Evicam International, Inc. v. Enforcement Video, LLC
Filing
57
MEMORANDUM OPINION AND ORDER. The parties are ordered that they may not refer, directly or indirectly, to each others claim construction positions in the presence of the jury. Likewise, the parties are ordered to refrain from mentioning any portion o f this opinion, other than the actual definitions adopted by the Court, in the presence of the jury. Any reference to claim construction proceedings is limited to informing the jury of the definitions adopted by the Court. Signed by Judge Amos L. Mazzant, III on 11/2/16. (cm, )
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
SHERMAN DIVISION
EVICAM INTERNATIONAL, INC.,
v.
ENFORCEMENT VIDEO, LLC d/b/a
WATCHGUARD VIDEO
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Civil Action No. 4:16-CV-105
Judge Mazzant
MEMORANDUM OPINION AND ORDER
Pending before the Court are Plaintiff Evicam International, Inc.’s Opening Claim
Construction Brief (Dkt. #42), Defendant Enforcement Video, LLC d/b/a Watchguard Video’s
Responsive Claim Construction Brief (Dkt. #43), and Plaintiff’s Reply Claim Construction Brief
(Dkt. #49). Also before the Court are the parties’ August 11, 2016 Joint Claim Construction and
Prehearing Statement (Dkt. #66) and the parties’ October 4, 2016 Joint Claim Construction Chart
(Dkt. #47). The Court held a claim construction hearing on October 14, 2016, to determine the
proper construction of the disputed claim terms in United States Patents Nos. 6,211,907 (“the
’907 Patent”) and 6,950,013 (“the ’013 Patent”).
The Court issues this Claim Construction Memorandum and Order and hereby
incorporates-by-reference the claim construction hearing and transcript as well as the
demonstrative slides presented by the parties during the hearing. For the following reasons, the
Court provides the constructions set forth below.
BACKGROUND
Plaintiff brings suit alleging infringement of United States Patents No. 6,211,907 and
6,950,013 (collectively, the “patents-in-suit”). Plaintiff submits: “The patents at issue relate to
an on-board, secure vehicle-mounted surveillance system, like those used by police officers and
trucking companies.” (Dkt. #42 at p. 1).
LEGAL STANDARDS
Claim construction is a matter of law. Markman v. Westview Instruments, Inc., 52 F.3d
967, 979 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996). The purpose of claim construction is to
resolve the meanings and technical scope of claim terms. U.S. Surgical Corp. v. Ethicon, Inc.,
103 F.3d 1554, 1568 (Fed. Cir. 1997). When the parties dispute the scope of a claim term, “it is
the court’s duty to resolve it.” O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d
1351, 1362 (Fed. Cir. 2008).
“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) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
381 F.3d 1111, 1115 (Fed. Cir. 2004)). The Court examines a patent’s intrinsic evidence to
define the patented invention’s scope. Id. at 1313–14; Bell Atl. Network Servs., Inc. v. Covad
Commc’ns Grp., Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). Intrinsic evidence includes the
claims, the rest of the specification, and the prosecution history. Phillips, 415 F.3d at 1312–13;
Bell Atl. Network Servs., 262 F.3d at 1267. The Court gives claim terms their ordinary and
customary meaning as understood by one of ordinary skill in the art at the time of the invention.
Phillips, 415 F.3d at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir.
2003).
Claim language guides the Court’s construction of claim terms.
Phillips, 415 F.3d
at 1314. “[T]he context in which a term is used in the asserted claim can be highly instructive.”
Id. Other claims, asserted and unasserted, can provide additional instruction because “terms are
2
normally used consistently throughout the patent.” Id. Differences among claims, such as
additional limitations in dependent claims, can provide further guidance. Id.
“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id.
at 1315 (quoting Markman, 52 F.3d at 979). “[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). In the specification, a patentee may define his own terms, give a claim term a different
meaning than it would otherwise possess, or disclaim or disavow some claim scope. Phillips,
415 F.3d at 1316. Although the Court generally presumes terms possess their ordinary meaning,
this presumption can be overcome by statements of clear disclaimer. See Cultor Corp. v. A.E.
Staley Mfg. Co., 224 F.3d 1328, 1331 (Fed. Cir. 2000) (“Claims are not correctly construed to
cover what was expressly disclaimed.”). This presumption does not arise when the patentee acts
as his own lexicographer. Irdeto Access, Inc. v. EchoStar Satellite Corp., 383 F.3d 1295, 1300
(Fed. Cir. 2004).
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, 299 F.3d at 1325. For example, “[a]
claim interpretation that excludes a preferred embodiment from the scope of the claim ‘is rarely,
if ever, correct.’” Globetrotter Software, Inc. v. Elam Comput. Grp. Inc., 362 F.3d 1367, 1381
(Fed. Cir. 2004) (quoting Vitronics, 90 F.3d at 1583). But, “[a]lthough the specification may aid
the court in interpreting the meaning of disputed language in the claims, particular embodiments
and examples appearing in the specification will not generally be read into the claims.” Constant
3
v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988); Phillips, 415 F.3d
at 1323.
The prosecution history is another tool to supply the proper context for claim
construction because a patentee may define a term during prosecution of the patent. See, e.g.,
Home Diagnostics Inc. v. LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“[A] patent
applicant may define a term in prosecuting a patent . . .”). The well-established doctrine of
prosecution disclaimer “preclud[es] patentees from recapturing through claim interpretation
specific meanings disclaimed during prosecution.” Omega Eng’g Inc. v. Raytek Corp., 334 F.3d
1314, 1323 (Fed. Cir. 2003). When a patentee distinguishes a claimed invention over the prior
art, he is “indicating what the claims do not cover” and “by implication surrendering such
protection.” Ekchian v. Home Depot, Inc., 104 F.3d 1299, 1304 (Fed. Cir. 1997). “As a basic
principle of claim interpretation, prosecution disclaimer promotes the public notice function of
the intrinsic evidence and protects the public’s reliance on definitive statements made during
prosecution.” Omega Eng’g, 334 F.3d at 1324. However, the prosecution history must show
that the patentee “clearly and unambiguously ‘disclaimed or disavowed the proposed
interpretation during prosecution to obtain claim allowance.”’ Middleton Inc. v. Minn. Mining
and Mfg. Co. (3M Co.), 311 F.3d 1384, 1388 (Fed. Cir. 2002) (quoting Standard Oil Co. v. Am.
Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985)). Statements will constitute disclaimer of
scope only if they are “clear and unmistakable statements of disavowal.” Cordis Corp. v.
Medtronic AVE, Inc., 339 F.3d 1352, 1358 (Fed. Cir. 2003). “An ambiguous disavowal will not
suffice.” Schindler Elevator Corp. v. Otis Elevator Co., 593 F.3d 1275, 1285 (Fed. Cir. 2010)
(internal quotation marks and citation omitted).
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Although “less significant than the intrinsic record in determining the legally operative
meaning of claim language,” the Court may rely on extrinsic evidence to “shed useful light on
the relevant art.” Phillips, 415 F.3d at 1317 (internal quotation marks and citation omitted).
Technical dictionaries and treatises may help the Court understand the underlying technology
and the manner in which one skilled in the art might use claim terms, but such sources may also
provide overly broad definitions or may not be indicative of how terms are used in the patent. Id.
at 1318. Similarly, expert testimony may aid the Court in determining the particular meaning of
a term in the pertinent field, but “conclusory, unsupported assertions by experts as to the
definition of a claim term are not useful.” Id. Generally, extrinsic evidence is “less reliable than
the patent and its prosecution history in determining how to read claim terms.” Id.
ANALYSIS
Agreed Claim Terms
The parties have agreed upon the following constructions:
Term
Agreed Construction
“acomplised [sic]”
“accomplished”
(’907 Patent, Claim 21)
“tamer [sic] proof”
“tamper proof”
(’013 Patent, Claim 52)
“far [sic]”
“for”
(’013 Patent, Claim 53)
“display means for displaying said data”
Structure: “visual display monitor 48 and
equivalents”
(’013 Patent, Claims 6, 23, 58)
Function: “displaying data”
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Structure: “video tape drive, hard disk drive,
CD ROM drive, solid state repository, flash
memory, and equivalents”
“information storage means”
(’013 Patent, Claim 53)
Function: “storing data transferred from the
remote vehicle”
“means for down loading said video signal”
Structure: “interface 36, transceiver
interface 43, and equivalents”
39,
(’907 Patent, Claim 1)
Function: “downloading video signal”
“means for generating vehicle information”
Structure: “system controller 22, system
controller 16, transducers (e.g., 42, 44, 46, 47,
and 48), audio recording device 42, motion
sensors/detectors 46, and equivalents”
(’013 Patent, Claims 4, 21)
Function: “generating vehicle information”
“download” / “downloading”
“transferring from one device to another over a
wired or wireless network”
(’907 Patent, Claim 1; ’013 Patent, Claims 10,
27)
(Dkt. #37, Exhibit A at p. 1; Dkt. #47, Exhibit A at pp. 3–9).
Disputed Claim Terms
A. “An on board secure vehicle mounted surveillance system”
Plaintiff’s Proposed Construction
Defendant’s Proposed Construction
Not limiting.1
plain and ordinary meaning; limiting
(Dkt. #37, Exhibit B at p. 1; Dkt. #47, Exhibit A at p. 10). The parties submit that this term
appears in Claim 1 of the ’907 Patent (Dkt. #37, Exhibit B at p. 1).
