Nagravision SA v. Comcast Corporation et al
CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER. Signed by District Judge Rodney Gilstrap on 11/13/2017. (nkl, )
THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
NAGRAVISION SA and NAGRA
CASE NO. 2:16-CV-1362-JRG
MEMORANDUM OPINION AND ORDER
Before the Court is Plaintiffs Nagravision SA and Nagra France SAS’s (“Plaintiffs’ or
“Nagravision’s”) Opening Claim Construction Brief (Dkt. No. 125). Also before the Court are
Defendant Comcast Cable Communications LLC’s (“Defendant’s” or “Comcast’s”) Responsive
Claim Construction Brief (Dkt. No. 130) and Plaintiffs’ reply (Dkt. No. 136).
The Court held a claim construction hearing on November 1, 2017.
Table of Contents
I. BACKGROUND ....................................................................................................................... 2
II. LEGAL PRINCIPLES ........................................................................................................... 3
III. AGREED TERMS................................................................................................................. 8
IV. DISPUTED TERMS .............................................................................................................. 8
A. “factory key” ......................................................................................................................... 8
B. “processing the data” and “processed data” ........................................................................ 17
V. CONCLUSION...................................................................................................................... 22
Plaintiffs bring suit alleging infringement of United States Patents No. 7,725,740 (“the
’740 Patent”), 8,356,188 (“the ’188 Patent”), and RE40,334 (collectively, the “patents-in-suit”)
(Dkt. No. 125, Exs. 1–3).1
The ’740 Patent, titled “Generating a Root Key for Decryption of a Transmission Key
Allowing Secure Communications,” issued on May 25, 2010, and bears an earliest priority date of
May 28, 2003. Plaintiffs submit: “The invention of the ’740 Patent protects the integrity of
software installed on an STB [(set-top box)] by confirming—each time the STB is started up—
that the installed software is authentic and has not been tampered with.” (Dkt. No. 125, at 3; see
Dkt. No. 136, at 1.) Defendant disagrees with Plaintiffs’ characterization, and Defendant submits
that “the asserted claims of [the] ’740 patent are not directed to ‘confirming . . . that the installed
software is authentic’ on a STB, see [Dkt. No. 125,] at 3, which the claimed invention does not
facilitate in any way, but rather to one particular method of generating a root key in a secure module
using secret information, and using that root key for a particular purpose.” (Dkt. No. 130, at 4; see
id., at 2–3.) The Abstract of the ’740 Patent states:
A method is used to restore the security of a secure assembly such as a chip card,
after the contents of its second memory zone have been read by a third party. The
method is for generating a security key implemented by a secure module
comprising a central unit, a first conditional access memory zone and at least one
second memory zone containing all or part of the user program. The method
includes reading of all or part of the second memory zone, and generation of at least
one root key based on all or part of the second zone data and on at least one item of
secret information stored in the first memory zone.
The ’188 Patent, titled “Secure System-on-Chip,” issued on January 15, 2013, and bears
an earliest priority date of December 23, 2005. Plaintiffs submit that “the invention described in
The parties have not submitted any disputed terms for the ’334 Patent. (Dkt. No. 140, at 1.)
the ’188 Patent allows for secure storage of data within a system-on-chip by applying a layer of
encryption to the information before storing it in memory.” (Dkt. No. 125, at 3–4; see Dkt.
No. 136, at 1.) Defendant submits that “[t]he ’188 patent aims ‘to provide a secure system-onchip for processing data’ by adding an internal encryption layer to data on the chip.” (Dkt. No. 130,
at 4.) The Abstract of the ’188 Patent states:
The aim of the present invention is to provide a secure system-on-chip for
processing data, this system-on-chip comprising at least a central processing unit,
an input and an output channel, an encryption/decryption engine and a memory,
characterized in that, said input channel comprises an input encryption module to
encrypt all incoming data, said output channel comprising an output decryption
module to decrypt all outgoing data, said central processing unit receiving the
encrypted data from the input encryption module and storing them in the memory,
and while processing the stored data, said central processing unit reading the stored
data from the memory, requesting decryption of same in the encryption/decryption
engine, processing the data and requesting encryption of the result by the
encryption/decryption engine and storing the encrypted result, outputting the result
to the output decryption module for decryption purpose and exiting the decrypted
result via the output channel.
Plaintiffs have asserted Claims 1 and 2 of the ’740 Patent. (See Dkt. No. 125, Ex. 4,
Aug. 23, 2017 Rubin Decl., at ¶ 22; see also Dkt. No. 130, at 3.)
Plaintiffs have asserted Claims 9 and 11 of the ’188 Patent. (See Dkt. No. 125, Ex. 4,
Aug. 23, 2017 Rubin Decl., at ¶ 32.)
II. LEGAL PRINCIPLES
It is understood that “[a] claim in a patent provides the metes and bounds of the right which
the patent confers on the patentee to exclude others from making, using or selling the protected
invention.” Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed. Cir. 1999).
