Orthosie Systems, LLC v. Actsoft, Inc.

Filing 58

CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER. Signed by Judge Amos L. Mazzant, III on 10/4/2017. (baf, )

United States District Court
EASTERN DISTRICT OF TEXAS
SHERMAN DIVISION

ORTHOSIE SYSTEMS, LLC,
v.
ACTSOFT, INC.

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Civil Action No. 4:16-CV-873
Judge Mazzant

CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER
Before the Court are Plaintiff Orthosie Systems, LLC’s (“Orthosie’s”) Opening Claim
Construction Brief (Dkt. #48), Defendant Actsoft, Inc.’s (“Actsoft’s”) Responsive Claim
Construction Brief (Dkt. #54), and Plaintiff’s Reply Claim Construction Brief (Dkt. #55). Also
before the Court are the parties’ July 6, 2017 Joint Claim Construction Statement Per P.R. 4-3
(Dkt. #43) and the parties’ September 18, 2017 Joint Claim Construction Statement Per P.R. 45(d) (Dkt. #56). The Court held a claim construction hearing on September 26, 2017, to determine
the proper construction of the disputed claim terms in United States Patent No. 7,430,471 (“the
’471 Patent”).
The Court issues this Claim Construction Memorandum Opinion 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 the ’471 Patent. The ’471 Patent, titled
“Method and System for Monitoring a Vehicle,” issued on September 30, 2008, and bears an
earliest priority date of October 25, 2004. The Abstract of the ’471 Patent states:

A method for monitoring a vehicle includes detecting movement or activation of
the vehicle, transmitting a signal indicating movement or activation of the vehicle,
to a control center, transmitting any received operator identification information to
the control center, and determining whether an operator identification was received
within a time interval of the detected movement or activation of the vehicle.
Defendant submits that Plaintiff has asserted Claims 1, 3, 4, 12, 15, 17, 18, and 26 of the
’471 Patent. (Dkt. #54 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). 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 normally
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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 SciMed Life Sys., Inc. v. Advanced
Cardiovascular Sys., Inc., 242 F.3d 1337, 1343–44 (Fed. Cir. 2001). This presumption does not
arise when the patentee acts as his own lexicographer. See Irdeto Access, Inc. v. EchoStar Satellite
Corp., 383 F.3d 1295, 1301 (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. Elan 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

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v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988); accord 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. Home Diagnostics Inc. v.
LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the specification, a patent
applicant may define a term in prosecuting a patent”). 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). “Indeed, by distinguishing the claimed invention over the prior art, an applicant is
indicating what the claims do not cover.” Spectrum Int’l v. Sterilite Corp., 164 F.3d 1372, 1378–
79 (Fed. Cir. 1988) (quotation omitted). “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. 3M Co., 311 F.3d 1384, 1388 (Fed. Cir. 2002). Statements will constitute
disclaimer of scope only if they are “clear and unmistakable statements of disavowal.” See 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) (citation omitted).
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 (quotation omitted). Technical dictionaries and treatises

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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 submitted the following agreement in their July 6, 2017 Joint Claim
Construction Statement Per P.R. 4-3 (Dkt. #43), which the Court adopts as agreed-upon:
Term

Agreed Construction

“activation of the vehicle”

“opening, operating, turning on, or unlocking
any component of the vehicle”

(Dkt. #43 at p. 1; Dkt. #54 at p. 2; Dkt. #56, Exhibit A at p. 2).
Disputed Claim Terms
A. “received operator identification information” (Claims 1 and 15)
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

“received operator identification information”

“information identifying the operator of a
vehicle, which information is received by a
monitoring system on or in the vehicle”

(Dkt. #43, Exhibit A at p. 1; Dkt. #48 at p. 6; Dkt. #54 at pp. 4, 22; Dkt. #55 at p. 5; Dkt. #56,
Exhibit A at p. 4).

