DownUnder Wireless, LLC v. Samsung Electronics America, Inc. et al
Filing
212
MEMORANDUM AND OPINION ORDER Regarding Claim Construction. Signed by Magistrate Judge Charles Everingham on May 12, 2011. (jml)
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
DOWNUNDER WIRELESS, LLC
vs.
SAMSUNG ELECTRONICS AMERICA,
INC., ET AL.
DOWNUNDER WIRELESS, LLC
vs.
HTC CORP., ET. AL.
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CASE NO. 2:09-CV-365-DF-CE
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CASE NO. 2:09-CV-206-DF-CE
MEMORANDUM OPINION AND ORDER
I.
INTRODUCTION
Plaintiff DownUnder Wireless, LLC (“DownUnder”) filed suit against numerous
defendants, including HTC Corp., LG Electronics Mobilecomm U.S.A., Inc., Motorola, Inc.,
Nokia Corp., Pantech Wireless, Inc., Personal Communications Devices, LLC, Sony Ericsson
Mobile Communications (USA), Inc., Samsung Electronics Co., LTD., and Samsung
Telecommunications America LLC. Defendants HTC Corp., Pantech Wireless, Inc., Personal
Communications Devices, LLC, and Sony Ericsson Mobile Communications (USA), Inc. have
settled their disputes with DownUnder. As such, the only defendants remaining at this time are
LG Electronics Mobilecomm U.S.A., Inc., Motorola, Inc., Nokia Corp., Samsung Electronics
Co., LTD., and Samsung Telecommunications America LLC (collectively “Defendants”).
DownUnder alleges that Defendants infringe U.S. Patent No. 6,741,215 (the “’215
Patent”). Because the same patent is at issue in both of the above-captioned cases, the cases
were consolidated for claim construction purposes. The court held a Markman hearing on
December 16, 2010. After considering the submissions and the arguments of counsel, the court
issues the following order concerning the parties’ claim construction disputes.
II.
THE PATENT-IN-SUIT
The ’215 Patent is entitled “Inverted Safety Antenna for Personal Communication
Devices” and claims to provide “a novel geometry for the placement of components on a
personal wireless communication device…to greatly reduce the radiation impinging on a user’s
head and brain.” ’215 Patent at Abstract. The summary of the invention explains that:
The disclosed invention solves the radiation problem for wireless communication
devices by placing the transmitting antenna on the bottom of the communication
device. Radiation levels can be further reduced by angling the transmitting
antenna on the bottom of the communication device so that it angles away from
the user's face while in use. The phone housing may also be angled so that the
bottom portion of the phone is positioned away from the user’s head and brain,
which effectively positions the transmitting antenna significantly away from the
user’s head and brain. The result is that the user absorbs less total energy, and the
highest intensity electromagnetic radiation (“hot spot”) next to the brain can be
eliminated.
Id. at 2:20-32. Claim 1 of the ’215 Patent is representative of the claimed invention and is
reproduced below:
A wireless communication device, comprising:
a) a housing
b) a microphone;
c) a speaker earpiece;
d) a user interface mounted in an upright orientation on the communication
device;
e) a transmitting antenna;
f) wherein, said housing comprising an upper housing portion on top and a
lower housing portion on the bottom;
2
g) wherein, said speaker earpiece is mounted in said upper housing portion and
defines a resting surface for resting against a user’s ear to communicate sound
to the user’s ear;
h) wherein, said transmitting antenna for transmitting electromagnetic signals
mounted in said lower housing portion;
i) wherein, said microphone is positioned on the communication device to
detect audible sounds from the user;
j) wherein, during use, the communication device positions said transmitting
antenna away from the user’s ear because of the distance between said speaker
earpiece and said transmitting antenna, and
k) said housing defines an obtuse angle between the top of said upper housing
portion and the bottom of said lower housing portion such that the bottom of
said housing is positioned substantially away from both the plane defined by
said resting surface and the user's face during use, whereby the position of said
transmitting antenna is angled away from the user's head and face during use.
III.
GENERAL PRINCIPLES GOVERNING CLAIM CONSTRUCTION
“A claim in a patent provides the metes and bounds of the right which the patent confers
on the patentee to exclude others from making, using or selling the protected invention.” Burke,
Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed. Cir. 1999). Claim construction
is an issue of law for the court to decide. Markman v. Westview Instruments, Inc., 52 F.3d 967,
970-71 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996).