1
Defendant previously proposed: “Not limiting and there is no plain and ordinary meaning. Alternatively, if this
clause is deemed to be limiting, it is invalid because it fails to comply with 35 U.S.C. §112, first and second
paragraph.” (Dkt. #37, Exhibit B at p. 1).
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1. The Parties’ Positions
Plaintiff argues the preamble is limiting because it “recites a fundamental characteristic
of the invention” and “provides an antecedent basis and context for subsequent limitations.”
(Dkt. #42 at pp. 3–4). Plaintiff also argues that “[b]ecause the terms ‘on board’ and ‘vehicle
mounted’ appear throughout the intrinsic record and are easily understood by persons skilled in
the art and lay jurors alike, the terms are not indefinite” (Dkt. #42 at p. 5).
Defendant responds that because this preamble term is merely a descriptive name that
does not affect the recited structure, the preamble is not limiting (Dkt. #43 at p. 7).
Plaintiff replies by reiterating that the preamble provides antecedent basis and “sets forth
a fundamental aspect of the invention” (Dkt. #49 at p. 1).
2. Analysis
In general, a preamble limits the invention if it recites essential structure or
steps, or if it is “necessary to give life, meaning, and vitality” to the claim. Pitney
Bowes[, Inc. v. Hewlett-Packard Co.], 182 F.3d [1298,] 1305 [(Fed. Cir. 1999)].
Conversely, a preamble is not limiting “where a patentee defines a structurally
complete invention in the claim body and uses the preamble only to state a
purpose or intended use for the invention.” Rowe v. Dror, 112 F.3d 473, 478,
42 USPQ2d 1550, 1553 (Fed. Cir. 1997).
Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002); see, e.g.,
Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (“When limitations in
the body of the claim rely upon and derive antecedent basis from the preamble, then the
preamble may act as a necessary component of the claimed invention.”).
Claim 1 of the ’907 Patent recites:
1. An on board secure vehicle mounted surveillance system comprising:
a) at least one video camera monitoring the interior and the exterior of the
vehicle and for generating video signals of an incident proximate the vehicle;
b) a recording device for capturing and securely storing said video signals
having a coded access;
c) a code for providing coded access to said recording device;
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d) means for down loading said video signal from said coded access
recording device.
’907 Patent at 10:51–61 (emphasis added).
On one hand, even when a preamble provides antecedent basis for a limitation recited in
the body of the claim, an accompanying statement of purpose or use is not necessarily limiting.
See TomTom Inc. v. Adolph, 790 F.3d 1315, 1323 (Fed. Cir. 2015) (“That [a] phrase in the
preamble . . . provides a necessary structure for [the] claim . . . does not necessarily convert the
entire preamble into a limitation, particularly one that only states the intended use of the
invention.”); see also Marrin v. Griffin, 599 F.3d 1290, 1294–95 (Fed. Cir. 2010) (“[T]he mere
fact that a structural term in the preamble is part of the claim does not mean that the preamble’s
statement of purpose or other description is also part of the claim.”).
On the other hand, the disputed phrase provides additional detail regarding the “vehicle”
that is then recited as “the vehicle” in the body of the claim. See Bell Commc’ns Research, Inc.
v. Vitalink Commc’ns Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (“[W]hen the claim drafter
chooses to use both the preamble and the body to define the subject matter of the claimed
invention, the invention so defined, and not some other, is the one the patent protects.”); see also
Proveris Sci. Corp. v. Innovasystems, Inc., 739 F.3d 1367, 1373 (Fed. Cir. 2014) (emphasis
added) (“The phrase ‘the image data’ clearly derives antecedent basis from the ‘image data’ that
is defined in greater detail in the preamble as being ‘representative of at least one sequential set
of images of a spray plume.’”). Also, the body of the claim recites “securely storing” video
signals, which aligns with the preamble’s introduction of the word “secure.” Further, consistent
usage of “on-board” and “vehicle mounted” in the specification, such as in the Title, Abstract,
Background of the Invention, and disclosures of preferred embodiments, support finding the
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preamble limiting. See, e.g., Poly-Am., L.P. v. GSE Lining Tech., Inc., 383 F.3d 1303, 1310
(Fed. Cir. 2004).
Finally, Defendant argues that finding the preamble limiting would render the limitation
in Claim 1(a) superfluous. However, this is far from clear because presumably the interior and
exterior of a vehicle, as well as events proximate the vehicle, could be monitored by a nearby
camera rather than necessarily an on-board camera.
Based on all of the foregoing, the Court finds that the preamble is limiting. No further
construction is necessary because the parties have presented no dispute as to construction of the
preamble if found limiting.
B. “vehicle incident recording system”
Plaintiff’s Proposed Construction
Defendant’s Proposed Construction
limiting: on board secure vehicle mounted Not limiting and there is no plain and ordinary
surveillance system
meaning.
Alternatively, if this clause is
deemed to be limiting, it is invalid because it
fails to comply with 35 U.S.C. § 112, first and
second paragraph.
(Dkt. #37, Exhibit B at p. 3; Dkt. #47, Exhibit A at p. 11). The parties submit that this term
appears in Claims 1, 18, and 52 of the ’013 Patent (Dkt. #37, Exhibit B at p. 1).
1. The Parties’ Positions
Plaintiff argues that the preambles containing this term are limiting because “they recite
structure and provide antecedent basis for the limitations ‘said remote vehicle incident recording
system’ and ‘said remote vehicle’” (Dkt. #42 at p. 5). Plaintiff concludes that “[t]he ’013 Patent
makes clear that the system is vehicle mounted. Thus, [the] Court should reject [Defendant’s]
indefiniteness argument, construe the phrase as limiting, and adopt [Plaintiff’s] proposed
construction.” (Dkt. #42 at p. 6).
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Defendant asserts the preambles are not limiting because the disputed preamble term is
merely descriptive and the claim bodies completely set forth the invention (Dkt. #43 at p. 8).
Plaintiff replies that the preamble provides antecedent basis and recites a vehicular
system, concluding “the Court should construe the preamble as limiting the claims to ‘an on
board vehicle mounted surveillance system’” (Dkt. #49 at p. 1).
2. Analysis
Legal principles regarding preambles are set forth above regarding the “on board secure
vehicle mounted surveillance system” term.
Claim 1 of the ’013 Patent, for example, recites:
1. A system for producing an integrated database of data generated from a remote
vehicle incident recording system comprising:
a) at least one video camera for generating video signals of the incident
proximate the vehicle;
b) a recording device for capturing said video signals as data;
c) an interface permitting input of an authorization code for accessing said
data captured by said recording device, the captured data being inaccessible
without the authorization code thereby securely maintaining the captured data as
evidence of the incident;
d) an information datalink for accessing data captured by said recording
device;
e) a transfer device coupled at least indirectly to said information datalink,
the transfer device adapted to securely receive data from said remote vehicle
incident recording system; and,
f) means for generating an integrated, indexed database of data from said
remote vehicle incident recording system wherein said means is coupled at least
indirectly to said transfer device.
’013 Patent at 13:34–55 (emphasis added).
Because “vehicle” and “incident” (as well as “remote vehicle incident recording system”)
in the preamble provide antecedent basis for “the incident” and “the vehicle” (as well as “said
remote vehicle incident recording system”) in the body of the claim, the entire phrase “remote
vehicle incident recording system” in the preamble is limiting. See Proveris, 739 F.3d at 1373
10
(emphasis added) (“The phrase ‘the image data’ clearly derives antecedent basis from the ‘image
data’ that is defined in greater detail in the preamble as being ‘representative of at least one
sequential set of images of a spray plume.’”). The prosecution history cited by Defendant does
not compel otherwise. See Dkt. #42, Exhibit 12 at 11 (EVIC_000636).
By contrast, the phrase “producing an integrated database of data generated” does not
provide antecedent basis, and the body of the claim separately recites “generating an integrated,
indexed database of data.” Claim 18 of the ’013 Patent is similar in these regards. The
preambles of Claims 1 and 18 of the ’013 Patent are therefore limiting but only as to the phrase
“remote vehicle incident recording system.”
As to the proper construction of “remote vehicle incident recording system,” Plaintiff has
not demonstrated that this term should be given the same meaning as the “on board secure
vehicle mounted surveillance system” in the preamble of Claim 1 of the ’907 Patent, which is
addressed above. The Court expressly rejects Plaintiff’s proposed construction. No further
construction is necessary. Finally, because Defendant’s indefiniteness arguments are based on
Plaintiff’s proposed construction, which the Court is rejecting, the Court also expressly rejects
Defendant’s indefiniteness arguments.
Claim 52 of the ’013 Patent recites:
52. A device for permanent, secure tamper proof storage of vehicle information
from a vehicle incident recording system, the device comprising:
a) at least one interface for accessing data from a remote vehicle incident
recording system;
b) an information datalink coupled to the at least one interface for
receiving data from the remote vehicle incident recording system;
c) a transfer device coupled at least indirectly to the information datalink,
the transfer device adapted to securely receive data from the remote vehicle
incident recording system and index said data for storage; and
d) a secure, tam[p]er proof storage facility, separate from said transfer
device, but in secure communication with said transfer device, for permanently
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storing an indexed database of integrated data transferred from said remote
vehicle to said transfer device.