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1. The Parties’ Positions
Plaintiff argues that, based on disclosures in the specification, “[a] proper construction of
‘received operator identification information’ must . . . comprehend both information received by
a system at the vehicle and information received by mechanisms separate or independent of the
vehicle.” (Dkt. #48 at p. 7). Plaintiff also argues that Defendant’s proposal “merely adds passivevoice surplus that muddles – not clarifies – the disputed term.” (Dkt. #48 at p. 7).
Defendant responds that “[i]t is not clear from the term itself, in the context of the claims,
what received the ‘operator identification information’ or where such ‘operator identification
information’ was received.” (Dkt. #54 at p. 4). Defendant argues that its proposal is supported by
the specification as well as by the context in which the disputed term appears in the claims. (Dkt.
#54 at p. 5).
Plaintiff replies that because the claim recites “any” received operator identification
information, “[t]he use of ‘any’ [rather than ‘the’] indicates the possibility of a variety of sources,
as well as a variety of information types – a broader construction than that proposed by the
Defendant.” (Dkt. #55 at p. 6). Plaintiff argues that “[p]roper construction of ‘received operator
identification information’ must . . . comprehend both information received by a system at the
vehicle and information received by mechanisms separate or independent of the vehicle.” (Dkt.
#55 at p. 6).
At the September 26, 2017 hearing, Plaintiff argued that Defendant’s proposal would
improperly exclude the “key check-out” embodiment disclosed in the specification. See ’471
Patent at 4:4–14. Defendant responded that this embodiment, cited by Plaintiff, is not covered by
the claims at issue because whereas this embodiment discloses checking out a key at the control
center, Claims 1 and 15 recite transmitting received operator identification information to the

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control center.

Defendant also argued that this disclosed embodiment is incomprehensible

because, for example, the disclosure contains an unmatched parenthesis.
2. Analysis
Claim 1 of the ’471 Patent recites:
1. A method for monitoring a vehicle, comprising:
detecting movement or activation of the vehicle;
transmitting a signal indicating movement or activation of the vehicle, to a
control center;
transmitting any received operator identification information to the control
center;
determining whether an operator identification was received within a time
interval of the detected movement or activation of the vehicle;
detecting at the vehicle the presence of a landmark; and
transmitting data identifying the landmark and/or a location of the landmark
to the control center.
’471 Patent at 6:18–29 (emphasis added).
The recital of “transmitting any received operator identification information to the control
center” implies that the operator identification information was received somewhere other than the
control center. Defendant’s proposed construction, however, goes much farther by requiring that
the information is “received by a monitoring system on or in the vehicle.”
Defendant has not adequately supported such a narrow construction. On the contrary, the
specification appears to contemplate that operator identification information could be received by
a system that is outside of the vehicle:
In another exemplary embodiment, an operator checks out a key for control systems
of the monitoring system and/or the vehicle in a fashion made known to the control
center (e.g., via the same mechanisms used by the monitoring system on or in the
vehicle to receive or detect identification information of the operator but located
separately and/or operating independently of the vehicle. Thus, when the checked
outkey [sic] is used to access and/or operate the vehicle, operation of the vehicle by
the operator is presumed to be correct and authorized to use the vehicle.
’471 Patent at 4:4–14 (emphasis added).

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As a threshold matter, Defendant argued at the September 26, 2017 hearing that this
disclosure is incomprehensible because of the presence of an unmatched parenthesis. Although
this indeed appears to be a typographical error, a fair reading is that either the apparently errant
parenthesis can be ignored or, alternatively, it can be presumed that a closing parenthesis should
appear at the end of the sentence. In either case, Defendant has not persuasively demonstrated that
this error renders the passage incomprehensible.
Defendant also argues that this passage from the specification “sheds little, if any, light at
all on the meaning of the claim term ‘received operator identification information’” because this
passage “does not disclose what receives ‘operator information,’ where such information is
received, or the mechanism by which it is received.” (Dkt. #54 at p. 6). Regardless of whether
such disclosures are present or not, however, the above-reproduced passage explains that the
mechanisms disclosed as being used by a monitoring system on or in a vehicle can alternatively
be “located separately and/or operat[ed] independently of the vehicle.” See ’471 Patent at 4:4–14
(emphasis added).
Finally, as to Defendant’s argument at the September 26, 2017 hearing that the abovereproduced disclosed embodiment is expressly excluded by the claims, Defendant’s argument
appears to assume that this passage from the specification discloses checking out a key at the
control center. Therefore, Defendant has urged, this disclosure is inconsistent with the recital in
the claims of transmitting to the control center. However, this passage discloses merely that the
checking out of a key is “made known to the control center.” Id. at 4:7 (emphasis added). As a
result, Defendant has not shown any inconsistency between this disclosure and the claims at issue.
On balance, the above-reproduced disclosure demonstrates that a “monitoring system on
or in the vehicle” is merely one embodiment that, accordingly, should not be imported into the

