Tierra Intelectual Borinquen, Inc. v. HTC Corporation et al
Filing
110
MEMORANDUM OPINION AND ORDER. Signed by Judge Rodney Gilstrap on 5/12/2014. (ch, )
THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
TIERRA INTELECTUAL BORINQUEN,
INC.,
Plaintiff,
v.
HTC CORPORATION, et al.,
Defendants.
___________________________________
TIERRA INTELECTUAL BORINQUEN,
INC.,
Plaintiff,
v.
TOSHIBA CORPORATION, et al.,
Defendants.
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CASE NO. 2:13-CV-39-JRG
CASE NO. 2:13-CV-47-JRG
MEMORANDUM OPINION AND ORDER
Before the Court are Plaintiff Tierra Intelectual Borinquen, Inc.’s Opening Claim
Construction Brief (Dkt. No. 93), the response of Defendants HTC Corporation, HTC America,
Inc. (collectively, “HTC”), Toshiba Corporation, and Toshiba America Information Systems,
Inc. (collectively, “Toshiba”) (Dkt. No. 96), and Plaintiff’s reply (Dkt. No. 101). 1
The Court held a claim construction hearing on May 5, 2014.
1
References to docket numbers are to Civil Action No. 2:13-CV-39 unless otherwise indicated.
Also, HTC and Toshiba are referred to collectively herein as “Defendants.”
1
Table of Contents
I. BACKGROUND ....................................................................................................................... 3
II. LEGAL PRINCIPLES ........................................................................................................... 4
III. CONSTRUCTION OF AGREED TERMS ........................................................................ 7
IV. CONSTRUCTION OF DISPUTED TERMS ..................................................................... 8
A. “signal[s]” ............................................................................................................................. 8
B. “measurable variable input” ................................................................................................ 13
C. “signal type” ........................................................................................................................ 23
V. CONCLUSION...................................................................................................................... 27
2
I. BACKGROUND
Plaintiff brings suit alleging infringement of United States Patents No. 7,350,078 (“the
‘078 Patent”), 7,725,725 (“the ‘725 Patent”), and 8,429,415 (“the ‘415 Patent”) (collectively,
“the patents-in-suit”). The ‘078 Patent is titled “User Selection of Computer Login.” The ‘078
Patent issued on March 25, 2008, bears a filing date of March 4, 2002, and claims priority based
on a provisional application filed April 26, 2001. The ‘415 Patent and the ‘725 Patent are titled
“User-Selectable Signatures.” The ‘725 Patent issued on May 25, 2010, and bears a filing date
of December 23, 2006. The ‘415 Patent issued on April 23, 2013, and bears a filing date of
April 13, 2010.
The ‘415 Patent is a continuation of the ‘725 Patent, which in turn is a continuation of the
‘078 Patent. The parties agree, at least for purposes of the present claim construction
proceedings, that the specifications of the patents-in-suit are identical except for a discussion of
prior art that appears in the Background of the ‘078 Patent (1:21-40) but not in the ‘725 Patent or
the ‘415 Patent. (See Dkt. No. 93, at 5; Dkt. No. 96, at p. 4 of 24.) 2 Plaintiff has not challenged
Defendants’ apparent position that the additional language in the ‘078 Patent can be considered
when construing the disputed terms as to all of the patents-in-suit.
The Abstract of the ‘078 Patent is representative and states:
Computer login may comprise any user-determined submission. A user may
select the input devices used, and which types of signals from input devices are to
be used for login authentication. Account identification may be inferred by
signature rather than explicitly stated. A plurality of discontiguous data blocks in
a plurality of files may be employed for validation. The paths to data used in
validation may be multifarious, regardless of the prospects for successful
authorization.
2
Because of incorrect page numbering within Defendants’ response brief, the Court uses the
page numbering applied by the Court’s electronic docket.
3
According to Defendants’ response brief, the independent claims asserted by Plaintiff are
Claims 1 and 9 of the ‘078 Patent, Claims 1, 10, and 15 of the ‘725 Patent, and Claim 1 of the
‘415 Patent. (Dkt. No. 96, at p. 4 of 24.)
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.
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).
4
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
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
5
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
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
6
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.
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.
III. CONSTRUCTION OF AGREED TERMS
The Court hereby adopts the following agreed constructions:
Term
Agreed Construction
“signature”
“at least one transmission intended as a security
precaution to preclude unauthorized access”
“input device”
“a device by which a user enters input into a
computer system”
“passively terminating”
“stopping without overt user action when a
predetermined condition is met”
7
“predetermined degree of inexactness”
“a preset allowable measure of deviation from
the recorded signal”
“designated tolerance of inexactness”
(Dkt. No. 89, 2/28/2014 P.R. 4-3 Joint Claim Construction and Prehearing Statement, at 2; Dkt.
No. 95, 4/7/2014 Joint Notice of Supplemental Joint Claim Construction Statement, at 1-2.)
The parties have also reached agreement that for the previously-disputed terms “same
type” and “a set of related software recognizable data,” “[n]o construction is necessary.” (Dkt.
No. 95, at 1; Dkt. No. 96, at p. 8 of 24.)
