Biscotti Inc. v. Microsoft Corp.
Filing
120
CLAIM CONSTRUCTION MEMORANDUM AND ORDER. Signed by Magistrate Judge Roy S. Payne on 11/9/2016. (ch, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
BISCOTTI INC.,
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v.
MICROSOFT CORP.
Case No. 2:13-cv-01015-JRG-RSP
CLAIM CONSTRUCTION
MEMORANDUM AND ORDER
On October 11, 2016, the Court held an oral hearing to determine the proper construction
of the disputed claim terms in U.S. Patent No. 8,144,182 (the “’182 Patent”). The Court has
considered the parties’ claim construction briefing (Dkt. Nos. 103, 107 and 108) and arguments.
Based on the intrinsic and extrinsic evidence, the Court construes the disputed terms in this
Memorandum Opinion and Order. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005);
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015).
BACKGROUND
Plaintiff Biscotti Inc. (“Biscotti”) asserts more than 20 claims from the ’182 Patent
against Defendant Microsoft Corp. (“Microsoft”), including independent claims 1 and 69 (and
claims that depend from independent claim 6). The ’182 Patent relates to a video conferencing
system. The Abstract of the ’182 Patent recites:
Novel tools and techniques for providing video calling solutions. In some such
solutions, a video calling device resides functionally inline between a set-top box
and a television set. Such solutions can provide, in some cases, high performance
1
video calling, high video quality, simplified installation, configuration and/or use,
and/or the ability to enjoy video calling in an inclusive, comfortable environment,
such as a family room, den, or media room.
’182 Patent Abstract. The ’182 Patent describes the use of a system of two video communication
devices to allow a first user to conduct a video call with a remote second user through a network
connection such as the Internet. Id. at Figure 1A, 5:39-60.1 Figure 1A illustrates an embodiment
of the system.
Id. at Figure 1A. A video communication device at the location of each user may include an
audio capture device and a video capture device. Id. at Figure 4, 11:3-12. Each video
communication device may be coupled to a display device such as a television. Id. at Figure 1A,
5:56-60. The video communication devices may be placed functionally inline between a set-top
1
As used herein references to the ’182 Patent will be in the Col:Line format of XX:YY.
2
box and a television set. Id. at Abstract, 4:64-66. In this manner, the system may be used in
environments such as a family room, den or media room. Id. at Abstract, 2:14:19. The video
communication devices may have HDMI input and output interfaces. The HDMI input interface
may receive an output from the set-top box. Id. at 2:38-51. The output of the first video
communication device may be a consolidated audiovisual output stream comprised of the video
calling audiovisual stream from the remote second communication device and other audiovisual
data, such as the television signal from the set-top box. Id. at 3:33-47, 5:10-25.
LEGAL PRINCIPLES
“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention
to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303,
1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys.,
Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start
by considering the intrinsic evidence. Id. at 1313; C.R. Bard, Inc. v. U.S. Surgical Corp., 388
F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group, Inc.,
262 F.3d 1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the
specification, and the prosecution history. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at
861. The general rule—subject to certain specific exceptions discussed infra—is that each claim
term is construed according to its ordinary and accustomed meaning as understood by one of
ordinary skill in the art at the time of the invention in the context of the patent. Phillips, 415 F.3d
at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure
Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (“There is a heavy
presumption that claim terms carry their accustomed meaning in the relevant community at the
relevant time.”) (vacated on other grounds).
3
“The claim construction inquiry. . . begins and ends in all cases with the actual words of
the claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998).
“[I]n all aspects of claim construction, ‘the name of the game is the claim.’” Apple Inc. v.
Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362,
1369 (Fed. Cir. 1998)). First, a term’s context in the asserted claim can be instructive. Phillips,
415 F.3d at 1314. Other asserted or unasserted claims can also aid in determining the claim’s
meaning, because claim terms are typically used consistently throughout the patent. Id.
Differences among the claim terms can also assist in understanding a term’s meaning. Id. For
example, when a dependent claim adds a limitation to an independent claim, it is presumed that
the independent claim does not include the limitation. Id. at 1314–15.
“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id.
(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)).
“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is
dispositive; it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am.
Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). But, “‘[a]lthough the specification may aid the
court in interpreting the meaning of disputed claim language, particular embodiments and
examples appearing in the specification will not generally be read into the claims.’” Comark
Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v.
Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); see also Phillips, 415
F.3d at 1323. “[I]t is improper to read limitations from a preferred embodiment described in the
specification—even if it is the only embodiment—into the claims absent a clear indication in the
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intrinsic record that the patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v.
Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).
The prosecution history is another tool to supply the proper context for claim
construction because, like the specification, the prosecution history provides evidence of how the
U.S. Patent and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415
F.3d at 1317. However, “because the prosecution history represents an ongoing negotiation
between the PTO and the applicant, rather than the final product of that negotiation, it often lacks
the clarity of the specification and thus is less useful for claim construction purposes.” Id. at
1318; see also Athletic Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996)
(ambiguous prosecution history may be “unhelpful as an interpretive resource”).
Although extrinsic evidence can also be useful, it is “‘less significant than the intrinsic
record in determining the legally operative meaning of claim language.’” Phillips, 415 F.3d at
1317 (quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a
court understand the underlying technology and the manner in which one skilled in the art might
use claim terms, but technical dictionaries and treatises may provide definitions that are too
broad or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly,
expert testimony may aid a court in understanding the underlying technology and determining
the particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
assertions as to a term’s definition are entirely unhelpful to a court. Id. Generally, extrinsic
evidence is “less reliable than the patent and its prosecution history in determining how to read
claim terms.” Id. The Supreme Court recently explained the role of extrinsic evidence in claim
construction:
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In some cases, however, the district court will need to look beyond the patent’s
intrinsic evidence and to consult extrinsic evidence in order to understand, for
example, the background science or the meaning of a term in the relevant art
during the relevant time period. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546
(1871) (a patent may be “so interspersed with technical terms and terms of art that
the testimony of scientific witnesses is indispensable to a correct understanding of
its meaning”). In cases where those subsidiary facts are in dispute, courts will
need to make subsidiary factual findings about that extrinsic evidence. These are
the “evidentiary underpinnings” of claim construction that we discussed in
Markman, and this subsidiary fact finding must be reviewed for clear error on
appeal.
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
A. Departing from the Ordinary Meaning of a Claim Term
There are “only two exceptions to [the] general rule” that claim terms are construed
according to their plain and ordinary meaning: “1) when a patentee sets out a definition and acts
as his own lexicographer, or 2) when the patentee disavows the full scope of the claim term
either in the specification or during prosecution.”2 Golden Bridge Tech., Inc. v. Apple Inc., 758
F.3d 1362, 1365 (Fed. Cir. 2014) (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d
1362, 1365 (Fed. Cir. 2012)); see also GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d
1304, 1309 (Fed. Cir. 2014) (“[T]he specification and prosecution history only compel departure
from the plain meaning in two instances: lexicography and disavowal.”). The standards for
finding lexicography or disavowal are “exacting.” GE Lighting Solutions, 750 F.3d at 1309.
To act as his own lexicographer, the patentee must “clearly set forth a definition of the
disputed claim term,” and “clearly express an intent to define the term.” Id. (quoting Thorner,
669 F.3d at 1365); see also Renishaw, 158 F.3d at 1249. The patentee’s lexicography must
appear “with reasonable clarity, deliberateness, and precision.” Renishaw, 158 F.3d at 1249.
2
Some cases have characterized other principles of claim construction as “exceptions” to the general rule,
such as the statutory requirement that a means-plus-function term is construed to cover the corresponding
structure disclosed in the specification. See, e.g., CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
1367 (Fed. Cir. 2002).
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To disavow or disclaim the full scope of a claim term, the patentee’s statements in the
specification or prosecution history must amount to a “clear and unmistakable” surrender. Cordis
Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner, 669 F.3d at
1366 (“The patentee may demonstrate intent to deviate from the ordinary and accustomed
meaning of a claim term by including in the specification expressions of manifest exclusion or
restriction, representing a clear disavowal of claim scope.”). “Where an applicant’s statements
are amenable to multiple reasonable interpretations, they cannot be deemed clear and
unmistakable.” 3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir.
2013).
B. Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA)3
Patent claims must particularly point out and distinctly claim the subject matter regarded
as the invention. 35 U.S.C. § 112, ¶ 2. A claim, when viewed in light of the intrinsic evidence,
must “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). If it does not, the claim
fails § 112, ¶ 2 and is therefore invalid as indefinite. Id. at 2124. Whether a claim is indefinite is
determined from the perspective of one of ordinary skill in the art as of the time the application
for the patent was filed. Id. at 2130. As it is a challenge to the validity of a patent, the failure of
any claim in suit to comply with § 112 must be shown by clear and convincing evidence. Id. at
2130 n.10. “[I]ndefiniteness is a question of law and in effect part of claim construction.” ePlus,
Inc. v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012).