Claim construction is clearly an issue of law for the court to decide. Markman v. Westview
Instruments, Inc., 52 F.3d 967, 970–71 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996).
“In some cases, however, the district court will need to look beyond the patent’s intrinsic
evidence and to consult extrinsic evidence in order to understand, for example, the background
science or the meaning of a term in the relevant art during the relevant time period.” Teva Pharms.
USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015) (citation omitted). “In cases where those
subsidiary facts are in dispute, courts will need to make subsidiary factual findings about that
extrinsic evidence. These are the ‘evidentiary underpinnings’ of claim construction that we
discussed in Markman, and this subsidiary factfinding must be reviewed for clear error on appeal.”
Id. (citing 517 U.S. 370).
To ascertain the meaning of claims, courts look to three primary sources: the claims, the
specification, and the prosecution history. Markman, 52 F.3d at 979. The specification must
contain a written description of the invention that enables one of ordinary skill in the art to make
and use the invention. Id. A patent’s claims must be read in view of the specification, of which
they are a part. Id. For claim construction purposes, the description may act as a sort of dictionary,
which explains the invention and may define terms used in the claims. Id. “One purpose for
examining the specification is to determine if the patentee has limited the scope of the claims.”
Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000).
Nonetheless, it is the function of the claims, not the specification, to set forth the limits of
the patentee’s invention. Otherwise, there would be no need for claims. SRI Int’l v. Matsushita
Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). The patentee is free to be his own
lexicographer, but any special definition given to a word must be clearly set forth in the
specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992).
Although the specification may indicate that certain embodiments are preferred, particular
embodiments appearing in the specification will not be read into the claims when the claim
language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc.,
34 F.3d 1048, 1054 (Fed. Cir. 1994).
This Court’s claim construction analysis is substantially guided by the Federal Circuit’s
decision in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips,
the court set forth several guideposts that courts should follow when construing claims. In
particular, the court reiterated that “the claims of a patent define the invention to which the patentee
is entitled the right to exclude.” Id. at 1312 (quoting Innova/Pure Water, Inc. v. Safari Water
Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To that end, the words used in a claim
are generally given their ordinary and customary meaning. Id. The ordinary and customary
meaning of a claim term “is the meaning that the term would have to a person of ordinary skill in
the art in question at the time of the invention, i.e., as of the effective filing date of the patent
application.” Id. at 1313. This principle of patent law flows naturally from the recognition that
inventors are usually persons who are skilled in the field of the invention and that patents are
addressed to, and intended to be read by, others skilled in the particular art. Id.
Despite the importance of claim terms, Phillips made clear that “the person of ordinary
skill in the art is deemed to read the claim term not only in the context of the particular claim in
which the disputed term appears, but in the context of the entire patent, including the
specification.” Id. Although the claims themselves may provide guidance as to the meaning of
particular terms, those terms are part of “a fully integrated written instrument.” Id. at 1315
(quoting Markman, 52 F.3d at 978). Thus, the Phillips court emphasized the specification as being
the primary basis for construing the claims. Id. at 1314–17. As the Supreme Court stated long
ago, “in case of doubt or ambiguity it is proper in all cases to refer back to the descriptive portions
of the specification to aid in solving the doubt or in ascertaining the true intent and meaning of the
language employed in the claims.” Bates v. Coe, 98 U.S. 31, 38 (1878). In addressing the role of
the specification, the Phillips court quoted with approval its earlier observations from Renishaw
PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998):
Ultimately, the interpretation to be given a term can only be determined and
confirmed with a full understanding of what the inventors actually invented and
intended to envelop with the claim. The construction that stays true to the claim
language and most naturally aligns with the patent’s description of the invention
will be, in the end, the correct construction.
Phillips, 415 F.3d at 1316. Consequently, Phillips emphasized the important role the specification
plays in the claim construction process.
The prosecution history also continues to play an important role in claim interpretation.
Like the specification, the prosecution history helps to demonstrate how the inventor and the
United States Patent and Trademark Office (“PTO”) understood the patent. Id. at 1317. Because
the file history, however, “represents an ongoing negotiation between the PTO and the applicant,”
it may lack the clarity of the specification and thus be less useful in claim construction proceedings.
Id. Nevertheless, the prosecution history is intrinsic evidence that is relevant to the determination
of how the inventor understood the invention and whether the inventor limited the invention during
prosecution by narrowing the scope of the claims. Id.; see Microsoft Corp. v. Multi-Tech Sys.,
Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (noting that “a patentee’s statements during prosecution,
whether relied on by the examiner or not, are relevant to claim interpretation”).
Phillips rejected any claim construction approach that sacrificed the intrinsic record in
favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc court
condemned the suggestion made by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193
(Fed. Cir. 2002), that a court should discern the ordinary meaning of the claim terms (through
dictionaries or otherwise) before resorting to the specification for certain limited purposes.
