e-Watch Inc. et al v. Apple, Inc.
Filing
334
MEMORANDUM OPINION AND ORDER. Signed by Magistrate Judge Roy S. Payne on 3/25/2015. (ch, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
E-WATCH INC., et al.,
Plaintiff,
v.
APPLE, INC.,
Defendant.
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Case No. 2:13-CV-1061-JRG-RSP
LEAD CASE
MEMORANDUM OPINION AND ORDER
On January 16, 2015, the Court held a hearing to determine the proper construction of
the disputed claim terms in United States Patent Nos. 7,365,871 (“the ‘871 Patent”) and
7,643,168 (“the ‘168 Patent”) (collectively “the Asserted Patents”).
After considering the
arguments made by the parties at the hearing and in the parties’ claim construction briefing (Dkt.
Nos. 216, 224, and 231), the Court issues this Claim Construction Memorandum and Order.
Page 1 of 69
TABLE OF CONTENTS
I.
BACKGROUND ................................................................................................................ 3
II.
APPLICABLE LAW .......................................................................................................... 5
III.
CONSTRUCTION OF AGREED TERMS ........................................................................ 9
IV.
CONSTRUCTION OF DISPUTED TERMS ................................................................... 10
A.
B.
“set-up” ................................................................................................................ 15
C.
“the portable housing being wireless” ................................................................. 17
D.
“adapted for transmitting” ................................................................................... 20
E.
“processor” phrases ............................................................................................. 22
F.
“manually portable housing,” “handheld,” and “portable housing”.................... 30
G.
“supported/supporting/supports” ......................................................................... 33
H.
“self-contained” ................................................................................................... 35
I.
“input keys,” “keypad,” and “a set of input keys” .............................................. 36
J.
“image data signal(s)” and “viewing incoming image data signals” .................. 41
K.
“image framed by the camera” and “generating a digitized framed image” ....... 44
L.
“digitiz[e][ed][ing]” ............................................................................................. 47
M.
“telephone network” ............................................................................................ 51
N.
“selectively transmitting” and “selectively displaying” ...................................... 53
O.
“camera control circuit” ...................................................................................... 56
P.
“transmission protocol” ....................................................................................... 58
Q.
“media” ................................................................................................................ 60
R.
“viewfinder” ........................................................................................................ 63
S.
V.
“by the user” ........................................................................................................ 10
“processing platform” .......................................................................................... 66
CONCLUSION ................................................................................................................. 69
Page 2 of 69
I.
BACKGROUND
The Asserted Patents are titled “Apparatus for Capturing, Converting and Transmitting a
Visual Image Signal via a Digital Transmission System,” and generally share a common
specification. The Asserted Patents relate to an apparatus used for image capture, conversion,
compression, storage, and transmission. See ‘168 Patent at Abstract.1 The specification states
that a camera and a signal converter may be incorporated into an integrated unit “wherein the
converted signal may be transmitted on a real time basis or may be stored in memory for later
recall and transmission.” Id. at 2:28–31.
The specification adds that this design “permits
maximum flexibility, with the camera/converter/telephone or other transmission device being
designed in a modular configuration wherein any or all of the devices may exist as integrated or
independent units.” Id. at 2:32–36. For example, Figure 6B illustrates “a basic portable system,
with a battery powered portable module 160 having a self-contained power source 162.” Id. at
11:24–26.
1
The Abstract of the ‘168 Patent follows:
An image capture, conversion, compression, storage and transmission system
provides a data signal representing the image in a format and protocol capable of
being transmitted over any of a plurality of readily available transmission systems
and received by readily available, standard equipment receiving stations. In its
most comprehensive form, the system is capable of sending and receiving audio,
documentary and visual image data to and from standard remote stations readily
available throughout the world.
Page 3 of 69
The specification adds that this system “may include an integral RAM and/or the removable
memory module as indicated by the image card 72,” and that “camera 10 may be an integral
feature of the portable module 160, or may be a detached unit, as desired.” Id. at 11:26–30. The
specification further states that “cellular telephone 164 is provided with a data jack 166 for
connecting to the output jack 168 of the module, whereby the image data signal may be
transmitted via the cellular telephone to a remote facsimile machine over standard cellular and
telephone company facilities.” Id. at 11:30–35. As an alternate embodiment, the specification
states that “where desired, an integral cellular phone can be incorporated in the camera housing
and transmission can be sent directly from the camera housing to a remote receiving station.” Id.
at 12:1–4.
Regarding the camera, the specification states that the video image may be captured
“using a digital camera, an analog camera, or a video camera such as a camcorder.” Id. at 2:37–
39. The specification adds that “[t]he captured video image is then converted into still frame
digitized format for transmission over any of a variety of transmission systems.” Id. at 2:39–41.
The specification further states that “once the signal is digitized, the transmission protocols are
virtually endless.” Id. at 2:43–45.
Page 4 of 69
Plaintiff brings suit alleging infringement of claims 1–6 and 12–15 of the ‘871 Patent,
and claims 1–6, 8, 10, 11, 13–29, and 31 of the ‘168 Patent. Claim 1 of the ‘871 Patent is an
exemplary claim and recites the following elements (disputed terms in italics):
1. A handheld self-contained cellular telephone and integrated
image processing system for both sending and receiving
telephonic audio signals and for capturing a visual image
and transmitting it to a compatible remote receiving
station of a wireless telephone network, the system
comprising:
a manually portable housing;
an integral image capture device comprising an electronic
camera contained within the portable housing;
a display for displaying an image framed by the camera, the
display being supported by the housing, the display and
the electronic camera being commonly movable in the
housing when the housing is moved by hand;
a processor in the housing for generating an image data signal
representing the image framed by the camera;
a memory associated with the processor for receiving and
storing the digitized framed image, accessible for
selectively displaying in the display window and
accessible for selectively transmitting over the wireless
telephone network the digitized framed image;
a user interface for enabling a user to select the image data
signal for viewing and transmission;
a telephonic system in the housing for sending and receiving
digitized audio signals and for sending the image data
signal;
alphanumeric input keys in the housing for permitting manually
input digitized alphanumeric signals to be input to the
processor, the telephonic system further used for sending
the digitized alphanumeric signals;
a wireless communications device adapted for transmitting any
of the digitized signals to the compatible remote receiving
station; and
a power supply for powering the system.
II.
APPLICABLE LAW
Page 5 of 69
A. Claim Construction
“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. See 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. See Phillips, 415 F.3d at 1314; C.R.
Bard, Inc., 388 F.3d at 861. Courts give claim terms their 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
entire patent. Phillips, 415 F.3d at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361,
1368 (Fed. Cir. 2003).
The claims themselves provide substantial guidance in determining the meaning of
particular claim terms. Phillips, 415 F.3d at 1314. First, a term’s context in the asserted claim
can be very instructive. Id. 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
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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). This is true because a patentee may define his own
terms, give a claim term a different meaning than the term would otherwise possess, or disclaim
or disavow the claim scope. Phillips, 415 F.3d at 1316. In these situations, the inventor’s
lexicography governs. Id. The specification may also resolve ambiguous claim terms “where
the ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to
permit the scope of the claim to be ascertained from the words alone.” Teleflex, Inc., 299 F.3d at
1325. 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. The prosecution history is another
tool to supply the proper context for claim construction because a patent applicant may also
define a term in prosecuting the patent. Home Diagnostics, Inc., v. Lifescan, Inc., 381 F.3d 1352,
1356 (Fed. Cir. 2004) (“As in the case of the specification, a patent applicant may define a term
in prosecuting a patent.”).
Although extrinsic evidence can 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
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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.
B. Construction Indefiniteness
Patent claims must particularly point out and distinctly claim the subject matter regarded
as the invention. 35 U.S.C. § 112(b). Whether a claim meets this definiteness requirement is a
matter of law. Young v. Lumenis, Inc., 492 F.3d 1336, 1344 (Fed. Cir. 2007).
A party
challenging the definiteness of a claim must show it is invalid by clear and convincing evidence.
Takeda Pharm. Co. v. Zydus Pharms. USA, Inc., 743 F.3d 1359, 1368 (Fed. Cir.2014). The
ultimate issue is whether someone working in the relevant technical field could understand the
bounds of a claim. Haemonetics Corp. v. Baxter Healthcare Corp., 607 F.3d 776, 783 (Fed. Cir.
2010). Specifically, “[a] patent is invalid for indefiniteness if its claims, read in light of the
specification delineating the patent, and the prosecution history, fail to inform, with reasonable
certainty, those skilled in the art about the scope of the invention.” Nautilus Inc. v. Biosig
Instruments, Inc., 572 U.S. ___ , ___ (2014) (slip. op., at 1).
C. Means-plus-function Analysis
Where a claim limitation is expressed in “means plus function” language and does not
recite definite structure in support of its function, the limitation is subject to 35 U.S.C. § 112, ¶ 6.
Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). In relevant part, 35
U.S.C. § 112, ¶ 6 mandates that “such a claim limitation ‘be construed to cover the
corresponding structure . . . described in the specification and equivalents thereof.’” Id. (citing 35
U.S.C. § 112, ¶ 6). Accordingly, when faced with means-plus-function limitations, courts “must
Page 8 of 69
turn to the written description of the patent to find the structure that corresponds to the means
recited in the [limitations].” Id.
However, “‘a claim term that does not use ‘means’ will trigger the rebuttable
presumption that § 112, ¶ 6 does not apply.’” LightingWorld, Inc. v. Birchwood Lighting, Inc.,
382 F.3d 1354, 1358 (Fed. Cir. 2004) (quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
1359, 1369 (Fed. Cir. 2002)). This presumption can be rebutted “by showing that the claim
element recite[s] a function without reciting sufficient structure for performing that function.”
Watts v. XL Sys., 232 F.3d 877, 880 (Fed. Cir. 2000) (citing Rodime PLC v. Seagate Tech., Inc.,
174 F.3d 1294, 1302 (Fed. Cir. 1999)). However, the presumption “is a strong one that is not
readily overcome.” Lighting World, Inc., 382 F.3d at 1358. “In cases where the claims do not
recite the term ‘means,’ considering intrinsic and extrinsic evidence is usually helpful, as the
litigated issue often reduces to whether skilled artisans, after reading the patent, would conclude
that a claim limitation is so devoid of structure that the drafter constructively engaged in meansplus-function claiming.” Inventio AG v. Thyssenkrupp Elevator Ams. Corp., 649 F.3d 1350, 1357
(Fed. Cir. 2011).
III.
CONSTRUCTION OF AGREED TERMS
The parties have agreed to the construction of the following terms:
Claim Term/Phrase
housing
(‘871 Patent, claims 1, 4, 6, 8, 9, 10,
12, 13, 15)
alphanumeric
(‘871 Patent, claims 1, 3, 6, 7, 9, 12)
electronic camera
(‘871 Patent, claims 1, 6, 9, 12)
housing
(‘168 Patent, claims 1, 3, 4, 19, 20, 21,
22, 24, 26, 27, 29)
image collection device
Agreed Construction
an enclosing structure
characters consisting of letters and/or digits
a camera that operates electronically
an enclosing structure
a device for capturing images
Page 9 of 69
(‘168 Patent, claims 1, 8, 19, 21, 22,
24, 26, 27, 29)
compress[ed][ion]
(‘168 Patent, claims 1, 6, 16, 18, 22,
24, 26, 27, 29)
a display screen apart from the
viewfinder
(‘168 Patent, claims 23, 25, 28, 31)
compression algorithm
(‘168 Patent, claims 1, 22, 24, 26, 27,
29)
represent in a more compact manner
the display screen is separate from the viewfinder
No construction necessary
Dkt. No. 241 at 10, 12. In view of the parties’ agreements on the proper construction of each of
the identified terms, the Court hereby ADOPTS AND APPROVES the parties’ agreed
constructions.
IV.
CONSTRUCTION OF DISPUTED TERMS
The parties’ dispute focuses on the meaning and scope of eight terms/phrases in the ‘168
Patent and twenty-one terms/phrase in the ‘871 Patent.2
A. “by the user”
Disputed Term
“by the user”
Plaintiff’s Proposal
Not Indefinite
Defendants’ Proposal
Indefinite
The parties dispute whether the independent claims of the ‘168 Patent are indefinite.
Defendants argue that the independent claims fall squarely within IPXL and its progeny by
improperly mixing apparatus and method elements. (Dkt. No. 224 at 9) (citing IPXL Holdings,
L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005)). Specifically, Defendants
argue that the phrase “operation of the input device by the user,” the phrase “movement by the
2
The Court notes that the parties did not present oral arguments for the following terms/phrases:
“setup,” “the portable housing being wireless,” “adapted for transmitting,”
“supported/supporting/supports,” “image data signal(s),” “viewing incoming image data
signals,” “image framed by the camera,” “generating a digitized framed image,” “telephone
network,” “selectively transmitting,” “selectively displaying,” “circuit,” “transmission protocol,”
“media,” “viewfinder,” and “processing platform.”
Page 10 of 69
user of the portable housing commonly moving the image collection device,” and the phrase
“movement by the user of the portable housing commonly moving the display,” recite steps that
must be performed by the user. (Dkt. No. 224 at 9.) According to Defendants, the recitation of
these phrases improperly mixes apparatus and method limitations, making each independent
claim indefinite, and thus invalid under 35 U.S.C. §112, ¶ 2. (Dkt. No. 224 at 10.)
Defendants further argue that these method steps are not mere functional limitations, but
instead are stand-alone limitations. (Dkt. No. 224 at 10.) According to Defendants, the ‘168
Patent claims cover not only the apparatus and its hardware components, but also the acts of
operating and moving the apparatus. (Dkt. No. 224 at 10.) Defendants further argue that the
claims specifically state that the “operation” and “movement” steps are performed “by the user,”
and external input by a person cannot be a functional description of the capabilities of a claimed
device. (Dkt. No. 224 at 10.)
Plaintiff responds that the independent claims of the ‘168 Patent set forth certain
functional limitations of the claimed apparatus, and do not mix apparatus and method claims.
(Dkt. No. 231 at 3.) Plaintiff argues that apparatus claims that use functional language are “not
necessarily indefinite.” (Dkt. No. 231 at 3.) (quoting Microprocessor Enhancement Corp. v.
