Iris Connex, LLC v. Huawei Device USA Inc.

Filing 14

MEMORANDUM OPINION AND ORDER. Signed by Judge Rodney Gilstrap on 9/2/16. (ch, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
IRIS CONNEX, LLC,
Plaintiff,
Case No. 2:15-cv-1909-JRG
v.
ACER AMERICA CORP. et al.,
Defendants.

MEMORANDUM OPINION AND ORDER
Before the Court are motions to dismiss pursuant to Fed. R. Civ. P. 12(b)(6) filed by
Defendants Dell Inc. (Dkt. No. 13, Case No. 2:15-cv-1915), Huawei Device USA, Inc. (Dkt. No.
37, Case No. 2:15-cv-1909) 1, Sony Mobile Communications (USA), Inc. (Dkt. No. 40), Acer
America Corp. (Dkt. No. 44), Panasonic Corporation of North America (Dkt. No. 51), Sharp
Electronics Corp. (Dkt. No. 52), HTC America Inc., (Dkt. No. 53), BlackBerry Corporation (Dkt.
No. 57), Hewlett-Packard Company (Dkt. No. 72), Toshiba America Information Systems, Inc.
(Dkt. No. 75), Microsoft Corporation (Dkt. No. 78), Apple Inc. (Dkt. No. 81), Lenovo (United
States) Inc. and Motorola Mobility LLC (Dkt. No. 82), and Fujitsu America, Inc. (Dkt. No. 84)
(the “Motions to Dismiss” filed by the “Moving Defendants”).
For the reasons stated below, pursuant to Federal Rule of Civil Procedure 12(d), the Court
converts these motions into motions for summary judgment under Federal Rule of Civil Procedure
56, GRANTS such motions for summary judgment and as a result, DISMISSES all claims against
all defendants WITH PREJUDICE.

1

All citations to record are to Case No. 2:15:cv-1909 unless otherwise stated.

I.

Background
Plaintiff Iris Connex, LLC (“Iris Connex”) is a Texas limited liability company with its

principal place of business allegedly located at 211 East Tyler Street, Suite 600-A, Longview,
Texas. (Dkt. No. 1 at ¶ 3); but see Dkt. No. 17, Case No. 2:15-cv-1915) (arguing that physical
inspection of Iris Connex purported office shows “it is not there, and never has been there”).
Plaintiff is the owner by assignment of United States Patent No. 6,177,950 (“the ’950 Patent”)
entitled “Multifunctional portable telephone.” (Dkt. No. 1 at ¶ 9.)
Iris Connex alleges that the Defendants infringe Claim 1 of the ’950 Patent by making,
using, selling, or offering for sale various smartphones and tablets containing a front-facing and
rear-facing camera. Claim 1 of the ’950 patent reads:
A personal communication device, comprising:
a display for displaying data and video signals;
a loudspeaker for generating an audible signal;
a microphone for receiving an audio signal;
a keypad for entering data;
a telecommunications interface for receiving and transmitting information; and
an internal multi-position and multi-function reading head for producing an image
signal when in a first position using a first lensing and for reading for image conversion using a
second lensing when in a second position.
(Dkt. No. 1-1 at 23) (disputed phrase is emphasized). Plaintiff also asserts Defendants’ devices
infringe dependent claims 2, 16, 19, 24 and 30; that certain accused smartphones infringe Claim
22; and that certain accused devices that include fingerprint recognizing sensors infringe Claim 35.
1. Technology
The ’950 Patent relates to a personal communication device that includes a number of
elements, such as “an internal multi-position and multi-function reading head for producing an
image signal when in a first position using a first lensing and for reading for image conversion
2

using a second lensing when in a second position.” ’950 Patent at Abstract. 2 The specification
states that “[t]he present invention, known as the ‘Multiphone’ is a multi-functional hand held
portable device, which provides a fully integrated video teleconferencing, data entry, and image
capture system.” Id. at 1:8–11. Figure 1A of the ’950 Patent illustrates an exemplary embodiment
of the “Multiphone.”

Id. at Figure 1A. The specification states that the device includes “a reading head 2, for example a
camera or infra-red optical reading head (e.g. laser diode), suitable for capturing data and/or
images . . . .” Id. at 5:38–40. The specification further states that “[t]he reading head is preferably
interchangeable through the use of a clip-on enclosure 99, to allow the use of different types of
reading heads.” Id. at 5:42–44. The specification adds that “[a]n adjustment thumbwheel 3,

2

The Abstract of the ’950 Patent provides as follows:
A personal communication device includes a display for displaying data and video signals; a
loudspeaker for generating an audible signal; a microphone for receiving an audio signal; a keypad
for entering data; a telecommunications interface for receiving and transmitting information; and an
internal multi-position and multi-function reading head for producing an image signal when in a
first position using a first lensing and for reading for image conversion using a second lensing when
in a second position.

3

connected to the clip-on enclosure 99 by suitable means (e.g. a gearbox), allows the reading head
to be adjusted to various working positions.” Id. at 5:44–47.
The ’950 Patent resulted from PCT International Application PCT/CA97/00029, which
was filed on January 17, 1997. The relevant timeline and sequence of events in the prosecution of
the ’950 Patent follows:
Date
January 17,
1997
July 17, 1997

April 27, 1998
July 16, 1998

July 16, 1998
October 27,
1999
April 26, 2000
July 14, 2000
January 23,
2001

Event
Original PCT International
Application for patent
PCT/CA97/00029 filed 3
PCT Written Opinion of
International Preliminary
Examining Authority
PCT International Preliminary
Examination Report
Application enters national stage
at the USPTO under 35 U.S.C.
§371
Preliminary Amendment of
applicant filed with the USPTO
Office Action, Non-Final
Rejection
Amendment in Response to
Non-Final Office Action
Notice of Allowance from
USPTO
Issuance date of the ’950 Patent

Exhibit(s)
Dkt. Nos. 217-3
& 217-4

Reference Term
Original PCT
Application

Dkt. No. 217-5

PCT Written
Opinion

Dkt. No. 217-6

PCT Preliminary
Exam Report

Dkt. No. 217-7

Dkt. No. 217-8

Preliminary
Amendment
Dkt. Nos. 217-9 Non-Final
& 217-10
Rejection
Dkt. No. 217-11 Responsive
Amendment
Dkt. Nos. 217-12 Notice of
& 217-13
Allowance
Dkt. No. 217-2

The specification and figures of the Original PCT Application are similar to those in the
’950 Patent. The Original PCT Application contained 29 claims. Independent claim 1 of the
Original PCT Application recites “a camera reading sensor on a rotational pivot for sensing images

3

The ‘950 Patent claims priority to Great Britain provisional patent application 9600804, dated January 17, 1996.

4

in various positions allowing interactive communication.” (Dkt. No. 217-3 at 31). 4
As indicted in the PCT Written Opinion and the PCT Original Exam Report, the Original
PCT Application was rejected. (Dkt. No. 217-5 at 2; Dkt. No. 217-6 at 3). The reason for rejection
was “Non-establishment of opinion with regard to novelty, inventive step and industrial
applicability.” (Id.) The examiner found that Great Britain publication GB 2289555A (“Wilska” or
the “Wilska Reference”) disclosed a hand held unit comprising a camera reading sensor for
sensing images allowing interactive communication. (Dkt. No. 217-5 at 5–7; Dkt. No. 217-6 at 7–
9). The examiner further found that a skilled person, seeing that Wilska was disadvantageous due
to the camera reading sensor having a fixed viewing position, would combine Wilska with a
reference identified as JP-A-06 141 306. (Id.). The examiner stated that the second reference
disclosed an audio visual data entry unit with a camera reading sensor on a rotational pivot. (Id.)
The examination of the application then moved to the USPTO, with the patentee
submitting a Preliminary Amendment that canceled claims 1–29 of the Original PCT Application
and added claims 30-70. (Dkt. No. 217-7 at 2; Dkt. No. 217-8 at 1–7). Claims 30-70 in the
Preliminary Amendment correspond to claims 1–41 of the ’950 Patent. 5 Claim 30 of the
Preliminary Amendment is identical to claim 1 of the ’950 Patent, except for the last element. The
last element of claim 30 of the Preliminary Amendment recites “an internal adjustable reading
head for producing an image signal.” (Dkt. No. 217-8 at 2.)
In response to the Preliminary Amendment, the USPTO issued a Non-Final Rejection.
(Dkt. No. 217-9; Dkt. No. 217-10). The examiner rejected the claims under 35 USC §103 as being

4

Unless otherwise indicated, all citations to documents filed with the Court are to the ECF docket and page number
assigned by the Court’s filing system.
5
For instance, claim 30 of the Preliminary Amendment can be compared to claim 1 of the ’950 Patent, claim 31 of the
Preliminary Amendment can be compared to claim 2 of the ’950 Patent, and so on.

