Lochner Technologies, LLC v. Lenovo (United States) Inc. et al

Filing 174

MEMORANDUM OPINION AND ORDER. Signed by Judge Rodney Gilstrap on 01/21/2015. (nkl, )

THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
LOCHNER TECHNOLOGIES, LLC,
Plaintiff,
v.
LENOVO (UNITED STATES) INC., et al.,
Defendants.

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CASE NO. 2:10-CV-430-JRG

MEMORANDUM OPINION AND ORDER
Before the Court are Plaintiff Lochner Technologies, LLC’s Opening Claim Construction
Brief (Dkt. No. 163), Defendant Synnex Corporation’s response (Dkt. No. 166), and Plaintiff’s
reply (Dkt. No. 168).
The Court held a claim construction hearing on January 6, 2015.

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Table of Contents
I. BACKGROUND ....................................................................................................................... 3 
II. LEGAL PRINCIPLES ........................................................................................................... 3 
III. CONSTRUCTION OF AGREED TERMS ........................................................................ 8 
IV. CONSTRUCTION OF DISPUTED TERMS ..................................................................... 9 
A. “base storage and control system” ........................................................................................ 9 
B. “input-output system” ......................................................................................................... 16 
C. “portable” ............................................................................................................................ 21 
D. “a display element producing an output signal based on the input signal and execution
of the application program, [said output signal being produced in bursts, with delays
between the bursts, during which delays, no information is transmitted]”......................... 25 
E. “an arrangement for providing a continuously-displayed full screen display [that differs
from a previously-received full screen display], using the display output signal
received in bursts to generate a portion of the full screen display corresponding to the
display output signal” ......................................................................................................... 32 
F. “an arrangement for demodulating a communicated signal” and “an arrangement for
modulating at least one of the input signal and the output display signal” ........................ 36 
V. CONCLUSION...................................................................................................................... 38 

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I. BACKGROUND
Plaintiff brings suit alleging infringement of United States Patent No. 7,035,598
(“the ‘598 Patent”) (Dkt. No. 163, Ex. A), titled “Modular Computer System.” The ‘598 Patent
issued on April 25, 2006, and bears a priority date of January 18, 1991. Plaintiff asserts Claims
1-8, 10, and 12 of the ‘598 Patent. (Dkt. No. 166, at 1.) The Abstract states:
A computer system composed of a storage and control unit including components
for receiving and processing input data signals and components for producing
output signals based on the input data signals; an input/output unit including
components for generating input signals and output components for providing a
display based on output signals; and a wireless link between the units for
conducting data signals from the components for generating input signals to the
components for receiving and processing input signals and for conducting output
signals from the components for producing output signals to the output
components.
The Court construed various terms in the ‘598 Patent in Lochner Technologies, LLC v.
Hewlett-Packard Company, et al., No. 2:09-CV-177, Dkt. No. 112, 2010 WL 4179200 (E.D.
Tex. Oct. 20, 2010) (Everingham, J.) (“HP”), which is attached to Plaintiff’s opening brief as
Exhibit B.1 The HP case ended with settlements within five months after entry of the Court’s
claim construction order and prior to any trial.
The ‘598 Patent is also the subject of ongoing litigation in the Central District of
California, including a decision by the Court of Appeals for the Federal Circuit. Lochner v. Vizio,
Inc., No. 2013-1551, 567 F. App’x 931 (Fed. Cir. June 27, 2014) (“Vizio”).

II. LEGAL PRINCIPLES
It is understood that “[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.

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Citations to page numbers in HP are to the page numbering of the slip opinion.
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Cir. 1999). Claim construction is clearly 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, courts look 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
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 analysis is substantially guided 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

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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 (quoting Innova/Pure Water, Inc. v.
Safari Water Filtration Sys., 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.
Despite the importance of claim terms, 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
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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
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.; see Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d
1340, 1350 (Fed. Cir. 2004) (noting that “a patentee’s statements during prosecution, whether
relied on by the examiner or not, are relevant to claim interpretation”).
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. 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.

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Phillips emphasized that the patent system is based on the proposition that the claims cover only
the invented subject matter. Id.
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
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.
The Supreme Court of the United States has recently “read [35 U.S.C.] § 112, ¶ 2 to
require that a patent’s claims, viewed in light of the specification and prosecution history, inform
those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc.
v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). “A determination of claim
indefiniteness is a legal conclusion that is drawn from the court’s performance of its duty as the
construer of patent claims.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347
(Fed. Cir. 2005) (citations and internal quotation marks omitted), abrogated on other grounds by
Nautilus, 134 S. Ct. 2120.
In general, prior claim construction proceedings involving the same patents-in-suit are
“entitled to reasoned deference under the broad principals of stare decisis and the goals
articulated by the Supreme Court in Markman, even though stare decisis may not be applicable
per se.” Maurice Mitchell Innovations, LP v. Intel Corp., No. 2:04-CV-450, 2006 WL 1751779,
at *4 (E.D. Tex. June 21, 2006) (Davis, J.); accord TQP Development, LLC v. Inuit Inc.,
No. 2:12-CV-180, 2014 WL 2810016, at *6 (E.D. Tex. June 20, 2014) (Bryson, J.) (“[P]revious

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claim constructions in cases involving the same patent are entitled to substantial weight, and the
Court has determined that it will not depart from those constructions absent a strong reason for
doing so.”).
The Court nonetheless conducts an independent evaluation during claim construction
proceedings. See, e.g., Texas Instruments, Inc. v. Linear Techs. Corp., 182 F. Supp. 2d 580,
589-90 (E.D. Tex. 2002); Burns, Morris & Stewart Ltd. P’ship v. Masonite Int’l Corp., 401 F.
Supp. 2d 692, 697 (E.D. Tex. 2005); Negotiated Data Solutions, Inc. v. Apple, Inc., No. 2:11CV-390, 2012 WL 6494240, at *5 (E.D. Tex. Dec. 13, 2012).
III. CONSTRUCTION OF AGREED TERMS
The Court hereby adopts the following agreed constructions:
Term
“in bursts”

Agreed Construction
“in non-continuous transmissions”

(Claims 1 & 12)
“asynchronous signal”

“a signal sent at irregular intervals rather than at
clocked times”

(Claim 7)

(Dkt. No. 160, 11/3/2014 Joint Claim Construction and Prehearing Statement Pursuant to Patent
Local Rule 4-3 at Ex. A.)

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IV. CONSTRUCTION OF DISPUTED TERMS
A. “base storage and control system”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

No construction necessary.

