ‘883 Patent, and “processing system” appears in
Claims 1, 2, and 3. The claim construction analysis of these two terms involves substantial
overlap. Accordingly, the Court addresses the terms together. The parties agree that a
“peripheral” is a device for providing communications or inputs, and that a “processing system”
is a device that receives inputs or communications from a peripheral. The dispute over these
terms is limited to (1) whether the claimed “peripheral” must be separate and distinct from the
claimed “processing system;” and (2) whether “processing system” means a computer.
With respect to the first issue, Apple contends that the plain meaning of “peripheral,” as
claimed in the ‘883 Patent, requires it to be “separate and distinct” from the processing system.
The Court declines to adopt this construction. The Federal Circuit has repeatedly held that,
absent clear lexicography or disclaimer, “it is improper to read a limitation from the specification
into the claims.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 904 (Fed. Cir. 2004). Even
where the specification describes a single preferred embodiment, courts must not read patent
claims restrictively unless the inventor “has demonstrated a clear intention to limit the claim
scope using words or expressions of manifest exclusion.” See id. at 906 (internal quotations
omitted). Yet Apple’s proposed construction runs afoul of this principle by importing from the

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preferred embodiment the requirement that the peripheral is both “separate and distinct” from the
processing system.
It is true that the specification describes two different components—a handheld data entry
device and a computer—that are connected by a transmission cable. See ‘883 Patent, col.1 ll.6066; figs. 1 & 3. But the specification does not expressly restrict the patent’s scope to its preferred
embodiment or other written descriptions. The Court sees nothing in the claim language that
draws in the phrase “separate and distinct.” This is fatal to Apple’s proposal, because a party
wishing to narrow a patent’s scope by way of statements in the written description must identify
a textual hook in the claim language. See NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282,
1310 (Fed. Cir. 2005). The technical definitions offered by Apple do not go so far as to require
the “separate and distinct” limitation. See, e.g., The New IEEE Standard Dictionary of Electrical
and Electronics Terms (5th Ed. 1993), Docket No. 68-9, Ex. 8 (defining “peripheral device” as
“[a] device connected to another device (host) that, in turn, controls its operation”). Indeed,
Apple’s acknowledgement at the Markman hearing that the words “separate and distinct” are
somewhat redundant suggests that a person of ordinary skill in the art would not understand the
claimed peripheral and processing system in such a way. See Tr. of Markman Hr’g, Docket No.
86 at 50:24-51:8.
The Court draws additional support from Federal Circuit precedents establishing that
separately claimed components need not be separate structures. For example, in In re Papst
Licensing Digital Camera Patent Litigation, the Federal Circuit found that the district judge
improperly construed the claim term “interface device” as a “stand-alone device . . . that is
physically separate and apart from” its host computer. 778 F.3d 1255, 1262 (Fed. Cir. 2015). The
court concluded that the district court’s narrow construction was unwarranted because nothing in

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the claim language or intrinsic record forbid the two components from being housed in the same
structure. See id. at 1262-64; see also NTP, Inc., 418 F.3d at 1309-10 (rejecting argument that
two separately claimed components had to reside in “separate and distinct” housing or structure
because the claim language did not support such an interpretation); Gen. Elec. Co. v. Int’l Trade
Comm’n, 685 F.3d 1034, 1044-46 (Fed. Cir. 2012) (rejecting argument that two components
must be physically separate because nothing in the claim language or specification supported
such a narrow construction). Apple attempts to skirt the significance of these cases by arguing
that its construction does not foreclose the possibility that the peripheral and processing system
could be housed in the same structure. This argument belies the reality that the phrase “separate
and distinct” unnecessarily suggests that the claimed components are in different physical
locations. The claim language of the ‘883 Patent contains no such restriction.
Conversely, Voice Domain’s proposal—“a device that provides communications or
inputs”—is too broad. The claim language, read in view of the specification, suggests that the
peripheral and processing system are two different components that must be connected to one
another. Significantly, Claim 1 recites a “coupling mechanism” that provides signals from the
peripheral to the processing system. See ‘883 Patent col.4 ll.39-43. The claimed “coupling
mechanism” suggests that the peripheral and processing system must be linked. The specification
further describes the coupling mechanism as a transmission cable “connected between the data
entry device and a processing device,” or a wireless transmitter that transmits data and
commands from the peripheral to the processing system. Id. at col.1 ll.65-2:5.
The file history and extrinsic evidence suggest that the peripheral and processing system
must be connected. The file history establishes that that Barker envisioned a handheld
microphone linked to a processing system. See, e.g., Appellant’s Br. on Appeal, Docket No. 68-

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5, Ex. 4 at 3 (“The handheld peripheral includes a microphone . . . to allow the user to control the
processing system with a convenient handheld device.”). Technical dictionaries from the early
1990s define “peripheral” with the word “connected.” See, e.g., Microsoft Press Computer
Dictionary (1991), Docket No. 68-12, Ex. 11 (defining “peripheral” as “a term used for devices .
. . that are connected to a computer and are controlled by its microprocessor). Accordingly, the
Court will include “connected” in its constructions to describe the relationship between the
peripheral and the processing system. This approach is consistent with Voice Domain’s own
assertion that “the term ‘peripheral’ has long referred to an input or output device connected to a
processor.” See Pl.’s Responsive Claim Constr. Brief, Docket No. 76 at 8.
Regarding the parties’ second dispute, the Court rejects Apple’s contention that
“processing system” means “a computer.” Although the specification uses the word “computer”
as a synonym for “processing device,” see ‘883 Patent, col.1 ll.66-67, the use of the term system
in all three claims connotes a broader meaning. Therefore, the Court declines to limit the claimed
“processing system” to “a computer.” See Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367,
1371 (Fed. Cir. 2014) (“[W]e do not read limitations from the embodiments in the specification
into the claims.”). Instead, the Court will adopt Voice Domain’s proposed phrase “a system of
one or more processors.”
For the reasons stated above, the Court will construe “peripheral” as “a device that
provides communications or inputs to a connected processing system.” The Court will construe
“processing system” as “a system of one or more processors that receives inputs or
communications from a connected peripheral.”

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B.

“coupling mechanism for . . .” and “microphone interpretation
mechanism which . . .”