5

unpatentable over Wilska in view of U.S. Patent 5,436,654 (“Boyd” or the “Boyd Reference”).
(Dkt. No. 217-10 at 2). The examiner found that Boyd disclosed a lens tilt mechanism for a video
conferencing unit. (Dkt. No. 217-10 at 3). In response to the Non-Final Rejection, the patentee
amended the last element of claim 30 as follows:
an internal [adjustable] multi-position and multi-function reading head for producing an
image signal when in a first position using a first lensing and for reading for image
conversion using a second lensing when in a second position.
(Dkt. No. 217-11 at 3). In the Responsive Amendment, the patentee argued that “all of those cited
references appears [sic] to lack such a reading head having multiple functions.” (Id. at 5–6).
Specifically, with respect to Wilska and Boyd, the patentee argued that “[n]either Wilska et al. nor
Boyd et al. have a reading head that is both multi-positional and multi-functional. Moreover, since
Wilska et al. and Boyd et al. lack a multi-positional and multi-functional reading head, they
necessarily lack the recited ‘first lensing’ and ‘second lensing.’” (Id. at 6).
In response to the amendments, the examiner allowed the claims. (Dkt. No. 217-12 at 2-6).
The examiner did not provide any details and only stated that “the prior art does not teach a
personal communication device recited in the independent claims 30 . . . .” (Id. at 3.) Claims 30–70
in the Responsive Amendment were renumbered as 1–41, respectively, in the ’950 Patent. (Id. at
2.)
2. Procedural History
On March 8, 2016, Dell filed a motion to dismiss the Complaint under Federal Rules of
Civil Procedure 12(b)(6) and 12(b)(3) (Dkt. No. 13, Case No. 15-cv-1915). In its motion, Dell
argues that the Complaint does not explain how the accused Dell products, “tablets with a
front-facing camera and a rear-facing camera,” could infringe a claim directed to a personal
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communication device having a “multi-position and multi-function reading head with first and
second positions” as claimed in the ’950 Patent. According to Dell, not only are such allegations
unclear—little more than a “formulaic recitation of the elements of a cause of action” mandating
dismissal under Iqbal and Twombly—but the allegation of infringement is also implausible.
Under the plain language of this claim, Dell contends that the “multi-position . . . reading head” must
be capable of being oriented into “a first position” and “a second position,” and that “a front-facing
camera” and “a rear-facing camera” could not comprise a singular reading head capable of being
oriented into a first and second position. Between April 4, 2016, and April 25, 2016, the other

Moving Defendants filed similar motions under Federal Rule of Civil Procedure 12(b)(6), each
urging dismissal of the Complaint on similar implausibility grounds. 6
Plaintiff contends that the “multi-position and multi-function reading head . . .” limitation
as described in Claim 1 is met by a unified “Camera” system in each of the Accused Products.
(See, e.g., Dkt. No. 123-1 at 8–9). The front-facing camera of each “Camera” system constitutes
the first lensing position of the claimed reading head, and the rear-facing camera of each “Camera”
system constitutes the second lensing position of the claim; or vice-versa.

According to

Plaintiff’s infringement theory, such system is “multi-position” because, using the software, the
user can toggle between these two lensings and positions. (Dkt. No. 217 at 11–14.) Thus, it is
Plaintiff’s contention that both cameras in the Accused Products, along with the user interface and
the software controlling the user interface, comprises the claimed “reading head.” (See Dkt. No.

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Neither Defendants TCT Mobile, Inc. and TCT Mobile (US) Inc. (“TCT Mobile”), Samsung Electronics America,
Inc. (“Samsung”), nor LG Electronics U.S.A., Inc. moved to dismiss the Complaint under 12(b)(6). TCT Mobile has
joined in the supplemental summary judgment briefing, Dkt. Nos. 234 and 242. (See Dkt. No. 240). On August 1,
2016, Samsung moved for judgment on the pleadings under Federal Rule of Civil Procedure 12(c) joining in and
adopting arguments made in the Motions to Dismiss. Samsung also joined in the supplemental summary judgment
briefing, Dkt. Nos. 234 and 242. Defendants LG Electronics U.S.A., Inc. and ASUS Computer International joined
Defendants Lenovo Inc. and Motorola LLC’s Motion to Dismiss. (See Dkt. Nos. 90, 110.)

7

241 at 10 (“Iris Connex accuses the Accused Products, including the camera system as a
‘multi-position and multi-function reading head [camera]’ with at least two lensings . . . . It does
not accuse a ‘front camera’ or a ‘rear camera’ separately.”) To the extent such “Camera” system
does not literally meet the claim limitation, Plaintiff argues it infringes under the doctrine of
equivalents. (See Dkt. No. 233 at 3–5.)
Through the process of conducting an early review of these Motions to Dismiss, the Court
became aware that the Motions to Dismiss turned on the construction of the last element of Claim
1 of the ’950 patent. Accordingly, on May 25, 2016, the Court sua sponte entered an Order
setting an early claim construction in this case on July 20, 2016 limited to disputed terms from the
last element of Claim 1 of the ’950 patent. (Dkt. No. 176) See Wordcheck Tech, LLC v. Alt-N
Techs., Ltd., No. 6:10-CV-457, 2012 WL 975725, at *2 (E.D. Tex. Jan. 11, 2012) (opining that a
“mini-Markman” is appropriate early in a case where “construction of a very narrow set of terms
could resolve the case as to most, if not all, parties.”); Uniloc USA, Inc. v. Inmagine Corp., LLC,
No. 6:12-CV-93-LED, 2013 WL 3871360, at *5 (E.D. Tex. July 24, 2013) (“The Court utilizes the
mini-Markman proceeding to address terms that, if construed, are case dispositive.”). The Court
next ordered the parties to meet-and-confer and jointly submit a list of proposed terms in need of
construction. (Dkt. No. 176.) The Court considered the parties’ joint submission and ordered
that the following terms in the last element of Claim 1 be briefed and argued for claim
construction: “a[ ] . . . multi-position . . . reading head” and “an internal multi-position and
multi-function reading head.” (Dkt. No. 180.) 7

On July 20, 2016, the Court conducted an early

7

The Court required the Defendants to comply Patent Local Rule 3-3 and 3-4 by June 16, 2016. The rule requires
accused infringers to produce “[s]ource code, specifications, schematics, flow charts, artwork, formulas, or other
documentation sufficient to show the operation of any aspects or elements of an Accused Instrumentality identified by
the patent claimant in its P. R. 3-1(c) chart.” (See, e.g., Dkt. Nos. 194, 195, 196, 198, 199, 200, 201, 206.)

8

and targeted claim construction hearing to determine the proper construction of the disputed terms.
During briefing for the Motions to Dismiss and early claim construction, the parties
submitted various materials outside the pleadings. The Court deemed these materials to be
helpful and relevant to the issues before the Court. Therefore, pursuant to Fed. R. Civ. P. 12(d),
the Court converted the Motions to Dismiss into motions for summary judgment under Rule 56,
see Trinity Marine Prods., Inc. v. United States, 812 F.3d 481, 487 (5th Cir. 2016), and gave notice
to the parties of the same at the claim construction hearing. (See Dkt. No. 231 at 71:6–22.) The
Court instructed the parties to submit materials that would be relevant to such determination and
ordered the parties to submit the materials they each considered to be relevant to the motion,
accompanied by a ten page brief by August 8, 2016. (See id. at 72:7–22; Dkt. No. 229.). The
Court later allowed the parties to file seven pages to respond to issues raised by the opposing
parties by August 29, 2016, (see Dkt. No. 238.).
II.

Discussion
“An infringement analysis entails two steps. The first step is determining the meaning and

scope of the patent claims asserted to be infringed. The second step is comparing the properly
construed claims to the device accused of infringing.” Markman v. Westview Instruments, Inc., 52
F.3d 967, 976 (Fed. Cir. 1995) (citations omitted).
1. Claim Construction
The parties’ dispute focuses on the meaning and scope of one phrase in the ’950 Patent:“an
internal multi-position and multi-function reading head.” For the reason, stated below the Court
finds that the phrase “an internal multi-position and multi-function reading head” should be
construed to mean “a single internal multi-function reading head that is physically
9

moveable.”
a.

Claim Construction Standards

“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.
“The foundation of judicial claim construction is the ‘written description’ in the
specification.” Fenner Invs., Ltd. v. Cellco P'ship, 778 F.3d 1320, 1323 (Fed. Cir. 2015). Thus,
10

“claims ‘must be read in view of the specification, of which they are a part.’” Id. (quoting
Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)). “[T]he
specification ‘is always highly relevant to the claim construction analysis. Usually, it is
dispositive; it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am.
Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). 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
11

claim terms, but technical dictionaries and treatises may provide definitions that are too broad or
may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert testimony
may aid a court in understanding the underlying technology and determining the particular
meaning of a term in the pertinent field, but an expert’s conclusory, unsupported assertions as to a
term’s definition are entirely unhelpful to a court. Id. Generally, extrinsic evidence is “less reliable
than the patent and its prosecution history in determining how to read claim terms.” Id.
b.
Disputed Term
“an
internal
multi-position and
multi-function
reading head”

The Parties’ Positions
Plaintiff’s Proposal
“an
internal
multi-position
and
multi-function reading head with at least
two lensings, wherein such reading head
may comprise one or more cameras, and
wherein “camera” should be read within the
context of ‘an internal multi-position and
multi-function camera’ and otherwise has
its plain and ordinary meaning within the
context in which it is used, and which is not
limited to merely the lens(es) nor to merely
the lens(es) and image sensor.”

Defendants’ Proposal
“a multi-function reading
head that is physically
moveable within the device”
To the extent “reading head”
is
construed:
“a
multi-function reading head
that is physically moveable
within the device; where the
“reading head” has a single
sensor.”