IV. CONSTRUCTION OF DISPUTED TERMS
Plaintiff filed a Motion to Strike Toshiba’s Expert Declaration (Dkt. No. 102), which was
directed to the Declaration of Sandeep Chatterjee, Ph.D. in Support of Toshiba’s Proposed
Construction of “Measurable Variable Input” (Dkt. No. 96-4) attached to Defendants’ responsive
claim construction brief. Defendant Toshiba filed a response to Plaintiff’s motion to strike.
(Dkt. No. 106.) At the beginning of the May 5, 2014 claim construction hearing, the Court
denied Plaintiff’s motion. (See Dkt. No. 107, 5/5/2014 Minute Entry, at 1.)
A. “signal[s]”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
“a set of related software recognizable 3 data
which results from user input onto the
computer via an 4 input device” 5
“a set of related software-recognizable data of
the same type which results at the termination
of a single user input into the computer via the
input device” 6
3
Plaintiff’s proposal of the phrase “software recognizable” is hyphenated in the parties’
February 28, 2014 Joint Claim Construction and Prehearing Statement but not in Plaintiff’s
briefing or in Plaintiff’s proposal in the parties’ April 22, 2014 Joint Claim Construction Chart.
(Compare Dkt. No. 89, Ex. A, at p. 2 of 14 with Dkt. No. 93, at 10, Dkt. No. 101, at 3 & Dkt.
No. 105, Ex. A, at 1.) This inconsistency does not appear to be of any significance.
4
Plaintiff’s proposal in the parties’ February 28, 2014 Joint Claim Construction and Prehearing
Statement and in Plaintiff’s briefing refers to “an” input device. (Dkt. No. 89, Ex. A, at p. 2
8
(Dkt. No. 93, at 10; Dkt. No. 96, at p. 9 of 24.) The parties submit that this disputed term
appears in Claims 1, 2, and 4 of the ’078 Patent, Claims 1, 2, 7, 9, 10, 11, 15, 16, 17, and 19 of
the ’725 Patent, and Claim 1 of the ‘415 Patent. (Dkt. No. 89, Ex. A, at p. 2 of 14; Dkt. No. 93,
at 9 n.2; Dkt. No. 96, at p. 9 n.1 of 24.)
(1) The Parties’ Positions
Plaintiff argues that “[a]s described in the specification, a signal: (1) is a set of related
software-recognizable data; and (2) results from user input into the computer via one or more
input devices.” (Dkt. No. 93, at 10 (citing ’078 Patent at 3:16-19 & 3:29-30).) Plaintiff’s other
opening arguments addressed Defendants’ previous proposals, noted above, and are no longer
pertinent. (See id.)
Defendants respond that the claims expressly recite that the related software-recognizable
data must be “of the same type.” (Dkt. No. 96, at pp. 9-10 of 24.) As to their proposal of
requiring termination of user input, Defendants submit that the specification “makes clear that a
signal results upon termination of a transmission, or, in other words, at the termination of user
input into the computer via the input device.” (Id., at p. 10 of 24.) Defendants emphasize the
disclosure that “[a] signal 2 is a set of related software-recognizable data from a single
transmission 1.” (Id. (quoting ’078 Patent at 3:29-30).)
of 14; Dkt. No. 93, at 9-10; Dkt. No. 101, at 3.) In the parties’ April 22, 2014 Joint Claim
Construction Chart, Plaintiff’s proposal refers to “the” input device. (Dkt. No. 105, Ex. A, at 1.)
This inconsistency does not appear to be of any significance.
5
In the parties’ briefing and joint charts, Plaintiff’s proposed construction included square
brackets around “related software recognizable data” and “input device.” At the May 5, 2014
hearing, Plaintiff explained that those square brackets were carried over from disclosures
between the parties and have no significance in the present proceedings.
6
HTC previously proposed: “Plain and ordinary meaning.” (Dkt. No. 89, Ex. A, at p. 2 of 14.)
Toshiba previously proposed: “a set of related software-recognizable data of measureable
variable input of the same type from a single transmission.” (Id.)
9
Plaintiff replies that “adding the ‘same type’ limitation to the construction for ‘signal’
would be redundant since the claims in the Asserted Patent already require that signals be of the
same type.” (Dkt. No. 101, at 4.) Further, Plaintiff argues, “the only requirement with respect to
‘termination’ is that the termination of the transmission must be recognizable.” (Id., at 5.)
At the May 5, 2014 hearing, Plaintiff clarified that Defendants’ proposal of the phrase “of
the same type” is incorrect because that phrase does not appear in Claim 1 of the ‘415 Patent.
Plaintiff also urged that Defendants’ proposal of “termination” is incorrect because, Plaintiff
argued, input signals exist before a transmission occurs. Plaintiff cited disclosure of “recording
mouse 107 movement . . . until sufficient signal 2 has been input to allow a signal match 5 . . . .”
‘078 Patent at 4:34-37. Defendants responded that signals occur only when a user finishes
providing input because measurement is not possible before that time.