When a term of degree is used in a claim, “the court must determine whether the patent
provides some standard for measuring that degree.” Biosig Instruments, Inc. v. Nautilus, Inc.,
3
Because the application resulting in the patent was filed before September 16, 2012, the
effective date of the AIA, the Court refers to the pre-AIA version of § 112.
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783 F.3d 1374, 1378 (Fed. Cir. 2015) (quotation marks omitted). Likewise, when a subjective
term is used in a claim, “the court must determine whether the patent’s specification supplies
some standard for measuring the scope of the [term].” Datamize, LLC v. Plumtree Software, Inc.,
417 F.3d 1342, 1351 (Fed. Cir. 2005); accord Interval Licensing LLC v. AOL, Inc., 766 F.3d
1364, 1371 (Fed. Cir. 2014) (citing Datamize, 417 F.3d at 1351).
AGREED TERMS
In the briefing, the parties agreed to the following terms:
Term
Agreed Construction
“a first processor to process the captured
plain and ordinary meaning
video stream and a second processor to
process a remote video stream received
from the second video communication
device”
“transmitting the series of data packets over plain and ordinary meaning
a private content delivery network”
(Dkt. No. 107 at 1.)
DISPUTED TERMS
1. In Communication Terms
“a second video communication device in communication with the first video
communication device over the Internet” [Claim 1]
Biscotti’s Proposed Construction
plain meaning / no construction needed
Microsoft’s Proposed Construction
This limitation requires that the two video
communication devices be in
communication with each other, rather than
merely have the capability to communicate.
Alternatively:
“a second video communication device to
communicate with the first video
communication device over the Internet”
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“a wireless network interface in communication with a wireless local area network” [Claim
1]
Biscotti’s Proposed Construction
plain meaning / no construction needed
Microsoft’s Proposed Construction
This limitation requires that the wireless
network interface be in communication
with a wireless local area network, rather
than merely have the capability to
communicate with a wireless local area
network.
Alternatively:
“a wireless network interface to
communicate with a wireless local area
network”
The parties dispute whether “in communication” references a structural limitation
describing the system’s interconnection of elements or merely references a functional limitation
that only requires the capability to communicate.
Positions of the Parties
Microsoft contends that “in communication with” is a structural limitation that requires
the claimed devices to be connected to each other. Microsoft asserts that Biscotti proposes only
requiring the capability to communicate. (Dkt. No. 107 at 3-4.) Microsoft asserts that the claim
language does not recite a capability but rather that two claim elements are connected
components, i.e., “in communication with” each other. Microsoft asserts that the claim could
have been drafted otherwise, but was not. Microsoft asserts that it is not seeking the addition of
a functional limitation but rather asserts that the claim language provides a structural
requirement. Microsoft asserts that the recited connection is a structural part of the claimed
system, not a function performed by the system. (Dkt. No. 107 at 4.)
Microsoft asserts that
these elements should be construed to have a structural element where the two recited elements
are “in communication.”
Biscotti contends that the words “in communication with” refer to the capability of the
video communication devices to communicate with one another, and do not suggest they must
actually engage in active communication. (Dkt. No. 108 at 4.) Biscotti contends that Microsoft’s
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argument that “a connection” is required is divorced from Microsoft’s construction, as
“connection” is not referred to in Microsoft’s construction. (Dkt. No. 108 at 3.) Biscotti contends
that Microsoft’s assertion that “in communication” requires a connection lacks support. Biscotti
contends that nothing in the specification requires a structural connection between the video
communication devices (VCDs). (Id. at 4.) Biscotti contends that the specification merely
describes a VCD that receives a connection request from one of many possible second VCDs and
initiates an Internet connection only after accepting the request. Biscotti contends that the
specification also describes a generic wireless network interface 455 that can connect to any
wireless local area network (LAN). (Id.)
Analysis
At the hearing, the Court provided a preliminary construction for the parties to consider:
Plain and ordinary meaning. Note: This limitation requires that the two video
devices4 be in communication with each other, rather than merely have the
capability to communicate.
Biscotti agreed to this construction with the understanding that the construction does not
contemplate including a method step. (Dkt. No. 118 at 75.) Microsoft also agreed to the
preliminary construction. (Id. at 78.)
The Court adopts the preliminary construction. The issue presented to the Court is
relevant to claim 1, and the claim language itself in that claim can guide the Court’s construction
of claim terms. Phillips, 415 F.3d at 1314 (“the context in which a term is used in the asserted
claim can be highly instructive”). Here, the claim is drafted as a system claim having two
elements: a first video communication device and a second video communication device.
Further, the claim describes the structural relationship of the two claimed elements: the second
4
The devices being the (i) “second video communication device” and the “first video communication
device” or (ii) the “wireless network interface” and the “wireless local area network.”
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video communication device being “in communication with the first video communication
device over the Internet.”
The claim then proceeds through a wherein clause to provide
additional detail as to what comprises the first video communication device. In the context of
the claim, the disputed term “in communication” provides the structural relationship of the two
video communication devices that comprise the system. The “in communication” term does not
merely provide a capability description of the one structure in the claim but rather describes the
nature of the system itself: that the two video devices are in communication over the Internet.
The “in communication” language is not a method step, rather, the language describes a
structural relationship. This conforms to the plain language of the claim. It is noted that the
context and organization of claim 1 is different from claim 6, which is drafted as a system claim
directed only to one side of the communication system (the claim 6 system comprising the first
video communication device). The differences between these two claims provide further support
regarding the structural nature of the claim elements of claim 1. Id. (noting that differences
among claims can provide guidance to a claim’s meaning).
In context, the relevant portion of claim 1 is not merely describing the capability of the
second video communication device but rather describing the claimed relationship of the two
video communication devices that comprise the system. Further, the wireless network elements
describe how the communication is provided.
The Court finds that “a second video communication device in communication with
the first video communication device over the Internet” has its plain and ordinary
meaning. This limitation requires that the first and second video communication devices be
in communication with each other, rather than merely have the capability to communicate.
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The Court finds that “a wireless network interface in communication with a wireless
local area network” has its plain and ordinary meaning. This limitation requires that the
wireless network interface and the wireless local area network be in communication with
each other, rather than merely have the capability to communicate.
2. “an audio watermark signal” [Claim 1] / “an audio watermark” [Claims 44 and 45]
Biscotti’s Proposed Construction
an identifiable signal in an audio stream
Microsoft’s Proposed Construction
an inaudible (or at least unobtrusive) and
identifiable signal in an audio stream
The parties dispute whether or not the term is limited to the embodiment within the
specification that describes the audio watermark as “inaudible (or at least unobtrusive).”
Positions of the Parties
Biscotti contends that the specification describes inserting an audio watermark into an
audio stream and that the audio watermark is identifiable. Specifically, Biscotti contends that an
audio watermark is inserted into an audio stream output by the first video communication
device and transmitted to an external audio receiver (such as the TV). If the TV is on and
enabled to play audio, the audio watermark will be played through the TV’s speakers. (Dkt. No.
103 at 7 (citing ’182 Patent at 20:20-31).) Biscotti states that the first video communication
device samples this audio and analyzes the sampled signal to identify the audio watermark; if it
is able to identify the watermark, it knows that the TV is on and able to alert the user of the
incoming call. (Id. (citing ’182 Patent at 20:31-45).) Biscotti points to the specification as
stating, “determining whether the watermark can be identified in the captured audio stream.”
’182 Patent 20:40-41.
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Biscotti objects to the addition of “inaudible (or at least unobtrusive).”
Biscotti
contends that Microsoft is importing an embodiment from the specification: “[i]n certain
embodiments this waveform may be selected to be easily recognizable to the video
communication device but inaudible (or at least unobtrusive) to the human ear.” ’182 Patent
20:17-20. Biscotti highlights that this passage states “in certain embodiments” and “may.”
(Dkt. No. 103 at 8.) Biscotti also contends that Microsoft’s construction conflicts with the
description of other watermark embodiments such as visible watermarks which are described as
either visible or invisible/inconspicuous: “[i]n some cases this watermark may be present in the
STB video stream, either as a visible image, such as a network logo in the picture or as an
invisible and/or inconspicuous artifact.” ’182 Patent 25:20-23.
Biscotti also contends that Microsoft’s construction is inconsistent with Microsoft’s IPR
positions. Biscotti contends that in the IPRs, Microsoft adopted Biscotti’s construction and
argued that a mere “noise burst” met this limitation. (Dkt. No. 103 at 8-9.)
Microsoft asserts that the specification states that the audio watermark “may be inserted
periodically on an appropriate interval and/or may be a continuous waveform inserted into the
output audio stream.” ’182 Patent 20:24-27. Microsoft also cites the passage: “[i]n certain
embodiments this waveform may be selected to be easily recognizable to the video
communication device but inaudible (or at least unobtrusive) to the human ear.” Id. at 20:17-20.