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construction. See Constant, 848 F.2d at 1571; see also Phillips, 415 F.3d at 1323. The Court
therefore expressly rejects Defendant’s proposed construction.
The Court accordingly construes “received operator identification information” to
mean “received information identifying the operator of a vehicle.”
B. “received within a time interval” (Claims 1 and 15)
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

“received within a time interval”

“received within a predetermined time
period”

(Dkt. #43, Exhibit A at p. 2; Dkt. #48 at p. 8; Dkt. #54 at pp. 7, 22; Dkt. #55 at p. 7; Dkt. #56,
Exhibit A at p. 5).
1. The Parties’ Positions
Plaintiff argues that “[t]he dispute for this term stems from defendant’s improper attempt
to read specific and unnecessary limitations from the specification into the term, and the fact that
defendant’s proposal merely rewords the term without clarifying it.” (Dkt. #48 at p. 8). Plaintiff
urges that “there is no logical reason to assume or believe that a person skilled in the field of the
invention would look at the ’471 patent – with its multiple references to ‘time interval’ – and be
confused, but then somehow have that confusion resolved by ‘time period.’” (Dkt. #48 at p. 9).
“Furthermore,” Plaintiff argues, “the examples from the specification generally refer to ‘time
interval’ and ‘time constraints’ in a broader context, while references to ‘predetermined time
interval’ appear in the context of specific examples.” (Dkt. #48 at p. 9).
Defendant responds that its proposal properly “clarifies that ‘a time interval’ is not an openended time period, but rather a time of particular duration determined in advance.” (Dkt. #54 at p.
8). Defendant argues that its proposed construction “is explicitly supported by the intrinsic
evidence of the ’471 Patent specification.” (Dkt. #54 at p. 8) (citing ’471 Patent at 2:26–39, 3:53–
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61, 4:20–29).

Defendant emphasizes that “[a]ll the examples of ‘time intervals’ in the

specification are predetermined time periods.” (Dkt. #54 at p. 9).
Plaintiff replies that “there are a number of non-‘predetermined’ time intervals that could
fall within the scope of this term – leading to the proper conclusion that this term should be broadly
construed to comprehend time intervals that are not predetermined as well as those that are.” (Dkt.
#55 at p. 7).
2. Analysis
The parties appear to essentially agree that the following disclosures in the specification
are relevant to this disputed term:
From block 108, control proceeds to block 110, where a determination is made (for
example, by the control center) whether an operator identification was received by
the monitoring system within a time interval of detected movement, detected
activation of the vehicle, or other detected tampering or action to the vehicle. The
time interval can include a predetermined time radius extending before and after
the detection, can be a time interval prior to the detection, and/or can be a time
interval following detection of the movement, activation or tampering. For
example, the time interval can a [sic, can be a] one minute interval straddling the
detection, a one minute interval immediately proceeding [sic, preceding] the
detection, or a one minute interval following a detection, for example, a first
detection within a larger time interval. From block 110, control proceeds to block
112 where a determination is made whether a received operator identification is in
fact a valid identification. For example, “validity” can be based on whether the
identification is known to the control center, whether the identification is current,
whether the identification is associated with a class of users who have authority or
permission to use the vehicle and so forth.
From block 112, control proceeds to block 114 where an alarm condition is set in a
case where a valid operator identification was not received within the time interval.
The determinations of blocks 110 and 112, as well as the setting of an alarm
condition, can be performed variously in one or more of a monitoring system
installed in the vehicle, and the control center that communicates with the onvehicle or in-vehicle monitoring system.
***
Thus, exemplary monitoring systems and/or methods allow a particular operator to
be associated with a particular vehicle, and also allow the control center to become
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aware of unauthorized usage of the vehicle, for example when the vehicle is
operated and a (valid) operator identification has not been received, has not been
received within acceptable time constraints, or is otherwise unacceptable and thus
merits an alarm or warning to be raised to or by the control center, so that responsive
or corrective action can be initiated.
***
In any event where the control center receives an indication that the vehicle has
been activated or tampered with, and the control center does not receive valid
operator identification information compliant with predetermined restrictions (e.g.,
within a predetermined time interval of the activation) then the control center can
conclude that use of action upon the vehicle is unauthorized and corrective action
should be taken, for example by alerting a user or operator of the control center,
alerting law enforcement officials or agencies, and so forth.
’471 Patent at 2:29–54, 3:53–61, 4:20–29.
The third above-reproduced passage refers to whether information is received “within a
predetermined time interval of the activation.” Id. at 4:24–25.