“a unit containing all of the components of a
conventional CPU, including a microprocessor,
memory, input/output interfaces and a variety
of disc drives, that either contains a transceiver
or is coupled to a transceiver by an input cable
and an output cable”

If construed, “base storage and control system”
should be construed as it is defined in the
claims in which it appears[, as:]
. . . (1) a processor, (2) a non-volatile memory,
(3) a display element producing an output
signal based on the input signal and execution
of the application program, and (4) a wireless
transceiver.

(Dkt. No. 163, at 8; Dkt. No. 166, at 6.) This disputed term appears in Claims 1 and 12. HP did
not address this term but did address the related, below-discussed term “input-output system.”
The Court in HP construed “input-output system” to mean “a system having the limitations
called out in the remainder of the claim.” HP at 13 & 17.
(1) The Parties’ Positions
Plaintiff argues that this disputed term is “merely the descriptive name[] used in the
asserted claims to refer to the collection of limitations set forth in the body of the claim.” (Dkt.
No. 163, at 9.) Plaintiff further argues that “nothing in the intrinsic evidence indicates a clear
disavowal by the inventors of base storage and control units that include additional components,
or that exclude some of these components that are not recited in the claim language itself.” (Id.,
at 10.)
Defendant responds that “the specification explains that the base storage and control
system contains all the components of a conventional computer,” and “in the only embodiments
described in the specification, the base storage and control system either includes a transceiver,
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or is coupled to a transceiver by an input cable and an output cable.” (Dkt. No. 166, at 7 & 8.)
Defendant argues that the Court should depart from HP because a case that HP cited, IMS
Technology, Inc. v. Haas Automation, Inc., involved a term that appeared in a preamble rather
than in the body of a claim. (Id., at 9 (citing 206 F.3d 1422 (Fed. Cir. 2000).)
Plaintiff replies: “[Defendant] proposes that a ‘base[] storage and control system’ by
itself includes a microprocessor, memory, and a transceiver. But each of these features is
separately recited in the remainder of the claim language.” (Dkt. No. 168, at 1.) Plaintiff also
emphasizes that disclosures regarding “unit 4,” which Defendant has cited, refer to what unit 4
“can be,” not “must be.” (Id. at 2-3.)
(2) Analysis
Claims 1 and 12 recite (emphasis added):
1. A wireless computer system comprising:
a base storage and control system including:
a processor, receiving and using an input signal in realtime, the input signal being for use in interacting with
an application program being executable at the base
storage and control system,
a non-volatile memory,
a display element producing an output signal based on the
input signal and execution of the application program,
said output signal being produced in bursts, with delays
between the bursts, during which delays, no
information is transmitted, and
a wireless transceiver that wirelessly communicate [sic] the
display output signal when produced;
at least one portable input-output system for use with the base storage and
control system, the portable input-output system including:
a wireless transceiver, which wirelessly communicates the
input signal to the base storage and control system and
wirelessly receives the display output signal from the
base storage and control system,
a user interface, allowing inputting an information item and
generating an input signal corresponding to the
information item the input signal being wirelessly
communicable in real-time to the base storage and
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control system to interact with the application program
being executable at the base storage and control system,
and
an arrangement for providing a continuously-displayed full
screen display using the display output signal received
in bursts to generate a portion of the full screen display
corresponding to the display output signal.
***
12. A wireless computer system comprising:
a base storage and control system including:
a processor, receiving and using an input signal in realtime, the input signal being for use in interacting with
an application program being executable at the base
storage and control system,
a non-volatile memory,
a display element producing an output signal based on the
input signal and execution of the application program,
said output signal being produced in bursts, with delays
between the bursts, during which delays, no
information is transmitted, and
a wireless transceiver that wirelessly communicate [sic] the
display output signal when produced in bursts;
at least one portable input-output system for use with the base storage and
control system, the portable input-output system including:
a wireless transceiver, which wirelessly communicates the
input signal to the base storage and control system and
wirelessly receives the display output signal from the
base storage and control system,
a user interface, allowing inputting an information item and
generating an input signal corresponding to the
information item, the input signal being wirelessly
communicable in real-time to the base storage and
control system to interact with the application program
being executable at the base storage and control system,
and
an arrangement for providing a continuously-displayed full
screen display that differs from a previously-received
full screen display, using the display output signal
received in bursts to generate a portion of the full
screen display corresponding to the display output
signal.

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The claims thus recite a “nested” structure in which the claim limitations are divided
between two distinct components, namely a “base storage and control system” on one hand and a
portable “input-output system” on the other.
The specification discloses various potential attributes of a base storage and control
system:
The storage and control unit can be constructed in a manner similar to
conventional basic computer systems or work stations, to include a CPU with
microprocessor, input/output interfaces, memories and disc drives. According to
the invention, such a unit will be supplemented by a wireless transceiver
constructed to exchange signals with the input/output unit.
’598 Patent at 2:22-28 (emphasis added).
[A] single storage and control unit could be shared by one or more users provided
with respective input/output units and a further user stationed at a keyboard and
monitor which are connected to the storage and control unit by the usual
connecting cables.
Id. at 2:50-54.
[Storage and control u]nit 4 can be quite comparable to a basic computer system,
which typically includes all necessary computer components except for display
and input devices. Unit 4, thus, contains a CPU with microprocessor, memory,
input/output interfaces and a variety of disc drives, including CD-ROMs. Unit 4
may be connected to any number of peripheral devices, including telephone
modems, printers and larger storage units. The number of peripheral devices
connected to unit 4 will not interfere 10 [sic] with the convenience offered by the
computer system according to the present invention since unit 4 is intended to
remain stationary.
Unit 4 does differ from conventional consoles in that it includes a transceiver 24
which, as will be explained in greater detail below, can communicate with
transceiver 14, for which purpose each transceiver is provided with an antenna 26,
28.
Id. at 3:31-47 (emphasis added).
According to another embodiment of the invention, illustrated in FIG. 3, the unit 4
for FIG. 1 is constructed in two parts, a unit 70 containing all of the components
of a conventional CPU, and a transceiver unit 72 containing all of the components

