Lites Out, LLC v. OutdoorLink, Inc. et al

Filing 65

CLAIM CONSTRUCTION MEMORANDUM AND ORDER. Signed by District Judge Amos L. Mazzant, III on 10/30/2017. (baf, )

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
SHERMAN DIVISION

LITES OUT, LLC,
Plaintiff,
v.
OUTDOORLINK, INC.;
OUTDOORLINK SERVICES, INC.
Defendant.

§
§
§
§
§
§
§
§
§
§
§

Case No. 4:17-cv-00192-ALM

CLAIM CONSTRUCTION
MEMORANDUM AND ORDER
On October 4, 2017, the Court held an oral hearing to determine the proper construction
of the disputed claim terms in United States Patent No. 7,501,941 (the “’941 Patent”), United
States Patent No. 8,497,773 (the “’773 Patent”), and United States Patent No. 8,912,898 (the
“’898 Patent”) (collectively the “Asserted Patents”). The Court has considered the parties’ claim
construction briefing and arguments. (Dkt. #30, 40, and 41). Based on the intrinsic and extrinsic
evidence, the Court construes the disputed terms in this Memorandum and Order. See Phillips v.
AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct.
831 (2015).
BACKGROUND
Lites Out, LLC (“Lites Out”) asserts the Asserted Patents against Outdoorlink, Inc. and
Outdoorlink Services, Inc. (collectively “Outdoorlink”). The ’898 Patent and ’773 Patent are
based on continuation applications of the ’941 Patent. The specifications of the three Asserted

Patents are substantially similar.1 The asserted claims include: (1) claims 1, 4, 9, 11, 13, 15, 17,
19, 22, and 24 of the ’941 Patent; (2) claims 1, 4, 7–10, 17–19, and 37 of the ’773 Patent; and (3)
claims 1, 3, 7, 8, 9, 16–18, 20, and 22 of the ’898 Patent.
The Asserted Patents generally relate to monitoring and managing advertising devices
(e.g., billboards or electronic displays). The prior art techniques for monitoring and managing
advertising devices are described as requiring periodic physical inspections of the operating
conditions of the advertising devices. Such operating conditions may include, for example, the
conditions of billboard lights. ’941 Patent 1:5–25, 2:37–40. The Abstract of the ’941 Patent
provides:
In one general aspect, a request to determine a status of a first of a plurality of
advertising devices is received. The advertising devices are spatially separated.
Operating conditions of the first advertising device are identified. The status of
the first advertising device is determined based, at least in part, on the operating
conditions. A presentation including information indicating the status of the first
advertising device is transmitted.
’941 Patent Abstract.
More specifically, a system is disclosed in which a plurality of advertising devices 102
are connected through a network 108 to a server 104 and a client 106. Id. at 1:65–2:34, Figure 1.
Via electronic communication, the advertising devices can be monitored and managed remotely.
Id. at 2:4–25. The operating conditions and status of the advertising device may be collected by
the server 104 and provided from the server 104 to the client 106 through a presentation that
includes information indicating the status of the advertising device. Id. at 1:34–35, 3:51–59,
6:36–37, 7:43–53, Figure 1, Figure 3.

1
 Specification citations by the parties, and as used herein, are generally made to the ’941 Patent.
2

LEGAL PRINCIPLES
“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention
to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303,
1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys.,
Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start
by considering the intrinsic evidence. Id. at 1313; C.R. Bard, Inc. v. U.S. Surgical Corp., 388
F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group, Inc.,
262 F.3d 1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the
specification, and the prosecution history. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d
at 861. The general rule—subject to certain specific exceptions discussed infra—is that each
claim term is construed according to its ordinary and accustomed meaning as understood by one
of ordinary skill in the art at the time of the invention in the context of the patent. Phillips, 415
F.3d at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure
Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (“There is a heavy
presumption that claim terms carry their accustomed meaning in the relevant community at the
relevant time.”) (vacated on other grounds).
“The claim construction inquiry. . . begins and ends in all cases with the actual words of
the claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir.
1998). “[I]n all aspects of claim construction, ‘the name of the game is the claim.’” Apple Inc. v.
Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362,
1369 (Fed. Cir. 1998)). A term’s context in the asserted claim can be instructive. Phillips, 415
F.3d at 1314. Other asserted or unasserted claims can also aid in determining the claim’s
meaning, because claim terms are typically used consistently throughout the patent. Id.
3

Differences among the claim terms can also assist in understanding a term’s meaning. Id. For
example, when a dependent claim adds a limitation to an independent claim, it is presumed that
the independent claim does not include the limitation. Id. at 1314–15.
“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id.
(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)).
“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is
dispositive; it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics
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). But, “‘[a]lthough the specification may aid the
court in interpreting the meaning of disputed claim language, particular embodiments and
examples appearing in the specification will not generally be read into the claims.’” Comark
Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v.
Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); see also Phillips, 415
F.3d at 1323. “[I]t is improper to read limitations from a preferred embodiment described in the
specification—even if it is the only embodiment—into the claims absent a clear indication in the
intrinsic record that the patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v.
Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).
The prosecution history is another tool to supply the proper context for claim
construction because, like the specification, the prosecution history provides evidence of how the
U.S. Patent and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415
F.3d at 1317. However, “because the prosecution history represents an ongoing negotiation
between the PTO and the applicant, rather than the final product of that negotiation, it often lacks
the clarity of the specification and thus is less useful for claim construction purposes.” Id. at
4

1318; see also Athletic Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996)
(ambiguous prosecution history may be “unhelpful as an interpretive resource”).
Although extrinsic evidence can also be useful, it is “‘less significant than the intrinsic
record in determining the legally operative meaning of claim language.’” Phillips, 415 F.3d at
1317 (quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a
court understand the underlying technology and the manner in which one skilled in the art might
use claim terms, but technical dictionaries and treatises may provide definitions that are too
broad or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly,
expert testimony may aid a court in understanding the underlying technology and determining
the particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
assertions as to a term’s definition are entirely unhelpful to a court. Id. Generally, extrinsic
evidence is “less reliable than the patent and its prosecution history in determining how to read
claim terms.” Id. The Supreme Court recently explained the role of extrinsic evidence in claim
construction:
In some cases, however, the district court will need to look beyond the patent’s
intrinsic evidence and to consult extrinsic evidence in order to understand, for
example, the background science or the meaning of a term in the relevant art
during the relevant time period. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546
(1871) (a patent may be “so interspersed with technical terms and terms of art that
the testimony of scientific witnesses is indispensable to a correct understanding of
its meaning”). In cases where those subsidiary facts are in dispute, courts will
need to make subsidiary factual findings about that extrinsic evidence. These are
the “evidentiary underpinnings” of claim construction that we discussed in
Markman, and this subsidiary fact finding must be reviewed for clear error on
appeal.
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).

5

A. Departing from the Ordinary Meaning of a Claim Term
There are “only two exceptions to [the] general rule” that claim terms are construed
according to their plain and ordinary meaning: “1) when a patentee sets out a definition and acts
as his own lexicographer, or 2) when the patentee disavows the full scope of the claim term
either in the specification or during prosecution.”2 Golden Bridge Tech., Inc. v. Apple Inc., 758
F.3d 1362, 1365 (Fed. Cir. 2014) (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d
1362, 1365 (Fed. Cir. 2012)); see also GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d
1304, 1309 (Fed. Cir. 2014) (“[T]he specification and prosecution history only compel departure
from the plain meaning in two instances: lexicography and disavowal.”). The standards for
finding lexicography or disavowal are “exacting.” GE Lighting Solutions, 750 F.3d at 1309.
To act as his own lexicographer, the patentee must “clearly set forth a definition of the
disputed claim term,” and “clearly express an intent to define the term.” Id. (quoting Thorner,
669 F.3d at 1365); see also Renishaw, 158 F.3d at 1249. The patentee’s lexicography must
appear “with reasonable clarity, deliberateness, and precision.” Renishaw, 158 F.3d at 1249.
To disavow or disclaim the full scope of a claim term, the patentee’s statements in the
specification or prosecution history must amount to a “clear and unmistakable” surrender.
Cordis Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner, 669
F.3d at 1366 (“The patentee may demonstrate intent to deviate from the ordinary and accustomed
meaning of a claim term by including in the specification expressions of manifest exclusion or
restriction, representing a clear disavowal of claim scope.”). “Where an applicant’s statements
are amenable to multiple reasonable interpretations, they cannot be deemed clear and