Likewise, the first above-

reproduced passage states that “[t]he time interval can include a predetermined time radius
extending before and after the detection.”

Id. at 2:31–33.

These explicit disclosures of

“predetermined” suggest that a “time interval” is not necessarily “predetermined.” Cf. Phillips,
415 F.3d at 1314 (“the claim in this case refers to ‘steel baffles,’ which strongly implies that the
term ‘baffles’ does not inherently mean objects made of steel”).
Defendant has also argued that dependent Claims 3 and 17 demonstrate that the “time
interval” must be predetermined because otherwise there would be no way to determine when the
recited alarm should trigger. (Dkt. #54 at p. 9). Defendant further clarified at the September 26,
2017 hearing that Defendant’s proposal of “predetermined” means determined in advance of
performing the recited method steps. Plaintiff responded that Defendant is presenting a false
dichotomy in this regard because time intervals are not necessarily only either predetermined or
indeterminate.

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On balance, Claims 3 and 17 do not recite or imply any limitation that would require the
time interval to be determined before any method step is performed. Defendant has argued that
such an interpretation is necessary for operability, but Defendant has not made an adequate
showing in this regard. For example, Defendant has not demonstrated that the time interval could
not be determined “on-the-fly,” so to speak, such that the time interval could be adjusted based on
events that occur during operation.
The Court therefore expressly rejects Defendant’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 “received within a time interval” to have its plain
meaning.
C. “detecting at the vehicle the presence of a landmark” (Claim 1)
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

“detecting at the vehicle a landmark within a
predetermined distance” 1

“detecting, by a monitoring system on or in
the vehicle, that a landmark is within a
predetermined distance from the vehicle”

1

In the parties’ September 18, 2017 Joint Claim Construction Statement Per P.R. 4-5(d), Plaintiff’s proposal for this
disputed term is listed as “detecting at the vehicle the presence of a landmark.” (Dkt. #56, Exhibit A at p. 6). At the
September 26, 2017 hearing, however, Plaintiff confirmed that it is still advancing the construction that Plaintiff
proposed in the parties’ July 6, 2017 Joint Claim Construction Statement Per P.R. 4-3 (see Dkt. #43, Exhibit A at p.
2) and Plaintiff’s opening brief (see Dkt. #48 at p. 11).

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(Dkt. #43, Exhibit A at p. 2; Dkt. #48 at p. 11; Dkt. #54 at pp. 10, 22; Dkt. #55 at p. 8; Dkt. #56,
Exhibit A at p. 6).
1. The Parties’ Positions
Plaintiff argues that “defendant’s proposal adds unnecessary and limiting language that
does nothing to clarify the disputed term.” (Dkt. #48 at p. 11). Plaintiff also submits that “[i]f ‘the
presence of a landmark’ requires clarification, then ‘a landmark within a predetermined distance’
is the construction that is most consistent with the specification and the original claim language.”
(Dkt. #48 at p. 12). Further, Plaintiff argues, Defendant’s proposal “inserts unnecessary passive
voice language that does nothing to meaningfully clarify the term.” (Dkt. #48 at p. 12).
Defendant responds that “[w]ithout clarification of the what, where, and when of the
claimed detecting, step [E] of claim 1 is hopelessly indefinite.” (Dkt. #54 at p. 11). Defendant
argues that its proposed construction is “explicitly supported by the intrinsic evidence of the ’471
Patent specification.” (Dkt. #54 at p. 11) (citing ’471 Patent at 3:9–21).
Plaintiff replies that “[t]he ‘on or in’ limitation [proposed by Defendant] precludes a large
number of possible embodiments that would otherwise satisfy the original ‘at the vehicle’
limitation.” (Dkt. #55 at p. 9).
At the September 26, 2017 hearing, Defendant reiterated its argument that clarification is
required as to what is doing the recited detecting.
2. Analysis
Claim 1 of the ’471 Patent recites:
1. A method for monitoring a vehicle, comprising:
detecting movement or activation of the vehicle;
transmitting a signal indicating movement or activation of the vehicle, to a
control center;
transmitting any received operator identification information to the control
center;
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determining whether an operator identification was received within a time
interval of the detected movement or activation of the vehicle;
detecting at the vehicle the presence of a landmark; and
transmitting data identifying the landmark and/or a location of the landmark
to the control center.
’471 Patent at 6:18–29 (emphasis added).
The disputed term itself refers to “detecting at the vehicle.” Nonetheless, Defendant’s
proposal of “on or in” is narrower than “at.”