Texas Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008)). Plaintiff contends that reading
the phrase “by the user” in context makes clear that the phrase describes the capabilities of the
claimed apparatus. (Dkt. No. 231 at 4.) Plaintiff argues that the phrase “operation of the input
device by the user enabling the memory,” refer to the capabilities of the input device to cause the
memory to retain a visual data image. (Dkt. No. 231 at 4.) Plaintiff further argues that nowhere
does the claim language require a user to perform any steps to infringe. (Dkt. No. 231 at 4.)
Plaintiff next contends that the phrase “movement by the user of the portable housing
Page 11 of 69
commonly moving the image collection device,” and the phrase “movement by the user of the
portable housing commonly moving the display,” refer to the physical characteristic that the
image collection device and display move contemporaneously with the portable housing. (Dkt.
No. 231 at 4.) According to Plaintiff, the user need not move the apparatus to infringe, and the
recitation of “by the user” does not introduce indefiniteness. (Dkt. No. 231 at 4.)
For the following reasons, the Court finds that the claims of the ‘168 Patent are indefinite
because they improperly include method steps in apparatus claims.
1. Analysis
The phrase “operation of the input device by the user …” appears in claims 1, 22, 24, 26,
27, and 29 of the ‘168 Patent. The Court finds that the phrase is used consistently in the claims
and is intended to have the same general meaning in each claim. The Court further notes that the
phrase appears in all of the independent claims, and is therefore incorporated into all of the
dependent claims of the ‘168 Patent. The phrase “movement by the user of the portable housing
commonly moving the image collection device” appears in claims 1, 22, and 24 of the ‘168
Patent. The Court finds that the phrase is used consistently in the claims and is intended to have
the same general meaning in each claim. The phrase “movement by the user of the portable
housing commonly moving the display” appears in claims 1, 22, and 24 of the ‘168 Patent. The
Court finds that the phrase is used consistently in the claims and is intended to have the same
general meaning in each claim.
Focusing on the claim language, the Court finds that a plain reading of the claims require
a step to be performed “by the user.” Moreover, it is undisputed that all of the independent
claims are apparatus claims.
Thus, the Court agrees with Defendants that the claims are
indefinite under the Federal Circuit’s holding in IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430
F.3d 1377 (Fed. Cir. 2005). In IPXL, the Federal Circuit addressed a claim that covered a system
Page 12 of 69
with “an input means” and required a user to use the input means. Id. at 1384. The court held
that the claim was indefinite because it was unclear “whether infringement . . . occurs when one
creates a system that allows the user [to use the input means], or whether infringement occurs
when the user actually uses the input means.” Id. The Court finds the same here, because the
independent claims recite both an apparatus and a method for using the apparatus.
Plaintiff contends that this claim language does not require a user to perform any steps to
infringe. (Dkt. No. 231 at 4.) Specifically, Plaintiff argues that the phrase “operation of the input
device by the user enabling the memory” refers to the capabilities of the input device to cause
the memory to retain a visual data image. (Dkt. No. 231 at 4.) The Court disagrees that this is
consistent with a plain reading of the claims. Plaintiff’s interpretation would require the Court to
redraft the claims and read the words “operation of the input device by the user” out of the
claims. This would be improper. Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d
1358, 1362 (Fed. Cir. 2008) (“[C]ourts may not redraft claims, whether to make them operable
or to sustain their validity.”).
Indeed, the surrounding claim language contradicts Plaintiff’s interpretation because it
indicates that the patentee understood how to draft claim language that referred to the
capabilities of an element. For example, claim 1 of the ‘168 Patent recites an “image collection
device being operable to provide visual image data,” a “display being operable to display for
viewing by a user a perceptible visual image,” a “memory being suitable to receive visual image
data in digital format,” an “input device being operable by the user,” and a “media being suitable
to embody at least one compression algorithm.” ‘168 Patent at 15:17–34 (emphasis added). In
contrast to this capability language, claim 1 also explicitly recites “operation of the input device
Page 13 of 69
by the user,” which under any plain reading of the claims requires action by a user.3
Accordingly, like the claim language at issue in IPXL, the language used in the
independent claims of the ‘168 Patent is directed to user actions, not system capabilities. Thus,
the claims improperly mix an apparatus and a method of using the apparatus. Consistent with
the court’s holding in IPXL, the independent claims are not definite as to whether the claim is
infringed when the apparatus is made or sold, or when a user actually operates the input device.
IPXL, 430 F.3d at 1384. Consequently, the Court finds that the independent claims, and the
respective dependent claims, are indefinite under 35 U.S.C. § 112, ¶ 2.
Plaintiff also argues that the phrases, “movement by the user of the portable housing
commonly moving the image collection device” and “movement by the user of the portable
housing commonly moving the display,” refer to the physical characteristic that the image
collection device and display move contemporaneously with the portable housing. (Dkt. No. 231
at 4.) Again, Plaintiff’s interpretation of the claim language would require the Court to read the
words “movement by the user” out of the claims. However, these are the words chosen by the
patentee, and their plain meaning creates confusion as to whether the claim is infringed when the
apparatus is made or sold, or when a user actually moves the apparatus. Chef Am., Inc. v. LambWeston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004) (“[I]n accord with our settled practice we
construe the claim as written, not as the patentees wish they had written it.”).
Indeed, claim 6 of the ‘871 Patent includes language that illustrates the difference
between the plain language of these claims and Plaintiff’s contention. Claim 6 of the ‘871 Patent
recites “the cellular telephone and the integrated electronic camera being movable in common
3
During the Markman hearing, Plaintiff also argued that the phrase “the input device being
operable by the user,” provided antecedent basis for the phrase “operation of the input device by
the user.” The Court is not persuaded that Plaintiff’s antecedent basis argument changes the
plain reading of the claim, which explicitly requires “operation of the input device by the user.”
Page 14 of 69
with the housing.” ‘871 Patent at 15:41–43 (emphasis added). In contrast, claim 1 of the ‘168
Patent recites “movement by the user of the portable housing commonly moving the image
collection device.” ‘168 Patent at 15:47–48 (emphasis added). Accordingly, the claims fall
within the rationale of IPXL and are indefinite.
2. Court’s Construction
In light of the intrinsic evidence, the Court finds that the independent claims
improperly mix an apparatus and a method, and are not definite as to when the claim is
infringed. Accordingly, independent claims 1, 22, 24, 26, 27, and 29, and their dependents
claims 2-21, 23, 25, and 28 in the ‘168 Patent, are indefinite under 35 U.S.C. § 112 ¶ 2.
B. “setup”
Disputed Term
Plaintiff’s Proposal
Not Indefinite
“setup”
Defendants’ Proposal
Indefinite
The parties dispute whether the term “setup” in the ‘871 Patent has a very specific
meaning in relation to camera technology.
Defendants contend that “setup” refers to the
execution of special microprocessor-controlled patterns by means of a diascope projector
included in the lens of a triaxial-code video camera. (Dkt. No. 224 at 11) (citing Dkt. No. 224-3
at 4 (Broadcast Production Equipment, Systems and Services, in Television Engineering
Handbook, §14.97)). Defendants argue that there is no indication that “setup” was or could be
used by any of the devices disclosed in the specification, because it relates to conventional
analog and digital cameras and a camcorder. (Dkt. No. 224 at 11.) Defendants further argue that
none of the cameras disclosed in the specification are triaxial cable video cameras, and therefore
none could use “setup” as the claim term is understood in its proper context. (Dkt. No. 224 at
11.) According to Defendants, the term is meaningless and indefinite. (Dkt. No. 224 at 11.)
Plaintiff responds that Defendants attach a highly technical and narrow meaning to the
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term “setup” for the sole purpose of manufacturing an indefiniteness argument. (Dkt. No. 231 at
5.) Plaintiff argues that Defendants’ construction of “setup” ignores the specification and the
dictionary definition of this term as it relates to cameras. (Dkt. No. 231 at 5) (citing ‘871 Patent,
13:46–52).
Plaintiff contends that the specification indicates that digital commands are
converted to analog signals for controlling features/functions of the camera (e.g., setup). (Dkt.
No. 231 at 5.) Plaintiff further argues that the term “setup” as it relates to cameras is “a camera
position from which a scene is filmed.” (Dkt. No. 231 at 5) (citing Dkt. No. 231-1 at 2 (MerriamWebster Dictionary)). Plaintiff contends that all of the claims that recite “setup” are merely
discussing control of the position of the camera from a device. (Dkt. No. 231 at 5.) According to
Plaintiff, controlling the position of the camera is a functionality applicable to all cameras,
including digital and analog cameras. (Dkt. No. 231 at 5.)
For the following reasons, the Court finds that the term “setup” is not indefinite.
1. Analysis
The term “setup” appears in claims 9 and 12 of the ‘871 Patent. The Court finds that the
term is used consistently in the claims and is intended to have the same meaning in each claim.
The Court also finds that the intrinsic evidence indicates that “setup” relates to one of the many
controllable features/function of the camera.
Claim 9 recites “digital/analog circuits for
convening digital commands to analog signals for controlling gain, pedestal, setup, white clip,
lens focus, white balance, lens iris, lens zoom and other functions of the camera.” Thus, the
claim language indicates that “setup” is one of the many controllable features/functions of the
camera. Likewise, the specification states the following:
Where desired, a system according to the embodiments also includes camera
operation control capability through the use of a digital/analog network for
converting digital commands to analog signals for controlling the gain, pedestal,
setup, white clip, lens focus, and other functions of the camera from a local input
device, a remote device or as programmed functions.
Page 16 of 69
‘871 Patent, 13:46–52 (emphasis added). Like the claims, this portion of the specification
indicates that digital commands may be converted to analog signals for controlling
features/functions of the camera (e.g., setup).
Moreover, the extrinsic evidence cited by Defendants confirms that a person of ordinary
skill would understand that “setup” relates to one of the many controllable features/function of
the camera. Specifically, this extrinsic evidence discusses “digital setup” in the context of a
triaxial-cable camera. (Dkt. No. 224-3 at 4.) Although this reference refers to the execution of
special microprocessor-controlled patterns by means of a diascope projector included in the lens
of a triaxial-code video camera, Defendants ignore that the reference also more generally refers
to using digital-to-analog converters to “set up” the camera. (Dkt. No. 224-3 at 4) (“[S]uitable
software could be used to set up the camera without human intervention.”). This is exactly what
is claimed, “digital/analog circuits for converting digital commands to analog signals for
controlling … setup … and other functions of the camera.” Thus, the Court agrees with Plaintiff
that the term is not indefinite. Accordingly, the Court finds that the claims, viewed in light of the
specification, inform those skilled in the art about the scope of the invention with reasonable
certainty.
2. Court’s Construction
In light of the intrinsic and extrinsic evidence, the Court finds that the term “setup” is
not indefinite, and will be given its plain and ordinary meaning.
C. “the portable housing being wireless”
Disputed Term
“the portable housing being wireless”
Plaintiff’s Proposal
Not Indefinite
Defendants’ Proposal
Indefinite
The parties dispute whether the phrase “the portable housing being wireless” in the ‘168
Patent is indefinite. Defendants contend that the specification provides no guidance for the
Page 17 of 69
disputed phrase. (Dkt. No. 224 at 11.) Defendants argue that the phrase is subject to multiple
potential interpretations, and that the specification provides no guidance to distinguish between
their proposed interpretations of the phrase. (Dkt. No. 224 at 10-11.) Defendants further argue
that the term “wireless” is specific to the communication capabilities of a device, but is never
used in connection with the structural features (e.g. “portable”) of the housing. (Dkt. No. 224 at
12.) Defendants also contend that components other than the housing itself must enable wireless
transmission, and the housing would be no different in an embodiment lacking these
components. (Dkt. No. 224 at 12.)
Plaintiff responds that when this phrase is read in its proper context, only one reasonable
interpretation exists. (Dkt. No. 231 at 6.) Plaintiff argues that claim 1 of the ‘168 Patent recites
both “the portable housing being wireless,” and “a mobile phone supported by the portable
housing, the mobile phone being operable to send to a remote recipient a wireless transmission.”
(Dkt. No. 231 at 6.) Plaintiff further contends that the specification states that “[t]he system of
the present invention also contemplates wireless transmission over a cellular telephone, radio
frequency, satellite transmission or the like.” (Dkt. No. 231 at 6) (quoting ‘168 Patent at 10:22–
26). According to Plaintiff, the only reasonable interpretation of this phrase is that the portable
housing contains/supports a component that provides wireless transmission capability. (Dkt. No.
231 at 6.)
For the following reasons, the Court finds that the phrase “the portable housing being
wireless” should be construed to mean “the portable housing contains a component that
provides wireless transmission.”
1. Analysis
The phrase “the portable housing being wireless” appears in claims 1, 22, 24, 26, 27, and
29 of the ‘168 Patent. The Court finds that the phrase is used consistently in the claims and is
Page 18 of 69
intended to have the same meaning in each claim. The Court also finds that the intrinsic
evidence indicates that “the portable housing being wireless” means that the portable housing
contains a component that provides wireless transmission. In addition to reciting the disputed
phrase “the portable housing being wireless,” the claims also generally recite “a mobile phone
supported by the portable housing, the mobile phone being operable to send to a remote recipient
a wireless transmission.” Thus, the claim language indicates that the portable housing contains a
component (e.g., a mobile phone) that provides wireless transmission.
Likewise, the specification states that “where desired, an integral cellular phone can be
incorporated in the camera housing and transmission can be sent directly from the camera
housing to a remote receiving station.” ‘168 Patent at 12:1–5. The specification also states that
“[t]he system of the present invention also contemplates wireless transmission over a cellular
telephone, radio frequency, satellite transmission or the like.” ‘168 Patent at 10:22–24. Thus, the
specification indicates that the portable housing contains a component (e.g., a mobile phone) that
provides wireless transmission.