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of transceiver 24 of FIGS. 1 and 2, including antenna 28, and coupled to unit 70
by an input cable 74 and an output cable 76.
This arrangement offers the notable advantage that unit 70 can be constituted by a
conventional computer “box,” i.e. containing a CPU, disk drives, memory,
controllers and interfaces, but excluding a keyboard a [sic, and] monitor,
connected to transceiver 72 by cables 74 and 76. Thus, to utilize the present
invention, the owner of a computer would need to purchase only unit 2 of FIG. 1
and transceiver 72.
Id. at 5:7-20 (emphasis added).
These features, however, are disclosed in relation to specific embodiments and should not
be imported into the meaning of the disputed term. See Electro Med., 34 F.3d at 1054.
As to the prosecution history, in a letter to the patent examiner regarding parent
Application No. 08/332,499, the patentee stated:
Overall, my invention as embodied in my patent application consists of a simple
but powerful concept: cut the cord between the computer itself and its video
display and keyboard (and/or other input device) and get the same identical
functionality through wireless communications.
(Id., Ex. K, 6/11/1996 Letter, at 2 (emphasis omitted).) Because this related to a different
application with different claims, however, Defendant has failed to demonstrate that the
patentee’s characterization of “my invention” warrants any finding of disclaimer as to the
disputed term here at issue in the ‘598 Patent.
Likewise, in an appeal to the Federal Circuit during prosecution of parent Application
No. 08/332,499, the patentee stated that the “storage and control unit” is “basically a computer
without a keyboard or monitor - a CPU with a microprocessor, various interfaces, memories,
software programs, etc.” (Dkt. No. 166, Ex. J, 4/26/2002 Appeal Brief, at 4 (2002 WL
32620103, at *4) (emphasis added).) Because this related to a different application with different
claims (see 2002 WL 32620103, at *6-*7), and particularly in light of the patentee’s use of
“basically,” Defendant has failed to identify any definitive statement that would warrant finding
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a disclaimer. See Omega Eng’g v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003) (“As a
basic principle of claim interpretation, prosecution disclaimer promotes the public notice
function of the intrinsic evidence and protects the public’s reliance on definitive statements made
during prosecution.”) (emphasis added); id. at 1325-26 (“[F]or prosecution disclaimer to attach,
our precedent requires that the alleged disavowing actions or statements made during prosecution
be both clear and unmistakable.”) (emphasis added).
The Court thus reaches the same conclusion that HP reached as to the related term
“input-output system,” which is addressed below. The Court accordingly hereby expressly
rejects Defendant’s proposed construction.
Defendant argues that HP erred by relying upon IMS, which addressed a term that
appeared in a preamble rather than in the body of a claim. See 206 F.3d at 1434 (“The phrase
‘control apparatus’ in the preamble merely gives a descriptive name to the set of limitations in
the body of the claim that completely set forth the invention.”). Defendant’s argument is
unavailing because HP merely found IMS “instructive.” HP at 16. In other words, HP extended
the principle articulated in IMS to aid the Court in interpreting descriptive names given to sets of
limitations in the bodies of the claims.
Nonetheless, “claims are interpreted with an eye toward giving effect to all terms in the
claim.’” Digital-Vending Servs. Int’l, LLC v. Univ. of Phoenix, Inc., 672 F.3d 1270, 1275 (Fed.
Cir. 2012) (quoting Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006)).
Specifically, Defendant argues, if the disputed term were read as merely referring to other
limitations recited elsewhere in the claims, then the term “base storage and control unit” would
have no effect on the scope of the claims.

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On one hand, the conclusion reached in HP is consistent with the above-noted “nested”
format of the claims (quoted above), in which a group of limitations associated with a “base
storage and control unit” is distinct from a group of limitations associated with a portable “inputoutput system.” Also of note, some of the limitations associated with the “input-output system”
refer back to the “base storage and control unit.”
On the other hand, nothing about this nested structure of the claims is inconsistent with
reading the disputed term to have its plain meaning, which may include meaning beyond merely
what is recited in the other associated limitations. Indeed, the claims recite a base storage and
control unit “including” various limitations, not that the base storage and control unit is defined
by those separately-recited limitations. Further, whereas the claims require that the “input-output
system” must be “portable,” the claims do not require the “base storage and control system” to
be portable. This distinction demonstrates that the terms “base storage and control system” and
“portable input-output system” have meaning, and “portable” is a disputed term addressed
separately, below.
The Court accordingly hereby construes “base storage and control system” to have its
plain meaning.

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B. “input-output system”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

No construction necessary.

“a unit composed essentially of an input
device, an output device, and a transceiver,
If construed, “input-output system” should be
excluding such features of a full-service
construed as it is defined in the claims in which computer as non-volatile data storage and the
it appears.
ability to execute application programs”
Claim 1 defines an “input-output system” as
(1) a wireless transceiver, (2) a user interface,
and (3) an arrangement for providing a
continuously-displayed full screen display.
Claim 12 defines an “input-output system” as
(1) a wireless transceiver, (2) a user interface,
and (3) and [sic] an arrangement for providing
a continuously-displayed full screen display
that differs from a previously-received
full screen display.
(Dkt. No. 163, at 8-9; Dkt. No. 166, at 12.) This disputed term appears in Claims 1 and 12.
In HP, defendant Hewlett-Packard (“HP”) proposed: “A device dedicated to only I/O
functions (i.e., not for non-volatile data storage or execution of application programs)”; or “A
device having input-output functionality that does not perform non[-]volatile data storage or
execution of application programs.” HP at 13. The Court found that the patentee “has been
consistent throughout [the prosecution history] and has never expressly limited the ‘input-output
system’ as HP contends.” Id. at 16. The Court construed “input-output system” to mean “a
system having the limitations called out in the remainder of the claim.” Id. at 17.
(1) The Parties’ Positions
Plaintiff argues this term together with the term “base storage and control system,”
addressed above. (See Dkt. No. 163 at 8.) Plaintiff also argues that in HP, the Court rejected a
proposal similar to what Defendant is proposing here. (Id., at 9-10.)

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Defendant responds that the Federal Circuit found that “to overcome certain prior art, [the
patentee] expressly excluded features of a full-service computer, such as non-volatile data
storage and the ability to execute application programs.” (Dkt. No. 166, at 12 (quoting 567 F.
App’x at 934).) Defendant further argues that “the only solution that the ‘598 Patent proposes to
solve the portability problem is to limit the number of components in the input-output system.”
(Dkt. No. 166, at 13.) Defendant submits that the prosecution history of the patent-in-suit (and
parent applications) is consistent with such a reading. (See id., at 13-14.) Defendant notes:
“Negative limitations are adequately supported when the specification describes a reason to
exclude the relevant limitation. Such written description support need not rise to the level of a
disclaimer.” Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012).
Plaintiff replies by reiterating: “‘Input-output system’ should be construed as a
descriptive name given to the components specifically recited in the language following that
introductory language for the same reasons given with regard to the term ‘base storage and
control system’ above, as the Court previously determined.” (Dkt. No. 168, at 6.) Plaintiff also
explains that “[w]hile certain embodiments and examples make clear that the components could
be limited, none of them require such limitations.” (Id.) Further, Plaintiff submits that “[t]he
Federal Circuit ruling in Vizio did not direct the district court to adopt a negative limitation. It
directed the district court to consider the specification and file history because it had not done
so.” (Id., at 6-7.) Finally, Plaintiff submits that Defendant has cited certain prosecution history
out of context, arguing that Defendant “relies exclusively on statements made about different
claims with different limitations.” (Id., at 7-8 (citing id., Ex. D (quoted below)).)

