Halo Electronics, Inc. v. Bel Fuse Inc. et al

Filing 194

ORDER re 99 Plaintiff Halo Electronics, Inc's Markman Claim Construction Brief, 101 Defendant Pulse Engineering, Inc's Markman Claim Construction Brief, and 158 Defendant Pulse Engineering, Inc's Markman Claim Construction Brief Regarding Claims Added During Reexamination of the Halo Patents. IT IS FURTHER ORDERED that the parties shall meet and confer and file with the Court their fifteen proposed asserted claims by 6/28/10. Signed by Judge Philip M. Pro on 6/14/10. (Copies have been distributed pursuant to the NEF - EDS)

1 2 3 UNITED STATES DISTRICT COURT 4 D IS T R IC T OF NEVADA 5 6 H A L O ELECTRONICS, INC., 7 P la in tif f , 8 v. 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 P re se n tly before the Court is Plaintiff Halo Electronics, Inc.'s Markman Claim C o n s tru c tio n Brief (Doc. #99), filed on September 17, 2009. Defendant Pulse Engineering, In c . filed an Opposition (Doc. #115) on October 15, 2009. Plaintiff filed a Reply (Doc. # 1 3 2 ) on November 19, 2009. A ls o before the Court is Defendant Pulse Engineering, Inc.'s Markman Claim C o n s tru c tio n Brief (Doc. #101), filed on September 17, 2009. Plaintiff Halo Electronics, In c . filed an Opposition (Doc. #112) on October 15, 2009. Defendant filed a Reply (Doc. # 1 3 4 ) on November 19, 2009. A ls o before the Court is Defendant Pulse Engineering, Inc.'s Markman Claim C o n s tru c tio n Brief Regarding Claims Added During Reexamination of the Halo Patents (D o c . #158) filed on January 21, 2010. Plaintiff Halo Electronics, Inc. filed an Opposition (D o c . #159) on February 4, 2010. Defendant filed a Reply (Doc. #166) on February 18, 2 0 1 0 . The Court held a hearing on these matters on May 27, 2010. (Mins. of Proceeding (D o c . #191).) 1 P U L S E ENGINEERING, INC. and T E C H N IT R O L , INC., Defendants. *** ) ) ) ) ) ) ) ) ) ) ) )

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ORDER

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I . BACKGROUND P la in tif f Halo Electronics, Inc. ("Halo") owns the legal rights to United States P a te n t Nos. 5,656,985 (the `985 Patent), 6,297,720 (the `720 Patent), 6,297,721 (the `721 P a te n t), 6,344,785 (the `785 Patent), and 6,662,431 (`431 Patent).1 The `985 Patent is the p a re n t Patent from which the other Patents stem. The `985, `785, and `431 Patents have id e n tic a l specifications, the latter two being "continuations" of the `985 Patent. The `489, `7 2 0 , and `721 Patents also derive from the same disclosure as the `985 Patent, with some a d d itio n a l information added to their respective specifications. All the Patents relate to an im p ro v e d design for an electronic surface-mount package. (Decl. of Kristopher Reed in S u p p o rt of Pulse Eng'g Inc. & Technitrol, Inc.'s Opening Claim Constr. Br. ["Decl. in S u p p o rt of Pulse's Opening Br."] (Doc. #102), Ex. A at 8 (1:4-18).) The package mounts to th e surface of a printed circuit board inside electronic devices, such as computers and In te rn e t routers, switches, and hubs. (Id.) Every patent claim asserted by Halo includes at le a s t one "side wall," "toroid transformer," terminal pin "molded within" the package, and p o s ts to which wires are attached. D e f e n d a n t Pulse Engineering, Inc. ("Pulse") owns the legal rights to United S ta te s Patent Nos. 6,769,936 (the Gutierrez/'936 Patent) and 6,116,963 (the Shutter/'963 P a te n t). The Gutierrez Patent describes an improved design and method of manufacturing a s in g le - or multi-connector assembly which may include electronic components. (Decl. of W illia m Woodford in Support of Halo's Opening Claim Constr. Br. ["Decl. in Support of H a lo 's Opening Br."] (Doc. #100), Ex. A at 16 (1:5-11).) The Shutter Patent is a m ic ro e le c tro n ic connector that incorporates a simplified design and permits rapid assembly

Halo also owns the legal rights to United States Patent 6,320,489 (the `489 Patent). T h e `489 Patent is part of the Patent family stemming from the `985 Patent. However, to n a rro w the issues in the case, Halo informed Pulse prior to the deadline for filing opening claim c o n s tru c tio n briefs that it would not assert any claims from this Patent. 2

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b y using a "bump and bend" arrangement in the first aspect of the invention, and a "snap" p in arrangement in the second aspect of the invention. (Id., Ex. C at 22-23 (2:25-64).) P la in tif f Halo filed an Amended Complaint alleging Defendant Pulse is in f rin g in g on Halo's `985, `720, `721, `785, and `431 Patents by selling surface-mount tra n s f o rm e rs embodying the patented inventions that contain an electronic surface-mount p a c k a g e including, but not limited to, parts numbers S558-5500-12-F, H1102NL, and H X 1 1 8 8 N L . (First Am. Compl. for Patent Infringement ["Am. Compl."] (Doc. #51) at ¶ ¶ 16-17.) In response, Defendant Pulse filed Counterclaims alleging Plaintiff Halo is in f rin g in g on Pulse's `936 (Guitterrez) and `963 (Shutter) Patents by selling LAN products e m b o d yin g the patented inventions, including but not limited to, Halo's "FastJacks" c o n n e c to rs . (Ans. of Defs. Pulse Eng'g, Inc. & Technitrol, Inc. to First. Am. Compl.; & C o u n te rc l. of Def. Pulse Eng'g for Patent Infringement ["Pulse Answer"] (Doc. #60) at ¶ 1 1 .) In 2008, shortly after discovery began, the Court granted Pulse's request to stay th e litigation because a third party had asked the United States Patent and Trademark Office (" P T O " ) to reexamine the validity of the five Halo patents in the suit. (See Mot. to Stay P e n d in g Reexamination by Defs.' Pulse Eng'g, Inc., Technitrol, Inc. (Doc. #70); Order G ra n tin g Mot. to Stay (Doc. #72).)2 Upon completion of the reexamination, the PTO c o n f irm e d the validity of every claim in the five Halo patents asserted in this litigation and a llo w e d Halo to add 66 additional claims. (See Decl. of John Adkisson in Support of Halo E le c tro n ic s , Inc.'s Response to Defs.' Opening Br. Re: Claims Added During R e e x a m in a tio n of the Halo Patents (Doc. #160), Exs. 1-5.) Halo thereafter asserted most of th o s e new claims against Pulse, and Pulse contends that there are three newly-asserted