Apple contends that two elements claimed in the ‘883 Patent, (1) “coupling mechanism
for . . .” and (2) “microphone interpretation mechanism which . . .”, are means-plus-function
limitations subject to analysis under 35 U.S.C. § 112, ¶ 6. Voice Domain argues that these terms
are not means-plus-function limitations and proposes an alternative construction for each. To
provide a framework for analysis of these terms, the Court begins with a description of meansplus-function claiming.
Means-Plus-Function Claiming
The Patent Act requires that a patent specification “conclude with one or more claims
particularly pointing out and distinctly claiming the subject matter” which the inventor regards
as the invention. 35 U.S.C. § 112, ¶ 2 (emphasis added).1 To meet this definiteness requirement,
“a patent’s claims, viewed in light of the specification and prosecution history, [must] inform
those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus v.
Biosig Instruments, Inc., --- U.S. ---, ---, 134 S. Ct. 2120, 2129 (2014). Typically, the
definiteness requirement of § 112, ¶ 2 prohibits a patentee from describing the invention merely
in terms of function. See, e.g., United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 234, 63
S. Ct. 165 (1942). In other words, “the patentee may not by claiming a patent on the result or
function of a machine extend his patent to devices or mechanisms not described in the patent.”
Holland Furniture Co. v. Perkins Glue Co., 277 U.S. 245, 257, 48 S. Ct. 474 (1928). However, §

Following enactment of the Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011),
paragraphs 1-6 of § 112 became designated as § 112(a)-(f). However, “[t]he amended versions of those provisions
are inapplicable to patent applications filed before September 16, 2012 . . . .” See Nautilus, Inc. v. Biosig
Instruments, Inc., --- U.S. ---,---, 134 S. Ct. 2120, 2125 n.1 (2014). Because the application resulting in the ‘883
Patent was filed in 1994, this claim construction order refers to provisions of the Patent Act predating the AIA
amendments. See also Williamson v. Citrix Online, LLC, No. 2013-1130, 2015 WL 3687459, at *1 n.2 (Fed. Cir.
Jun. 16, 2015).
1

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112, ¶ 6 creates an exception to this general rule. It provides:
[a]n element in a claim for a combination may be expressed as a means or step for
performing a specified function without the recital of structure, material, or acts in
support thereof, and such claim shall be construed to cover the corresponding structure,
material, or acts described in the specification and equivalents thereof.
35 U.S.C. § 112, ¶ 6. This is known as “means-plus-function” claiming. It is a convenience for
patentees that allows the expression of claim limitations in functional terms “without requiring
the patentee to recite in the claims all possible structures” that could be used as a means in the
invention. Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1211 (Fed.
Cir. 2003). In return for this drafting convenience, patentees pay the price of having to disclose,
in the specification, a corresponding structure for performing the claimed function. See Noah
Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1318 (Fed. Cir. 2012). “If the specification is not clear as
to the structure that the patentee intends to correspond to the claimed function, then the patentee
has not paid the price but is rather attempting to claim in functional terms unbounded by any
reference to structure in the specification.” Med. Instrumentation, 344 F.3d at 1211. This is
impermissible, because a failure to disclose a corresponding structure is “in effect [a] fail[ure] to
particularly point out and distinctly claim the invention as required by” the definiteness
requirement of § 112, ¶ 2. See In re Donaldson Co., Inc., 16 F.3d 1189, 1195 (Fed Cir. 1994).
When faced with construction of means-plus-function claim terms, courts must make a
threshold determination that the claim terms are indeed functional in nature and therefore subject
to treatment under § 112, ¶ 6. See Williamson v. Citrix Online, LLC, 2015 WL 3687459, at *4-5
(Fed. Cir. June 16, 2015). If so, courts construe means-plus-function terms according to a twostep process. Id. at *9. First, the court identifies the claimed function. Id. Second, the court
determines whether adequate corresponding structure is disclosed in the specification. Id. With
this framework in place, the Court turns to analysis of the disputed terms.
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1. “coupling mechanism for providing said microphone signal, said
command notification signal, said data notification signal and said
cursor signal to said processing system”
Disputed Term

Apple’s Construction

Voice Domain’s
Construction

Subject to § 112, ¶ 6
“coupling mechanism for
providing said microphone
signal, said command
notification signal, said data
notification signal and said
cursor signal to said
processing system”

Function: “providing said
microphone signal, said
command notification signal,
said data notification signal and
said cursor signal to said
processing system”

“an electrical connection,
wired or wireless, to the
processing system from
the peripheral”

Structure: transmission cable or
wireless transmitter
“Coupling mechanism for . . .” appears in Claims 1 and 3 of the ‘883 Patent. Apple
proposes that the term is a means-plus-function limitation subject to analysis under 35 U.S.C. §
112, ¶ 6. Apple argues that the claimed function is “providing said microphone signal, said
command notification signal and said cursor signal to said processing system;” and that the
corresponding structure disclosed in the specification is “transmission cable or wireless
transmitter.” Voice Domain argues that the term is not a means-plus-function limitation, and that
it should be construed as “an electrical connection, wired or wireless, to the processing system
from the peripheral.”
Whether § 112, ¶ 6 applies
The Court first addresses the threshold question of whether “coupling mechanism for . .
.” is a means-plus-function limitation subject to § 112, ¶ 6. In determining whether § 112, ¶ 6
applies, the Federal Circuit “has long recognized the importance of the presence or absence of
the word ‘means.’” Williamson, 2015 WL 3687459, at *6. Where, as here, the disputed claim
terms do not include the word “means,” there is a rebuttable presumption that § 112, ¶ 6 does not

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apply.2 Id. That presumption can be overcome “if the challenger demonstrates that the claim term
fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient
structure for performing that function.’” Id. (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880
(Fed. Cir. 2000)). The essential inquiry is “whether the words of the claim are understood by
persons of ordinary skill in the art to have a sufficiently definite meaning as the name for
structure.” Id. (citing Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir.
1996)).
The Court concludes that “coupling mechanism for . . .” does not connote sufficiently
definite structure and thus must be treated as a means-plus-function limitation under § 112, ¶ 6.
First, the claim limitation at issue is not merely “coupling mechanism,” but the entire phrase
“coupling mechanism for providing said microphone signal, said command notification signal,
said data notification signal and said cursor signal to said processing system.” This format is
“consistent with traditional means-plus-function claim limitations,” because it replaces the word
“means” with “mechanism,” and recites a function to be performed by the “coupling
mechanism.” See Williamson, 2015 WL 3687459, at *8. Although the claim language does not
include the word “means,” the term “mechanism” is “simply a nonce word or a verbal construct
that is not recognized as the name of structure and is simply a substitute for the term ‘means
for.’” Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1096 (Fed. Cir. 2008) (quoting Lighting
World v. Birchwood Lighting, Inc., 382 F.3d 1354, 1360 (Fed. Cir. 2004)).
“Claim language that further defines a generic term like ‘mechanism’ can sometimes add
sufficient structure to avoid [§] 112, ¶ 6.” Massachusetts Inst. of Tech. and Elecs. for Imaging,
Inc. v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006). In this case, the modifier

2

In Williamson v. Citrix Online, the Federal Circuit abandoned its previous characterization of the
presumption as “strong.” 2015 WL 3687459, at *7.