2
 Some cases have characterized other principles of claim construction as “exceptions” to the general rule,
such as the statutory requirement that a means-plus-function term is construed to cover the corresponding
structure disclosed in the specification. See, e.g., CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
1367 (Fed. Cir. 2002). 
6

unmistakable.” 3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir.
2013).
B. Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA)3
Patent claims must particularly point out and distinctly claim the subject matter regarded
as the invention. 35 U.S.C. § 112, ¶ 2. A claim, when viewed in light of the intrinsic evidence,
must “inform those skilled in the art about the scope of the invention with reasonable certainty.”
Nautilus Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). If it does not, the claim
fails § 112, ¶ 2 and is therefore invalid as indefinite. Id. at 2124. Whether a claim is indefinite is
determined from the perspective of one of ordinary skill in the art as of the time the application
for the patent was filed. Id. at 2130. As it is a challenge to the validity of a patent, the failure of
any claim in suit to comply with § 112 must be shown by clear and convincing evidence. Id. at
2130 n.10. “[I]ndefiniteness is a question of law and in effect part of claim construction.” ePlus,
Inc. v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012).
When a term of degree is used in a claim, “the court must determine whether the patent
provides some standard for measuring that degree.” Biosig Instruments, Inc. v. Nautilus, Inc.,
783 F.3d 1374, 1378 (Fed. Cir. 2015) (quotation marks omitted). Likewise, when a subjective
term is used in a claim, “the court must determine whether the patent’s specification supplies
some standard for measuring the scope of the [term].” Datamize, LLC v. Plumtree Software,
Inc., 417 F.3d 1342, 1351 (Fed. Cir. 2005); accord Interval Licensing LLC v. AOL, Inc., 766
F.3d 1364, 1371 (Fed. Cir. 2014) (citing Datamize, 417 F.3d at 1351).

3
 Because two of the applications resulting in the Asserted Patents was filed before September 16, 2012,
the effective date of the AIA, the Court refers to the pre-AIA version of § 112.  
7

AGREED TERMS
The parties agreed to the following terms:
Term
“data processing apparatus”

Agreed Construction
“a data processing apparatus”

(’941 Patent: Claim 13)
“configuration file”

“file including parameters, variables,
policies, algorithms, instructions, settings,
directives, or other technical information
used for managing the advertising device”

(’773 Patent: Claims 1,18)

(Dkt. #54–1 at p. 3; Dkt. #63 at p. 1.)
DISPUTED TERMS
1. “operating conditions/operating parameters” (’941 Patent: Claims 1, 4, 11, 13,
15, 17, 19; ’773 Patent: Claims 1, 4, 7, 8, 9, 17, 18; ’898 Patent: Claims 1, 3, 8, 16, 17, 18)
Lites Out’s Construction

Outdoorlink’s Construction

No construction necessary. Plain and ordinary Information provided by the advertising
meaning.
device/billboard describing whether the
device is working as expected
In the alternative:
information or instruction concerning the
operation of a device
The primary disputes are whether it is proper to limit the term to “describing whether the
device is working as expected” and limit the term to “information provided by the advertising
device.”
Positions of the Parties
Lites Out objects to Outdoorlink’s inclusion of “describing whether the device is working
as expected.” Lites Out contends this conflicts with ’941 Patent dependent claim 10 which
claims that the “operating conditions comprise a schedule for activating and deactivating the
advertising device.” Lites Out contends that an operating condition that comprises a “schedule”
directly conflicts with Outdoorlink’s construction. Lites Out contends that a schedule does not
8

expressly describe whether the device is working as expected, yet operating conditions can
include a schedule. (Dkt. #30 at pp. 3–4.)   Lites Out contends that a schedule of when lights are
supposed to turn on and turn off does not indicate if they actually did, and thus does not show
whether the device is working as expected. (Dkt. #41 at p. 1.)
Lites Out further contends that in the specification, “operating conditions” is not limited
to describing whether the device is working as expected: “status of the first advertising device is
determined based, at least in part, on the operating conditions” (’941 Patent 1:32–34) and an
interface presents “device information associated with advertising devices, including operating
conditions.” (’941 Patent 4:16–18.) Lites Out contends that thus operating conditions are
broader and can provide other information about the advertising device, even neutral information
such as schedule information. (Dkt. #30 at p. 4.)
Lites Out also objects to Outdoorlink’s requirement that the information is “provided by
the advertising device.”

Lites Out contends that the specification is clear that operating

conditions can also be sent to the advertising device. Lites Out contends that the “schedule” of
claim 10 is an example where operating conditions, including a schedule for activating and
deactivating the device, are transmitted to the device. (Dkt. #30 at p. 5.) Lites Out also contends
that limiting operating conditions to information provided by the advertising device conflicts
with ’941 Patent dependent claim 8. Lites Out contends that claim 8 has the extra step of
receiving a request to update the operating conditions of the first device and then transmitting a
command, while claim 10 recites that the operating conditions comprise a schedule. Lites Out
states that if the operating conditions are updated, and the update includes a schedule, then the
operating conditions can be sent to the device. (Dkt. #41 at p. 2.)

9

Outdoorlink contends that its construction provides context for the otherwise ambiguous
term “operating conditions/operating parameters.” Outdoorlink contends that the specification
passage at 4:16–18 cited by Lites Out is not referring to “operating conditions” but rather to
“information” provided from a graphical user interface. Outdoorlink contends that this passage
does not indicate that “operating conditions” are broader:
In some embodiments, GUI 116 presents device information associated with
advertising devices 102, including operating conditions, and associated buttons
and receives commands from the user of client 106 via one of the input devices.
This information may be presented in tabular, graphical, and any other suitable
format.
’941 Patent 4:13–21.
As to claim 10 and its use of “schedule,” Outdoorlink contends that its construction does
not exclude scheduling information from “operating conditions.” Outdoorlink contends that,
rather, when a schedule has been set for activating and deactivating the device, determining
whether the device is working as expected naturally includes determining whether the
activation/deactivation schedule is being followed. (Dkt. #40 at pp. 5–6.)
Outdoorlink contends that Lites Out’s position that “operating conditions/operating
parameters” must include information “sent to” the advertising device conflicts with the claims
as none of the claims of the patents-in-suit are directed to an embodiment in which such
information is sent to the device. Outdoorlink contends that ’941 Patent claim 1 references
“receiving operating conditions from a plurality of advertising devices.” ’941 Patent claim 1.
Outdoorlink notes that Lites Out contends that the “schedule” of ’941 Patent claim 10 is an
example of an operating condition that can be sent to an advertising device.

However,

Outdoorlink points out that claim 10 depends from claim 1 which explicitly includes the
requirement of “receiving operating conditions from a plurality of advertising devices.”
10

Outdoorlink contends that the claims of the other patents are in conformance with the
’941 Patent claims, pointing to ’773 Patent claim 36. Outdoorlink contends that this claim is “[a]
method for controlling the operation of a billboard,” and as in the claims of the ’941 Patent,
“commands” are received at a transceiver of a billboard which are in turn operable to control the
operating conditions of the billboard. Outdoorlink contends that it is “commands” that can be
sent to the billboard, not “operating conditions.” (Dkt. #40 at pp. 6–7.) Outdoorlink also
contends that the ’898 Patent claims recite a billboard including a wireless transceiver “to
wirelessly transmit … information representative of the current operating conditions.” ’898
patent, claim 1.
Outdoorlink contends that there is no mention anywhere, in the claims or the
specification of any of the Asserted Patents of operating conditions being sent to, or received by
the billboard or advertising device.
Analysis
“whether a device is working as expected”
Outdoorlink seeks to limit “operating conditions” to information which indicates whether
a device is working as expected. However, Outdoorlink has not pointed to evidence in the
intrinsic record that would exclude merely the conditions of the operating device, whether such
conditions were expected or not. Specifically, Outdoorlink has not pointed to clear language in
the intrinsic record of lexicography, disavowal, or disclaimer mandating that the operating
conditions must describe whether the device is working as expected.

