COPPER INNOVATIONS GROUP, LLC v. NINTENDO CO., LTD et al

Filing 90

MEMORANDUM ORDER -- adopting 82 the Report and Recommendation as augmented in the Memorandum Order after de novo review and due consideration of the parties' submissions in response to the Report and Recommendation. Signed by Judge David S. Cercone on 5/11/11. (mwm)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF PENNSYLVANIA

COPPER INNOVATIONS GROUP, LLC,
Plaintiff,
vs.
NINTENDO CO., LTD. and NINTENDO
OF AMERICA INC.,
Defendants.

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Civil Action No. 07-1752
Judge David S. Cercone

MEMORANDUM ORDER
AND NOW, on this 11th day of May, 2011, after de novo review of the record and upon
due consideration of [82] the Magistrate Judge’s Report and Recommendation filed on October
6, 2009, [83, 84] Plaintiff’s and Defendants’ objections and [86, 87] their respective responses
thereto, IT IS ORDERED that the Report and Recommendation as augmented below is adopted
as the claim construction opinion of the Court.
I.

Plaintiff’s Objections
Plaintiff raises five objections to the Report and Recommendation’s claim constructions.

Its arguments are, however, all variations on the objection that the Report and Recommendation
improperly imported limitations from the specification into the claims.
1. Identification Number
The first construction that Plaintiff objects to is “identification number.” Plaintiff argues
that requiring the “identification number” to be “hardware encoded” is an impermissible
limitation because it imports a limitation from the a preferred embodiment that is not present in
the claims. In particular, Plaintiff takes issue with the Report’s statement that the patent does not
contain language which expressly states that there are alternatives to a “hardware encoded
identification number.” (See Docket No. 82 at 21). Plaintiff first points to the section heading
“Description of the Preferred Embodiments” as indicating that “hardware encoded” is just a
preferred embodiment. See U.S. Patent No. 5,640,152 col. 5, ln. 23-24. (‘152 Patent) Second,

Plaintiff points to the final paragraph of the specification stating that “it should be understood
that many changes and modifications may be made therein without departing from the scope of
the appended claims.” ‘152 Patent col 11., ln. 62-64.
The Report did recognized that claims are not to be limited to preferred embodiments and
that Plaintiff’s contention was that “hardware encoded” is simply a element of a preferred
embodiment of the invention. However, the Report disagreed with this contention on the basis
that specification stated that “[e]very transmitter unit has a unique hardware encoded identifying
number.” ‘152 Patent col. 7, ln. 5-6 (emphasis added). Furthermore, the Report discussed that
the person having ordinary skill in the art would not read the specification to allow for the
identification number to be otherwise “hardware encoded,” i.e. “calculated by software” or
otherwise manipulated as suggested by Plaintiff. The Report’s analysis, therefore, did not fail to
take into account that aspects of the specification are merely preferred embodiments. Rather, the
Report’s recommendation is based on how a person having ordinary skill in the art would read
the claims in light of the entire specification, not simply a section heading and boilerplate
language of alternative embodiments.
Although “hardware encoded” is used only once in the specification, the Court agrees
with the Report that nothing in the intrinsic evidence would lead a person having ordinary skill in
the art to understand that the identification number found in “[e]very transmitter” could be
anything other than “hardware encoded.” The proposition that the “unique identification
number” could be calculated by software or somehow changed or manipulated from outside the
transmitter is not supported by the intrinsic evidence. (See Docket No. 82 at 21.) There simply
is no intrinsic support to require a person having ordinary skill in the art to read out “hardware
encoded” but not “unique” from the line in the specification “[e]very transmitter unit has a
unique hardware encoded identifying number.” ‘152 Patent col 7, ln. 5-6. As a result, Plaintiff’s
objection to “Identification Number” is overruled.

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2. Previously Designated & Designating
Plaintiff’s second objection is to the Report’s construction of “previously designated” and
“designating.” Plaintiff argues that the Report erred in finding that the “designating” step only
designates the identification number in the connect packet as the “previously designated
identification number.” Essentially, Plaintiff argues that the Report erred in recommending a
narrower construction that would not allow for a different number to be designated “in response”
to the identification number found in the connect packet.
Plaintiff’s contention that more than one number could be used to identify a transmitter
has no support within the specification. The Report correctly found that the specification does
not contain any of the additional steps suggested by Plaintiff. Furthermore, the “designating” is
done “by” transmitting the connect data packet which does not require the inclusion of a step
where the receiver is “designating” “in response to” the connect data packet. Indeed, it appears
that Plaintiff’s supposed alternative embodiments of using more than one number to designate
the identification number is merely an additional step to what is already present in the claim
under the recommended construction. As a result, Plaintiff’s objection to “previously
designated” and “designating” is overruled.
3. Connect Packet & Connect Data Packet
Plaintiff’s third objection is to “connect packet” and “connect data packet” and the
Report’s inclusion of the requirement that they contain “status data.” Again, Plaintiff argues that
the Report improperly imported limitations from the specification into the claims. In particular,
Plaintiff points out that only Claim 5 contains the term “status data” and the other claims
involving “connect packet” do not have the element of “status data” present.
The specification states, however, that “[e]very packet also contains a status byte and the
two-byte identifying number of the transmitter unit.” ‘152 Patent col. 11, ln. 4-5. The Report
further points out that it is undisputed that the “connect packet” is a type of data packet, again
which the specification states that contains at least the identification number and status data. As