The parties dispute whether the recited “reading head” must be “physically moveable,” as
Defendants propose or only needs to be “capable of being oriented in different directions,” as
Plaintiff proposes. The parties also dispute whether the “reading head” can be “one or more
cameras,” as Plaintiff proposes, or if it is limited to a “single sensor,” as Defendants propose. The
parties also dispute whether a “camera” should be “limited to merely the lens(es)” or “to merely
the lens(es) and image sensor.”
Plaintiff argues that the recited “multi-position and multi-function reading head/camera
with at least two lensings” must be construed as a whole and in context. (Dkt. No. 217 at 27.)
Plaintiff contends that the actual words of the last limitation of claim 1 are common, and are not
12

difficult to understand, particularly in light of claim 2 identifying the reading head as “a camera.”
(Id.) Plaintiff submits that the disputed phrase should be given its plain and ordinary meaning, with
the added clarification that the “multi-position and multi-function reading head” must have at least
two lensings. (Id.)
Additionally, Plaintiff contends that Defendants are trying to insert a “physically
moveable” limitation and are trying to impose that the “reading head” has “a single sensor.” (Id. at
28.) Plaintiff argues that there are many types of “cameras” that exist, and that the words that
describe the characteristics of the camera provide critical context and give life and meaning. (Id.)
Plaintiff further argues that extrinsic evidence illustrates that a “camera” means more than just a
lens or just a lens and image sensor, and that a “camera” can have multiple lensings and/or multiple
sensors. (Id. at 29) (citing Dkt. No. 217-16 through Dkt. No. 217-29).
Plaintiff also argues that Figure 3A and Figure 9 demonstrate that a number of elements are
required to meet the claim limitation of being “multi-position and multi-function.” (Dkt. No. at
29-32.) According to Plaintiff, the “multi-positon and multi-function reading head [camera]” with
at least two lensings is not synonymous with the “camera 2” identified in the specification. (Id. at
33.) Plaintiff contends that “camera 2” does not include several additional components that
embodiments of the reading head/camera must have to be “multi-position” and “multi-function.
(Id. at 32.) Plaintiff further argues that the claims are clear that the “reading head” of claim 1 may
include a rotational pivot (claim 5), a rotational reflective mirror (claim 7), a light source (claim 8),
and/or a shroud for the light source (claim 9), which are not included as part of “camera 2” in
Figure 6. (Id. at 33.)
In response to Defendants’ proposed “physically moveable” construction, Plaintiff argues
that the words “physical” and “physically” do not appear in the ’950 Patent, and that the word
13

“moveable” only appears in the text of claims 40 and 41. (Id.) Plaintiff further argues that there is
nothing in the claims, the specification, the file history, or any extrinsic evidence that (1) requires
“multi-position” to mean “physically moveable within the device;” (2) that requires the
“multi-position and multi-function reading head/camera” to be “physically moveable within the
device;” or (3) that limits the reading head/camera to something that is “physically moveable
within the device.” (Id.) According to Plaintiff, the portion of the specification that discusses
multiple positions focuses only on the orientation of the reading head with respect to the personal
communication device itself. (Id. at 34) (citing ’950 Patent at 3:40–4:9).
Plaintiff also argues that the when the applicant intended to limit the claim to a device with
a “rotational pivot” that was “physically moveable within the device,” he knew how to do so. (Dkt.
No. 217 at 34.) Plaintiff contends that independent claim 1 of the Original PCT Application
contained a limitation identifying “a camera reading sensor on a rotational pivot for sensing
images in various positions allowing interactive communication.” (Id.) Plaintiff argues that the
“rotational pivot” language was eliminated when the applicant filed his Preliminary Amendment,
with the express purpose of “ensur[ing] that the Applicant claims the subject matter to which it is
entitled.” (Id.) Plaintiff contends that claim 1 of the ’950 Patent includes no “rotational pivot”
limitation, but instead, requires a “multi-position and multifunction reading head [camera]” with at
least two lensings. (Id.)
In response to Defendants’ proposed “single sensor” requirement, Plaintiff argues that
there is nothing in the claims, the specification, the file history, or any extrinsic evidence that
requires the “reading head” to have “a single sensor,” or limits the “reading head” to having “a
single sensor.” (Id. at 35.) Plaintiff contends that because the “multi-position and multi-function
reading head [camera]” is required to have two lensings, a reasonable embodiment of claim 1
14

would have different sensors associated with the different lensings. (Id.) Plaintiff further argues
that Defendants’ proposed “single sensor” limitation also runs contrary to the established rule of
claim construction that “a” means “one or more.” (Id. at 35–36.) Plaintiff contends that there is no
disclaimer, prosecution history estoppel, or “clear intent” in the ’950 Patent to depart from this
established rule. (Id. at 36.)
Defendants respond that the claim language at issue necessarily requires the multi-position
reading head to be able to move between at least two positions within the device. (Dkt. No. 219 at
8.) According to Defendants, the “multi-position” reading head must be capable of being in a “first
position” at one point in time (“when in a first position”) and of being in a “second position” at
another point in time (“when in a second position”). (Id.) Defendants argue that the reading head
must be physically moveable in order to be in different positions at different points in time. (Id.)
Defendants also argue that Plaintiff ignores the claim language and fails to offer any
contrary construction of the term “multi-position.” (Id. at 5.) According to Defendants, Plaintiff
argues that a reading head can be a “multi-position” reading head even if that reading head cannot
move from a “first position” to a “second position.” (Id. at 8.) Defendants contend that Plaintiff
focuses primarily on what the claim may cover (e.g., “may include one or more cameras” and “is
not limited to merely the lens(es) nor to merely the lens(es) and image sensor”). (Id. at 8-9.)
Defendants argue that the dispute properly before the Court is whether the “multi-position”
reading head must be moveable. (Id. at 9.)
Defendants further argue that the specification is consistent with the plain meaning that an
internal “multi-position” reading head must be able to be in two different positions at different
points in time. (Id.) According to Defendants, the patent discloses that the “multi-position” reading
head must be physically moveable inside the device. (Id.) (citing ’950 Patent at 1:13–14, 5:38–40,
15

5:42–47, 3:28–40, 3:42-47). Defendants contend that none of the embodiments describe a
stationary multi-directional reading head with multiple sensors, as Plaintiff proposes. (Dkt. No.
219 at 10.) Defendants further argue that the remainder of the specification describes an
embodiment where the “reading head 2” is embodied in “camera 2,” such as an “on chip camera,”
which is contained within clip-on enclosure 99. (Id. at 10) (citing ’950 Patent at 7:32–44, 7:51–61,
7:62–8:3, 10:35–38, 10:49–56, 14:5–9, Figure 6).
Defendants further contend that Figure 6 of the ’950 Patent illustrates the type of reading
head configuration that is recited in claim 1. (Dkt. No. 219 at 11) (citing ’950 Patent at 10:36–48).
Defendants argue that Figure 6 shows the multi-position reading head housed within the clip-on
enclosure. (Dkt. No. 219 at 11) According to Defendants, the multi-position reading head in this
embodiment (camera 2) can rotate into three different positions corresponding to three different
lensings (93, 94, and 95). (Id.)
Defendants further argue that the file history confirms the plain meaning of the claim
language. (Id. at 12-13) (citing Dkt. Nos. 217-8, 217-10, 217-14, 217-15, 217-11). According to
Defendants, the prosecution history indicates that claim 1 requires an internal reading head that is
not merely “adjustable.” (Dkt. No. 219 at 13) (citing Dkt. 217-15 at 3:34–67, 4:1–31, Figure 7).
Defendants argue that the claimed reading head must be physically moveable so that it can perform
one function “when in a first position” and perform another function “when in a second position.”
(Dkt. No. 219 at 13.)
Defendants also argue that claims 5, 7, and 37 all recite specific reading head structures
that further limit the reading head in claim 1 to a particular type of physical movement. (Id. at 14.)
Defendants contend that claims 10 and 11 similarly require the device of claim 1 to further include
specific types of structures for moving the reading head. (Id.)
16

Regarding Plaintiff’s construction for “reading head,” Defendants argue that Plaintiff
attempts to re-define the “reading head” to include “at least two lenses” and also tries to define a
“camera” as “not limited to merely the lens(es) nor to merely the lens(es) and image sensor.” (Id.)
Defendants contend that claim 1 recites lensings as being used by the reading head, but not as part
of the reading head. (Id.) Defendants further argue that the specification discloses that the reading
head (e.g., camera 2) moves relative to the lenses. (Id. at 15 (citing ’950 Patent at 10:49–54, Figure
6).) Defendants contend that the dependent claims confirm that the reading head moves relative to
the lensings. (Dkt. No. 219 at 15 (citing ’950 Patent at claims 6 and 37).) Defendants also argue
that Plaintiff’s construction would render the dependent claims nonsensical. (Dkt. No. 219 at 15
(citing ’950 Patent at claims 5, 6, and 37)).
Regarding Plaintiff’s “one or more cameras” proposal, Defendants contend that the claim
requires a reading head that can perform one function when in a first position, and another function
when in a second position. (Dkt. No. 219 at 16.) According to Defendants, a first camera fixed in a
first position and a second camera fixed in a second position, do not meet these requirements, and
thus directly contradict the claim language. (Id.) Defendants argue that the Federal Circuit has
consistently held that where singular and plural claim elements “are defined in relation to each
other,” then the recitation of “a” component related to multiple separate elements is limited to a
single, unitary component. (Id. (citing Abtox, Inc. v. Exitron, Corp., 122 F.3d 1019, 1022–24 (Fed.
Cir. 1997) (as amended, 131 F.3d 1009)).)
Defendants also argue that in order for a multi-position and multi-function reading head
(e.g., a camera as recited in claim 2) to meet the recited positions limitation it does not suffice to
have two cameras, each able to perform one of the functions when in just the one corresponding
position. (Dkt. No. 219 at 17.) Defendants further contend that dependent claim 2 specifies that
17

this “reading head is a camera,” not that the reading head “may comprise one or more cameras.”
(Id. at 17-18.) Defendants argue the requirements of claim 1 cannot be satisfied by one camera
fixed in a first position and another camera fixed in a second position. (Id. at 18.) Defendants
further argue that Plaintiff’s construction would also “render the claims invalid for lack of written
description.” (Id.) Defendants contend that the specification does not describe or contemplate that
a single “reading head” can contain more than one sensor for performing the claimed limitations.
(Id. (citing ’950 Patent at 5:38–44, 10:33–58, Figure 6.)
Regarding Plaintiff’s reliance on extrinsic evidence, Defendants argue that the bulk of this
evidence addresses different types of cameras and is irrelevant to the meaning of “reading head.”
(Dkt. No. 219 at 18.) Defendants also argue that it is black letter law that the “claims may not be
construed with reference to the accused device.” (Id. at 19) (Wilson Sporting Goods Co. v.
Hillerich & Bradsby Co., 442 F.3d 1322, 1330-31 (Fed. Cir. 2006)). According to Defendants, the
Court should disregard Plaintiff’s references to the accused products and should reject Plaintiff’s
proposal to define “reading head” in terms of a “camera.” (Dkt. No. 219 at 19.)
Defendants further argue that the Court should disregard Plaintiff’s cited Wikipedia entries
and articles as irrelevant hearsay because they were published far after the time of invention (Id.)
Defendants contend that use of Wikipedia is particularly problematic because it is unreliable and
potentially changes on a day-to-day basis. (Id. at 20.) Defendants further contend that the
third-party patents that were filed after the date of invention carry little weight as extrinsic
evidence. (Id.) Finally, Defendants argue that it is improper to rely on extrinsic evidence to
broaden the claims or contradict the intrinsic record. (Id.)
Plaintiff replies that Defendants attempt to define the “multi-position and multi-function
reading head [camera]” strictly in terms of a preferred embodiment and thereby insert an
18