(2) Analysis
Claim 1 of the ‘078 Patent is representative and recites (emphasis added):
1. A computer-implemented method for creating a signature for subsequent
authentication comprising:
indicating to a user commencement of signature input recording;
recording user input signals by type from at least one user-selected device
among a plurality of selectable user input devices,
wherein a signal comprises a set of related software-recognizable data of
the same type received from at least one input device, and
wherein at least one user-selectable input device affords recording a
plurality of signal types, and
wherein a signal type comprises a category, among a plurality of possible
categories, of measurable variable input associated with at least one userselectable input device;
terminating said recording;
creating a signature based at least in part upon said recording; and
storing said signature.
As noted above, the parties agree that a “signal” is “related software-recognizable data”
that results from user input into a computer via an input device. Further, Plaintiff acknowledged
10
in its opening brief that “the plain language of the specification make[s] it clear that a signal is ‘a
set of related software-recognizable data from a single transmission.’” (Dkt. No. 93, at 10.)
The above-emphasized claim language also recites that the related software-recognizable
data is not merely from the same input device but also is “of the same type.” That limitation
appears in all of the relevant claims of the ‘078 Patent and the ‘725 Patent. Nonetheless, because
“of the same type” does not appear in Claim 1 of the ‘415 Patent, the Court declines to so limit
the generic term “signal.”
The remaining issue, then, is whether a “signal” can result only upon the termination of a
single user input. On one hand, the specification appears to suggest that validation can progress
before termination of a transmission:
FIG. 16 depicts incremental validation 181: validation 18 is concurrent with
submission 9 transmission 1. In other words, with incremental validation 181,
validation 18 may progress with each signal 2 or transmission 1.
***
Incremental validation 181 may commence once the first transmission 1
completes, or, in a more sophisticated embodiment, ongoing 88 with signal
input 2. In a concurrent validation 181 embodiment, initial signal keys may be
accumulated 50 and subsequent unmatched keys discarded 51 concurrent with
transmission 1, on a signal-by-signal 2 basis.
‘078 Patent at 8:47-51 & 8:65-9:4 (emphasis added); see id. at 5:34-35 (“In one embodiment,
account input 99 captures all transmission 1 signals 2 until actively terminated 78.”).
On the other hand, the specification then explains: “Validation 18 commences by
accumulating possible keys 55 based upon signal match 54 between signals 2 of the first
transmission 1 and possible initial signal keys 52. For subsequent transmissions 1, accumulated
keys are discarded 59 by failure to match signals 57.” Id. at 9:5-9. The best reading of these
passages as a whole is that the disclosed validation proceeds based upon distinct, completed
11
transmissions. In other words, the specification does not disclose any validation that occurs midtransmission.
Further, the specification discloses an embodiment in which termination of a transmission
results in a signal, and that signal is a set of data from a single transmission:
A transmission 1 is user input into the computer 100 via one or more input
devices 106, whereupon termination of transmission 1 is recognizable, and
resulting in at least one signal 2. There may be different types 11 of
transmissions 1, examples of which include mouse 107 movements or clicks,
keyboard 108 entry, or combinations thereof. Other types 11 of transmissions 1
are possible with different input devices 106, such as, for example, voice
transmission 1 if the computer 100 is equipped with a microphone and speakers.
Multiple-device 106 transmission 1m is conceivable. An example of a multipledevice 106 transmission 1 is a combination of mouse 107 movement while one or
more keys 108 are pressed, as depicted in FIG. 6.
A signal 2 is a set of related software-recognizable data from a single
transmission 1. A plurality of signals 2 of different types 21 may emanate from a
single transmission 1. For example, typing a word may yield the signals 2 of
entered keys 210 and the timing between keystrokes 211. Another example:
mouse 107 movement of the cursor may yield signals 2 of locations 214,
velocities, duration; and shape pattern(s) (such as script signatures, drawn
characters, and so on) 215.
A transmission 1 of composite signals 2c comprising a plurality of simple
signals 2s is conceivable. For example, a multiple-device 106 transmission 1m
produces a composite signal 2c if matching to signals 2 of both devices 106 is
required, as does requiring signal match 5 of multiple signal types 21 from a
single-device transmission 1.
Signal data 22 may be categorized by its transmission type 11 and/or signal
type 21, as depicted in FIG. 5. For easy identification, each possible transmission
type 11 or signal type 21 may be assigned a unique ordinal.
Id. at 3:16-47 (emphasis added; “1m,” “2c,” and “2s” italicized as in original).
On balance, however, the claim language does not support requiring that a “signal” must
result from the termination of a user input. For example, above-quoted Claim 1 of the ‘078
Patent does not recite termination of a transmission, signal, or input. Instead, the claim recites
12
“recording user input signals,” “terminating the recording,” and “creating a signature based at
least in part upon said recording.” Defendants’ proposal would improperly limit the claims to a
disclosed embodiment and is therefore rejected. Electro Med., 34 F.3d at 1054.
Finally, Defendants’ proposal of a “single” user input is unclear and is potentially too
limiting, particularly in light of the above-quoted disclosure of a “composite signal.” See ‘078
Patent at 3:40-41.
The Court accordingly hereby construes “signal” to mean “a set of related softwarerecognizable data which results from user input into the computer via an input device.”