Phillips, 415 F.3d at 1319–24. According to Phillips, reliance on dictionary definitions at the
expense of the specification had the effect of “focus[ing] the inquiry on the abstract meaning of
words rather than on the meaning of claim terms within the context of the patent.” Id. at 1321.
Phillips emphasized that the patent system is based on the proposition that the claims cover only
the invented subject matter. Id.
Phillips does not preclude all uses of dictionaries in claim construction proceedings.
Instead, the court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the
court emphasized that claim construction issues are not resolved by any magic formula. The court
did not impose any particular sequence of steps for a court to follow when it considers disputed
claim language. Id. at 1323–25. Rather, Phillips held that a court must attach the appropriate
weight to the intrinsic sources offered in support of a proposed claim construction, bearing in mind
the general rule that the claims measure the scope of the patent grant.
The Supreme Court of the United States has “read [35 U.S.C.] § 112, ¶ 2 to require that a
patent’s claims, viewed in light of the specification and prosecution history, inform those skilled
in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig
Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). “A determination of claim indefiniteness is a
legal conclusion that is drawn from the court’s performance of its duty as the construer of patent
claims.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005)
(citations and internal quotation marks omitted), abrogated on other grounds by Nautilus, 134
S. Ct. 2120.
III. AGREED TERMS
In their August 23, 2017 Joint Claim Construction Chart and Prehearing Statement (Dkt.
No. 105, at 1) and their October 18, 2017 Joint Claim Construction Chart (Dkt. No. 140, at 2–3),
the parties have set forth agreements as to the following terms in the patents-in-suit:
“eliminating the secret information from the
first portion of the second memory zone”
“rendering inaccessible the secret information
in the first portion of the second memory zone”
(’740 Patent, Claim 1)
“a computer system for providing encrypted
data and keys to a remote device”
(’740 Patent, Claim 1)
IV. DISPUTED TERMS
A. “factory key”
Plaintiffs’ Proposed Construction
Defendant’s Proposed Construction
No construction needed / plain and ordinary Indefinite under 35 U.S.C. § 112
(Dkt. No. 105, Ex. A, at 1; Dkt. No. 125, at 7; Dkt. No. 130, at 7; Dkt. No. 136, at 2; Dkt. No. 140,
at 3.) The parties submit that this term appears in Claim 2 of the ’740 Patent. (Dkt. No. 130, at
(1) The Parties’ Positions
Plaintiffs argue that whereas “the range of meanings that Comcast attributes to ‘factory
key’ makes clear that Comcast’s argument is really that ‘factory key’ could mean different things
to different people,” the proper inquiry is the meaning to a person of ordinary skill in the relevant
art. (Dkt. No. 125, at 9.) Plaintiffs also argue that “there is no requirement that a claim term have
a ‘standard meaning’ or otherwise be a term of art to comply with the statute,” and “[e]ven if the
inventors coined the term themselves, that does not render the term indefinite if the person having
ordinary skill in the art would understand what was claimed.” (Id., at 11.)
Defendant responds that “factory key” is a “coined” term that “did not have an understood
meaning in the relevant field, and neither the intrinsic nor extrinsic evidence informs one of skill
in the art about the scope of the term with any reasonable certainty.” (Dkt. No. 130, at 7–8.) For
example, Defendant argues that “merely stating that a ‘factory key’ is not a ‘root key’ or
‘transmission key’ does not establish the scope of a ‘factory key’ with any reasonable certainty, as
there are keys that may not be any of these.” (Id., at 9–10.) Defendant submits that “Nagravision
provides only heavily caveated ‘examples’ of what a ‘factory key’ could be, thus leaving the scope
of the term completely open-ended and leaving Nagravision itself free to mold the term as it sees
fit to suit its infringement theory.” (Id., at 11.) Defendant concludes that “[a] skilled artisan is . . .
left to guess whether the ‘factory key’ in claim 2 encompasses a cryptographic key loaded at the
factory where the secure module is manufactured, a cryptographic key used only at the factory, or
some other undefined key with or without association to the factory that manufactures the secure
module.” (Id., at 14.)
Plaintiffs reply by reiterating that “the absence of a standard meaning for a claim term does
not render it indefinite.” (Dkt. No. 136, at 2.) Plaintiffs argue: “That a person of ordinary skill in
the art would understand that a ‘factory key’ could be installed at any of a number of points in the
manufacturing process before reaching the customer does not make the term indefinite, because it
is clear that is what the term ‘factory key’ refers to: a key that is installed prior to use by a
customer.” (Id., at 4.)
The parties’ experts appear to agree that the relevant art is cryptography. (See Dkt.
No. 125, Ex. 4, Aug. 23, 2017 Rubin Decl., at ¶ 18; see also id., Ex. 5, Aug. 23, 2017 Villasenor
Decl., at ¶ 21 (referring to “the context of cryptographic systems, security processors, and secure
communications”); id., Ex. 6, Sept. 16, 2017 Villasenor dep. at 18:25–19:9.) Further, Defendant’s
expert has agreed that a “key,” in the context of encryption, is used for encryption or decryption
or both. (See id. at 40:17–18.)