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(2) Analysis
Claims 1 and 12, in which the disputed term appears, are reproduced in the discussion of
the term “base storage and control system,” above.
The specification discloses:
Since one unit of the computer need only include an input device, typically a
keyboard, and an output device, typically a display, as well as a transceiver unit,
this unit can be relatively light in weight and hence portable.
***
The input/output unit differs from known devices in that, in its preferred form of
construction, it consists only of a keyboard and a display device, along with an
associated transceiver unit. The manner in which power is supplied to the
input/output unit will depend primarily on the nature of the display device.
‘598 Patent at 2:5-8 & 2:29-34 (emphasis added).
Unit 2 is composed essentially of three components, a keyboard 10, a
monochrome or color display device 12 and a wireless transceiver device 14.
***
Because of the limited number of components forming unit 2, this can be
conveniently constructed to have the general form of a briefcase, including a
carrying handle 18. Unit 2 can then be easily transported from one location to
another within the operating range of the wireless link associated with the
computer system.
Id. at 3:7-9 & 3:20-25.
During prosecution of a parent application, the patentee stated that the input-output
system is “a simple, lightweight, and inexpensive remote input/output unit essentially dedicated
to only I/O functions (i.e., not for non-volatile data storage or execution of application
programs).” (Id., Ex. M, 7/26/1993 Amendment After Final Rejection (Application No.
07/642,831), at 5 (emphasis in original).) Similarly, the patentee stated in another related
prosecution that “the remote unit does not need to be a stand-alone computer having

18

communications capabilities, but only a relatively ‘dumb’ terminal that relies upon the
computing power of the base station.” (Id., Ex. B, 3/25/1994 Amendment After Final
(Application No. 08/120,649), at 8.)
Also, in a letter to a patent examiner regarding parent Application No. 08/332,499, the
patentee stated:
Overall, my invention as embodied in my patent application consists of a simple
but powerful concept: cut the cord between the computer itself and its video
display and keyboard (and/or other input device) and get the same identical
functionality through wireless communications.
(Id., Ex. K, 6/11/1996 Letter, at 2 (emphasis omitted).)
In an appeal to the Federal Circuit during prosecution of parent Application
No. 08/332,499, the patentee stated:
The remote “input/output unit” is a portable monitor (graphics display) and
keyboard with no microprocessor of its own.
***
Because the input/output unit does not have its own microprocessor, memory,
drives, etc., it is light-weight and easily portable.
(Dkt. No. 166, Ex. J, 4/26/2002 Appeal Brief, at 4 & 5 (2002 WL 32620103, at *4 & *5).)
These parent applications, however, contained different claim language. For example,
Plaintiff has submitted that in Application No. 07/642,831, the claim at issue recited that
“substantially all non-volatile storage of data and substantially all execution of application
programs for processing input data signals is performed by the storage control unit, and wherein
the input/output unit is essentially capable of only input and display of data.” (Dkt. No. 168,
Ex. D, 7/26/1993 Amendment After Final Rejection, at 3.)2

2

The parties have not presented the applicable language of the claims of Application
No. 08/120,649 or Application No. 08/332,499. As to the latter, however, the April 26, 2002
19

The above-cited prosecution history of parent applications thus does not contain any
definitive statements applicable to the disputed term here at issue in the ‘598 Patent. See Omega
Eng’g, 334 F.3d at 1324 (“As a basic principle of claim interpretation, prosecution disclaimer
promotes the public notice function of the intrinsic evidence and protects the public’s reliance on
definitive statements made during prosecution.”) (emphasis added); id. at 1325-26 (“[F]or
prosecution disclaimer to attach, our precedent requires that the alleged disavowing actions or
statements made during prosecution be both clear and unmistakable.”) (emphasis added).
As to the Vizio decision, various courts have found that a construction by the Federal
Circuit is binding as to all future litigation even with different parties. See, e.g., Eolas Techs.,
Inc. v. Adobe Sys., Inc., No. 6:09-CV-446, 2011 WL 11070303 (E.D. Tex. Sept. 23, 2011)
(Davis, J.) (citing Amgen, Inc. v. Hoffmann-LaRoche Ltd., 494 F. Supp. 2d 54, 60-61 (D. Mass.
2007); Pass & Seymour, Inc. v. Hubbell Inc., No. 5:07-CV-945, 2011 WL 32433, at *2
(N.D.N.Y. Jan. 5, 2011) (“[D]istrict courts are bound to apply the Federal Circuit’s claim
constructions, even as against non-parties to the initial litigation.”); Rambus Inc. v. Hynix
Semiconductor, Inc., 569 F. Supp. 2d 946, 963 (N.D. Cal. 2008) (“A district court must apply the

Appeal Brief sets forth claim language. Although Defendant provided only excerpts of that brief
(see Dkt. No. 166, Ex. J), the complete brief sets forth the language of a “representative” claim.
See 2002 WL 32620103, at *6-*7. That claim recites, in relevant part:
wherein substantially all non-volatile storage of data and substantially all
execution of application programs for processing input data signals is performed
by the storage and control unit, wherein special adaptation of such application
programs is not required for interaction with each input/output unit, and wherein
the input/output unit is essentially capable of only data input and essentially full
screen display of data.
Id., at *7.

20

Federal Circuit’s claim construction even where a non-party to the initial litigation would like to
present new arguments.”)).
Here, however, the Federal Circuit’s comments in Vizio regarding the above-discussed
prosecution history3 do not warrant finding any disclaimer because Vizio vacated and remanded
for further proceedings, “including new claim construction,” without construing “input-output
system” (or any other term). See 567 F. App’x at 934, 940-41; see also id. at 932 (“Lochner
appeals from the district court’s final judgment that the asserted claims are invalid for: (1) lack of
written description under 35 U.S.C. § 112, ¶ 1; and (2) failure to claim what the applicants regard
as their invention under 35 U.S.C. § 112, ¶ 2.”) & 940 (“Because the court’s written description
analysis is predicated on a fundamentally flawed claim construction, we do not reach the merits
of the parties’ arguments. Instead, we vacate the court’s invalidity decision and remand for
further proceedings.”) (emphasis added); id. (similar conclusion as to the “regards as invention”
requirement).
Thus, for substantially the same reasons discussed above as to the term “base storage and
control unit,” the Court hereby expressly rejects Defendant’s proposed construction and hereby
construes “input-output system” to have its plain meaning.
C. “portable”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

No construction necessary.