Admittedly, the specification discloses an

embodiment in which a “parking stall will provide location and/or identification information of
the parking stall to the monitoring system on or in the vehicle.” ’471 Patent at 3:17–19 (emphasis
added). Nonetheless, this is merely one embodiment that, accordingly, should not be imported
into the construction. See Constant, 848 F.2d at 1571; see also Phillips, 415 F.3d at 1323.
Likewise, Defendant’s proposal of requiring a “monitoring system” lacks support in the claim
language, and such a limitation should not be imported from the specification. See id.
At the September 26, 2017 hearing, Defendant urged that Plaintiff’s opening brief
conceded that the detecting is done by a monitoring system on or in the vehicle. Plaintiff responded
that no such concession appears in Plaintiff’s opening brief, and the Court finds none in Plaintiff’s
opening brief, Plaintiff’s overview of the technology, or in Plaintiff’s discussion of the present
disputed term. (See, e.g., Dkt. #48 at p. 2 (“The system of the ’471 patent detects movement or
activation of a vehicle via a monitoring system installed at the vehicle.”); Dkt. #48 at p. 12 (“The
act of detecting is performed at the vehicle.”)).
As to Defendant’s proposal of the landmark being within a predetermined distance “from
the vehicle,” Defendant’s proposal in this regard is appropriate based on the context of the disputed
term as a whole. 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,

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and claim construction in such cases involves little more than the application of the widely
accepted meaning of commonly understood words.”); see also TQP Dev., LLC v. Merrill Lynch &
Co., Inc., No. 2:08-CV-471, 2012 WL 1940849, at *2 (E.D. Tex. May 29, 2012) (Bryson, J.)
(“some construction of the disputed claim language will assist the jury to understand the claims”).
At the September 26, 2017 hearing, Plaintiff maintained that Defendant’s proposal of “from the
vehicle” is superfluous, but Plaintiff did not otherwise appear to have any substantive disagreement
with this interpretation. Plaintiff has stated: “If the act of ‘detecting’ is being performed at the
vehicle, then context dictates that ‘within a predetermined distance’ is in reference to the vehicle
also.” (Dkt. #48 at p. 12).
The Court therefore construes “detecting at the vehicle the presence of a landmark” to
mean “detecting at the vehicle that a landmark is within a predetermined distance from the
vehicle.”
D. “an operator identification was not received within the time interval” (Claims 3 and
17)
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

“an operator identification was not received
within the time interval”

“information identifying the operator of a
vehicle was not received by a monitoring
system on or in the vehicle within a
predetermined period of time”

(Dkt. #43, Exhibit A at p. 2; Dkt. #48 at p. 13; Dkt. #54 at pp. 12–13, 22; Dkt. #55 at p. 9; Dkt.
#56, Exhibit A at p. 8).
1. The Parties’ Positions
Plaintiff submits that “[t]he dispute here duplicates the arguments already presented for the
first and second disputed terms [(‘received operator identification information’ and ‘received
within a time interval’)].” (Dkt. #48 at p. 13; see Dkt. #55 at p. 6).

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Defendant similarly submits that this term “requires construction for the same reasons that
the terms ‘received operator identification information’ and ‘received within a time interval’
require construction.” (Dkt. #54 at p. 13).
Likewise, at the September 26, 2017 hearing, the parties agreed that no separate argument
was needed as to this disputed term.
2. Analysis
For substantially the same reasons set forth above as to the terms “received operator
identification information” and “received within a time interval,” the Court construes “an
operator identification was not received within the time interval” to mean “information
identifying an operator of the vehicle was not received within the time interval.”
E. “transmitting location coordinates” (Claims 4 and 18)
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

“transmitting location coordinates”

“sending, via the monitoring system in, on, or
near the vehicle, location coordinates”
Alternatively:
“transmitting, via the monitoring system
in, on, or near the vehicle, location
coordinates”

(Dkt. #43, Exhibit A at p. 3; Dkt. #48 at p. 14; Dkt. #54 at pp. 14, 15, 22; Dkt. #55 at p. 10; Dkt.
#56, Exhibit A at p. 9).
1. The Parties’ Positions
Plaintiff argues: “The dispute for this term stems, once again, from defendant’s improper
attempt to read unnecessary limitations from the specification into the term, and the fact that
defendant’s proposal passively and improperly rewords the term without clarifying it.” (Dkt. #48