Claim 2 of the ’740 Patent depends from Claim 1. Claims 1 and 2 of the ’740 Patent recite
1. Method for generating a root key implemented by a secure module comprising
a central unit, a first conditional access memory zone containing all or part of a
bootstrap program and at least one second memory zone containing a first portion
and a second portion containing all or part of a user program, the method
executing an initialisation program from the first conditional access
reading and temporarily storing a secret information from the first
conditional access memory zone into the first portion of second memory zone
during the initialisation of the secure module;
reading all or part of the second portion of the second memory zone;
generating the root key based on an imprint of data of the second portion of
the second memory zone and on the stored secret information, the imprint being
generated based on the application of a unidirectional function to all or part of the
data of the second portion of the second memory zone;
eliminating the secret information from the first portion of the second
memory zone after the root key has been generated;
disabling access to the first conditional access memory zone, wherein at the
time of execution by the central unit in the second memory zone, no access is
granted to the first conditional access memory zone
wherein the root key is used to allow decryption of transmission key, the
transmission key allowing secure communication between the secure module and
a management center.
2. Method according to claim 1, wherein the secret information is a factory key.
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Defendant’s expert, Dr. John D. Villasenor, has opined that “the term ‘factory key’ did not
have a standard meaning to one of skill in the art in 2003.” (Id., Ex. 5, Aug. 23, 2017 Villasenor
Decl., at ¶ 21.) Indeed, Plaintiffs have not submitted any dictionaries or treatises to demonstrate
that the term “factory key” had a specific, well-established meaning throughout the relevant art at
the relevant time.
Nonetheless, Plaintiffs have cited prosecution history in which the examiner cited the
“Hazard” reference (United States Patent No. 5,177,790) and stated that a “factory key” is a
“key . . . loaded at time of manufacture”:
Regarding claim 2:
Hazard discloses the method according to claim 1, wherein the secret information
is a factory key (figure 1 and 2; memory 13 has a key (examiner interprets that the
key is loaded at time of manufacture, thus being a factory key) that is loaded into
it; column 14 lines 39–44; a third parameter from the third zone (13) can be used
in the random number generation). One of ordinary skill in the art at the time of
invention could have combined memory 12 with memory 13 in order to allow at
least one of the items to be a factory key.
(Dkt. No. 125, Ex. 4, Ex. C, Aug. 24, 2007 Office Action, at 4 (OTVNV_DC_00245977)
As to whether sufficient clarity is apparent in the examiner’s interpretation, Defendant’s
expert has testified that “time of manufacture” lacks sufficiently clear boundaries because the
phrase might refer to “a time or source restriction” rather than necessarily a “physical location or
step restriction.” (Dkt. No. 125, Ex. 6, Sept. 16, 2017 Villasenor dep. at 113:17–116:15; see id. at
92:3–93:3.) Nonetheless, Defendant’s expert has at least acknowledged that a person of ordinary
skill in the art would not understand a “factory key” to be a physical key that unlocks a factory or
a physical factory at which chips are manufactured. (See Dkt. No. 125, Ex. 6, Sept. 16, 2017
Villasenor dep. at 86:17–23 & 89:11–17.)
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The dispute thus appears to center on whether the term “factory key” connotes reasonably
clear restrictions on when and where such a key is provided. On this subject, Plaintiffs’ expert,
Dr. Avi Rubin, has opined that “one of ordinary skill in the art at the time of the ’740 inventions
would understand ‘factory key’ to carry its plain and ordinary meaning, e.g., a key provided by the
supplier prior to use by a customer.” (Id., Ex. 4, Aug. 23, 2017 Rubin Decl., at ¶ 28 (emphasis
added).) Similarly, Plaintiffs’ expert has testified that “[t]o one of ordinary skill in the art, the
factory key would be one that was installed on the device before it was given to the customer.”
(Id., Ex. 7, Sept. 1, 2017 Rubin dep. at 91:10–13 (emphasis added).)
Thus, Plaintiffs have here proposed that the plain meaning of “factory key” in the relevant
art is “a key provided by the supplier prior to use by a customer.” (Dkt. No. 125, at 10.) This
contrasts with the examiner’s interpretation of “factory key” as a key provided at the time of
manufacture. (Id., Ex. 4, Ex. C, Aug. 24, 2007 Office Action, at 4 (OTVNV_DC_00245977).)
Indeed, Plaintiffs’ expert has testified that “a key that is preloaded at the factory is an example of
a factory key.” (Dkt. No. 130, Sept. 1, 2017 Rubin dep. at 128:19–129:9 (emphasis added).)
“During prosecution, . . . the PTO gives claims their broadest reasonable interpretation.”
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (citation and internal quotation marks omitted).