“relatively light in weight and easily
transportable from one location to another
within the operating range of the wireless link”

If construed, “portable” should be construed as
“capable of being carried or conveyed.”
3

Vizio cited the July 26, 1993 Amendment After Final Rejection (Application No. 07/642,831)
(Dkt. No. 166, Ex. M, at 5) and the March 25, 1994 Amendment After Final (Application
No. 08/120,649) (Dkt. No. 166, Ex. B, at 8), both of which are addressed above. See 567 F.
App’x at 934.

21

(Dkt. No. 163, at 11; Dkt. No. 166, at 9.) This disputed term appears in Claims 1, 10, and 12.
HP did not address this term.
(1) The Parties’ Positions
Plaintiff urges that “[t]he term is not used in any specialized sense, as opposed to its
commonly-understood meaning.” (Dkt. No. 163, at 11.) Plaintiff argues that “nothing in the
specification limits ‘portable’ to lightness in weight, particularly not in the vague sense proposed
by [Defendant].” (Id., at 12.) Likewise, Plaintiff argues that Defendant’s proposal of “easily”
“is another vague word of degree that provides no guidance as to its bounds and does not provide
any useful construction.” (Id.) Finally, Plaintiff argues that Defendant’s proposed reference to
wireless range is inappropriate because “[j]ust as a briefcase is portable even when it is not being
carried, an input-output unit would not suddenly become non-portable simply because someone
carried it outside the range of a wireless link.” (Id., at 13.)
Defendant responds that construction is necessary because “there is ambiguity between
the portable-because-untethered and portable-because[-]lightweight interpretations.” (Dkt.
No. 166, at 10.) As to Plaintiff’s alternative proposed construction, Defendant responds that
“almost anything is ‘capable of being carried or conveyed’ with a powerful enough crane,” and
“[u]nder [Plaintiff’s] proposed construction, both the ‘base storage and control system’ and the
‘input-output system’ would be deemed ‘portable’ . . . .” (Id., at 11.) Defendant explains that
the portability of the “input-output system” is relative to the “base storage and control system.”
(Id.)
Plaintiff replies that “[Defendant] cites passages that give examples of portability, but
they do not purport to define the term.” (Dkt. No. 168, at 4.) Plaintiff also argues that
Defendant’s proposals of “light in weight” and “easily transportable” are redundant. (Id.)
22

Further, Plaintiff argues, “[p]ortability relates to the ease with which an object can be moved, not
where an object can be moved or is located.” (Id., at 5.) Finally, Plaintiff submits that despite
Defendant’s apparent argument to the contrary, “neither proposed construction is premised on
the device being untethered.” (Id.)
(2) Analysis
Claims 1 and 12 are reproduced in the discussion of the term “base storage and control
system,” above, and Claim 10 depends from Claim 1.
The specification discloses:
Since one unit of the computer need only include an input device, typically a
keyboard, and an output device, typically a display, as well as a transceiver unit,
this unit can be relatively light in weight and hence portable.
***
Such an arrangement will permit a wide variety of applications to be implemented
more rapidly and conveniently. For example, the user can move with great ease
from one location to another within a defined work area to obtain information
which can then be inputted to the computer.
***
Because of the limited number of components forming unit 2, this can be
conveniently constructed to have the general form of a briefcase, including a
carrying handle 18. Unit 2 can then be easily transported from one location to
another within the operating range of the wireless link associated with the
computer system.
‘598 Patent at 2:5-8, 2:15-19 & 3:20-25.
As for the prosecution history, the patentee stated during an appeal regarding parent
Application No. 08/332,499:
The remote “input/output unit” is a portable monitor (graphics display) and
keyboard with no microprocessor of its own.
***

23

Because the input/output unit does not have its own microprocessor, memory,
drives, etc., it is light-weight and easily portable.
(Dkt. No. 166, Ex. J, 4/26/2002 Appeal Brief, at 4 & 5 (2002 WL 32620103, at *4 & *5)
(emphasis added).) As discussed above regarding the “base storage and control system” and the
“input-output system,” however, this prosecution history pertained to different claims.
As to extrinsic evidence, Plaintiff has submitted a dictionary that defines “portable” as
meaning: “adj. 1. capable of being carried or conveyed. 2. easily carried or conveyed by hand.
3. Obs. endurable. —n. 4. something that is portable, esp. as distinguished from a nonportable
counterpart.” (Dkt. No. 163, Ex. C, The Random House College Dictionary 1033 (revised ed.
1988).)
On balance, the intrinsic and extrinsic evidence demonstrate that “portable” describes the
“input-output system” in relation to the “base storage and control system.” Defendant’s proposal
that the “input-output system” is relatively “easily transportable,” when properly framed in that
manner, should therefore be adopted. See ‘598 Patent at 2:5-8 & 3:20-25 (quoted above). By
contrast, Defendant’s proposal of “within the operating range of the wireless link” would tend to
confuse rather than clarify the scope of the claims because the specification describes portability
with reference to comparatively reduced size and weight, as quoted above, and because the
operating range is not recited in the claims.
The Court accordingly hereby construes “portable” to mean “easily transportable as
compared with the base storage and control system.”

24

D. “a display element producing an output signal based on the input signal and execution
of the application program, [said output signal being produced in bursts, with delays
between the bursts, during which delays, no information is transmitted]”4
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

No construction necessary.

Indefinite.

If construed, the claim element should be
construed as:
“an interface device producing an output
signal based on the input signal and execution
of the application program”

This claim element is a means-plus-function
claim element and is subject to 35 U.S.C.
§ 112, ¶ 6.

(Dkt. No. 163, at 13; Dkt. No. 166, at 15.) This disputed term appears in Claims 1 and 12 and is
recited as part of the “base storage and control system.”
In HP, the Court rejected HP’s proposal that this disputed term refers to a “special
interface card” that produces “a serial bit stream”:
Significantly, [during prosecution] Lochner did not rely on either the presence of
the special interface card or the function of the special interface card (i.e.,
converting parallel signals to serial ones) to overcome prior art. Rather, the
requirement of “burst” transmission alone was sufficient to overcome the prior
art. Thus, the Court adopts Lochner’s proposed construction of “display element”
as meaning “an interface device producing an output signal based on the input
signal and execution of the application program, said output signal being
produced in bursts.” This construction avoids reading preferred embodiments
used to achieve “burst” transmission in to the claim when Lochner has not
expressly disavowed other possible embodiments that could achieve “burst”
transmission.
HP at 12-13 (emphasis added); see id. at 9 & 10. HP did not argue that this is a means-plusfunction term governed by 35 U.S.C. § 112, ¶ 6.