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“coupling” describes the function of the claimed mechanism. For example, a 1991 Random
House dictionary defines “coupling” as “the act of a person or thing that couples.” See Random
House Webster’s College Dictionary (1991), Docket 68-15, Ex. 14. To be sure, the fact that a
device is expressed in functional terms does not mean that it cannot have a structural meaning. In
Greenberg v. Ethicon Endo-Surgery, Inc., the Federal Circuit found that the term “detent
mechanism” was not subject to § 112, ¶ 6 because, despite being defined in functional terms, the
word “detent” had a generally understood meaning in the mechanical arts as a word for structure.
See 91 F.3d at 1583. In this regard, “detent” was akin to other devices that take names from
functions they perform, like “filter,” “brake,” “clamp,” or “screwdriver.” Id. Unlike in
Greenberg, however, definitions for “coupling” do not suggest that one skilled in the art would
understand the term’s structure. To the contrary, technical dictionaries confirm that, in the
context of electrical engineering, the word lacks structural meaning. See Academic Press
Dictionary of Science and Technology (1992), Docket 68-13, Ex. 12 (defining “coupling” as “a
means for transferring power”) (emphasis added); The New IEEE Standard Dictionary of
Electrical and Electronics Terms (5th Ed. 1993), Docket No. 68-14, Ex. 13 (defining “coupling”
as “the association of two or more circuits”) (emphasis added). Thus, the presence of the
modifying word “coupling” does not impart structural significance to the term “mechanism.”
Nor does the specification teach a sufficiently definite structure. The written description
does not use the phrase “coupling mechanism” a single time. The little context that is provided
does not imbue the claim term with a structural meaning commonly known to those skilled in the
art. The specification discloses two completely different structures for “coupling” the data entry
device to the processing system—a simple wire (the “transmission cable”) and a complex
electrical circuit (the wireless transmitter). See ‘883 Patent, col.1 ll.65-2:2; col.1 ll.57-78; col.2

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ll.20-25; figs. 3 & 4. Although the fact that a claim term may encompass a multitude or broad
class of structures does not require application of § 112, ¶ 6, see Lighting World, 382 F.3d at
1360-61, the complete structural difference between a transmission cable and a wireless
transmitter suggests that “coupling mechanism” is not a common term for structure in the
electronic arts. Id. at 1361. The expert declaration of Dr. Richard Stern confirms this conclusion.
See Decl. of Dr. Richard Stern, Docket No. 68-21, ¶ 27 (hereinafter “Stern Decl. ¶ __”). Dr.
Stern states that many devices, covering a wide variety of structural designs, can be used to
transmit signals between a peripheral and a processing system. See Stern Decl. ¶¶ 29-30. These
include conventional closed circuit communications systems (such as wireless microphones),
fiber optic links, Bluetooth, and WiFi. See id. Thus, Dr. Stern opines that one skilled in the art
would not understand “coupling mechanism” to have a well-understood structural meaning. See
Stern Decl. ¶ 27. The Court credits this evidence as it pertains to “coupling mechanism.”
Voice Domain has not submitted any expert declaration or technical evidence to show
that “coupling mechanism” is understood to connote structure, but asserts that the fact that nine
patent professionals examined the application and failed to identify “coupling mechanism for . .
.” as a means-plus-function limitation is evidence that § 112, ¶ 6 does not apply. Yet Voice
Domain cites no cases in which a court drew such a negative inference from the prosecution
history to conclude that a claim term was not a means-plus-function limitation.3 In fact, Federal

Voice Domain’s argument on this point is further weakened by the Federal Circuit’s intervening decision
in Williamson v. Citrix Online, LLC, No. 2013-1130, 2015 WL 3687459 (Fed. Cir. Jun. 16, 2015). Voice Domain
contends that the reason the examiners did not identify “coupling mechanism” as a means-plus-function limitation is
that the application lacked the magic words “means for,” which creates, as a matter of law, a “strong presumption”
that the inventor was not invoking § 112, ¶ 6. See Tr. of Markman Hr’g, Docket No. 86 at 105-06. However, this
“magic words” concept is undercut substantially by Williamson, where the Federal Circuit abandoned
“characterizing as ‘strong’ the presumption that a limitation lacking the word ‘means’ is not subject to § 112, ¶ 6.”
See Williamson, 2015 WL 3687459, at *7. In so doing, the court concluded that such a heightened burden
inappropriately “plac[ed] a thumb on the scale” against finding that claim terms constitute a means-plus-function
limitation. Id. Therefore, the Court declines to infer from the prosecution history that “coupling mechanism” had an
understood structural meaning in the art.
3

17

Circuit precedents in which the court found that claim terms were not means-plus-function
limitations have consistently looked to evidence of structural meaning found in the claim
language and specification, see, e.g., Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1302-04, (Fed.
Cir. 2014); Lighting World, 382 F.3d at 1361, Flo Healthcare Solutions, LLC v. Kappos, 697
F.3d 1367, 1374-75 (Fed. Cir. 2012), or dictionary definitions. See, e.g., CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002); Greenberg, 91 F.3d at 1583.
In this case, the specification, dictionary definitions, and expert declaration all confirm
that “coupling mechanism” does not have an understood structural meaning to those skilled in
the art. Thus, the Court finds that “coupling mechanism for . . .” fails to connote sufficiently
definite structure. See Aspex Eyewear, Inc. v. Altair Eyewear, Inc., 288 Fed. App’x. 697 (Fed.
Cir. 2008) (finding claimed “retaining mechanism” did not connote definite structure where
modifying word “retaining” had broad dictionary definition and expert testimony confirmed that
term had no common meaning in the field). This conclusion is consistent with other Federal
Circuit decisions finding that claim terms lacking the word “means” were nonetheless subject to
§ 112, ¶ 6. See, e.g., Williamson, 2015 WL 3687459, at *8 (finding “distributed learning control
module” to be a means-plus-function limitation); Welker Bearing Co., 550 F.3d at 1096 (finding
“mechanism for moving said finger” to be a means-plus-function limitation); Massachusetts Inst.
of Tech., 462 F.3d at 1354 (finding “colorant selection mechanism” to be a means-plus-function
limitation).
Apple has demonstrated that “coupling mechanism for . . .” fails to recite sufficiently
definite structure. Therefore, the Court finds that the presumption against means-plus-function
claiming has been rebutted, and the limitation will be analyzed under § 112, ¶ 6.