B. “measurable variable input”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
No construction necessary 7
HTC:
No construction necessary 8
Toshiba:
“a variable quantity that can be measured,
in contrast to a discrete quantity or condition
that can be identified exactly” 9
(Dkt. No. 93, at 10-11; Dkt. No. 96, at p. 11 of 24.) The parties submit that this disputed term
appears in Claims 1 and 9 of the ‘078 Patent, Claims 1, 10, and 15 of the ‘725 Patent, and Claims
7
Up until the May 5, 2014 hearing, Plaintiff had proposed: “a quantity, property, or condition
that is measurable from an input device.” (Dkt. No. 89, Ex. A, at pp. 3-4 of 14; Dkt. No. 93,
at 10; Dkt. No. 101, at 5; Dkt. No. 105, at 8.) Also, as noted below, Plaintiff submitted a new
alternative proposal in a written submission after the hearing.
8
HTC previously proposed: “Plain and ordinary meaning.” (Dkt. No. 89, Ex. A, at pp. 3-4
of 14.) Also, as noted below, HTC submitted a new alternative proposal in a written submission
after the hearing.
9
Toshiba previously proposed: “a continuous input that varies over time and can be measured.”
(Dkt. No. 89, Ex. A, at p. 4 of 14.) Also, as noted below, Toshiba submitted a new alternative
proposal in a written submission after the hearing.
13
13 and 14 of the ‘415 Patent. (Dkt. No. 89, Ex. A, at pp. 3-4 of 14; Dkt. No. 93, at 10 n.3; Dkt.
No. 96, at p. 11 n.2 of 24.)
(1) The Parties’ Positions
Plaintiff argues that “[t]aking into account the myriad of input devices that may be used,
it follows that any quantity, property, or condition that an input device is able to measure or that
may be derived from the signal received from the input device is a ‘measurable variable input.’”
(Dkt. No. 93, at 11.) Plaintiff also argues that “the extrinsic evidence offered by Toshiba does
not find support in the specification. For example, the specification does not require input to be
‘continuous’ or that input has to change ‘over time,’” as Toshiba previously proposed. (Id.,
at 12.) Plaintiff further urges that Toshiba’s extrinsic definitions for “analog computer” and
“analog device” are unpersuasive because “the specification does not mention analog computers
nor devices, much less limit[] measurable variable input to analog devices.” (Id.)
HTC responds that “the words themselves have a plain and ordinary meaning and are
easily understood by a jury.” (Dkt. No. 96, at p. 11 of 24.) HTC also argues that Plaintiff’s
proposal “reads out the word ‘variable’” and “has improperly construed ‘measurable input’
instead of ‘measurable variable input.’” (Id., at p. 12 of 24.)
Toshiba responds that because the specification does not use “measurable” or “variable,”
the meaning “must be inferred from the claims, the context of the invention as described in the
specification, and the description of the disclosed embodiments (including relevant figures).”
(Id., at pp. 12-13 of 24.) Toshiba submits that the invention is described as using account
identification and signatures that are not a keyed-in account name and a keyed-in password,
respectively, but rather are one or more signals of a type for which some variability is expected.
(Id., at pp. 13-15 of 24.) Toshiba also argues that “the only embodiment described in the
14
specification supports the distinction between discrete/identifiable input signals (such as keyedin text characters) and those that are ‘measureable variable’ or ‘difficult-to-exactly-replicate,’”
such as “location, speed, vector, or shape.” (Id., at p. 16 of 24.) Further, Toshiba cites the
patentee’s discussion (in the Background section of the ’078 Patent) of the “Zilberman” patent as
measuring “timing, intervals, and durations of key presses and pauses.” (Id., at p. 17 of 24
(quoting ‘078 Patent at 1:21-28).)
Toshiba has also submitted a declaration by its expert, Dr. Sandeep Chatterjee, in support
of Toshiba’s proposed construction. (Id., at pp. 17-18 of 24 (citing Dkt. No. 96-4, 4/8/2014
Chatterjee Decl. at ¶¶ 15-24).) Toshiba argues that “[t]o a person of ordinary skill in the art, the
phrase ‘measureable variable input’ suggests that the input likely results in an analog signal,
which is generally understood as a continuous, variable, measureable quantity,” as opposed to
“input that resulted in a digital signal, in other words, a discrete input of 1’s and 0’s that could be
exactly identified from the signal as opposed to measured therefrom.” (Dkt. No. 96, at p. 18
of 24.)
Toshiba therefore disagrees with Plaintiff’s position that because different characters may
be used, key characters are a “measurable variable input.” (Id., at p. 19 of 24.) Toshiba explains
that a particular key character is a discrete, identifiable input, rather than a variable input. (Id.)
Toshiba concludes that “in light of [Plaintiff’s] apparent position that discrete inputs such as key
characters should qualify as ‘measurable variable input, . . . any kind of input would qualify as
‘measurable variable input’” under Plaintiff’s interpretation. (Id., at pp. 19-20 of 24.) Finally,
Toshiba argues that Plaintiff’s previously proposed construction “merely repeats the term
‘measurable,’ with no explanation as to what that term means, and fails to account for or explain
the term ‘variable.’” (Id., at p. 20 of 24.) In sum, Toshiba proposes that “the simplest and most
15
informative way to construe ‘measurable variable input’ is by drawing a clear distinction
between measureable variable input (i.e., difficult-to-exactly-replicate input that can be
measured) and input that is discrete and identifiable without measurement.” (Id.)