’013 Patent at 16:41–57 (emphasis added).
Unlike in Claims 1 and 18, which are discussed above, the preamble of Claim 52 does not
provide antecedent basis for any limitations set forth in the body of the claim. Instead, the body
of the claim separately introduces a recording system, an information datalink, data, and
permanent storage. Accordingly, the body of Claim 52 recites a complete invention, and the
preamble is not “necessary to give life, meaning, and vitality to the claim.” Catalina Mktg.,
289 F.3d at 808 (internal quotation marks omitted and citation omitted).
Thus, the Court finds that the preambles of Claims 1 and 18 of the ’013 Patent are
limiting as to the phrase “remote vehicle incident recording system” and that the preamble
of Claim 52 of the ’013 Patent is not limiting.
C. “transceiver”
Plaintiff’s Proposed Construction
Defendant’s Proposed Construction
a device that transmits and receives wireless plain and ordinary meaning
signals2
(Dkt. #37, Exhibit B at p. 1; Dkt. #42 at p. 7; Dkt. #47, Exhibit A at p. 13). The parties submit
that this term appears in Claims 21–22, 24, and 43–44 of the ’907 Patent (Dkt. #37, Exhibit B at
p. 1).
2
Plaintiff previously proposed: “device that can transmit and receive wireless signals.” (Dkt. #37, Exhibit B at p.
1).
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1. The Parties’ Positions
Plaintiff argues that “[i]n the context of the patents, a wired transceiver makes no sense,
especially because the Asserted Patents do not disclose any ‘means for downloading’ using a
transceiver other than wirelessly” (Dkt. #42 at p. 8 (footnote omitted)).
Defendant responds that neither the specification nor any dictionary or treatise limits the
meaning of “transceiver” to only wireless communications (Dkt. #43 at p. 10).
Plaintiff replies: “The term transceiver appears only in dependent [C]laims 21–24 of the
’907 Patent relating to the ‘means for downloading’ recited in claim 1. In that context, the
transceiver must be wireless because the claims are restricted to the structure disclosed in the
specification and equivalents, and all the transceivers described in the specification download
information wirelessly.” (Dkt. #49 at p. 2 (footnotes omitted)).
2. Analysis
Plaintiff has not identified any intrinsic definition or disclaimer that would warrant
limiting the term “transceiver” to wireless communication. The disclosures cited by Plaintiff are
unavailing in this regard. See ’907 Patent at 4:26–31, 4:47–55, 7:7–11, 7:43–48, 8:14–18, 8:66–
9:4, 9:9–14.
These disclosures of wireless communications relate to specific features of
preferred embodiments rather than to the meaning of “transceiver” or to the claimed invention as
a whole.
The specification refers to information being retrieved by authorities “remotely and/or at
the scene of a vehicle theft or vandalism.” Id. at 7:29–30. Although the phrase “at the scene”
does not preclude using wireless communications, this disclosure is nonetheless consistent with
the possibility of using wired communications because information retrieval is not necessarily
“remote.” Further, an extrinsic technical dictionary definition submitted by Plaintiff states that
13
“transceivers” are used on local area networks (“LANs”), and this definition does not indicate
that the LAN must be a wireless LAN rather than a wired LAN (Dkt. #42, Exhibit D at 527
(EVIC_006827) (defining “transceiver” as a “device that can both transmit and receive signals.
On LANs (local area networks), a transceiver is the device that connects a computer to the
network and that converts signals to and from parallel and serial form.”)).
Finally, at the claim construction hearing, Plaintiff emphasized dependent Claims 22, 24,
and 25 of the ’907 Patent. In particular, dependent Claim 22 recites: “The system of claim 21
wherein said transceiver down loads said video signal in real time.” ’907 Patent at 11:51–52.
Plaintiff argued that “real time” communication must be wireless. However, assuming for the
sake of argument this is true, dependent claims add limitations to the claim from which they
depend. To whatever extent “real time” requires wireless communication, any such requirement
is a limitation of the dependent claim and is not necessarily a limitation of the independent claim.
The Court therefore expressly rejects Plaintiff’s proposed construction.
No further
construction is necessary. See U.S. Surgical, 103 F.3d at 1568 (“Claim construction is a matter
of resolution of disputed meanings and technical scope, to clarify and when necessary to explain
what the patentee covered by the claims, for use in the determination of infringement. It is not
an obligatory exercise in redundancy.”); see also O2 Micro, 521 F.3d at 1362 (“[D]istrict courts
are not (and should not be) required to construe every limitation present in a patent’s asserted
claims.”); Summit 6, LLC v. Samsung Elecs. Co., Ltd., 802 F.3d 1283, 1291 (Fed. Cir. 2015).
The Court accordingly construes “transceiver” to have its plain meaning.
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D. “access code” / “authorization code”
Plaintiff’s Proposed Construction
plain and ordinary meaning
Defendant’s Proposed Construction
A code that (1) identifies a particular
authorized person and (2) must be entered to
view, download, or alter data already stored on
a device (the data is inaccessible without entry
of the access code); provided, however, an
(3) access code is not used to activate or
operate a device or system and (4) an access
code is not a decryption key.
(Dkt. #37, Exhibit B at p. 4; Dkt. #47, Exhibit A at p. 14). The parties submit that these terms
appear in Claim 26 of the ’907 Patent and Claims 1, 18, and 35 of the ’013 Patent (Dkt. #37,
Exhibit B at p. 4).
1. The Parties’ Positions
Plaintiff argues that “[n]either the claims nor the specification require that the term
‘access code’ be tied to particular functions; accordingly, the Court should adopt the plain
meaning” (Dkt. #42 at p. 8). Plaintiff also argues that Defendant’s proposed construction
improperly imports limitations in the absence of any definition or disavowal (Dkt. #42 at pp. 9–
11).
Defendant responds that both of the patents-in-suit explain that access codes are used to
prevent unauthorized viewing, downloading, or altering of data (Dkt. #43 at pp. 11–12).
Defendant also argues that intrinsic evidence regarding evidentiary “chain of title” demonstrates
that an access code must identify a specific person (Dkt. #43 at pp. 12–13). Further, Defendant
urges the patentee explained during prosecution that the “access code” was not a login or a
password for activating a system (Dkt. #43 at p. 14). Finally, Defendant argues that during
prosecution the patentee argued that an “access code” was not a decryption key (Dkt. #43 at p.
15).
15
Plaintiff replies that Defendant’s proposal “renders surrounding claim language
superfluous in some claims and imports a limitation into other claims where it does not belong”
(Dkt. #49 at p. 3).
Plaintiff also argues that Defendant’s proposal “excludes preferred
embodiments that permit viewing and downloading of stored data without entry of a code
identifying a particular authorized person—such as automated computer-to-computer downloads
in real time, on a schedule, or upon occurrence of a predetermined event” (Dkt. #49 at p. 3).
2. Analysis
Surrounding claim language sufficiently explains the meaning of the disputed terms. For
example, Claim 1 of the ’013 Patent recites, in relevant part, “[A]n interface permitting input of
an authorization code for accessing said data captured by said recording device, the captured
data being inaccessible without the authorization code thereby securely maintaining the captured
data as evidence of the incident . . . .” ’013 Patent at 13:40–45.
As to whether an “access code” or “authorization code” must identify a specific person,
the specification refers to restricting access to a group of people, namely “law enforcement
and/or other authorized persons.” ’907 Patent at 3:25–26. Claim 26 of the ’907 Patent recites
that the videos are stored “on a secure large capacity, code accessible device,” which is accessed
“by means of the access code.” Such access to a particular device could be analogous to using a
physical key (or perhaps entering a number key combination) to open a door or a vault, wherein
use of a particular key is not necessarily person-specific. The specification contains no clear
indication that “access” or “authorization” must be associated with a specific person.
Further, the prosecution history cited by Defendant contains no definitive statements in
this regard as to the disputed terms. See Dkt. #43, Exhibit 6 at 16 (WatchGuard_PA-002644).
Although the patentee stated “the code is used to access the information and to authenticate the
16
receiving party,” a reasonable interpretation of this prosecution history is permission must be
authenticated, not necessarily identity (Dkt. #43, Exhibit 6, at 15 (WatchGuard_PA-002643);
Dkt. #43, Exhibit 7 at 11 (WatchGuard_PA-002496)). See Omega Eng’g, 334 F.3d at 1324
(emphasis added) (“As a basic principle of claim interpretation, prosecution disclaimer promotes
the public notice function of the intrinsic evidence and protects the public’s reliance on definitive
statements made during prosecution.”); see also Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d
1327, 1332 (Fed. Cir. 2004) (“Because the statements in the prosecution history are subject to
multiple reasonable interpretations, they do not constitute a clear and unmistakable departure
from the ordinary meaning of the term . . . .”). Even though the specification refers to “chain of
title,” any legal significance that might be attributed to that term is not relevant in the context of
the patents-in-suit, particularly because “chain of title” appears to be an erroneous reference to
chain of custody. See ’907 Patent at 4:21–26; ’013 Patent at 1:49–52; id. at 6:37-40 (using chain
of obtained evidence similarly).
As to Defendant’s proposal of “view, download, or alter,” this proposed limitation is
unnecessary in light of (and perhaps inconsistent with) surrounding claim language that
explicitly identifies the activity with which the “access code” and “authorization code” are
associated, namely access.