Microsoft asserts that in both periodic and continuous insertion, the watermark would interfere
with regular audio output unless it was “inaudible (or at least unobtrusive).” Microsoft asserts
that if its construction was not adopted, the claim limitation would be inoperable.
Microsoft asserts that the “certain embodiments” in question were just the embodiments
that use an audio watermark (as opposed to the embodiments in which no audio watermark was
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used) because the audio watermark is only useful for embodiments using external speakers.
(Dkt. No. 107 at 17 (citing ’182 Patent 9:57-10:16).) Microsoft asserts that Biscotti’s reference
to other watermarks is not relevant as the specification makes clear that the other watermarks
are different. ’182 Patent 25:15-20.
As to the IPRs, Microsoft contends that the standard for claim construction in an IPR is
different from that applied in court. Microsoft contends that it adopted Biscotti’s construction
for the purposes of the “broadest reasonable interpretations standard.” (Dkt. No. 107 at 17.)
Further, Microsoft notes that in the IPR, Microsoft also provided invalidity positions directed
toward the narrower construction Microsoft proposes here. (Id. at 18.)
As to Microsoft’s argument that no other embodiments are shown, Biscotti contends
that the language “[i]n certain embodiments this waveform may…” expressly contemplates
other embodiments. ’182 Patent 20:17-20. As to Microsoft’s argument that the watermark must
be inaudible or unobtrusive “to function properly,” Biscotti contends that Microsoft cites no
intrinsic or extrinsic evidence for such a statement. (Dkt. No. 108 at 5.)
Analysis
Microsoft merely points to a preferred embodiment as rationale to incorporate a
limitation from the specification. However, even if only a single embodiment exists, the
preferred embodiment is not inherently required to be read into the claims. See Arlington
Industries, Inc. v. Bridgeport Fittings, Inc., 632 F.3d 1246, 1254 (Fed. Cir. 2011) (“Even where a
patent describes only a single embodiment, claims will not be read restrictively unless the
patentee has demonstrated a clear intention to limit the claim scope using words or expressions
of manifest exclusion or restriction.”) (internal citations omitted). Microsoft has not pointed to
words or expressions of manifest exclusion or restriction. Moreover, even the language cited by
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Microsoft is surrounded by permissive language: “may” and “in certain embodiments.” 20:1720. Further, though not directed to “audio” watermarks, the passage at 25:20-23 indicates that
“watermarks,” in general, need not be unnoticeable to the human senses, further counseling
against Microsoft’s construction.5
The Court construes “an audio watermark signal” / “audio watermark” to mean
“an identifiable signal in an audio stream.”
3. “instructions for inserting an audio watermark in the audio output” [Claim 44]
Biscotti’s Proposed Construction
plain meaning / no construction needed
Microsoft’s Proposed Construction
instructions for superimposing “an audio
watermark” over the existing audio output
The parties dispute whether the term is limited to “superimposing” over the existing
audio output.
Positions of the Parties
Biscotti contends that the claim language is easily understood and also well within a lay
person’s understanding. Biscotti notes that the specification uses nearly identical language to
the claims: “[t]he method 800 further comprises inserting this audio watermark into an output
audio stream.” ’182 Patent 20:20-22. Biscotti contends that “superimposing” does not appear
anywhere in the claims or specification and that Microsoft has not cited intrinsic or extrinsic
evidence justifying the inclusion of “superimposing.” (Dkt. No. 103 at 9.) Biscotti contends
that the only passage Microsoft relies on uses “insert.” (Id. (citing ’182 Patent 20:21-31).)
5
Biscotti, for this term and others, in essence also argues that Microsoft should be barred from asserting a
construction narrower than what Microsoft asserted in the IPRs. However, the law is clear that the IPR
standard (broadest reasonable interpretation) is different from that to be applied by this Court. Cuozzo
Speed Technologies, LLC v. Lee, 136 S. Ct 2131, 2142 (2016). Moreover, the record is clear that
Microsoft was not contending that its IPR constructions were the proper construction under the Phillips
standard applied by this Court.
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Microsoft contends that Biscotti seeks to tell the jury that any sound output by the
device has been “inserted.” (Dkt. No. 107 at 18.) Microsoft contends that simply outputting
and playing the audio watermark is not “inserting”, as such outputting and playing is “replacing
the audio output.” (Id.) Microsoft asserts that “inserting” requires adding or superimposing the
watermark on the existing audio output. (Id.) Microsoft contends that claim 44 depends from
claims 41 and 6 and that those claims recite providing an “audio output to an audio receiver”
(claim 6) and “a speaker to play the audio output” (claim 41). Microsoft contends that in claim
44, it is in this “audio output” (the existing output) that the audio watermark is inserted.
Microsoft asserts that the specification describes this as:
…inserting this audio watermark into an output audio stream and transmitting the
output audio stream on one or more of the output audio interfaces for reception by
an external audio receiver (block 810). The watermark may be inserted
periodically on an appropriate interval and/or may be a continuous waveform
inserted into the output audio stream.
’182 Patent 20:21-27.
Microsoft asserts that for continuous or periodic insertion, the
watermark must be superimposed on the audio from the video conferencing device or the settop box. Microsoft asserts that not superimposing the audio would interrupt the regular audio,
which would be unacceptable in any usable system. (Dkt. No. 107 at 19.)
In reply, Biscotti contends that Microsoft merely relies on attorney argument to state
that to be “inserted,” a watermark must be “superimposed” and that not “superimposing” would
be “unacceptable.” (Dkt. No. 108 at 6.)
Analysis
The specification refers to “inserting.” ’182 Patent 20:20-22, 20:24-25 and 20:28-31.
Microsoft has not cited to any portion of the specification mandating that “inserting” should be
limited to “superimpose.”
Microsoft has not even pointed to any description within the
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specification referencing “superimposing” the audio watermark. Though Microsoft asserts that
only superimposing would provide a usable system, Microsoft has not presented any evidence
of such. Microsoft also has not pointed to any evidence indicating that the plain and ordinary
meaning of the term should not control or that a person skilled in the art would need additional
guidance for construction of the term. The Court rejects Microsoft’s contention that “inserting”
is limited to “superimposing.”
The Court finds that the term “instructions for inserting an audio watermark in
the audio output” has its plain and ordinary meaning.
4. “set-top box video stream” [Claims 1, 24, 28, 29, 31, 33, 37, 69, 70]
Biscotti’s Proposed Construction
plain meaning / no construction needed
Alternatively:
“a video stream from a set-top box”
Microsoft’s Proposed Construction
the video stream received by the “first
video communication device” from the settop box
The parties’ dispute primarily focuses on whether the term’s construction should
include a reference as to what receives the stream.
Positions of the Parties
Biscotti contends that the term refers to a video stream from a set-top box, and needs no
further construction. Biscotti asserts that although claim 1 includes “instructions for receiving a
high definition set-top box audiovisual stream” by the first communication device, claim 1 does
not explicitly require that the “video stream” be “received by” the first communication device.
(Dkt. No. 103 at 20.) Biscotti contends that the remaining claims, claims 24, 69 and their
dependents, independently include the language that the first communication device “receives a
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set-top box video stream.” (Id.)6 Biscotti asserts that claim 1 only requires that the instructions
should be present. Biscotti further asserts that just because the dependent claims include the
“receives” language, such language should not be rewritten into claim 1. (Id.)
Microsoft contends that claim 1 recites a “set of instructions executable by the at least
one processor” and “instructions for receiving a high definition set-top box audiovisual stream
from the set-top box video stream.” Microsoft contends claim 1 includes a processor within the
first video communication device that performs “instructions for receiving.”
Microsoft
contends that the video stream must be received, because claim 1 recites that the processor in
the “first video communication device” performs the “instructions for receiving.” (Dkt. No. 107
at 9-10.)
Microsoft asserts that Biscotti’s admission that claims 24 and 69 receive the video
stream indicates that the receiving should be part of the definition. Microsoft contends that O2
Micro mandates a construction because Biscotti simultaneously admits that some claims require
Microsoft’s limitations while others do not. (Id. at 10.)
Analysis
The term “set-top box video stream” in itself does not mandate Microsoft’s proposed
additional limitations. The parties do not appear to dispute that one skilled in the art would not
need construction of the term itself as both parties merely repeat the language of the term in
their constructions. Microsoft asserts that the surrounding claim language mandates its
construction. However, the surrounding claim language itself controls the meaning of such
surrounding claim language. In claim 1, the surrounding language is “instructions for receiving
a high definition set-top box audiovisual stream from the set-top box video stream.” Such
6
At the hearing, Biscotti stated that the language of claim 24 only required a capability to receive. (Dkt.
No. 118 at 9-11.)
18
language merely requires the inclusion of instructions that may carry out the claimed receiving.
In contrast, independent claim 69 recites the method step of “receiving, on the audiovisual input
interface, a set-top box audiovisual from a set-top box.” In that claim, the surrounding
“receiving” step limitations are explicitly required. Thus, it is the surrounding language of each
claim that sets whether the limitations sought by Microsoft are present or not, not the term “settop box video stream” itself. The Court’s construction adopts the plain meaning of the term.