additional limitation of “physically moveable within the device.” (Dkt. No. 221 at 5.) Plaintiff
argues that that “multi-position” is not a complicated word and is not difficult to understand. (Id.)
Plaintiff contends that the plain-and-ordinary-meaning definitions do not require anything to be
“physically moveable.” (Id. at 6-7.) In addition, Plaintiff argues that, to the extent any construction
of “multi-position” is necessary, it can be defined as “capable of being oriented in different
directions with respect to the personal communication device,” or “capable of being oriented to
different situations or conditions with respect to the personal communication device.” (Id. at 6.)
Plaintiff further argues that there is nothing in the specification or file history limiting
“multi-position” to “physically moveable.” (Id.) Plaintiff also contends that there is nothing in the
specification that teaches away from the way the accused products operate, where multiple
positions are achieved using multiple camera lensings and a software switch to change or toggle
from one position to the other. (Id. at 7.) Plaintiff argues that there is no place in the file history or
specification where the patentee disclaimed the construction it seeks or disavowed this scope. (Id.)
Plaintiff also contends that there was no amendment during prosecution that is contrary to
its proposed construction. (Id.) Plaintiff argues that the applicant’s amendment had nothing to do
with being “physically moveable.” (Id.) Plaintiff contends that the amended claim language
distinguished Wilska and Boyd because each of those references lacked a reading head that was
both multi-positional and multi-functional, and they also lacked the recited first lensing and
second lensing. (Id.)
Plaintiff further argues that there was no effort by the patentee to act as its own
lexicographer and explicitly define “multi-position.” (Id. at 8.) Plaintiff contends that the examples
Defendants reference are described as a “preferred embodiment” and never as “the invention” or
“the current invention.” (Id.) Plaintiff also argues that Defendants’ proposed requirement that a
19

component of the “multi-position and multi-function reading head [camera]” be “physically
moveable” is merely “a specific feature of particular embodiments that should not be imported into
the construction” here. (Id.) (citing Koninklijke KPN N.V. v. Samsung Elecs. Co., Ltd., 2016 WL
2610649 at *21 (E.D. Tex. May 6, 2016)).
Plaintiff contends that Defendants incorrectly argue that the lensings are not part of the
reading head. (Dkt. No. 221 at 9.) Plaintiff argues that in any applicable plain and ordinary
meaning of “camera,” a camera has a lens, and that claim 2 expressly states that a reading head
may be “a camera.” (Id.) Plaintiff contends that the examples cited by Defendants, Figure 6 and
claim 37, describe one embodiment where the device could have separate, respective lensings for
various positions of the reading head. (Id.) Plaintiff states that these examples do not demonstrate
that lensings are necessarily separate from the “multi-position and multi-function reading head
[camera].” (Id.)
In response to Defendants’ argument concerning the term “camera,” Plaintiff argues that a
key part of its claim construction position is that “multi-position and multi-function reading head
[camera]” is a single claim element that must be construed as a whole. (Id. at 10.) Plaintiff
contends that the term “reading head [camera]” cannot be divorced from its context. (Id.) Plaintiff
further argues that Defendants cannot prove an exception to the general rule that “a” means “one or
more.” (Id.) According to Plaintiff, a construction of “one or more” is consistent with the claim
language and the file history. (Id. at 11.)
Plaintiff also argues that Defendants do not contend that anything in the extrinsic evidence
is incorrect or inaccurate. (Id.) Plaintiff states that Defendants do not offer any contrary evidence.
(Id.) Plaintiff further argues that the cited patent references are from the relevant time period. (Id.
at 12) (citing Dkt. No. 217-25 through Dkt. No. 217-28). According to Plaintiff, nothing in the
20

extrinsic evidence contradicts the intrinsic record. (Dkt. No. 221 at 12.) Plaintiff also contends
that Defendants do not contest any of Plaintiff’s facts or characterizations of how the accused
products work. (Id.) Finally, Plaintiff argues that the Court may consider the accused products in
order to understand the claim construction disputes. (Id. at 13.)
c.

Analysis

The phrase “an internal multi-position and multi-function reading head” appears in claim 1
of the ’950 Patent. The intrinsic evidence indicates that “multi-position” means “physically
moveable.” The only description of the recited “multi-position” reading head is one that moves
(e.g., rotates) within the device. For example, the specification states that the device includes “[a]n
adjustment thumbwheel 3, connected to the clip-on enclosure 99 by suitable means (e.g. a
gearbox), allows the reading head to be adjusted to various working positions.” ’950 Patent at
5:44–47. Similarly, the specification states that “[t]he position of the camera 2 can be adjusted via
the thumbwheel 3 and/or a servo motor 65.” Id. at 7:62–63. 8 The specification further describes
the positions of the reading head as follows:
In position 1 the reading head is in a vertical position and faces up to point at the user.
In position 2 the reading head is in a horizontal position and faces out horizontally from the
user.
In position 3 the reading head is in a vertical position and faces down to point away from
the user.
Id. at 3:41–47. The specification adds that position 1 “[a]llows the capture of the end users face to
enable a video teleconferencing capability between another compatible device either in the field, at
home or place of work.” Id. at 3:50–53. The specification further states that position 2 “[a]llows
the user easy access to capture images to facilitate the identification of products and/or items
8

The specification describes “reading head 2, for example a camera or infra-red optical reading head (e.g. laser
diode).” ’950 Patent at 5:38–40.

21

and/or persons, for example information such as bar codes, dot codes, blob codes or in effect any
suitably coded data or distinctive feature which can be used for identification purposes.” Id. at
3:58–63. The specification also states that position 3 “[a]llows the user to capture data and/or
images below the device while viewing the self same data and/or image on the display screen.” Id.
at 3:64–66. As indicated, the specification discloses that the reading head is physically moved to a
different positon to perform a different function.
In summary, every embodiment disclosed in the ’950 Patent indicates that “multi-position”
requires the reading head to be physically moveable. Indeed, the embodiment disclosed in Figure
6 is described as having “a camera 2 which is mounted on a rotational printed circuit board (PCB)
91 centrally located on a pivotal axis 98,” and that “[a] servo motor 65, controlled by the processor
(41, FIG. 3) via a servo controller (64, FIG. 3), can be used to rotate the rotational PCB 91 through
180° into three distinct functional positions.” Id. at 10:35–44. Figure 6 shows the multi-position
reading head housed within the clip-on enclosure.

22

In this embodiment, the multi-position reading head (camera 2) (in red) can rotate into
three different positions corresponding to three different lensings (93, 94, and 95) (in blue). This
configuration is like the one recited in claim 1, which requires the multi-position, multi-function
reading head (camera 2, in red) to perform a first function when in a first position using a first
lensing (rotated to face one of the lensings 93, 94, or 95, in blue) and to perform a second function
when in a second position using a second lensing (rotated to face a different one of the lensings).
The specification contains no other embodiments or indication that the recited “reading head” is
required to be anything but “physically moveable.”
The structure of the claims further indicates that “multi-position” means “physically
moveable.” Claim 1 recites that the “reading head” produces an image signal when in a first
position and is used for image conversion when in a second position. This indicates that the
reading head is physically moved from the recited “first position” to the recited “second position.”
The dependent claims narrow the type of physical movement required of the “multi-position”
reading head. For example, dependent claim 5 recites that “the reading head includes a rotational
pivot which rotates to three positions.” Likewise, dependent claim 7 recites that “the reading head
includes a rotational reflective mirror.”
The dependent claims go to further recite specific structure for achieving the physical
movement. For example, claim 10 recites “a thumbwheel for controlling the reading head,” and
claim 11 recites “a servo motor for controlling the reading head.” In addition, independent claims
41 and 42 recite “an internal adjustable multi-function reading head moveable through a range of
180 degrees and having multiple settable positions.” (emphasis added). Thus, the claim language
itself indicates that “multi-position” means physically moveable. Accordingly, the Court finds that
“physically moveable” is the construction that “most naturally aligns with the patent’s description
23

of the invention.” See Trustees of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1366 (Fed.
Cir. 2016).
The prosecution history further confirms that the “multi-position reading head” is
“physically moveable” from the “first position” to the “second position.” Claim 1 of the issued
’950 Patent was originally filed as claim 30 of the Original PCT Application. (Dkt. 217-8 at 2.)
Application claim 30 recited “an internal adjustable reading head for producing an image signal.”
(Id.) The examiner rejected claim 30 and other claims as obvious over Wilska and Boyd. (Dkt.
217-10 at 2-3.) Wilska discloses an embodiment with a multi-function, but stationary, camera unit.
(Dkt 217-14 at 9, 10, 13.) Boyd discloses a video conferencing device with an adjustable camera
lens. (Dkt. 217-15 at 3:34–67, 4:1–31, Figure 7.)
Application claim 30 was amended as follows:
“an internal multi-position and multi-function [adjustable] reading head for
producing an image signal when in a first position using a first lensing and for
reading for image conversion using a second lensing when in a second position.”
(Dkt. 217-11 at 3.) The patentee explained:
Independent Claim 30 has been amended to now recite that the personal
communication device includes “an internal multi-position and multi-function
reading head for producing an image signal when in a first position and for reading
for image conversion when in a second position.” Neither Wilska et al. nor Boyd et
al. have a reading head that is both multi-positional and multi-functional.
Moreover, since Wilska et al. and Boyd et al. lack a multi-positional and
multi-functional reading head, they necessarily lack the recited “first lensing” and
“second lensing.”
(Id. at 6.) The file history confirms that “multi-position” means “physically moveable.” Claim 1
requires an internal reading head that is not merely “adjustable,” as recited in Application claim
30. Indeed, the Boyd reference described a camera with an adjustable lens. (Dkt. 217-15 at 3:34–
67, 4:1–31, Figure 7.) Clearly, the recited “reading head” must be physically moveable so that it
24