Approximately eight months later the Court vacated its Order to stay finding no good c a u s e remained to stay the proceedings further given that reexamination of the patents at issue c o u ld take several years. (Order Vacating Order on Mot. to Stay (Doc. #79).) 3

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c la im s that require construction by the Court. II. LEGAL STANDARDS P a te n t claim construction is a question of law for the Court. Markman v. W e s tv ie w Instruments, Inc., 517 U.S. 370, 372 (1996). When interpreting claims, a court's p rim a ry focus should be on the intrinsic evidence of record, which consists of the claims, th e specification, and the prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1 3 1 4 -1 7 (Fed. Cir. 2005) (en banc). The Court should begin by examining the claim la n g u a g e . Id. at 1312. Claim language should be viewed through the lens of a person of " o rd in a ry skill in the relevant art at the time of the invention." SanDisk Corp v. Memorex P ro d s , Inc., 415 F.3d 1278, 1283 (Fed. Cir. 2005). If the claim language is clear on its f a c e , then consideration of the other intrinsic evidence is limited "to determining if a d e v ia tio n from the clear language of the claims is specified." Interactive Gift Exp., Inc. v. C o m p u s e rv e Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001). The Court should give the claim's words their "ordinary and customary m e a n in g ." Phillips, 415 F.3d at 1312-13 (quotation omitted). In construing a claim term's o rd in a ry meaning, the context in which a term is used must be considered. ACTV, Inc. v. W a lt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003). Both asserted and unasserted c la im s of the patent also can add meaning to a disputed claim term as claim terms normally a re used consistently throughout the patent. Phillips, 415 F.3d at 1314. Additionally, where th e patents at issue "all derive from the same parent application and share many common te rm s , [the court] must interpret the claims consistently across all asserted patents. NTP, In c . v. Research In Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005). " [ C ]la im s must be read in view of the specification, of which they are a part." Phillips, 415 F.3d at 1315 (quotation omitted). The specification can offer "practically in c o n tro v e rtib le directions about a claim meaning." Abbott Labs. v. Sandoz, Inc., 566 F.3d 1 2 8 2 , 1288 (Fed. Cir. 2009). For example, the patentee may act as its own "lexicographer" 4

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a n d give a specialized definition of a claim term either explicitly or implicitly, in which c a s e , the specification acts as a dictionary for the patent. Id.; see also Phillips, 415 F.3d at 1 3 2 1 . "Likewise, inventors and applicants may intentionally disclaim, or disavow, subject m a tte r that would otherwise fall within the scope of the claim." Abbott Labs., 566 F.3d at 1288. "When consulting the specification to clarify the meaning of claim terms, courts m u s t take care not to import limitations into the claims from the specification." Id. "[A]lthough the specification may well indicate that certain embodiments are preferred, p a rtic u la r embodiments appearing in the specification will not be read into claims when the c la im language is broader than such embodiments." Tate Access Floors, Inc. v. Maxcess T e c h n s., Inc., 222 F.3d 958, 966 (Fed. Cir. 2000) (quotation omitted). "By the same token, th e claims cannot enlarge what is patented beyond what the inventor has described in the in v e n tio n ." Abbott Labs., 566 F.3d at 1288 (internal quotation omitted). Pursuant to the definiteness requirement in Section 112 of the Patent Act, "[t]he s p e c if ic a tio n shall conclude with one or more claims particularly pointing out and distinctly c la im in g the subject matter which the applicant regards as his invention." 35 U.S.C. § 112, ¶ 2. Whether a claim satisfies this requirement is a matter of law determined by the Court c o n s tru in g the patent claims. Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1 3 4 7 (Fed. Cir. 2005) (citing 35 U.S.C. § 112, ¶ 2.) "[T]he purpose of the definiteness re q u ire m e n t is to ensure that the claims delineate the scope of the invention using language th a t adequately notifies the public of the patentee's right to exclude." Id. Thus, the s ta n d a rd for determining indefiniteness is whether "the claims at issue are sufficiently p re c ise to permit a potential competitor to determine whether or not he is infringing." Exxon Research & Eng'g Co. v. U.S., 265 F.3d 1371, 1375 (Fed. Cir. 2001) (quotation and a lte ra tio n omitted). However, because of the statutory presumption of patent validity, claim te rm s are considered invalid for indefiniteness "only if reasonable efforts at claim 5

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c o n s tru c tio n prove futile." Id. Clear and convincing evidence therefore must be shown to in v a lid a te a patent. Datamize, 417 F.3d at 1348. In addition to the specification, the Court also should consider the patent's p ro s e c u tio n history which consists of "the complete record of the proceedings before the P T O and includes the prior art cited during the examination of the patent." Phillips, 415 F .3 d at 1317. However, because the prosecution represents an "ongoing negotiation" rather th a n the "final product" of the negotiation, "it often lacks the clarity of the specification and th u s is less useful for claim construction purposes." Id. Consulting the prosecution history c a n , however, be helpful in determining whether the patentee disclaimed an interpretation d u rin g prosecution. Research Plastics, Inc. v. Federal Packaging Corp., 421 F.3d 1290, 1 2 9 6 (Fed. Cir. 2005). "Under the doctrine of prosecution disclaimer, a patentee may limit th e meaning of a claim term by making a clear and unmistakable disavowal of scope during p ro s e c u tio n ." Purdue Pharma L.P. v. Endo Pharm. Inc., 438 F.3d 1128, 1136 (Fed. Cir. 2 0 0 6 ). If the claim language is not clear after reviewing all intrinsic evidence, then the C o u rt may refer to extrinsic evidence such as expert testimony, inventor testimony, d ic tio n a rie s , and learned treatises. Zodiac Pool Care, Inc. v. Hoffinger Indus., Inc., 206 F .3 d 1408, 1414 (Fed. Cir. 2000). "Relying on extrinsic evidence to construe a claim is p ro p e r only when the claim language remains genuinely ambiguous after consideration of th e intrinsic evidence. Such instances will rarely, if ever, occur." Interactive Gift Exp., In c ., 256 F.3d at 1332 (internal quotation omitted). I I I . DISCUSSION H a v in g considered, in accord with the standards above, the arguments of counsel p re s e n te d in the briefs and at the hearing conducted May 27, the Court construes the patent te rm s as follows. /// 6