The Court construes “set-top box video stream” to mean “video stream from a settop box.”
5. Resolution Terms
“display resolution of [[the] set-top box video stream][the remote video stream]” [Claim 1,
29, 33]
Biscotti’s Proposed Construction
plain meaning / no construction needed
Alternatively:
“the amount of detail of [the set-top box
video stream] [the remote video stream]”
Microsoft’s Proposed Construction
the number of pixels in the horizontal and
vertical directions of the video in [[the] settop box video stream][the remote video
stream]
“a resolution of the consolidated output video stream” [Claims 34, 35, 36]
Biscotti’s Proposed Construction
plain meaning / no construction needed
Alternatively:
“the amount of detail of the consolidated
output video stream”
Microsoft’s Proposed Construction
the number of pixels in the horizontal and
vertical directions of the video in “the
consolidated output video stream”
The parties dispute whether or not “resolution” is limited to “the number of pixels in the
horizontal and vertical directions.”
19
Positions of the Parties
Biscotti cites to dictionary definitions to assert that it is well known that “resolution”
refers to the amount of detail in a video. (Dkt. No. 103 at 13.) Biscotti contends that this is
consistent with the claims which reference “detecting” and “setting” the resolution. Biscotti
contends that the process of detecting and setting the resolution is one of the keys to transitioning
from a television program to a video call, enabling users to watch television while
simultaneously conduction a video call. (Id. (citing 21:10-24:4).)
Biscotti objects that Microsoft limits “resolution” to a particular aspect of the amount of
detail in a video: “[i]n an aspect, the STB stream has a display area comprising a plurality of
pixels. This plurality of pixels defines the display resolution of the STB video signal (e.g. 1920
horizontal pixels x 1080 pixels for a 1080p signal).” ’182 Patent 21:33-35. Biscotti asserts that
“resolution” does not have to be exclusively defined by a plurality of pixels. Biscotti contends
that the specification refers to resolutions of “480p,” “720p,” “1080i” and “1080p.” Biscotti
asserts that while the number (480, etc.) refers to the number of vertical pixels, the “i” and “p”
have nothing to do with the number of pixels but instead refers to whether the resolution is
“interlaced” or “progressive.” (Dkt. No. 103 at 14.) For example, Biscotti contends that the
resolutions of “1080i,” and “1080p” are not distinguished by pixels (as both have the same
number of vertical and horizontal pixels) but rather distinguished based on interlaced or
progressive. (Id.) Biscotti contends that Microsoft’s construction excludes consideration of
these other well-known aspects of resolution.
Microsoft contends that claims 1 and 29 themselves state that “a display area comprising
a plurality of pixels, the plurality of pixels defining a display resolution.” Microsoft notes that
claims 33 and 34 depend from these claims. Microsoft asserts that the plurality of pixels for a
20
display is given by the number of pixels in the horizontal and vertical directions. (Dkt. No. 107
at 5.) Microsoft contends that the specification similarly states that the “plurality of pixels
defines the display resolution of the STB video signal (e.g. 1920 horizontal pixels x 1080 pixels
for a 1080p signal).” ’182 Patent 21:33-35.
Microsoft further contends that the specification
gives examples of resolutions as 480p, 720p, 1080i, 1080p, etc., examples which relate to the
number of pixels. Microsoft contends that the specification also states that the consolidated
output video stream method “comprises allocating at least a portion of the plurality of pixels in
the STB video stream for displaying at least a portion of the remote video stream….” ’182 Patent
22:21-25.
Microsoft notes that in one example, “the pixels for each region therefore are
allocated to the respective stream.” Id. at 23:2-2.
Microsoft contends that Biscotti’s dictionary citations support Microsoft’s construction
with one stating “resolution of a screen is given as the total number of pixels in each direction”
and another stating “in video images, resolution is determined by the number and areal density of
the pixels.” (Dkt. No. 107 at 6 (quoting Dictionary of Computer and Internet Terms and
Webster’s Telecom Dictionary, respectively).) Microsoft contends that Biscotti cites no intrinsic
evidence and that the portions of the dictionaries relied on by Biscotti relate to non-video
technology: printers and facsimile. Microsoft contends that the patents relate to video images,
and “resolution” must be construed in this context. (Id.). Microsoft contends that the “i” and “p”
argument raised by Biscotti is a red herring as “interlace” and “progressive” are not aspects of
the video resolution. Rather, Microsoft asserts that these letters just reference the order in which
lines of the image are drawn on the screen (interlace scanning refreshing odd lines in one scan
and even lines in another while progressive scanning refreshes all horizontal scan lines
sequentially). (Id at 6, n. 6.)
21
Biscotti contends that the intrinsic evidence does not require resolution to be exclusively
defined by the number of vertical and horizontal pixels. Further, Biscotti contends that the
patent explicitly states that “a resolution of 480p, 720p, 1080i and 1080p” are examples of
different video resolutions. ’182 Patent 2:56-60. Biscotti contends that Microsoft arbitrarily
concludes that scanning types “are not aspects of resolution” even though the ’182 Patent
identifies them as such. (Dkt. No. 108 at 6-7.)
Biscotti contends that Microsoft’s reference to the Webster’s Telecom Dictionary
supports Biscotti’s position, as the Webster’s definition refers to “areal density.”
Biscotti
contends that a certain number of pixels displayed on a cell phone will have a noticeably
different amount of detail than the same image displayed on a Jumbotron. Biscotti contends that
“density” is thus a metric for defining resolution. (Dkt. No. 108 at 7.)
At the hearing, Biscotti also noted that some claim limitations have pixels defining the
resolution (such as the portion of claim 1 which states “the plurality of pixels defining a display
resolution”) and other claims do not. At the hearing, Biscotti further contended that the interlaced
or progressive scanning impacts the level of detail on the screen. (Dkt. No. 118 at 25-26.)
Biscotti further contended that resolution can mean much more than just the number of pixels,
including bit depth, binary black and white, levels of gray, colors, and resolution of movement.
(Id. at 28, 36.)
Analysis
The Court finds that Biscotti’s arguments are more persuasive, with reference to both the
intrinsic and extrinsic evidence. The specification does state that the “plurality of pixels defines
the display resolution of the STB video signal (e.g. 1920 horizontal pixels x 1080 pixels for a
1080p signal).” ’182 Patent 21:33-35. This language is similar to that contained in some of the
22
claim elements such as the usage in claim 1 of: “the plurality of pixels defining a display
resolution.” Importantly, though, elsewhere the claims do not have such a requirement. See
Phillips, 415 F.3d at 1314 (differences among the claim terms can also assist in understanding a
term’s meaning). Further, Microsoft would limit the defining characteristics of resolution to the
number of pixels in both the horizontal and vertical directions. However, Microsoft has not
pointed to intrinsic evidence of disavowal limiting “resolution” in the manner of Microsoft’s
construction. See Arlington Industries, Inc. v. Bridgeport Fittings, Inc., 632 F.3d at 1254. Even
the passage cited by Microsoft does not reference the “number” of pixels but merely states that
the “pixels” define the resolution. Further, the specification elsewhere mentions the type of pixel
scanning (interlacing or progressive scanning): “[i]n some cases, these interfaces might be
configured to provide a high-definition audiovisual stream (e.g., comprising a video stream with
a resolution of 480p, 720p, 1080i, 1080p, etc.) for display on a high-definition television.” ’123
Patent 2:58-60. This language does not explicitly state that the resolution of 1080i and 1080p are
different, however the passage does imply such a meaning and at a minimum creates sufficient
evidence to counter Microsoft’s contention that there is a clear disavowal limiting the meaning of
“resolution” to the number of pixels. Further, even the extrinsic dictionary evidence cited to by
Microsoft makes clear that in the context of video, other factors, such as pixel density, also may
be relevant to resolution. (Dkt. No. 103-5 at 415 (reciting “the number and density” and “the
number and areal density”).) Microsoft’s construction fails to recognize that other factors may
impact resolution.
The Court finds that the term “resolution” has its plain and ordinary meaning.
23
6. “instructions for setting a display resolution of the remote video stream” [Claim 1]
Biscotti’s Proposed Construction
plain meaning / no construction needed
Alternatively:
“instructions for setting the amount of
detail of the remote video stream”
Microsoft’s Proposed Construction
instructions for instructing the second
video communications device to change
the “display resolution of the remote video
stream” to a specified resolution
Alternatively:
instructions for instructing the second
video communications device to set the
“display resolution of the remote video
stream” to a specified resolution
The primary disputes are whether the instructions have to be for instructing the “second
video communication device” and whether the instructions have to set the resolution to a
“specified resolution.”
Positions of the Parties
Biscotti contends that after construing “display resolution,” the remainder of the term is
well within the understanding of a lay person. Biscotti asserts that Microsoft generally repeats
the claim terms in its construction. (Dkt. No. 103 at 14.)