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at p. 14). For example, Plaintiff argues that “[t]ransmitting is broader than merely sending.” (Dkt.
#48 at p. 14) (citing ’471 Patent at 2:55–65).
Defendant responds: “The use of ‘transmitting location coordinates,’ in the context of the
claim, does not identify what is doing the transmitting or where the thing doing the transmitting is
located. Without clarifying the what and the where of the transmitting step, the scope of claims 4
and 18 is indefinite.” (Dkt. #54 at p. 14). Defendant argues that its proposed construction “finds
explicit intrinsic support in the ’471 Patent specification.” (Dkt. #54 at p. 15) (citing ’471 Patent
at 2:55–57). Finally, as to Plaintiff’s argument that “transmitting” is broader than “sending,”
Defendant alternatively “agrees to use ‘transmitting’ in the construction of this claim term.” (Dkt.
#54 at p. 15).
Plaintiff replies that Defendant’s alternative proposal is “surplusage accomplishing nothing
in the way of clarification for one skilled in the art.” (Dkt. #55 at p. 11).
At the September 26, 2017 hearing, Defendant further argued that the transmitting must be
performed by the disclosed monitoring system because otherwise the claims would ensnare old
prior art involving, for example, a person reading coordinates and calling them in (using some
form of wireless communication).
2. Analysis
Claim 4 of the ’471 Patent, for example, depends from Claim 3, which in turn depends
from Claim 1. Claims 1, 3, and 4 of the ’471 Patent recite:
1. A method for monitoring a vehicle, comprising:
detecting movement or activation of the vehicle;
transmitting a signal indicating movement or activation of the vehicle, to a
control center;
transmitting any received operator identification information to the control
center;
determining whether an operator identification was received within a time
interval of the detected movement or activation of the vehicle;
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detecting at the vehicle the presence of a landmark; and
transmitting data identifying the landmark and/or a location of the landmark
to the control center.
***
3. The method of claim 1, comprising:
setting an alarm condition when the determining indicates that an operator
identification was not received within the time interval.
4. The method of claim 3, comprising:
transmitting location coordinates of the vehicle provided by a Global
Positioning System receiver co-located with the vehicle.
’471 Patent at 6:18–30, 39–45 (emphasis added).
The specification discloses that a monitoring system can transmit location information,
such as geographic coordinates, or a signal itself can be used to triangulate a location:
From block 114, control proceeds to block 116, where the monitoring system
transmits location information of the vehicle to the control center. From block 116,
control proceeds to block 118, where a location of the vehicle is determined based
on the transmitted location information. In a case where the transmitted location
information includes geographic coordinates provided by a global positioning
system (GPS) receiver onboard or nearby the vehicle, the location information
indicates the location directly and the determination is made, for example, by
recognizing or receiving the transmitted location information. In other exemplary
methods and embodiments, the signal itself is used to determine or help determine
a geographic location of the vehicle, for example, in a configuration where multiple
receivers at different locations receive the transmitted signal and a location of the
vehicle (e.g. of the transmitter on or near the vehicle that is sending the signals) is
determined by triangulation using for example relative and/or absolute signal
strengths and/or signal timing of the signal as received by the different receivers.
’471 Patent at 2:55–3:7 (emphasis added).
Defendant argues that Plaintiff agrees that location information is transmitted by a
“monitoring system” because Plaintiff stated as follows in its opening brief: “The ‘transmitting’
performed by the monitoring system is actually a relay of coordinates sent from the GPS system.”
(Dkt. #54 at p. 18) (quoting Dkt. #48 at pp. 14–15). Plaintiff was referring, however, to “the

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excerpt of the specification” cited by Defendant. (See Dkt. #48 at pp. 14–15). Thus, no concession
or agreement is apparent as to the meaning of this disputed term.
On balance, Defendant’s proposal of “the monitoring system in, on, or near the vehicle”
should not be imported from the specification into the construction. See Constant, 848 F.2d at
1571; see also Phillips, 415 F.3d at 1323. Also of note, the claims of the ’471 Patent are method
claims, and Defendant has not shown any limitation in the claims requiring the step of
“transmitting location coordinates” to be performed by any particular structure.