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A . The Gutierrez/`936 Patent 1 . Substrate Being Disposed in a Substantially Horizontal Orientation & H o riz o n ta l Disposition T h e parties dispute the meaning of "substrate being disposed in a substantially h o riz o n ta l orientation" and "horizontal disposition" as the terms are used in claims 1 and 3 7 . (Decl. in Support of Halo's Opening Br., Ex. A at 23 (16:17-18), 25 (20:25).)

Plaintiff Halo's Proposed Construction In d e f in ite because claims lack an o b je c tiv e anchor and cannot be construed.

D e fe n d a n t Pulse's Proposed C o n s tr u c tio n T h e s e terms do not require construction by th e Court, as the plain and ordinary m e a n in g of each term is understood by o n e of ordinary skill in the art.

Beginning with the claim language, neither claim 1 nor claim 37 provide an o b je c tiv e anchor to inform a party to what the substrate in claim 1, and the insert body in c la im 37, are horizontal. The prosecution history explains that "substantially horizontal" w a s included to further clarify why the present invention differed from the Imschweiler p rio r art, but it does not help to clarify to what the relevant element is horizontal. (Decl. in S u p p o rt of Halo's Opening Br., Ex. B at 103-04.) Moreover, because the object can be d is p o s e d so that any of its sides are horizontal to the ground, the Court finds an objective a n c h o r is necessary to clarify the claim term. Figure 3a of the Patent and its corresponding s p e c if ic a tio n establishes that the substrate is "disposed horizontally and in substantially c o p la n a r orientation with the insert element." (Id., Ex. A at 5, 20 (10:3-4).) Figure 1a e s ta b lis h e s that the insert element is inserted in the housing of the modular connector along th e bottom interior surface of the housing. (Id., Ex. A at 4.) T h e Court therefore holds that "substrate being disposed in a substantially h o r iz o n ta l disposition" in claim 1 means horizontal to the insert element, and " h o r iz o n ta l disposition" in claim 37 means horizontal to the bottom interior surface 7

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2 . Bottom Interior Surface T h e parties dispute the meaning of "bottom interior surface" as it is used in c la im s 11-14. (Decl. in Support of Halo's Opening Br., Ex. A at 24 (17:13-28).)

Plaintiff Halo's Proposed Construction In d e f in ite because claims lack an objective a n c h o r.

D e fe n d a n t Pulse's Proposed C o n s tr u c tio n T h is term does not require construction by th e Court, as the plain and ordinary m e a n in g of each term is understood by one o f ordinary skill in the art.

B a s e d on the plain language of the claim, it is unclear what "bottom" means as th e re is no objective anchor, and depending on how the invention is disposed, any side can c o n s titu te the bottom. Pulse contends the top of the modular connector is established by the lo c a tio n of the tab for the modular plug, as shown in Figure 1a. (See id., Ex. A at 4.) The C o u r t therefore holds that "bottom interior surface" means the opposite surface from w h e r e the modular plug tab is located. 3. Majority of Length of Said First Conductors Disposed Away From Said Electronic Components T h e parties dispute the meaning of "majority of length of said first conductors d is p o s e d away from said electronic components" as it is used in claim 23. (Decl. in Support o f Halo's Opening Br., Ex. A at 24 (18:20-25).) P la in tiff Halo's Proposed Construction In d e f in ite . D e fe n d a n t Pulse's Proposed C o n s tr u c tio n This term does not require construction by th e Court, as the plain and ordinary m e a n in g of each term is understood by one o f ordinary skill in the art. Alternatively, to th e extent the Court requires a construction, th e term should be construed as "more than h a lf of the length of said first conductors a re not directly proximate to said electronic c o m p o n e n t s ."

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T h e Court finds that a person of ordinary skill in the art would understand " m a jo rity" to mean more than half. However, the term "disposed away" from in the context o f the claim language is ambiguous. The claim's plain language explains that the purpose b e h in d disposing the conductors away from the electronic components is to minimize the e le c tro m a g n e tic interaction between the electronic components and the first conductors. (Id. at 24 (18:20-25).) However, the purpose does not help to clarify what "disposed away f ro m " means. In the prosecution history, the inventor attempted to distinguish the present in v e n tio n from the Imschweiler prior art by arguing that the prior art teaches placing large p o rtio n s of conductors directly proximate to the electronic components, whereas the present in v e n tio n teaches separating conductors from the electronic components. (Id., Ex. B at 1 0 4 .) The prosecution history explains that the term "disposed away from" should be in te rp re te d as opposed to "directly proximate to" the electronic components. This proposal c la rif ie s that, in the context of the claim, "disposed away" is not meant to be a nature of d e g re e , but simply a distinguishing characteristic from the prior art. The Court therefore holds that a "majority of length of said first conductors d is p o s e d away from said electronic components" means that "a majority of length of s a id first conductors are not directly proximate to said electronic components." 4 . Said First Conductors Being Configured to . . . Form at Least One E le c tric a l Pathway Between Said First Conductors and at Least One of S a id Plurality of Conductive Pathways of Said Substrate T h e parties dispute the term as it is used in claim 1. (Decl. in Support of Halo's O p e n in g Br., Ex. A at 23 (16:22-26).)

P la in tiff Halo's Proposed Construction C o n ta in s nonsensical limitation that renders th e claim incapable of construction.