Defendants’ contention that the phrase is subject to multiple potential interpretations
ignores the intrinsic evidence and evaluates the phrase in a vacuum. Demarini Sports v. Worth,
239 F.3d 1314, 1327 (Fed. Cir. 2001) (“We note that claim terms are not construed in a vacuum.
Rather, to interpret claim terms we look to all of the intrinsic evidence as it pertains to the terms
in question.”). Accordingly, the Court finds that the claims, viewed in light of the intrinsic
evidence, inform those skilled in the art about the scope of the invention with reasonable
certainty, and are not indefinite.
2. Court’s Construction
In light of the intrinsic evidence, the Court construes the phrase “the portable housing
Page 19 of 69
being wireless” to mean “the portable housing contains a component that provides wireless
transmission.”
D. “adapted for transmitting”
Disputed Term
“adapted for transmitting”
Plaintiff’s Proposal
Not Indefinite
Defendants’ Proposal
Indefinite
The parties dispute whether the phrase “adapted for transmitting” in the ‘871 Patent is
indefinite. Defendants contend that each of the wireless communication devices incorporated in
the handheld device incorporate wireless transmission of digital signals. (Dkt. No. 224 at 12.)
Defendants argue that the phrase “adapted for transmitting” requires that the structure of the
communication device be modified (i.e., “adapted”) to transmit digitized signals. (Dkt. No. 224
at 12.) According to Defendants, the plain language of the phrase seeks to structurally modify a
device component that already has the very function that is the subject of the adaptation. (Dkt.
No. 224 at 13.) Defendants argue that this means that there is no context for what “adapted”
refers to other than an existing function, and there is no basis on which to identify a boundary for
the meaning of the phrase. (Dkt. No. 224 at 13.)
Plaintiff responds that the patentee used the phrase “adapted” synonymously with “made”
throughout the ‘871 Patent. (Dkt. No. 231 at 6) (citing ‘871 Patent at 11:3–6). Plaintiff also
argues that the patentee’s usage of the term “adapt” is consistent with the dictionary definition.
(Dkt. No. 231 at 7) (citing Dkt. No. 231-1 at 5 ((Merriam-Webster Dictionary) (defining “adapt”
as “to make fit (as for a new use) often by modification.”))). Finally, Plaintiff argues that while
“adapted” may commonly be associated with modifications of a device, it can also refer to how
the device was originally made to fit or work. (Dkt. No. 231 at 7.)
For the following reasons, the Court finds that the phrase “adapted for transmitting” is
not indefinite.
Page 20 of 69
1. Analysis
The phrase “adapted for transmitting” appears in claim 1 of the ‘871 Patent. Specifically,
claim 1 recites “a wireless communications device adapted for transmitting any of the digitized
signals to the compatible remote receiving station.” The Court finds that this claim language is
not confusing or ambiguous. Furthermore, the Court is not persuaded by Defendants’ argument
that the phrase seeks to structurally modify a device component that already has the very
function that is the subject of the adaptation. (Dkt. No. 224 at 13.) Instead, the claim language
plainly states that the wireless communications device is “adapted for transmitting any of the
digitized signals to the compatible remote receiving station.” In other words, if the wireless
communication device can transmit the digitized signal, then it is “adapted” within the scope of
the claims. If it cannot transmit the digitized signal, then it is not “adapted” within the scope of
the claims.
Accordingly, the Court finds that the claims, viewed in light of the intrinsic
evidence, inform those skilled in the art about the scope of the invention with reasonable
certainty, and are not indefinite. Furthermore, the Court finds that the phrase “adapted for
transmitting” is unambiguous, is easily understandable by a jury, and requires no construction.
2. Court’s Construction
In light of the intrinsic evidence, the Court finds that the phrase “adapted for
transmitting” is not indefinite, and will be given its plain and ordinary meaning.
Page 21 of 69
E. “processor” phrases
Disputed Term
“a processor in
the housing for
generating an
image data
signal
representing the
image framed
by the camera”
Plaintiff’s Proposal
Not a means-plus-function
claim; no construction
necessary.
Alternatively
Function: generating an image
data signal representing the
image framed by the camera
Structure: A processor
associated with the electronic
camera. The processor
executes the algorithm of
detecting the initiation of a
camera and capture sequence,
initiating capture of an image
frame and storing the digital
image frame in a digital
memory device.
Not a means-plus-function
“a processor
associated with claim; no construction
necessary.
the electronic
camera for
Alternatively
Function: capturing and
capturing and
digitizing the framed image in
digitizing the
a format for transmission over
framed image
the cellular telephone network
in a format for
via the cellular telephone.
transmission
over the cellular Structure: A processor
associated with the electronic
telephone
network via the camera. The processor
executes the algorithm of
cellular
detecting the initiation of a
telephone”
camera and capture sequence,
initiating capture of an image
frame and storing the digital
image frame in a digital
memory device in a format for
transmission over a cellular
network.
Defendants’ Proposal
Function: generating an image data
signal representing the image framed by
the camera.
Structure: A general purpose processor
having a memory for storing the
software program executed by the
processor. The processor executes the
algorithm of: receiving a signal from an
image sensor and transmitting a
captured image to a gray scale bit map
memory device, outputting the image to
a half-tone conversion scheme to be
input into a binary bit map for
formatting the captured image in a
configuration suitable for transmission
via a Group III facsimile system or PC
modem protocol.
Function: capturing and digitizing the
framed image in a format for
transmission over the cellular telephone
network via the cellular telephone.
Structure: A dedicated image processor
having a control store memory for
storing the software program executed
by the processor The processor executes
the software algorithm of: detecting the
initiation of a camera and capture
sequence, initiating capture of an image
frame, transmitting the captured image
to a gray scale bit map memory device,
outputting the image to a halftone
conversion scheme to be input into a
binary bit map for formatting the
captured image in a configuration
suitable for transmission via a Group-III
facsimile system or a PC modem
protocol.
Page 22 of 69
“a processor for
processing the
image framed
by the camera
for generating a
digitized
framed image
as displayed in
the display”
Not a means-plus-function
claim; no construction
necessary.
Alternatively
Function: processing the
image framed by the camera
for generating a digitized
framed image as displayed in
the display
Structure: A processor
associated with the electronic
camera. The processor
executes the algorithm or
converting the signal for
display and stores it in a digital
memory device
Function: Processing the image framed
by the camera for generating a digitized
framed image as displayed in the
display.
Structure: A microprocessor or digital
image processor having a control store
memory for storing the software
program executed by the processor. The
processor executes the algorithm of:
Transmitting the captured image to a
gray scale bit map memory device,
inputting the output of the gray scale bit
map to a digital memory device,
recalling the image from the digital
memory device, and outputting the
image to the display
The parties dispute whether the “processor” phrases in the ‘871 Patent invoke 35 U.S.C.
§ 112, ¶ 6, and require construction. Plaintiff argues that none of these claim phrases contain the
word “means,” and thus the Court must presume that the limitation does not invoke § 112, ¶ 6.
(Dkt. No. 216 at 26.) Plaintiff further contends that Defendants cannot meet their burden of
rebutting the presumption because the structure for the three phrases is “a processor.” (Dkt. No.
216 at 26.) (citing Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311 (Fed. Cir. 2004)).
Plaintiff also argues that in Ex Parte Cutlip, 2014 WL 2466586 (P.T.A.B. May 29, 2014), the
PTAB found that “the claimed processor and memory very clearly refer to structural elements
which Appellant’s Specification discloses are used to implement the functionality recited by the
claimed modules.” (Dkt. No. 216 at 28) (quoting Id. at *2–3). Plaintiff argues that the PTAB
cited to the specific part of the specification that indicated that the processor was a hardware
device and not merely software. (Dkt. No. 216 at 28.) Plaintiff contends that similar to Ex Parte
Cutlip, the intrinsic evidence indicates that the processor is a hardware device and not merely
software. (Dkt. No. 216 at 28) (citing ‘871 Patent at 8:25–32; Figures 5 and 8A-5).
In the alternative, Plaintiff proposes constructions that include corresponding structure.
Page 23 of 69
(Dkt. No. 216 at 30-31, 32-33, 34.) Plaintiff argues that its proposed constructions identify the
structure actually necessary to perform the function. (Dkt. No. 216 at 31, 33, 35.) Plaintiff
contends that Defendants’ constructions include numerous ancillary implementation details
unnecessary to performance of the function. (Dkt. No. 216 at 31, 33, 35.) Plaintiff also contends
that Defendants’ constructions improperly exclude particular embodiments. (Dkt. No. 216 at 32,
33.) Plaintiff further argues that Defendants’ corresponding structures are incorrect because
neither the specification nor the prosecution history clearly link or associate the proposed
structures to the function recited in the claim. (Dkt. No. 216 at 31, 34, 35.)
Defendants respond that the “processor” terms all recite purely functional limitations of a
processor. (Dkt. No. 224 at 25.) Defendants argue that a general-purpose processor is incapable
of performing the recited functions unless programmed with an algorithm. (Dkt. No. 224 at 25.)
Defendants argue that a claim must connote sufficient structure to one of skill in the art to
perform the function identified by each limitation to avoid being construed under § 112, ¶ 6.
(Dkt. No. 224 at 25) (citing Robert Bosch, LLC v. Snap-On, Inc., No. 2014-1040, 2014 WL
5137569, at *2 (Fed. Cir. Oct. 14, 2014).
Defendants further argue that a court in this District found that “[i]f ‘computer’ or
‘processor’ is insufficient structure to define the scope of a means-plus-function limitation, the
word ‘processor’ cannot describe sufficient structure when recited directly in a claim limitation
itself.” (Dkt. No. 224 at 26) (citing Personal Audio, LLC v. Apple, Inc., No. 9:09-cv-111, 2011
WL 11757163, at *21 (E.D. Tex. Jan. 31, 2011)). Defendants also contend that the PTO
(through the PTAB) has consistently held that claims reciting a “processor” for performing a
specialized function invoke § 112, ¶ 6. (Dkt. No. 224 at 26.)
Defendants further contend that the specification of the ‘871 Patent admits that the
Page 24 of 69
processor requires a “software program executed by the processor” in order to perform the
specified functions. (Dkt. No. 224 at 27) (citing ‘871 Patent at 8:29–38).
According to
Defendants, the phrases should be interpreted as means-plus-function elements, because they
“recite[…] function without reciting sufficient structure for performing that function.” (Dkt. No.
224 at 27) (quoting Robert Bosch, 2014 WL 5137569, at *2).
Defendants argue that Plaintiff incorrectly relies on cursory statements to support its
argument that Defendants’ construction excludes embodiments. (Dkt. No. 224 at 29.)
Defendants argue that “[a] bare statement that known techniques or methods can be used does
not disclose structure.” (Dkt. No. 224 at 29) (quoting Biomedino, LLC v. Waters Technologies
Corp., 490 F.3d 946, 953 (Fed. Cir. 2007)). Defendants further argue that a disclosure that only
suggests a possible alternative embodiment without sufficiently describing that embodiment
should not be treated as corresponding structure. (Dkt. No. 224 at 29) (citing Fonar Corp. v.
General Elec. Co., 107 F.3d 1543, 1551–52 (Fed. Cir. 1997)). Defendants also contend that
Plaintiff’s construction simply repeats the functions and that their construction is consistent with
the specification. (Dkt. No. 224 at 29, 30, 31.)
Plaintiff replies that Defendants completely ignore the “strong” presumption that the
absence of the word “means” indicates that § 112, ¶ 6 is not invoked. (Dkt. No. 231 at 10) (citing
Williamson v. Citrix Online, LLC, 770 F.3d 1371 (Fed. Cir. 2014)).
Plaintiff argues that
Defendants’ reliance on Bosch is misplaced because the phrases at issue there were “program
loading device” and “program recognition device.” (Dkt. No. 231 at 10-11) (citing Robert Bosch,
769 F.3d at 1099). Plaintiff argues that the Federal Circuit had previously found “device” to be a
nonstructural, “nonce” word and applied that holding. (Dkt. No. 231 at 10-11.) According to
Plaintiff, Bosch did not change the legal landscape, it merely applied longstanding law. (Dkt. No.
Page 25 of 69
231 at 11.)
Plaintiff further argues that the term “processor” in the disputed phrases denotes structure
to a person of ordinary skill. (Dkt. No. 231 at 11) (citing Ex Parte Cutlip, 2014 WL 2466586, at
*2-3 (P.T.A.B. May 29, 2014) (“[T]he claimed processor and memory very clearly refer to
structural elements which Appellant’s Specification discloses are used to implement the
functionality recited by the claimed modules”).
Finally, Plaintiff argues that Defendants’
construction overlook swaths of the specification in favor of a single embodiment. (Dkt. No. 231
at 11-12.)
For the following reasons, the Court finds that Defendants have failed to overcome the
rebuttable presumption that the “processor” phrases do not invoke 35 U.S.C. § 112, ¶ 6, and that
the phrases should be given their plain and ordinary meaning.
1. Analysis
The phrase “a processor in the housing for generating an image data signal representing
the image framed by the camera” appears in claim 1 of the ‘871 Patent. The phrase “a processor
associated with the electronic camera for capturing and digitizing the framed image in a format
for transmission over the cellular telephone network via the cellular telephone” appears in claim
6 of the ‘871 Patent. The phrase “a processor for processing the image framed by the camera for
generating a digitized framed image as displayed in the display” appears in claims 9 and 12 of
the ‘871 Patent.
The Court first notes that none of the disputed phrase recite “means.”
It is well
established that “[a] claim limitation that actually uses the word ‘means’ will invoke a rebuttable
presumption that § 112 ¶ 6 applies. By contrast, a claim term that does not use ‘means’ will
trigger the rebuttable presumption that § 112 ¶ 6 does not apply.” CCS Fitness, Inc. v. Brunswick
Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002) (internal citation omitted). The Federal Circuit has
Page 26 of 69
“repeatedly characterized this presumption as ‘strong’ and ‘not readily overcome’ and, as such,
ha[s] ‘seldom’ held that a limitation without recitation of ‘means’ is a means-plus-function
limitation.” Apple, Inc. v. Motorola, Inc., 757 F3d 1286, 1297 (Fed. Cir. 2014). Because none of
the disputed limitations include the word “means,” Defendants have the burden of overcoming
the presumption by demonstrating that the claims fail to “recite sufficiently definite structure” or
recite a “function without reciting sufficient structure for performing that function.” Watts v. XL
Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000). The Court finds that Defendants have failed to
meet their burden.