Biscotti objects to Microsoft’s addition of “second video communication device,”
“change” and “to a specified resolution.” As to the “second video communication device,”
Biscotti contends that the claimed instructions are part of the first video communication device
and nowhere does the claim require the first device to instruct the second device to do anything.
Biscotti contends that the claim also does not require a “change” to the resolution but rather just
“setting” the resolution. Biscotti similarly asserts there is no claim language requiring a change
“to a specified stream.” (Dkt. No. 103 at 15.) Biscotti contends the lack of these requirements
in claim 1 can be contrasted with claim 2, which includes a requirement that one of the devices
(the second video communication device) instructs another device (the first video
24
communication device) to take a particular action (modify the field of view of its camera). ’182
Patent 32:45-47 (“instructions for modifying a field of view of the camera, based on commands
received from the second video communication device”).
Biscotti contends that nowhere in the specification does the first video device (the
recipient of the remote video stream) instruct the second video device (the transmitter of the
remote video stream) to set the resolution of the remote video stream. Biscotti contends that the
single passage cited by Microsoft (’182 Patent 12:32-49) merely states that the first video
device can provide network statistics to the second video device and the second video device
may use those statistics and other information to adjust various aspects of the video quality (bit
rate, frame rate and/or video resolution). Biscotti contends that nowhere does the specification
provide any indication that the first device can instruct the second device to set the resolution,
let alone change it to a specified resolution. (Dkt. No. 103 at 16.) Biscotti contends that the
specification, in contrast, teaches that the devices set their own resolution: “the process of
generating a consolidated output video stream involves setting a resolution of that output
signal” (21:24-26) and the “device might resample…to a resolution that is compatible with the
output resolution” (22:9-12). Biscotti asserts that even if the specification did include an
example of one device instructing the other device, that would still not be enough to limit the
claims.
Biscotti contends that in the IPRs, Microsoft never argued that one skilled in the art
would require the three limitations Microsoft seeks. Biscotti contends that instead, Microsoft
argued that “setting the resolution based on the bandwidth between the remote and local video
conference devices” would satisfy this term. (Dkt. No. 103 at 16-17 (citing IPR2014-01459).)
25
Microsoft contends that the context of claim 1 requires construction of the term.
Microsoft asserts that claim 1 recites that the first video device executes “instructions for
receiving a remote audiovisual stream from the second video communication device.”
Microsoft contends that this limitation shows that the second video device creates and transmits
the video stream, thereby setting the video stream’s resolution. Microsoft asserts that, thus, the
first video communication device cannot directly set the resolution of the remote video stream.
(Dkt. No. 107 at 7-8.) Microsoft contends that the examples of a device setting its own
resolution cited by Biscotti (the output signal at ’182 Patent 21:24-26) are inapposite because
that example involves a different video stream. (Id. at 8, n. 9.)
Microsoft asserts that because the claim term requires instructions “executing on the
first video communication device” to set “a display resolution of the remote video stream,” the
first video communication device must tell the second device to change that resolution. (Id. at
8.) Microsoft contends that the contextual usage in the claim requires such a construction
because the jury will not likely “appreciate” this. Microsoft asserts that its construction is
consistent with the specification which explains that statistics gathered by the first video device
“can then be fed back to the [second] transmitting video communication device, allowing [the
second device] to adjust its encoding and/or transmission settings.” ’182 Patent 12:41-44.
As to the IPR, Microsoft contends that it merely adopted Biscotti’s construction for the
purposes of the IPR and the broadest reasonable interpretation, noting that broader
interpretations are permitted in IPRs. (Id. at 8-9.)
In reply, Biscotti contends that the claim language merely requires instructions for
setting the remote video stream’s “display resolution.” Biscotti asserts that Microsoft conflates
the resolution of the video stream itself with the display resolution of the video stream set by
26
the first video communication device. (Dkt. No. 108 at 7-8.) Biscotti contends that according to
the specification, this display resolution is set by the first video communication device, for
example by resampling the remote video stream to a resolution that is compatible with the
selected output resolution, or optionally so it may be consolidated with the set-top box video
stream for display to user. (Id. at 8 (citing ’182 Patent 19:10-17, 21:22-22:37, 32:1-8).)
Biscotti also asserts that the claim element in question does not mention the second
communication video device, even though the second video communication device is
mentioned with respect to other elements of claim 1. (Id. at 8, n.4.) Biscotti reasserts that the
passage cited by Microsoft (12:32-49) does not indicate that the first video device “instructs”
the second video device to set its resolution to a specified resolution as required by Microsoft’s
construction. (Id. at 8.)
At the hearing, when asked for citation in the specification for instructions being sent
from the first device, Microsoft acknowledged that the specification only taught information
being sent from the first device (such as statistics) and that the specification did not reference
“instructions.” (Dkt. No. 118 at 39-40.) At the hearing, Biscotti also emphasized passages in the
specification that indicated that the first video communication device may locally set the
resolution of various video streams. (Id. at (citing ’182 Patent 21:22-26, 22:9-12, 23:2-5).)
Analysis
The claim language itself does not require the instructions to instruct the second video
communications device to act. Rather, the claim language merely states that the storage
medium of the first communications device has instructions for setting the display resolution of
the remote video stream. Microsoft has not pointed to any language of manifest exclusion or
restriction within the specification that would further narrow the meaning of the claim
27
language. See Arlington Industries, Inc. v. Bridgeport Fittings, Inc., 632 F.3d at 1254. Further,
the passage cited by Microsoft describes the second communication device setting its own
encoding and transmission settings. Though such setting is described as being based on
statistics that the first video communication device may provide, the first video communication
device is not described as instructing the second video communication device to change the
settings. ’182 Patent 12:32-44. The specification, in fact, tends to imply that the devices may
set their own resolutions with regard to the output video streams. Id. at 12:41-44, 21:22-26,
22:9-12, 23:2-5. The specification does not provide a teaching of Microsoft’s construction, let
alone a context that would mandate Microsoft’s construction. Finally, it is noted that the claim
recites setting the “display” resolution. As noted by Biscotti, Microsoft focuses on the
resolution as transmitted by the second video communication device. But as claimed, the
resolution set is the “display resolution.” Microsoft contends that the setting of display
resolutions is in regard to only the consolidated output video stream. However, the specification
describes that the remote video stream may be output as a portion of the consolidated output
stream. ’182 Patent 19:10-17. Further, the consolidated output video stream may have a display
resolution set by the first video communication device. Id. at 21:22-22:37. These passages
further counsel against Microsoft’s interpretation.
The Court construes “instructions for setting a display resolution of the remote
video stream” to mean “instructions for setting a resolution for display of the remote
video stream.”
28
7. Based On / Based At Least In Part On Terms
“instructions for transmitting the consolidated audio output stream on the HDMI output
interface, based on a determination that the speaker of the high-definition television is
powered on and enabled to play audio output from the first video communication device”
[Claim 1]
Biscotti’s Proposed Construction
plain meaning / no construction needed
Microsoft’s Proposed Construction
instructions for transmitting the
consolidated audio output stream on the
HDMI output interface only if the
“instructions for determining whether a
speaker of the high-definition television
is powered on and enabled to play audio
output from the first video
communication device, based on
reception of the audio watermark signal
through at least one of the one or more
microphones” determines that the highdefinition television is “powered on and
enabled to play audio output”
“instructions for transmitting the output video over the output video interface based on a
determination that the video display device is configured to display the output video
stream” [Claim 46]
Biscotti’s Proposed Construction
plain meaning / no construction needed
Microsoft’s Proposed Construction
instructions for transmitting the output
video over the output video interface only
if the video display device is determined to
be configured to display the output video
stream
“instructions for configuring the video display device to display the video output, based
at least in part on detecting that the video display device is not configured to display the
video output” [Claim 83]
Biscotti’s Proposed Construction
plain meaning / no construction needed
Microsoft’s Proposed Construction
instructions for configuring the video
display device to display the video output
only if it is detected that the video display
device is not configured to display the
video output
29
Two primary issues are presented: (1) does the determination “based on” / “based at
least in part on” some criteria mean that the actions occur “only if” the criteria are found
(Microsoft) or does “based on” a certain criteria mean the criteria is merely used as an input to
the decision (Biscotti) and (2) do the determination criteria for claim 1 include “based on
reception of the audio watermark signal through at least one or more microphones” as recited
earlier in the claim.
Positions of the Parties
Biscotti contends that the claim terms are understood to require instructions for
transmitting or configuring video or audio based on various criteria (example criteria in claim 1
being “a determination that the speaker of the high-definition television is powered on and
enabled to play audio output from the first video communication device”). Biscotti objects that
Microsoft’s construction (1) changes instructions being “based on” or “based at least in part on”
various criteria to instructions that apply “only if” the criteria are present; and (2) the
“instructions for transmitting” element of claim 1 includes additional criteria not present in the
claim – transmitting “based on reception of the audio watermark through at least one of the one
or more microphones.” (Dkt. No. 103 at 17.)