Plaintiffs’ proposal is broader than the examiner’s “broadest reasonable interpretation”
(id.) because Plaintiffs’ proposal would encompass a key provided after the time of manufacture.
(See, e.g., Dkt. No. 125, Sept. 1, 2017 Rubin dep. at 123:12–17 (“If you had a key, for example,
that a service provider installed on the device after the physical device had been manufactured,
and then before it was delivered to the customer, then I would consider that a factory key, too.”).)
Because Plaintiffs’ proposed interpretation is thus broader than the examiner’s interpretation under
the above-cited “broadest reasonable interpretation” standard, this prosecution history does not
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support Plaintiffs’ proposed interpretation. See Facebook, Inc. v. Pragmatus AV, LLC, 582 F.
App’x 864, 869 (Fed. Cir. Sept. 11, 2014) (“The broadest reasonable interpretation of a claim term
may be the same as or broader than the construction of a term under the Phillips standard. But it
cannot be narrower.”).
But although Plaintiffs’ proposed interpretation is thus overbroad, the proper scope of
“factory key” is the scope applied by the examiner. See id. This interpretation by the examiner is
of significant weight in the present case. See Am. Hoist & Derrick Co. v. Sowa & Sons, Inc., 725
F.2d 1350, 1359 (Fed. Cir. 1984) (patent examiners are “assumed . . . to be familiar from their
work with the level of skill in the art”), abrogated on other grounds by Therasense, Inc. v. Becton,
Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011); see also PowerOasis, Inc. v. T-Mobile USA,
Inc., 522 F.3d 1299, 1304 (Fed. Cir. 2008) (citing American Hoist); Salazar v. Procter & Gamble
Co., 414 F.3d 1342, 1347 (Fed. Cir. 2005) (“Statements about a claim term made by an Examiner
during prosecution of an application may be evidence of how one of skill in the art understood the
term at the time the application was filed.”).
This interpretation is also consistent with the specification, such as the disclosure
explaining that the root key is different from the factory key:
It is important that this root key is never constant and must for that reason be
different from any key stored in the first memory zone such as the factory key. For
this reason the root key is generated as a variable using the new data transmitted by
the management centre.
’740 Patent at 3:5–9 (emphasis added). This passage discloses that the root key cannot be the
factory key because it is important that the root key “is never constant,” which implies that the
factory key is constant. See id. This disclosure of a factory key that is constant is consistent with
the examiner’s interpretation that a factory key is provided at the time of manufacture.
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Finally, Plaintiffs have submitted patent references in which the term “factory key” (or a
similar term) is used, which Plaintiffs argue reinforces that the term “factory key” is not indefinite.
(See Dkt. No. 125, Ex. 8, U.S. Pat. Appl. Publ’n No. 2006/0236111 (“Bodensjo”) at Abstract2; see
also id. at ¶ 0198 (“It is further noted that the term ‘factory software’ is intended to comprise any
computer-executable instructions loaded into the electronic device during production.”); id., Ex.
4, Ex. D, U.S. Pat. No. 4,803,725 at 7:21–24, 11:11–20, 12:7–19 & Fig. 3 (“master factory key”);
id., Ex. E, European Patent Application Publ’n No. 0179612 (“master factory key”).) Also of note,
Defendant’s expert has acknowledged the disclosure in the specification that “will certainly
convey as to one of skill in the art that at least as discussed here, the root key is different from the
factory key.” (Id., Ex. 6, Sept. 16, 2017 Villasenor Tr. at 65:10–13 (discussing ’740 Patent at 3:5–
7); see id. at 71:13–15 (agreeing that the patent “would suggest the transmission key would be
different from the factory key”).)
Thus, the evidence cited by Plaintiffs, particularly the examiner’s interpretation, is
persuasive that the term “factory key” “inform[s], with reasonable certainty, those skilled in the
art about the scope of the invention.” Nautilus, 134 S. Ct. at 2128 (citation and internal quotation
marks omitted); see, e.g., Honeywell Int’l Inc. v. Universal Avionics Sys. Corp., 488 F.3d 982, 990
(Fed. Cir. 2007) (construing “look ahead distance” in context of aviation electronics despite noting
that this term was “not a term of art”). The above-discussed intrinsic and extrinsic evidence
outweighs the contrary opinion of Defendant’s expert. (See Dkt. No. 125, Ex. 5, Aug. 23, 2017
Villasenor Decl., at ¶ 22.)
As to Defendant’s argument that “the Examiner’s statement did not define or establish the
scope of the ‘factory key’ term with any reasonable certainty either” (Dkt. No. 130, at 10), “[t]he
Plaintiffs submit that this reference has been “identified by Comcast.” (Dkt. No. 125, at 12.)