18

Construction under § 112, ¶ 6
Having concluded that “coupling mechanism for . . .” is a means-plus-function limitation,
the Court turns to construction of the claim term under § 112, ¶ 6. Construing a means-plusfunction claim term involves two steps. “First, the court must determine the claimed function.
Second, the court must identify the corresponding structure in the written description of the
patent that performs the function.” Noah Sys., Inc., 675 F.3d at 1311 (Fed. Cir. 2012) (quoting
Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1332 (Fed. Cir. 2006)).
“Structure disclosed in the specification qualifies as a ‘corresponding structure’ if the intrinsic
evidence clearly links or associates that structure to the function recited in the claim.”
Williamson, 2015 WL 3687459, at *10.
Apple contends that the claimed function of the “coupling mechanism” is “providing said
microphone signal, said command notification signal and said cursor signal to said processing
system;” and that the corresponding structure disclosed in the specification is the “transmission
cable or wireless transmitter.” Voice Domain does not challenge Apple’s positions on function or
corresponding structure. The Court agrees that Apple’s proposals are correct. Claim 1 makes
clear that the coupling mechanism is to be used to provide the claimed signals to the processing
system. See ‘883 Patent, col.4 ll.39-43. Furthermore, the specification plainly associates the
disclosed “transmission cable” and “wireless transmitter” with that function. See ‘883 Patent,
col.1 ll.65-2:2; col.1 ll.57-78; col.2 ll.20-25; figs. 3 & 4.
For the reasons stated above, the Court will construe “coupling mechanism for . . .” as a
means-plus-function limitation under 35 U.S.C. § 112, ¶ 6. The function of the “coupling
mechanism” is: “providing said microphone signal, said command notification signal and said

19

cursor signal to said processing system.” The corresponding structure in the specification is:
“transmission cable or wireless transmitter.”
2. “microphone interpretation mechanism which, in response to said
command and data notification signals, determines when said
microphone signal represents command and when it represents
data”
Disputed Term

Apple’s Construction

Voice Domain’s
Construction

Subject to § 112, ¶ 6
“microphone
interpretation mechanism
which, in response to said
command and data
notification signals,
determines when said
microphone signal
represents command and
when it represents data”

Function: “in response to said
command and data notification
signals, determines when said
microphone signal represents
command and when it
represents data”

“software and/or hardware
for the processing system
that recognizes when the data
button or command button
has been selected or
asserted”

Structure: no corresponding
structure is disclosed

“Microphone interpretation mechanism which . . .” appears in Claims 1 and 2 of the ‘883
Patent. Claim 1 recites that the microphone interpretation mechanism is one of two components
that the claimed processing system comprises (the other being a display screen). See ‘883 Patent,
col.4 ll.43-48. Apple again argues that this term is a means-plus-function limitation subject to §
112, ¶ 6. Apple proposes that the claimed function is “in response to said command and data
notification signals, determines when said microphone signal represents command and when it
represents data,” and that no corresponding structure is disclosed in the specification. Voice
Domain contends that the term is not a means-plus-function limitation, and that it should be
construed as “software and/or hardware for the processing system that recognizes when the data
button or command button has been selected or asserted.”

20

Whether § 112, ¶ 6 applies
As with “coupling mechanism for . . .”, the claim language “microphone interpretation
mechanism which, in response to said command and data notification signals, determines when
said microphone signal represents command and when it represents data” is drafted in traditional
means-plus-function format. It replaces the word “means” with the nonce word “mechanism,”
and recites the function that the “microphone interpretation mechanism” is meant to perform. See
Williamson, 2015 WL 3687459, at *8. The modifier “microphone interpretation” does not impart
sufficient structure to avoid application of § 112, ¶ 6. Although “microphone” has an understood
structural meaning, the same is not true for “microphone interpretation.” The phrase has no
dictionary definition and is not defined in the claims of the ‘883 Patent. See Massachusetts Inst.
of Tech., 462 F.3d at 1354 (noting that the modifier “colorant selection” had no dictionary
definition in concluding that “colorant selection mechanism” was a means-plus-function
limitation). The specification does not include the words “microphone interpretation
mechanism.” Instead, the written description states generally that “the computer” can “identify”
or “be programmed to recognize” the microphone’s spoken commands, and separately describes
“speech recognition software” to recognize voice data. See ‘883 Patent, col.4 ll.6-14; col.2 ll.2325; col.4 ll.49-54. These descriptions fail to identify the mechanism within the claimed
processing system used to interpret the microphone signals, let alone imbue it with structural
significance. The expert declaration of Dr. Stern provides additional evidence that there is no
well-known structural meaning of “microphone interpretation mechanism” to those skilled in the
electronic arts.4 See Stern Decl. ¶¶ 41-42.

4

Again, Voice Domain provides no expert evidence or technical definitions to support its contention that
“microphone interpretation mechanism” connotes definite structure to those skilled in the art. To the extent that
Voice Domain relies on the fact that nine patent professionals failed to identify the term as subject to § 112, ¶ 6
during prosecution, the Court rejects the argument for the same reasons as for “coupling mechanism . . .”

21

Voice Domain argues that the specification demonstrates that “microphone interpretation
mechanism” refers to the “software and/or hardware structure that recognizes, interprets, and
responds to signals from a user’s input.” See Voice Domain Opening Claim Constr. Br., Docket
No. 69 at 22. In a processing system, however, everything is implemented in “hardware and/or
software.” See Stern Decl. ¶ 43. Thus, in the context of electrical engineering, Voice Domain’s
interpretation of the specification provides no meaningful structural limitation and supports the
conclusion that “microphone interpretation mechanism” is drafted in merely functional terms—
i.e. a means for the processing system to determine when microphone signals represent data and
when they represent command. See Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521
F.3d 1328, 1333 (Fed. Cir. 2008) (observing that “disclos[ing] only a general purpose computer
as the structure designed to perform [a particular] function amounts to pure functional
claiming”).
The Court also rejects Voice Domain’s contention that the ‘883 Patent’s incorporation by
reference of U.S. Patent No. 5,036,539 (the “‘539 Patent”) provides evidence that the claimed
“microphone interpretation mechanism” has a well-understood structural meaning. The ‘539
Patent does not recite or teach a “microphone interpretation mechanism.” Instead, the ‘539
Patent generally relates to speech recognition systems, and describes control programs for
interpreting keyboard input. See U.S. Patent No. 5,036,539, col.1 ll.7-12; col.5 ll.64-68 (filed Jul.
6, 1989) (hereinafter “‘539 Patent, col._ ll.__”). However, the functions of these programs are
distinct from that of the ‘883 Patent’s “microphone interpretation mechanism.” Nothing in the
claims or specification of the ‘539 Patent suggest that its keyboard interpretation program can
also interpret microphone signals. Moreover, the ‘539 Patent’s speech recognition systems are
not relevant to the structure of the ‘883 Patent’s “microphone interpretation mechanism.” This is