Likewise, Defendant has not adequately justified its proposed
parenthetical that “the data is inaccessible without entry of the access code” (Dkt. #47, Exhibit A
at p. 14).
As to Defendant’s proposal that “an access code is not used to activate or operate a
device,” during prosecution the patentee distinguished prior art as preventing unauthorized
activation
rather
than
unauthorized
access.
See
Dkt.
#43,
Exhibit
18
at
5
(WatchGuard_PA002468) (“Bellman teaches unauthorized activation of the system, whereas
17
Applicant claims prevention of unauthorized access to the recorded information-two entirely
different concepts.”)).
Assuming Defendant has demonstrated that an access code must be different from
something that merely activates a system, Defendant has not shown that an access code cannot
also be used to activate a system. Likewise, Defendant has not demonstrated that an access code
cannot also be used to decrypt data. The Court therefore rejects Defendant’s proposal to exclude
such functionality.
The Court thus expressly rejects Defendant’s proposed construction.
No further
construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521 F.3d
at 1362; Summit 6, 802 F.3d at 1291.
Accordingly, the Court construes “access code” and “authorization code” to have their
plain meaning.
E. “code accessible device” / “coded access recording device”
Plaintiff’s Proposed Construction
plain and ordinary meaning
Defendant’s Proposed Construction
A device that requires entry of an access code
to access data stored on the device.3
(Dkt. #37, Exhibit B at p. 12; Dkt. #43 at p. 15; Dkt. #47, Exhibit A at p. 17). The parties submit
that these terms appear in Claims 1, 24, 26, and 43–44 of the ’907 Patent (Dkt. #37, Exhibit B at
p. 12).
1. The Parties’ Positions
Plaintiff argues: “As is clear from the claim language, the ‘code accessible device’ is a
device that may be accessed with an access code. This phrase requires no further construction.”
3
Defendant previously proposed: “A device that has been adapted to require entry of an access code to access data
stored on the device.” (Dkt. #37, Exhibit B at p. 12 (emphasis added)).
18
(Dkt. #42 at p. 10). Plaintiff also argues that “[Defendant’s] construction rearranges the words of
the term and imposes new functional limitations on a structural claim element” (Dkt. #42 at p. 10
(footnote omitted)).
Defendant responds that there is no disclosure to support Plaintiff’s suggestion that a
“code accessible device” may sometimes not require an access code (Dkt. #43 at pp. 15–16).
Plaintiff replies that Defendant’s proposal “adds nothing to the plain language” and
“improperly renders surrounding claim language superfluous” (Dkt. #49 at p. 5).
2. Analysis
The independent claims here at issue are Claims 1 and 26 of the ’907 Patent. Claim 1(c)
recites “a code for providing coded access to said recording device.” ’907 Patent at 10:58–59.
Claim 26 further recites “accessing the stored video signal by means of an access code.” Id. at
12:6–7. Defendant’s proposed construction is redundant and unnecessary.
The Court therefore expressly rejects Defendant’s proposed construction. No further
construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521 F.3d
at 1362; Summit 6, 802 F.3d at 1291.
The Court accordingly construes “code accessible device” and “coded access recording
device” to have their plain meaning.
F. “video signals having coded access”
Plaintiff’s Proposed Construction
Defendant’s Proposed Construction
plain and ordinary meaning
video signals that are encrypted and stored on a
code accessible device
Alternatively:
“video signals stored on a code accessible
device”
19
(Dkt. #37, Exhibit B at p. 14; Dkt. #42 at p. 13; Dkt. #47, Exhibit A at p. 18). The parties submit
that this term appears in Claim 1 of the ’907 Patent (Dkt. #37, Exhibit B at p. 14).
1. The Parties’ Positions
Plaintiff argues that “[r]eading the claim language in light of the specification, the
recording device has coded access—not the video signals,” and “[e]ncryption is only one
preferred type of encoding that may be used” (Dkt. #42 at p. 12 (footnotes omitted)).
Defendant responds that the only disclosed manner of securely storing video signals is
encryption. (Dkt. #43 at p. 16). Defendant likewise submits that there is no disclosure of storing
video signals anywhere other than on a code accessible device (Dkt. #43 at p. 17).
Plaintiff replies by reiterating its opening arguments (Dkt. #49 at p. 5).
2. Analysis
Claim 1 of the ’907 Patent recites:
1. An on board secure vehicle mounted surveillance system comprising:
a) at least one video camera monitoring the interior and the exterior of the
vehicle and for generating video signals of an incident proximate the vehicle;
b) a recording device for capturing and securely storing said video signals
having a coded access;
c) a code for providing coded access to said recording device;
d) means for down loading said video signal from said coded access
recording device.
’907 Patent at 10:51–61 (emphasis added).
Read in context, “coded access” in the disputed term refers to the manner that video
signals are stored rather than the video signals themselves. Of particular note, Claim 1(d) refers
to “said video signal from said coded access recording device” rather than coded video signals.
The Court therefore rejects Defendant’s proposal that the video signals must be encrypted. To
the extent that the specification discloses encrypted video signals (see, for example,’907 Patent
at 4:18–21, 7:25), such encryption is a specific feature of particular disclosed embodiments that
20
should not be imported into the claims. See Constant, 848 F.2d at 1571; see also Phillips, 415
F.3d at 1323.
The Court expressly rejects Defendant’s proposal that the video signals are “encrypted”
and adopts the substantial agreement between the parties, evidenced by comparing Plaintiff’s
alternative proposal with the remainder of Defendant’s proposed construction.
The Court therefore construes “video signals having coded access” to mean “video
signals stored on a code accessible device.”
G. “transfer device”
Plaintiff’s Proposed Construction
Defendant’s Proposed Construction
plain and ordinary meaning
A device used for gathering data comprising
(1) a portable computer system having
OR
information input means for entering
commands and information used in accessing
a device capable of accessing, receiving, or and communicating with a remote recording
downloading information
system, (2) a transceiver for receiving,
downloading, and transmitting information
from the remote recording system; (3) a
temporary
information
storage
and
compression means for storing information
downloaded from a recording system.
(Dkt. #37, Exhibit B at p. 27; Dkt. #47, Exhibit A at p. 19). The parties submit that this term
appears in Claims 1, 18, 35, and 52 of the ’013 Patent (Dkt. #37, Exhibit B at p. 27).
1. The Parties’ Positions
Plaintiff argues that Defendant’s proposal improperly limits this disputed term to a single
disclosed embodiment (Dkt. #42 at p. 14). In particular, Plaintiff argues that Defendant relies
upon disclosures that refer to the “present invention” or the “instant invention,” whereas “other
portions of the intrinsic evidence support a broader construction” (Dkt. #42 at p. 14).
21
Defendant responds that the specification expressly defines the disputed term (Dkt. #43 at
p. 18). Defendant also argues that Plaintiff’s proposal is overbroad because it would encompass
any device that can send or receive information (Dkt. #43 at p. 20).
Plaintiff replies, “The ’013 patent uses the terms ‘transfer device’ and ‘downloading
device’ interchangeably.” (Dkt. #49 at p. 6). Plaintiff urges that Defendant’s proposal to limit
the “transfer device” to a single embodiment improperly excludes the “download device” of
Figures 1 and 2 (Dkt. #49 at p. 6).4
2. Analysis
“Although words in a claim are generally given their ordinary and customary meaning, a
patentee may choose to be his own lexicographer and use terms in a manner other than their
ordinary meaning, as long as the special definition of the term is clearly stated in the patent
specification or file history.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996); accord CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
The specification discloses:
The remote information access and transfer device used to gather data in
accordance with the instant invention, comprises a portable computer system
having information input means for entering commands and information used in
accessing and communicating with a remote recording system; and a transceiver
for receiving, downloading, and transmitting information from a Recording
System. In one embodiment, the device further comprises a visual display for
viewing information downloaded from a Recording System.
The transfer device further comprises temporary information storage and
compressing means for storing information downloaded from a Recording
System.
4
Plaintiff has also cited testimony by named inventor Robert Scaman (Dkt. #49, Exhibit AA at 217:18–218:7 (“A
transfer device and a download device I believe refer to the same thing.”)). Such testimony, however, does not
significantly affect the Court’s analysis in this case. See Howmedica Osteonics Corp. v. Wright Med. Tech., Inc.,
540 F.3d 1337, 1346–47 (Fed. Cir. 2008) (noting that inventor testimony is “limited by the fact that an inventor
understands the invention but may not understand the claims, which are typically drafted by the attorney prosecuting
the patent application”). Likewise, Plaintiff has cited a comment from Defendant’s counsel at Robert Scaman’s
deposition (Dkt. #49, Exhibit AA at 218:7 (“Okay. That was always my understanding too.”)). Plaintiff’s reliance
upon the comment of Defendant’s counsel is unpersuasive because the comment does not rise to the level of a
stipulation.
22
’013 Patent at 7:13–25 (emphasis added).
This disclosure, which refers to “the instant
invention,” does not use reference numerals (so as to refer to a specific illustrated embodiment)
and does not otherwise indicate that it is limited to a particular embodiment. See Verizon Servs.
Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007) (“When a patent thus
describes the features of the ‘present invention’ as a whole, this description limits the scope of
the invention.”). Also, the above-quoted passage expressly states when a particular limitation
applies to merely “one embodiment.”