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definiteness requirement . . . mandates clarity, while recognizing that absolute precision is
unattainable.” Nautilus, 134 S. Ct. at 2129; cf. Interval Licensing LLC v. AOL, Inc., 766 F.3d
1364, 1370 (Fed. Cir. 2014) (“We do not understand the Supreme Court to have implied in Nautilus
. . . that terms of degree are inherently indefinite.”); Freeny v. Apple Inc., No. 2:13-CV-00361WCB, 2014 WL 4294505, at *4-*6 (E.D. Tex. Aug. 28, 2014) (Bryson, J., sitting by designation)
(discussing Nautilus and finding “low power communication signals” not indefinite).
example, Defendant has cited deposition testimony in which Plaintiffs’ expert stated that the ’740
Patent does not identify the types of factories that would qualify for the term “factory key” (Dkt.
No. 130, Ex. 6, Sept. 1, 2017 Rubin dep. at 96:8–16.) Defendant has not demonstrated that such
“absolute precision” is required. Nautilus, 134 S. Ct. at 2129. Indeed, even Defendant’s own
expert has stated: “I think one of ordinary skill in the art would understand what the examiner is
saying in the parenthetical remark.” (See Dkt. No. 125, Ex. 6, Sept. 16, 2017 Villasenor dep. at
Also, Defendant’s expert has not adequately supported his suggestion that “factory key” is
unclear because it could be interpreted as “a key that is used only at a factory.” (Id. at 92:15–17.)
In particular, the above-cited “Bodensjo” reference, which has been discussed by the parties, does
not demonstrate that the term “factory key,” as used in the ’740 Patent, could refer to a key that is
used only at a factory. (See Dkt. No. 125, at Ex. 8.)
As to the meaning of “manufacture,” Plaintiffs have noted that Bodensjo discloses:
“Typically, a manufacturer of such electronic devices delivers the device with or without some
preinstalled software and/or data to a customer who further customises the electronic device prior
to delivering the device to an end-user.” (Id. at ¶ 0002.)
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Plaintiffs’ expert has testified that “manufacture” is “the process of creating the device
before it is used by the customer” (wherein this “customer” appears to correspond to the “enduser” referred to in Bodensjo, above), but Plaintiffs’ expert then also appeared to use the word
“manufacture” as both including and excluding “a technician at a customer’s home loading on
keys to a device before the customer uses it”:
Q. But, it is your opinion that a factory key could also include keys that are not
loaded at the time of manufacture, right?
[Plaintiffs’ counsel]: Objection to the form.
THE WITNESS: Well, manufacture being the process of creating the device before
it is used by the customer. And so, the idea in the ’740 is that these keys are not
keys that are derived through the use of the product but there are keys that are on
there beforehand, such as keys that would be loaded at the time of manufacture.
BY [Defendant’s counsel]:
Q. So in your broad interpretation of the word, manufacture, you are also including
a technician at a customer’s home loading on keys to a device before the customer
A. Right, those -Q. You consider that manufacture.
[Plaintiffs’ counsel]: Hold on. Objection to the form.
THE WITNESS: Those keys would have the same security properties with respect
to the system and the protocol that one that is loaded at the time of the manufacture
would have. And that is what is important in this patent.
(Dkt. No. 136, Ex. 1, Sept. 1, 2017 Rubin dep. at 131:2–132:7 (emphasis added).) In particular,
in the final portion of the above-reproduced testimony, Plaintiffs’ expert testified that keys loaded
by a technician at a customer’s home (before the customer uses the device) would have the same
properties as a key loaded “at the time of manufacture.” Id.; see id. at 123:12–17. This appears
to be inconsistent with Plaintiffs’ expert’s agreement that “manufacture” would include a
technician loading keys on a device at a customer’s home before a customer uses the device. (See
id. at 131:2–132:7 (“Right . . . .”).) This inconsistency in Plaintiffs’ expert’s own use of the term
“manufacture” evinces that “manufacture” ordinarily has a sufficiently well-understood meaning
such that no further construction is necessary as to “manufacture.” See id.; see also id. at 123:12–
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17. Indeed, as reproduced above, the examiner used the word “manufacture” without providing
any further elaboration.
(Dkt. No. 125, Ex. 4, Ex. C, Aug. 24, 2007 Office Action, at 4
To whatever extent any disputes remain as to the “time of manufacture,” such disputes
relate to factual details of the accused instrumentalities rather than to any legal question for claim
construction. See Acumed LLC v. Stryker Corp., 483 F.3d 800, 806 (Fed. Cir. 2007) (“The
resolution of some line-drawing problems . . . is properly left to the trier of fact.”) (citing PPG
Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998) (“after the court has defined
the claim with whatever specificity and precision is warranted by the language of the claim and
the evidence bearing on the proper construction, the task of determining whether the construed
claim reads on the accused product is for the finder of fact”)); Eon Corp. IP Holdings LLC v. Silver
Spring Networks, Inc., 815 F.3d 1314, 1318–19 (Fed. Cir. 2016) (citing PPG).