As to the first issue, Biscotti contends that the language is understandable and the
specification uses similar language “based (at least in part) on whether the audio receiver is
configured…” (’182 Patent 20:45-52) and “based on the detected configuration of the display
device” (’182 Patent 20:66-21:1). Biscotti asserts that the specification only includes one
instance of “only if” and the relevant sentence begins with “[m]erely by way of example.”
21:1-5.
30
Biscotti contends that “based on” a certain criteria means the criteria is used as an input
to the decision. (Dkt. No. 103 at 18 (citing various dictionary definitions).) Biscotti asserts that
a decision that occurs “only if” certain criteria are met is a different requirement. Biscotti
contends that as an example, “instructions for transmitting the output video…based on a
determination that the video display device is configured to display the output video stream”
includes circumstances where the transmission is altered based on, or affected by, the display
device’s configuration; i.e., if the video display is configured in one way the data is transmitted
in one way, and if configured in another way, transmitted in another way. (Id.) Biscotti asserts
that this functionality is entirely different and excluded by replacing “based on” with “only if.”
Biscotti contends that in one of the IPRs, Microsoft relied on such an example by arguing that
claim 83 was met by sending video in one of the formats the video display device was already
configured to display. (Id. (citing IPR2014-01457).)
As to the second issue raised with regard to claim 1, Biscotti asserts that the
“instructions for determining” language is independently presented elsewhere in claim 1 and
not tied in the claim in any way to the “instructions for transmitting” term at issue. (Dkt. No.
103 at 19.) Biscotti contends that Microsoft’s linkage of these two elements adds an all new
requirement to the claims. Biscotti also asserts that requiring the “instructions for transmitting”
to be based on “reception of the audio watermark through at least one of the one or more
microphones” is an additional new requirement added to the claim. Biscotti contends that only
the “instructions for determining” must be based on reception of the watermark. (Dkt. No. 103
at 19.) Finally, Biscotti asserts that Microsoft’s construction overloads a simple phrase to the
point where the construction is difficult to follow.
31
Microsoft contends that the “based on” language means that the stated action is
performed only if the condition has been met. For claim 1, Microsoft asserts that instructions
transmit only if the speaker is powered on and enabled and do not transmit if the speaker is not
powered on and enabled. (Dkt. No. 107 at 11-12.) Microsoft contends that the specification
describes enabling the video device’s speaker “if” an external audio receiver is not enabled and
disabling the device’s speaker “if” the audio receiver is configured to play audio. ’182 Patent
20:40-52. As to the claim 46 and 83 terms, Microsoft asserts that the specification discusses
the video communication device transmitting the output video over the output video interface
“only if it determines that the display device is properly configured to display the stream.” ’182
Patent 20:53-21:9
Microsoft contends that the claims do not recite an action “based on” something (as
Biscotti asserts) but rather performing an action “based on a determination that” a condition has
been met. Microsoft asserts that these concepts are different, rendering Biscotti’s dictionaries
irrelevant. (Dkt. No. 107 at 12.) Microsoft contends that Biscotti reads “based on” to cover
performing the identified act so long as there is some difference in how the act is sometimes
performed. Microsoft asserts that the claims do not include circumstances where the
transmission is altered based on or affected by the display device’s configuration. Microsoft
emphasizes that the claims recite “based on a determination that” a condition has been met. (Id.
at 13).
As to the criteria issue of claim 1, Microsoft contends that it has construed the claim as
required by antecedent basis and the entire context of claim 1. Microsoft asserts that one
skilled in the art would recognize that “a determination that the speaker of the high-definition
television is powered on and enabled to play audio output from the first communication video
32
communication device” refers back to the same language in an earlier portion of the claim:
“instructions for determining whether a speaker of the high-definition television is powered on
and enabled to play audio output …based on reception of the audio watermark signal through at
least one of the one or more microphones.” Microsoft contends that the earlier “determining”
instructions do not control any action and that the term at issue is the term that uses the result of
the “determining” instructions as a condition. (Dkt 107 at 13.) Microsoft asserts that its
construction refers back to the earlier referenced claim language. Microsoft contends that the
specification is consistent by discussing “determining” whether an external speaker is powered
on and enabled by using the audio watermark (’182 Patent 19:57-20:39) and then choosing to
use the speaker based on the result (’182 Patent 20:40-53).
As to the IPRs, Microsoft again states that it merely adopted Biscotti’s construction
under the broadest reasonable interpretations standard and pointed to the same technology that
Biscotti identified in infringement contentions. (Dkt. No. 107 at 14.)
In reply, Biscotti contends that the specification indicates that “based on” is broader
than “only if” although the specification’s use of “based (at least in part) on whether….” ’182
Patent 20:45-52. Biscotti contends that the specification, at times, uses “based on” and at other
times provides “by way of example” and “only if.” ’182 Patent 21:1-5, 20:45-52. Biscotti
contends that Microsoft’s construction would exclude the specification’s uses of “based on”
and limit the term to an “only if” embodiment.
As to the “instructions for determining,” Biscotti contends that there is no evidence in
the claims that the two limitations in question are linked and no evidence that one claim term
provides antecedent basis for the other. Biscotti notes that the language in the claim term at
issue is “based on a determination” not “the” determination. (Dkt. No. 108 at 9.) Biscotti also
33
contends that Microsoft’s proposal conflicts with the specification which discloses multiple
ways for determining whether the speaker is powered on and enabled - including by receiving
configuration information over the video output interface. ’182 Patent 20:56-62.
Analysis
At the hearing, the Court proposed preliminary constructions that conform to what the
Court adopts herein. Biscotti agreed to the preliminary construction with the caveat that the use
of “only if” in the construction for claims 1 and 46 did not exclude other instructions that are
also used for transmitting the output stream. In particular, Biscotti stated that it believed
Microsoft might intend for “only if” to mean that is the only time audio may be transmitted to
the television. (Dkt. No. 118 at 55-59.) Biscotti stated that to satisfy the claim, there must be
instructions that meet the “based on” limitation but the claim does not preclude other additional
instructions (i.e., there could be two different instructions). (Id. at 60-61). Biscotti contends that
this is consistent with the specification which described the speaker use when the external audio
receiver is not enabled with permissive words such as “in some embodiments,” “which can be
used…especially in the case…,” and “in some cases.” ’182 Patent 11:13-24. Similarly, Biscotti
contends that the video transmission (claims 46 and 83) is not limited to determining the device
configuration because permissive words such as “may,” “merely by way of example,”
“alternatively and/or additionally,” and “might” are used in the specification with regard to this
feature. ’182 Patent 20:66-21:9.
At the hearing, Microsoft acknowledged that as the claim was a “comprising” claim,
there could be other instructions that call for the transmitting. Microsoft acknowledged that as
long as the claimed instructions for transmitting are met, the claim does not exclude additional
instructions for transmitting. (Dkt. No. 118 at 71-73.)
34
The parties are thus in agreement as to the inclusion of “only if” within the construction
for claims 1 and 46. This conforms to the claim language itself that states “based on a
determination that….” On its face, such language is directed toward the results of the
determination being determinative. As agreed to by the parties, this does not exclude other
instructions that cause the transmitting under other circumstances. This conforms to the
specification passages cited by Biscotti which provide the permissive language in describing
the operations.
Claim 83 as drafted uses different language. Claims 1 and 46 recite: “based on a
determination that…” while claim 83 states “based at least in part on detecting….” See
Phillips, 415 F.3d at 1314 (differences among the claim terms can also assist in understanding a
term’s meaning).
As to claim 83, the claim language itself provides a clear rebuttal to
Microsoft’s construction, as Microsoft attempts to read out of the claim the “at least in part of”
language. The claim language itself is clear and does not require the “only if” language
proposed by Microsoft. Rather, the configuring to display the video output is “based at least in
part on detecting….” The claim language needs no further construction.
As to the second issue which relates to the criteria utilized in claim 1, Biscotti’s
construction is more faithful to the actual claim language. Microsoft seeks to require the two
recited “determinations” to be the same determination. However, the claims are not drafted in
that manner. The “instructions for determining” require the audio watermark determination.
However, the “determination” in the “instructions for transmitting” is not required in the claim
to be the same determination recited earlier.
Rather, the claim merely calls out “a
determination that the speaker…” as opposed to referencing “the” prior determination.
Microsoft has not pointed to requirements in the intrinsic record that all speaker determinations
35
must be based on reception of the audio watermark, and the claim itself is drafted to have a
meaning indicative that the determination need not be the same.
The Court construes “instructions for transmitting the consolidated audio output
stream on the HDMI output interface, based on a determination that the speaker of the
high-definition television is powered on and enabled to play audio output from the first
video communication device” [Claim 1] to mean “instructions for transmitting the
consolidated audio output stream on the HDMI output interface only if the speaker of the
high-definition television is determined to be powered on and enabled to play audio
output.”