D e fe n d a n t Pulse's Proposed C o n s tr u c tio n T h is term does not require construction by th e Court, as the plain and ordinary m e a n in g of each term is understood by one o f ordinary skill in the art. 9

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B a s e d on a plain reading of the claim language, the claim explains that the c o n d u c to rs are configured in such a way that there is an electrical pathway between the c o n d u c to rs and the conductive pathways within the substrate. The Court therefore holds th a t the claim does not require construction by the Court, as the plain and ordinary m e a n in g of each term is understood by one of ordinary skill in the art. 5 . Conductive Pathways T h e parties dispute the term "conductive pathways" as it is used in claim 1. (Decl. in Support of Halo's Opening Br., Ex. A at 23 (16:15-16).) P la in tiff Halo's Proposed Construction C o n d u c tiv e traces embedded in or on the s u b s tra te through which signals may pass. * A previous construction (Aug. 21, 2009): T ra c e s embedded in the substrate through w h ic h electrical signals may pass. D e fe n d a n t Pulse's Proposed C o n s tr u c tio n N o construction is required, as the plain m e a n in g of the term is apparent. Alternatively, the term should be construed a s "paths, formed of one or more c o n d u c tiv e materials, through which e le c tric a l signals may pass."

T h e parties agree that "conductive pathways" must pass electrical signals. However, they dispute whether "conductive pathways" are limited to traces and whether the p a th w a ys must be part of the substrate. Because the claim language already associates the c o n d u c tiv e pathways with the substrate, it is unnecessary to include the limitation in the c la im construction. With respect to whether "traces" should be an included construction limitation, th e patent specification and associated claim language makes clear that "conductive p a th w a ys " is not synonymous with "traces." In the specification it states "[i]n the illu s tra te d embodiment, the substrate element 301 comprises a printed circuit board (PCB) h a v in g a plurality of . . . surface mount contact pads and conductive traces of the type well k n o w n in the art, although other substrate technologies may be substituted." Additionally, in comparing claim 1 to claim 15, claim 15 states "a substrate . . . having a plurality of 10

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c o n d u c tiv e traces associated therewith." (Id. at 20 (10:4-9), 24 (17:40-45).) Thus, the use o f a substrate with conductive traces in claim 15 illustrates the inventor's intent that claim 1 h a v e a different scope. Indeed, a substrate consisting of traces and pads, as it is shown in th e preferred embodiment, is simply one technological possibility. T h e Court therefore holds "conductive pathways" means "paths through w h ic h electrical signals may pass." 6. Second Conductors T h e parties dispute the term "second conductors" as it is used in claims 1, 23, and 3 7 . (Decl. in Support of Halo's Opening Br., Ex. A at 23 (16:28-29), 24 (18:26-29), 25 (2 0 :2 1 , 36-37).) P la in tiff Halo's Proposed Construction C o n d u c to rs that provide a path for the tra n s m itte d signal from the conductive p a th w a ys or traces to the external device. A lte r n a tiv e proposition: Conductors that p ro v id e a path for the transmitted signal a n d that are adapted to electrically interface w ith the external device. D e fe n d a n t Pulse's Proposed C o n s tr u c tio n N o construction is required, as the plain m e a n in g of the term is apparent. Alternatively, the term should be construed a s "conductors that are separate and d istin c t from the first conductors."

The claim's plain language establishes that second conductors are those c o n d u c to rs that provide a path for the transmitted signal. (See id., Ex. A at 23 (16:28-32).) In contrast, the third conductors are those conductors associated with the optional LED lig h ts . (Id. at 25 (20:10-18).) Accordingly, the claim language establishes that the second c o n d u c to rs are more than just those conductors that are separate and distinct from the first c o n d u c to rs . It is unnecessary, however, to include a limitation that the second conductors a re adapted to electrically interface with the external device because in some claims it is re d u n d a n t, and in others the claim language does not make it a requirement. (See id. at 23 (1 6 :2 8 -3 3 ) & 25 (20:38-45).) 11

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T h e Court therefore holds "second conductors" means "conductors that p r o v id e a path for the transmitted signal."

B. The Shutter/`963 Patent 1 . Contour Element T h e parties dispute the claim term "contour element" as it is used in claims 1, 16 a n d independent claims 19, 27, and 29 in the `963 Patent. (Decl. in Support of Halo's O p e n in g Br., Ex. C at 26 (9:10, 20; 10:6, 15, 35, 51), 27 (11:27, 43, 67; 12: 8, 13-14).)

P la in tiff Halo's Proposed Construction A raised or recessed feature that physically c o n ta c ts the bend of an electrical lead both b e f o re and after the modular plug is in s e rte d into the cavity.

D e fe n d a n t Pulse's Proposed C o n s tr u c tio n A feature with a distinct shape, such as a b u m p , notch, tab, or recess.

P u rs u a n t to the plain and ordinary language in claim 1 and 16, the purpose of th e bend in the electrical lead is to "engage with contour element," and the purpose of th e contour element is to "retain first leads w/in cavity" and "to cooperate with bend to m a in ta in first leads in contact with electrical leads of modular plug." (Id. at 26 (9:121 9 ; 10:12-20).) Additionally, in claim 19, which explains a method of manufacturing a m ic ro e le c tro n ic connector, the second leads are configured in a shape "which s u b s ta n tia lly engages" the contour elements of the first connector "upon mating," and w h e n the second leads are inserted into the cavity, they "cooperate" with the contour e le m e n ts . (Id. at 26 (10:43-51).) Although the prosecution history shows that the p a te n te e deliberately distinguished between the words "cooperate" and "engage," the p a te n t claims use the terms "cooperate" and "engage" interchangeably to describe the re la tio n s h ip between the electrical lead bend and the contour element. (Decl. of K ris to p h e r Reed in Support of Responsive Claim Constr. Br. of Defs. Pulse Eng'g, Inc. 12

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& Technitrol, Inc. (Doc. #116), Ex. B at 7-9.) The purpose of the engagement between the contour element and the e le c tric a l lead is to "maintain the lead in contact with the modular plug." (Decl. in S u p p o rt of Halo's Opening Br., Ex. C at 27 (11:54-60).) Further, according to the s u m m a ry of the invention, at least one of the purposes of the present invention was to u tiliz e a design wherein the use of adhesives was unnecessary to keep the front c o n n e c to r body element connected to the rear connector body element. (See id. at 22 (1 :5 5 -5 9 ) & 23 (3:8-12).) Thus, the invention necessarily requires constant physical c o n ta c t between the contour element and the electrical leads. T h e specification also explains the shape of the contour element. With re s p e c t to one embodiment, the specification states: T h e s e contour elements 140 are raised, somewhat rounded " b u m p s " in the present embodiment, although it will be a p p re c ia te d that other element shapes and configurations (Such as n o tc h e s , tabs or recesses) may be used. (Id . at 23 (4:53-57).) The Court finds Pulse's proposed construction that the contour e le m e n t be a feature with a distinct shape could include an infinite number of shapes, a n d as such, is not sufficiently descriptive. T h e Court therefore holds that "contour element" means "a raised or r e c e s s e d feature that physically contacts the bend of an electrical lead both before a n d after the modular plug is inserted into the cavity."