4

Plaintiff proposes that the term for construction includes the language in square brackets. (See
Dkt. No. 163, at 13.) Defendant does not include that language in what Defendant submits as the
disputed term. (See Dkt. No. 166, at 15 & 18.)
25

(1) The Parties’ Positions
Plaintiff argues that this is not a means-plus-function term because “the claim does not
use the term ‘means,’ and recites a definite structure – a display element – that performs a
function – producing an output signal based on the input signal and execution of the application
program.” (Dkt. No. 163, at 14.)
Defendant responds that “[t]he ‘display element’ term does not connote a structure, but
rather, connotes only a function.” (Dkt. No. 166, at 15.) Defendant explains that “element” is a
“nonce word” that does not appear in the specification, and “display” fails to connote structure
because “even the recited function in the ‘display element’ term does not display anything.” (Id.,
at 16.) Defendant also emphasizes that the disputed term was introduced during prosecution,
when the patentee replaced “an arrangement for providing a display output signal . . .” with
“a display element producing an output signal . . . .” (Id., at 16 & 17.)
Defendant then argues that “[t]he ‘598 Patent specification does not disclose any
structure that performs the function of the ‘display element’ set forth in the claims, rendering the
term indefinite.” (Id., at 18.) In particular, Defendant urges that the disclosed “special interface
card” is not linked to producing an output signal in bursts. (Id., at 19.) Further, Defendant
argues, “the ’598 Patent does not disclose any structure for the special interface card, but instead
only discloses its function of converting parallel bit signals containing picture information and
associated address signals into a serial bit stream.” (Id., at 20.)
Plaintiff replies that the “‘[d]isplay element’ in Claim 1 is presumed to differ in meaning
and scope from the ‘means for providing a display output signal’ in Claim 11 and was not
intended to be subject to § 112 ¶ 6.” (Dkt. No. 168, at 9.)

26

(2) Analysis
Claims 1 and 12, in which the disputed term appears, are reproduced in the discussion of
the term “base storage and control system,” above.
It is well settled that [a] claim limitation that actually uses the word “means”
invokes a rebuttable presumption that § 112, ¶ 6 applies. By contrast, a claim
term that does not use “means” will trigger the rebuttable presumption that § 112,
¶ 6 does not apply. The term “means” is central to the analysis.
Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1371-1372 (Fed. Cir. 2003) (citations and
internal quotation marks omitted); see Inventio AG v. Thyssenkrupp Elevator Ams. Corp., 649
F.3d 1350, 1356 (Fed. Cir. 2011) (“[T]he presumption flowing from the absence of the term
‘means’ is a strong one that is not readily overcome.”); see also Apple Inc. v. Motorola, Inc., 757
F.3d 1286, 1297-98 (Fed. Cir. 2014) (“The strong presumption created by not including means in
a claim limitation provides clarity and predictability for the public and the patentee alike.”).
The presumption against applying 35 U.S.C. § 112, ¶ 6 can be overcome. For example,
terms such as “mechanism,” “element,” or “device” may be insufficient to avoid means-plusfunction treatment:
We agree with the district court’s conclusion that the presumption here is
overcome and that the phrase “colorant selection mechanism” should be construed
as a means-plus-function limitation. The generic terms “mechanism,” “means,”
“element,” and “device,” typically do not connote sufficiently definite structure.
In Personalized Media Commc’ns, LLC v. Int’l Trade Com[m]’n, 161 F.3d 696
(Fed. Cir. 1998), we addressed the claim term “digital detector.” We contrasted
the term “detector,” which recited sufficient structure to avoid 112 ¶ 6, with
“generic structural term[s] such as ‘means,’ ‘element,’ or ‘device,’” which do not.
Id. at 704. Similarly, in Lighting World, Inc. v. Birchwood Lighting, Inc., 382
F.3d 1354 (Fed. Cir. 2004), we recognized that Section 112 ¶ 6 does not apply to
“a term that is simply a nonce word or a verbal construct that is not recognized as
the name of structure and is simply a substitute for the term ‘means for.’” Id.
at 1360.
Mass. Institute of Tech. & Elecs. for Imaging, Inc. v. Abacus Software, 462 F.3d 1344, 1354-56
(Fed. Cir. 2006) (“MIT”); see Manual of Patent Examining Procedure § 2181 (9th ed., Mar.
27

2014) (“The following is a list of non-structural generic placeholders that may invoke . . .
35 U.S.C. 112, paragraph 6: ‘mechanism for,’ ‘module for,’ ‘device for,’ ‘unit for,’ ‘component
for,’ ‘element for,’ ‘member for,’ ‘apparatus for,’ ‘machine for,’ or ‘system for.’”) (emphasis
added); see also Mas-Hamilton Grp. v. LaGard, Inc., 156 F.3d 1206, 1214 (Fed. Cir. 1998)
(finding that “lever moving element” “cannot be construed so broadly to cover every conceivable
way or means to perform the function of moving a lever, and there is no structure recited in the
limitation that would save it from application of section 112, ¶ 6”).
In some cases, “adjectival qualifications” may impart sufficient structure to an otherwise
non-structural term. See MIT, 462 F.3d at 1362; see also Apex, 325 F.3d at 1374. Here, the
constituent term “display” might be read as connoting structure beyond merely being any
structure that performs a displaying function. For example, the specification refers to “cathoderay tube” displays and “liquid crystal” displays. See ‘598 Patent at 2:34-39. The term “display
element,” however, appears in a limitation that recites producing a signal (rather than providing a
visual display): “a display element producing an output signal based on the input signal and
execution of the application program, said output signal being produced in bursts, with delays
between the bursts, during which delays, no information is transmitted.”
Thus, the “display element” at issue is not akin to a liquid crystal display but rather is
something like a computer graphics card with a display port:
In a conventional computer system having graphics display capabilities, picture
information is supplied to a graphics card via a multiline data bus conducting bit
signals in parallel and is stored in a memory under control of address signals
generated in unit 4. The picture information is then read out to deliver picture
signals to the display device.
‘598 Patent at 5:26-31 (emphasis added). Plaintiff has thus suggested:

28

A person of ordinary skill in the art at the time of the invention would therefore
know that the output port/interface that generates a video signal in a conventional
computer is an example of the claimed display element.
(Dkt. No. 163, at 14.)
On balance, Plaintiff has failed to substantiate its position with sufficient evidence, either
intrinsic or extrinsic. The “display element” term fails to recite structure and instead is directed
to any structure that can perform the recited function. See MIT, 462 F.3d at 1354-56; see also
Manual of Patent Examining Procedure § 2181; Mas-Hamilton, 156 F.3d at 1214.
Although “previous claim constructions in cases involving the same patent are entitled to
substantial weight,” TQP, 2014 WL 2810016, at *6, “when this Court considers a prior
construction, it considers that parties may raise different arguments and may highlight different
evidence,” Guardian Media Techs., Ltd. v. Acer Am. Corp., No. 6:10-CV-597, 2013 WL
1866901, at *6 (E.D. Tex. May 2, 2013) (Davis, J.). Here, the Court has been persuaded by
arguments that were not presented in HP. Specifically, in HP no party argued that 35 U.S.C.
§ 112, ¶ 6 applied.
The Court thus departs from the construction reached in HP and concludes that the
“display element” term is a means-plus-function term governed by 35 U.S.C. § 112, ¶ 6.
The parties do not appear to dispute the claimed function, which is recited as “producing
an output signal based on the input signal and execution of the application program, said output
signal being produced in bursts, with delays between the bursts, during which delays, no
information is transmitted.” The context of surrounding claim language demonstrates that this
“output signal” is for transmission to the recited portable input-output system. In particular, the
base storage and control system includes “a wireless transceiver that wirelessly communicate
[sic] the display output signal when produced [in bursts],” and the portable input-output system