Plaintiff replies that because Toshiba’s proposal includes the terms “variable” and
“discrete,” “Toshiba’s construction would confuse, rather than help the jury. As a result,
Toshiba falls prey to the dangers of using extrinsic evidence by arguing an overly complicated
position that does not find support in the specification of the Asserted Patents.” (Dkt. No. 101,
at 8.)
At the May 5, 2014 hearing, Plaintiff modified its proposal so as to agree with HTC that
no construction is necessary. Plaintiff then reiterated that Toshiba’s proposed negative limitation
is unsupported and would confuse rather than clarify the scope of the claims. Plaintiff also
argued that Toshiba’s proposal is overbroad because whereas the disputed term specifies “input,”
Toshiba’s proposal would encompass output.
After the May 5, 2014 hearing, the parties submitted alternative proposed constructions
as follows: (1) Plaintiff and HTC propose: “an input that has a property, which is quantifiable
through measurement and capable of having more than one possible value” (Dkt. No. 108); and
(2) Toshiba proposes: “Measureable characteristics of a user’s input that are inherently inexact.
For example, ‘measureable variable input’ from a keyboard could include the measured
characteristics of ‘timing, intervals, and durations of key presses and pauses,’ but does not
include keyed-in text characters” (Dkt. No. 109).
(2) Analysis
As a threshold matter, although Plaintiff and HTC propose that no construction is
necessary, the parties have presented a “fundamental dispute regarding the scope of a claim
16
term,” and the Court has a duty to resolve that dispute. O2 Micro Int’l Ltd. v. Beyond Innovation
Tech. Co., 521 F.3d 1351, 1362-63 (Fed. Cir. 2008).
Claims 10 and 15 of the ‘725 Patent are representative and recite (emphasis added):
10. A computer-implemented process comprising:
commencing signature input recording;
recording user input signals by type from at least one user-selected device
among a plurality of selectable user input devices connected to a single computer,
wherein a signal comprises a set of related software-recognizable data of
the same type received from at least one input device,
wherein a signal type comprises a category of measurable variable input
associated with at least one user-selectable input device, and
wherein at least one user-selectable input device affords recording a
plurality of signal types;
terminating said recording;
storing at least a portion of said recording;
creating a signature using said stored recorded user input signals from a
plurality of categories of measurable variable input; and
storing said signature.
***
15. A computer-implemented method for recording input and creating a signature
comprising:
recording user input signals by type from at least one user-selected device
among a plurality of selectable user input devices connected to a single computer,
wherein a signal comprises a set of related software-recognizable data of
the same type received from at least one input device,
wherein a signal type comprises distinct measurable variable input
associated with at least one user-selectable input device, and
wherein recording a plurality of signal types for at least one user-selected
device;
terminating said recording;
storing at least a portion of said recording;
creating a signature based at least in part upon at least a portion of said
stored recording; and
storing said signature.
The claims provide no explicit guidance regarding the meaning of “measurable variable
input.” Likewise, the specification does not use this term. As Defendants have submitted, this
term was introduced during prosecution when the patentee cancelled all of the original
17
application claims and presented new claims. (See Dkt. No. 96, Ex. 2, 1/17/2006 Request for
Continued Examination, at 2-6 (pp. 3-7 of 65 of Ex. 2).)
The Court therefore considers the specification as a whole for context. The specification
discloses that “[h]istorically, an account name would be an identification 3, and a password a
signature 4.” ‘078 Patent at 3:5-6. Also of note, the Background section of the ‘078 Patent uses
the words “measure” and “measured” when describing a reference that discloses using timing,
intervals, and durations of key presses and pauses:
U.S. Pat. No. 6,442,692 [Zilberman] disclosed a special microcontroller
embedded within a keyboard. The microcontroller was employed “to measure
certain characteristics of the user’s keystroke dynamics” independent of the
typed text, including the timing, intervals, and durations of key presses and
pauses. These measured characteristics were then used as integral information
for authenticating a user’s identity.
‘078 Patent at 1:21-28 (emphasis added; square brackets in original). The specification then
discloses keystroke intervals and mouse movements as examples of inputs:
A transmission 1 is user input into the computer 100 via one or more input
devices 106, whereupon termination of transmission 1 is recognizable, and
resulting in at least one signal 2. There may be different types 11 of
transmissions 1, examples of which include mouse 107 movements or clicks,
keyboard 108 entry, or combinations thereof. Other types 11 of transmissions 1
are possible with different input devices 106, such as, for example, voice
transmission 1 if the computer 100 is equipped with a microphone and speakers.
Multiple-device 106 transmission 1m is conceivable. An example of a multipledevice 106 transmission 1 is a combination of mouse 107 movement while one or
more keys 108 are pressed, as depicted in FIG. 6.