C . Halo's Patents (`985, `720, `721, `785, and `431) 1 . Electronic Surface Mount Package The parties dispute the term "electronic surface mount package" as it is used in the preamble of Patents `985, `720, `721, `785. (Decl. in Support of Pulse's O p e n in g Br., Exs. A-E.)

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 " W h e th e r to treat a preamble as a limitation is a determination resolved only o n review of the entire patent to gain an understanding of what the inventors actually in v e n te d and intended to encompass by the claim." Cataline Mktg. Int'l, Inc. v. C o o ls a v in g s .c o m , Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (internal quotation and a lte ra tio n omitted). "In general, a preamble limits the invention if it recites essential s tru c tu re or steps, or if it is necessary to give life, meaning, and vitality to the claim." Id. (internal quotation omitted). "Conversely, a preamble is not limiting where a p a te n te e defines a structurally complete invention in the claim body and uses the p re a m b le only to state a purpose or intended use for the invention." Id. (internal q u o ta tio n omitted). Although there is no specific test for determining when a preamble lim its claim scope, some guideposts have emerged. One important guidepost re c o g n iz e s that "clear reliance on the preamble during prosecution to distinguish the c la im e d invention from the prior art transforms the preamble into a claim limitation b e c a u s e such reliance indicates use of the preamble to define, in part, the claimed in v e n tio n ." Id. Alternatively, "preambles describing the use of an invention generally d o not limit claims because the patentability of apparatus or composition claims d e p e n d s on the claimed structure, not on the use or purpose of that structure." Id. at 809. It is unnecessary to include in the construction of the preamble the limitation th a t the electronic surface mount package includes one or more toroid transformers in 14 P la in tiff Halo's Proposed C o n s tr u c tio n T h e phrase is not a claim limitation and n e e d not be construed. Alternatively, the p h ra s e should be construed as "an e le c tro n ic device configured to attach to th e surface of a printed circuit board." D e fe n d a n t Pulse's Proposed C o n s tr u c t io n A surface mounting package that is for D C voltages only in which one or more to ro id transformers are embodied.

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b e c a u s e the claim language already includes the limitation. Thus, the parties only d is p u te is whether the claim should be limited to "DC voltages only." T h e preamble should not be construed as a claim limitation because the c la im describes a structurally complete invention in the claim body, and there was no e x p re s s disclaimer in the prosecution history that limited the present invention to DC v o lta g e s only. In distinguishing the present invention from the Flentge prior art, the p ro s e c u tio n history states "[t]he present invention is directed toward applications for p a c k a g e s mounted on a printed circuit board in an electronic device, which requires v e ry low current and voltages, and is for DC voltages only." (Decl. in Support of P u ls e 's Opening Br., Ex. K at 5.) Based on the sentence's structure, the Court finds the d is tin c tio n was not referencing the present invention, but instead refers to what the p a c k a g e is mounted on--a printed circuit board that is for DC voltages only. This in te rp re ta tio n is consistent with the Flentge prior art, which is intended for applications th a t use AC voltage. (Id.) Construing the term as Pulse suggests would be inconsistent with what one o f ordinary skill in the art would understand and it would exclude the preferred e m b o d im e n t of the patent. The summary of the invention states that the present in v e n tio n is an "improved electronic surface mount package" which suggests there is a c o m m o n understanding of electronic surface mount packages in the art, and Halo's in v e n tio n is simply an improved version of the device. (Decl. in Support of Pulse's O p e n in g Br., Ex. A at 8 (1:16-17).) Although the Court typically should not rely on e x trin s ic evidence, "[b]ecause the meaning of a claim term as understood by persons of s k ill in the art is not often immediately apparent," the court may consider "extrinsic e v id e n c e concerning relevant scientific principles, the meaning of technical terms, and th e state of the art" to determine what one of ordinary skill in the art would understand th e term to mean. Phillips, 415 F.3d at 1314. 15

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H a lo 's expert Ian Crayford ("Crayford") states that one of ordinary skill in th e art would understand that surface-mount packages with toroid transformers, which is the preferred embodiment disclosed in the patents, are intended to be "used in a p p lic a tio n s with two circuits that operate on different DC voltages and where AC v o lta g e s are transferred between the two circuits," and the "DC voltages only" s ta te m e n t refers to "the printed circuit boards that are powered with DC voltages." (Decl. of Ian Crayford ["Crayford Decl."] (Doc. #113) at ¶¶ 8-19.) Additionally, C ra yf o rd states that one of ordinary skill in the art "would not understand this s ta te m e n t to mean that Halo's devices do not work with AC voltage signals because the v e ry purpose of the disclosed isolation transformers in the Halo patents is to isolate DC v o lta g e s so that the AC networking signals can pass between the two circuits." Id. at ¶ 19. Pulse contends the Court should not consider Crayford's Declaration b e c a u s e his credibility is questionable as he was a consultant for Halo during the p e n d e n c y of this litigation. (Crayford Depo. at 26-27.) The Court agrees that the w e ig h t to be given to Crayford's expert opinion is limited by the factors Pulse cited. However, Pulse fails to offer any evidence of its own to contradict Crayford's c o n c lu s io n as to what one of ordinary skill in the art would understand the present in v e n tio n to be. The Court therefore holds the term "electronic surface mount package" is "an electronic device configured to attach to the surface of a DC voltage only p r in te d circuit board." 2 . By/In a Soft Silicone Material The parties dispute the term "by/in a soft silicone material" as it used in P a te n ts `985 claims 1-2l, `720 claims 2-4, and `785 claims 2, 16, 25. (Decl. in Support o f Pulse's Opening Br., Exs. A, B, E.) 16