To ascertain the meaning of claims, the court looks to three primary sources: the claims,
the specification, and the prosecution history. Markman, 52 F.3d at 979. The specification must
contain a written description of the invention that enables one of ordinary skill in the art to make
and use the invention. Id. A patent’s claims must be read in view of the specification, of which
they are a part. Id. For claim construction purposes, the description may act as a sort of
dictionary, which explains the invention and may define terms used in the claims. Id. “One
purpose for examining the specification is to determine if the patentee has limited the scope of
3
the claims.” Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000).
Nonetheless, it is the function of the claims, not the specification, to set forth the limits of
the patentee’s invention. Otherwise, there would be no need for claims. SRI Int’l v. Matsushita
Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). The patentee is free to be his own
lexicographer, but any special definition given to a word must be clearly set forth in the
specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992).
Although the specification may indicate that certain embodiments are preferred, particular
embodiments appearing in the specification will not be read into the claims when the claim
language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc.,
34 F.3d 1048, 1054 (Fed. Cir. 1994).
This court’s claim construction decision must be informed by the Federal Circuit’s
decision in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips,
the court set forth several guideposts that courts should follow when construing claims. In
particular, the court reiterated that “the claims of a patent define the invention to which the
patentee is entitled the right to exclude.”
415 F.3d at 1312 (emphasis added) (quoting
Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1115 (Fed. Cir.
2004)). To that end, the words used in a claim are generally given their ordinary and customary
meaning. Id. The ordinary and customary meaning of a claim term “is the meaning that the term
would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as
of the effective filing date of the patent application.” Id. at 1313. This principle of patent law
flows naturally from the recognition that inventors are usually persons who are skilled in the
field of the invention and that patents are addressed to and intended to be read by others skilled
in the particular art. Id.
4
The primacy of claim terms notwithstanding, Phillips made clear that “the person of
ordinary skill in the art is deemed to read the claim term not only in the context of the particular
claim in which the disputed term appears, but in the context of the entire patent, including the
specification.” Id. Although the claims themselves may provide guidance as to the meaning of
particular terms, those terms are part of “a fully integrated written instrument.” Id. at 1315
(quoting Markman, 52 F.3d at 978). Thus, the Phillips court emphasized the specification as
being the primary basis for construing the claims. Id. at 1314-17. As the Supreme Court stated
long ago, “in case of doubt or ambiguity it is proper in all cases to refer back to the descriptive
portions of the specification to aid in solving the doubt or in ascertaining the true intent and
meaning of the language employed in the claims.” Bates v. Coe, 98 U.S. 31, 38 (1878). In
addressing the role of the specification, the Phillips court quoted with approval its earlier
observations from Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir.
1998):
Ultimately, the interpretation to be given a term can only be determined and
confirmed with a full understanding of what the inventors actually invented and
intended to envelop with the claim. The construction that stays true to the claim
language and most naturally aligns with the patent’s description of the invention
will be, in the end, the correct construction.
Phillips, 415 F.3d at 1316. Consequently, Phillips emphasized the important role the
specification plays in the claim construction process.
The prosecution history also continues to play an important role in claim interpretation.
Like the specification, the prosecution history helps to demonstrate how the inventor and the
PTO understood the patent. Id. at 1317. Because the file history, however, “represents an
ongoing negotiation between the PTO and the applicant,” it may lack the clarity of the
specification and thus be less useful in claim construction proceedings. Id. Nevertheless, the
5
prosecution history is intrinsic evidence that is relevant to the determination of how the inventor
understood the invention and whether the inventor limited the invention during prosecution by
narrowing the scope of the claims. Id.
Phillips rejected any claim construction approach that sacrificed the intrinsic record in
favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc court
condemned the suggestion made by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193
(Fed. Cir. 2002), that a court should discern the ordinary meaning of the claim terms (through
dictionaries or otherwise) before resorting to the specification for certain limited purposes.