See Cox

Commc’ns, Inc. v. Sprint Commc’n Co. LP, 838 F.3d 1224, 1229 (Fed. Cir. 2016) (“All of the
asserted claims are method claims, and the point of novelty resides with the steps of these methods,
not with the machine that performs them.”), cert. denied, 137 S. Ct. 2267 (2017);
cf. Microprocessor Enhancement Corp. v. Tex. Instruments Inc., 520 F.3d 1367, 1374 (Fed. Cir.
2008) (“A single patent may include claims directed to one or more of the classes of patentable
subject matter, but no single claim may cover more than one subject matter class. IPXL Holdings[,
LLC v. Amazon.com, Inc.], 430 F.3d [1377,] 1384 [(Fed. Cir. 2005)] (holding indefinite a claim
covering both an apparatus and a method of using that apparatus).”).
The Court therefore expressly rejects Defendant’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, 802 F.3d at 1291.

19

The Court accordingly construes “transmitting location coordinates” to have its plain
meaning.
F. “a Global Positioning System receiver co-located with the vehicle” (Claims 4 and 18)
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

“a Global Positioning System receiver colocated with the vehicle”

“a Global Positioning System receiver located
on or nearby the vehicle” 2

(Dkt. #43, Exhibit A at p. 3; Dkt. #48 at p. 15; Dkt. #54 at pp. 16, 22; Dkt. #55 at p. 11).
Plaintiff argued that “the difference between ‘co-located with’ and ‘located on or in’ – for
the purposes of two dependent claims – is not of sufficient materiality to merit the time and
resources of the Court.” (Dkt. #48 at p. 15). Alternatively, Plaintiff argued that “the defendant’s
proposal is unnecessary, and conflicts with embodiments disclosed in the ‘471 patent
specification.” (Dkt. #48 at p. 15).
Defendant responded that construction is necessary because “[t]he use of ‘a Global
Positioning System receiver co-located with the vehicle’, in the context of the claim, does not
clearly identify where the Global Positioning System receiver is located.” (Dkt. #54 at p. 16).
Plaintiff replied: “While Plaintiff still contends that Defendant’s proposal[] does nothing
to actually clarify the disputed term, Plaintiff is willing to agree to the Defendant’s modified
proposal.” (Dkt. #55 at p. 11).
Based on this agreement between the parties (see id.; see also Dkt. #56, Exhibit A at p. 3),
the Court hereby construes “a Global Positioning System receiver co-located with the vehicle”
to mean “a Global Positioning System receiver located on or nearby the vehicle.”

2
Defendant previously proposed: “a Global Positioning System receiver located on or in the vehicle.” (Dkt. #43,
Exhibit A at p. 3) (emphasis added).

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G. “specifications of the vehicle” (Claims 12 and 26)
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

“specifications of the vehicle”

“information about the vehicle’s capabilities,
as opposed to the vehicle’s activity or
mechanical or operational status”

(Dkt. #43, Exhibit A at p. 3; Dkt. #48 at p. 17; Dkt. #54 at pp. 18, 22; Dkt. #55 at pp. 11–12; Dkt.
#56, Exhibit A at p. 10).
Plaintiff argued that “construction of this single choice – appearing in a list of choices
embedded in two dependent claims – is not of sufficient materiality to merit the time and resources
of the Court.” (Dkt. #48 at p. 17). Alternatively, Plaintiff argued that “defendant has simply
restated plain language in a manner that makes the disputed term more – not less – difficult to
understand.” (Dkt. #48 at p. 17). Plaintiff also argued that the meaning of the disputed term is
clear in light of context provided by disclosure in the specification. (Dkt. #48 at pp. 17–18) (citing
’471 Patent at 3:36–48).
Defendant responded that its proposed construction “provides the required clarity” for this
disputed term, which Defendant argued would otherwise be indefinite. (Dkt. #54 at p. 18).
Plaintiff replied that “Defendant’s proposal does not clarify the disputed term – rather, it
opens the term up to numerous ambiguities that were not present in the original language.” (Dkt.
#55 at p. 12).
At the September 26, 2017 hearing, the parties reached agreement that this term should be
construed to mean “information about the vehicle, as opposed to the vehicle’s activity or
mechanical or operational status.”