A signal 2 is a set of related software-recognizable data from a single
transmission 1. A plurality of signals 2 of different types 21 may emanate from a
single transmission 1. For example, typing a word may yield the signals 2 of
entered keys 210 and the timing between keystrokes 211. Another example:
mouse 107 movement of the cursor may yield signals 2 of locations 214,
velocities, duration; and shape pattern(s) (such as script signatures, drawn
characters, and so on) 215.
18
Id. at 3:16-37 (emphasis added; “1m” italicized as in original); see id. at 3:58-61 (“Historically,
identification 3 has been a keyed-in account name. Employing the invention, identification 3
comprises at least one signal 2 from at least one transmission 1.”).
As to the constituent term “variable,” the only relevant use of a form of that term, namely
“vary,” is in the disclosed example that “mouse click location may vary within a radius of 10
pixels and still be tolerated.” Id. at 4:19-20 (emphasis added). In other words, a recorded signal
and a measured signal can be deemed a “match” so long as they are within a certain “tolerance”:
Historically, validation 18 has required an absolute signal match 5 to input 22: for
example, no deviance from a character-based password has been permitted. With
mouse 107 movements, or other difficult-to-exactly-replicate signals 2, however,
some tolerance may be permitted. Signal 22 tolerance should be allowed when
appropriate, and may be set by software-determined protocol or user selection.
For example, deviance up to 10% from recorded signal match 5 for keystroke
timing 211 may be acceptable. Similarly, as another example, mouse click
location may vary within a radius of 10 pixels and still be tolerated.
Id. at 4:10-23 (emphasis added); see also id. at Cl. 5 (“comparing a subsequent signature
submission to said recording, and accepting said comparison within a predetermined degree of
inexactness”) & Cl. 13 (similar as to “designated tolerance of inexactness”).
These disclosures, as well as the above-quoted contrast between prior art passwords and
the disclosed examples of timing, movement, and patterns, are consistent with Defendants’
position that whereas user input of a particular key character always produces the same signal, a
“measureable variable input” signal must be measured and evaluated.
Along these lines, Toshiba’s expert, Dr. Chatterjee, has placed heavy emphasis on the
constituent term “measureable,” opining:
[I]f a quantity were discrete, then it would not need to be measured; it could
simply be identified. Therefore, it is my opinion that the word “measureable” in
the term “measureable variable input” is significant, and distinguishes it from
other types of input, i.e. discrete inputs. * * *
19
[A] discrete character-based password is readily identifiable by a computer and
would not require “measurement” to identify the characters.
(Dkt. No. 96-4, 4/8/2014 Chatterjee Decl., at ¶¶ 22-23.) Although expert opinions regarding
claim construction generally carry limited weight, Dr. Chatterjee’s opinions can be considered.
See Phillips, 415 F.3d at 1318 (“We have also held that extrinsic evidence in the form of expert
testimony can be useful to a court for a variety of purposes, such as to provide background on the
technology at issue, to explain how an invention works, [and] to ensure that the court’s
understanding of the technical aspects of the patent is consistent with that of a person of skill in
the art . . . .”).
Defendants have likewise submitted extrinsic dictionary definitions to show that a
“variable” input is an input that can vary, such as an analog input. Although this extrinsic
evidence must be considered with care, “[d]ictionaries or comparable sources are often useful to
assist in understanding the commonly understood meaning of words.” Id. at 1322.
Specifically, Toshiba submits that “variable” means “able or apt to vary; subject to
variation or changes; characterized by variations.” (Dkt. No. 96, Ex. B, Merriam Webster’s
Collegiate Dictionary 1306 (10th ed. 1999) (DEFTIB00001002); see id., at 1307
(DEFTIB00001003) (“vary” means “to make a partial change in : make different in some
attribute or characteristic”).) Toshiba also submits that “measure” means “the dimensions,
capacity, or amount of something ascertained by measuring,” “an estimate of what is to be
expected (as of a person or situation),” and “a measured quantity.” (Id., at 720
(DEFTIB00000998).) Defendants further submit a technical dictionary definition of “input” as
meaning “the information that is delivered to a data-processing device from the external world,
the process of delivering this data, or the equipment that performs this process.” (Id., Ex. C,
20
McGraw-Hill Dictionary of Scientific and Technical Terms 967 (4th ed. 1989)
(DEFTIB00000987).)
In connection with Toshiba’s suggestion that “the phrase ‘measureable variable input’
suggests that the input likely results in an analog signal, which is generally understood as a
continuous, variable, measureable quantity” (Dkt. No. 96, at p. 18 of 24), Toshiba submits that
“analog” is defined as “[o]f, relating to, or being a device in which data are represented by
variable measurable physical quantities.” (Dkt. No. 96, Ex. G, Webster’s II New College
Dictionary 40 (1999) (DEFTIB00001589); see id., Ex. H, Microsoft Computer Dictionary 26
(5th ed. 2002) (DEFTIB00001586) (“Pertaining to or being a device or signal that is
continuously varying in strength or quantity, such as voltage or audio, rather than based on
discrete units, such as the binary digits 1 and 0. A lighting dimmer switch is an analog device
because it is not based on absolute settings.”).) “Analog computer” is similarly defined as “a
computer that operates with numbers represented by directly measurable quantities (as voltages
or rotations).” (Id., Ex. F, Merriam Webster’s Collegiate Dictionary 41 (10th ed. 1994)
(DEFTIB00001583); see id., Ex. D, Random House Kernerman Webster’s College Dictionary
(2010) (DEFTIB00001593) (“a computer that represents data by measurable quantities, as
voltages, rather than by numbers”).)