Plaintiff has cited disclosures of specific embodiments that include some of the features
set forth in the above-disclosed lexicography as well as others, but such disclosures do
undermine the patentee’s explicit definition. See ’013 Patent at 4:26–29, 4:49–52, 8:15–18,
7:25-33, 10:22–25, 10:38–43. Further, Plaintiff has not persuasively shown that the ’013 Patent
uses the terms “transfer device” and “download device” interchangeably. ’013 Patent at 1:31–
35, 4:9–67.
At the claim construction hearing, Plaintiff emphasized Hill-Rom Services, Inc. v. Stryker
Corp., which found the phrase “in accordance with the present invention” referred to a particular
embodiment.
755 F.3d 1367, 1377 (Fed. Cir. 2014).
However, Hill-Rom is readily
distinguishable because the sentence at issue in Hill-Rom began with “In one embodiment of the
invention” and concluded with the “in accordance” phrase. Id.
The Court therefore construes “transfer device” to mean “device used for gathering
data comprising (1) a portable computer system having information input means for
entering commands and information used in accessing and communicating with a remote
recording system, (2) a transceiver for receiving, downloading, and transmitting
23
information from the remote recording system; and (3) a temporary information storage
and compression means for storing information downloaded from a recording system.”
H. “download trigger”
Plaintiff’s Proposed Construction
Not indefinite; plain and ordinary meaning
Defendant’s Proposed Construction
Fails to comply with 35 USC § 112, 1st and
2nd paragraph
Alternatively, a computer program that causes
data to begin downloading.5
(Dkt. #37, Exhibit B at p. 16; Dkt. #43 at p. 24; Dkt. #47, Exhibit A at p. 26). The parties submit
that this term appears in Claims 10–13 and 27–29 of the ’013 Patent (Dkt. #37, Exhibit B at p.
16).
1. The Parties’ Positions
Plaintiff submits that “[t]he ‘download trigger’ initiates downloading” (Dkt. #42 at p. 16).
Defendant responds that the term is indefinite because the claims place no limit on the
nature, type of events, or instructions that may trigger downloading (Dkt. #43 at p. 24).
Plaintiff replies that “the ’013 Patent discloses numerous examples for triggering a
download of data and fully enables the scope of the claims” (Dkt. #49 at pp. 8–9).
At the claim construction hearing, Defendant argued that “download trigger” is used as a
substitute for “means.”
2. Analysis
“[T]he failure to use the word ‘means’ . . . creates a rebuttable presumption . . . that
§ 112, para. 6 does not apply.” Williamson v. Citrix Online LLC, 792 F.3d 1339, 1348 (Fed. Cir.
5
Defendant previously proposed: “Indefinite, not distinctly claimed, not described, and not enabled. Does not
comply with § 112, 1st or 2nd paragraph. Alternatively, a computer program that causes data to begin downloading.
See objections regarding clauses governed by Section 112(6), having inadequate structure.” (Dkt. #37, Exhibit B at
p. 16).
24
2015) (internal quotation marks omitted). “When a claim term lacks the word ‘means,’ the
presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that
the claim term fails to recite sufficiently definite structure or else recites function without
reciting sufficient structure for performing that function.” Id. at 1349 (internal quotation marks
and citation omitted).
In an en banc portion of the decision, Williamson abrogated prior statements that the
absence of the word “means” gives rise to a “strong” presumption against means-plus-function
treatment.
Id. (citation omitted).
Williamson also abrogated prior statements that this
presumption cannot be overcome “without a showing that the limitation essentially is devoid of
anything that can be construed as structure.”
Id. (citation omitted).
As an alternative,
Williamson decided to apply the presumption as it had done prior to Lighting World. Id. (citing
Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004)). In a
subsequent part of the decision not considered en banc, Williamson affirmed the district court’s
finding that the term “distributed learning control module” was a means-plus-function term that
was indefinite due to a lack of corresponding structure, and in doing so Williamson stated that
“‘module’ is a well-known nonce word.” Id. at 1350.
Here, “download trigger” is not a “nonce word” but connotes a class of structures. See
’013 Patent at 6:49–53, 7:44–49, 10:44–60; see also Dkt. #43, Exhibit 13 at 530
(WatchGuard_CC-000012); Dkt. #43, Exhibit 20 at 928 (WatchGuard_CC-000049) (“defining
trigger” as “[a] mechanism that initiates an action when an event occurs such as reaching a
certain time or date or upon receiving some type of input. A trigger generally causes a program
routine to be executed.”).
25
As directed by Williamson, this Court applies long-standing principles articulated prior to
the Lighting World decision. See Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311,
1320 (Fed. Cir. 2004) (stating “when the structure-connoting term ‘circuit’ is coupled with a
description of the circuit’s operation, sufficient structural meaning generally will be conveyed to
persons of ordinary skill in the art, and § 112 ¶ 6 presumptively will not apply”); Apex Inc. v.
Raritan Comput., Inc., 325 F.3d 1364, 1372 (Fed. Cir. 2003) (“While we do not find it necessary
to hold that the term ‘circuit’ by itself always connotes sufficient structure, the term ‘circuit’ with
an appropriate identifier such as ‘interface,’ ‘programming’ and ‘logic,’ certainly identifies some
structural meaning to one of ordinary skill in the art.”); Personalized Media Commc’ns, LLC v.
Int’l Trade Comm’n, 161 F.3d 696, 705 (Fed. Cir. 1998) (“Even though the term ‘detector’ does
not specifically evoke a particular structure, it does convey to one knowledgeable in the art a
variety of structures known as ‘detectors.’ We therefore conclude that the term ‘detector’ is a
sufficiently definite structural term to preclude the application of § 112, ¶ 6.”); Greenberg v.
Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (finding that “detent
mechanism” was not a means-plus-function term because it denotes a type of device with a
generally understood meaning in the mechanical arts)6; Affymetrix, Inc. v. Hyseq, Inc., 132 F.
Supp. 2d 1212, 1232 (N.D. Cal. 2001) (finding “‘computer code’ was not a generic term but
recites structure that is understood by those of skill in the art to be a type of device for
accomplishing the stated functions”).
6
Greenberg, 91 F.3d at 1583 (defining “detent” as “a type of device with a generally understood meaning in the
mechanical arts, even though the definitions are expressed in functional terms”); id. (“It is true that the term ‘detent’
does not call to mind a single well-defined structure, but the same could be said of other commonplace structural
terms such as ‘clamp’ or ‘container.’ What is important is not simply that a ‘detent’ or ‘detent mechanism’ is
defined in terms of what it does, but that the term, as the name for structure, has a reasonably well understood
meaning in the art.”)
26
Finally, “[t]he amount of detail required to be included in claims depends on the
particular invention and the prior art.” Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376,
1385 (Fed. Cir. 2011) (internal quotation marks and citation omitted). Here, the relatively simple
operation of starting a download does not demand any great detail. In sum, Defendant has failed
to rebut the presumption against means-plus-function treatment.
As to Defendant’s remaining indefiniteness arguments, “[b]readth is not indefiniteness.”
Athletic Alts., Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1583 (Fed. Cir. 1996) (quoting In re
Gardner, 427 F.2d 786, 788 (C.C.P.A. 1970)).
Though the disputed term may be broad,
Defendant has not demonstrated that the term is unclear. See ’013 Patent at 6:49–53 (“The
information can be downloaded from the Recording System in a variety of ways, including
instantaneously, at various set intervals, in response to certain events, and/or in response to
remote commands.”); id. at 7:44–49 (“The device is triggered to download and transmit
information from a Recording System in a variety of ways, such as, for example, on a real time
basis, based on preset commands, based upon the occurrence of a predetermined event, and/or in
accordance with transmitted instructions or commands.”); id. at 10:44–60 (“[T]he download
device 10 is activated to retrieve the vehicle information by a command entered via the keyboard
50 or alternatively, as a result of a transmission trigger from a Recording System 51. The
occurrence of a predetermined event or series of events or even the failure of the occurrence of
an event or series of events may trigger the downloading transmission.”).
Defendant also makes two patent validity arguments, asserting lack of enablement and
lack of written description (Dkt. #43 at pp. 25–27). Such arguments are not proper during claim
construction proceedings. See Phillips, 415 F.3d at 1327 (“[W]e have certainly not endorsed a
regime in which validity analysis is a regular component of claim construction.”)
27
The Court therefore expressly rejects Defendant’s indefiniteness argument. No further
construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521 F.3d at
1362; Summit 6, 802 F.3d at 1291.
The Court accordingly construes “download trigger” to have its plain meaning.
I. “integrated, indexed database”
Plaintiff’s Proposed Construction
plain and ordinary meaning
Defendant’s Proposed Construction
A database in which the different kinds of data,
including video, audio, and text is stored.7
Alternative[l]y: a database that stores and
integrates data in a manner that facilitates Alternatively:
“a database in which all the data captured
searching.
from the vehicle surveillance system is
consolidated into a single file”
(Dkt. #37, Exhibit B at p. 20; Dkt. #42 at p. 18; Dkt. #43 at p. 20; Dkt. #47, Exhibit A at p. 23).
The parties submit that this term appears in Claims 1, 16–18, 33–35, and 50–52 of the ’013
Patent (Dkt. #37, Exhibit B at p. 20).