The Court therefore hereby construes “factory key” to mean “key loaded at the time of
B. “processing the data” and “processed data”
“processing the data”
Plaintiffs’ Proposed Construction
Defendant’s Proposed Construction
No construction needed / plain and ordinary “modifying the ‘input data’ recited in the
preceding claim elements”
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Plaintiffs’ Proposed Construction
Defendant’s Proposed Construction
No construction needed / plain and ordinary “the data resulting from the modifying of the
‘input data’ recited in the preceding claim
(Dkt. No. 105, Ex. A, at 1–2; Dkt. No. 125, at 13; Dkt. No. 130, at 14; Dkt. No. 136, at 6; Dkt.
No. 140, at 4.) The parties submit that these terms appear in Claim 9 of the ’188 Patent. (Dkt. No.
130, at 14.)
(1) The Parties’ Positions
Plaintiffs submit, as to “processing the data,” that “[a]lthough the phrase refers to ‘the data’
and not ‘the input data,’ the parties agree and it is otherwise clear that the data being processed is
the input data.” (Dkt. No. 125, at 14.) Plaintiffs also urge that “processing” is a commonly
understood word that requires no construction. (Id.) As to “processed data,” Plaintiffs argue that
“‘processed data’ does not and cannot refer to ‘input data’ because ‘processed data’ has and needs
no antecedent basis, but is instead a new element.” (Id., at 15.)
Defendant responds, as to “processing the data,” that it is “not enough that a juror may
understand the word ‘processing’ when used in everyday conversation; the juror still must be
instructed on the meaning of ‘processing’ within the parlance of the patent and the patent’s subject
matter.” (Dkt. No. 130, at 15.) Defendant argues that “[w]ithin the context of the ’188 patent and
the patent’s subject matter, ‘processing the data’ requires modifying the input data recited in the
preceding claim elements—and absent any disagreement with that construction from Nagravision,
the jury should be so instructed.” (Id.)
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As to “processed data,” Defendant argues that “[t]he fact that ‘processed data’ is a new
claim limitation does not disconnect ‘processed data’ from the processing that formed it.” (Id.,
Plaintiffs reply that Defendant “does nothing more than baldy assert that ‘processing’
should mean ‘modifying.’ . . . Comcast’s say-so is not sufficient to support that construction.”
(Dkt. No. 136, at 6.) Instead, Plaintiffs argue, “[t]he term ‘processing’ is a plain English term that
a lay jury can understand, and nothing in the specification or the prosecution history of the ’188
Patent suggests that the inventors deviated from the ordinary meaning of the term.” (Id., at 7.)
As to “processed data,” Plaintiffs reply that “[t]o the extent Comcast’s proposed
construction suggests that ‘processed data’ consists of modified ‘input data’—and nothing else—
it is wrong.” (Id.) In other words, Plaintiffs argue, “[w]hile ‘processed data’ can include and be
derived from ‘input data,’ there is no reason to limit ‘processed data’ exclusively to a modified
form of ‘input data.’” (Id., at 8.)
Claim 9 of the ’188 Patent recites (emphasis added; square-bracketed lettering added in
accordance with Plaintiffs’ briefing):
9. A method for processing data on a secure system-on-chip, the system-on-chip
comprising a central processing unit, an input channel, an output channel, an
encryption/decryption engine and a memory, the method comprising the steps of:
[(a)] passing input data received via the input channel through a virtual
encryption module to the encryption/decryption engine to add a first internal
encryption layer to the input data;
[(b)] storing the input data with the first internal encryption layer in the
[(c)] retrieving the input data with the first internal encryption layer from
[(d)] passing the input data retrieved from the memory through a virtual
encryption module to the encryption/decryption engine to remove the first internal
encryption layer from the input data retrieved from the memory;
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[(e)] processing the data after the first internal encryption layer has been
removed to form processed data; and
[(f)] outputting the processed data without the first internal encryption layer
via the output channel wherein data encrypted with the internal encryption layer is
never present outside the system-on-chip.
Plaintiffs’ expert, Dr. Avi Rubin, frames the dispute as follows:
While I agree that “the data” in “processing the data” refers to the input data, I
disagree that the “data” in “processed data” refers to the same input data that is
recited in the preceding claim elements.
(Dkt. No. 125, Ex. 4, Aug. 23, 2017 Rubin Decl., at ¶ 36.)
The parties thus appear to be in agreement that “processing the data” refers to processing
the “input data” recited in the preceding claim elements.
As to Defendant’s proposed construction, Defendant has not sufficiently supported its
proposal of replacing “processing” with “modifying.” Defendant’s reliance upon Plaintiffs’
expert’s testimony is unpersuasive as to Defendant’s contention that “processing” requires
construction. (See Dkt. No. 130, Ex. 6, Sept. 1, 2017 Rubin dep. at 159:8–17 (“Q. . . . Can the step
of processing the data in Claim 9 leave the input data completely unchanged? [Objection] THE
WITNESS: I don’t think that is consistent with the patent, but I would want to spend more time
looking at the specification to give a definitive answer to that.”).)