Phillips, 415 F.3d at 1319-24. The approach suggested by Texas Digital—the assignment of a
limited role to the specification—was rejected as inconsistent with decisions holding the
specification to be the best guide to the meaning of a disputed term. Id. at 1320-21. According
to Phillips, reliance on dictionary definitions at the expense of the specification had the effect of
“focus[ing] the inquiry on the abstract meaning of words rather than on the meaning of claim
terms within the context of the patent.” Id. at 1321. Phillips emphasized that the patent system
is based on the proposition that the claims cover only the invented subject matter. Id. What is
described in the claims flows from the statutory requirement imposed on the patentee to describe
and particularly claim what he or she has invented. Id. The definitions found in dictionaries,
however, often flow from the editors’ objective of assembling all of the possible definitions for a
word. Id. at 1321-22.
Phillips does not preclude all uses of dictionaries in claim construction proceedings.
Instead, the court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the
court emphasized that claim construction issues are not resolved by any magic formula. The
court did not impose any particular sequence of steps for a court to follow when it considers
6
disputed claim language. Id. at 1323-25. Rather, Phillips held that a court must attach the
appropriate weight to the intrinsic sources offered in support of a proposed claim construction,
bearing in mind the general rule that the claims measure the scope of the patent grant.
At issue in this case is whether certain claims of the ’215 Patent are indefinite. A claim is
invalid for indefiniteness if it fails to particularly point out and distinctly claim the subject matter
that the applicant regards as the invention. 35 U.S.C. § 112, ¶ 2. To prevail on an indefiniteness
argument, the party seeking to invalidate a claim must prove “by clear and convincing evidence
that a skilled artisan could not discern the boundaries of the claim based on the claim language,
the specification, and the prosecution history, as well as her knowledge of the relevant art area.”
Halliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244, 1249-50 (Fed. Cir. 2008). The
primary purpose of the definiteness requirement is to ensure public notice of the scope of the
patentee’s legal right to exclude, such that interested members of the public can determine
whether or not they infringe. Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347
(Fed. Cir. 2005); Halliburton, 514 F.3d at 1249; Honeywell Int’l Inc. v. Int’l Trade Comm’n, 341
F.3d 1332, 1338 (Fed. Cir. 2003). Courts apply the general principles of claim construction in
their efforts to construe allegedly indefinite claim terms. Datamize, 417 F.3d at 1348; Young v.
Lumenis, Inc., 492 F.3d 1336, 1346 (Fed. Cir. 2007). A claim is indefinite only when a person of
ordinary skill in the art is unable to understand the bounds of the claim when read in light of the
specification. Miles Labs., Inc. v. Shandon, Inc., 997 F.2d 870, 875 (Fed. Cir. 1993); Star
Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1371 (Fed. Cir. 2008).
A
determination of claim indefiniteness is a conclusion of law. Exxon Research & Eng’g Co. v.
United States, 265 F.3d 1371, 1375-76 (Fed. Cir. 2001); Datamize, 417 F.3d at 1347.
A claim is indefinite only if the claim is “insolubly ambiguous” or “not amenable to
7
construction.” Exxon, 265 F.3d at 1375; Young, 492 F.3d at 1346; Halliburton, 514 F.3d at
1249; Honeywell, 341 F.3d at 1338-39. A court may find a claim indefinite “only if reasonable
efforts at claim construction prove futile.” Datamize, 417 F.3d at 1347. A claim term is not
indefinite solely because the term presents a difficult claim construction issue. Id.; Exxon, 265
F.3d at 1375; Honeywell, 341 F.3d at 1338. “If the meaning of the claim is discernable, even
though the task may be formidable and the conclusion may be one over which reasonable
persons will disagree, . . . the claim [is] sufficiently clear to avoid invalidity on indefiniteness
grounds.” Exxon, 265 F.3d at 1375; Halliburton, 514 F.3d at 1249.
IV.
CLAIM TERMS IN DISPUTE
a. “said housing defines an obtuse angle between the top of said upper housing
portion and the bottom of said lower housing portion” [Claim 1] / “said
housing defines an obtuse angled portion between said upper and lower
portions” [Claim 12]
Representative Claim Language
said housing defines an obtuse angle
between the top of said upper housing
portion and the bottom of said lower
housing portion such that the bottom of
said housing is positioned substantially
away from both the plane defined by said
resting surface and the user's face during
use, whereby the position of said
transmitting antenna is angled away from
the user’s head and face during use.