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a result, the Report correctly concludes that a person having ordinary skill in the art would
understand “connect packet” to contain “status data.” Since the Report did not import elements
of a preferred embodiment into the claims, Plaintiff’s objection is overruled.
4. Rejecting
Plaintiff’s fourth objection is to “rejecting.” It argues that there should be a different
construction for the term’s use in Claim 1 and Claim 4. The Report recommends that Plaintiff’s
construction for “rejecting” be adopted as it provides the plain meaning of the term. Plaintiff’s
objection is that the Report uses the remainder of the language from Claim 1 in construing
“rejecting” which is slightly different from Claim 4. There is no indication that “rejecting” in
either claim has a different meaning or that rejecting should have separate constructions for each
claim. Rather, the most useful construction for the jury is to simply construe “rejecting” and
allow the remainder of the language in each of Claim 1 and 4 to speak for itself. As a result, the
Court will augment the Report’s construction as follows: “Rejecting” means “refusing to
accept.”
5. Different
Plaintiff’s final objection is that while the Report adopted a construction for the
disputed terms in Claim 2, the Report did not adopt a construction for the similar language found
in Claim 4. The Report recommended that the language from Claim 2 “different from the
identification numbers generated by all other transmitters of said plurality of transmitter” means
“the unique hardware encoded number identifying a specific transmitter is not the same as the
unique hardware encoded number in all other transmitter.” (Docket No. 82 at 39). This
construction simply incorporates the construction for the term “identification number” with the
construction for “different.” While the Court agrees with the Report’s construction for
“identification number”, for the sake of allowing the claim language and other claim
constructions to speak for themself, the Court will decline to construe the entire phrase of Claims
2 and 4 and rather will only provide a construction to the term “different.” The parties do not

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otherwise dispute that “different” means “not the same as.” Therefore the Court’s construction is
“different” means “not the same as.”
II.

Defendants’s Objections
Defendants also filed objections to the Report and Recommendation, which the Court

addresses in turn.
1. Transmitting
Defendants’ first objection is to the Report’s construction of “transmitting.” The Report
recommended that the related terms “transmitter” and “transmission” be construed as follows:
“transmission” means “a data packet sent from a transmitter”
“transmitter” means “a device for sending data packets.”
(Docket No. 82 at 32-35.) For “transmitting” the Report’s construction is “sending a signal from
transmitter.” Defendants contends for the sake of consistency and to avoid confusion that “data
packet” should be used in the construction of “transmitting” rather than signal.
Although the Court is cognizant of Defendants’ concern for consistency, the construction
recommended in the Report accounts for Defendants’ concern with the inclusion of the term
“transmitter,” which as stated above uses “data packet.” As a result, it would be redundant to
include “data packet” a second time in the construction. Furthermore, reading Defendants’
proposed construction with the remainder of the Claim language could equally cause the
confusion that they purportedly are seeking to avoid. In each instance, the Claims specify what
exactly is being transmitted, so there is no need to risk confusing the jury through a needlessly
complex construction. Since the Report’s construction reflects the plain meaning of
“transmitting” as would be understood by a person having ordinary skill in the art, the
Defendants’ objection is overruled.
2. All Equivalents
Defendants’ next objection is to the use of “all equivalents” in the means plus function
claims. In each of the Report’s constructions for the means plus function claims, the report
construed the claims to include “all equivalents” of the means. Defendants argues that the use of
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“all” does not reflect the statutory language of means plus function claims and that it could lead
to confusion for the jury as to what equivalents fall within the scope of the claims.
It is apparent that the Report did not seek to enlarge the scope of equivalents beyond what
35 U.S.C. 112 ¶6 allows. The statutory language for means plus function claims states:
An 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 (emphasis added). In order to avoid the risk of confusing the jury and to
exactly reflect the statutory language exactly, the Court will remove “all” from the Report’s
means plus function constructions.
3. Comparing
Defendants’ third objection is to the Report’s construction of “comparing.” The Report
recommended that “comparing” as found in Claim 1 means “determining the differences or
similarities in the compared numbers.” For Claim 2, which is a means plus function claim, the
parties agreed that the function of “means for comparing the identification number” is:
comparing the identification number in each transmission received
by the equipment with the identification number received with the
most recently received connect packet and rejecting each
transmission which does not contain said identification number
received with the most recently received connect packet.
(Docket No. 61-1 at 55). The corresponding structure in the specification identified in the
Report is “a microcontroller executing a compare instruction, and all equivalents thereof.”
Defendants’ argument is that the “compare instruction” identified as the corresponding
structure in Claim 2 is inconsistent with the “comparing” term construed in Claim 1 and that the
“compare instruction” should be given a construction to make it consistent with “comparing” in
Claim 1.
The Court disagrees with Defendants’ contention that “compare instruction” requires a
separate construction because the parties agreed upon function for Claim 2 already includes the