Defendants skip the step of determining whether the limitation read in light of the
remaining claim language, specification, prosecution history, and relevant extrinsic evidence, has
sufficiently definite structure to a person of ordinary skill in the art. Apple, 757 F3d at 1298 (“The
correct inquiry, when ‘means’ is absent from a limitation, is whether the limitation read in light of
the remaining claim language, specification, prosecution history, and relevant extrinsic evidence,
has sufficiently definite structure to a person of ordinary skill in the art.”). The Federal Circuit has
held that terms such as “detector” and “circuit” are structural terms while generic terms such as
“means,” “element,” and “device” are nonstructural. Apple, 757 F.3d at 1299 (citing Personalized
Media Commc'ns, LLC v. Int'l Trade Comm'n, 161 F.3d 696, 705 (Fed. Cir. 1998); Apex Inc. v.
Raritan Computer, Inc., 325 F.3d 1364, 1373 (Fed. Cir. 2003)). Like “circuit” in Linear Tech.
Corp. v. Impala Linear Corp., 379 F.3d 1311 (Fed. Cir. 2004), the recited “processor” is a
structure-connoting term. Id. at 1320. In other words, “processor” is not a generic nonstructural
term such as “means,” “element,” and “device” that typically do not connote sufficient structure.
Apple, 757 F.3d at 1299-1300. Moreover, even if a term covers a broad class of structures and
identifies structures by their function, it is sufficient to avoid means-plus-function treatment.
Page 27 of 69
Lighting World, 382 F.3d at 1360. What is important is whether the term is understood to describe
structure and is not simply a substitute for “means for.” Id.
Here the specification indicates to a person of ordinary skill in the art that the recited
“processor” is sufficiently definite structure, and not merely software.
For example, the
specification states that:
In the exemplary embodiment, the processor 86 can be any processor such as a
microprocessor or DSP, with sufficient capability to perform the described
functions. The processor bus is indicated at 87. The circuitry supporting the
processor comprises the processor chip 86 and the control store memory (ROM,
Flash RAM, PROM, EPROM or the like) 92 for storing the software program
executed by the processor.
‘871 Patent, 8:25–32. As the Federal Circuit stated in Apple, “structure may also be provided by
describing the claim limitation’s operation such as its input, output, or connections.” Apple, 757
F.3d at 1300. Here, Figures 5, 8A-3, and 8A-5 illustrate the recited processor as a hardware
component in the schematic circuit diagrams. The specification further describes and illustrates
the processor’s connection to other components:
FIG. 8 is an illustration of an exemplary schematic diagram for the circuit of a
system according to embodiments as specifically taught in the diagram of FIG. 5.
Pin numbers, wiring harnesses and components are as shown on the drawing.
FIG. 8, part A, is the system interconnect and shows the central processor board
300, the video board 302, the power board 304 and the CRT electronic
interconnect board 306.
‘871 Patent at 11:21–28. In light of the intrinsic evidence, the Court finds that Defendants have
failed to overcome the strong presumption that § 112, ¶ 6 does not apply to the “processor”
claim limitations, none of which include the term “means.” Moreover, the Court finds that the
“processor” phrases are unambiguous, are easily understandable by a jury, and require no
construction.
The Court further finds that the cases cited by Defendants are not applicable to the facts of
this case. First, in Aristocrat Techs. Austl. Pty v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed.
Page 28 of 69
Cir. 2008) and WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1348-49 (Fed. Cir. 1999),
the asserted claims included the term “means,” and there were no disputes that means-plusfunction claim construction applied. Thus, neither case analyzed the presumption against the
applicability of § 112, ¶ 6 where a claim does not recite “means.” Similarly, Robert Bosch, LLC
v. Snap-On Inc., 769 F.3d 1094 (Fed. Cir. 2014) is distinguishable because it involved claims
reciting “device,” a term that the Federal Circuit explicitly recognizes as a non-structural
“nonce” word. See also Apple, 757 F.3d at 1299-1300.
Thus, Bosch’s analysis differs
significantly from this case, where “processor” connotes at least some structure, and does not
affect the Court’s outcome.
Finally, the reasoning in Personal Audio, 2011 U.S. Dist. LEXIS 157778, relied heavily on
Aristocrat. Id. at 8-10. Since Personal Audio, the Federal Circuit clarified that “where the claim is
not drafted in means-plus-function format, the reasoning in the Aristocrat line of cases does not
automatically apply, and an algorithm is not necessarily required.” Apple, 757 F.3d at 1298. The
Aristocrat reasoning applies where a patentee has expressly invoked means-plus-function claiming
to determine whether the patentee has disclosed sufficient structure to define the scope of such a
claim. Accordingly, the analysis of recited structure in Personal Audio differs from the Federal
Circuit’s guidance in Apple.
Moreover, Personal Audio differs further from this case. In Personal Audio, both asserted
patents shared a common specification and nearly identical claims were at issue. Personal Audio,
2011 U.S. Dist. LEXIS 157778, at *1-2. The second-issued patent was a divisional of the firstissued patent. Id. The court noted that “[t]he claim terms at issue in the [second-issued] patent are
nearly identical to the means-plus-function terms found in the [first-issued] patent, except that
‘means for’ and ‘means responsive’ have been replaced with “processor for” and “said processor
Page 29 of 69
responds.” 2011 U.S. Dist. LEXIS 157778, at *69. Accordingly, there was support for finding that
the “processer” terms did not describe structure and were simply a substitute for “means for,”
which overcame the presumption. In this case, “processor” has not simply replaced “means” in
otherwise identical claim language between asserted patents. Therefore, the Court finds that
Personal Audio is less persuasive in this situation.
2. Court’s Construction
In light of the intrinsic evidence, the Court finds that Defendants failed to overcome the
presumption against treating the “processor” limitations as means-plus-function claims.
Accordingly, the phrase “a processor in the housing for generating an image data signal
representing the image framed by the camera,” the phrase “a processor associated with the
electronic camera for capturing and digitizing the framed image in a format for
transmission over the cellular telephone network via the cellular telephone,” and the phrase
“a processor for processing the image framed by the camera for generating a digitized
framed image as displayed in the display” will be given their plain and ordinary meaning.
F. “manually portable housing,” “handheld,” and “portable housing”
Disputed Term
“manually portable
housing”
“handheld”
“portable housing”
Plaintiff’s Proposal
a housing small enough to be held
and operated while holding it in one
hand
a portable device small enough to be
held and operated while holding it in
one hand
a housing small enough to be held
and operated while holding it in one
hand
Defendants’ Proposal
housing (defined as “an
enclosing structure”) capable
of being held by hand
capable of being held by hand
housing (defined as “an
enclosing structure”) capable
of being held by hand
The parties agree that “housing” should be construed as “an enclosing structure.” (Dkt.
No. 241 at 10, 12.) The parties dispute whether the terms “manually portable housing” and
“handheld” in the ‘871 Patent, and “portable housing” in the ‘168 Patent should be construed as
Page 30 of 69
“small enough to be held and operated while holding it in one hand,” as Plaintiff proposes.
Plaintiff contends that Defendants’ construction provides an improper and practically boundless
scope of what is manually portable. (Dkt. No. 216 at 8.) Plaintiff argues that Defendants’
construction could include “items as large as a server or a dresser of drawers.” (Dkt. No. 216 at
8.) Plaintiff further argues that the specification teaches a device much smaller than Defendants’
construction. (Dkt. No. 216 at 8) (citing ‘871 Patent at 5:18–21). Plaintiff contends that the
specification equates “portable” to “handheld.” (Dkt. No. 216 at 8) (‘871 Patent at 10:26–30).
Plaintiff also contends that Figures 6B, 7A, and 7B are consistent with its construction. (Dkt. No.
216 at 8.)
Finally, Plaintiff argues that its construction is further confirmed by multiple
dictionary definitions for “handheld.” (Dkt. No. 216 at 9.)
Defendants argue that the terms “hand held” and “portable” will be readily understood by
the jury, and nothing in the specification suggests that the patentee acted as his own
lexicographer to give these terms a narrower meaning. (Dkt. No. 224 at 13.) Defendants contend
that the patents merely distinguish stationary desktop units that are not capable of being held by
hand from portable units. (Dkt. No. 224 at 14) (citing ‘871 Patent at 5:18–21; 10:26–28).
Defendants also argue that depending on the circumstances and the user, the cameras illustrated
in Figures 6B and 7A may require both hands to hold and operate. (Dkt. No. 224 at 14.)
Defendants contend that Plaintiff’s construction that requires a device to be held in one hand,
and operated with the other, is confusing and has no support in the specification. (Dkt. No. 224
at 14.) Finally, Defendants argue that other courts in this district have declined to import
operability limitations into similar terms where it was not clearly required by the specification.
(Dkt. No. 224 at 14.)
For the following reasons, the Court finds that the terms “manually portable housing”
Page 31 of 69
and “portable housing” should be construed as “housing capable of being held by hand.”
The Court further finds that “handheld” should be construed as “capable of being held by
hand.”
1. Analysis
The term “manually portable housing” appears in claims 1 and 6 of the ‘871 Patent. The
Court finds that the term is used consistently in the claims and is intended to have the same
meaning in each claim. The term “handheld” appears in claims 1, 6-9, and 12 of the ‘871 Patent.
The Court finds that the term is used consistently in the claims and is intended to have the same
meaning in each claim. The term “portable housing” appears in claims 1, 3, 4, 7, 9, 19, 21, 22,
24, 26, 27, and 29 of the ‘168 Patent. The Court finds that the term is used consistently in the
claims and is intended to have the same meaning in each claim.
Plaintiff proposes that the terms should be construed as “small enough to be held and
operated while holding it in one hand.”
The Court finds that neither the claims, nor the
specification include the narrow and potentially confusing construction that Plaintiff proposes.
The specification does distinguish stationary desktop units that are not capable of being held by
hand from portable units. Specifically, the specification states “[b]oth portable, or hand held,
image capture and transmission units and stationary, or desktop, image capture and transmission
units are described.” ‘871 Patent at 5:18–21. However, this description does not indicate that the
terms should be construed as “small enough to be held and operated while holding it in one
hand.” Instead, it indicates that the terms should be construed as capable of being held by hand,
as Defendants propose. There is no requirement that the user use only one hand to operate the
claimed apparatus. Moreover, common experience indicates that the 35 millimeter type camera
housing illustrated in Figures 7A and 7B may require two hands to operate.
Plaintiff’s
construction not only adds unnecessary ambiguity, but is inconsistent with how a person of
Page 32 of 69
ordinary skill in the art would understand the terms in light of the intrinsic evidence.
2. Court’s Construction
In light of the intrinsic evidence, the Court construes the terms “manually portable
housing” and “portable housing” as “housing capable of being held by hand.” The Court
also construes the term “handheld” as “capable of being held by hand.”
G. “supported/supporting/supports”
Disputed Term
“supported/supporting/
supports”
Plaintiff’s Proposal
No construction necessary
Defendants’ Proposal
Hold in place through contact
with
Alternative: Hold in place
through direct or indirect contact
with
The parties dispute whether the terms “supported/supporting/supports” require “direct”
contact, as Defendants propose. Plaintiff argues that Defendants’ construction is ambiguous
because it fails to address whether such contact could be direct or indirect. (Dkt. No. 216 at 10.)
Plaintiff contends that to the extent that Defendants’ construction is limited to direct “contact
with” what is being held in place, Defendants’ construction is improperly limiting. (Dkt. No. 216
at 10.) In the alternative, Plaintiff proposes construing the term as “hold in place through direct
or indirect contact with.”
Defendants respond that these terms are susceptible to two ordinary meanings: (1) to
bear the weight of or (2) to hold in place through contact. (Dkt. No. 224 at 14) (citing Dkt. No.
224-4 at 3 (American Heritage Dictionary at 1364)). Defendants argue that only the latter
meaning is supported by the Asserted Patents. (Dkt. No. 224 at 14.) Defendants contend that the
claims cover the physical configuration of components in relationship to a housing of a device
having integrated camera and telephone functionality. (Dkt. No. 224 at 15.) Defendants also
argue that Figure 7A and accompanying text shows that the button keys (98), the LCD unit,
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viewfinder (194), back window (198), and memory card (72) are all held in place through
contact with the housing. (Dkt. No. 224 at 15) (citing ‘871 Patent at 11:8–14). According to
Defendants, the plain language of the claims demonstrate that the term “support” should be
construed as held in place through contact, as Defendants propose. (Dkt. No. 224 at 15.)
For
the
following
reasons,
the
Court
finds
that
the
terms
“supported/supporting/supports” should be given their plain and ordinary meaning.
1. Analysis
The terms “supported/supporting/supports” appear in claims 1, 6, and 12 of the ‘871
Patent, and claims 1, 4, 7, 9, 19, 20, 21, 22, 24, 26, 27, and 29 of the ‘168 Patent. The Court
finds that the terms are used consistently in the claims and are intended to generally have the
same meaning in each claim. The Court also finds that the terms are unambiguous, are easily
understandable by a jury, and require no construction. The claim language plainly states a
variety of components such as the “input keys,” “media,” “image collection device”, and “digital
camera,” are “supported by the housing.” This language is not confusing and does not require
construction.
Defendants contend that this language requires direct contact, and excludes indirect
contact between a components and the housing. (Dkt. No. 224 at 15 n.9.) Defendants point to
one embodiment to support their construction. (Dkt. No. 224 at 15.) However, the claims are not
limited to a disclosed embodiment, and there is nothing that prevents indirect contact between a
component and the housing. Indeed, the extrinsic evidence submitted by Defendants indicates
that “support” can mean direct or indirect contact. (Dkt. No. 224-4 at 3 (American Heritage
Dictionary at 1364)). To the extent that a party contends that plain and ordinary meaning of
“supported/supporting/supports” requires direct contact and excludes indirect contact, the Court
rejects this argument because it is inconsistent with how a person of ordinary skill would
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interpret the claims.