Plaintiff’s Proposed
Construction
said housing, by virtue of
its geometry, provides an
angle between 90 and 180
degrees between the top of
said upper housing portion
and the bottom of said
lower housing portion
Defendants’ Proposed
Construction
said housing is not
substantially in line, and
the longitudinal surfaces
on the back of the upper
and
lower
housing
portions when in use
define two planes which
intersect at an angle
between 90 and 180
degrees
The parties agree that these phrases in Claims 1 and 12 should be given the same
construction. The parties’ main dispute centers on the two following issues: (1) whether the
patentees disclaimed phone housings that were substantially in line; and (2) whether the claimed
obtuse angle must be defined by the back of the phone.
8
With
W regard to the first i
t
issue, Defen
ndants argue that during the prosecu
e
g
ution of the ’215
Patent, th patentees disclaimed all “substan
he
s
ntially in-lin embodim
ne”
ments, includ
ding Figures 3, 5,
6A, 8, a
and 10.
Al
lthough Plai
intiffs agree that the p
e
patentees did disclaim Figure 3 d
during
prosecuti
ion, they arg that the scope of th disclaimer is not broa enough t encompas the
gue
he
ad
to
ss
other em
mbodiments. Specifically, Plaintiffs argue that the disclaim was limi
mer
ited to phon in
nes
which the speaker ea
arpiece, the u
upper housin portion, a the lowe housing p
ng
and
er
portion are o the
on
same pla as disclosed in Figure 3 depicted below:
ane
d
’512 Pate at Figure 3. Plaintif argues, ho
ent
e
ff
owever, that embodimen in which the earpiece and
nts
e
the housi portions are not dep
ing
picted as bein on the sa
ng
ame plane, su as those depicted be
uch
e
elow,
were not disclaimed:
’512 Pate at Figure 8 and 10.
ent
es
As
A originally filed, Claim 1 of the ’5 Patent listed the kno
m
512
own compon
nents of a cellular
phone an then recite
nd
ed:
h) wherein, said tran
)
nsmitting a
antenna for transmitt
r
ting electro
omagnetic
si
ignals…mou
unted in said lower housing portion;
d
9
j) wherein, during use, the commu
)
d
unication de
evice positio said tra
ons
ansmitting
an
ntenna away from the u
y
user’s ear be
ecause of th distance b
he
between said speaker
d
ea
arpiece and said transmi
itting antenn
na.
Ex. 2 at D
DUW0000109, attached to Defenda
d
ants’ Respon
nsive Claim Construction Brief, Dkt No.
n
t.
162. The application went on to disclose em
n
o
mbodiments falling into two catego
s,
o
ories: (1) de
evices
ubstantially in-line housi configuration; and (2 devices w a backw
i
ing
2)
with
ward-angled l
lower
with a su
housing p
portion.
After explain
A
ning that Fi
igures 1, 2A and 2B showed pri
A,
ior-art cellu
ular phones with
antennas at the top, the ’215 Pat
t
tent describe a first emb
es
bodiment in Figure 3 wh
here “the bo of
ody
munication device is stra
d
aight and the antenna 66 is substant
e
6
tially in-line with the bo of
e
ody
the comm
the devic
ce.” ’215 Pa
atent at 6:1- (emphasis added). F
-4
s
Figure 5, sho
own below, is described as a
d
“perspect view of the commun
tive
f
nication dev 60 seen used in FIG. 3:”
vice
Id. at 6:2
29–30; id. at Figure 5. The ’512 Patent states: “[a]s seen in FIG. 5, even a str
a
n
,
raight
housing d
design, with the antenna on the botto significa
h
a
om
antly reduces
s…radiation
n….” Id. at 7
7:32–
34 (emph
hasis added) The same housing co
).
e
onfiguration is shown in Figures 8 a 10. See, e.g.,
and
,
id. at 9:1–3 (“FIG. 10 shows ano
0
other alternat phone 120. This de
tive
esign shows a pivotal ant
tenna
122 mou
unted on the same communication de
evice housing as seen in FIG. 5.”) (e
n
emphasis ad
dded).