See GE Lighting

Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“[T]he
specification and prosecution history only compel departure from the plain meaning in
two instances: lexicography and disavowal.”); Cordis Corp. v. Boston Sci. Corp., 561 F.3d
1319, 1329 (Fed. Cir. 2009); see also
11

Thorner, 669 F.3d at 1366 (“The patentee may demonstrate intent to deviate from the ordinary
and accustomed meaning of a claim term by including in the specification expressions of
manifest exclusion or restriction, representing a clear disavowal of claim scope.”).
Further, claim 10 explicitly includes “wherein the operating conditions comprise a
schedule for activating and deactivating the advertising device.” The schedule for activation and
deactivation does not necessarily also include information as to whether the device is working as
expected. Outdoorlink’s construction would require the “operating conditions” to further include
such information. However, Outdoorlink has not identified intrinsic evidence of a disclaimer or
disavowal. The use of a schedule to control the advertising device (such as ON/OFF times for
lights) is described at various portions of the specification, including but not limited to, ’941
Patent 5:41–58, Figure 2A, Figure 2D.
“information provided by the advertising device/billboard”
Outdoorlink also seeks to limit “operating conditions to “information provided by the
advertising device/billboard.” Again, Outdoorlink does not point to language of lexicography,
disavowal, or disclaimer. Outdoorlink generally relies on other elements of the claims, which
reference the operating conditions being received from the advertising devices. However, those
limitations do not generally redefine “operating conditions,” but only establish when operating
conditions are received from or transmitted from the advertising device.   Thus, for example, in
claim 1, the claim already defines where the operating conditions are received from (“receiving
operating conditions from a plurality of advertising devices… wherein each of the plurality of
advertising devices include cellular technology to wirelessly transmit operating condition to and
receive commands to update operating conditions from a cellular network.” (‘941 Patent claim

12

1). It is this language that provides for transmitting the operating conditions, not the term
“operating conditions” itself.
Thus, Lites Out’s position does not change that certain other elements of the claims may
require “receiving operating conditions from a plurality of advertising devices,” (’941 Patent
claim 1) or “the plurality of billboards each includes a wireless transceiver to wirelessly transmit
the alert over the wireless network, the alert including information representative of the current
operating conditions of the one of the plurality of the billboards.” (’898 Patent claim 1). It is
those particular limitations which require transmission from the billboard, not the nature of the
term “operating conditions” itself.
Further, as discussed above, the claims reference the operating conditions being a
schedule. Outdoorlink has not pointed to any reason why a schedule cannot be provided to an
advertising device or evidence that would limit schedules to only being something provided by
the advertising device. In fact, the specification contemplates the schedule being provided to the
billboard.  ’941 Patent 5:41–58, Figure 2A, Figure 2D.
Further, the claims and specification also reference “specified operation conditions.” For
example, ’941 Patent recites: “determining the status of the first advertising device comprises
determining whether the components are operating within specified operating conditions” (’941
Patent claim 3) and “[i]n response to at least one component violating specified operating
conditions, a notification indicating the violation is generated.” (’941 Patent 1:38–40). The
ranges and values that define the “specified operating conditions” are described in the
specification as being provided from the server 104 through use of the configuration file 135 and
monitoring engine 140. ’941 Patent 6:5–14, 6:65–7:14. This is further indication that “operating
conditions” generically do not have to be only provided by the advertising device. Outdoorlink
13

has not pointed to evidence that would limit “specified operation conditions” to only being
provided from an advertising device, as opposed to the specified operation condition being
provided elsewhere as described in the specification.
Having resolved the claim construction disputes, the Court finds no further construction
of the terms is needed. See O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351,
1362 (Fed. Cir. 2008) (“district courts are not (and should not be) required to construe every
limitation present in a patent’s asserted claims.”); Finjan, Inc. v. Secure Computing Corp., 626
F.3d 1197, 1207 (Fed. Cir. 2010) (“Unlike O2 Micro, where the court failed to resolve the
parties’ quarrel, the district court rejected Defendants’ construction.”).
The Court construes “operating conditions” and “operating parameters” to have
their plain and ordinary meaning.
2. Network Terms
“cellular technology/cellular network” (’941 Patent: Claims 1, 13, 19)
Lites Out’s Construction

Outdoorlink’s Construction

No construction necessary. Plain and ordinary Wireless network using bandwidth provided
meaning.
by a cellular carrier that is not an IP network
or a digital packet network
“Internet Protocol (IP) network” (’941 Patent Claims 1, 13)
Lites Out’s Construction

Outdoorlink’s Construction

No construction necessary. Plain and ordinary Network in which each connected device is
meaning.
assigned a unique IP address that is not a
cellular network or a digital packet network
In the alternative:
“network which comprises an IP address”

14

“digital packet network” (’773 Patent: Claims 1, 17, 18)
Lites Out’s Construction

Outdoorlink’s Construction

No construction necessary. Plain and ordinary Packet-switched network that is not a cellular
meaning.
network or an IP network
In the alternative:
“network which can transmit information in
digital packets”
“wireless network” (’898 Patent: Claims 1, 17, 18, 22)
Lites Out’s Construction

Outdoorlink’s Construction

No construction necessary. Plain and ordinary Over-the-air network that is not a cellular
meaning.
network, an IP network, or a digital packet
network
The primary dispute raised with regard to the network terms is whether the various
networks can have overlapping meanings or whether the networks must be mutually exclusive as
recited in Outdoorlink’s constructions.
Positions of the Parties
Lites Out contends the plain meaning for each term is clear. Lites Out objects to the
negative limitations in each of Outdoorlink’s constructions. Lites Out contends that the inclusion
of negative limitations within claim construction generally requires support from the intrinsic
evidence. (Dkt. #30 at p. 6 (citing Parthenon Unified Memory Architecture LLC v. ZTE Corp.,
2016 U.S. Dist. LEXIS 8038, *22 (E.D. Tex. Jan. 25, 2016) (citing Santarus, Inc. v. Par Pharm.,
Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012) (“Negative claim limitations are adequately supported
when the specification describes a reason to exclude the relevant limitation.”))).) Lites Out
contends that negative limitations are not proper absent an express disclaimer which justifies the
negative limitation. Id. (citing Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1322–23
(Fed. Cir. 2003) (declining to add a negative limitation when there was no “express disclaimer or
15

independent lexicography in the written description that would justify adding that negative
limitation”).)

Lites Out contends that Outdoorlink fails to cite any intrinsic evidence that

supports the negative limitations.
Further, Lites Out contends that the specification teaches the opposite:
Network 108 facilitates wireless or wireline communication between advertising devices
102, server 104, client 106 and any other local or remote computer. Network 108
encompasses any internal or external network, networks, sub-network, or combination
thereof operable to facilitate communications between various computing components
in system 100. Network 108 may communicate, for example, Internet Protocol (IP)
packets, Frame Relay frames, Asynchronous Transfer Mode (ATM) cells, voice, video,
data, and other suitable information between network addresses. Network 108 may
include one or more local area networks (LANs), radio access networks (RANs),
metropolitan area networks (MANs), wide area networks (WANs), all or a portion of the
global computer network known as the Internet, and/or any other communication system
or systems at one or more locations.
’941 Patent 3:9–24 (emphasis added).
Lites Out contends that “any internal or external network, networks, sub-network, or
combination thereof. . . .” makes clear that the network can communicate “Internet Protocol (IP)
packets, Frame Relay frames, Asynchronous Transfer Mode (ATM) cells, voice, video, data, and
other suitable information between network addresses.” Id. Further, Lites Out states that this
passage makes clear that “network” can include “all or a portion of the global computer network
known as the Internet, and/or any other communication system or systems at one or more
locations.” Id. at 3:21–24. Lites Out contends that, thus, the term “network” can include all of
the above and combinations thereof. (Dkt. #30 at p. 7.)
Lites Out contends that the claims themselves also make clear that “cellular” can include
“Internet Protocol.” Lites Out points to claim 11 of the ‘941 Patent as a claim explicitly
including transmitting wireless cellular signals to a cellular network. However, Lites Out notes
that the claims explicitly state that the apparatus is assigned not only a cellular phone number but
16

also a network address: “the apparatus is assigned a cellular phone number and a network
address.” Lites Out contends that this makes clear that cellular, as used in the specification, is a
broad term which can include communications routed via a network address. (Dkt. #30 at pp. 7–
8.)
Lites Out also points to the depiction of the network 108 in Figure 1. Lites Out contends
that the network is depicted as a single item, and does not illustrate a separate cellular network, a
separate IP network, a separate wireless network, etc. Lites Out contends that had Applicant
intended that cellular network be a completely dissimilar network from the Internet Protocol
network, then one would expect the two networks would be illustrated separately in the figures.
Id.
Lites Out notes that the specification teaches that the advertising device may have a
cellular connection “to the GSM/GPRS network for receiving and transmitting data.” ’941
Patent 2:59–62.