2. Court’s Construction
In
light
of
the
intrinsic
and
extrinsic
evidence,
the
terms
“supported/supporting/supports” will be given their plain and ordinary meaning.
H. “self-contained”
Disputed Term
Plaintiff’s Proposal
“self-contained” A unitary system incorporating a
combination cellular telephone, integrated
image processing system, display, camera
and integral power unit (such as a
rechargeable battery source or the like)
Defendants’ Proposal
No construction necessary.
The parties dispute whether the term “self-contained” in the ‘871 Patent requires
construction. Plaintiff argues that the term “self-contained” should be construed because it can
mean different things in different contexts. (Dkt. No. 216 at 10.) Plaintiff contends that its
construction is adapted from the specification, which states that the invention is “self-contained
with an integral power unit such as a rechargeable battery source or the like.” (Dkt. No. 216 at
10) (citing ‘871 Patent at 2:55–59; 13:33–35). Plaintiff further argues that its construction
contains the elements recited in claim 1. (Dkt. No. 216 at 11-12.)
Defendants respond that the claims recite specific combinations of elements in a housing
(e.g., “an electronic camera contained within the portable housing,” “a processor in the housing,”
and “a telephonic system in the housing”). (Dkt. No. 224 at 16.) Defendants contend that
Plaintiff’s construction renders these claim limitations superfluous. (Dkt. No. 224 at 16.)
Defendants also argue that the various references to “self-contained” in the Asserted Patents are
neither ambiguous, confusing, nor susceptible to multiple interpretations. (Dkt. No. 224 at 16.)
Finally, Defendants argue that the preambles of the relevant claims are not limiting, and each of
the relevant claims separately sets out the required elements of the alleged invention. (Dkt. No.
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224 at 16.)
For the following reasons, the Court finds that the term “self-contained” should be given
its plain and ordinary meaning.
1. Analysis
The term “self-contained” appears only in the preambles of claims 1-5 of the ‘871 Patent.
The Court finds that the term is used consistently in the claims and is intended to have the same
meaning in each claim.
The Court also finds that the term is unambiguous, is easily
understandable by a jury, and requires no construction. In addition, the claim language itself
recites the different elements that are required to be “self-contained” or “in the housing” in the
body of the claim. Plaintiff’s construction would render these claim limitations superfluous and
is therefore rejected. That said, the Court finds that the preamble is limiting because it provides
antecedent basis for the term “wireless telephone network.” Micron Tech., Inc. v. Tessera, Inc.,
440 F. Supp. 2d 591, 597 (E.D. Tex. 2006) (“When limitations in the body of a patent claim rely
upon, and derive antecedent basis from, the claim preamble, the preamble may act as a necessary
component of the claimed invention.”). However, as discussed, this finding does not require
adoption Plaintiff’s construction for “self-contained.”
2. Court’s Construction
In light of the intrinsic evidence, the term “self-contained” will be given its plain and
ordinary meaning.
I.
Disputed Term
“input keys”
“keypad”
“input keys,” “keypad,” and “a set of input keys”
Plaintiff’s Proposal
a manually activated array of inputs
a logical grouping of input
keys
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Defendants’ Proposal
physical push-buttons
array of physical push-buttons
“a set of input keys”
No construction necessary for entire
phrase (but see “input keys”
proposed construction)
a group of physical pushbuttons
The parties dispute whether the recited “input key” and “keypad” in the ‘871 Patent must
be physical push-buttons, as Defendants propose. Plaintiff contends that there is no requirement
that “input keys” be physical push-buttons. (Dkt. No. 216 at 11.) Plaintiff argues that the claims
themselves describe the metes and bounds of “input keys” as alphanumeric, located in the
housing, and for permitting manually input digitized alphanumeric signals. (Dkt. No. 216 at 11.)
Plaintiff contends that its construction of “a manually activated array of inputs,” is consistent
with common usage of the term and the claims. (Dkt. No. 216 at 12) (citing Dkt. No. 216-4 at 6
(The Authoritative Dictionary of IEEE Standards Terms 7th Ed. at 600)).
Defendants respond that all of the relevant claims indicate that the input keys or keypad
are not part of the display, because they recite both input keys or a keypad, and separately, a
display. (Dkt. No. 224 at 17.) Defendants argue that all of the relevant claims require that the
input keys be either in the housing or supported by the housing, indicating that they cannot
merely be an image on a screen. (Dkt. No. 224 at 17) (citing ‘871 Patent at 17:9–11).
Defendants argue that every embodiment described in the specification and shown in the
drawings discloses the use of physical push-button keys. (Dkt. No. 224 at 18) (citing ‘871 Patent
at 11:8–10, Figure 7A). Defendants contend that each and every portion of the specification
referring to input keys or a keypad refers to them as a push button, “button interface,” or a
keyboard, not a portion of the display. (Dkt. No. 224 at 18) (‘871 Patent at 12:41–46; 2:28–32;
12:60–65; 8:47–48). Defendants contend that the specification solely refers to physical keys, not
virtual keys on a display. (Dkt. No. 224 at 19.) Defendants argue that dictionaries refer to a
“key” or “keypad” as a push button or set of push buttons. (Dkt. No. 224 at 19.)
Plaintiff replies “virtual keys” are keys for inputting data, and a claim construction that
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excludes “virtual keys” cannot be correct. (Dkt. No. 231 at 7.) Plaintiff further contends that
Defendants’ argument that the input keys must be distinct from the display is wrong. (Dkt. No. at
7.) Plaintiff argues that nothing in the claims requires this separation. (Dkt. No. 231 at 7.)
Plaintiff further argues that the only requirement for the “input keys” is that they be in the
housing. (Dkt. No. 231 at 7) (citing ‘871 Patent at 15:6).
For the following reasons, the Court finds that the term “input keys” should be construed
as “switches and/or buttons,” and the phrase “a set of input keys” should be construed as “a
set of switches and/or buttons.” The Court also finds that the term “keypad” should be
construed as “array of switches and/or buttons.”
1. Analysis
The term “input keys” appears in claims 1, 9, and 12 of the ‘871 Patent. The Court finds
that the term is used consistently in the claims and is intended to have the same meaning in each
claim. The term “keypad” appears in claim 6 of the ‘871 Patent, and the phrase “a set of input
keys” appears in claim 12 of the ‘871 Patent. The claim language indicates that the “input keys”
are used to manually input alphanumeric signals. See. e.g., Claim 1 (“alphanumeric input keys in
the housing for permitting manually input digitized alphanumeric signals to be input to the
processor.”). The specification further indicates that a person of ordinary skill in the art would
understand that specification describes the recited “input keys” as “buttons” and/or “switches.”
Specifically, the specification states “the bank of operator buttons and/or switches 98 are
connected to the system through the button interface 100.” ‘871 Patent at 8:47–48. Similarly, the
specification states that “[t]he operator interface button keys 98 are housed within the housing
and can be positioned on the back plate 196 of the body.” ‘871 Patent at 11:8–10. Likewise, the
specification states that “FIG. 8, part L shows the push button control switches as 490 and 492.”
‘871 Patent at 12:41–42. Accordingly, the Court finds that Court finds that the term “input keys”
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should be construed as “switches and/or buttons,” and the phrase “a set of input keys” should be
construed as “a set of switches and/or buttons.” The Court also finds that the term “keypad”
should be construed as “array of switches and/or buttons.”
Contrary to Defendants’ argument, the claim language does not require the “input keys”
to be distinct from the display. For example, claim 1 of the ‘871 Patent recites “a display for
displaying an image framed by the camera.”
Claim 1 further recites “input keys … for
permitting manually input digitized alphanumeric signals to be input to the processor.” Thus, the
claim language specifies a purpose for both the display and the input keys. Neither of these
purposes require the input keys to be distinct from the display. Moreover, the claims indicate
that the display is supported by the housing and that the input keys are in the housing. Again,
this does not require the input keys to be distinct from the display as input keys that are in the
housing will also be supported by the housing.
Regarding Defendants’ “physical” construction, the Court is not persuaded that the terms
should be limited to the disclosed embodiments illustrating “physical” push-buttons.
As
discussed, the claim language recites that “input keys” permit the manual input of alphanumeric
signals.
The inputting of alphanumeric signals is not limited by the intrinsic evidence to
“physical” push-button keys, as Defendants propose. Electro Medical Sys., S.A. v. Cooper Life
Sciences, 34 F.3d 1048, 1054 (Fed. Cir. 1994) (“[A]lthough the specifications may well indicate
that certain embodiments are preferred, particular embodiments appearing in a specification will
not be read into the claims when the claim language is broader than such embodiments.”).
Moreover, the Court finds that Defendants’ construction that the “input keys” be “physical” does
not necessarily exclude “virtual keys,” as Defendants contend. Even “virtual keys” have a
physical component because the user inputs the alphanumeric signals by physically touching the
Page 39 of 69
virtual keys.
In effect, Defendants ask the Court to import a negative limitation into these
constructions via a strained interpretation of “physical,” which they contend excludes “virtual
keys.” Importing negative limitations into a claim absent an explicit disavowal is generally
disfavored. See Omega Eng'g. Inc. v. Raytek Corp., 334 F.3d 1314, 1332-33 (Fed. Cir. 2003)
(noting that a negative limitation imposed by the district found no anchor in the claim language,
the plain and ordinary meaning of the phrase, or in any express disclaimer within the
specification). Here, the claim term “input keys” is sufficiently broad to include different types
of “buttons and/or switches.” Nothing in the record suggests that the patentee disclaimed any
particular type of “buttons and/or switches.” To the extent that Defendants argue that input keys
exclude “virtual keys,” the Court rejects this argument.
Finally, at the Markman hearing, Defendants argued that the specification does not enable
“virtual keys,” because there is no indication that the patentee contemplated “virtual keys.”
Whether the claims enable “virtual keys” is a question that is not properly before the Court. The
parties have not submitted evidence that a person of ordinary skill in the art would be unable to
practice the claimed invention with “virtual keys.”
Notwithstanding, determining whether
“virtual keys” are after-arising technology is not critical at this stage of the case because Federal
Circuit precedent does not exclude after-arising technology from valid claims. Innogenetics, N.V.
v. Abbott Labs., 512 F.3d 1363, 1371-1372 (Fed. Cir. 2008) (“Our case law allows for afterarising technology to be captured within the literal scope of valid claims that are drafted broadly
enough.”).
2. Court’s Construction
In light of the intrinsic and extrinsic evidence, the Court construes the term “input
keys” as “switches and/or buttons,” and the phrase “a set of input keys” as “a set of switches
Page 40 of 69
and/or buttons.” The Court also construes the term “keypad” as “array of switches and/or
buttons.”
J. “image data signal(s)” and “viewing incoming image data signals”
Disputed Term
“image data
signal(s)”
“viewing incoming
image data signals”
Plaintiff’s Proposal
No construction necessary
Alternatively, “one or more signals
representing an image”
viewing image data signals received
from a source external to the device
Defendants’ Proposal
a modulated signal
incorporating digital data
representing an image
Viewing incoming image data
signals (as construed above)
from a source external to the
display
The parties dispute whether the term “image data signal(s)” in the ‘871 Patent should be
construed as “a modulated signal incorporating digital data representing an image,” as
Defendants propose. Plaintiff contends that no construction is necessary, and that Defendants’
construction is incorrect for a number of reasons. (Dkt. No. 216 at 13.) Plaintiff first argues that
Defendants’ construction is unnecessary because it merely paraphrases the claim language. (Dkt.
No. 216 at 13.) Plaintiff next argues that Defendants’ construction imports the unwarranted
limitations that the signal must be modulated and the data must be digital. (Dkt. No. 216 at 13.)
Plaintiff argues that the word “modulate” does not appear in the claims or specification, and will
only serve to introduce confusion because it is more technical than the underlying claim term it
defines. (Dkt. No. 216 at 13.)
Regarding the phrase “viewing incoming image data signals” in the ‘871 Patent, Plaintiff
argues that Defendants’ construction makes little sense in the context of the claims and
specification. (Dkt. No. 216 at 13.)
Plaintiff argues that the specification uses the term
“incoming” in terms of a signal received from a source external to the device. (Dkt. No. 216 at
13) (citing ‘871 Patent at 10:48–51; 3:14–20; 9:38–46; 9:58–60; 14:1–3). Plaintiff argues that in
Page 41 of 69
one embodiment the incoming data comes through the cellular connection, which means the
incoming data originates from a source external to the device. (Dkt. No. 216 at 13.)
Defendants respond that the only evidence of record demonstrates that this claim phrase
refers to a specific type of signal, one having both a format and a protocol that may be
transmitted external to the device itself. (Dkt. No. 224 at 19.) Defendants note that other than
the claims, the phrase “image data signal” appears only two other places in the specification.
(Dkt. No. 224 at 19.) Defendants contend that each of these references demonstrates that the
“image data signal” is a specific signal that has a protocol and a format that is transmitted. (Dkt.
No. 224 at 19-20) (citing ‘871 Patent at 9:17–30).
Defendants contend that it is clear from the specification that modem 104 transmits the
image data signal, and therefore, the “image data signal” is an output of the modem. (Dkt. No.
224 at 20.) Defendants argue that the output of the modem is a modulated signal that can be
transmitted out of the handheld device over a transmission media (such as a wireline or the air).
(Dkt. No. 224 at 20.) According to Defendants, it is this modulated signal for transmission that
the specification identifies as the “image data signal.” (Dkt. No. 224 at 20.) Defendants further
argue that none of the specification citations referenced by Plaintiff specifically refer to an
“image data signal.” (Dkt. No. 224 at 21.)
Plaintiff replies that Defendants correctly argue that “image data signal” is a specific type
of signal, but that the specific type of signal is an image data signal, as described by the claims.
(Dkt. No. 231 at 7-8.) Plaintiff argues that the modem described in the specification merely
shows how image data signals can be transmitted in an embodiment. (Dkt. No. 231 at 8.)
For the following reasons, the Court finds that the term “image data signal(s)” should be
given its plain and ordinary meaning. The Court further finds that the phrase “viewing incoming
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image data signals” should be given its plain and ordinary meaning.
1. Analysis
The term “image data signal(s)” appears in claims 1, 4–6, 10, and 11 of the ‘871 Patent.