29

includes “a wireless transceiver, which . . . wirelessly receives the display output signal from the
base storage and control system.”
The remaining issue is whether the specification discloses sufficient corresponding
structure for performing this claimed function. “[S]tructure disclosed in the specification is
‘corresponding’ structure only if the specification or prosecution history clearly links or
associates that structure to the function recited in the claim.” Med. Instrumentation and
Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003) (quoting B. Braun Med.
Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997)). The specification discloses:
[Storage and control u]nit 4 can be quite comparable to a basic computer system,
which typically includes all necessary computer components except for display
and input devices. Unit 4, thus, contains a CPU with microprocessor, memory,
input/output interfaces and a variety of disc drives, including CD-ROMs.
Id. at 3:31-36 (emphasis added).
It should be apparent from the description provided thus far that all of the
components of a computer system according to the invention can be produced in
the conventional manner, with the exception of transceivers 14 and 24, one
preferred embodiment of which is shown in FIG. 2.
Id. at 3:48-52.
In a conventional computer, there will be generated, at an output port, video and
horizontal and vertical synchronizing signals which are supplied individually to a
monitor.
Id. at 4:16-18 (emphasis added).
According to another embodiment of the invention, the graphics display
capability of the system could be enhanced by constructing device 12 as a high
resolution display device, including a suitable graphics card in unit 2 and
installing a special interface card in unit 4. In a conventional computer system
having graphics display capabilities, picture information is supplied to a graphics
card via a multiline data bus conducting bit signals in parallel and is stored in a
memory under control of address signals generated in unit 4. The picture
information is then read out to deliver picture signals to the display device. In this
embodiment of the invention, the parallel bit signals containing picture
information, and associated address signals, are conducted from the data bus and
30

an address bus to the special interface card and are converted, in the special
interface card, into a serial bit stream which is then supplied to a channel defined
by transceiver 24. The serial bit stream is modulated and transmitted to
transceiver 14. The serial bit stream is modulated and transmitted to
transceiver 14. From transceiver 14, the picture information is conducted, under
control of the address signals, to appropriate memory locations of the graphics
card and the stored information is then supplied to the display device. . . .
Information to update the display can be transmitted in bursts.
Id. at 5:21-48 (emphasis added).
This disclosure thus sets forth structure, namely a graphics card and a special interface
card, for wireless burst transmission of a video output signal that corresponds to the claimed
function as set forth above, and the Description of the Preferred Embodiments in the ‘598 Patent
discloses no other embodiment involving wireless burst transmission. Finally, to whatever
extent Defendant is challenging the sufficiency of the description of the special interface card,
Defendant’s challenge is not a matter of claim construction but perhaps relates to enablement or
written description and, therefore, is not addressed in the present Memorandum Opinion and
Order.
The Court accordingly hereby finds that the term “a display element producing an
output signal based on the input signal and execution of the application program, said
output signal being produced in bursts, with delays between the bursts, during which
delays, no information is transmitted” is a means-plus-function term, the function is
“producing an output signal based on the input signal and execution of the application
program, said output signal being produced in bursts, with delays between the bursts,
during which delays, no information is transmitted,” and the corresponding structure is

31

“the graphics card and the special interface card disclosed in the ‘598 Patent at 5:21-49;5
and equivalents thereof.”
E. “an arrangement for providing a continuously-displayed full screen display [that differs
from a previously-received full screen display], using the display output signal received in
bursts to generate a portion of the full screen display corresponding to the display output
signal”
“an arrangement for providing a continuously-displayed full screen display using the
display output signal received in bursts to generate a portion of the full screen display
corresponding to the display output signal” (Claim 1)
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

This term is subject to 35 U.S.C. § 112, ¶ 6.

Indefinite

Function:
“providing a continuously-displayed full
screen display using the display output signal
received in bursts to generate a portion of the
full screen display corresponding to the display
output signal”
Structure:
“the graphics card and the display device
described at 5:37-49, and their equivalents”

5

Because the line numbering for column 5 of the patent specification does not align precisely
with the lines cited here, the Court includes line number 49 to ensure that the finder of fact will
understand that this citation includes the last cited sentence, which discloses burst transmission.
32

“an arrangement for providing a continuously-displayed full screen display that differs
from a previously-received full screen display, using the display output signal received in
bursts to generate a portion of the full screen display corresponding to the
display output signal” (Claim 12)
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

This term is subject to 35 U.S.C. § 112, ¶ 6.

Indefinite

Function:
“providing a continuously-displayed full
screen display using the display output signal
received in bursts to generate a portion of the
full screen display [corresponding to the
display output signal]”
Structure:
“the graphics card and the display device
described at 5:37-49, and their equivalents”
(Dkt. No. 163, at 15-16 (square brackets Plaintiff’s); Dkt. No. 166, at 21.) These disputed terms
are recited as part of the “input-output system.”
The parties agree that these are means-plus-function terms governed by 35 U.S.C. § 112,
¶ 6. (Dkt. No. 163, at 16.) The parties dispute whether the specification discloses sufficient
corresponding structure.
(1) The Parties’ Positions
Plaintiff submits that in HP, the Court rejected the same argument that Defendant has
presented here. (Dkt. No. 163, at 16.) Plaintiff argues that “[t]he specification clearly identifies
the graphics card and the display device as the arrangement in the input-output system that
provides the continuously-displayed full screen display.” (Id., at 16-17 (citing ‘598 Patent
at 5:37-49).) Likewise, Plaintiff urges that the term additionally reciting a display “that differs
from a previously-received full screen display” “can also be performed by definite structures
recited in the specification.” (Id., at 18.)
33