However, Lites Out also notes that the specification continues that the

advertising device can process “SMS messaging” and also include a CDPD (Cellular Digital
Packet Data) modem. Id.; Id. at 3:1–3. Lites Out contends that this makes clear that the term
“cellular”, as used by the specification, is broad and can include other capabilities such as
transmitting digital packet data. (Dkt. #30 at p. 9.)
Lites Out contends that there is nothing to suggest that there cannot be overlap between
the various networks such as a “wireless network” and “cellular network” overlapping, or both of
such networks overlapping with an “Internet Protocol network.” Lites Out contends that both the
specification and the plain meaning of “cellular” make clear that cellular does not exclude an
Internet Protocol network. Lites Out contends that cellular networks have long processed voice
and data, and have long included the capability to proceed through an Internet Protocol network.
17

(Dkt. #30 at p. 9.) As a further example, Lites Out contends that it is difficult to imagine how
devices that communicate according to a cellular, IP network or digital data packet protocol, or a
combination of these, cannot do so over a wireless network. (Dkt. #30 at p. 15.)
Outdoorlink contends that the specification does not assign all possible meanings to the
term “network,” as evidenced by the various types of networks it identifies. ’941 Patent, 3:9–24.
Outdoorlink contends that the patentee drafted the specification and claims using different terms,
and “different claim terms are presumed to have different meanings.” (Dkt. #40 at p. 8 (citing
Augme Techs., Inc. v. Yahoo! Inc., 755 F.3d 1326, 1333 (Fed. Cir. 2014) (quoting Helmsderfer v.
Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008))).) Outdoorlink contends
that, thus, the various networks identified in the claims cannot all have the same functionality
and features. Outdoorlink contends that the “cellular technology/cellular network” of the claims
of the ’941 Patent must be different from an “Internet Protocol (IP) network” in the same claims;
the “digital packet network” referenced in the ’773 Patent claims must differ from either of those
networks; and the “wireless network” in the ’898 Patent also must differ from an “IP network” or
“digital packet network.”
Outdoorlink contends that while these various networks may fit into a hierarchy such that
one is a subset of another, they cannot all be the same. Id. at 9. Outdoorlink states that the
specification of the patents explains that various types of networks have different features, such
as use of different communication protocols. See ’941 Patent 3:9–24. Outdoorlink contends that
the specification sets forth the various types and features of the networks precisely because they
are not the same. Because that is the case, construction is even more important to aid a jury in
understanding how the various network terms relate to one another, and how they are different.

18

Outdoorlink contends that as demonstrated by the language of claim 1 in the ’941 Patent,
each of an IP network and cellular network is mentioned. Outdoorlink contends that therefore
the terms are presumed different, such that a cellular network is not an IP network. ’941 Patent
claim 1.
Outdoorlink contends that given the different types of networks referenced in the claims,
distinctions are presumed to exist between them. Outdoorlink contends that construction is
necessary to aid a jury in understanding these differences. Outdoorlink contends that Lites Out
has not offered any explanation of the differences that exist between these networks and seeks to
conflate the terms and use them interchangeably, effectively reading these limitations out of the
claims.
In reply, Lites Out states that it does not argue that the various terms are identical. Lites
Out contends that even Outdoorlink acknowledges that “these various networks may fit into a
hierarchy such that one is a subset of another. . . .” (Dkt. #41 at p. 3.) Lites Out contends that
certainly a cellular network, an IP network, and a digital packet networks can be considered a
subset of the larger umbrella of a wireless network. Lites Out states that Outdoorlink would
exclude each of these networks from the construction of “wireless network.”
Lites Out has proposed alternative constructions for “Internet Protocol (IP) network” and
“digital packet network” and contends that these constructions show that some overlap and
distinguishing limitations may exist without expressly excluding networks with the negative
limitations Outdoorlink proposes. (Dkt. #41 at pp. 4–5.) Lites Out contends that the plain and
ordinary meaning of “digital packet network” refers to “a network which can transmit
information in digital packets.” Lites Out states that such a construction properly allows an

19

overlap between network, cellular, digital packet, which is consistent with the specification,
while providing additional distinguishing limitations. (Dkt. #341 at p. 5.)
Analysis
Outdoorlink link seeks to define the terms in question primarily through negative
limitations. Outdoorlink has pointed to no language of disclaimer, disavowal, or lexicography in
the intrinsic record. To act as his own lexicographer, the patentee must “clearly set forth a
definition of the disputed claim term,” and “clearly express an intent to define the term.” GE
Lighting Solutions, 750 F.3d at 1309 (quoting Thorner, 669 F.3d at 1365). The patentee’s
lexicography must appear “with reasonable clarity, deliberateness, and precision.” Renishaw,
158 F.3d at 1249. To disavow or disclaim the full scope of a claim term, the patentee’s
statements in the specification or prosecution history must amount to a “clear and unmistakable”
surrender. Cordis Corp, 561 F.3d at 1329; see also Thorner, 669 F.3d at 1366 (“The patentee
may demonstrate intent to deviate from the ordinary and accustomed meaning of a claim term by
including in the specification expressions of manifest exclusion or restriction, representing a
clear disavowal of claim scope.”). Outdoorlink has not met such a standard.
In contrast, the specification provides a broad generalized discussion of networks. Thus,
the general network 108 may include:
any internal or external network, networks, sub-network, or combination thereof
operable to facilitate communications between various computing components in
system 100. Network 108 may communicate, for example, Internet Protocol (IP)
packets, Frame Relay frames, Asynchronous Transfer Mode (ATM) cells, voice,
video, data, and other suitable information between network addresses. Network
108 may include one or more local area networks (LANs), radio access networks
(RANs), metropolitan area networks (MANs), wide area networks (WANs), all or
a portion of the global computer network known as the Internet, and/or any other
communication system or systems at one or more locations.
’941 Patent 3:9–24.
20

Further, in the immediate preceding paragraph, the wireless communication network is
described as explicitly including cellular communications and the network includes digital
packet transmissions:
To enable wireless communication with network 108, advertising device 102 may
include a receiver and transmitter … In some embodiments, advertising device
102 maintains a connection to the GSM/GPRS network for receiving and
transmitting data. Advertising device 102 may use other suitable wireless
protocols such as a wireless modem. … In some embodiments, advertising device
102 includes a CDPD (Cellular Digital Packet Data) or GPRS (General Packet
Radio Service) wireless modem.
’941 Patent 2:55–3:4.
In these passages it is clear that cellular networks may be a type of wireless network and
that cellular and wireless networks may communicate in standard digital packet protocols.
Further, the cellular connection can provide Internet Protocol communications. Id. at
1:58–2:4, 3:9–24. The specification further states: “[f]or example, each advertising device 102
may be dynamically assigned an IP address such that request may [sic] routed through a packetswitched network to the advertising device 102 using the IP address.” Id. at 7:20–23. Elsewhere
the specification references “Internet Protocol (IP) packets,” providing further indication that an
IP network may be a packet based network. Id. at 3:16.
In totality, these passages make clear that the various descriptions of networks are not
mutually exclusive, but rather are overlapping concepts. Merely because the claim uses multiple
terms does not require each term to be non-overlapping and mutually exclusive. See Linear
Technology Corp. v. International Trade Commission, 566 F.3d 1049, 1055 (Fed. Cir. 2009)
(finding that the use of “second circuit” and “third circuit” does not require entirely separate and
distinct circuits). A cellular network may be a type of wireless network, a cellular network may
communicate with Internet Protocol network protocols, a wireless network may communicate
21

with digital packet network protocols, etc. Outdoorlink’s position that each of these network
concepts must be mutually exclusive is not supported in the intrinsic record.4 Further, as noted
by Lites Out, the claims note the apparatus may include a cellular number and a network address,
and the network address may be an Internet Protocol (IP) address. ’941 Patent Claims 11 and 26.
By rejecting Outdoorlink’s negative limitations which defines the terms at issue as being
mutually exclusive (in contrast to the specification which teaches that the various terms may
overlap), the Court has resolved the claim construction dispute between the parties. Having
resolved the claim construction dispute, the Court finds no further construction of the terms is
needed. See O2 Micro, 521 F.3d at 1362; Finjan, Inc., 626 F.3d at 1207.
The Court construes “cellular technology,” “cellular network,” “Internet Protocol
(IP) network,” “digital packet network,” and “wireless network” to have their plain and
ordinary meaning.
3. “spatially separated” (’941 Patent: Claims 1,13)
Lites Out’s Construction

Outdoorlink’s Construction

No construction necessary. Plain and ordinary Not affixed to the same tower or geographic
meaning.
anchor
In the alternative:
“two or more objects which do not occupy the
same space”

The primary dispute raised in the briefing is whether limiting the term to multiple towers
and anchors is appropriate. Further, the parties dispute whether multiple faces of one advertising

4
  It is also telling that when arguing that terms such as “wireless network” do not overlap with the term
“cellular network” or that a cellular network cannot include Internet Protocol communications,
Outdoorlink indicated at the hearing that Outdoorlink did not know how one skilled in the art would
interpret such terms. (See Dkt. # 64 at p. 33.) Consistent with that admission, Outdoorlink presented no
evidence as to how one skilled in the art would interpret the network terms.
22

device are “spatially separated.”