22

evident from the ‘883 Patent claims, which recite a “speech recognition mechanism” separately
from the “microphone interpretation mechanism.” See ‘883 Patent, col.4 ll.45-55. Thus, speech
recognition in the ‘883 Patent is achieved by a different component than the “microphone
interpretation mechanism.” See Becton, Dickinson and Co. v. Tyco Healthcare Group, LP, 616
F.3d 1249, 1254 (Fed. Cir. 2010) (“Where a claim lists elements separately, the clear implication
of the claim language is that those elements are distinct components of the patented invention.”).
Consequently, the incorporation of the ‘539 Patent does not inform the structural meaning of
“microphone interpretation mechanism.”
Apple has demonstrated that “microphone interpretation mechanism which . . .” fails to
recite sufficiently definite structure. Therefore, the Court finds that the presumption against
means-plus-function claiming has been rebutted, and the limitation is subject to § 112, ¶ 6.
Construction under § 112, ¶ 6
Voice Domain does not dispute Apple’s assertion that the function of the “microphone
interpretation mechanism” is: “in response to said command and data notification signals,
determines when said microphone signal represents command and when it represents data.”
Apple further contends that no corresponding structure is disclosed in the specification of the
‘883 Patent. The Court agrees.
The only component identified in the specification for determining when the microphone
signals represent data and when they represent command is “the computer.” See ‘883 Patent,
col.4 ll.1-15. That word is used in the specification to describe the claimed “processing system,”
of which the claimed “microphone interpretation mechanism” is a part. See id. at col.1 ll.66-67.
This is insufficient. For means-plus-function limitations involving special-purpose computer
functions, the Federal Circuit “has consistently required that the structure disclosed in the

23

specification be more than simply a general purpose computer or microprocessor.” Aristocrat
Tech., 521 F.3d at 1333. Instead, the ‘883 Patent must disclose an algorithm that performs the
particular function of determining when the microphone signals represent command and data.
See id.; see also Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1253 (Fed Cir. 2005) (“A
computer-implemented means-plus-function term is limited to the corresponding structure
disclosed in the specification and equivalents thereof, and the corresponding structure is the
algorithm.”). In this case, Apple has demonstrated that the specification does not disclose an
algorithm. See Stern Decl. ¶ 45. At best, it restates the claimed function of the microphone
interpretation mechanism. See ‘883 Patent, col.4 ll.1-15 (teaching that “the computer examines
the microphone signal to identify the spoken command”). This does not constitute an algorithm
that satisfies the requirements of § 112, ¶ 6. See Encyc. Britannica, Inc. v. Alpine Elecs., Inc.,
355 Fed. App’x 389, 394-95 (Fed. Cir. 2009) (finding that a specification that merely restates the
function of the special-purpose computer does not disclose an algorithm).
Voice Domain does not dispute that the specification does not disclose an algorithm, but
argues that no algorithm is required because the function of the microphone interpretation
mechanism can be performed by a general purpose computer. The Federal Circuit has limited the
holding of Aristocrat to those cases where an inventor has claimed “a specific function
performed by a special purpose computer.” In re Katz Interactive Call Processing Patent
Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011). Where the inventor has merely recited general
computer functions like “processing,” “receiving,” or “storing,” he need not “disclose more
structure than the general purpose processor that performs those functions.” Id. In this case,
however, the “microphone interpretation mechanism” does not perform generic computer
functions. As the claim language itself recites, the mechanism performs the specific function of

24

differentiating between types of microphone signals to determine when they represent command
and when they represent data. See ‘883 Patent, col.4 ll.46-49. Therefore, Aristocrat applies and
an algorithm must be disclosed in the specification. Because no algorithm appears in the written
description, the ‘883 Patent specification does not disclose adequate corresponding structure, and
the claimed “microphone interpretation mechanism” is indefinite. See Robert Bosch, LLC v.
Snap-On Inc., 769 F.3d 1094, 1097 (Fed. Cir. 2014) (stating that if courts are unable to identify
corresponding structure for a means-plus-function limitation, “the claim term is indefinite”).
For the reasons stated above, the Court will construe “microphone interpretation
mechanism which . . .” as a means-plus-function limitation under 35 U.S.C. § 112, ¶ 6. The
function of the “microphone interpretation mechanism” is: “in response to said command and
data notification signals, determines when said microphone signal represents command and when
it represents data.” However, the specification does not disclose adequate corresponding
structure. As a result, the claimed “microphone interpretation mechanism” is indefinite.
C.

“cursor position transducer”

Disputed Term

Apple’s Construction

“cursor position
transducer”

“input device for converting
mechanical motion of the device
into an electrical signal to direct
the movement of a cursor on a
remote display”

Voice Domain’s Construction
plain meaning; alternatively, “a
user input device or component
that converts a user’s input for
manipulating the position of a
cursor on a display”

The term “cursor position transducer” appears in Claim 1 of the ‘883 Patent. Apple
proposes that the plain meaning of the claimed “transducer,” is a device for converting
mechanical motion into an electrical signal to control a cursor on a remote display. Voice
Domain objects to this construction, arguing that it improperly restricts the claim language.

25

It is true, as Apple argues, that the preferred embodiment of the ‘883 Patent’s
specification describes a handheld trackball that remotely controls a cursor by converting the
user’s mechanical motion into an electrical signal. The file history confirms that Barker
understood his invention this way. See, e.g., Second Preliminary Amendment, Docket No. 68-3,
Ex. 2 at 4 (stating that the peripheral includes “a cursor position control device (e.g., a trackball
device)”). But neither the specification nor the file history restrict “cursor position transducer” to
this embodiment, and the claim language itself does not require Apple’s limitations. See
Williamson, 2015 WL 3687459, *4-5 (rejecting district court’s narrow construction where the
specification did not limit claim terms to its embodiments or examples).
To the contrary, the intrinsic evidence demonstrates that “cursor position transducer”
should be read more broadly. With respect to Apple’s “mechanical motion” and “electrical
signal” limitations, the specification makes clear that a trackball is not the only type of
transducer that is claimed. The written description teaches that “[o]ther types of input
transducers can be used to manipulate the cursor.” See ‘883 Patent, col.2 ll.36-38 (emphasis
added). The specification elsewhere acknowledges that various kinds of transducers existed at
the time of Barker’s invention. See id. at col.2 ll.6-10 (stating that the handheld device’s buttons
“can be electromechanical switches, membrane switches or any type of transducer known to
those skilled in the art which can be used to accept a user’s input”) (emphasis added). These
references to multiple types of transducers suggest that the plain meaning of the claim term
includes more than just those transducers that convert mechanical energy into electrical energy.
Moreover, nothing in the intrinsic record suggests that the claimed transducer only
controls a cursor on a “remote” display. Apple’s own U.S. Patent No. 5,202,961, filed in 1990,
establishes that a touch screen—a type of “input device” that does not use a remote display—was