The Court finds that the term is used consistently in the claims and is intended to have the same
meaning in each claim. The phrase “viewing incoming image data signals” appears in claim 5 of
the ‘871 Patent. The Court finds that in the context of the surrounding claim language, the term
“image data signal(s)” is unambiguous, is easily understandable by a jury, and requires no
construction. For example, claim 1 of the ‘871 Patent recites that a processor is used to generate
“an image data signal representing the image framed by the camera.” Claim 1 also provides a
“memory” for “receiving and storing the digitized framed image,” and a “user interface for
enabling a user to select the image data signal for viewing and transmission.” Thus, the claim
language indicates that the recited “image data signal” relates to the recited “digitized framed
image.” The claim further recites that it this signal that is transmitted using a telephonic system.
Similarly, the preamble of claim 6 of the ‘871 Patent recites “converting the visual image
to a digitized image data signal and transmitting digitized image data signal via a cellular
telephone network.” The body of the claim further recites “a memory associated with the
processor for receiving and storing the digitized framed image, accessible for selectively
displaying in the display window and accessible for selectively transmitting over the cellular
telephone network the digitized framed image.” Again, this indicates that the recited “image
data signal” relates to the recited “digitized framed image.” Accordingly, the Court finds that
the term “image data signal(s)” should be given its plain and ordinary meaning.
Regarding Defendants’ construction, the Court agrees with Plaintiff that it improperly
imports the unwarranted limitations that the signal must be modulated. The portion of the
specification cited by Defendants starts with “[i]n the exemplary embodiment,” and Defendants
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have not provided any evidence that the claims should be limited to this embodiment. The
claims themselves do not use the word “modulated,” and the specification states that “[w]hile
specific embodiments have been shown and described herein, it will be understood that the
invention includes all modifications and enhancements within the scope and spirit of the claims.”
‘817 at 14:43-47
Regarding the phrase “viewing incoming image data signals,” the Court finds that the
phrase is unambiguous, is easily understandable by a jury, and requires no construction. First,
the plain language of the phrase includes the word “incoming,” which indicates receiving from
an external source. Second, the specification states that in one embodiment, “the cellular phone
can be used as both an input and an output device, and incoming data or stored images can be
viewed through the viewfinder.” ‘871 Patent at 10:49–51. Accordingly, the Court finds that the
phrase “viewing incoming image data signals” should be given its plain and ordinary meaning.
2. Court’s Construction
In light of the intrinsic evidence, the phrase “image data signal(s)” and the phrase
“viewing incoming image data signals” will be given their plain and ordinary meaning.
K. “image framed by the camera” and “generating a digitized framed
image”
Disputed Term
“image framed by
the camera”
“generating a
digitized framed
image”
Plaintiff’s Proposal
the image data signal generated by
the camera from the field of view
No construction necessary
Defendants’ Proposal
image frame to be captured by
the camera
creating a single digital image
frame from a signal received
from the camera
The parties generally agree that the phrase “image framed by the camera” in the ‘871
Patent relates to an image that is to be captured. The parties dispute whether it is “the image data
signal generated by the camera,” as Plaintiff proposes, or whether it is “image frame,” as
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Defendants propose.
Plaintiff argues that the “image framed by the camera” should be
understood as the image that is seen in the viewfinder prior to capture by the camera. (Dkt. No.
216 at 14.) Plaintiff argues that Defendants have offered a circular definition, and that the
additional words “to be captured” will not provide any clarity. (Dkt. No. 216 at 14.)
Plaintiff further argues that Defendants have improperly changed the meaning of the term
“image framed.” (Dkt. No. 216 at 14.) Plaintiff contends that Defendants’ construction drops the
“d” from “framed” thereby turning the verb “framed” into the noun “frame.” (Dkt. No. 216 at
14-15.) Plaintiff argues that an “image framed” (as claimed) is very different from an “image
frame” (as Defendants propose). (Dkt. No. 216 at 15.)
Finally, Plaintiff contends that
Defendants’ construction is inconsistent with the specification, because the signal could be a
series of images, or a video feed, and is not an image frame. (Dkt. No. 216 at 15) (citing ‘871
Patent at 9:57).
Regarding Defendants’ construction for “generating a digitized framed image,” Plaintiff
argues that Defendants have reconstructed the claimed phrase “framed image” with the phrase
“image frame,” which improperly changes the meaning of claimed language. (Dkt. No. 216 at
16.) Plaintiff further argues that Defendants have merely replaced that word “generating” with
“creating.” (Dkt. No. 216 at 16.) Plaintiff contends that “generating” is understandable and
should be left undisturbed. (Dkt. No. 216 at 16.) Finally, Plaintiff argues that Defendants’
construction excludes the embodiments of the ‘871 Patent that relate to the capture of video
images in so far as it requires only a “single digital image frame” to be generated. (Dkt. No. 216
at 16) (citing ‘871 Patent at 1:37–39.)
Defendants respond that the summary of the invention recites that captured video images
are “converted into still frame digitized format for transmission.” (Dkt. No. 224 at 21) (citing
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‘871 Patent at 1:39–41). Defendants contend that the patentee defined the terms “image” and
“images” as “single frame[s].” (Dkt. No. 224 at 21) (citing ‘871 Patent at 4:58–62). Defendants
further argue that the patentee disclosed how a stream of signals from a camera is broken down
into distinct frames before they are stored in the memory, or transmitted. (Dkt. No. 224 at 22.)
(citing ‘871 Patent at 8:3–25). Defendants argue that this frame-by-frame correlation of data
before storage, transmission or display is reiterated throughout the specification. (Dkt. No. 224 at
22) (See, e.g., id., 8:39–42; 9:60–63). According to Defendants, their construction clarifies that
the limitations at issue correspond to specific frames, rather than a continuous and undefined
stream of signals. (Dkt. No. 224 at 22.)
For the following reasons, the Court finds that the phrase “image framed by the
camera” and the phrase “generating a digitized framed image” should be given their plain
and ordinary meaning.
1. Analysis
The phrase “image framed by the camera” appears claims 1, 9, and 12 of the ‘871 Patent.
The Court finds that the term is used consistently in the claims and is intended to have the same
meaning in each claim. The Court further finds that in the context of the surrounding claim
language, the phrase is unambiguous, is easily understandable by a jury, and requires no
construction.
For example, claim 1 recites “a display for displaying an image framed by the
camera.” Claim 1 further recites that it is the processor that is later used “for generating an
image data signal representing the image framed by the camera.” Likewise, claim 9 recites “a
display ... for framing the image to be captured by an image capture device and for viewing the
image, whereby an operator can view and frame the image prior to capture.” Thus, the claim
language indicates that the recited “image framed by the camera” is the image displayed in the
display. This claim language is not confusing, and the Court finds that the phrase should be
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given its plain and ordinary meaning.
Furthermore, the Court agrees with Plaintiff that Defendants’ construction improperly
changes the meaning of the term “image framed” to “image frame,” by dropping the “d” from
frame. Defendants’ construction not only improperly redrafts the claim language from the verb
“framed” to the noun “frame,” but also improperly limits the claims to one disclosed
embodiment. The Court finds that a person of ordinary skill in the art would understand that the
recited “image framed by the camera” could be a series of images, or a video feed, and is not
limited to an “image frame.”
Turning to the phrase “generating a digitized framed image,” the Court finds that the
phrase appears claims 9 and 12 of ‘871 Patent. Specifically, claims 9 and 12 recite “a processor
for processing the image framed by the camera for generating a digitized framed image as
displayed in the display.”
Like the phrase “imaged framed by the camera,” the phrase
“generating a digitized framed image” is unambiguous, is easily understandable by a jury, and
requires no construction. To the extent that Defendants argue that “generating a digitized framed
image” corresponds to specific frames, rather than a continuous and undefined stream of signals,
the Court rejects this argument.
2. Court’s Construction
In light of the intrinsic evidence, the phrase “image framed by the camera” and the
phrase “generating a digitized framed image” will be given their plain and ordinary meaning.
L. “digitiz[e][ed][ing]”
Disputed Term
“digitiz[e][ed][ing]”
Plaintiff’s Proposal
No construction necessary
Defendants’ Proposal
analog to digital conversion
The parties dispute whether the term “digitized” in the ‘871 Patent should be construed as
“analog to digital conversion,” as Defendants propose. Plaintiff argues that “digitized” is a term
Page 47 of 69
that is readily understood, and that Defendants’ construction improperly narrows the claim. (Dkt.
No. 216 at 15.) Plaintiff also argues that Defendants’ construction is circular because it uses the
word “digital” to define “digitize.” (Dkt. No. 216 at 15.) Plaintiff further contends that the
specification does not support the requirement that an analog to digital conversion must occur.
(Dkt. No. 216 at 15) (citing ‘871 Patent at 1:37–39, 5:29–31).
According to Plaintiff,
Defendants’ construction would improperly exclude those embodiments where the image was
captured by a digital camera. (Dkt. No. 216 at 16.)
Defendants respond the claim language refers to signals that have been converted from
analog to digital. (Dkt. No. 224 at 22.) According to Defendants, the claim language reflects the
notion that the signal has been converted. (Dkt. No. 224 at 22.) Defendants further argue that
their definition is not circular because “digitize” is a verb, an action meaning to convert
something from analog into digital form, and “digital” is an adjective describing the format in
which something exists, which is also the result of digitizing. (Dkt. No. 224 at 22-23.)
Regarding Plaintiff’s argument that Defendants’ construction excludes a preferred
embodiment, Defendants argue that each claim in a patent need not cover every embodiment.
(Dkt. No. 224 at 23.) Defendants further contend that regardless of whether a digital camera
falls within the purview of the particular claims at issue that require digitizing, the digital camera
embodiment was explicitly claimed elsewhere. (Dkt. No. 224 at 23.) Defendants argue that
Plaintiff is ignoring the term entirely. (Dkt. No. 224 at 23.)
Plaintiff replies that for something to be “digitized,” it must be made digital. (Dkt. No.
231 at 8.) Plaintiff argues that one possibility is that it be converted to a digital format, and
another possibility is that it be created in a digital format. (Dkt. No. 231 at 8.) Plaintiff contends
that the second concept is captured in the specification by disclosing a digital camera device.
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(Dkt. No. 231 at 8-9) (citing ‘871 Patent at 1:37–39, 5:29–31). Plaintiff also argues that
Defendants concede that their proposed construction would improperly exclude those
embodiments where the image was captured by a digital camera. (Dkt. No. 231 at 9.)
For the following reasons, the Court finds that the term “digitized” should be construed
as “created in or converted to digital format.”
1. Analysis
The term “digitized” appears claims 1, 6, 9, and 12 of the ‘871 Patent. The Court finds
that the term is used consistently in the claims and is intended to have the same meaning in each
claim. During the Markman hearing, Defendants argued that the term “digitized” requires the
Court to import a temporal limitation into the apparatus claims. Defendants argued that the
parties agree that all signals will start as analog signals, and that the claims inherently require the
claimed apparatus to convert an analog signal to digital signal at some unspecified point.
Contrary to Defendants’ contention, the Court finds that the intrinsic evidence does not require
the temporal limitation that Defendants seek to read into the claims. See Cordis Corp. v.
Medtronic AVE, Inc., 339 F.3d 1352, 1357 (Fed. Cir. 2003) (declining to superimpose a process
limitation on the product claims at issue).
The claims recite “digitized framed image,” “digitized audio signals,” “digitized
alphanumeric signals,” “digitized signals,” “digitized image data signal,” or “digitized image
signals.” None of these terms necessarily require that these “digitized” signals be “converted”
by the claimed apparatus. As Plaintiff contends, the claims do not recite when or how these
signals were “digitized.” Instead, consistent with the specification, the signal could either be
created in digital format or converted to digital format. Indeed, the specification states that
“[e]mbodiments permit capture of a video image using a digital camera.” ‘871 Patent at 1:37–39.
Similarly, the specification states that “an embodiment incorporates an image capture device
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such as a standard analog or digital camera device.” Id. at 5:29–31. An image captured by a
digital camera could be “created in” digital format.
Indeed, Defendants argued at the Markman hearing that certain digital cameras take
pictures without converting an analog signal to a digital signal. However, given the disclosed
embodiments discussed above, Defendants have provided no evidence that these type of digital
cameras were disclaimed or disavowed from the scope of the claims. Oatey Co. v. IPS Corp.,
514 F.3d 1271, 1276-77 (Fed. Cir. 2008) (“We normally do not interpret claim terms in a way
that excludes embodiments disclosed in the specification ...”). Moreover, the Court is not
persuaded by Defendants’ argument that the claims need not cover every embodiment, or that
the patentee intended this by drafting a dependent claim in a different patent. (Dkt. No. 224 at
23.)
Finally, the extrinsic evidence submitted by Defendants defines “digitize” as “to express
analog data in digital form.” (Dkt. No. 272-2 at 2) (The Authoritative Dictionary of IEEE
Standards Terms 7th Ed. at 289.). To “express” something in digital form is the same as
“creating in” digital form. The same extrinsic evidence also defines “digitize” as “to convert an
analog signal to a digital signal.” Id. Both of these definition are consistent with the Court’s
finding that “digitized” should be construed as “created in or converted to digital format.”
2. Court’s Construction
In light of the intrinsic evidence, the Court construes the term “digitized” as “created in
or converted to digital format.”
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M. “telephone network”
Disputed Term
“telephone
network”
Plaintiff’s Proposal
No construction necessary
Defendants’ Proposal
public circuit switched telephone network
The parties dispute whether the term “telephone network” in the ‘871 Patent should be
construed as “public circuit switched telephone network,” as Defendants propose. Plaintiff
argues that the phrase “public circuit switched” has no corresponding claim language and
appears nowhere in the specification. (Dkt. No. 216 at 17.)
Plaintiff further argues that
Defendants’ construction is circular because it defines a “telephone network” as a “… telephone
network.” (Dkt. No. 216 at 17.) Plaintiff contends that Defendants have narrowed the claimed
term by requiring it to be construed as a subset of itself. (Dkt. No. 216 at 17.) Finally, Plaintiff
argues that neither the claims, the specification nor the prosecution history require or mention a
public circuit switch telephone network. (Dkt. No. 216 at 18.) According to Plaintiff, the claims
compel the opposite by reciting a “wireless telephone network” or a “cellular telephone
network.”