The last of the in-li embodim
ine
ments is sho
own in Figu 6A whic is depict below a is
ure
ch
ted
and
described as having multiple ben “even tho
d
m
nds
ough the bot
ttom of the h
housing may still be in-li
ine”:
10
Id. at 7:19–23 (emph
hasis added); id. at Figure 6A.
;
Considering the specification’s desc
C
cription of t disclosed embodime
the
d
ents, the cou is
urt
unconvin
nced by Pla
aintiff’s argu
ument that “substantial in-line” as used in the ’215 P
lly
Patent
requires that the speaker earpiec the upper housing po
ce,
r
ortion, and t lower ho
the
ousing portio be
on
on the sa plane. As illustrated above, the specificatio describes the embodim
ame
A
d
on
ments depict in
ted
Figures 5 6A, 8, an 10 as “in
5,
nd
n-line,” yet none of tho figures d
ose
depicts the earpiece and the
housing portions on the same plane.
n
As such, the court agree with Def
s
es
fendants tha the
at
embodim
ments depicted in Figure 3, 5, 6A, 8, and 10 depict wha the patent
es
at
tees describe as
ed
“straight” or “substa
”
antially in-line” embodiments. See id. at 10:56–57 (“Phon 150 may also
e
ne
y
have a stable position in a substa
n
antially in-lin (straight c
ne
configuration
n)…”).
agrees with D
Defendants that, as orig
ginally filed Claim 2 o the
d,
of
Furthermore, the court a
on
cted
or
ally
nts:
applicatio was direc to these “straight” o “substantia in-line” embodimen
2. The wireless communi
ication devic in claim 1, wherein;
ce
a) sai resting s
id
surface, sai upper ho
id
ousing porti
ion, and sa lower
aid
housin portions are substan
ng
ntially in-lin with each other, whe
ne
h
ereby said
transm
mitting anten is oriente substantially below th earpiece and away
nna
ed
he
from the user’s br during u
t
rain
use.
Ex. 2 at D
DUW0000109, attached to Defenda
d
ants’ Respon
nsive Claim Construction Brief, Dkt No.
n
t.
162.
On
O Septembe 16, 2003 the exam
er
3,
miner rejecte originally filed Clai
ed
y
ims 1 and 2 as
anticipate by U.S. Patent Ap
ed
pplication 09
9/095,487 (
(July 13, 20
001) (“Song
g”).
11
See i at
id.
DUW000026–31, DUW000029. Song disclosed a wireless phone with an antenna that hinged
out from the bottom of the phone, with embodiments that included a straight housing and a lower
portion angled toward the user, as shown below:
Id. at Ex. 3. The examiner explained that “Song teaches that the resting surface, the upper
housing portion, and the lower housing portions are substantially in-line with each other” and,
therefore, rejected originally filed Claim 2. Id. at Ex. 2 DUW000029 (emphasis added). After
rejecting proposed Claims 1 and 2, the examiner found Claim 3 allowable because Song did not
teach:
that the housing defines an obtuse angle between the top of the upper housing
portion and the bottom of the lower housing portion such that the bottom of the
housing as a whole is angled substantially away from both the plane defined by
the resting surface and the user’s face....
Id. at Ex. 2 at DUW000030 (emphasis added).
In response, the patentees agreed that Claims 1 and 2 were anticipated, stating that they
acknowledged the rejection of independent Claim 1 and dependent Claim 2 and agreed with the
examiner that the claims were anticipated by Song. Id. at DUW000024.
The patentees,
therefore, cancelled Claim 2 and rewrote Claim 1 to include the limitations of Claim 3, which
disclosed limitations requiring a backward-angled lower housing portion. Id. Considering this,
the court finds that the patentees disclaimed all embodiments employing the “substantially in-
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line” or “straight” configuration, which includes the embodiments disclosed in Figures 3, 5, 6A,
8, and 10.
Applying this disclaimer to the parties’ proposed constructions of “said housing defines
an obtuse angle between the top of said upper housing portion and the bottom of said lower
housing portion,” the court agrees with Defendants that Plaintiff’s proposed construction would
capture the “substantially in-line” embodiments disclaimed during prosecution.