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 W ith in the Package and Secured by a S o ft Silicone Material (`785 claims 16, 2 5 ): Situated inside the package and held in place by a soft silicone material. S o ft Silicone Material: A silicone m a te ria l that is resilient so as to allow e x p a n s io n of the toroid when heated. T h o u g h they differ slightly, the plain language of the claims establish that th e common purpose of the silicone material is to keep the toroid transformers in the p a c k a g e . Moreover, without the silicone material, there is nothing to keep the toroid tra n s f o rm e rs from falling out of the open-bottom package. Therefore, the use of the te rm "retain" is an appropriate description of the purpose of the silicone material. W ith respect to how to construct soft silicone material, the specifications for th e patents explains that the purpose of the material is to allow for toroidal expansion w h e n the toroid is heated. (See id., Ex. B at 10 (2:48-53).) Additionally, in the s p e c if ic a tio n s , the inventors discuss the problems with using hard plastics or a hard e p o x y type material as it has a tendency to crack the package during heating. (See id., E x . B at 10 (1:22-23, 2:45-54); Ex. C at 9 (1:22-33, 2:45-54).) While the purpose of th e silicone material clarifies its meaning, one of ordinary skill in the art would 17 P la in tiff Halo's Proposed C o n s tr u c tio n T h e claim elements should be construed s e p a ra te ly and in a manner consistent w ith the actual language of the claims. C a r r ie d Within Said Package by a S o ft Silicone Material (`985 claims 1-2, 6 , 8; `785 claim 2): Situated inside the p a c k a g e and supported by soft silicone m a te ria l. W ith in Said Package in a Soft Silicone M a te r ia l (`720 claims 2-4, 6): Situated in s id e the package in contact with a soft s ilic o n e material. D e fe n d a n t Pulse's Proposed C o n s tr u c t io n R e ta in e d inside the construction package b y a silicone material that is not a hard p la s tic or a cured or hard epoxy.

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u n d e rs ta n d that soft silicone plastic does not mean hard plastic or epoxy. Based on the plain language of the claim terms and the specification, the C o u r t holds "by/in a soft silicone material" as it is used in the various patents m e a n s "retained inside the package by a soft silicone material." Additionally, a " s o ft silicone material" means "a silicone material that is resilient so as to allow e x p a n s io n of the toroid when heated." 3 . Separated From One Another So as to Avoid Arcing The parties dispute the term "separated from one another so as to avoid a rc in g " as used in Patents `985 claim 5, `720 claim 5, and `785 claim 8, 13, 22, 31. (Decl. in Support of Pulse's Opening Br., Exs. A, B, E.)

P la in tiff Halo's Proposed C o n s tr u c tio n S e p a ra te d from one another by at least a d is ta n c e that is roughly the same as the w id th of the posts.

D e fe n d a n t Pulse's Proposed C o n s tr u c t io n C la im term is indefinite pursuant to 35 U .S .C . § 112.

T h e claim's plain language does not explain how far apart the posts must be f ro m each other to avoid arcing. However, in the file history of the `720 Patent, the in v e n to r explained that to avoid arcing the "pin spacing must be about the same as the p in width, roughly." (Decl. of William Woodford in Support of Halo's Responsive C la im Constr. Br. ["Decl. in Support of Halo's Responsive Br."] (Doc. #114), Ex. D at 1 9 .) Based on the explanation in the `720 Patent's file history, a person with ordinary s k ill in the art would be able to determine how far apart the pins are in the present in v e n tio n . Therefore, the Court construes "separated from one another so as to a v o id arcing" to mean "separated from one another by at least a distance that r o u g h ly is the same as the width of the posts." /// /// 18

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4 . Standoff/Safeguard T h e parties dispute the term "standoff/safe guard" as it is used in Patents `9 8 5 claim 7, `720 claims 5, 7, 8, `721 claims 7, and `785 claims 9, 17, 18-19, 34. (Decl. in Support of Pulse's Opening Br., Exs. A, B, C, E. )3

P la in tiff Halo's Proposed C o n s tr u c tio n A portion of the case that extends below th e solder posts that is capable of p re v e n tin g the solder posts from c o n ta c tin g the printed circuit board.

D e fe n d a n t Pulse's Proposed C o n s tr u c t io n A portion of the construction package d e s ig n e d to rest in contact with the p rin te d circuit board after mounting in o rd e r to raise the remainder of the p a c k a g e off the printed circuit board for e a s y cleaning, and to ensure that the pin p o s ts do not touch the printed circuit b o a rd .

The parties do not dispute that the stated purpose of the claimed standoff is to prevent the posts from contacting the PC board. The dispute lies in (1) whether to d o so, the standoff necessarily must be in contact with the PC board, and (2) whether th e reference to "easy cleaning" in the prosecution history constitutes an express d is c la im e r. The claims' plain language does not clarify whether the standoff is in contact w ith the PC board. Additionally, both parties agree that Figures 5 and 6 and their c o rre sp o n d in g specifications are ambiguous. Pulse contends the figures represent the d e v ic e prior to being pressed down on the PC board, which explains why the terminal p in is .015 inches below the PC board. Conversely, Halo contends a mistake was made w h e n drawing the figures as the location of the PC board should have been drawn as c o p la n a r with the terminal pin, not the standoff. Additionally, Halo contends Pulse's

Halo agrees the claim term "standoff" and "safeguard" have the same meaning and a re used interchangeably throughout the patents. (Halo Br. in Opp'n to Pulse's Opening Claim C o n s tr. Br. (Doc. #112) at 19-20.) 19