The parties also dispute whether Lites Out’s alternative

construction provides any meaningful limitation.
Positions of the Parties
Lites Out contends that Outdoorlink imports the limitation of multiple towers or
geographic anchors. Further, Lites Out contends that neither the term “tower” nor “anchor” is
ever used in the specification. Lites Out contends that nothing in the claim speaks to the number
of advertising devices that may be affixed to a single tower or anchor. Lites Out contends that
advertising devices, such as signs, can be situated vertically on a single tower, horizontally on a
single tower, or back-to-back on a single tower, yet still be “spatially separated” or separated by
space. (Dkt. #30 at pp. 17–18.) Lites Out contends that Outdoorlink effectively rewrites the
claims to require multiple towers or anchors. Lites Out contends that this conflicts with the
specification example which discusses adjusting “operating conditions of different sides of a
specific advertising device 102 at different times.” ’941 Patent 5:59–61. Lites Out contends that
many billboards comprise “faces” on opposing sides while sharing the same tower or anchor.
Lites Out contends that the specification makes clear that each face can be adjusted
independently despite the fact that they share the same anchor. (Dkt. #30 at p. 18.)
Lites Out states that Outdoorlink contends that the Asserted Patents solve the problem of
having to individually visit widespread advertising devices to check on operating conditions of
various components.

Lites Out contends that this solution does not prohibit two or more

advertising devices being situated on the same tower or anchor. Lites Out contends that two
advertising devices arranged vertically or horizontally on the same tower can still be spatially
separated because the maintenance worker can still address components of each advertising
device through one control unit. (Dkt. #41 at p. 5.)
23

As an alternative, Lites Out proposes “two or more objects which do not occupy the same
space.” (Dkt. #30 at p. 18.)
Outdoorlink objects to Lites Out’s construction for suggesting that the term “spatially
separated” should be construed as including even devices that are affixed to the same tower or
geographic anchor. Outdoorlink contends that Lites Out acknowledges that the purpose of the
Asserted Patents is to overcome the previous problem that required technicians to travel to
advertising devices that are “not centrally located” but are “scattered around towns, along
highways, etc.” (Dkt. #40 at pp. 10–11 (quoting Dkt. #30 at p. 5).) Outdoorlink contends that
the problem the Asserted Patents describe is burden of inspecting these scattered devices:
“[g]enerally, in order to maintain advertising devices in operating conditions, an individual
would have to periodically physically inspect each advertising device to ensure that device
components (e.g., power supply, light source) were operating correctly.” ’941 Patent 2:12–17.
Outdoorlink contends that physical, geographic separation of the devices is a critical contextual
limitation of the patents-in-suit. Id. at 11. Outdoorlink contends that Lites Out would strip the
term of having any meaning by including advertising devices that are positioned “back-to-back
on a single tower.” Outdoorlink contends that if two devices can be positioned “back-to-back”
on the same tower and remain “spatially separated,” it is unclear whether it is even possible for
two such devices to not be spatially separated. Id. Outdoorlink contends that two devices cannot
be positioned closer to one another than when positioned “back-to-back.”
As to the multiple sides, Outdoorlink contends that the specification describes devices
that “may be single, double-faced, or multi-faced displays.” ’941 Patent, 2:47–49. Outdoorlink
contends this is still only one device. Outdoorlink contends that even if “opposing sides” of a
device are “spatially separated,” that is not what the claims require; the devices themselves must
24

be spatially separated.

(Dkt. #40 at pp. 11–12 (citing ’941 Patent claim 1 (“wherein the

advertising devices are spatially separated.”)).) Outdoorlink contends that a single device cannot
be “spatially separated” from itself.
Analysis
The specification describes “advertising devices” in the context of: “[a]n organization's
advertising devices (e.g., billboards, video displays) are… .” ’941 Patent 1:10–11.

The

specification further ellaborates:
Advertising device 102 can include any hardware, software, and/or firmware
operable to provide advertising information to individuals and/or devices within a
proximity of advertising device 102. Advertising information may include a static
visual display (e.g., billboard), a dynamic display (e.g., video display), video,
audio, text, an electromagnetic signal encoding data (e.g., Bluetooth), and/or other
information. In some embodiments, advertising device 102 may include
components 110 (e.g., lights, controller, camera, receiver, transmitter, override
switch, push-to-talk button) that enable advertising device 102 to provide
associated advertising information. For example, advertising device 102 may
comprise a billboard 102 with lights 110a to illuminate billboard 102. In this
case, billboard 102 may be single, double-faced, or multi-faced displays with
associated lights 110a.
’941 Patent 2:34–49.
In this context, it is clear that the “advertising device” is not merely the display (such as
the billboard or video display) but also the hardware, software, firmware, lights, controllers, etc.
Moreover, the specification is clear that multiple faces of an advertising device are part of that
same advertising device: “[f]or example, advertising device 102 may comprise a billboard 102
with lights 110a to illuminate billboard 102. In this case, billboard 102 may be single, doublefaced, or multi-faced displays with associated lights 110a.” ’941 Patent 2:47–49. Likewise, the
specification states that: “[c]onfiguration file 135 may include directives to adjust operating
conditions of different sides of a specific advertising device 102 at different times.” ’941 Patent

25

at 5:58–61. This statement again clearly treats different sides of a billboard structure as being one
advertising device, not multiple advertising devices.
Each of the parties’ constructions has faults. Lites Out is correct that Outdoorlink’s
construction adds limitations (“tower” and “anchor”) that are not explicitly recited in the intrinsic
record. Further, Outdoorlink is correct that Lites Out’s construction provides no meaningful
limitation, as two physical devices such as advertising devices would inherently not occupy the
same space.5
The claims in question both recite “a plurality of advertising devices” and “wherein the
advertising devices are spatially separated.” As noted, the specification is clear that multiple
faces of one advertising device (for example multiple faces of one billboard device) are still part
of that one advertising device: “[f]or example, advertising device 102 may comprise a billboard
102 with lights 110a to illuminate billboard 102. In this case, billboard 102 may be single,
double-faced, or multi-faced displays with associated lights 110a.”

’941 Patent 2:47–49.

Similarly, the “[c]onfiguration file 135 may include directives to adjust operating conditions of
different sides of a specific advertising device 102 at different times.” ’941 Patent 5:58–61.
As noted above, the claims call for a “plurality of advertising devices” and it is this
plurality of advertising devices that are subject to the limitation: “wherein the advertising devices
are spatially separated.”

At the oral hearing, it became evident that Lites Out potentially

intended its construction to mean that merely the different faces of one advertising device need
be spatially separated. When asked at the oral hearing as to whether the specification treats the
different sides of an advertising device as a single structure, Lites Out responded:

5
 At the oral argument, Lites Out appeared to concede that two devices inherently never occupy the exact
same space. (Dkt. #64 at pp. 38–39.)
26

Yes, sir, I think it can. In one embodiment absolutely it can, but I think you can
also have -- there's no requirement that you have a single controller per tower, I
would say. You could have a controller -- that would be the more efficient way to
do it is to have one controller that controls three sides of a billboard, but you
could absolutely have a single controller for one face, per face.
(Dkt. #64 at p. 38.)
However, the claim limitations in question do not relate to the number of controllers but
rather “a plurality of advertising devices” and the spatial separation of these devices. The
intrinsic record thus provides context to the meaning of a “plurality of advertising devices” and
the “wherein the advertising devices are spatially separated.” In this context, the various sides of
the same advertising device are not “the advertising devices are spatially separated.”

In

conjunction with the hearing, the Court requested the parties to consider a construction of:
“advertising devices that are separated in space, multiple sides of the same advertising device are
not spatially separated.” Outdoorlink agreed to such a construction, Lites Out did not. (Dkt. #63
at p. 1.) To address the claim dispute that is presented to the Court, the Court construes the more
complete phrase “wherein the advertising devices are spatially separated.” By addressing the
effect of the various sides of an advertising device, the Court resolves the issue presented to the
parties regarding spatial separation.
The Court construes “wherein the advertising devices are spatially separated” to
mean “wherein the plurality of advertising devices are separated in space, multiple sides of
the same advertising device are not spatially separated advertising devices.”

27

4. “transmitting a presentation” (’941 Patent: Claims 1, 13)
Lites Out’s Construction

Outdoorlink’s Construction

No construction necessary. Plain and ordinary Sending status information formatted for
meaning.
Display
The primary dispute is whether the information must be “formatted for display.”
Positions of the Parties
Lites Out contends that the Court and the jury will understand the term “transmitting a
presentation.” Lites Out contends that Outdoorlink’s construction only offers a more confusing
phrase. Lites Out also contends that Outdoorlink’s construction imports “formatted for display”
into the claim.