The court,
therefore, rejects Plaintiff’s proposed construction. Defendants’ proposed “not substantially inline” limitation, however, accurately captures the patentees’ disclaimer of “substantially in-line”
or “straight” embodiments.
Furthermore, the court concludes that Defendants’ proposed limitation requiring that “the
longitudinal surfaces on the back of the upper and lower housing portions when in use define
two planes which intersect at an angle between 90 and 180 degrees” accurately reflects that
claim language in view of the use of the words “housing defines,” together with the specification
and the file history. Claims 1 and 12 recite that the “housing defines an obtuse angle.” Here,
the use of the word “defines” means the angle physically created by the housing – not, as
Plaintiff proposes, any manufactured angle that can be drawn between any two points on or
through the housing. See C.R. Bard, Inc. v Medtronic, Inc., 2000 U.S. App. LEXIS 15316 at *8–
9 (Fed. Cir. 2000) (nonprecedential). This conclusion is further supported by the fact that when
the term “obtuse angle” appears in the specification, it refers to element 74 in Figures 6 and 7B
or to element 169 in Figures 12A and 12B. ’215 Patent at 7:4–7 (element 74, Fig. 6); id. at 7:67–
8:2 (element 74, Fig. 7B); id. at 10:2–5 (element 169, Figs. 12A & 12B); id. at 10:60–62
(element 169, Figs. 12A & 12B). These “obtuse angle” elements, 74 and 169, depict the
intersection of two lines parallel to the back surfaces of the upper and lower portions of the
13
phone. Moreover, as explained above, the court has concluded that the claims of the ’215 Patent
are limited to wireless devices in which the lower portion of the housing is not substantially inline with, but rather is angled away from, the user’s head and face. Angling the housing away
from the user’s face requires an obtuse angle at the back of the phone.
In conclusion, the court adopts Defendants’ proposed construction of “said housing
defines an obtuse angle between the top of said upper housing portion and the bottom of said
lower housing portion” because it accurately reflects the prosecution history disclaimer of
“substantially in-line” devices and stays true to the claimed requirement that the “housing
define” an obtuse angle. Accordingly, the court construes this phrase to mean “said housing is
not substantially in-line, and the longitudinal surfaces on the back of the upper and lower
housing portions when in use define two planes which intersect at an angle between 90 and 180
degrees.”1
b. “said obtuse angle is defined by a slowly curving section of the housing
between the upper and lower portion of the housing” [Claim 5]
Representative Claim Language
5. The wireless communication
device in claim 1, wherein; said
obtuse angle is defined by a
slowly curving section of the
housing between the upper and
lower portion of the housing.
Plaintiff’s Proposed
Defendants’ Proposed
Construction
Construction
said obtuse angle is provided by indefinite
gentle arcing bends of the
housing between the upper and
lower portion of the housing
Plaintiff concedes that the “said obtuse angle” reference in Claim 5 refers to the obtuse
angle formed by the housing in Claim 1. Furthermore, during the claim construction hearing,
1
The court has construed this term in accordance with the parties’ claim construction arguments
and proposed constructions. The court, however, notes that in applying this construction one
must consider that a person of ordinary skill in the art would understand that the construction
refers to a three dimensional phone, rather than a geometric figure. Any infringement
determination would take this into account.
14
Plaintiff also conceded that if the court agrees with Defendants that the obtuse angle must be
defined by the planes of the upper and lower housing portions, then this term is indefinite.
Considering that, as explained above, the court agrees with Defendants on this point, the court
also agrees with Defendants that Claim 5 is indefinite.
c. “whereby the position of said transmitting antenna is angled away from the
user’s head and face during use” [Claim 1]
The parties have agreed that this term means “whereby said angle defined by the housing
causes the position of the transmitting antenna to be angled away from the user’s head and face
during use.”
d. “lower portion of said housing is angled substantially further away from the
user’s face than if the housing were substantially straight” [Claim 12]
The parties have agreed that this term means “said obtuse angled portion causes the lower
portion of the housing to be angled substantially further away from the user’s face during use
than if the housing were substantially straight.”