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in te rp re ta tio n is incorrect as the device was not designed to be pressed down on the PC b o a rd with such force as to bend the terminal pin .015 inches during application. Reading the claims in view of the specification in which they are part, P u ls e 's proposed resolution of the ambiguity in the figures is more persuasive. The s p e c if ic a tio n states "FIG. 5 shows the stand off 34, in which the parts typically are p la c e d automatically by machine onto a PC board. They are pressed down as it d e s ira b le to have some limitation of how far they can be pressed." (Decl. in Support of P u ls e 's Opening Br., Ex. A at 8 (2:37-43).) The specification also states "FIG. 6 shows th e distance in relationship between the end of the post 12 and where the PC board 36 is located and also where the standoff 34 ends. The PC board 36 would be at the base o f the foot." (Id. at 8 (2:44-47).) Thus, the specification supports the interpretation th a t Figure 6 represents the device prior to being mounted, with the PC board being c o p la n a r with the base of the foot or terminal pin after the device is mounted and p re s s e d on the PC board. W ith respect to whether the proposed construction should include language th a t the standoff keeps the package off the PC board for easy cleaning, the prosecution h is to ry referencing this primarily discusses the superiority of the post design and only m e n tio n s the "easy to clean" aspect to the standoff as one of its advantages. (See Decl. in Support of Pulse's Opening Br., Ex. O at 8.) Thus, the reference cannot be c o n s tru e d as an express disclaimer. T h e Court therefore holds "standoff/safeguard" to mean "a portion of th e package designed to rest in contact with the printed circuit board after m o u n tin g in order to prevent the solder posts from contacting the printed circuit b o a r d ." /// /// 20

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5 . Extending Through and Below a/the Bottom of Said Side Wall The parties dispute the term "extending through and below a bottom of said s id e wall" and "extending through and below the bottom of said side wall" as it is f o u n d in Patents `721 claims 1-2, 6, and `720 claims 1-4, 6, respectively. (Decl. in S u p p o rt of Pulse's Opening Br., Exs. B, C.)

P la in tiff Halo's Proposed C o n s tr u c tio n O rd in a ry meaning.

D e fe n d a n t Pulse's Proposed C o n s tr u c t io n E x te n d in g through and below one of the b o tto m surfaces of the said sidewall. C o m p r o m is e d Construction: Extending th ro u g h and below the portion of the s id e w a ll from which they emerge. E x te n d in g through said sidewall and b e lo w the plane of the lowest surface of s a id side wall.

T h e plain language of the claim explains that the post extends through and b e lo w the side wall. Although the patents use slightly different language (i.e. "a" vs. " th e " ), the distinction is irrelevant as they are both referencing the same side wall, and th e post is extended through and below said side wall in the same way. The Court th e r e fo r e holds "extending through and below a/the bottom of said side wall" s h o u ld be construed according to its ordinary meaning. /// /// /// /// /// /// /// 21

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6 . Hour-Glass Shaped Notch The parties dispute the term "hour-glass shaped notch" as it is used in Patent `7 2 0 claim 1. (Decl. in Support of Pulse's Opening Br., Ex. B.) P la in tiff Halo's Proposed C o n s tr u c tio n A notch formed by two mirrored in d e n ta tio n s on opposite vertical edges o f the solder post. D e fe n d a n t Pulse's Proposed C o n s tr u c t io n A notch formed by two mirrored in d e n ta tio n s on opposite vertical edges o f each solder post, such that no portion o f either indentation is perpendicular to th e vertical edges of either solder post.

T h e plain language of the claim does not further clarify what shapes c o n s titu te an "hour-glass shaped notch." However, a person of ordinary skill in the art w o u ld understand that an hour glass shape is not limited to shapes exactly replicating th a t of an hour glass. The Court therefore holds "hour-glass shaped notch" means "a n o tc h formed by two mirrored indentations on opposite vertical edges of the s o ld e r post." 7 . In Gull Wing Fashion/Extends in Wing Like Fashion The parties dispute the term "in gull wing fashion" and "extends in wing like f a s h io n " as it used in Patents `720 claims 1, 8, and `721 claims 1-2, 6. (Decl. in S u p p o rt of Pulse's Opening Br., Exs. B, C.)

P la in tiff Halo's Proposed C o n s tr u c tio n E x te n d in g outwardly from the case, then e x te n d in g in a downward fashion away f ro m the case, and then extending o u tw a rd ly from the case.

D e fe n d a n t Pulse's Proposed C o n s tr u c t io n E x te n d in g horizontally outward from the s id e w a ll for some length; sloping d o w n w a rd for some intermediate, nonv e rtic a l length; and concluding with a n o th e r horizontal length.

T h e plain language of claim does not help to clarify what the inventors in te n d e d a "gull-wing" shape to mean. Reading the prosecution history in context, the

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p ro s e c u tio n history disclaimed the Matsuma prior art as not being in a gull wing shape b e c a u s e the majority of the post was enclosed in the package and therefore did not e x te n d outwardly from the case. (See id., Ex. R at 6.) Additionally, although the in v e n to rs may have made a clear and unmistakable disavowal that their invention was d is tin c t from the Renskers prior art and the McCormick prior art in view of M a ts u m u ra , the distinction does not support Pulse's conclusion that claim construction m u s t include language limiting the angles of the segments in a "gull-wing" or "wing lik e " design. Moreover, claim's plain language does not support Pulse's more limited c o n s tru c tio n as it does not limit the angles of a "gull-wing." Even if the figures in the p a te n t illustrate a design amenable to Pulse's construction, those figures merely illu s tra te a preferred embodiment of the patent. The Court will not import limitations f ro m preferred embodiments when the claim language is broader than such e m b o d im e n ts . T h e Court therefore holds "in gull wing fashion" and "extends in a wing lik e fashion" to mean "extending outwardly from the case, then extending in a d o w n w a r d fashion away from the case, and then extending outwardly from the c a s e ." 8 . Means for encapsulating the plurality of toroid transformers within th e package T h e parties dispute the term "means for encapsulating the plurality of toroid tra n s f o rm e rs within the package" as it is used in Patent `785 claim 26. (Decl. in S u p p o rt of Pulse's Opening Br., Ex. E.)