These extrinsic dictionary definitions are of limited weight, however, as explained by
Phillips. 415 F.3d at 1321 (“[H]eavy reliance on the dictionary divorced from the intrinsic
evidence risks transforming the meaning of the claim term to the artisan into the meaning of the
term in the abstract, out of its particular context, which is the specification.”).
As to Toshiba’s proposal of “a variable quantity that can be measured, in contrast to a
discrete quantity or condition that can be identified exactly,” the meaning of “discrete quantity or
21
condition” is unclear. Even if that phrase were deemed fully described by the subsequent phrase
“that can be identified exactly,” Toshiba’s proposal is inconsistent with the disclosed
embodiments. For example, the above-quoted examples of keystroke timing and mouse
movements presumably may be “identified exactly” (to whatever extent permitted by those input
devices) but are expected to differ slightly from recorded signals. See ‘078 Patent at 4:10-23.
Toshiba’s proposal to exclude that which can be “identified exactly” would thus exclude the
preferred embodiments. To do so would be disfavored. See Vitronics Corp. v. Conceptronic
Inc., 90 F.3d 1576, 1582-83 (Fed. Cir. 1996) (noting that a claim interpretation in which the only
embodiment or a preferred embodiment “would not fall within the scope of the patent claim . . .
is rarely, if ever, correct and would require highly persuasive evidentiary support”).
As to the parties’ above-mentioned alternative proposed constructions submitted after the
hearing, the proposal by Plaintiff and HTC is overbroad, potentially encompassing any input, and
the proposal by Toshiba specifically excludes key characters but does little else. Toshiba’s
proposal may also introduce confusion as to what is “inherently” inexact. Finally, to whatever
extent any of Toshiba’s proposals demand that a “measurable variable input” must be an analog
input, the Court expressly rejects such proposals as lacking support in the intrinsic evidence.
Instead, the significance of being “measurable” is evident from the above-quoted portion
of the Background section of the ‘078 Patent, which discloses that “measured characteristics” are
different from distinctly identifiable inputs such as key characters. See ‘078 Patent at 1:21-28.
Plaintiff’s opening brief appears to acknowledge this distinction. (See Dkt. No. 93, at 15 (noting
that “passwords and passphrases . . . generally do not allow any type of deviation”).) This
distinction—coupled with the above-quoted intrinsic and extrinsic evidence that a “variable”
input produces a signal that is measured and that can be deemed to match a recorded signal
22
despite some variation between the measured signal and the recorded signal—should be given
effect together with finding that a “measureable variable input” is an input quantity that can vary
and that must be measured.
The Court therefore hereby construes “measurable variable input” to mean “an input
quantity that can vary and that must be measured, as opposed to an input that is distinctly
identifiable.”
C. “signal type”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
“a category of measurable variable input
associated with at least one user-selectable
input device” 10
“a category of measurable variable input
associated with the signal received from at
least one user-selectable input device” 11
(Dkt. No. 93, at 12-13; Dkt. No. 96, at p. 21 of 24.) The parties submit that this disputed term
appears in Claims 1, 3, 9, 12, and 15 of the ’078 Patent, Claims 1, 7, 10, 11, 15, 16, and 17 of the
’725 Patent, and Claims 1, 12, 13, and 14 of the ’415 Patent. (Dkt. No. 89, Ex. A, at p. 1 of 14;
Dkt. No. 93, at 12 n.4; Dkt. No. 96, at p. 21 n.5 of 24.)
(1) The Parties’ Positions
Plaintiff’s opening arguments addressed Defendants’ previously proposed constructions
and are no longer pertinent. (See Dkt. No. 93, at 13-14; Dkt. No. 96, at p. 21 of 24.)
10
In the parties’ briefing and joint charts, Plaintiff’s proposed construction included square
brackets around “measurable variable input” and “input device.” At the May 5, 2014 hearing,
Plaintiff explained that those square brackets were carried over from disclosures between the
parties and have no significance in the present proceedings.
11
HTC previously proposed: “a set of software recognizable data of the same category of
measurable variable input associated with at least one user-selectable input device.” (Dkt.
No. 89, Ex. A, at p. 1 of 14.) Toshiba previously proposed: “a type of measurable variable input
associated with at least one user-selectable input device.” (Id.)
23
Defendants respond by agreeing with Plaintiff that “the term ‘signal type’ should be
construed the same way for all three patents-in-suit.” (Dkt. No. 96, at p. 21 of 24.) Defendants
also submit that the parties agree that a “signal type” is “a category of measurable variable
input,” as recited by the claims. (Id.) Defendants argue:
Defendants’ proposed construction gives meaning to the patentee’s clear
distinction between signal types and transmission types. Indeed, Defendant[s’]
construction clarifies for the jury that a “signal type” is associated with the signal,
as opposed to the transmission. Moreover, Defendant[s’] proposed construction
clarifies that the claimed association between the measurable variable input and
the user-selectable input device requires that the measurable variable input be
received from the input device.