can perform one function “when in a first position” and perform another function “when in a
second position.”
Plaintiff argues that multi-position implies more than one position, but not necessarily
physical movement. Specifically, Plaintiff contends that the scope of the claims includes two
different reading heads or image sensors (i.e., cameras) oriented at different positions. Plaintiff
further contends that the cameras do not have to physically move but instead could be controlled
by software that switches between the two fixed-position cameras. The Court disagrees with
Plaintiff’s argument that the scope of the claims includes a stationary multi-directional reading
head with multiple image sensors or cameras. This is beyond the scope of the claim language.
As Plaintiff conceded during the claim construction hearing, there is nothing in the
intrinsic record disclosing two reading heads or two image sensors, much less two image sensors
being controlled by a software toggle. The Court recognizes that the scope of the claims should not
be limited to the disclosed embodiments. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir.
2005) (“[W]e recognize that the distinction between using the specification to interpret the
meaning of a claim and importing limitations from the specification into the claim can be a
difficult one to apply in practice.”); see also Comark Communs., Inc. v. Harris Corp., 156 F.3d
1182, 1186–87 (Fed. Cir. 1998) (“[T]here is sometimes a fine line between reading a claim in light
of the specification, and reading a limitation into the claim from the specification”). However, the
Court finds that Plaintiff’s interpretation is overly broad and effectively divorced from the intrinsic
evidence. Slimfold Mfg. Co. v. Kinkead Industries, Inc., 810 F.2d 1113, 1116 (Fed. Cir. 1987)
(“Claims are not interpreted in a vacuum, but are part of and are read in light of the
specification.”).
A person of ordinary skill would understand that the intrinsic evidence indicates that the
25

recited “reading head” is physically moveable between at least two positions. This is the scope of
the actual invention and is the proper understanding of the phrase “multi-position.” Retractable
Techs., Inc. v. Becton, 653 F.3d 1296 (Fed. Cir. 2011) (“In reviewing the intrinsic record to
construe the claims, we strive to capture the scope of the actual invention, rather than strictly limit
the scope of claims to disclosed embodiments or allow the claim language to become divorced
from what the specification conveys is the invention.”). Indeed, the Court is not limiting the claims
to the types of physical movement described in the disclosed embodiments, but instead finds that
claim 1 requires the reading head to be physically moveable between the recited first and second
positions. While each of the disclosed embodiments uses a different mechanism to move the
reading head between different positions, nothing describes or suggests a stationary
multi-directional reading head with multiple image sensors, as Plaintiff proposes. See Profectus
Tech. LLC v. Huawei Techs. Co., 823 F.3d 1375, 1381 (Fed. Cir. 2016) (“In every embodiment
disclosed in the specification, the picture display or frame includes a feature for mounting the
device to a wall or on a tabletop . . . . The specification does not disclose a bare embodiment in
which the picture display or picture frame lacks a feature for mounting.”)
Regarding Plaintiff’s proposal that the reading head may include “at least two lensings,”
the Court rejects this argument. Claim 1 indicates that the lensings are used by the reading head,
but are not necessarily required to be a part of the reading head. Specifically, claim 1 recites “an
internal multi-position and multi-function reading head for producing an image signal when in a
first position using a first lensing and for reading for image conversion using a second lensing
when in a second position.” There is no reason to redraft the claim to explicitly require the reading
head to include “at least two lensings.” Indeed, the intrinsic evidence indicates that the recited
“lensings” may not be part of the “reading head.” For example, the specification discloses that the
26

reading head (e.g., camera 2) moves relative to the lenses. ’950 Patent at 10:49–54 (“In each
functional position, respective lensing 93, 94, and 95 incorporated in the lens body 96 assists in the
correct focusing of the camera 2.”). Likewise, Figure 6 illustrates the moveable camera 2 separate
from the lens body 96 that incorporates lensings 93, 94, and 95.
Plaintiff agrees that this is one embodiment where the device could have separate,
respective lensings for various positions of the reading head. (Dkt. No. 221 at 9.) Plaintiff argues
that these examples do not demonstrate that lensings are necessarily separate from the
“multi-position and multi-function reading head [camera].” (Id.) However, it is also true that these
examples demonstrate that the reading head is not necessarily required to include two lensings.
More importantly, Plaintiff has not provided any persuasive rationale why the Court should redraft
claim 1 so that it would potentially exclude a preferred embodiment. Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir.1996) (stating that a construction that excludes a
preferred embodiment “is rarely, if ever, correct and would require highly persuasive evidentiary
support.”).
In addition, each of the dependent claims that recite “lensings” does so as a structure added
to the personal communication device, and not as a feature of the reading head. For example, claim
6 recites “[t]he device of claim 5, further comprising respective lensing at each of the three
positions.” Thus, contrary to Plaintiff’s construction, the claims indicate that the lensings and the
reading head are claimed as separate structures. Moreover, dependent claims 5, 6, and 37 require
the reading head to rotate to three positions. The claims further require that a lensing be “at” each
of those three positions. The lensings cannot be part of the reading head and also, at the same time,
be located “at” each of the three positions to which the reading head rotates. The Court finds that
Plaintiff’s proposal is contrary to the intrinsic evidence and is directed at construing the claim so
27

that it reads on the accused device. Source Vagabond Sys. Ltd. v. Hydrapak, Inc., 753 F.3d 1291,
1299–1300 (Fed. Cir. 2014) (“[A]n ‘analysis’ that adds words to the claim language without
support in the intrinsic evidence in order to support a claim of infringement does not follow
standard canons of claim construction.”) (internal quotations omitted).
Regarding Defendants’ proposal that the reading head has a single sensor, the Court agrees.
The specification states that an example of the recited “reading head” includes “a camera or
infra-red optical reading head (e.g. laser diode), suitable for capturing data and/or images.” ’950
Patent at 5:38–40. The specification further states that the reading head in Figure 6 is “a camera 2
which is mounted on a rotational printed circuit board (PCB) 91 centrally located on a pivotal axis
98.” Id. at 10:36–38. Likewise, claim 2 recites that the device of claim 1, wherein the reading head
is a camera. Thus, a person of ordinary skill in the art would understand that the “reading head”
may include a camera. Indeed, Plaintiff equates the “reading head” to the camera throughout its
briefing.
The specification further states that “[i]n a preferred embodiment of the device the camera
2 will include an integrated image sensing array and associated signal processing circuitry with all
the necessary support circuitry to produce a fully functional camera delivering a fully formatted
composite video signal and automatic exposure control. … An example of such a camera is the
VVL1063 miniature monochrome on chip camera.” Id. at 7:51–61. This indicates that a person of
ordinary skill in the art would understand that the “reading head” has a single sensor. In the
embodiment disclosed in the specification, the “reading head” is a “camera” that has a single
image sensing array.
Plaintiff fails to supply any intrinsic evidence to support its argument that a “camera” can
have multiple lensings and/or multiple sensors. (Dkt. No. 217 at 29.) Instead, Plaintiff relies
28

exclusively on extrinsic evidence and argues that U.S. Patent No. 6,288,742 (the “’742 Patent”)
illustrates a digital video camera with at least two lensings and at least two image sensors. (Id.
(citing Dkt. No. 217-26).) The title of the ’742 Patent explicitly states that it is directed to “Video
Camera Including Multiple Image Sensors.” Consistent with its title, the ’742 Patent specification
discloses a dual lens digital camera that includes two image sensors. ’742 at 3:26-29. This is not
surprising because a dual lens camera is a “preferred embodiment of the present invention” of the
’742 Patent.
However, unlike the ’742 Patent, there is no mention of “multiple image sensors” in the
intrinsic evidence regarding the ’950 Patent. Indeed, as discussed above, the specification
indicates that the camera includes only one image sensing array. Accordingly, the Court finds that
the extrinsic evidence is not consistent with the intrinsic evidence, and therefore should not be
relied upon to construe the terms “camera” or “reading head.” Phillips, 415 F.3d at 1319
(“[E]xtrinsic evidence may be useful to the court, but it is unlikely to result in a reliable
interpretation of patent claim scope unless considered in the context of the intrinsic evidence.”);
see also OSRAM GmbH v. Int’l Trade Comm’n, 505 F.3d 1351, 1356 (Fed. Cir. 2007) (“The patent
specification is the primary resource for determining how an invention would be understood by
persons experienced in the field.”).
Finally, the Court rejects Plaintiff’s argument that the general rule that “a” means “one or
more” applies to the “reading head” recited in claim 1, or the “camera” recited in claim 2. The
claim language, the specification, and the prosecution history “‘evince[] a clear intent’ to limit ‘a’
or ‘an’ to ‘one.’ … [and] necessitate a departure from the rule.” Baldwin Graphic Sys., Inc. v.
Siebert, Inc., 512 F.3d 1338, 1342–43 (Fed. Cir. 2008) (internal citation omitted). First, claim 38
recites a first reading head (i.e., a first camera) and a second reading head (i.e., a second camera).
29