1. The Parties’ Positions
Plaintiff argues that Defendant “attempts to import embodiments from the specification,”
and “[n]o basis exists for requiring the claimed database to integrate each of video, audio, and
text data into a single database” (Dkt. #42 at pp. 18–19).
Defendant responds that “[t]he ’013 Patent teaches away from a distributed database”
(Dkt. #43 at p. 21).
7
Defendant previously proposed: “A single database that stores and integrates different types of data, including
video, audio, and text in a manner that facilitates searching. Alternatively, indefinite, not distinctly claimed, not
described, and not enabled. Does not comply with § 112, 1st or 2nd paragraph.” (Dkt. #37, Exhibit B at p. 20).
28
Plaintiff replies that “although video and audio optionally may be included in the claimed
database, the specification consistently describes the database in broader terms as storing
‘information’ or ‘data’” (Dkt. #49 at p. 7).
At the claim construction hearing, Defendant conceded that the database could contain
only video instead of video, audio, and text. Defendant nonetheless maintained that “integrated”
means “not distributed” and presented the following alternative proposed construction: “a
database in which all the data captured from the vehicle surveillance system is consolidated into
a single file.”
2. Analysis
As a threshold matter, Plaintiff argued at the claim construction hearing that the
“database” could simply be an index, analogous to a library card catalog, and need not itself
contain the actual surveillance data. This argument does not appear in Plaintiff’s briefing (Dkt.
#42 at pp. 18–19; Dkt. #49 at p. 7). Even if considered, Plaintiff did not persuasively support its
oral argument in this regard. The Court therefore expressly rejects Plaintiff’s suggestion that the
“database” could be an index and not contain relevant data.
The technical dictionary definitions of “distributed database” submitted by Defendant do
not demonstrate that “integrated” necessarily requires a single file. See, e.g., Dkt. #43, Exhibit
15). Defendant also has not demonstrated that the ’013 Patent contrasts an “integrated” database
with a “distributed” database. Indeed, Defendant has not identified any disclosure regarding
“distributed” computing or distributed database technology. Plaintiff’s citations of disclosures
regarding “the files” or “the entire file” are unpersuasive. See ’013 Patent at 5:63–67, 11:28–30.
Further, Defendant has not adequately shown how the recital in Claim 69 of an “indexed
29
database” (rather than an “integrated, indexed database”) demonstrates that the word “integrated”
imparts the meaning that Defendant proposes.
The Court therefore expressly rejects Defendant’s proposed construction. No further
construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521 F.3d at
1362; Summit 6, 802 F.3d at 1291.
The Court accordingly construes “integrated, indexed database” to have its plain
meaning.
J. “permanent, secure, tamperproof storage facility . . . for permanently storing an
indexed database”
Plaintiff’s Proposed Construction
Not indefinite; plain and ordinary meaning
Defendant’s Proposed Construction
A database of encrypted information that is
permanently preserved on a device that is
inaccessible without an access code.
Alternatively, indefinite.8
(Dkt. #37, Exhibit B at p. 24; Dkt. #43 at p. 27; Dkt. #47, Exhibit A at p. 28). The parties submit
that this term appears in Claims 18 and 52 of the ’013 Patent (Dkt. #37, Exhibit B at p. 24).
1. The Parties’ Positions
Plaintiff argues that no construction is necessary because “[t]he terms ‘permanent,’
‘secure,’ and ‘tamperproof’ are common and would be sufficiently clear to persons of ordinary
skill in the art” (Dkt. #42 at p. 19). Plaintiff also argues that Defendant’s proposal imports
embodiments from the specification because “encryption is only one way of protecting the
data—the patents also disclose firewalls and access codes,” and “the specification provides
8
Defendant previously proposed: “Indefinite, not distinctly claimed, not described, not enabled. Does not comply
with § 112, 1st or 2nd paragraph. Alternatively, [i]n the event the court provides a construction[:] A database of
encrypted information that is permanently preserved on a device that is physically inaccessible and may only be
accessed electronically using an access code.” (Dkt. #37, Exhibit B at p. 24).
30
examples of physical and electronic inaccessibility (e.g., firewalls, encryption, or access codes)
as distinct embodiments” (Dkt. #42 at p. 20).
Defendant responds that “storage facility” refers to a computer storage device rather than
a physical building (Dkt. #43 at p. 27). Defendant also argues that “secure” and “tamperproof”
are unclear because nothing can be truly “tamperproof” and because the specification sets forth
no standard for measuring whether something is sufficiently “secure” (Dkt. #43 at p. 29).
Nonetheless, Defendant submits that the specification teaches that, at a minimum, encryption is
necessary to prevent tampering (Dkt. #43 at p. 30). Further, Defendant urges that “permanent”
must be given its ordinary meaning of lasting indefinitely, without change (Dkt. #43 at p. 31).
Finally, Defendant argues that an access code is required because preventing unauthorized access
is what purportedly distinguishes the invention from prior art (Dkt. #43 at p. 32).
Plaintiff replies, “The parties agree that the ‘storage facility’ is a computer storage
device, such as a server.” (Dkt. #49 at p. 9). Plaintiff urges that “secure,” “tamper proof,” and
“permanent” are readily understandable in the context of the specification, and “[Defendant’s]
construction is incorrect because it rephrases terms and imports embodiments” (Dkt. #49 at p. 9).
The parties presented no oral argument regarding this term at the claim construction
hearing.
2. Analysis
Defendant has not shown any intrinsic or extrinsic evidence that limits the disputed term
to a particular type of “facility” or a particular type of storage, such as requiring an encryption or
an access code. For example, data could be secured by physical mechanisms or by a firewall
rather than by encryption. See ’013 Patent at 4:3–8, 5:63–65. Although the specification refers
to using encryption (see, for example, ’013 Patent at 7:6–8, 8:3–7), this is a specific feature of
31
disclosed embodiments that should not be imported into the claims. See Constant, 848 F.2d
at 1571; see also Phillips, 415 F.3d at 1323.
Also, Plaintiff submitted a technical dictionary definition to demonstrate the word
“permanent” has a well-known meaning in the relevant art (Dkt. #42, Exhibit F at 398 (defining
“permanent storage” as “[a] recording medium that retains the data recorded on it for long
periods of time without power”)). Thus, no special construction of “permanent” is necessary.
Although Defendant argues that nothing can be truly “tamperproof,” that word is
reasonably understandable in common usage. As a result, the specification sets forth sufficient
context such that the disputed term is not impermissibly “subjective.” See Interval Licensing
LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014).
The Court therefore expressly rejects Defendant’s proposed construction. No further
construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521 F.3d at
1362; Summit 6, 802 F.3d at 1291. The Court also expressly rejects Defendant’s indefiniteness
argument.
The Court accordingly construes “permanent, secure, tamperproof storage facility . . .
for permanently storing an indexed database” to have its plain meaning.
32
K. “crash proof, explosion proof repository”
Plaintiff’s Proposed Construction
Defendant’s Proposed Construction
Not indefinite; plain and ordinary meaning
Fails to comply with 35 USC § 112, 1st and
2nd paragraph9
OR
a repository that is resistant to the damaging
effects of a crash or explosion
Alternatively:
“a repository that is resistant to the
damaging effects of a vehicle crash or
explosion”
(Dkt. #37, Exhibit B at p. 28; Dkt. #42 at p. 22; Dkt. #47, Exhibit A at p. 31). The parties submit
that this term appears in Claims 19 and 41 of the ’907 Patent (Dkt. #37, Exhibit B at p. 28).
1. The Parties’ Positions
Plaintiff argues that the specification refers to the repository in the context of a vehicle,
and therefore “the ‘crash proof, explosion proof repository’ is designed to survive a vehicle crash
or explosion” (Dkt. #42 at p. 21).
Defendant responds that these are not terms of degree, and nothing is truly “crash proof”
or “explosion proof” (Dkt. #43 at p. 33). Alternatively, Defendant argues that even if these are
deemed to be terms of degree, the specification fails to disclose any objective guidelines (Dkt.
#43 at pp. 33–34).
Plaintiff replies by relying upon its opening brief (Dkt. #49 at p. 10).
The parties presented no oral argument regarding this term at the claim construction
hearing.
9
Defendant previously proposed: “Indefinite, not distinctly claimed, not described, and not enabled. Does not
comply with § 112, 1st or 2nd paragraph.” (Dkt. #37, Exhibit B at p. 28).
33
2. Analysis
Although the disputed term does not specify the precise circumstances of a crash or
explosion that must be resisted, the context set forth by the specification is sufficiently clear that
the repository must be reasonably resistant to a foreseeable vehicular crash.
See Biosig
Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374, 1382 (Fed. Cir. 2015) (‘“[T]he degree of
precision necessary for adequate claims is a function of the nature of the subject matter.”’
(quoting Miles Labs., Inc. v. Shandon, Inc., 997 F.2d 870, 875 (Fed. Cir. 1993))).
The
prosecution history is consistent with such a reading. See Dkt. #43, Exhibit K at 7
(EVIC_004481) (arguing that the prior art references did not disclose a device that could
“withstand a crash”).
Defendant’s lack of enablement argument is not proper during claim construction
proceedings. See Phillips, 415 F.3d at 1327 (“[W]e have certainly not endorsed a regime in
which validity analysis is a regular component of claim construction.”)
The Court therefore construes “crash proof, explosion proof repository” to mean
“a repository that is resistant to the damaging effects of a vehicle crash or explosion.”