26

known in the art when the ‘883 Patent application was filed. See U.S. Patent No. 5,202,961, col.4
ll.25-29 (filed Jun. 8, 1990) (“[T]he user can then control the display of the video information 35
through operation of the control device 19, such as a mouse, trackball, keyboard, touch screen,
or any type of X-Y axis input device.”) (emphasis added). Although they are separately recited
components, the ‘883 Patent’s cursor position transducer and display screen need not be
structurally separated from one another. See Gen. Elec. Co. v. Int’l Trade Comm’n, 685 F.3d
1034, 1045 (Fed. Cir. 2012). Thus, Apple’s construction of “cursor position transducer” would
improperly limit the ordinary meaning of “transducer” as recited.5
Voice Domain proposes that “cursor position transducer” be assigned its plain meaning.
The Court need not construe claim terms if the term’s ordinary meaning can be readily
understood by laypersons and it resolves the dispute. See 02 Micro, 521 F.3d at 1360-61; see
also U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (stating that
claim construction “is not an obligatory exercise in redundancy”). Given the technical nature of
the term “transducer,” however, the Court concludes that construction will be helpful to the jury.
Voice Domain’s alternative proposal is “a user input device or component that converts a user’s
input for manipulating the position of a cursor on a display.” This is substantially similar to
Apple’s construction, except that it omits the above-described restrictions. Therefore, the Court

5

The Court has carefully considered the Stern Declaration, the 1991 Microsoft Press Computer Dictionary
definition of “transducer,” and Apple’s contention that arguments made by Voice Domain in prior litigation support
Apple’s construction regarding “cursor position transducer.” See Stern Decl. ¶¶ 46-48; Microsoft Press Computer
Dictionary (1991), Docket No. 68-16, Ex. 15 (defining “transducer” as “a device that converts one form of energy
into another”); Voice Domain’s Mem. in Support of Claim Constr. (Philips Litig.), Docket No. 68-18, Ex. 17.
However, in light of the intrinsic record, the Court gives little weight to this extrinsic evidence as it pertains to
“cursor position transducer.” See Phillips, 415 F.3d at 1318-19 (explaining that extrinsic evidence—including expert
testimony and dictionary definitions—are generally less reliable than the intrinsic record in determining how to read
claim terms); Vanderlande Indus. Nederland BV v. I.T.C., 366 F.3d 1311, 1322 (Fed. Cir. 2004) (suggesting that
litigation theories advanced in a separate patent proceeding are deserving of “little—if any—weight in claim
construction”).

27

will adopt the alternative construction, subject to the revision that Voice Domain’s proposed
phrase “a user input device or component” will be shortened to “an input device.”
For the reasons stated above, the Court will construe “cursor position transducer” as “an
input device that converts a user’s input for manipulating the position of a cursor on a display.”
D.

“command notification signal” and “data notification signal”

Disputed Term

Apple’s Construction

Voice Domain’s Construction

“command notification
signal”

“electrical signal indicating
that the voice command
button has been pressed”

plain meaning; alternatively, “a
signal indicating that the
command button has been
selected or asserted”

“data notification
signal”

“electrical signal indicating
that the voice data button has
been pressed”

plain meaning; alternatively, “a
signal indicating that the data
button has been selected or
asserted”

“Command notification signal” and “data notification signal” appear in Claims 1 and 3 of
the ‘883 Patent. The Court addresses these terms together. The parties dispute whether (1) the
claimed notification signals must be electrical; and (2) whether the buttons that generate the
notification signals must be pressed. Apple argues that the plain meanings of “command
notification signal” and “data notification signal,” as used in the ‘883 Patent, require the Court to
include the words “electrical” and “pressed” in its constructions. Voice Domain again contends
that these words improperly limit the claim language.
For substantially the same reasons as the Court rejects Apple’s “cursor position
transducer” arguments, the Court declines to adopt Apple’s proposed use of the word
“electrical.” To be sure, the preferred embodiment of the ‘883 Patent describes “circuitry which
produces electrical signals” to notify the processing system when the command and data buttons
have been engaged by the user. See ‘883 Patent, col.2 ll.38-44 (emphasis added). However,
neither the specification nor the file history confine the ‘883 Patent’s “notification signal” to one
28

that is electrical. Absent a clear statement limiting claim scope, the Court is “constrained to
follow the language of the claims, rather than that of the written description.” See Falana v. Kent
State Univ., 669 F.3d 1349, 1355 (Fed. Cir. 2012) (quoting Teleflex, Inc. v. Ficosa N. Am. Corp.,
299 F.3d 1313, 1328 (Fed. Cir. 2002)). Thus, a construction using the word “electrical” would
erroneously import a limitation from the specification. The ordinary meaning of the claimed
“notification signal” does not require such a restriction.
Furthermore, the claim text and the specification do not support Apple’s contention that
the buttons that generate the notification signals must be “pressed.” The claim language itself
recites that the command and data notification signals indicate when the voice command and
data buttons are “asserted.” See ‘883 Patent, col.4 ll.30-36 (emphasis added). The teaching of the
specification is consistent with this language. Although the written description uses “press” twice
and “release” once to describe how a user engages the invention’s buttons in the preferred
embodiment, see ‘883 Patent, col.3 ll.15, 34; col.2 l.60, it does so interchangeably with the word
“assert.” In fact, the specification uses “assert” far more often. See ‘883 Patent, col.2 ll.41, 44,
49, 53; col.3 ll.12, 19, 24, 27, 30, 39, 43; col.4 ll.1, 4, 6, 11. Consequently, the Court will not
adopt Apple’s proposed use of the word “pressed.”
As with “cursor position transducer,” the technical nature of “command notification
signal” and “data notification signal” suggests that construction will be helpful to the jury. The
Court therefore declines Voice Domain’s invitation to assign the terms their plain meaning. See
02 Micro, 521 F.3d at 1360-61. In the alternative, Voice Domain proposes that the command and
data buttons can be either “selected or asserted.” However, the word “selected” does not appear
in the claim language, and the use of the term is not supported by the ‘883 Patent’s specification.
Therefore, the Court will exclude “selected” from its construction.