Lites Out contends that the claim simply states that the presentation is

transmitted; the claim has no requirement as to how it is formatted. (Dkt. #30 at p. 19.) Lites
Out contends that Outdoorlink’s construction, thus, requires that the presentation be “formatted”
for display.
Lites Out also objects to Outdoorlink’s construction as raising questions as to when the
presentation is formatted for display: is it when it is sent, or when it is received by software that
can then compile the data? Lites Out states that, for example, sending a digital photograph is
sending a multitude of 1s and 0s. Lites Out questions what point the presentation is formatted
for display, as the photograph is only properly viewable after software has read the 1s and 0s
creating an image. (Dkt. #30 at p. 19.)
Outdoorlink contends that the “presentation” that is transmitted is not simply information
in a machine-readable format, but rather status information that is formatted for display to a user.
Outdoorlink contends that this important limitation is not readily apparent, and without
construction of the term, a jury will be left without guidance about whether formatting of the
transmitted information occurs before or after transmission. (Dkt. #40 at p. 12.)
28

Outdoorlink contends that the claim language itself, “transmitting a presentation”
indicates that the presentation itself is transmitted, not data that can be formatted for display later
to generate a presentation. Outdoorlink contends that the word “presentation” alone implies
information that is viewable, such as displayed on a screen. (Dkt. #40 at 12–13.) Outdoorlink
contends that the specification supports this understanding by describing a “presentation engine”
that generates a graphical user interface (“GUI”) which a user views. ’941 Patent 9:46–62.
Outdoorlink further states that the specification describes a “[p]resentation engine 145 [that]
generates a GUI 116 and, in accordance with request 150, populates GUI 116 with associated
data from device profiles 130.

[The] [p]resentation engine 145 transmits a response 155

including GUI 116 to client 106 to present the request data to the user.” ’941 Patent 7:61–66.
Outdoorlink contends that Figure 1 shows that the presentation engine (’941 Patent FIG. 1, item
145) transmits a presentation (e.g., GUI 116) that is already formatted for display by a graphical
user interface or “GUI” (’941 Patent FIG. 1, item 116).

’941 Patent FIG. 1.

29

Outdoorlink contends that the flowchart of Figure 3 also describes a method in which the
step of generating the presentation is shown to precede the step of transmitting the presentation
to the user: “[a]t step 334, presentation engine 145 generates a GUI including at least a portion of
the data. Presentation engine 145 transmits GUI 116 to client 106 for presenting to user at step
336.” ’941 Patent 9:46–62.
Outdoorlink contends that the example cited in Lites Out’s brief, of sending a digital
photograph, is consistent with Outdoorlink’s proposed construction. Outdoorlink contends that
if a digital photograph is sent between two devices, both devices see the same thing: an image
that is digitally formatted for display. Outdoorlink contends that in the context of the patents-insuit, formatting of the “presentation” for display occurs at a “presentation engine” before
transmission, so that each of the devices on each side of the transmission both see the same
“presentation.” (Dkt. #40 at p. 15.) Outdoorlink contends that Lites Out intends to deny this key
limitation.
In reply, Lites Out contends that Outdoorlink ignores the specification statement that
“many of the steps in this flowchart may take place simultaneously and/or in different orders as
shown.” ’941 Patent 9:18–20.

Lites Out also states that Outdoorlink’s construction is a

mischaracterization of Figure 3. Lites Out asserts that while Figure 3 shows a presentation being
generated and then transmitted, that does not require that the generated presentation is formatted
for display at that moment.

(Dkt. #41 at p. 6.) Lites Out contends that Outdoorlink’s

construction suggests that the presentation is transmitted in a human viewable format which is
why they include “for display.” Lites Out contends, however, that nothing transmitted is readily
viewable by humans without electronic compilation. As an example, Lites Out states that a
Microsoft Excel spreadsheet is a presentation of data. Lites Out states that if that presentation is
30

transmitted to another computer, the receiving computer can only display the spreadsheet if it
includes the Excel program which can order the data as required by the Excel program. Lites
Out contends that this example would certainly include generating a presentation (i.e., the
spreadsheet) and transmitting a presentation; but, at the moment of transmitting it is not
formatted for display. (Dkt. #41 at p. 6.) Rather, during transmitting it is a series of digital 0s
and 1s which can only be displayed if the receiving computer has the proper program. (Dkt. #41
at p. 6.)
Analysis
The term in question includes “presentation.” Lites Out attempts to read “presentation”
as merely being “information” such that the disputed term is merely “transmitting information.”
When pressed at the oral hearing, Lites Out stated that “presentation” is merely “just a selection
of information.” (Dkt. #64 at pp. 46–47.) Such a broad generalization still reads out the term
“presentation” and conflicts with the meaning presented in the intrinsic record.
The specification makes clear that what is transmitted between the server 104 and the
client 106 is more than just the information or data.

Rather, as noted by Outdoorlink, a

“presentation engine” in the server generates a graphical user interface (“GUI”) which a user
views. This GUI is transmitted from the server to the client for use by the user ’941 Patent 9:55–
62. The procedure occurs as follows:
…presentation engine 145 retrieves operating parameters. Presentation engine
145 generates a GUI 116 and, in accordance with request 150, populates GUI 116
with associated data from device profiles 130. Presentation engine 145 transmits
a response 155 including GUI 116 to client 106 to present the request data to the
user.
’941 Patent 7:60–66.

31

The specification, therefore, provides context that the presentation is the GUI that the
user views. In this context, a “presentation” is more than just raw data, as the term itself implies.
It is clear that a “presentation” is not just data. Rather, the data is formatted in some manner for
viewing.
To oppose giving meaning to the term, Lites Out attempts to argue that “formatted for
display” would require the data to be in a human readable format when transmitted. However,
the Court does not agree with such an interpretation. Further, Outdoorlink explicitly stated that
its construction does not require human readability when transmitted. (Dkt. #64 at pp. 48–49.)
Further, even Lites Out’s hypothetical example of a Microsoft Excel spreadsheet contradicts
such concern as the spreadsheet is not human readable at the point of transmission, but it is
formatted for display. (Dkt. #64 pp. 45–48.)
In addition to limiting “presentation” to “information formatted for display,”
Outdoorlink’s construction seeks to limit “presentation” to “status information.” Although the
patent specification does suggest that a “presentation including information indicating the status
of the first advertising device is transmitted” (‘941 Patent Abstract, emphasis added), this does
not strictly mean that the presentation transmitted in the claims must be limited to “status
information,” as suggested by Outdoorlink’s construction.

Assuming that GUI 116 is the

“presentation” that is being transmitted in the claims (see, Fig. 3 steps 336 and 342; 9:57–62),
the various views of GUI 116 shown in Figs. 2A–E clearly show that GUI 116 is not limited to
displaying only status information: the street address view in GUI 116b of FIG. 2B, the
scheduling and location information view in GUI 116d of FIG. 2D, and the company view of
GUI 116e of FIG. 2E. None of these GUI views include “status information.” At the oral

32

hearing, Outdoorlink agreed with the removal of “status” from its construction. (Dkt. #64 at pp.
50–51.)
The Court construes “transmitting a presentation” to mean “sending information
formatted for display.”
5. “transmitting the notification to a user via a network” (’941 Patent: Claims 4, 15)6
Lites Out’s Construction

Outdoorlink’s Construction

No construction necessary. Plain and ordinary Transmitting the notification to a user via a
meaning.
network other than the IP network or the
cellular network
The primary dispute is whether “a network” has to be a different network than the IP
network and cellular network which are recited earlier in claims 1 and 13.
Positions of the Parties
Lites Out notes that Outdoorlink’s construction includes all the language in the claim
term itself, indicating that the term itself is understandable. Lites Out contends that the claim
just requires “a network.” Lites Out contends that the IP network and the cellular network can be
considered networks. Lites Out further states that the specification figures do not illustrate any
network which is separate and distinct from cellular and IP networks. (Dkt. #41 at p. 7.)
Lites Out contends that just because the claim earlier recites an IP network and a cellular
network, the later use of “a network” does not mean that the claim term cannot be one of the
earlier recited networks. (Dkt. #30 at p. 21.) Lites Out contends the situation is analogous to
Mobile Telcoms Techs, LLC, in which the claim at issue recited “information” then subsequently
recited “a first block of information,” “a second block of information” and “a third block of
information.” Mobile Telcoms Techs, LLC v. Leap Wireless Int’l, Inc. 2015 U.S. District LEXIS

6
  The parties joint claim chart included claim 19 in the claim list for this term. (Dkt. #54–1 at p. 3.) The
term is not found, however, in claim 19. ’941 Patent 12:4–16.
33

12765, *26 (E.D. Tex. May 13, 2015). Lites Out contends that the Court stated that the use of
the term “a” is not necessarily inconsistent with the first, second, and third blocks being from
among the plurality of blocks mentioned in the above (prior) steps. (Dkt. #30 at pp. 21–22.)
Outdoorlink contends that under well-established claim drafting principles, indefinite
articles such as “a” or “an” are used to introduce new claim elements, while definite elements
such as “the” are used to refer to an element that has been established earlier in the claim. See
Tuna Processors, Inc. v. Haw. Int’l Seafood, Inc., 327 F. App’x 204, 210 (Fed. Cir. 2009).
Outdoorlink contends that if the term “a network” referred to either the “IP network” or “cellular
network” recited previously in the claims, the patentee presumably would have acknowledged
the antecedent basis by reciting definite articles such as “the” or “said” rather than the indefinite
article “a” or recited the “IP Network” the “cellular network.