e. “said housing comprising an upper housing portion on top and a lower
housing portion on the bottom” [Claim 1]
Representative Claim Language
wherein,
said
housing
comprising an upper housing
portion on top and a lower
housing portion on the bottom;
Plaintiff’s Proposed
Defendants’ Proposed
Construction
Construction
the housing contains an upper a housing comprising two
portion that is above the lower distinguishable portions, the
upper portion being located
portion
above the lower portion
along the length of the phone
Prior to the claim construction hearing, the parties agreed that the correct construction of
this term should include a limitation requiring that the “housing comprise two distinguishable
portions.” The parties, however, continue to dispute whether, as Defendants propose, the upper
housing portion must be located above the lower housing portion “along the length of the
15
phone.” Defendants’ proposed construction would require a vertical spatial relationship in which
the upper housing portion of the phone is located above the lower housing portion of the phone.
Defendants argue that their proposed construction is necessary because all of the disclosed
embodiments depict such a relationship. Nothing in either the plain language of the claims or the
specification, however, requires that the upper housing portion be located above the lower
housing portion along the length of the phone.
As such, the court rejects this proposed
limitation.
In conclusion, the court concludes that “wherein, said housing comprising an upper
housing portion on top and a lower housing portion on the bottom” means “a housing comprising
two distinguishable portions, the upper portion being located above the lower portion.”
f. “said speaker earpiece is mounted in said upper housing portion and defines
a resting surface for resting against a user’s ear” [Claim 1]
Representative Claim Language
wherein, said speaker earpiece is
mounted in said upper housing
portion and defines a resting
surface for resting against a
user’s ear to communicate
sound to the user’s ear;
Plaintiff’s Proposed
Construction
the speaker earpiece provides a
surface by which the user can
rest his or her ear
Defendants’ Proposed
Construction
said speaker earpiece is
mounted in said upper
housing and a resting surface
for resting against a user’s
ear is defined by the front
face of said upper housing
Claim 1 of the ’215 Patent recites: “wherein, said speaker earpiece is mounted in said
upper housing portion and defines a resting surface for resting against a user’s ear to
communicate sound to the user’s ear.” The primary dispute with respect to this term is whether
the speaker earpiece defines the “resting surface,” as Plaintiff proposes, or whether the “resting
surface” is defined by the front face of the phone, as Defendants suggest. The plain language of
this element recites that the speaker earpiece must be: (1) located in the upper housing portion;
and (2) define a resting surface for resting against a user’s ear to communicate sound to the
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user’s ear. Defendants argue that despite the plain language of the claim, it is the front face of
the upper housing that defines the resting surface for the user’s ear. Defendants’ argument relies
on its contention that the correct construction of “resting surface” must take into account how a
user normally holds a phone.
Defendants’ argument that the “resting surface” must be defined by the front face of the
upper housing portion is unconvincing in light of the plain language of the claim and the
specification. The specification explicitly discloses the speaker earpiece, as opposed to the front
face of the upper housing portion, as being placed flat against the user’s ear – e.g., “[t]his allows
speaker output 86 to be placed flat against the user’s ear, while the majority of housing 88
angles away from the user’s face.” ’215 Patent at 8:2-4; see also id. at 7:59-61. As such, the
court rejects Defendants’ proposed construction.
Although the Plaintiff’s proposed construction accurately captures the fact that it is the
speaker earpiece that provides the resting surface, it does not explicitly require that the earpiece
be mounted in the upper housing portion.
The court, therefore, adopts the following
construction, which explicitly reflects that the earpiece must be mounted in the upper housing:
“wherein, said speaker earpiece is mounted in said upper housing portion and defines a resting
surface for resting against a user’s ear to communicate sound to the user’s ear” means “said
speaker earpiece is mounted in said upper housing portion and provides a surface for resting
against a user’s ear.”