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The Court therefore adopts the parties’ agreement that “specifications of the vehicle”
means “information about the vehicle, as opposed to the vehicle’s activity or mechanical or
operational status.”
H. “detecting at a landmark the presence of the vehicle” (Claim 15)
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

“detecting a vehicle within a predetermined
distance of a landmark” 3

“detecting, by a device on, in, or at a
landmark, that the vehicle is within a
predetermined distance from the landmark”

(Dkt. #43, Exhibit A at p. 4; Dkt. #48 at p. 18; Dkt. #54 at pp. 20, 22; Dkt. #55 at p. 12; Dkt. #56,
Exhibit A at p. 7).
1. The Parties’ Positions
Plaintiff argues: “The dispute here stems from the same improprieties in the defendant’s
proposal that permeate its previous proposals.” (Dkt. #48 at p. 18). Plaintiff urges that “the
defendant’s proposal offers clarification where none is needed, with language that doesn’t clarify.”
(Dkt. #48 at p. 19).
Defendant responds: “The use of ‘detecting at the landmark the presence of a vehicle’, in
the context of the claim, does not identify what is doing the detecting, where the thing doing the
detecting is located, or when the detecting occurs. Without clarification of the what, where, and
when of the claimed detecting, step [E] is hopelessly indefinite.” (Dkt. #54 at p. 20). Defendant
argues that its proposal is “explicitly supported by the intrinsic evidence of the ‘471 Patent
specification.” (Dkt. #54 at p. 20) (citing ’471 Patent at 3:21–28).

3

In the parties’ September 18, 2017 Joint Claim Construction Statement Per P.R. 4-5(d), Plaintiff’s proposal for this
disputed term is listed as “detecting at a landmark the presence of the vehicle.” (Dkt. #56, Exhibit A at p. 7). At the
September 26, 2017 hearing, however, Plaintiff confirmed that it is still advancing the construction that Plaintiff
proposed in the parties’ July 6, 2017 Joint Claim Construction Statement Per P.R. 4-3 (see Dkt. #43, Exhibit A at p.
4) and Plaintiff’s opening brief (see Dkt. #48 at p. 18).

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Plaintiff replies: “As noted in Plaintiff’s [Opening] Brief, the extra language of the
Defendant’s proposal adds nothing substantive for one skilled in the art.” (Dkt. #55 at p. 13).
2. Analysis
Claim 15 of the ’471 Patent recites:
15. A method for monitoring a vehicle, comprising:
detecting movement or activation of the vehicle;
transmitting a signal indicating movement or activation of the vehicle, to a
control center;
transmitting any received operator identification information to the control
center;
determining whether an operator identification was received within a time
interval of the detected movement or activation of the vehicle;
detecting at a landmark the presence of the vehicle; and
transmitting data identifying the vehicle and a location of the landmark to
the control center.
’471 Patent at 7:24–36 (emphasis added).
The parties have cited the following disclosure in the specification:
In another exemplary embodiment, the vehicle can include an RFID tag or other
machine readable passive or active information source or device which can be read
by a reader at the parking stall or other landmark, and provide vehicle and/or
operator information to the landmark which can then transmit some or all of this
information in addition to information identifying or characterizing landmark [sic,
the landmark], to the control center.
‘471 Patent at 3:21–28 (emphasis added).
Substantially the same analysis applies here as for the above-discussed analogous term
“detecting at the vehicle the presence of a landmark” in Claim 1 of the ’471 Patent. The disputed
term itself refers to “detecting at the landmark,” so Defendant’s proposal of “on, in, or at” is
superfluous and would tend to confuse rather than clarify the scope of the claims. At the September
26, 2017 hearing, upon inquiry, Defendant had no objection to replacing “on, in, or at” with simply
“at.”

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Nonetheless, Plaintiff acknowledged that “the presence of a vehicle at a landmark may be
understood as a vehicle within a predetermined distance of that landmark.” (Dkt. #48 at p. 20).
Plaintiff also states that “one skilled in the field of the invention” “would understand that a device
was utilized – and the landmark itself was not doing the detecting.” (Dkt. #48 at p. 19). At the
September 26, 2017 hearing, Plaintiff argued that the landmark could itself be a device, such as a
tollway gantry. On balance, however, Defendant’s proposal of “by a device at a landmark” is
sufficiently clear in this regard and will assist the finder of fact in understanding the claim. See
TQP, 2012 WL 1940849, at *2 (Bryson, J.) (“some construction of the disputed claim language
will assist the jury to understand the claims”).
The Court therefore construes “detecting at a landmark the presence of the vehicle” to
mean “detecting, by a device at a landmark, that the vehicle is within a predetermined
distance from the landmark.”
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 4th day of October, 2017.

___________________________________
AMOS L. MAZZANT
UNITED STATES DISTRICT JUDGE
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