Defendants respond that the common phrase, “telephone network,” provides the
foundation for identifying the claimed and unclaimed structures. (Dkt. No. 224 at 24.)
Defendants contend that the Public Switched Network is “[a]ny common carrier network that
provides circuit switching between public users.” (Dkt. No. 224 at 24) (quoting Dkt. No. 224-7
(Newton’s Telecom Dictionary, January 1988 at 538)). Defendants argue that the specification
reinforces this conventional understanding of the telephone network, by disclosing circuitry for
connection to a “telephone company system.” (Dkt. No. 224 at 24) (‘871 Patent at 8:66, 9:6).
Defendants contend that this telephone company system is the “public circuit switched telephone
network.” (Dkt. No. 224 at 24.) Finally, Defendants argue that the public telephone network
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connection to the cellular telephone is expressly distinct from “radio frequency, satellite
transmission or the like.” (Dkt. No. 224 at 24) (quoting ‘871 Patent at 9:31–41).
For the following reasons, the Court finds that the term “telephone network” should be
given its plain and ordinary meaning.
1. Analysis
The term “telephone network” appears claims 1, 6, 9, and 12 of the ‘871 Patent. The
Court finds that the term is used consistently in the claims and is intended to have the same
meaning in each claim. Contrary to Defendants’ contention, the intrinsic evidence does not
indicate that the term should be limited to a public circuit switched telephone network. Indeed,
Defendants’ construction would improperly limit the broader term “telephone network” to one
type of telephone network. Although the specification provides an embodiment that patches
directly into “telephone company system,” this embodiment does not limit the broader term
“telephone network.” ‘871 Patent at 9:1–9.
Moreover, neither the specification nor the
prosecution history require or mention a public circuit switched telephone network. Finally, the
Court finds that the term is unambiguous, is easily understandable by a jury, and requires no
construction. To the extent that Defendants contend that the plain and ordinary meaning of
“telephone network” requires a circuit switched network, the Court rejects this argument because
it is inconsistent with how a person of ordinary skill would interpret the claims.
2. Court’s Construction
In light of the intrinsic and extrinsic evidence, the term “telephone network” will be
given its plain and ordinary meaning.
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N. “selectively transmitting” and “selectively displaying”
Disputed Term
“selectively
transmitting”
“selectively
displaying”
Plaintiff’s Proposal
Defendants’ Proposal
to select from among a group Plain and ordinary meaning or
of images retained in
choosing between transmitting images as
memory for transmission
they are captured or transmitting recalled
images
to select from among a group choosing from one or more for display
of images retained in
memory for display
The parties generally agree that the terms “transmitting” and “displaying” in the ‘871
Patent should be given their plain and ordinary meaning.
The parties dispute whether
“selectively” means “selecting from among a group,” as Plaintiff propose, or if it means
“choosing between transmitting images as they are captured or transmitting recalled images,” as
Defendants propose for the term “selectively transmitting.”
For the term “selectively
displaying,” Defendants propose that the term “selectively” means “choosing from one or more
for display.”
Plaintiff argues that the term “selectively” cannot mean two different things, as
Defendants propose. (Dkt. No. 216 at 18.) Plaintiff contends that for selective transmission, the
specification teaches “selective recall of captured images for transmission.” (Dkt. No. 216 at 19)
(citing ‘871 Patent at 5:9–10). Plaintiff argues that this means selecting from a group of
captured images for transmission. (Dkt. No. 216 at 19.)
Plaintiff also argues that the
specification teaches selecting from a group of images to recall and view before transmission.
(Dkt. No. 216 at 19.) Plaintiff further argues that the prosecution history shows that claim
language was added to reflect the patentably distinguishing functionality of providing the ability
for the user to selectively transmit and display images from memory. (Dkt. No. 216 at 19) (citing
Dkt. No. 216-5 (September 7, 2007 Office Action Response) and 216-6 (Examiner’s
Amendment)). Finally, Plaintiff argues that the extrinsic record supports Plaintiff’s proposed
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definition. (Dkt. No. 216 at 20) (citing Dkt. No. 216-7 at 1 (http://www.merriamwebster.com/dictionary)).
Defendants argue that the terms are readily understandable to the jury and no
construction is necessary. (Dkt. No. 224 at 25.) Defendants contend that Plaintiff’s proposed
construction is incorrect because it attempts to read in an embodiment from the specification by
requiring that the user choose an image from a group, i.e., a set of two or more images. (Dkt. No.
224 at 25.) Defendants argue that the plain language of the claims indicates that a user could
“selectively” transmit or display a single image just as he could select an image from a group of
two or more. (Dkt. No. 224 at 25.) Defendants further argue that the cited portion of the file
history says nothing about selecting from a group of images. (Dkt. No. 224 at 25) (citing Dkt.
No. 216-5). Defendants contend that the patentee never argued that his invention required the
user to select from a group of two or more images before transmitting or displaying an image.
(Dkt. No. 224 at 25.)
For the following reasons, the Court finds that the phrase “selectively transmitting”
should be construed as “selecting at least one digitized framed image retained in memory
and transmitting that selection,” and that the phrase “selectively displaying” should be
construed as “selecting at least one digitized framed image retained in memory and
displaying that selection.”
1. Analysis
The phrase “selectively transmitting” appears claims 1, 6, 9, and 12 of the ‘871 Patent.
The Court finds that the term is used consistently in the claims and is intended to have the same
meaning in each claim. The phrase “selectively displaying” appears claims 1, 6, 9, and 12 of the
‘871 Patent. The Court finds that the term is used consistently in the claims and is intended to
have the same meaning in each claim. The Court further finds that the claims indicate that the
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disputed phrases relate to selecting a digitized framed image from a memory. For example,
claim 1 of the ‘871 Patent recites “memory associated with the processor for receiving and
storing the digitized framed image, accessible for selectively displaying in the display window
and accessible for selectively transmitting over the wireless telephone network the digitized
framed image.” Thus, the plain language of the claim requires selecting at least one digitized
framed image. Moreover, the prosecution history indicates that this claim language was added to
distinguish the prior art. Specifically, in describing the prior art, the patentee argued:
In either case, there is no teaching that the “prescribed picture” stored in memory
is selectively displayed by the local user so that he can determine whether to
transmit it to the remote station. In fact, Ida does not even disclose any electrical
connection which would permit the photograph stored in the memory section 24
to be displayed on the display 12.
(Dkt. No. 216-5 at 3) (September 7, 2007 Office Action Response) (emphasis in original). The
claims were then amended to recite that the memory is “accessible for selectively displaying in
the display window and accessible for selectively transmitting over the wireless telephone
network the digitized framed image.” (Dkt. No. 216-6 at 2) (Examiner’s Amendment).
Accordingly, the Court finds that the intrinsic evidence indicates that “selectively” means
“selecting at least one.”
The Court also agrees with Defendants that a user could “selectively” transmit or display
a single image and is not limited to selecting an image from a group of two or more. The
patentee did not argue that selecting an image from a group of two or more was a distinguishing
feature. However, the Court disagrees with Defendants that “selectively” should be construed
differently for these two disputed terms. The intrinsic evidence does not require “choosing
between transmitting images as they are captured or transmitting recalled images,” as
Defendants propose. Instead, it only requires selecting at least one digitized framed image
retained in memory for transmission.
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2. Court’s Construction
In light of the intrinsic and extrinsic evidence, the Court construes the phrase
“selectively transmitting” as “selecting at least one digitized framed image retained in
memory and transmitting that selection,” and the phrase “selectively displaying” as
“selecting at least one digitized framed image retained in memory and displaying that
selection.”
O. “camera control circuit”
Disputed Term
“camera control
circuit”
Plaintiff’s Proposal
Not a means-plusfunction claim; no
construction necessary
Defendants’ Proposal
construe “circuit” as: a physical pathway of
connected electrical elements for converting
digital data into analog control signals
The parties dispute whether the term “camera control circuit” in the ‘871 Patent should be
construed as “a physical pathway of connected electrical elements for converting digital data into
analog control signals,” as Defendants propose. Plaintiff argues that Defendants’ construction
improperly narrows the term “circuit” by requiring it to perform the specific function of
“converting digital data into analog control signals.” (Dkt. No. 216 at 25.) Plaintiff notes that the
specification discloses an embodiment which has “camera operation control capability through
the use of digital/analog circuits for converting digital commands to analog signals for
controlling the gain, pedestal, setup, white clip, lens focus, white balance lens iris, lens zoom and
other functions of the camera.” (Dkt. No. 216 at 25) (citing ‘871 Patent at 2:59–64). Plaintiff
argues that Defendants seek to improperly confine this term to this particular embodiment. (Dkt.
No. 216 at 25.) According to Plaintiff, claim 12 does not specify a digital/analog circuit, but
more broadly requires a “camera control circuit.” (Dkt. No. 216 at 25.) Finally, Plaintiff argues
that Defendants’ extrinsic evidence does not support their construction because neither
dictionary definition supports the requirement that a circuit be “for converting digital data into
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analog control signals.” (Dkt. No. 216 at 25.)
Defendants respond that the specification discloses a very specific camera control circuit.
(Dkt. No. 224 at 32.) Defendants argue that the specification makes clear that the camera control
circuit is hardware and converts digital signals to analog signals. (Dkt. No. 224 at 32) (citing
‘871 Patent at 11:35–39). Defendants argue that the camera module outputs signals to the
camera control digital to analog converter and therefore, the digital output of the camera module
controls camera functions only after being converted by the camera control circuit to analog
signals for that purpose. (Dkt. No. 224 at 32.) According to Defendants, the “camera control
circuit” limitation is a physical pathway of connected electrical elements for converting digital
data into analog control signals. (Dkt. No. 224 at 33) (citing Dkt. No. 224-7 at 4 (Newton’s
Telecom Dictionary, 13th Ed., 1998, at 147)).
Plaintiff replies that the ‘871 Patent specification states a circuit may be adapted “for
converting digital data into analog control signals,” but claim 12 contains no such requirement.
(Dkt. No. 231 at 10.) Plaintiff argues that Defendants attempt to improperly re-write the claim
language by importing limitations from the specification. (Dkt. No. 231 at 10.) According to
Plaintiff, the term “circuit” is understandable and requires no construction.
For the following reasons, the Court finds that the term “camera control circuit” should
be given its plain and ordinary meaning.
1. Analysis
The term “camera control circuit” appears in claim 12 of the ‘871 Patent. The Court
finds that the specification discloses an embodiment which has the “camera operation control
capability through the use of digital/analog circuits for converting digital commands to analog
signals for controlling the gain, pedestal, setup, white clip, lens focus, white balance lens iris,
lens zoom and other functions of the camera.” ‘871 Patent at 2:59–64. The specification also
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states that “Fig. 8, part C includes the camera module 332 and the camera control digital to
analog converter 334.” ‘871 Patent at 11:35–39. However, in both instances, the specification
states that this disclosure is one embodiment or an exemplary schematic diagram. Importantly,
claim 12 does not specify that the recited circuit is a digital/analog circuit. Instead, claim 12
more broadly recites “camera control circuit,” and does not include the specification language of
“for converting digital data into analog control signals.” Accordingly, the Court will not import
this limitation from the specification into the claims. See Phillips, 415 F.3d at 1323 (holding that
while claim terms are understood in light of the specification, a claim construction must not
import limitations from the specification into the claims).
Finally, the Court finds that the term is unambiguous, is easily understandable by a jury,
and requires no construction. Indeed, the extrinsic evidence submitted by Defendants does not
provide further clarity and does not define a circuit as “converting digital data into analog
control signals.” To the extent that Defendants contend that the plain and ordinary meaning of
“camera control circuit” requires “converting digital data into analog control signals,” the Court
rejects this argument because it is inconsistent with how a person of ordinary skill would
interpret the claims.
2. Court’s Construction
In light of the intrinsic and extrinsic evidence, the term “camera control circuit” will
be given its plain and ordinary meaning.
P. “transmission protocol”
Disputed Term
“transmission
protocol”
Plaintiff’s Proposal
a formal set of conventions governing the
format and relative timing of message exchange
between two communications terminals
Defendants’ Proposal
one or more rules
governing transmission
The parties dispute whether the term “transmission protocol” in the ‘168 Patent should be
Page 58 of 69
construed as “a formal set of conventions governing the format and relative timing of message
exchange between two communications terminals,” as Plaintiff proposes, or as “one or more
rules governing transmission,” as Defendants propose.
Plaintiff argues that Defendants’
construction is circular because it uses the word “transmission” to define “transmission
protocol.” (Dkt. No. 216 at 20.) Plaintiff argues that its construction is consistent with the
teaching in the specification. (Dkt. No. 216 at 20) (citing ‘168 Patent at 3:41–44, 13:58–60).
Plaintiff further argues that its construction is supported by the extrinsic record. (Dkt. No. 216 at
20) (Dkt. No. 216-4 at 7 (The Authoritative Dictionary of IEEE Standards Terms 7th Ed. at
882)).
Defendants respond that Plaintiff’s proposal is needlessly complex, would read out a
preferred embodiment, and introduces new ambiguity that would unnecessarily confuse the jury.
(Dkt. No. 224 at 33.) Defendants argue that Plaintiff’s construction would require the jury to
determine whether transmissions are sent according to a “formal set of conventions,” not just a
rule or rules governing transmission. (Dkt. No. 224 at 33.) Defendants further argue that
Plaintiff’s construction reads in an unsupported narrowing requirement that the protocol governs
the “exchange” of messages between the claimed device and a second unspecified
communications terminal. (Dkt. No. 224 at 33.) Defendants contend that Plaintiff’s construction
would read out the transmission protocols for “facsimile documents” and “captured visual
images,” by limiting the terms to “messages.” (Dkt. No. 224 at 33.) Finally, Defendants argue
that their construction is not contradicted by the extrinsic evidence cited by Plaintiff. (Dkt. No.
224 at 33.)