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g. “during use, the communication device positions said transmitting antenna
away from the user’s ear because of the distance between said speaker
earpiece and said transmitting antenna” [Claim 1]
Representative Claim Language
wherein,
during
use,
the
communication device positions
said transmitting antenna away
from the user’s ear because of
the distance between said
speaker earpiece and said
transmitting antenna,
Plaintiff’s Proposed
Construction
during
use,
the
communication
device
positions said transmitting
antenna away from the
user’s ear because of the
distance
between
said
speaker earpiece in the
upper portion and said
transmitting antenna in the
bottom of the lower portion
Defendants’ Proposed
Construction
during use, the communication
device
positions
said
transmitting antenna away from
the user’s ear because of the
distance between said speaker
earpiece in the upper portion and
said transmitting antenna in the
lower portion
The sole difference between Plaintiff’s and Defendants’ proposed construction is that
Plaintiff argues that the transmitting antenna must be placed in the bottom of the lower housing
portion. Plaintiff’s proposed limitation, however, is unwarranted given that the specification
explicitly discloses that the antenna can be placed at other locations on the lower housing. ’215
Patent at 9:56–58 (“In alternative embodiments, the antenna can be placed elsewhere on lower
housing 164 and may include a pivoting antenna like antenna 102 seen in FIG. 8.”).
Furthermore, Plaintiff’s proposed construction ignores the fact that the specification teaches that
“there are many ways to attach an antenna to the communications device housing, and the exact
attachment position is non-critical…as long as the antenna is sufficiently far away from the
earpiece on the device.” Id. at 11:22–25. Considering this, the court rejects Plaintiff’s proposed
“in the bottom” limitation.
Defendants’ proposed construction accurately captures the language of the claims and the
teachings of the specification. As such, the court construes this term to mean “during use, the
communication device positions said transmitting antenna away from the user’s ear because of
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the distance between said speaker earpiece in the upper portion and said transmitting antenna in
the lower portion.”
h. “whereby the electromagnetic radiation intensity experienced by the user is
reduced by keeping the antenna away from the user’s face” [Claim 12]
Representative Claim Language
said housing defines an obtuse
angled portion between said upper
and lower portions so that when
said earpiece is placed flat against
said user’s ear the lower portion
of said housing is angled
substantially further away from
the user’s face than if the housing
were
substantially
straight,
whereby the electromagnetic
radiation intensity experienced
by the user is reduced by
keeping the antenna away from
the user’s face.
Plaintiff’s Proposed
Construction
whereby the electromagnetic
radiation intensity experienced
by the user is lower than if the
antenna was closer to the user’s
face
Defendants’ Proposed
Construction
said angle in the housing
keeps the antenna away from
the user’s face, thereby
causing the electromagnetic
radiation
intensity
experienced by the user to be
reduced
The parties’ argument with regard to this claim term is whether it is solely the angle in
the housing that causes the electromagnetic radiation intensity to be reduced.
Plaintiff argues
that it is a combination of the obtuse angle and the fact that the antenna must be in the bottom
housing portion that causes the radiation reduction. The language of Claim 12, however, recites
that:
f) said housing defines an obtuse angled portion between said upper and
lower portions so that when said earpiece is placed flat against said user’s ear
the lower portion of said housing is angled substantially further away from
the user’s face than if the housing were substantially straight, whereby the
electromagnetic radiation intensity experienced by the user is reduced by
keeping the antenna away from the user’s face.
’512 Patent at 13:35–14:2 (emphasis added). The highlighted language above explains that the
obtuse angle allows the housing to be angled further away from the user’s face than if the
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housing were substantially straight. Then, the claim states “whereby” the radiation intensity is
reduced “by keeping the antenna away from the user’s face.”
The use of the transition
“whereby” explains that the radiation reduction, at least in this claim, is due to the angling away
of the housing from the user’s face. As such, the court agrees with Defendants that according to
the plain language of Claim 12, it is the obtuse angle that causes the electromagnetic radiation
intensity experienced by the user to be reduced. Accordingly, the court constructs this term to
mean “said angle in the housing keeps the antenna away from the user’s face, thereby causing
the electromagnetic radiation intensity experienced by the user to be reduced.”
V.
CONCLUSION
The court adopts the constructions set forth in this opinion for the disputed terms of the
’512 Patent. The parties are ordered that they may not refer, directly or indirectly, to each
other’s claim construction positions in the presence of the jury. Likewise, the parties are ordered
to refrain from mentioning any portion of this opinion, other than the actual definitions adopted
by the court, in the presence of the jury. Any reference to claim construction proceedings is
limited to informing the jury of the definitions adopted by the court.
It is so ORDERED.
SIGNED this 12th day of May, 2011.
___________________________________
CHARLES EVERINGHAM IV
UNITED STATES MAGISTRATE JUDGE
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