(Dkt. #40 at pp. 15–16.)

Outdoorlink contends that as the patentee did not use such language, “a network” should be
presumed to refer to a new element that is different from an “IP network” or the “cellular
network.” (Dkt. #40 at pp. 15–16.) Outdoorlink contends that different terms are presumed to
have different meanings. See Augme Techs., Inc. v. Yahoo! Inc., 755 F.3d 1326, 1333 (Fed. Cir.
2014).
Outdoorlink contends that the examples Lites Out cites are inapplicable as the claims
here do not first recite a “plurality” of networks from which “a network” can be selected. (Dkt.
#40 at p. 16.)
Analysis
The specification indicates that a notification is sent to the user with regard to the
flowchart of Figure 3. Note, no special network is designated. Further, Figure 3 is stated to be a
flow diagram of using the management system of 100 of Figure 1. In Figure 1, only a generic
34

network 108 is illustrated as providing the notifications and the other communications. ’941
Patent 1:65–4, 3:9–24, 9:14–16, 9:42–46, Figure 1, Figure 3. The specification, however, then
describes that the network 108 illustrated in Figure 1 can take any of many forms including
transmissions via “Internet Protocol (IP) packets.”

’941 Patent 3:15–16.

Further, the

specification explicitly further characterizes the network to include: “[n]etwork 108 may include
one or more local area networks (LANs), radio access networks (RANs), metropolitan area
networks (MANs), wide area networks (WANs), all or a portion of the global computer network
known as the Internet, and/or any other communication system or systems at one or more
locations.” ’941 Patent 3:18–24. Thus, Outdoorlink’s construction would exclude explicitly
recited preferred embodiments. A construction that excludes a preferred embodiment “is rarely,
if ever, correct and would require highly persuasive evidentiary support.” Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996).
Further, Outdoorlink ignores the most natural reading of the claims. The claims call out
(in claim 1) receiving from advertising devices operating conditions through an IP network. The
claim also recites (in claim 1) that the advertising devices include cellular technology to transmit
operating conditions to and receive commands from a cellular network. Then, in dependent
claim 4, the notifications are transmitted to a user “via a network.” No specific network is
required, and nothing excludes the use of the IP network or cellular network recited earlier in the
claims or a cellular network that uses IP network protocols as discussed above with regard to the
network terms. This also conforms to the description in the specification to the broad general
network description cited above for network 108. Merely because the claim uses multiple terms
does not require each term to be non-overlapping and mutually exclusive.

35

See Linear

Technology Corp., 566 F.3d at 1055 (finding that the use of “second circuit” and “third circuit”
does not require entirely separate and distinct circuits).
By rejecting Outdoorlink’s “other than the IP network or the cellular network” negative
limitation, the Court has resolved the claim construction dispute between the parties. Having
resolved the claim construction dispute, the Court finds no further construction of the term is
needed. See O2 Micro, 521 F.3d at 1362; Finjan, Inc., 626 F.3d at 1207.
The Court construes “transmitting the notification to a user via a network” to have
its plain and ordinary meaning.
6. “the selection independent of other advertising devices” (’941 Patent: Claims 8, 17)
Lites Out’s Construction

Outdoorlink’s Construction

No construction necessary. Plain and ordinary The term is indefinite
meaning. Further, the claim is not indefinite.
The primary dispute is whether the term is indefinite for lack of antecedent basis and
whether the term is indefinite for not being understandable as used in the claims.
Positions of the Parties
Lites Out contends that the term meets the “reasonable certainty” standard of Nautilus,
Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124, 189 L. Ed. 2d 37 (2014).
Lites Out notes that the relevant clause of claim 8 states “transmitting a command to the
first advertising device based, at least in part, on the selection independent of other advertising
devices.” Lites Out contends that claim 1 claims a plurality of advertising devices, and claim 8
further restricts this by stating the command is transmitted based, at least in part, on the selection
of a particular advertising device. (Dkt. #30 at pp. 22–23.)
Lites out contends that the specification indicates that one advertising device, out of a
plurality, can be selected independently. Specifically, Lites Out points to the example in the
36

specification that states that the “management system 100 is operable to identify a plurality of
advertising devices 102, receive a selection from a user of client 106, and independently manage
one of the plurality of advertising devices 102 in response to the user selection.” ’941 Patent
2:4–10. Lites Out states that another example is when the specification states that “intelligence
of system 100 is centrally located at server 104, and, in this case, server 104 manages individual
advertising devices 102 independent of other advertising devices. In other words, server 104
may independently turn on and off individual advertising devices by transmitting a message
routed directly to the specific advertising devices.” ’941 Patent 2:27–33.
Outdoorlink contends that the term is nonsensical as it appears in its respective claims.
Outdoorlink contends that given the terms internal incoherence, the specification cannot give the
term a meaning that would allow a person of ordinary skill to reasonably understand the term.
Outdoorlink contends that Lites Out merely relies on attorney speculation to ascribe meaning to
the term. (Dkt. #40 at p. 17.)
Outdoorlink contends that “the selection independent of other advertising devices” in
claims 8 and 17 of the ’941 Patent lacks antecedent basis. Outdoorlink acknowledges that a
claim is not indefinite for lack of antecedent basis when the “meaning of the claim would
reasonably be understood by persons of ordinary skill when read in light of the specification.”
(Dkt. #40 at p. 17 (citing Energizer Holdings, Inc. v. Int'l Trade Comm’n, 435 F.3d 1366, 1370
(Fed. Cir. 2006) (“When the meaning of the claim would reasonably be understood by persons of
ordinary skill when read in light of the specification, the claim is not subject to invalidity upon
departure from the protocol of ‘antecedent basis.’”)).) Outdoorlink contends, however, that here,
the specification does not provide support for this phrase, and no meaning is apparent from the
claim language or the specification.
37

Outdoorlink contends that the term is nonsensical on its face because it is unclear what
“selection” has been made and how it could be “independent of” or dependent on an “advertising
device” in any event. Outdoorlink contends that the specification excerpts Plaintiff cites do not
clarify the incoherence of this term. (Dkt. #40 at pp. 17–18.)
Outdoorlink contends that no evidence exists that can establish the clear intent of the
patentee, and thus any meaning ascribed to this term would be pure speculation. Further,
Outdoorlink contends that Lites Out should not be permitted to introduce new words to these
terms to give them a new meaning. (Dkt. #40 at p. 19.)
Analysis
The definiteness standard of 35 U.S.C. § 112, ¶ 2 requires that:
[A] patent’s claims, viewed in light of the specification and prosecution history,
inform those skilled in the art about the scope of the invention with reasonable
certainty. The definiteness requirement, so understood, mandates clarity, while
recognizing that absolute precision is unattainable.
Nautilus, Inc. 134 S. Ct. at 2129–30.
Lites Out, in effect, seeks to interpret “the selection independent of other advertising
devices” to mean “a selection of the first advertising device independent of other advertising
devices.” (Dkt. #30 at pp. 22–23.) When directly asked this at the oral hearing, Lites Out
acknowledged that Lites Out seeks to interpret the phrase to mean “selecting the first advertising
device independent of the other advertising devices.” (Dkt. #64 at p. 59.)
As drafted, the claim is unclear as to what is meant by “the selection independent of other
advertising devices.”

Lites Out seeks to have the ambiguous claim language corrected.