The Court construes “instructions for transmitting the output video over the
output video interface based on a determination that the video display device is
configured to display the output video stream” [Claim 46] to mean “instructions for
transmitting the output video over the output video interface only if the video display
device is determined to be configured to display the output video stream.”
The Court finds that the term “instructions for configuring the video display
device to display the video output, based at least in part on detecting that the video
display device is not configured to display the video output” [Claim 83] has its plain and
ordinary meaning.
8. “consolidated output video stream” [Claims 25-29, 34-36, 69, and 71]
Biscotti’s Proposed Construction
plain meaning / no construction needed.
Alternatively:
“a consolidation of multiple video sources
into a single video stream”
Microsoft’s Proposed Construction
a consolidation of multiple video sources
into a single video stream output from the
“video communication device”
[NOTE: Microsoft is agreeable to amend
36
its construction to specify the “first video
communication device.” (Dkt. No. 107 at
16, n. 13).]
The parties dispute whether or not the claimed stream has to be output from the “video
communication device.”
Positions of the Parties
Biscotti objects to Microsoft’s inclusion of “output from the ‘video communication
device.’” Biscotti contends that claim 25 requires “instructions for creating a consolidated
output video stream” but does not require actual transmission of the stream. Biscotti notes that
in contrast, method claim 69 specifically requires “transmitting, on the audiovisual output
interface, a consolidated output video stream.” Biscotti contends that though the video device
may be capable of outputting the stream, there is nothing in claim 25 or its dependent claims that
requires it to be. (Dkt. No. 103 at 12.) As to claim 69, Biscotti contends that the output
requirement is already in the claim and that Microsoft’s construction would thus be redundant
and confusing. Biscotti further contends that the specification makes clear that the consolidated
output video stream may or may not be output:
The method 900, then, may further comprise creating a consolidated output video
stream from one or more of the video streams, and/or transmitting the
consolidated output video stream on the output video interface.
’182 Patent 23:14-17. Biscotti contends that this excerpt shows that the video stream is created
separately from its transmission and indeed transmission may not occur at all.
Microsoft contends the claim language requires the “consolidated output video stream” to
be created by the “first video communication device” and includes video from multiple sources.
(Dkt. No. 107 at 14.) Specifically, Microsoft asserts that the term uses “output” thereby the
stream must be output. Microsoft contends that parent claim 6 includes the processor in the
37
“first video communication device” and that claim 25 requires “instructions” “for creating a
consolidated output video stream.” Microsoft asserts that if not output, then the video is not a
“consolidated output video stream.” (Id. at 14-15.) Microsoft contends that the specification
provides a definition: “[a]s used herein, a consolidated output stream means an output stream
that includes at least a portion of the corresponding remote stream.” ’182 Patent 21:15-17.
Microsoft also cites to the interface as being: “to transmit an output video stream (which may be
a consolidated video output stream as described later)….” ’182 Patent 10:59-61. Microsoft
asserts that Biscotti removes the “output” characteristic of the term.
Microsoft contends that Biscotti argues that “transmitting” the output stream is optional,
because the specification refers to “creating a consolidated output video stream…and/or
transmitting the consolidated output video stream.” Microsoft asserts that Biscotti’s
interpretation of “and/or” makes no sense, because the disclosed system could transmit the
output stream without ever creating it. Microsoft contends that this clause can only be interpreted
to mean “and.” (Dkt. No. 107 at 15.)
Analysis
At the hearing, Biscotti and Microsoft both accepted the Court’s construction provided
herein. (Dkt. No. 118 at 14.) Claim 25 merely states that the instructions further comprise
“instructions for creating a consolidated output video stream.” The claim does not require
outputting or transmitting the video stream, rather merely instructions for creating the stream.
The creation of the output video stream is described in the specification as a step that may occur
independently of actual outputting or transmitting in accordance with at least one embodiment.
23:14-17, Figure 9 step 955. In contrast, method claim 69 recites “transmitting … a consolidated
output video stream.” Thus, the claim language of each claim itself provides the necessary
38
guidance as to when further action on the consolidated output video stream is required. Phillips,
415 F.3d at 1314 (“[T]he context in which a term is used in the asserted claim can be highly
instructive.”). The Court notes that its construction includes “output video stream.” As originally
proposed by Biscotti the stream would not have to be meant for or have the capability of being
output.
The Court construes “consolidated output video stream” to mean “a consolidation
of multiple video sources into a single output video stream.”
9. “the input video stream” [Claim 34]
Biscotti’s Proposed Construction
This term is not indefinite under 35 U.S.C.
§ 112(2)
Microsoft’s Proposed Construction
This term is indefinite under 35 U.S.C. §
112(2)
Microsoft contends that it is not reasonably certain as to what is the antecedent basis for
“the input video stream”: the “set-top box video stream” or the “remote video stream.”
Positions of the Parties
Biscotti contends that one skilled in the art would recognize that the antecedent basis for
“the input video stream” refers to the set-top box video stream that can be received on the “video
input interface” of claims 6 and 24. (Dkt. No. 103 at 26.) Biscotti notes the claim 34 language is
“instructions for setting a resolution of the consolidated output video stream as a function of the
input video stream.” Biscotti further notes that claim 34 depends through claim 24 which recites
“wherein the video input interface receives a set-top box video stream.” Biscotti contends, in
this context, one skilled in the art would recognize that the “input video stream” in claim 34
refers to the video stream that the “video input interface” in claims 6 and 24 can receive. (Id.
(citing Wicker expert declaration).)
39
Biscotti contends that this is consistent with the specification which uses the terms “input
video interface” and “video input interface” interchangeably to describe the interface on which
the set-top box video stream (or video input from a set-top box) is received:
In one embodiment, the video communication device comprises a video input
interface to receive video input from a set-top box….
’182 Patent 2:40-42.
[T]he input video interface 420 is configured to receive a video stream (referred
to herein as a ‘STB video stream’) from a STB…
’182 Patent 10:50-52.
Typically, the STB stream will be provided by a STB, and /or received on an
input audiovisual interface (and/or separate input audio interface and input video
interface).
’182 Patent 17:38-41. Biscotti contends that in light of the claims and specification, one skilled
in the art would recognize the “input video stream” to be the set-top box video stream that can be
received on the video input interface.
Biscotti contends that Microsoft is incorrect in asserting that the “input video stream”
could refer to the remote video stream to be received on the network interface. Biscotti contends
that the ‘182 Patent never refers to the remote video stream as an “input” or to the interface that
receives the remote video stream as an “input interface.” Biscotti asserts that the term is
therefore not indefinite in light of the specification. Biscotti also cites to Yodlee, Inc. v. Plaid
Techs., Inc., 2016 WL 204372, at *12 (D. Del. Jan. 15, 2016) and Sipco, LLC v. Amazon.com,
Inc., No. 2:08-CV-359-JRG, 2012 WL 5195942 at *53 (E.D. Tex. Oct. 19, 2012) as finding a
claim term had antecedent basis despite using an indefinite article. (Dkt. No. 103 at 28.) Biscotti
further contends that antecedent basis can be established by implication. (Dkt. No. 108 at 10
(citing Haliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008)).)
40
Biscotti additionally notes that in the IPR, Microsoft’s expert understood the term sufficiently to
map the prior art to the claim. (Id. at 2.)
Microsoft contends that it is not clear which previously recited stream is being referred to
as “the input video stream.” Microsoft quotes Nautilus: “[i]t cannot be sufficient that a court can
ascribe some meaning to a patent’s claims.” Nautilus, 134 S. Ct. at 2130. Microsoft contends
that the “input video stream” could refer to two equally plausible “input streams.” Microsoft
notes that claim 24 (from which claim 34 depends) includes two input video streams: (1) “the
video input interface receives a set-top box video stream” and (2) “the network interface receives
a remote audiovisual stream from the second video communication device.” Microsoft cites to
its expert declaration to assert that one skilled in the art cannot determine which stream is being
referred to. (Dkt. No. 107 at 21.)
Microsoft characterizes Biscotti’s argument that the stream related to the “video input
interface” must be the relevant stream as merely guessing. Microsoft contends that merely
guessing does not satisfy the reasonable certainty standard.
Microsoft challenges Biscotti’s argument that the similarity of the terms “video input
interface” and “input video stream” renders the term definite. Microsoft contends that a “video
input interface” is not a “stream.” Microsoft further asserts that Biscotti’s argument merely
relies on both terms using the word “input.” Microsoft contends that both the remote video
stream and the set-top box stream are input into the video communication device and neither is
identified as an “input stream.” Microsoft asserts that either stream could be the input stream in
question. Microsoft further asserts that though the stream input to the network interface is never
described in the specification as an “input” stream, the ‘182 Patent never refers to the stream
input to the “video input interface” as an “input” stream either. (Dkt. No. 107 at 22-23.)