P la in tiff Halo's Proposed C o n s tr u c tio n (1 ) Function: embedding the plurality of to ro id transformers within the package; (2 ) Corresponding structure: a silicone

D e fe n d a n t Pulse's Proposed C o n s tr u c t io n A soft silicone material that covers and re ta in s the plurality of toroid tra n s f o rm e rs within the package. 23

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c o m p o u n d , a silicone filling, or a soft s ilic o n e material and their equivalents

T h e parties agree the claim term is written in so called "means-plusf u n c tio n " language, and as such, "shall be construed to cover the corresponding s tru c tu re , material, or acts described in the specification and equivalents thereof." 35 U .S .C . § 112, ¶6. With respect to the function, as discussed above, the soft silicone m a te ria l retains the toroid transformers inside the package, without which, the toroid tra n s f o rm e rs would have nothing to keep them in place. Additionally, the prosecution h is to ry of the `785 patent equates the term "encapsulate" with "embedding." (See Decl. in Support of Halo's Responsive Br., Ex. D at HALO-NV-0000640.) Pulse p o in ts to Figure 4 in the `785 patent to establish that the silicone material also covers th e toroid transformers. (Decl. in Support of Pulse's Opening Br., Ex. E at 4.) However, nothing in the claim language requires that the silicone material cover the to ro id transformers, and the Court will not import limitations into the claims from the s p e c if ic a tio n when the claim language is broader than such embodiments. Tate Access F lo o rs , 222 F.3d at 966. With respect to the structures included, Halo proposes including several s tru c tu re s . The structures Halo suggests, however, all refer to the same soft silicone m a te ria l described in the patent. Accordingly, it is unnecessary to list the various d e s c rip tio n s for the same structure as a person of ordinary skill in the art would u n d e rs ta n d , for example, that soft silicone material and silicone compound are s yn o n ym o u s . T h e Court therefore holds "means for encapsulating the plurality of to r o id transformers within the package" means "a soft silicone material that

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e m b e d s and retains the plurality of toroid transformers within the package." 9 . End Wall T h e parties dispute the term "end wall" as it used in Patents `985 claims 9, 1 0 , 16, 17, `720 claims 9, 10, 14, 15, `721 claims 8, 9, `785 claims 35, 36, 52, 53, and `4 3 1 claims 6, 7. (Decl. of Kristopher Reed in Support of Pulse Eng'g, Inc. & T e c h n itro l, Inc.'s Opening Claim Constr. Br. Re: Claims Added During Reexamination o f the Halo Patents ["Decl. in Support of Pulse's Opening Br. Re: Added Claims"] (D o c . #158), Exs. A, B, C, D, E.)

P la in tiff Halo's Proposed C o n s tr u c tio n O rd in a ry meaning.

D e fe n d a n t Pulse's Proposed C o n s tr u c t io n S yn o n ym o u s with the terms "standoff" a n d "safeguard" previously identified as re q u irin g construction by the Court, and s h o u ld be construed the same as those te rm s .

T h e claim's plain language clearly explains that the end wall is on opposite e n d s of the side walls. Although a standoff can be described as an end wall, the claim la n g u a g e does not support that the two terms are synonymous across all patents. For e x a m p le , Patent `431 has an end wall but does not have a standoff. (See id., Ex J.) The Court therefore holds that the term "end wall" requires no construction by the C o u rt and should be construed according to its ordinary meaning. 1 0 . A Central Section of a Lower Surface of the End Wall T h e parties dispute the term "a central section of a lower surface of the end w a ll" as it is found in Patents `985 claims 10, 17, `720 claims 10, 15, `721 claims 8, 9, `7 8 5 claims 36, 53, and `431 claim 7. (Decl. in Support of Pulse's Opening Br. Re: A d d e d Claims. Exs. A, B, C, E.)

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P la in tiff Halo's Proposed C o n s tr u c tio n T h e portion of the end wall that extends b e lo w the solder posts and includes the c e n te r of the lower surface of the end w a ll.

D e fe n d a n t Pulse's Proposed C o n s tr u c t io n T h is claim term is indefinite under 35 U .S .C . § 112, ¶ 2.

A lth o u g h claim's plain language is somewhat ambiguous, a person of o rd in a ry skill in the art would understand the claim to mean a portion of the end wall th a t extends below the posts and includes the center portion of the end wall. The C o u r t therefore holds that "a central section of a lower surface of the end wall" m e a n s "a central portion of the end wall that extends below the solder posts" 1 1 . A Resilient Material to Secure the Plurality of Toroid Transformers Within the Package T h e parties dispute the term "a resilient material to secure the plurality of to ro id transformers within the package" as it is use in Patents `721 claims 10, 13, `785 c la im s 38, 42, 46, 50, and `431 claims 10, 14. (Decl. in Support of Pulse's Opening B r. Re: Added Claims, Exs. C, D, E.)

P la in tiff Halo's Proposed C o n s tr u c tio n O rd in a ry meaning; not governed by 35 U .S .C . § 112, ¶ 6.

D e fe n d a n t Pulse's Proposed C o n s tr u c t io n T h is term falls under 35 U.S.C. § 112, ¶ 6 ("means-plus-function"). The c o rre s p o n d in g material in the s p e c if ic a tio n is a "soft silicone material th a t covers and retains the plurality of to ro id transformers within the package."

E v e n where a claim does not use the word "means," it still may invoke " m e a n s -p lu s -f u n c tio n " treatment under § 112 if the term recites a function without re c itin g a sufficient structure for performing that function. See Mas-Hamilton Group v . LaGard, Inc., 156 F.3d 1206, 1214 (Fed. Cir. 1998); see also 35 U.S.C. § 112. In M a s -H a m ilto n , the Court found the term "non-resilient lever moving element" was

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d e s c rib e d in terms of its function, not its mechanical structure, because the claim could n o t be construed so broadly as to include any conceivable way or means that would c a u s e the lever to move. Mas-Hamilton, 156 F.3d at 1214. T h e core of the parties' dispute is whether the term "resilient material" s u f f ic ie n tly describes the structure that "support[s] the plurality of toroid transformers w ith in the package" or whether "resilient material" is a function that needs to be c o n s tru e d . Unlike the "lever moving element" in Mas-Hamilton, which could include a n y conceivable device that could move a lever, the resilient material in the patent must b e able to retain the transformers in the package and be capable of expanding during h e a tin g . Thus, the term sufficiently describes a structure and not merely a function. T h e Court therefore holds "a resilient material to secure the plurality of to r o id transformers within the package" should be construed according to its o r d in a r y meaning. I V . CONCLUSION IT IS SO ORDERED. IT IS FURTHER ORDERED that the parties shall meet and confer and file w ith the Court their fifteen proposed asserted claims by June 28, 2010.

D A T E D : June 14, 2010 _______________________________ PHILIP M. PRO United States District Judge

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