The Court therefore hereby expressly rejects Defendant’s proposal of “modifying” as
unnecessary and as tending to confuse rather than clarify the scope of the claim. See Phillips, 415
F.3d at 1314 (“In some cases, the ordinary meaning of claim language as understood by a person
of skill in the art may be readily apparent even to lay judges, and claim construction in such cases
involves little more than the application of the widely accepted meaning of commonly understood
Any remaining dispute as to whether “processing” is present in the accused
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instrumentalities relates to factual issues rather than to any legal question for claim construction.
See Acumed, 483 F.3d at 806; PPG, 156 F.3d at 1355; Eon, 815 F.3d at 1318–19.
As to “processed data,” the claim limitation itself recites “processing the data after the first
internal encryption layer has been removed to form processed data,” which thus explains that
“processed data” is formed as a result of processing the “input data.” See Phillips, 415 F.3d at
1314 (“the claims themselves provide substantial guidance as to the meaning of particular claim
terms,” and “the context of the surrounding words of the claim also must be considered in
determining the ordinary and customary meaning of those terms”) (citation and internal quotation
marks omitted). This is not inconsistent with Plaintiffs’ position that, because “processed data” is
not introduced by a definite article (“the”), “[t]his ‘processed data’ that is formed as a result of
processing the data is therefore an entirely new thing.” (Dkt. No. 125, at 15.)
Plaintiffs have further argued, however, that because Claim 9 is a so-called “comprising”
claim (because the transitional phrase is “the method comprising the steps of”), the claim is “openended” and therefore the term “processed data” is open-ended. (See Dkt. No. 125, at 16; see also
Dkt. No. 136, at 8–9.) Plaintiffs rely upon the general principle that “[o]pen claim language, such
as the word ‘comprising’ as a transition from the preamble to the body of a claim, signals that the
entire claim is presumptively open-ended.” MagSil Corp. v. Hitachi Global Storage Techs., Inc.,
687 F.3d 1377, 1383 (Fed. Cir. 2012) (citation and internal quotation marks omitted).
Plaintiffs’ argument fails because “[a]lthough the transitional term ‘comprising’ indicates
that the claim is open-ended, the term does not render each limitation or phrase within the claim
open-ended.” In re Varma, 816 F.3d 1352, 1362 (Fed. Cir. 2016) (citations omitted). Varma
further explained as follows when overturning an interpretation of the term “a statistical analysis
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request corresponding to two or more selected investments” as being covered by a system that
required two requests in order to accomplish an analysis of two or more investments:
“Comprising” means that the claim can be met by a system that contains features
over and above those specifically required by the claim element, but only if the
system still satisfies the specific claim-element requirements: the claim does not
cover systems whose unclaimed features make the claim elements no longer
satisfied. Thus, here, a claim-covered system may receive more than one request,
but it must in particular be adapted to receive “a request” that itself corresponds to
two or more selected investments.
816 F.3d at 1362. Thus, even though Claim 9 is an open-ended “comprising” claim, it does not
follow that “processed data” is an open-ended limitation. To whatever extent Plaintiffs’ “openended” argument attempts to read out the limitation that “processed data” is formed by processing
the input data, the Court hereby expressly rejects Plaintiffs’ argument. Nonetheless, so long as the
recited limitations are satisfied, additional processing is not necessarily precluded. See, e.g.,
Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (“‘Comprising’ is a term of
art used in claim language which means that the named elements are essential, but other elements
may be added and still form a construct within the scope of the claim.”).
The Court accordingly hereby construes the disputed terms as set forth in the following
“processing the data”
“processing the ‘input data’ recited in the
preceding claim elements”
“data resulting from the processing of the
The Court adopts the constructions set forth in this opinion for the disputed terms of the
patent-in-suit, and in reaching conclusions the Court has considered and relied upon extrinsic
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evidence. The Court’s constructions thus include subsidiary findings of fact based upon the
extrinsic evidence presented by the parties in these claim construction proceedings. See Teva, 135
S. Ct. at 841.
The parties are ordered that they may not refer, directly or indirectly, to each other’s claim
construction positions in the presence of the jury. Likewise, the parties are ordered to refrain from
mentioning any portion of this opinion, other than the actual definitions adopted by the Court, in
the presence of the jury. Any reference to claim construction proceedings is limited to informing
the jury of the definitions adopted by the Court.
Within thirty (30) days of the issuance of this Memorandum Opinion and Order, the parties
are hereby ORDERED, in good faith, to mediate this case with the mediator agreed upon by the
parties. As a part of such mediation, each party shall appear by counsel and by at least one
corporate officer possessing sufficient authority and control to unilaterally make binding decisions
for the corporation adequate to address any good faith offer or counteroffer of settlement that might
arise during such mediation. Failure to do so shall be deemed by the Court as a failure to mediate
in good faith and may subject that party to such sanctions as the Court deems appropriate. No
participant shall leave the mediation without the approval of the mediator.
SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 13th day of November, 2017.
UNITED STATES DISTRICT JUDGE
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