However, judicial correction of a claim is held to a high standard. The Federal Circuit has made
clear the requirements needed for a district court to correct an error:

38

This case presents the question whether a district court can act to correct an error
in a patent by interpretation of the patent where no certificate of correction has
been issued. We hold that a district court can do so only if (1) the correction is not
subject to reasonable debate based on consideration of the claim language and the
specification and (2) the prosecution history does not suggest a different
interpretation of the claims.
Novo Industries, LP v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003).
If the claim language might mean several different things and no informed and confident
choice is available among the contending definitions, the claim is indefinite. See Interval
Licensing LLC v. AOL Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014) (citing Nautilus, Inc., 134
S.Ct. at 2130, n.8 (2014)).
The literal language of the claim raises ambiguity due to the antecedent issue and the fact
that something seems to logically and grammatically be missing from the other language of the
term. Lites Out has identified one plausible way of correcting the claim language. Such a
correction could reasonably be read to conform to portions of the specification at ’941 Patent
2:4–10, 2:27–33.
At the oral hearing, Outdoorlink raised other approaches to correct the claim. (Dkt. #64
at pp. 64–66.) One other reasonable correction that could be made has the selection relating to a
selection of the operating conditions to update. For example, dependent claim 8 adds the
limitation of receiving a request to “update the operating conditions” and then “transmitting a
command to the first advertising device based, at least in part, on the selection independent of
other advertising devices.” (Dkt. #64 at p. 59.) A natural reading of the claim itself could have
the transmitted command relate to the “request to update the operating conditions.” (Dkt. #64 at
p. 59.) In such case, the “selection” may be a selection of the particular operating condition that
is to be updated. (Dkt. #64 at p. 59.) Thus, in light of the claim language itself, the term could
reasonably be interpreted as “selecting the operating condition to update independent of the other
39

advertising devices.” Such an interpretation would also be a reasonable construction when
reading the surrounding claim language in light of the specification. ’941 Patent 1:41–44, 9:57–
62, Figure 3.
Because the correction is “subject to reasonable debate based on consideration of the
claim language and the specification,” the Court cannot provide the correction that Lites Out
seeks. Novo Industries, 350 F.3d at 1354. The claim, thus, fails the “reasonable certainty” test of
Nautilus.
The Court finds that the term “the selection independent of other advertising
devices” is indefinite.
7. “a selection via the presentation” (’941 Patent: Claim 9)
Lites Out’s Construction

Outdoorlink’s Construction

No construction necessary. Plain and ordinary The term is indefinite
meaning. Further, the claim is not indefinite.
The primary dispute is whether the term is understandable as used in the claims.
Positions of the Parties
The relevant clause of claim 9 states, the “method of claim 8, wherein the request
comprises a selection via the presentation.” Lites Out contends that the specification teaches that
the “management system 100 is operable to identify a plurality of advertising devices 102,
receive a selection from a user of client 106, and independently manage one of the plurality of
advertising devices 102 in response to the user selection.” ’941 Patent 2:4–10. Lites Out also
points to the specification passage that states that the user:
logs into server 104 (may be secured access) through GUI 116, which then
presents a list of advertising devices 102. By selecting a particular advertising
device 102, GUI 116 may display activity history, alert history, operating
conditions, scheduled activity, and other information associated with advertising
device 102.
40

’941 Patent 3:59–65.
Lites Out also contends that the specification states that the user, using the presentation,
can make status requests and commands to change operating conditions by making a selection.
(Dkt. #30 at p. 24 (citing ’941 Patent 3:12–34).) Lites Out states claim 8 recites that a request is
made to update the operating conditions. Lites Out contends that then, in claim 9, the request is
made through the presentation. (Dkt. #30 at p. 24 (citing ’941 Patent 3:12–34).)
Outdoorlink presents much of the same arguments presented above for the “the selection
independent” term.

Outdoorlink contends that the term is nonsensical as it appears in its

respective claims. Outdoorlink contends that given their internal incoherence, the specification
cannot give these terms a meaning that would allow a person of ordinary skill to reasonably
understand them. Outdoorlink contends that Lites Out merely relies on attorney speculation to
ascribe meaning to the term. (Dkt. #40 at pp. 17–18.)
Outdoorlink contends that it is unclear what “selection” is being made, or how the
claimed “selection” can be made “via the presentation”, as required by claim 9. (Dkt. #40 at p.
18.) Outdoorlink contends that incorporating the language of the independent claim provides no
further insight. Outdoorlink states that read in conjunction with claim 8, from which claim 9
depends, claim 9 would read, “[t]he method of claim 8, wherein the request [to update the
operating condition of the first advertising device] comprises a selection via the presentation.”
Outdoorlink contends that it is impossible to know what the claimed “selection” refers to.
Analysis
As claimed, the language itself is clear. The request of claim 8 comprises “a selection via
a presentation.” The specification provides for selections being made through use of the GUI
provided to the user and that the GUI is called a “presentation.” ’942 Patent 1:65–2:8, 3:53–65
41

7:43–66, 8:32–36, 8:55–60, 9:55–62, Figure 3. In light of the intrinsic record, it is clear that
selections may be made via the presentation.
As raised in the oral hearing, Outdoorlink fundamentally objects that the claim is not
limited to a particular selection. (Dkt. #64 at pp. 65–66.) However, the fact that the claim is not
limited to a particular selection does not render the claim ambiguous. As claimed, “a selection
via the presentation” is provided. Thus, merely a selection is claimed, not a particular type of
selection. That the claim is not limited to a particular selection does not render the language
unclear. The Court finds that the term satisfies the “reasonable certainty” test of Nautilus.
The Court construes “a selection via the presentation” to have its plain and
ordinary meaning.
8. “operating conditions of a maintenance visit” (’898 Patent: Claim 8; ’773 Patent:
Claim 8)
Lites Out’s Construction

Outdoorlink’s Construction

No construction necessary. Plain and ordinary The term is indefinite
meaning. Further, the claim is not indefinite.
The primary dispute is whether the specification makes clear how a “maintenance visit”
can have “operating conditions.”
Positions of the Parties
In claim 8 of the ‘773 Patent, the term is found in the clause which states “wherein
receiving operating conditions for a plurality of billboards comprises receiving operating
conditions of a maintenance visit.” Lites Out contends that this term references operating
conditions related to a maintenance visit. (Dkt. #30 at p. 28.) Lites Out contends that the
specification includes references to information that can be gleaned from or about a maintenance
visit including “an index of faults and associated time periods, maintenance log including time of
42

fault detection and repair, maintenance cost graph, historical data, graphical representation of
energy cost. . . . .” ’941 Patent 3:66–4:4. Lites Out states that the specification also states that
the system may collect detectable errors regarding power consumption, ballast failures, etc. and
consequently “maintenance crews may be able to have the proper material before arriving at the
site.” ’941 Patent 7:10–12. Lites Out contends that this makes clear that there are a host of
operating conditions which relate to a maintenance visit.
Lites Out contends that anyone who has worked around equipment can attest to the
wealth of important information which surrounds a maintenance visit. Lites Out contends that
copious notes are taken before, after, and during maintenance to determine if a maintenance visit
was successful. As another example, Lites Out states that if safety protocol requires that the
power be off during a maintenance visit, it would be helpful to know if the power was in fact on.
(Dkt. #41 at p. 10.)
Outdoorlink presents much of the same arguments as presented above for the “the
selection independent” term. Outdoorlink contends that the term is nonsensical as it appears in
its respective claims.

Outdoorlink contends that given their internal incoherence, the

specification cannot give these terms a meaning that would allow a person of ordinary skill to
reasonably understand them. Outdoorlink contends that Lites Out merely relies on attorney
speculation to ascribe meaning the term. (Dkt. #40 at p. 17.)
Outdoorlink contends that the specification never describes the term “operating
conditions of a maintenance visit” used in claim 8 of the ’898 Patent and claim 8 of the ’773
Patent. Outdoorlink contends that the term itself is nonsensical because it is unclear how a
“maintenance visit” can have “operating conditions.” (Dkt. #40 at p. 18.) Outdoorlink contends
that the specification defines “operating conditions” in the context of billboards as including
43

“one or more of the following: power outage, tripped breaker, lamp outage, or ballast failure.”
’941 Patent 6:16–19. Outdoorlink contends that the term “operating conditions related to a
maintenance visit” is not mentioned in the specification, and “operating conditions” are never
tied to an actual “maintenance visit.” (Dkt. #40 at pp. 18–19.)
Outdoorlink contends that Lites Out’s construction either does not describe “operating
conditions” (see ’941 Patent 4:63–5:7 (referring to a “device profile”)) or does not describe
information “of a maintenance visit” that has already occurred (see ’941 Patent 4–12 (referring to
data a monitoring engine uses to determine operating conditions)). Outdoorlink contends that the
claim still doesn’t make any sense, because there is no clear relationship between the claimed
“operating conditions” and a maintenance visit and there is no suggestion whether these
“operating conditions” are observed before, during, or after a maintenance visit, or whether they
relate to a billboard or to the maintenance visit itself. ’941 Patent 4–12.
Analysis
The specification provides linkage between maintenance visits and operating conditions,
such as repair data and times, and the conditions that cause a maintenance visit, such as cited by
Lites Out in the specification passages at 4:65–5:4 and 7:4–12. In this context, it is reasonably
clear that there can be operating conditions of a maintenance visit. Thus, in context of the
specification, the Court rejects Outdoorlink’s assertion that it is not reasonable for there to be a
linkage between operating conditions and maintenance visits. The Court finds that the term
satisfies the “reasonable certainty” test of Nautilus.
The Court construes “operating conditions of a maintenance visit” to have its plain
and ordinary meaning.

44

SIGNED this 30th day of October, 2017.

___________________________________
AMOS L. MAZZANT
UNITED STATES DISTRICT JUDGE