41
Microsoft contends that Biscotti merely relies on Biscotti’s expert’s opinion that “input video
stream” equals “video input interface,” but Microsoft’s expert’s opinion is the opposite. (Id. at
22.)
As to the IPRs, Microsoft asserts that it merely mapped the prior art to the patent claims
in the same manner as Biscotti’s infringement contentions. Microsoft further notes that it could
not challenge the faulty antecedent basis issue, since indefiniteness challenges are not allowed in
IPR proceedings. (Id.)
Analysis
Claim 34 recites “wherein the set of instructions further comprises: instructions for
setting a resolution of the consolidated output video stream as a function of the input video
stream.”
Claim 34 depends from independent claim 6 through various dependent claims,
including claims 25 and 28. Claim 25 states that the consolidated output video stream comprises
“at least a portion of the remote video stream,” and claim 28 states that the consolidated output
video stream further comprises “at least a portion of the set-top box video stream.”
Claim 34
then recites that the resolution of the consolidated output video stream is “a function of the input
video stream.” As claimed, the consolidated output video stream is a consolidation of two video
sources, the set-top box video stream and the remote video stream. The specification does not
refer to either of these streams as the “input video stream.”
As described within the
specification, both of these video streams are input to the first communication device. ’182
Patent Figure 1A, Figure 4, 3:33-46, 10:48-11:37.
Biscotti contends that because the “input video interface” is coupled to the set-top box,
the “input video stream” of claim 34 must be the set-top box video stream. However, such a
conclusion is mere speculation because both the video streams in question are provided as an
42
input to the video communication device. Moreover, the specification explicitly refers to the
sources of the video streams that are provided to the video device for creating the consolidated
output video stream as both being “input sources.” Specifically, the specification states:
One benefit provided by certain embodiments over conventional video calling
solutions is the ability for a user to participate in a video call and watch television
simultaneously. In an aspect, certain embodiments accomplish this feature by
creating consolidated output audio and video streams. As used herein, a
consolidated output stream means an output stream that includes at least a portion
of the corresponding remote stream. In many (but not all) cases, the consolidated
output stream will also include at least a portion of the corresponding STB stream
and/or (especially in the case of video) at least a portion of the corresponding
captured stream.
To that end, FIG. 9 is a process flow diagram illustrating a method 900 of creating
consolidated audio and video output streams, in accordance with various
embodiments. In an aspect, the process of generating a consolidated output video
stream involves setting a resolution of that output signal. Various factors can be
considered when setting the output resolution, including without limitation the
resolution of each of the input sources, user preferences, and the like.
’182 Patent 21:10-29 (emphasis added). Thus, the specification describes both the set-top box
(which provides set-top box stream) and the second video communication device (which
provides the remote stream) as “input sources.” Moreover, a factor that can be considered for the
output resolution may include the “resolution of each of the input sources.” Id. Thus, as
disclosed, either the remote stream or the set-top box stream may be provided from an “input
source” and the resolution of either source may be used in setting the resolution of the
consolidated output video stream. In this context, Biscotti’s assertion that “input video stream”
must come from the “video input interface” fails. In light of the specification, the “input video
stream” could just as properly be considered to be the video stream from one of the “input
sources.”
As noted in Nautilus:
43
The definiteness requirement, so understood, mandates clarity, while recognizing
that absolute precision is unattainable. The standard we adopt accords with
opinions of this Court stating that “the certainty which the law requires in patents
is not greater than is reasonable, having regard to their subject-matter.”
Nautilus, Inc., 134 S. Ct. at 2129-30 (internal citations omitted). The context of the specification
and claims do not provide reasonable certainty as to whether the input video stream in question is
the remote video stream or the set-top box video screen. Both video streams are provided as
inputs to the device in question and described as coming from “input sources.” Further, the
claims could be read to include yet another possibility, that the “input video stream” is either
input stream, in which case the claim should have read “an input video stream,” instead of “the
input video stream.” Though Biscotti is correct that the input video stream could be the set-top
box stream, the standard under Nautilus is not merely “sufficient that a court can ascribe some
meaning to a patent's claims” but rather requires a level of reasonable certainty. Id. Here,
reasonable certainty is not provided as to what the “input video stream” references. The parties
further provide conflicting extrinsic evidence in the form of conflicting expert declarations. The
Court finds that Biscotti’s Wicker declaration is more conclusory and that Microsoft’s Orchard
declaration is more in line with the specification. As such, the Court finds that the extrinsic
evidence further supports Microsoft. See Teva Pharm. USA, 135 S. Ct. at 838 (noting that
underlying factual disputes regarding extrinsic evidence may have to be resolved in claim
construction).
The Court finds that “the input video stream” in Claim 34 is indefinite under 35
U.S.C. § 112 ¶2.
10. “wherein the instructions for encoding the captured video stream comprise
instructions for processing the captured video stream prior to encoding the
captured video stream” [Claim 50]
44
Biscotti’s Proposed Construction
This term is not indefinite under 35 U.S.C.
§ 112(2)
Microsoft’s Proposed Construction
This term is indefinite under 35 U.S.C. §
112(2)
The parties dispute whether the “instructions for encoding” may include instructions for
performing other activities prior to the encoding.
Positions of the Parties
Biscotti contends that, according to Microsoft, the claim recites an impossible step that
requires processing both before and as part of the “encoding step.” Biscotti asserts that Microsoft
mischaracterizes the claim and that the instructions recited in claim 50 are for processing the
captured video stream prior to encoding that video stream.
Biscotti notes that the claim reads: “The video communication system of claim 6,
wherein the instructions for encoding the captured video stream comprise instructions for
processing the captured video stream prior to encoding the captured video stream.” Biscotti
contends that the claim language requires instructions for first (1) processing a captured video
stream (for example to correct white balance of the stream) and then (2) encoding the video
stream. Biscotti asserts that the specification describes that the stream may be processed prior to
encoding. ’182 Patent 19:26-36. Biscotti also contends that this is clearly depicted in Figure 7.
Biscotti cites to its expert declaration to contend that one skilled in the art would easily
understand the recited instructions in claim 50. (Dkt. No. 103 at 28-29.) Biscotti further asserts
this is the manner that Microsoft’s expert construed the claim in the IPR. (Id. at 29.)
Microsoft contends that the claim language requires the “processing” to be part of
“encoding” but also requires the “processing” to occur “prior to encoding.” Microsoft asserts
that processing cannot occur “prior” to the encoding and still be “part of” the encoding. (Dkt.
No. 107 at 22.) Microsoft contends that Biscotti ignores the language that “processing” is part of
45
“encoding.” Microsoft points to its expert declaration as showing that one skilled in the art
would not understand which processing and encoding operations the claim covers. (Id. at 22-23
(citing Orchard declaration).) Microsoft asserts that Figure 7 does not support Biscotti, because
that figure does not show processing is part of encoding as claimed. Microsoft contends that
Biscotti is asking the Court to remove the claim language requiring that the processing to be part
of the encoding. (Id. at 23.) Microsoft asserts that the Court should not rewrite the claim and
that the claim fails to inform with reasonable certainty the scope of the invention. As to the IPR,
Microsoft contends that it merely mapped the prior art on the claim in the same way that Biscotti
interpreted the claim in Biscotti’s infringement contentions. Microsoft again asserts that
indefiniteness challenges are not allowed in IPR proceedings. (Id.)
Analysis
Microsoft’s arguments are based upon a mischaracterization of the clear claim language.
The claim language does not require “processing” to be part of “encoding.” Rather, the claim
states that “instructions for encoding” comprise “instructions for processing … prior to encoding
the captured video stream.”
It is the first recited instructions that include instructions for
processing. Thus, the encoding instructions are instructions that perform not just “encoding” but
also include “instructions” for other processing “prior to encoding.” This conforms to the clear
examples in the specification in which the captured streams may be “processed as needed (e.g.,
to correct white balance of the video stream, to cancel echo in the audio stream, etc.) (block 765)
and encoded and/or packetized to produce a series of data packets” (block 770). ’182 Patent
19:26-31, Figure 7. Further, the parties provide conflicting extrinsic evidence in the form of
conflicting expert declarations. The Court finds that Biscotti’s Wicker declaration is more
credible in light of the teaching within the specification. As such, the Court finds that the
46
extrinsic evidence further supports Biscotti. See Teva Pharm. USA, 135 S. Ct. at 838 (noting that
underlying factual disputes regarding extrinsic evidence may have to be resolved in claim
construction). The claim term in question provides the reasonable certainty required in Nautilus.
See Nautilus, 134 S. Ct. at 2129-30.
The Court finds that “wherein the instructions for encoding the captured video
stream comprise instructions for processing the captured video stream prior to encoding
.
the captured video stream” is definite under 35 U.S.C. § 112 ¶2.
CONCLUSION
The Court adopts the above constructions. 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.
SIGNED this 3rd day of January, 2012.
SIGNED this 9th day of November, 2016.
____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE
47
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