Defendant responds that the portion of the specification cited by Plaintiff “merely states
that the graphics card receives picture information and supplies it to a display device” and “does
not state that the graphics card ‘generates’ a portion of the display, or that it does so ‘using the
display output signal received in bursts.’” (Dkt. No. 166, at 22.)
Plaintiff replies that in the portion of the specification at issue:
The specification describes a process of the graphics card receiving and storing
picture information, which is then supplied to the display device. The result of
this process, according the same portion of the specification, is that “high
resolution graphics can be displayed.” It is this process that generates the high
resolution graphics that are displayed.
(Dkt. No. 168, at 10 (citation omitted).) Plaintiff also emphasizes that the passage at issue
discloses that transmission can be in bursts. (Id.)
(2) Analysis
Claims 1 and 12, in which the disputed terms appear, are reproduced in the discussion of
the term “base storage and control system,” above. The specification discloses:
The serial bit stream is modulated and transmitted to transceiver 14. From
transceiver 14, the picture information is conducted, under control of the address
signals, to appropriate memory locations of the graphics card and the stored
information is then supplied to the display device. With this arrangement, new
picture information must be transmitted only when there is a change in some part
of the displayed image. Therefore, high resolution graphics images can be
displayed at input/output unit 2 without requiring a high capacity channel for
transmitting the picture information. Information to update the display can be
transmitted in bursts.
‘598 Patent at 5:37-49. The parties have also addressed the following passages:
Each of the resulting signals is conducted to a 10 [sic] respective demodulator 64,
from which the resulting demodulated signals, corresponding to those supplied to
modulators 46, may be delivered to the respective inputs of display device 12.
***
According to another embodiment of the invention, the graphics display
capability of the system could be enhanced by constructing device 12 as a high
34

resolution display device, including a suitable graphics card in unit 2 and
installing a special interface card in unit 4.
Id. at 4:46-50 and 5:21-25.
HP found:
HP has not me[]t its burden to show that the “arrangement for providing” claims
lack sufficient structure to enable one of ordinary skill in the art to perform the
recited functions. The portion of the function at issue is “using the display output
signal,” and the structure corresponding to this function merely needs to be able to
use the “display output signal . . . to generate a portion of the full screen display.”
Nothing in the claim specifies what form the “display output signal” must be in
when it is used to generate the full screen display. Therefore, the specification
need only disclose a structure able to use the “display output signal” in some
form, and Column 5, lines 37-49 clearly links the “graphics card” to the function
of “using the display output signal.” As such, the Court concludes that the
structures corresponding to the functions recited in the claims are the graphics
card and the display device described at Column 5, lines 37-49.
HP at 8-9.
The Court reaches the same conclusion here as in HP. See Maurice, 2006 WL 1751779,
at *4; see also TQP, 2014 WL 2810016, at *6. The Court therefore hereby expressly rejects
Defendant’s argument that there is a lack of detail in the specification that renders the claims
indefinite. See Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1384-85 (Fed. Cir. 2011)
(“[T]he amount of detail that must be included in the specification depends on the subject matter
that is described and its role in the invention as a whole, in view of the existing knowledge in the
field of the invention”).
The Court accordingly hereby construes the disputed terms as set forth in the following
chart:

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Term

Construction

“an arrangement for providing a continuously- This term is subject to 35 U.S.C. § 112, ¶ 6.
displayed full screen display using the display
output signal received in bursts to generate a
Function:
portion of the full screen display corresponding
“providing a continuously-displayed full
to the display output signal” (Claim 1)
screen display using the display output
signal received in bursts to generate a
“an arrangement for providing a continuously- portion of the full screen display
displayed full screen display that differs from a corresponding to the display output signal”
previously-received full screen display, [using
the display output signal received in bursts to
Structure:
generate a portion of the full screen display
“the graphics card and the display
corresponding to the display output signal]”
device disclosed in the ‘598 Patent at
(Claim 12)
5:37-49,6 and their equivalents”

F. “an arrangement for demodulating a communicated signal” and “an arrangement for
modulating at least one of the input signal and the output display signal”
“an arrangement for demodulating a communicated signal” (Claim 8)
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

This term is subject to 35 U.S.C. § 112, ¶ 6.

Indefinite.

Function:
“demodulating a communicated signal”

This claim element is a means-plus function
claim element and is subject to 35 U.S.C.
§ 112, ¶ 6.

Structure:
“a transceiver including a demodulator, and
their equivalents”

6

Because the line numbering for column 5 of the patent specification does not align precisely
with the lines cited here, the Court includes line number 49 to ensure that the finder of fact will
understand that this citation includes the last cited sentence, which discloses burst transmission.
36

“an arrangement for modulating at least one of the input signal and
the output display signal” (Claim 8)
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

This term is subject to 35 U.S.C. § 112, ¶ 6.

Indefinite.

Function:
“modulating at least one of the input signal
and the output display signal”

This claim element is a means-plus function
claim element and is subject to 35 U.S.C.
§ 112, ¶ 6.

Structure:
“(1) a transceiver including a modulator, or
(2) a transceiver including a modulator and a
signal amplifier, and their equivalents”
(Dkt. No. 163, at 18-19; Dkt. No. 160, Ex. C, at 2.) HP did not address these terms.
The parties agree that these are means-plus-function terms governed by 35 U.S.C. § 112,
¶ 6. (Dkt. No. 163, at 18-19.) Originally, the parties disputed whether the specification discloses
sufficient corresponding structure. (See id.; see also Dkt. No. 160, Ex. B, at 3; id., Ex. C, at 2.)
In its response brief, Defendant submits that the parties have reached agreement to
construe these terms as set forth below. (Dkt. No. 166, at 1.)
The Court accordingly hereby construes these terms as set forth in the following chart:
Construction

Term
“an arrangement for demodulating a
communicated signal”

Subject to 35 U.S.C. § 112, ¶6.
Function:
“demodulating a communicated signal”
Structure:
“a transceiver including a demodulator,
and their equivalents”

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“an arrangement for modulating at least one of
the input signal and the output display signal”

Subject to 35 U.S.C. § 112, ¶6.
Function:
“modulating at least one of the input
signal and the output display signal”
Structure:
(1) a transceiver including a modulator,
or
(2) a transceiver including a modulator
and a signal amplifier, and their
equivalents.

V. CONCLUSION
The Court adopts the constructions set forth in this opinion for the disputed terms of the
patents-in-suit. 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.
Within thirty (30) days of the issuance of this Memorandum Opinion and Order, the
parties are hereby ORDERED, in good faith, to mediate this case with the mediator agreed upon
by the parties. As a part of such mediation, each party shall appear by counsel and by at least
one corporate officer possessing sufficient authority and control to unilaterally make binding
decisions for the corporation adequate to address any good faith offer or counteroffer of
settlement that might arise during such mediation. Failure to do so shall be deemed by the Court
as a failure to mediate in good faith and may subject that party to such sanctions as the Court
deems appropriate.

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SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 21st day of January, 2015.

____________________________________
RODNEY GILSTRAP
UNITED STATES DISTRICT JUDGE

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