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term and will necessarily incorporate the construction of “comparing.” The agreed upon
function uses the term “comparing” and it will be read as being consistent with the construction
of “comparing” in Claim 1. As to the identified structure of Claim 2, as discussed below, that
construction will be modified, thus rendering the rest of Defendant’s objection moot.
4. Means Plus Function Claims
Defendants’ final objection is to clarify a few points concerning the means plus function
claims. Defendants’ first concern is that the Report abbreviated the agreed upon functions of
the claims. In the Court’s claim construction order that follows, the entire agreed upon function
will be given.
Defendants’ second concern is that all the corresponding structure identified in the
Report’s discussion of whether the means plus function claims were indefinite was not
completely reproduced in the conclusion section of the Report. Defendants have provided in
their brief a chart of the corresponding structure that was left out and is needed to make the
Report’s construction consistent with its analysis. Although Plaintiff opposes Defendants’
objection, in its brief it cites to the same structure in the specification upon which the Report
relied and that Defendants now ask to be made a part of the construction. As a result, the Court
will sustain Defendants’ objection and add the structure left out of the Report’s recommendation
to the claim construction.
III.

Conclusion
Consistent with the Report and Recommendation as augmented above, for the purposes

of claim construction the disputed terms are construed as follows:
1.

“Equipment” means “any computer equipment or device having a variable and
capable of producing a change therein in response to an electrical, infrared or
electronic signal.”

2.

“Previously designated identification number” means “the identification
number of a transmitter sent to the equipment in a connect packet and that is used
by the equipment for comparison with the identification number of transmissions
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subsequently received.”
3.

“Designating” means “establishing the identification number of a particular
transmitter by transmitting a connect packet from that transmitter to the
equipment.”

4.

“Identification number” means “a unique hardware encoded number that
identifies a specific transmitter.”

5.

“Connect data packet” and “connect packet” means “a data packet containing
the hardware encoded identification number of that specific transmitter, data
establishing it as a connect type packer, and status data.”

6.

“Transmitting” means “sending a signal from a transmitter.”

7.

“Transmission” means “a data packet sent from a transmitter.”

8.

“Transmitter” means “a device for sending data packets.”

9.

“Comparing” means “determining the differences or similarities in the
compared numbers.”

10.

“Rejecting” means “refusing to accept.”

11.

“Different” means “not the same as.”

12.

Function “transmitting an identification number as a part of each transmission
therefrom which is different from the identification numbers generated by all
other transmitters of the said plurality of transmitters.”
Structure “an infrared signal source, and a microcontroller executing
instructions for forming protocol packets which include a byte stream, a status
byte and the two-byte identification number that are transmitted through the
infrared signal source, and equivalents thereof.”

13.

Function “transmitting an identification number as a part of each transmission
from said device.”
Structure “an infrared signal source, and a microcontroller executing
instructions for forming protocol packets which include a byte stream, a status
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byte and the two-byte identification number that are transmitted through the
infrared signal source, and equivalents thereof.”
14.

Function “transmitting a connect packet.”
Structure “a switch, an infrared signal source, and a microcontroller executing
instructions for forming a connect packet that is transmitted through the infrared
signal source in response to the switch, and equivalents thereof.

15.

Function “storing the identification number of the transmitter in random access
memory (RAM).”
Structure “a microcontroller executing the instructions to read the identifying
number from its hardware-encoded location and store it in random access
memory, and equivalents thereof.”

16.

Function “storing an identification number associated with the device”
Structure “a microcontroller executing the instructions to read the identifying
number from its hardware-encoded location and store it in random access
memory, and equivalents thereof.”

17.

Function “storing the identification number in random access memory (RAM)”
Structure “a microcontroller executing the instructions to read the identifying
number from its hardware-encoded location and store it in random access
memory, and equivalents thereof.”

18.

Function “comparing the identification number in each transmission received by
the equipment with the identification number received with the most recently
received connect packet and rejecting each transmission which does not contain
said identification number received with the most recently received connect
packet.”
Structure “a microcontroller detecting a Pulse Code Modulated Infrared (IR)
data stream sent from a transmitter and executing a single step of subtraction, and
equivalents thereof.”
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The Report and Recommendation dated October 6, 2009, as augmented herein is
adopted as the opinion of the Court and an order implementing the term construction set forth
above will be issued.

s/ David Stewart Cercone
David Stewart Cercone
United States District Judge

cc:

All Counsel of Record
Via: CM/ECF Electronic Filing

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