L. “large capacity”
Plaintiff’s Proposed Construction
Defendant’s Proposed Construction
Not indefinite; plain and ordinary meaning
Alternatively:
“recording device with at least 8.6 GB of
memory”
Indefinite, not distinctly claimed, not
described, not enabled. Does not comply with
§ 112, 1st or 2nd paragraph.10
10
Defendant previously proposed: “Fails to comply with 35 USC § 112, 1st and 2nd Paragraph.” (Dkt. #43 at p.
32).
34
(Dkt. #37, Exhibit B at p. 30; Dkt. #42 at p. 23; Dkt #43 at p. 32; Dkt. #47, Exhibit A at p. 30).
The parties submit that this term appears in Claims 26 and 28 of the ’907 Patent and Claim 35 of
the ’013 Patent (Dkt. #37, Exhibit B at p. 30).
1. The Parties’ Positions
Plaintiff argues that the specification provides an objective standard for measuring “large
capacity” because “a ‘large capacity’ recording device, as used in the ’907 Patent claims and
specification, is a hard drive with at least 8.6 GB of memory” (Dkt. #42 at pp. 22–23).
Defendant responds that “large capacity” is a term of degree, and the specification
contains no objective guidelines (Dkt. #43 at p. 32).
Plaintiff replies by relying upon its opening brief (Dkt. #49 at p. 10).
The parties presented no oral argument regarding this term at the claim construction
hearing.
2. Analysis
The specification discloses:
The video signals generated by the video camera 12 are converted to
digital format and synchronized, as explained below, and stored on hard drive 34
mounted in a sealed vault or repository somewhere on the vehicle (not shown). A
video monitor can be connected to video camera 12 by means of a video online
link 40, to display the scene or incident currently being photographed by the video
camera 12 through a monitor and/or transmit the image to an off vehicle site
through transceiver 39.
The hard disk storage is preferred for large capacity. Any configured hard
disk device can be used for example, a Seagate UDMA 8.6 GB hard drive.
Additionally tape drive storage can be used either as primary or backup. The
storage medium can be analog or digital. For example, an endless tape loop or
other storage medium could be used. Video storage can be VCR type with
endless loop characteristics, re-writeable CD ROM, computer hard drive with
computer compression of video. This allows upgrading as new storage media
types are produced.
The hard drive 34 which has the capacity to store the information for 48
hours or more, records the digitized, encrypted output of the video camera 12.
35
’907 Patent at 7:4–25; see id. at 6:26–29 (“The digitized data is stored on a solid state storage
means, preferably a large capacity hard drive, which prevents data from being overwritten for
very extended periods of time.”).
This disclosure of hard disk storage as being “large capacity” provides a sufficient
objective reference point for a person of ordinary skill in the art to understand the general
contours of “large” in this context. See Biosig, 783 F.3d at 1382 (‘“[T]he degree of precision
necessary for adequate claims is a function of the nature of the subject matter.’” (quoting Miles
Labs., Inc. v. Shandon, Inc., 997 F.2d 870, 875 (Fed. Cir. 1993))).
Defendant urges the Court to construe the disputed term such that “large” has an upper
boundary defined by what would have been “large” at the time of the invention. Plaintiff, by
contrast, proposes that “large” means greater than 8.6 Gigabytes.
Naturally, data storage
technology has evolved since the time of the invention. Defendant alternatively proposes that
the disputed term should be construed to be a hard disk (Dkt. #43 at p. 33 n.112).
Defendant’s proposal of defining an upper boundary, however, runs counter to the
context of the specification, which discloses that the storage should be “large” so as to
accommodate, for example, data representing “48 hours or more.” ’907 Patent at 7:23 (emphasis
added). Defendant has not identified any basis for setting an upper boundary on how large is
“large.” Indeed, the specification provides no indication of some larger category of capacity,
such as “extra large.” Accordingly, the term “large” is sufficiently clear from the context of the
claims as referring to storage capacity that is at least large enough to be useful for storing
surveillance video. Further, Defendant’s proposal for requiring a hard drive is likewise rejected
as improperly importing a specific feature from a particular disclosed embodiment.
Constant, 848 F.2d at 1571; see also Phillips, 415 F.3d at 1323.
36
See
The Court therefore expressly rejects Defendant’s indefiniteness argument and finds no
further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521
F.3d at 1362; Summit 6, 802 F.3d at 1291.
The Court therefore construes “large capacity” to have its plain meaning.
M. “prevent said data from being overwritten for extended periods of time”
Plaintiff’s Proposed Construction
Not indefinite; plain and ordinary meaning
Defendant’s Proposed Construction
Fails to comply with 35 USC § 112, 1st and
2nd Paragraph11
(Dkt. #37, Exhibit B at p. 32; Dkt. #43 at p. 34; Dkt. #47, Exhibit A at p. 32). The parties submit
that this term appears in Claims 3, 20, 37, and 55 of the ’013 Patent (Dkt. #37, Exhibit B at p.
32).
1. The Parties’ Positions
Plaintiff argues that “the patent provides an example” of being able to “store the
information for 48 hours or more” (Dkt. #42 at p. 23 (quoting ’013 Patent at 8:42–48)).
Defendant responds that the specification contains no objective guidelines for
determining whether a period of time is an “extended” period of time (Dkt. #43 at pp. 34–35).
Plaintiff replies by relying upon its opening brief (Dkt. #49 at p. 10).
The parties presented no oral argument regarding this term at the claim construction
hearing.
2. Analysis
“When a word of degree is used[,] the district court must determine whether the patent’s
specification provides some standard for measuring that degree.” Datamize, LLC v. Plumtree
11
Defendant previously proposed: “Indefinite, not distinctly claimed, not described, not enabled. Does not comply
with § 112, 1st or 2nd paragraph.” (Dkt. #37, Exhibit B at p. 32).
37
Software, Inc., 417 F.3d 1342, 1351 (Fed. Cir. 2005) (internal quotation marks and citation
omitted), abrogated on other grounds by Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct.
2120 (2014).
Claim 3 of the ’013 Patent, for example, recites:
3. The device of claim 1 wherein said recording device is adapted to prevent said
data from being overwritten for extended periods of time.
’013 Patent at 13:60–62.
Plaintiff has referred to a hard drive that has capacity to store “48 hours or more” of
output from a video camera. Id. at 8:42–46. This disclosure pertains to the amount of data,
however, rather than the duration of storage. The claims at issue, such as the claim quoted
above, could be interpreted as referring to storage capacity. That is, in a continuously-recording
video system, the age of the oldest data would be equal to the capacity of the storage. For
example, if the storage capacity is 48 hours, then at any given moment the system would be
holding only data from the past 48 hours.
Another plausible interpretation, however, is that once data is stored and recording
ceases, the device could prevent the data from being altered for some period of time. Viewed in
this manner, Plaintiff’s citation of “48 hours or more” is irrelevant. The specification sets forth
no guidance regarding what would be an “extended” period of time for purposes of preserving
data other than perhaps preserving it long enough to be used as evidence in court proceedings.
See, e.g., ’013 Patent at 6:37–40. A period of 48 hours presumably would be insufficient in such
a context.
The lack of objective criteria for evaluating the meaning of “extended” renders the
disputed term indefinite. See Nautilus, 134 S. Ct. at 2129 (“[C]laims, viewed in light of the
specification and prosecution history, [must] inform those skilled in the art about the scope of the
38
invention with reasonable certainty.”); see also Datamize, 417 F.3d at 1350 (“The scope of claim
language cannot depend solely on the unrestrained, subjective opinion of a particular individual
purportedly practicing the invention.”). Also, the existence of multiple reasonable interpretations
regarding what period of time is extended, as discussed above, further supports the Court’s
conclusion that the scope of the claim is not “reasonabl[y] certain[].” Nautilus, 134 S. Ct.
at 2129.
The Court therefore finds that “prevent said data from being overwritten for extended
periods of time” is indefinite.
N. means for generating an integrated, indexed database” / “generating an integrated,
indexed database of said data”
“means for generating an integrated, indexed database” (’013 Patent, Claims 1, 18)
Plaintiff’s Proposed Construction
Defendant’s Proposed Construction
Structure: download device 10, system Indefinite, not distinctly claimed, not
controller 16, secure storage facility 60, secure described, and not enabled. Does not comply
data repository 160, and equivalents
with § 112, 1st or 2nd paragraph.12
Function: generating an integrated, indexed
database
“generating an integrated, indexed database of said data” (’013 Patent, Claim 35)
Plaintiff’s Proposed Construction
Defendant’s Proposed Construction
Not governed by 35 U.S.C. § 112(6)
Indefinite, not distinctly claimed, not
described, and not enabled. Does not comply
No identification of the structures, acts, or with § 112, 1st or 2nd paragraph.
materials required.
(Dkt. #37, Exhibit C at pp. 1–2; Dkt. #43 at p. 36; Dkt. #47, Exhibit A at pp. 34, 36).
12
Defendant previously proposed: “Indefinite, not distinctly claimed, not described, not enabled. Does not comply
with §112, 1st or 2nd paragraph.” (Dkt. #37, Exhibit C at pp. 1–2).
39
1. The Parties’ Positions
The parties agree that the “means for generating . . .” terms in Claims 1 and 18 of the
’013 Patent are means-plus-function terms governed by 35 U.S.C. § 112, ¶ 6. The parties dispute
whether the “generating . . .” term in Claim 35 of the ’013 Patent is a means-plus-function term.