29

For the reasons stated above, the Court will construe “command notification signal” as “a
signal indicating that the command button has been asserted.” The Court will construe “data
notification signal” as “a signal indicating that the data button has been asserted.”
E.

“voice data button” and “voice command button”

Disputed Term

“voice data button”

“voice command
button”

Apple’s Construction
“a physical button that, when
pressed by the user, emits a
signal indicating that the voice
input is data only and not
command”
“a physical button that, when
pressed by the user, emits a
signal indicating that the voice
input is command only and not
data”

Voice Domain’s Construction
plain meaning; alternatively, “a
user control that can emit an
output indicating that the voice
input is data”
plain meaning; alternatively, “a
user control that can emit an
output indicating that the voice
input is a command or
instruction”

“Voice data button” and “voice command button” appear in Claim 1 of the ‘883 Patent.
The Court addresses these terms together. The controversy over each of these terms involves two
primary disputes. First, the parties disagree about whether the claimed buttons should be
construed, as Apple argues, as physical buttons that are pressed. Voice Domain insists instead
that the claimed buttons should be characterized simply as user controls.6 Second, Apple
contends that the voice command button must provide a notification signal that indicates
command only and not data, and that voice data button must provide a notification signal that
indicates data only and not command. Voice Domain objects to this “only and not” construction.
With respect to the first dispute, the Court agrees with Apple that the claim language
supports use of the word “button.” The ‘883 Patent’s claims recite “buttons,” not user controls.

6

Once again, and as explained in greater detail in this section, the technical nature of these claim terms
leads the Court to conclude that construction will assist the finder of fact. Thus, the Court rejects Voice Domain’s
argument that “voice data button” and “voice command button” be assigned their plain meanings, and instead
considers Voice Domain’s alternative proposals. See 02 Micro, 521 F.3d at 1360-61.

30

Although the specification contemplates that the claimed buttons can be “electromechanical
switches, membrane switches, or any type of transducer known to those skilled in the art,” see
‘883 Patent, col.2 ll.8-9, this language is not so broad as to teach that the buttons can be any type
of “user control.” Voice Domain cites no other intrinsic or extrinsic evidence to support the use
of the amorphous concept “user control.” Such an open-ended construction would impermissibly
read “button” out of the claim. See Innova/Pure Water, 381 F.3d at 1119 (observing that “all
claim terms are presumed to have meaning in a claim”).
The Court will omit Apple’s additional qualifiers “physical” and “press.” Apple is correct
that the specification describes a preferred embodiment in which the user “presses” and
“releases” physical buttons. See ‘883 Patent, col.3 ll.14-15; col.3 ll.33-35; col.2 ll.59-60.
However, the ordinary meaning of the word “button,” viewed in light of the specification, does
not require such a narrow interpretation. The specification expressly reflects that the invention
can have multiple types of buttons that detect input in different ways. See ‘883 Patent, col.2 ll.610 (stating that “[b]uttons 18-26 can be electromechanical switches, membrane switches, or other
types of transducers”). This understanding is supported by the specification’s consistent
preference for the verb “assert” to describe how the user engages the claimed buttons.7
Furthermore, at the time Mr. Barker filed his application, “virtual” buttons—as opposed to those
that are “physical”—were known in the art. See U.S. Patent No. 4,914,624 (filed May 6, 1988,
entitled “Virtual Button for Touch Screen”). Finally, the intrinsic evidence does not include clear
language restricting the meaning of the claimed buttons to ones that are “physical” and

7
As explained above, although the specification uses the verbs “press” twice in conjunction with the
claimed buttons, and “release” once, it describes the user as “asserting” the buttons over a dozen times. See ‘883
Patent, col.2 ll.41, 44, 49, 53; col.3 ll.12, 19, 24, 27, 30, 39, 43; col.4 ll.1, 4, 6, 11. For this reason, the Court will use
“assert” to describe how the claimed buttons are engaged by the user. This is consistent with the Court’s
constructions of “command notification signal” and “data notification signal.”

31

“pressed.” Disavowal of claim scope requires that the specification or prosecution history “make
clear that the invention does not include a particular feature.” Hill-Rom Servs., 755 F.3d at 1372.
No disclaimer is present here. Consequently, the Court will not read Apple’s “physical” and
“press” limitations into the claimed buttons.
The dispute over Apple’s proposed “only and not” requirement is a closer question.
During prosecution, Mr. Barker repeatedly argued that his invention was novel over prior art
because “the claimed data and command buttons . . . unambiguously distinguish[] spoken
commands from data.” See Appellant’s Br. on Appeal, Docket No. 68-5, Ex. 4 at 5; see also
Response to Office Action, Docket No. 68-19, Ex. 18 at 9 (arguing that prior art “does not notify
the system whether the microphone signal represents command or data. . . . The claimed
command and record button avoid such ambiguity.”); Preliminary Amendment, Docket No. 684, Ex. 3 at 12 (stating that the “purpose of the voice command transducer . . . is to distinguish
voice commands from other types of voice input”). The parties agree that this evidence supports
the simple proposition that the claimed command button is used to indicate a command to the
processing system; and that the claimed data button is used to indicate data. The specification
also supports this interpretation. See, e.g., ‘883 Patent, col.3 ll.56-4:4 (teaching that, in the
preferred embodiment, the invention “includes a voice command button which, when asserted, . .
. [notifies] the computer that that the microphone signal represents a spoken command”).8
Apple’s construction goes one step further. Apple insists that the import of the intrinsic
record is that the plain meaning of the claimed “command button” is that it indicates command
only and not data; and the plain meaning of the claimed “data button” is that it indicates data

8

Although the Court gives little weight to extrinsic evidence derived from previous litigation theories,
arguments made by Voice Domain in a prior infringement lawsuit also suggest that the command button indicates
command, and that the data button indicates data. See Voice Domain’s Mem. in Support of Claim Constr. (Philips
Litig.), Docket No. 68-18, Ex. 17.