For the following reasons, the Court finds that the term “transmission protocol” should
be construed as “set of conventions or rules governing transmission.”
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1. Analysis
The term “transmission protocol” appears in claims 16-18 of the ‘168 Patent. The Court
finds that the term is used consistently in the claims and is intended to have the same meaning in
each claim.
The Court agrees with Defendants that Plaintiff’s construction is needlessly
complex and introduces ambiguity that would confuse the jury. For example, the claims do not
recite “communications terminals,” and it is unclear what these communication terminals are or
where they are located. Moreover, the extrinsic evidence submitted by Plaintiff indicates that a
person of ordinary skill in the art would understand transmission protocol to mean “a set of
conventions or rules governing transmission.” The definition of the word “protocol,” submitted
by Plaintiff, repeatedly uses the words “set of rules” or “set of conventions” in its ten sub-parts.
(Dkt. No. 216-4 at 7 (The Authoritative Dictionary of IEEE Standards Terms 7th Ed. at 882)).
2. Court’s Construction
In light of the intrinsic and extrinsic evidence, the Court construes the term
“transmission protocol” as “set of conventions or rules governing transmission.”
Q. “media”
Disputed Term
“media”
Plaintiff’s Proposal
No construction necessary
Defendants’ Proposal
a removable storage device
The parties dispute whether the term “media” in the ‘168 Patent should be construed as
“a removable storage device,” as Defendants propose. Plaintiff argues that nothing in the claims
suggests that media equates to a removable storage device. (Dkt. No. 216 at 21.) Plaintiff
contends that the plain and ordinary meaning of the claims require the media to be suitable to
embody a compression algorithm. (Dkt. No. 216 at 21.) Plaintiff argues that Defendants’
contention that the storage device is removable is inconsistent with the claims, because each of
the claims recite that the media is supported by the portable housing. (Dkt. No. 216 at 21.)
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Plaintiff further argues that Defendants’ construction contradicts the specification, which
teaches that “media” in and of itself is not removable. (Dkt. No. 216 at 22.) According to
Plaintiff, the specification refers to “portable media,” which means that media as a standalone
term, as used in the specification is not portable or removable. (Dkt. No. 216 at 22) (‘168 Patent
at 8:58–62). Plaintiff further argues that the specification discusses memory devices that are
both removable and not removable from the housing. (Dkt. No. 216 at 22) (‘168 Patent at 27–
31).
Plaintiff contends that Defendants’ construction therefore improperly excludes
embodiments of the ‘168 Patent. (Dkt. No. 216 at 22.)
Defendants respond that each claim expressly links “media” to compression, and that the
specification uses compression in conjunction with portable media that is removable. (Dkt. No.
224 at 34.) Defendants further argue that FIGS. 5, 6B, 6C, and 7A illustrate a portable RAM
memory in the form of a removable image card (e.g., a PCMCIA SRAM card or a PCMCIA
Flash RAM card). (Dkt. No. 224 at 34.) Defendants argue that the claims themselves expressly
differentiate between “media” and “memory,” thus indicating that “memory” can be nonremovable, and “media” is only removable. (Dkt. No. 224 at 34.)
Plaintiff replies that Defendants’ arguments are improperly limited to “media” in the
context of compression. (Dkt. No. 231 at 9.) Plaintiff argues that in the context of claim 16, it is
a processing platform that operates the transmission protocol algorithm that is “embodied in
suitable media,” which suggests that media may be similarly affixed. (Dkt. No. 231 at 9.)
Plaintiff further argues that the claims recite that the “media” must be “supported by the portable
housing,” and therefore cannot be removable. (Dkt. No. 231 at 10.) Finally, Plaintiff argues that
the plain and ordinary meaning of the term “media” is “[a]ny readable or writable data storage
area.” (Dkt. No. 231 at 10) (quoting Dkt. No. 231-2 at 4 (The Authoritative Dictionary of IEEE
Page 61 of 69
Standards Terms 7th ed., 2000 at 682)).
For the following reasons, the Court finds that the term “media” should be given its plain
and ordinary meaning.
1. Analysis
The term “media” appears claims 1, 16, 18, 22, 24, 26, 27, and 29 of the ‘168 Patent.
The Court finds that the term is used consistently in the claims and is intended to have the same
meaning in each claim. Contrary to Defendants’ contention, the intrinsic evidence does not
indicate that the term should be limited to a removable storage device. The specification
distinguishes between “integral” media and “portable” or “removable” media. For example, the
specification states that “the interim compression/decompression scheme is particularly useful
when all of the image data is to be permanently archived, or when limited capacity portable
media are used, such as, by way of example, floppy disks or a portable PCM CIA card.” ‘168
Patent at 7:58–62 (emphasis added). Likewise, the specification states that “[t]he configuration
shown in FIG. 6B … may include an integral RAM and/or the removable memory module as
indicated by the image card 72.” ‘168 Patent at 11:24–28 (emphasis added).
Consistent with the specification, the claims indicate that the media can be either integral
or removable.
Indeed, Defendants’ construction would improperly limit the broader term
“media” to only “removable” media. Defendants’ construction is also inconsistent with the
extrinsic evidence submitted by Plaintiff, which defines “media” as “any readable or writable
data storage area.” (Dkt. No. 231-2 at 4) (The Authoritative Dictionary of IEEE Standards Terms
7th ed., 2000 at 682). However, the Court is not persuaded by Plaintiff’s argument that the
recited “media” cannot be removable. As discussed above, Plaintiff’s contention would exclude
embodiments disclosed in the specification.
In light of the intrinsic and extrinsic evidence, the Court finds that the term “media” is
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unambiguous, is easily understandable by a jury, and requires no construction. To the extent that
a party contends that the plain and ordinary meaning of “media” excludes it from being either
integral or removable, the Court rejects this argument because it is inconsistent with how a
person of ordinary skill would interpret the claims.
2. Court’s Construction
In light of the intrinsic and extrinsic evidence, the term “media” will be given its plain
and ordinary meaning.
R. “viewfinder”
Disputed Term
Plaintiff’s Proposal
an electronic device associated with a camera
“viewfinder”
for depicting a view of the area of the subject
to be included in the picture
Defendants’ Proposal
a device for depicting a view
The parties agree that a “viewfinder” in the ‘168 Patent is a device for depicting a view.
The parties dispute whether the recited viewfinder must be: (1) electronic, (2) associated with the
camera, and (3) depicting a view of the area of the subject to be included in the picture, as
Plaintiff proposes. Plaintiff argues that the specification describes the viewfinder as being
capable of viewing incoming data or stored images (citing ‘168 Patent at 11:35–38), having an
“LCD unit” (citing ‘168 Patent at 11:64–65), and having circuitry (citing ‘168 Patent at 13:9–
11). (Dkt. No. 216 at 24.) Plaintiff argues that the claims all discuss the viewfinder’s suitability
to “receive visual image data” or the like. (Dkt. No. 216 at 24.) According to Plaintiff, the
specification and the claims indicate that the viewfinder is electronic. (Dkt. No. 216 at 24.)
Plaintiff next argues that specification indicates that the viewfinder is associated with the
camera. (Dkt. No. 216 at 24) (citing ‘168 Patent at 10:47, 11:57–59). Finally, Plaintiff argues
that the intrinsic and extrinsic evidence indicates that the viewfinder is for depicting a view of
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the area of the subject to be included in the picture. (Dkt. No. 216 at 24) (citing
http://www.merriam-webster.com).
Defendants respond that Plaintiff’s construction improperly requires the viewfinder to be
“[a]n electronic device.” (Dkt. No. 224 at 35.) According to Defendants, claims 13, 23, 28, and
31 each contemplate embodiments in which “a display screen [is] apart from the viewfinder,”
which the parties agree means that “[t]he display screen is separate from the viewfinder.” (Dkt.
No. 224 at 35) (citing Dkt. No. 194 (Jt. Claim Construction Statement)). Defendants further
argue that the specification describes embodiments in which image data is viewed through the
viewfinder but makes clear that the image data is not received or displayed by the viewfinder
itself. (Dkt. No. 224 at 35.) Defendants argue that in one embodiment, an “LCD unit may be
positioned to be visible through the viewfinder 194 or may be in a separate back window 198.”
(Dkt. No. 224 at 35) (quoting ‘168 Patent 11:64–65). Finally, Defendants argue that a person of
ordinary skill in the art would not have interpreted “viewfinder” to be limited to electronic
devices. (Dkt. No. 224 at 35) (citing Dkt 224-11 at 4 (McGraw-Hill Dictionary of Scientific and
Technical Terms)).
For the following reasons, the Court finds that the term “viewfinder” should be given its
plain and ordinary meaning.
1. Analysis
The term “viewfinder” appears claims 10-13, 23, 25, 28, and 31 of the ‘168 Patent. The
Court finds that the term is used consistently in the claims and is intended to have the same
meaning in each claim.
The Court agrees with Defendants that Plaintiff’s construction
improperly requires the viewfinder to be “[a]n electronic device.” Plaintiff argues that the
specification describes the viewfinder as being capable of viewing incoming data or stored
images. (Dkt. No. 216 at 24.) First, the specification states that the images may be viewed
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through the viewfinder, and does not state that the images must be viewed through the
viewfinder. ‘168 Patent at 11:35–39. Indeed, the specification explicitly states that the LCD for
viewing the images “may be positioned to be visible through the viewfinder 194 or may be in a
separate back window 198.” ‘168 Patent at 11:64–65.
Moreover, claims 13, 23, 25, 28, and 31 recite that the display screen for viewing the
visual data is “defined apart from the viewfinder.” The parties have agreed that the phrase “a
display screen apart from the viewfinder” should be construed as “the display is separate from
the viewfinder.” Thus, the intrinsic evidence is not consistent with Plaintiff’s argument that the
viewfinder must be an electronic device. Instead, the extrinsic evidence is consistent with the
understanding that the viewfinder does not have to be an electronic device. (Dkt. No. 224-11 at 4
(McGraw-Hill Dictionary of Scientific and Technical Terms) (defining “viewfinder” as “[a]n
auxiliary optical or electronic device attached to a television camera so the operator can see the
scene as the camera sees it”)).
Regarding Plaintiff’s argument that the viewfinder is a device to be associated with the
camera, and is for depicting a view of the area of the subject to be included in the picture, the
Court finds that the independent claims of the ‘168 Patent do not recite a “camera.” It is only
one dependent claim (claim 7), that explicitly recites “camera supported by the portable
housing.” It would be improper to redraft the claims to associate the recited “viewfinder” with
an unrecited camera element.
Moreover, the Court finds it is unnecessary and does not
significantly add to the understanding of the term viewfinder. Each of the independent claims of
the ‘168 Patent recite that the image collection device is operable to provide “visual image data
of a field of view.” This is consistent with the extrinsic evidence submitted by the parties. (Dkt.
No. 216-8 at 1 (http://www.merriam-webster.com) (defining “viewfinder” as “A device on a
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camera for showing the area of the subject to be included in the picture.”)); (Dkt. No. 224-11 at 4
(“McGraw-Hill Dictionary of Scientific and Technical Terms) (defining “viewfinder” as “A
device which provides the user of a camera with the view of the subject that is focused by the
lens.”)).
Accordingly, the Court finds that the term is unambiguous, is easily understandable by a
jury, and requires no construction. To the extent that Plaintiff contends that the plain and
ordinary meaning of “viewfinder” requires it to be electronic and associated with the camera, the
Court rejects this argument because it is inconsistent with how a person of ordinary skill would
interpret the claims.
2. Court’s Construction
In light of the intrinsic and extrinsic evidence, the term “viewfinder” will be given its
plain and ordinary meaning.
S. “processing platform”
Disputed Term
“processing platform”
Plaintiff’s Proposal
an electronic system for processing
digital data
Defendants’ Proposal
No construction necessary
The parties dispute whether the term “processing platform” in the ‘168 Patent requires
construction.
Defendants originally proposed that the term should be construed as
“interconnected modular electronics for processing digital data.” (Dkt. No. 194-3 at 50.)
Defendants now contend that the term does not require construction. (Dkt. No. 241 at 11.)
Regarding Defendants’ original construction, Plaintiff argues Defendants’ “interconnected
modular electronics” language is unsupported by the specification. (Dkt. No. 216 at 23.)
Plaintiff contends that the term “interconnect” is used in conjunction with a “CRT
electronic board” and does not relate to the broader processing platform. (Dkt. No. 216 at 23.)
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Plaintiff further argues that the term “modular” appears just once in the specification, and in a
different context and is unrelated to the processing platform. (Dkt. No. 216 at 23) (citing ‘168
Patent at 1:33–36). Plaintiff contends that the specification describes the processor and the
“circuitry supporting the processor” (i.e., the processing platform), as “the processor chip 86 and
the control store memory (ROM, Flash RAM, PROM, EPROM or the like) 92 for storing the
software program executed by the processor.” (Dkt. No. 216 at 23) (quoting ‘168 Patent at 9:20–
24). According to Plaintiff, there is no requirement that the “processing platform” be modular or
interconnected. (Dkt. No. 216 at 23.) Defendants did not provide an opposition, and now
contend that the term does not require construction.
For the following reasons, the Court finds that the term “processing platform” should be
given its plain and ordinary meaning.
1. Analysis
The term “processing platform” appears in claims 1, 2, 16, 18, 22, 24, 26, and 27 of the
‘168 Patent. The Court finds that the term is used consistently in the claims and is intended to
have the same meaning in each claim. In light of the intrinsic and extrinsic evidence, the Court
finds that the term “processing platform” is unambiguous, is easily understandable by a jury, and
requires no construction. Indeed, Defendants argue that the term does not require construction.
(Dkt. No. 241 at 11.) To the extent that Defendants contend that the plain and ordinary meaning
of “processing platform” requires “interconnected modular electronics,” the Court rejects this
argument because it is inconsistent with how a person of ordinary skill would interpret the
claims.
2. Court’s Construction
In light of the intrinsic and extrinsic evidence, the term “processing platform” will be
given its plain and ordinary meaning.
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.
V.
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.
It is SO ORDERED.
SIGNED this 3rd day of January, 2012.
SIGNED this 25th day of March, 2015.
____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE
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