This indicates that when the patentee intended to claim multiple reading heads (e.g., multiple
cameras), he did so explicitly.
Likewise, the specification consistently discloses a single reading head that can be placed
in multiple positions. The specification describes “reading head 2, for example a camera or
infra-red optical reading head (e.g. laser diode).” ’950 Patent at 5:38–40. The reading head may be
contained within “clip-on enclosure 99.” Id. at 5:42–47. The specification describes that the
reading head can be positioned to different viewing positions that correspond to different
functions:
In a preferred embodiment of the invention, the hand held unit includes a three way
semi-lockable rotational pivot and/or a rotational reflective mirror(s) and/or an
electronically manipulated substrate, all of which can be electronically controlled
and/or adjusted by an adjustable thumbwheel and/or keypad, either of which can
both change the viewing position of the reading head and alter the primary function
of the system. . . . Depending on the viewing position of the reading head the device
is programmed to serve various primary functions.
Id. at 3:28–40; see also id. at 3:42–47 (describing “vertical” and “horizontal” positions). While
each of these described embodiments uses a different mechanism to move the reading head
between different positions, none describe more than one reading head, as Plaintiff proposes.
The remainder of the specification describes an embodiment where the “reading head 2” is
embodied in “camera 2,” such as an “on chip camera,” which is contained within clip-on enclosure
99. Id. at 7:32–44, 7:51–61, 7:62–8:3, 10:35–38, 10:49–56, 14:5–9, Figure 6. The specification
describes how the primary function of “camera 2” is altered by moving the camera between
different positions through the use of the thumbwheel or a servo motor:
The position of the camera 2 can be adjusted via the thumbwheel 3 and/or a servo
motor 65. The servo motor 65 is connected to the processor 41 via a servo
controller 64. Consequently the user can alter the primary function of the
Multiphone 20, as mention [sic] previously, via the thumbwheel 3 and/or the
keypad 6. A more detailed discussion of the mechanical function of the servo
30

motor 65 and thumbwheel 3 will be given with reference to the clip-on enclosure
99, which is described later in FIG. 6.
Id. at 7:62–8:3. Figure 6 of the ’950 Patent illustrates the type of reading head configuration that is
recited in claim 1. The specification describes:
The clip-on enclosure 99 houses a camera 2 which is mounted on a rotational
printed circuit board (PCB) 91 centrally located on a pivotal axis 98. . . . A servo
motor 65 . . . can be used to rotate the rotational PCB 91 through 180º into three
distinct functional positions. Additionally a thumbwheel connected to the main
body of the Multiphone 20, can be used to rotate the rotational PCB 91 through the
use of a gearing mechanism (not shown) which is incorporated into the clip-on
enclosure. In each functional position, respective lensing 93, 94, and 95,
incorporated in the lens body 96, assists in the correct focusing of the camera 2.
Id. at 10:36–48. In this embodiment, the multi-position reading head (camera 2) can rotate into
three different positions corresponding to three different lensings (93, 94, and 95). This
configuration is like the one recited in claim 1, which requires the multi-position, multi-function
reading head (camera 2) to perform a first function when in a first position using a first lensing
(rotated to face one of the lensings 93, 94, or 95) and to perform a second function when in a
second position using a second lensing (rotated to face a different one of the lensings).
The prosecution history further indicates that the claim should be limited to one reading
head. During prosecution, the patentee’s arguments were prosecuted within the context of a single
camera. In response to a rejection that included a tilt mechanism for a single camera, the patentee
amended the claims and argued that the prior art failed to include a multi-positional reading head.
The patentee added that since the prior art did not include a multi-positional reading head, “they
necessarily lack the recited ‘first lensing’ and ‘second lensing.’” (Dkt. No. 217-11 at 6.) In other
words, the prior art lacked a single reading head that could make use of two different lensing
located at two different positon. This is exactly the claim amendment made by the patentee.

31

However, the Court finds that the scope of the claims do not necessarily exclude devices
that have more than one reading head or more than one camera. Instead, the claims require that at
least one “reading head” satisfies each of the recited limitations. In other words, claim 1 requires
“a single internal multi-function reading head that is physically moveable for producing an
image signal when in a first position using a first lensing and for reading for image
conversion using a second lensing when in a second position.”9
2. Summary Judgment
In the Motions to Dismiss, the Moving Defendants argue that Plaintiff’s infringement
theory, in light of the accused products, fails to state a claim upon which relief can be granted
because it is implausible that the accused products have a “multi-position and multi-function

9

Statements made by the applicant during prosecution of the European counterpart to the ’950 further support the
Court’s construction and foreclose Plaintiff’s claim construction arguments. See Prosecution History for European
Patent No. 0875109, November 20, 2001 Communication to European Patent Office. During said prosecution, the
applicant distinguished the claimed multi-position reading head from the camera disclosed in Wilska, noting that the
latter camera in Wilska was “stationary” and it did not contain any teaching that “the camera uses different lensings in
different positions as required by new claim 1.” Id. at 2/23. The applicant further noted that in the invention of the
European Patent Claim 1, “[t]he use of multiple reading positions allows the reading head to be used for a variety of
purposes, for example, in a first position the reading head allows the capture of the end user’s face . . . in a second
position the reading head allows the user access to capture bar codes . . .” Id. at 3/23. Accordingly, in overcoming
Wilska, the applicant explicitly characterized the invention of European Patent Claim 1 (corresponding to the asserted
claim) as a single reading head as using at least two different lensings in different positions, performing a different
function in each position. These statements further support the Court’s ultimate construction that requires at least one
single reading head that is physically moveable between two positions using two lensings, and compels rejection of
Plaintiff’s arguments to the contrary.
The Court is mindful that use of foreign prosecution history is disfavored in most contexts. However, such
statements can be useful and probative to claim construction in narrow circumstances such as those presented here.
For example, in Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1312–1313 (Fed. Cir. 2014), the Federal Circuit
considered statements made during the prosecution of a Japanese counterpart to be probative to the claim construction
inquiry because the later prosecuted foreign counterpart (1) shared a familial relationship with the patent-in-suit
claimed priority to the same PCT application; (2) shared the same specification; and (3) contained a claim identical to
the construed claim. The Federal Circuit has also endorsed the use of statements made in foreign prosecutions where
they constituted “blatant admissions” by the applicant directed at the relevant claims. Gillette Co. v. Energizer
Holdings, Inc., 405 F.3d 1367, 1374 (Fed. Cir. 2005). Use of the more detailed statements made by the applicant
during the European prosecution directed to overcome a similar rejection is particularly appropriate here. The
European application and the ’950 patent have the same specification, descend from the same PCT International
Application, and the European claim and proposed amendment is nearly identical to same of the patent-in-suit.
Under such circumstances, such statements have probative value relevant to the present claim construction inquiry.

32

reading head . . .” as claimed. Under Rule 56, such motions and supporting materials are properly
addressed as a motion for a judgment of non-infringement. Having determined the proper
construction of “an internal multi-position and multi-function reading head” of Claim 1 of the ’950
Patent is “a single internal multi-function reading head that is physically moveable where the
reading head has a single sensor,” the Court now turns next to the question of whether there is a
genuine issue of material fact and in turn, whether a reasonable jury could find that the Accused
Products contains the properly construed limitation, either literally or through the doctrine of
equivalents.
a.

Legal Standards

Summary judgment is appropriate when “there is no genuine issue as to any material fact”
and thus “the moving party is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(c). The
court must draw all reasonable inferences in favor of the non-moving party. See Masson v. New
Yorker Magazine, Inc., 501 U.S. 496, 520, 111 S.Ct. 2419, 115 L.Ed.2d 447 (1991); see also
Matsushita Elec. Indus. Co. v. Zenith Radio, 475 U.S. 574, 588 (1986). However, the opposing
party “must do more than simply show that there is some metaphysical doubt as to the material
facts.” See Matsushita, 475 U.S. at 588. “Where the record taken as a whole could not lead a
rational trier of fact to find for the non-moving party, there is no ‘genuine issue for trial’ ” and
summary judgment is thus warranted. See Matsushita, 475 U.S. at 587. Thus, the existence of a
mere scintilla of evidence in support of the opposing party’s position will not prevent entry of
summary judgment; there must be evidence on which the jury could reasonably find for the
opposing party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986)
Regarding patent infringement, “summary judgment of non-infringement is proper when
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no reasonable jury could find that every limitation recited in a properly construed claim is found in
the accused device either literally or under the doctrine of equivalents.” Advanced Steel Recovery,
LLC v. X-Body Equipment, Inc., 808 F.3d 1313 (Fed. Cir. 2015). “There can be no infringement
as a matter of law if a claim limitation is totally missing from the accused device.” London v.
Carson Pirie Scott & Co., 946 F.2d 1534, 1538 (Fed. Cir. 1991). “Granting summary judgment
of non-infringement prior to or early during fact discovery is highly unusual, “but entirely
appropriate at an early stage in a case where . . . the issues are cut and dry,” Famosa, Corp. v.
Gaiam, Inc., No. 11 CIV. 5703 KBF, 2012 WL 573999, at *3 (S.D.N.Y. Feb. 22, 2012), and “only
one conclusion as to infringement could be reached by a reasonable jury.” TechSearch, L.L.C. v.
Intel Corp., 286 F.3d 1360, 1369 (Fed. Cir.2002).
For example, in Clark v. Walt Disney Co., 664 F. Supp. 2d 861 (S.D. Ohio 2009), the Court
converted a motion to dismiss under 12(b)(6) to a motion for summary judgment of
non-infringement. In Clark, the patent-in-suit covered an invention that allowed the user to
activate a pre-recorded message by pushing a button attached to the surface of a poster. Id. at
863–64. The Clark plaintiffs alleged that Defendants infringed the ’272 Patents through its sale of
Hannah Montana and Cheetah Girls Talking Posters. The Clark defendants moved under Federal
Rule of Civil Procedure 12(b)(6) for failure to state a claim upon which relief can be granted and
argued that Clark plaintiffs could not succeed on their patent infringement claim. Id. at 864.
Specifically, the defendants argued that the accused talking posters could not infringe because the
surface of the housing unit on such posters was not prepared with a “matching art which is
substantially the same as that area of said poster art which appears on said portion of said poster
that said housing covers when said housing is attached to said poster, such that said housing
artistically blends in with the surrounding poster art that is not covered by said housing,” a
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limitation of the asserted claims.
The Clark court converted the motions to dismiss into motions for summary judgment,
gave notice to the parties of the same along with an opportunity to supplement the record, and, on
that record, dismissed the claims. Id. at 864. First, the court construed the claim limitation at
issue, holding that the claims unambiguously required that the artwork on the surface of the
housing be substantially the identical to the artwork on the area of the posters it covers, so that the
housing is camouflaged and the visual flow of the poster art is not interrupted. Id. at 871. Of note,
the court noted that the language at issue, “wherein a surface of said housing is prepared with a
matching art which is substantially the same as that area of said poster art . . . ” had been added to
overcome prior art which disclosed a display device containing the speakers in two separate
pieces, in contrast to the invention of the ’272 patent which was a single piece. Id. Second, the
court compared the construed claim to the accused product to determine if a reasonable juror could
find that the accused posters infringed such claims, an inquiry that could be easily answered based
on a superficial examination of the accused posters. Each of the nine accused posters consisted of
a solid color bar running the entire width of the bottom of the poster, thereby interrupting the visual
flow of the artwork directly underneath the color bar. Id. at 871–72. Therefore, since the
“matching art . . .” limitation was conspicuously absent, it found that no reasonable juror could
find that the accused posters literally infringed. The Court also rejected the plaintiff’s doctrine of
equivalents argument as barred by prosecution history estoppel because the language at issue had
been added to overcome prior art and the plaintiffs failed to overcome the Festo presumption
accompanying such amendment. Id. at 872–73.
Similarly, in Barron v. SCVNGR, Inc., 13-cv-40084, 2014 WL 3109966 (D. Mass July 7,
2014), the court granted summary judgment of non-infringement early in the case, prior to any
35