(Id., at p. 22 of 24.) Defendants conclude that “the ‘measurable variable input’ must be ‘received
from the input device,’ such that a signal of a distinct signal type results at the termination of the
input, or at the termination of the transmission.” (Id.)
Plaintiff replies that “it is not clear from Defendants’ proposed construction whether it is
the ‘category’ that is received or the ‘signal’ that is received from the at least one user selectable
input device.” (Dkt. No. 101, at 10.) Plaintiff submits that “it is readily apparent that ‘signal
type’ is related to ‘signal’ and that no clarification is required as it is unlikely that the jury will be
confused by ‘signal type’ and ‘transmission type.’” (Id.)
(2) Analysis
Claim 1 of the ‘078 Patent and Claim 1 of the ‘415 Patent are representative and recite
(emphasis added):
1. A computer-implemented method for creating a signature for subsequent
authentication comprising:
indicating to a user commencement of signature input recording;
recording user input signals by type from at least one user-selected device
among a plurality of selectable user input devices,
wherein a signal comprises a set of related software-recognizable data of
the same type received from at least one input device, and
24
wherein at least one user-selectable input device affords recording a
plurality of signal types, and
wherein a signal type comprises a category, among a plurality of possible
categories, of measurable variable input associated with at least one userselectable input device;
terminating said recording;
creating a signature based at least in part upon said recording; and
storing said signature.
***
1. A computing device which provides secured access, the computing device
comprising:
a program memory;
a data storage memory;
first and second input devices both of which are part of the computing
device and are selectable by a user via the computing device to allow the user to
generate a reference signature that can be compared to a future submitted
signature for authentication purposes to allow it to be determined whether access
to the computing device should be granted based on the user selection, wherein at
least one of the first and second user selectable input devices is of a type of input
device other than a keyboard;
a processor operatively interfaced with the program memory, the data
storage memory, and the first and second user selectable input devices;
a first set of instructions stored in the program memory that, when
executed by the processor, allow a user to select at least one signal type, among at
least two different user selectable signal types, to be received and stored in the
memory, the at least two different signal types being associated with the first or
second user selectable input devices;
a second set of instructions stored in the memory that are adapted to be
executed after the first set of instructions has been executed, the second set of
instructions, when executed by the processor, causing
(a) input data of at least one signal type from the user selected
one of the first and second input devices to be generated
and then recorded in the data storage memory,
(b) a reference signature to be created which comprises in part
at least a portion of the input data recorded in the data
storage memory, and
(c) the reference signature to be stored in the data storage
memory; and
a third set of instructions stored in the program memory that are adapted to
be executed after both the first and second sets of instructions have been executed,
the third set of instructions, when executed by the processor, retrieving the
reference signature from the data storage memory and comparing it to a
subsequent signature submission signal to allow a determination to be made as to
whether or not access to the computing device should be granted.
25
The specification discloses multiple transmission types as well as multiple signal types:
A transmission 1 is user input into the computer 100 via one or more input
devices 106, whereupon termination of transmission 1 is recognizable, and
resulting in at least one signal 2. There may be different types 11 of
transmissions 1, examples of which include mouse 107 movements or clicks,
keyboard 108 entry, or combinations thereof.
***
A plurality of signals 2 of different types 21 may emanate from a single
transmission 1. For example, typing a word may yield the signals 2 of entered
keys 210 and the timing between keystrokes 211. Another example: mouse 107
movement of the cursor may yield signals 2 of locations 214, velocities, duration;
and shape pattern(s) (such as script signatures, drawn characters, and so on) 215.
A transmission 1 of composite signals 2c comprising a plurality of simple
signals 2s is conceivable. For example, a multiple-device 106 transmission 1m
produces a composite signal 2c if matching to signals 2 of both devices 106 is
required, as does requiring signal match 5 of multiple signal types 21 from a
single-device transmission 1.
‘078 Patent at 3:16-21 & 3:30-43 (emphasis added; “1m,” “2c,” and “2s” italicized as in
original). Figure 10 illustrates “signal types” that “the user may select” (see id. at 5:1-19):
On balance, even though Claim 1 of the ‘078 Patent recites a “signal” that is “received,”
nothing in Figure 10 or the above-quoted disclosure in the specification justifies Defendants’
proposal that the term “signal type” must be associated with a signal that has been received, as
26
opposed to a signal that is “emanat[ing]” or that is being received. See id. at 3:30-31.
Nonetheless, Defendants properly propose that a “signal type” is associated not just with a userselectable input device but rather with a signal from such a device. See id. at 3:30-43.
The Court therefore hereby construes “signal type” to mean “a category of measurable
variable input associated with a signal from at least one user-selectable input device.”
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.
SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 12th day of May, 2014.
27
____________________________________
RODNEY GILSTRAP
UNITED STATES DISTRICT JUDGE
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