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only and not command. Considering the file history just described, there is an attractive logic to
this construction. Seemingly implicit in an invention that separately recites a “command button”
and a “data button,” and is meant to unambiguously distinguish between command and data, is a
design in which the command button indicates command only, and the data button indicates data
only. In other words, it would be counterintuitive that the “command button” could signal both
command and data, or that the “data button” could signal both data and command.
However, just because the file history implicitly suggests that a particular embodiment of
the invention is not the most likely, it does not follow that that the ordinary meaning of the claim
term itself must exclude that embodiment. “It is the claims that define the metes and bounds of
the patentee’s invention.” Phillips, 415 F.3d at 1313; Apple Inc. v. Motorola, Inc., 757 F.3d
1286, 1298 (Fed. Cir. 2014) (“The name of the game is the claim.”). In this case, the operative
claim language is simply “data button” and “command button.” The file history’s implicit
suggestion that the claimed buttons indicate only one type of information and not the other is
insufficient to narrow the ordinary meaning of these bare words, because absent clear
lexicography or disavowal, “[t]he patentee is free to choose a broad term and expect to obtain the
full scope of its plain and ordinary meaning.” Thorner, 669 F.3d at 1367. Thus, read in view of
the intrinsic record, the ordinary meaning of the claimed “voice command button” is just as it
sounds: a button that indicates that voice input is command. Similarly, “voice data button” means
a button that indicates that voice input is data. Nothing more is required.
Nor does the intrinsic record meet the exacting standard required for the Court to find
that Barker disclaimed “dual hatted” buttons capable of indicating both data and command. In
order to disavow claim scope the inventor must demonstrate “a clear intention to limit the claim
scope using words of manifest exclusion or restriction.” See Hill-Rom Servs., 755 F.3d at 1372.

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No such words are present in the specification or file history. All that the prosecution history for
the ‘883 Patent requires is that the claimed buttons “unambiguously distinguish” between data
and command. Without more, this does not clearly disavow buttons capable of simultaneously
indicating both data and command, and differentiating between the two types of signals.9 See
Thorner, 669 F.3d at 1366 (stating that “[m]ere criticism of a particular embodiment
encompassed in the plain meaning of a claim term is not sufficient to rise to the level of clear
disavowal” of claim scope); Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620
F.3d 1305, 1315 (Fed. Cir. 2010) (explaining that even where the specification observes that a
particular structure makes it “particularly difficult” to achieve the intended benefits of the
invention, it does not constitute clear disavowal of that structure).
Finally, although not argued or briefed in detail, the parties differ on whether the claimed
buttons emit a “signal” (as Apple suggests) or an “output” (as Voice Domain suggests). The
claim language recites, and the specification consistently teaches, that the purpose of the claimed
buttons is to provide “notification signals” to the processing system. See, e.g., ‘883 Patent, col.4
ll.30-36; col.1 ll.33-41. Accordingly, the Court will construe the claimed buttons to “emit a
signal.”
For the reasons stated above, the Court construes “voice data button” as “a button that,
when asserted by the user, emits a signal indicating that the voice input is data.” The Court
construes “voice command button” as “a button that, when asserted by the user, emits a signal
indicating that the voice input is a command.”

9
As a result, Apple’s “only and not” restriction is not required for the Court’s construction to remain
faithful to the file history’s teaching that the claimed buttons unambiguously distinguish between data and
command. See Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995) (cautioning that
“[c]laims may not be construed one way in order to obtain allowance and in a different way against accused
infringers”).

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F.

“in response to said command and data notification signals,
determines when said microphone signal represents command and
when it represents data”

Disputed Term
“in response to said command
and data notification signals,
determines when said
microphone signal represents
command and when it
represents data”

Apple’s Construction

Voice Domain’s
Construction

“determines whether the
microphone signal represents
only command or only data
based upon whether the
command notification signal
or data notification signal has
been received”

plain meaning

This term appears in Claim 1 of the ‘883 Patent. As explained in the Court’s discussion
of “microphone interpretation mechanism which . . .”, the phrase “in response to said command
and data notification signals, determines when . . .” recites the function of the claimed
microphone interpretation mechanism. Apple seeks a clarifying construction that the microphone
interpretation mechanism, “in response to said command and data notification signals,
determines whether the microphone signal represents only command or only data based upon
whether the command notification signal or data notification signal has been received.” Voice
Domain objects to Apple’s proposed construction, and urges the Court to assign the phrase its
plain meaning.
Once again, Apple attempts to restrict the claim language by characterizing the
transmission of notification signals between the claimed buttons and the claimed microphone
interpretation mechanism as data only, or command only, but not both. For the same reasons the
Court rejects Apple’s “only and not” requirement in the construction of “voice command button”
and “voice data button,” the Court will not adopt Apple’s clarifying construction here. To do so
would improperly import a limitation from the specification and file history into the claim
language. The claim language speaks for itself, and no construction is necessary. See U.S.

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Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (stating that claim
construction “is not an obligatory exercise in redundancy”).
Accordingly, the Court will assign “in response to said command and data notification
signals, determines when said microphone signal represents command and when it represents
data” its plain meaning.
Conclusion
For the foregoing reasons, the disputed claim terms are construed as follows:
(1) The term “peripheral” means “a device that provides communications or inputs to a
connected processing system.”
(2) The term “processing system” means “a system of one or more processors that
receives inputs or communications from a connected peripheral.”
(3) The term “coupling mechanism for providing said microphone signal, said command
notification signal, said data notification signal and said cursor signal to said processing system”
is a means-plus-function limitation subject to 35 U.S.C. § 112, ¶ 6. The function of the “coupling
mechanism” is: “providing said microphone signal, said command notification signal and said
cursor signal to said processing system.” The corresponding structure in the specification is:
“transmission cable or wireless transmitter.”
(4) The term “microphone interpretation mechanism which, in response to said command
and data notification signals, determines when said microphone signal represents command and
when it represents data” is a means-plus-function limitation subject to 35 U.S.C. § 112, ¶ 6. The
function of the “microphone interpretation mechanism” is: “in response to said command and
data notification signals, determines when said microphone signal represents command and when

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it represents data.” The specification does not disclose adequate corresponding structure.
Therefore, the term is indefinite.
(5) The term “cursor position transducer” means “an input device that converts a user’s
input for manipulating the position of a cursor on a display.”
(6) The term “command notification signal” means “a signal indicating that the command
button has been asserted.”
(7) The term “data notification signal” means “a signal indicating that the data button has
been asserted.”
(8) The term “voice data button” means “a button that, when asserted by the user, emits a
signal indicating that the voice input is data.”
(9) The term “voice command button” means “a button that, when asserted by the user,
emits a signal indicating that the voice input is a command.”
(10) The term “in response to said command and data notification signals, determines
when said microphone signal represents command and when it represents data” is assigned its
plain meaning.

SO ORDERED.
/s/ Timothy S. Hillman
TIMOTHY S. HILLMAN
DISTRICT JUDGE

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