scheduling conference or discovery.

The patent in that case, the ’873 patent, entitled

“Communication Through a Financial Services Network,” described and claimed a methods for
communicating a message from a sender to a recipient in possession of a unique identifier. Of
note, each of the asserted claims required a “transaction terminal.” The Barron plaintiff asserted
that the user’s cell phone having the LevelUp mobile application installed thereon could be the
claimed transaction terminal as described by the ’873 patent claims. A month after answering the
complaint, SVNGR d/b/a/ LevelUp (“LevelUp”) moved for summary judgment of
non-infringement. LevelUp’s motion addressed a single dispositive issue: it argued that the
accused mobile phones could not serve as a transaction terminal and therefore the limitation
“cause a message to be delivered to a transaction terminal” was absolutely missing. First, the
court construed the term “transaction terminal” as “a device that communicates financial
transaction information for authorization via a secure financial network.” Id. at *2. Second, the
Court concluded that under that construction no reasonable juror could conclude that the accused
products infringed.
The Barron court explained that in the LevelUp system, merchants can install a LevelUp
scanner which can read a two dimensional LevelUp barcode from a display on the user’s phone.
Id. at *2. In such configuration, The LevelUp scanner reads the barcode from the phone display
and then sends the encoded information and the transaction amount entered by the merchant to a
LevelUp server which retrieves the customer’s stored account information and transmits the
transaction for authorization. Id. Therefore, the user’s cell phone as used in the LevelUp service
could not function as a transaction terminal because unlike the LevelUp scanner it “never connects
to a financial network or communicates transaction information.” Id. at *3. Accordingly, while
the service sent an emails or push notifications to the mobile phone, because the phone could not
36

be a transaction terminal. Likewise, the LevelUp scanner never receives a message to display to
the user. Accordingly, the Court found as a matter of law that the LevelUp service did not
infringe, and on appeal, the Federal Circuit summarily affirmed two days after oral argument. See
Barron v. SCVNGR, Inc., 595 Fed. App’x 988 (Fed. Cir. 2015)
The Court also finds that Parallel Networks, LLC v. Abercrombie & Fitch, No.
6:10-CV-111, 2011 WL 3609292, at *8 (E.D. Tex. Aug. 12, 2011), a case from this District, is
particularly instructive. In that case, Plaintiff Parallel Networks, LLC brought suit against over
100 large retailer defendants alleging infringement of a single patent. The patent-in-suit, the ’111
Patent, entitled “Method and Apparatus for Client–Server Communications Using a Limited
Capability Client Over a Low Speed Communications Network,” generally relates to a method and
apparatus for client-server communication. Id. at *1. After a status conference to discuss the
most efficient manner in which to handle the case, the Defendants requested an early claim
construction and summary judgment hearing. Id. The Defendants contended that construction of
three claim terms would be case dispositive for nearly all Defendants. Id.
The court agreed, held an early claim construction hearing on three claim terms, and
subsequently granted summary judgment. The Court adopted the moving defendants’ proposed
construction for one of the three terms resulting in the dismissal of 99 out of the 112 defendants.
The Court construed the claim limitation “[applet] dynamically generated by the server in response
to the request” to mean “constructed at the server, by combining the requisite functionality with
the necessary data, at the time of and response to the client request” and “generating [an executable
applet] dynamically in response to the data request” to mean “constructing at the server, by
combining the requisite functionality with the necessary data, at the time of and in response to the
client request.” Id. at *8. Both constructions required the accused instrumentalities to combine
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the data and functionality at the server. Id. The patent “[taught] away from the necessity of
multiple transmissions” by transmitting both functionality and the required data bundled in a
single group. Id. at *9.

By contrast, the moving defendants’ accused instrumentalities

“function[ed] in the precise way taught away from by the patent” by including either the data or
functionality in a link, rather than actual code, necessitating multiple transmissions (as opposed to
a single transmission) between the server and the client to transmit the necessary parts of the
applet. Id. at *10. Accordingly, the Court entered summary judgment of non-infringement and on
appeal the Federal Circuit affirmed. See Parallel Networks, LLC v. Abercrombie & Fitch Co., 704
F.3d 958, 967 (Fed. Cir. 2013).
The Court also finds Raylon LLC v. Complus Data Innovations, No. 6:09-CV-355, 2011
WL 1104175, at *1 (E.D. Tex. Mar. 23, 2011) aff'd in part, vacated in part, remanded sub nom.
Raylon, LLC v. Complus Data Innovations, Inc., 700 F.3d 1361 (Fed. Cir. 2012), another case
from this District, to be particularly instructive and factually apposite. Raylon accused three
Defendants of infringing the ’589 patent entitled “Identification Investigating and Ticket Issuing
System.” The ’589 patent generally relates to handheld computers that read magnetic tapes on an
identification card, display and transmits information, and print tickets. The day after filing its
answer, two defendants filed motions for summary judgment. The Court initially denied the
motions as premature, but Defendants re-urged their motions representing that the motions turned
on construction of a single term, “display being pivotally mounted on said housing.” According
to Defendants (and as discussed below, nearly identical to the case here), the “pivotally mounted”
limitation could not be met because the displays on the accused products were indisputably fixed.
Id. at *4.

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Accordingly, the Court granted leave and permitted summary judgment arguments at the
claim construction hearing. The Court first construed “display being pivotally mounted on said
housing” to mean “the display must be mounted on the housing so that the display and housing
may pivot with respect to each other,” and then granted summary judgment of non-infringement
because it was undisputed that each of the accused products had a fixed display screen. Id. at *5.
The Court likewise rejected Raylon’s doctrine of equivalents argument because it would
effectively read “pivotally” out of the claim and allow infringement by products functioning in a
way “opposite” to what the claims require. Id. at *6.
As these cases demonstrate, early claim construction on a limited set of disputed terms
followed by entry of summary judgment is appropriate if a superficial understanding of the
accused products makes it clear that a single limitation is obviously absent from the accused
products and that full blown discovery could not lead a reasonable jury to any other conclusion.
Once the claims are properly construed, this case fits squarely within that genre. See Ballard Med.
Prods. v. Allegiance Healthcare Corp., 268 F.3d 1352, 1362 (Fed. Cir. 2001) (“Because there is no
dispute over the structure of the accused device, resolution of the claim construction issue in this
case dictates the outcome of the infringement inquiry.”).
b.

Literal Infringement

A finding of no literal infringement follows directly from the claim construction analysis.
The dispositive issue on summary judgment is whether the Moving Defendants’ accused
instrumentalities contain at least one physically moveable camera.
Neither Plaintiff nor its expert argue that the Accused Products literally infringe under a
construction requiring a single, physically moveable camera, (see Dkt. Nos. 233, 243, 243-1) and
39

no reasonable juror could conclude that they do. Each of the accused products has at least two
distinct cameras—one front-facing and one rear-facing—each having a different sensor. For
example, the Dell Venue 8 7000 Series tablet has four cameras: a front facing camera, a rear
camera, and two rear depth cameras. (See Dkt. No. 234-12 at 2, Quintero Decl. ¶ 3(a). Such
cameras are fixed. (See Dkt. No. 234-12 at 2–14 (stating that each camera in each accused Dell
product is “fixed”); Dkt. No. 234-13 at 2–29 (stating that each camera in each accused Acer
product is “fixed”)). 10

Fixed cameras are not physically moveable. Cf. Raylon, 2011 WL

1104175, at *5 (E.D. Tex. Mar. 23, 2011) (fixed display screens are not pivotally mounted).
Accordingly, the accused products do not literally infringe Claim 1 because no accused
product has a single “physically moveable” reading head as the Court’s construction requires.
c.