For the “means for generating . . .” terms, Plaintiff argues that the specification discloses
sufficient corresponding structure (Dkt. #42 at p. 25). Plaintiff also argues, “Additionally, to the
extent the disclosed structure is considered general purpose computer hardware, the ’013 Patent
discloses the algorithm for performing the claimed function in at least prose form throughout the
specification.” (Dkt. #42 at pp. 25–26) (footnote omitted)).
Defendant responds that the “generating . . .” term is a means-plus-function term because
the claim uses functional language without reciting any structure (Dkt. #43 at p. 37). Defendant
urges that all of these disputed terms are indefinite because of lack of a corresponding structure
or algorithm (Dkt. #43 at p. 37).
Plaintiff replies that Defendant has failed to address the structure and algorithms
identified by Plaintiff (Dkt. #49 at p. 10). Plaintiff also argues that Defendant has not shown
how 35 U.S.C. § 112, ¶ 6 is applicable to the method step at issue in Claim 35 (Dkt. #49 at p.
10).
The parties presented no oral argument regarding this term at the claim construction
hearing.
2. Analysis
As a threshold matter, “generating an integrated, indexed database of said data” is a
method step in Claim 35 of the ’013 Patent. Defendant has not argued that this term is written in
“step-plus-function” format, so Defendant has not shown how 35 U.S.C. § 112, ¶ 6 could apply.
40
See Masco Corp. v. United States, 303 F.3d 1316, 1327 (Fed. Cir. 2002) (“[W]here a method
claim does not contain the term ‘step[s] for,’ a limitation of that claim cannot be construed as a
step-plus-function limitation without a showing that the limitation contains no act.”). The Court
therefore rejects Defendant’s proposal as to the “generating . . .” step in Claim 35.
As to the “means for generating . . .” terms, the specification discloses:
The interface 18 stores the information on the download device 10 by directly
communicating with the download device’s information storage means 32 via
link 36. The information storage means 32, which has the capacity to store the
information for 48 hours or more, records the encrypted or unencrypted
information accessed by the interface 18.
....
The download device’s information storage means 32 can also communicate with
the transceiver 40 via transmitting link 44 so the information can be transmitted,
via the transceiver 40, to a remote location after it is stored on the download
device’s information storage means 32.
....
Whether remotely or directly downloaded to secure location 52, once the
information is received in secure location 52, it is processed for permanent
storage as an integrated, verified, indexed database in secure storage facility 60.
The data is cataloged, tagged, encrypted, and compressed. In some cases
additional indexes information is layered on the files as previously described.
Transfer is accomplished by secure physical transport for direct data download or
by highly secure, tamperproof electronic interface through super firewalls. The
database entries are able of instantaneous access by means of indexing which
allows authorities to retrieve information without search of the entire file.
Alternatively, the entire file may be searched. Tracking of access and software to
detect time and date of any chan[ge] is used to assure integrity of the originally
recorded data.
....
Once downloaded the information can be verified by use of stored
information onboard vehicle 11, encrypted, indexed and integrated into a secure
database for permanent storage in secure storage facility 60. Access to secure
storage facility 60 is available electronically [by] means of super fire wall 62 or
alternately by means of a secure physical download interface 64.
Turning to FIG. 4, there is shown a system 100 for the integration of the
system information into the indexed permanent database housed in the secure
data repository 160. As shown, numerous links comprise the system 100
information flow network. Both a satellite network and a ground network with
satellite interface are used to facilitate information transmittal in accordance with
the instant embodiment. A satellite network of GPS satellites 156 with links 158
and 154 and a cellular/Internet (WAN/LAN) system 110 with links 105 are
41
available for data transfer to the off-site location 152. The information is verified,
indexed encoded and integrated into the permanent database housed in the secure
data repository 160.
....
In accordance with the instant invention, information down linked to offsite location 152 is verified re-encrypted, indexed and integrated into a secure
database and transferred to secure data repository 160 either electronically
through a super fire wall (not shown) or physically by means of secure
identification download (not shown). Once in place, the data in the database is a
permanent, non-tamperable, information repository for use as evidence regarding
environment, facts and circumstances surrounding the recorded incident. The
information stored and indexed is available to law enforcement, insurance
company and the like through for example, Internet connection 130 or any other
available uplink means such as cellular, fiber optic LAN and/or satellite. The
database can be searched almost instantaneously and is capable of providing a
“chain of title” for evidence contained therein.
’013 Patent at 8:40–46, 9:17–23, 11:19–33, 12:29–35, 13:7–22 (emphasis added); see id. at
8:18–39 (describing the system controller 16); id. at 3:66–4:2 (“The indexing can include record
identification parameters added to the file to facilitate retrieval by authorities.”); id. at 5:67–6:4
(indexing can be based on “numerous parameters” such as identification, date, location, vehicle
information, and others).
These disclosures link two alternative structures to the claimed function: (1) secure
location 52 and secure storage facility 60; or (2) system 100 (which includes secure data
repository 160, among other illustrated components that are “for the integration of the system
information into the indexed permanent database housed in the secure data repository 160.” Id.
at 12:36–48; see also id. at 11:19–33.
The Court accordingly finds that “means for generating an integrated, indexed
database” is a means-plus-function term. The claimed function is “generating an integrated,
indexed database,” and the corresponding structure is “(1) secure location 52 and secure
storage facility 60, and equivalents thereof; or (2) system 100, and equivalents thereof.”
42
The Court further finds that “generating an integrated, indexed database of said data”
is not a means-plus-function term, as discussed above. The Court therefore construes this term
to have its plain meaning.
O. “transfer device adapted to securely receive data from said remote vehicle incident
recording system [and index said data for storage]”
Plaintiff’s Proposed Construction
Defendant’s Proposed Construction
Not governed by 35 U.S.C. § 112(6)
Indefinite, not distinctly claimed, not
described, and not enabled. Does not comply
No identification of the structures, acts, or with § 112, 1st or 2nd paragraph.
materials required
(Dkt. #37, Exhibit C at p. 4). The parties submit that these terms appear in Claims 1, 18, and 52
of the ’013 Patent (Dkt. #37, Exhibit C at p. 4).
Plaintiff argues that the term “transfer device” connotes structure and the “adapted to . . .”
language recites configuration, not function (Dkt. #42 at p. 27).
Defendant responds “that the phrase ‘transfer device adapted to securely receive data
from said remote vehicle incident recording system [and index said data for storage],’ as recited
in [C]laims 1, 18, and 52 of the ‘013 Patent is not governed by §112, ¶6” (Dkt. #43 at p. 1 n.1).
Defendant presented no other argument or discussion as to this term, and this term is not
presented as a disputed term in the parties’ October 4, 2016 Joint Claim Construction Chart. See
Dkt. #47 at Exhibit A.
Therefore, the Court does not address this term further because it is no longer in dispute.
43
P. “wherein said download trigger is adapted to respond to [the occurrence of a
predetermined event] / [transmitted instructions]”
Plaintiff’s Proposed Construction
Not governed by 35 U.S.C. § 112(6)
Defendant’s Proposed Construction
Fails to comply with 35 USC § 112, 1st and
2nd paragraph13
No identification of the structures, acts, or
materials required
(Dkt. #37, Exhibit C at pp. 5–6; Dkt. #43 at p. 38; Dkt. #47, Exhibit A at pp. 37–38). The parties
submit that these terms appear in Claims 10–12, 27–29 of the ’013 Patent (Dkt. #37, Exhibit C at
pp. 5–6).
1. The Parties’ Positions
Plaintiff argues that even if the “download trigger” is a computer program, 35 U.S.C.
§ 112, ¶ 6 still has not been invoked (Dkt. #42 at p. 28).
Defendant responds that these terms are governed by 35 U.S.C. § 112, ¶ 6 because the
phrase “download trigger” is merely a substitute for “means for” (Dkt. #43 at p. 39). Defendant
argues that the specification sets forth no corresponding algorithm and therefore these terms are
indefinite (Dkt. #43 at p. 39).
Plaintiff replies by relying upon its opening brief (Dkt. #49 at p. 10).
2. Analysis
For the same reasons discussed above for to the constituent term “download trigger,”
Defendant has failed to rebut the presumption against means-plus-function treatment for these
non-means terms.
13
Defendant previously proposed: “Indefinite, not distinctly claimed, not described, and not enabled. Does not
comply with § 112, 1st or 2nd paragraph.” (Dkt. #37, Exhibit C at pp. 5–6).
44
The Court therefore construes “wherein said download trigger is adapted to respond
to [the occurrence of a predetermined event] / [transmitted instructions]” to have its plain
meaning.
CONCLUSION
The Court adopts the constructions set forth in this opinion for the disputed terms of the
patents-in-suit. The parties are ordered that they may not refer, directly or indirectly, to each
other’s claim construction positions in the presence of the jury. Likewise, the parties are ordered
.
to refrain from mentioning any portion of this opinion, other than the actual definitions adopted
by the Court, in the presence of the jury. Any reference to claim construction proceedings is
limited to informing the jury of the definitions adopted by the Court.
IT IS SO ORDERED.
SIGNED this 2nd day of November, 2016.
___________________________________
AMOS L. MAZZANT
UNITED STATES DISTRICT JUDGE
45
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