Doctrine Of Equivalents

Plaintiff argues that even if the adopted construction of Claim 1 requires that the accused
reading head have a single sensor and be physically moveable foreclosing literal infringement, the
camera system of each of the Accused Products infringes the last element of Claim 1 of the ‘950
Patent under the Doctrine of Equivalents. (See Dkt. No. 233 at 11.)
“To support a finding of infringement under the [doctrine of equivalents], a patentee must

10

While only two Defendants submitted declarations stating that their products have only have “fixed” cameras,
Plaintiff has represented that all of the accused “smartphones and tablets all work in materially the same way with
respect to this claim element.” (Dkt. No. 217 at 8; see also id. at 5 (“All of the accused products work the same way”).
Further, nothing cited by either party suggests the accused cameras in any of the products work differently than the
fixed Dell or Acer cameras for the purposes of infringement, nor does Plaintiff address this issue in its responsive
brief. Indeed, Plaintiff’s expert, Dr. Nigel Jones, opines that each of the accused products work in essentially the
same way for purposes of assessing infringement, (See Dkt. No. 233 at 5–6, Jones Decl. at ¶ 12; Dkt. No. 241-1 at 5–
7, Jones Decl. at ¶ 14–15 (describing and depicting Accused Products having “two image sensor systems”); id. at 10–
11, Jones Decl. at ¶ 25 (“To determine the impact of a system with a physically movable sensor versus a system with
a logically moveable system utilizing two fixed sensors . . .”); Dkt. No. 233 at 4 (“Mr. Jones performed his analysis
and formed his opinions under both tests, comparing a system with a single physically moveable sensor to a logically
moveable system utilizing two fixed sensors (i.e., the Accused Products)”). Accordingly, the Court properly deems
the fact that all accused devices in this case have at least two fixed cameras to be uncontroverted.

40

either: (1) demonstrate an insubstantial difference between the claimed invention and the accused
product or method; or (2) satisfy the function, way, result test.” Fractus, S.A. v. Samsung Elecs.
Co., 876 F. Supp. 2d 802, 819 (E.D. Tex. 2012) (citing AquaTex Industries, Inc. v. Techniche
Solutions, 479 F.3d 1320, 1326 (Fed. Cir. 2007)). Equivalence must be assessed as to the
individual elements of the claimed invention, not to the invention as a whole. Warner–Jenkinson
Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29 (1997); Freedman Seating Co. v. Am. Seating Co.,
420 F.3d 1350, 1358 (Fed. Cir. 2005). According to the “triple identity test” or “function, way,
result” test, an accused product will be deemed an equivalent if the missing element performs
substantially the same function, in substantially the same way, with substantially the same result.
Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950). However, “the
question of insubstantiality of the differences is inapplicable if a claim limitation is totally missing
from the accused device.” Eagle Comtronics, Inc. v. Arrow Commc’n Labs., Inc., 305 F.3d 1303,
1315 (Fed. Cir. 2002).
Prosecution history estoppel may foreclose a patent holder’s ability to rely on the doctrine
of equivalents to prove infringement. Warner–Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S.
17, 30 (1997). “Ordinarily, the doctrine of equivalents allows a patentee to claim, not only
subject matter literally delineated by the claims, but also insubstantial alterations to the claims as
written.” GeoTag, Inc. v. Frontier Commc'ns Corp., No. 2:10-CV-00265-JRG, 2014 WL 282731,
at *1 (E.D. Tex. Jan. 24, 2014) (citing Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.,
535 U.S. 722, 733–34 (2002)). However, the doctrine of prosecution history estoppel prevents
the patentee from using the doctrine of equivalents to recapture matter surrendered during patent
prosecution. AquaTex Indus., 479 F.3d at 1325; see also Allen Eng’g Corp. v. Bartell Indus., 299
F.3d 1336, 1349–50 (Fed. Cir. 2002). Under Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki
41

Co., 535 U.S. 722 (2002), a narrowing amendment to a claim creates a presumption that
prosecution history bars a later equivalency by the patentee in an infringement action. “The
burden of rebutting the Festo presumption lies with the patentee.” Amgen Inc. v. Hoechst Marion
Roussel, Inc., 457 F.3d 1293, 1312 (Fed. Cir. 2006); GeoTag, Inc., 2014 WL 282731 at *2. The
question of whether and to what extent prosecution history estoppel bars argument under the
doctrine of equivalents is a question of law to be determined exclusively by the court. Id. at *1.
To overcome the Festo presumption of estoppel and recapture the ability to assert the
doctrine of equivalents, the patentee must show either (1) the equivalent was unforeseeable at the
time the claim was drafted; (2) the amendment did not surrender the particular equivalent in
question; or (3) there was some reason why the patentee could not have recited the equivalent in
the claim. See Festo, 535 U.S. at 740–41; Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
344 F.3d 1359, 1368–70 (Fed. Cir. 2003); Rhodia Chimie v. PPG Indus. Inc., 402 F.3d 1371, 1382
(Fed. Cir. 2005). Here, the Court finds that none of these three grounds addressed in Festo and its
progeny apply to overcome the presumption of estoppel.
Regarding foreseeability, independent claim 38 (which is not asserted in this lawsuit)
demonstrates that a person of skill in the art could have foreseen and knew how to claim the
alleged equivalent. Claim 38 claims a personal communication system comprising . . . a first
interchangeable reading head . . . and a second interchangeable reading head.” (emphasis added).
Further, Plaintiffs own submissions clearly establish that the alleged equivalent was foreseeable.
During claim construction, Plaintiff relied on prior art references as extrinsic evidence to support
its position that the term “camera” can have multiple lensing and/or multiple sensors. As
discussed supra, according to Plaintiff, U.S. Patent No. 6,288,742 to Ansari titled “Video camera
including multiple sensors” illustrates a digital video camera with at least two lensings and at least
42

two image sensors. Ansari has a filing date of May 27, 1997 and a priority date of September 21,
1995. Ansari demonstrates that the alleged equivalent—a digital camera system comprising a
plurality of sensors, each having a lens for capturing an image—was known in the prior art. The
Ansari system includes a processing unit for processing the first electrical signal and the second
electrical signal and a switch for selectively coupling either the first electrical signal or the second
electrical signal to the processing unit. The reference further discloses that such a system was
advantageous because there often occurs a need to switch camera views quickly from one room
view to another or from face-to-face view to face-to-document view, in contrast to the then present
methods for achieving these views with motor driven pan/tilt stages and and/or multiple cameras.
Accordingly, Plaintiff cannot argue that the alleged equivalent was unforeseeable at the time of the
amendment.
Next, the tangential relation grounds does not apply because the amendment was made to
overcome prior art. As discussed supra, during prosecution, the examiner noted that the Wilska
reference taught every element of Claim 1, except it did not explicitly disclose “an adjustable
reading head.” The examiner found said limitation in the Boyd reference. (Dkt. No. 217-10 at 3–
5.) Boyd discloses, among other things, a camera attached to a video teleconferencing unit with
lens-tilt mechanism so that the lens can be manually adjusted without having to adjust the
positioning of the entire teleconferencing unit. Subsequently, to distinguish the combination of
these two references, the applicant amended the claim to include the “multi-position” language at
issue which relate to the equivalents at issue in this case. (See Dkt. No. 217-11.) Therefore, the
amendments can hardly be said to be merely tangential.
Finally, nothing in the prosecution history warrants application of the third grounds for
overcoming the Festo presumption. There is no shortcoming of language to describe the alleged
43

equivalent. As explained above, Claim 38 demonstrates that a patent prosecutor could have
easily described the proposed equivalent and further, that the alleged equivalent structure was
described in the prior art.
The Court holds that Plaintiff’s unavailable doctrine of equivalents argument also fails as a
matter of law. No reasonable juror could find the accused camera system—the dual fixed
front-facing and rear-facing cameras employing a software toggle—as equivalent to the single
multi-positional camera recited in the claims. The way in which the claimed “reading head”
performs the function of capturing image signals is significantly different from the way in which
the accused products perform said function. Fundamentally, there are really only two ways to
perform such image capturing function: using a single moveable camera with multiple lensings (as
recited by the claims) or using multiple fixed cameras with multiple lensings. The multi-camera /
software-toggling system, such as that used by the accused products, is essentially the
“fundamental opposite” of the single, multi-positional and multi-functional camera recited in the
claims. Wleklinski v. Targus, Inc., 258 F. App’x 325, 329 (Fed. Cir. 2007) (“[T]he Targus strap,
which has an auxiliary strap means composed of a single unitary material made of the same fabric,
is the fundamental opposite of the claimed invention, in which the auxiliary strap means requires
separate sections made of different materials.”); see also Raylon, LLC v. Comlus Data
Innovations, Inc., 700 F.3d 1361, 1367 (Fed. Cir. 2012) (affirming that “fixed” screens could not
be equivalent to a display “pivotally mounted”); Planet Bingo, LLC v. GameTech Int’l, Inc., 472
F.3d 1338, 1345 (Fed. Cir. 2006) (“This court has refused to apply the doctrine in other cases
where the accused device contained the antithesis of the claimed structure.”); Freedman Seating
Co. v. Am. Seating Co., 420 F.3d 1350, 1361 (Fed. Cir. 2005) (opining that accused products with
moveable end confined to a “fixed location” on a seatbase could not be equivalent to claim
44

limitation requiring “a moveable end slidably mounted to” a seatbase). A device with two fixed
cameras, neither of which performs all of the claim limitations, cannot be said to operate in the
same way as the claimed structure which requires a single physically moveable and multi-function
reading head perform the claim limitations.
Accordingly, the accused products do not have an equivalent structure to the claimed
multi-position and multi-function reading head. The doctrine of equivalents does not apply, as a
matter of law.
III.

Conclusion
In sum, the Court construes the phrase “an internal multi-position and multi-function

reading head” to mean “a single internal multi-function reading head that is physically

.
moveable.” The present record reflects that there is no material dispute none of the accused
products have a physically moveable reading head, either literally or under the doctrine of
equivalents. Therefore, for the reasons set forth herein, pursuant to Federal Rule of Civil
Procedure 12(d), the Court CONVERTS the pending Motions to Dismiss into motions for
summary judgment under Federal Rule of Civil Procedure 56 and, having done so, DISMISSES
all claims against all Defendants WITH PREJUDICE.

SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 2nd day of September, 2016.

____________________________________
RODNEY GILSTRAP
UNITED STATES DISTRICT JUDGE

45