EON Corp. IP Holdings, LLC v. Skyguard, LLC et al
MEMORANDUM OPINION AND ORDER. The Court adopts the constructions set forth in this order. Signed by Magistrate Judge John D. Love on 11/20/12. cc:attys 11-20-12(mll, )
UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
EON CORP. IP HOLDINGS, LLC,
LANDIS+GYR INC., et al.,
SKYGUARD, LLC, et al.,
Civil Action No. 6:11-cv-00317-LED-JDL
JURY TRIAL REQUESTED
Civil Action No. 6:11-cv-0015-LED-JDL
JURY TRIAL REQUESTED
MEMORANDUM OPINION AND ORDER
This claim construction opinion construes the disputed terms in U.S. Patent Nos.
5,388,101(“the ‘101 Patent”) and 5,481,546 (“the ‘546 Patent”). For the reasons stated herein,
the Court adopts the constructions set forth below.
Plaintiff Eon Corp. IP Holdings, LLC (“Eon”) alleges Defendants1 infringe the ‘101 and
‘546 Patents (“patents-in-suit”). The parties have presented extensive claim construction briefing
(Doc. Nos. 187, 201, 206, 207 in the 6:11cv15 case, and 179, 190, 207, 216, 217, 218, and 219 in
the 6:11cv317 case).
Defendants in Civil Action No. 6:11cv317 are Landis+Gyr Inc. (“Landis+Gyr”), Aclara Powerline Systems Inc.
and Aclara RF Systems, Inc. (“Aclara”), Elster Solutions LLC, EngeryICT, Inc., and Elster AMCO Water LLC
(“Elster”), Silver Spring Networks, Inc. (“SSN”), Itron, Inc. (“Itron”), and Trilliant Networks, Inc. (“Trilliant”).
Defendants in Civil Action No. 6:11cv15 Skyguard, LLC (“Skyguard”); Cantaloupe Systems, Inc. (“Cantaloupe”);
Space Data Corporation (“Space Data”); MedApps, Inc. (“MedApps”); MEI, Inc. (“MEI”); and Novatel Wireless,
Inc. (“Novatel”) (collectively, “Defendants”). Defendants Skyguard LLC, MedApps, Inc., MEI, Inc., and
Cantaloupe Systems Inc. have since been dismissed from the 6:11cv15 (Doc. Nos. 64, 92, 174, and 192).
On July 25, 2012, Eon filed its opening claim construction brief in this case (Doc. No.
179) (“PL.’S BR.”). Defendants collectively filed a single response (Doc. No. 190) 2 (“DEF. BR.”),
and Eon filed a Reply (Doc. No. 207) (“REPLY”). On September 6, 2012, the Court held a claim
construction hearing. At the hearing, the Court ordered supplemental briefing by Eon on the
terms “point-to-point communication,” “limited to” and “digital transducers.” (Doc. Nos. 216,
217). Defendants also filed a supplemental brief on the terms. (Doc. Nos. 218, 219).
CLAIM CONSTRUCTION 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) (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 Group, 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.
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
Remaining Defendants Novatel Wireless, Inc. and Enfora, Inc. filed a Notice joining the Landis+Gyr responsive
claim construction brief (Doc. No. 200) (6:11cv15).
normally used consistently throughout the patent.” Id. Differences among claims, such as
additional limitations in dependent claims, can provide further guidance. Id.
“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id.
(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995)). “[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 that 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.
The specification may also resolve ambiguous claim terms “where the ordinary and
accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of
the claim to be ascertained from the words alone.” Teleflex, Inc., 299 F.3d at 1325. For
example, “[a] claim interpretation that excludes a preferred embodiment from the scope of the
claim ‘is rarely, if ever, correct.’” Globetrotter Software, Inc. v. Elam Computer Group Inc., 362
F.3d 1367, 1381 (Fed. Cir. 2004) (quoting Vitronics Corp., 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 v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir.
1988); see also Phillips, 415 F.3d at 1323.
The prosecution history is another tool to supply the proper context for claim
construction because a 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”).
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). 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); see also Springs Window, 323 F.3d at 994 (“The disclaimer . . . must be effected with
‘reasonable clarity and deliberateness.’”) (citations omitted). “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, Inc., 334 F.3d at 1324.
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 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.
A. Overviews of the Patents-in-Suit
As the ‘546 Patent is a continuation of the ‘101 Patent, the patents are essentially
identical except for the claims themselves. The patents “relate to an interactive two-way data
service network for conveying synchronously timed digital messages point to point through the
network.” ‘101 Patent at 1:8–10. The invention was directed at facilitating long distance
communication with subscriber units of maximum effective radiated power under twenty Watts
on the Federal Communication Commission (“FCC”) authorized 218-219 MHz band. Id. at
1:28–35. The network consists of “portable subscriber units of milliWatt transmitting power
capacity,” id. at 3:35–36, base stations capable of transmitting data to the subscriber units, id. at
3:62–65, and “receive only stations” that relay communications from the subscriber units to the
base stations. Id. at 3:65–4:2. Figure 2 illustrates an exemplary base station site:
The base station 3 is located at the center of a local area territory, delineated by ring 19.
Id. at 5:40–47. Subscriber units x 4’, 4”, etc. are distributed throughout the local area territory.
Id. at 5:54–6:4. As the subscriber units transmit at a lower power than the base station, remote
receive-only relay stations 20A-20N are positioned at strategic locations within the territory to
relay communications from the subscriber units to the base station. Id.
Eon accuses Defendants of infringing claims 1, 9, 13–15, 19, and 20 of the ‘101 Patent
and claims 1–3, 5, 7–10, 12–14 of the ‘546 Patent. DEF. BR. at 1.
B. Disputed Terms
1. “receive only,” “receiving only,” “receive only stations”
EON proposes the
Court’s prior construction
for “receive only
stations:” “a receiver for
“a device whose only role with respect to
data messages communicated between a
base station and subscriber units is to
receive them from the subscriber units and
to pass them along to the base station”
EON proposes the
Court’s prior construction
for “receive only digital
receivers:” “a receiver for
receiving and relaying
Defendant Aclara’s proposed
construction: “a device, which is a
separate component and geographically
distinct from the base station, whose only
role with respect to data messages
communicated between a base station and
subscriber units is to receive them from
the subscriber units and to pass them”
To the extent necessary,
EON proposes the Court
construe similar terms
consistent with the
Court’s prior related
otherwise proposes the
terms should have their
plain and ordinary
Eon cites the Court’s prior construction of “receive only stations” and “receive only
digital receivers” in the Verizon case (Eon Corp. IP Holdings, LLC v. Verizon Clinton Center
Drive Corp. et al., Case No. 6:08-cv-385 (E.D. Tex.)) and the Sensus case (Eon Corp. IP
Holdings, LLC v. Sensus USA, Case No. 6:09-cv-116 (E.D. Tex.)) to support its proposed
construction. PL.’S BR. at 4. Defendants argue that Eon’s construction, “a receiver for receiving
transmissions” effectively reads “only” out of the claims. DEF. BR. at 4. Defendants argue that
the Court’s construction in Sensus is too broad because it improperly encompasses a receive only
device that would transmit data messages from the base station to the subscriber unit. Id.
Specifically, Defendants argue that such a construction goes against the specification of the ‘101
and ‘546 Patents, which states that receivers only receive from subscriber units and transmit to
the base station. Id. Accordingly, Defendants contend the Court construed a two-way system
instead of a one-directional system as disclosed. Id. Defendant Aclara further argues that a
“geographically distinct” limitation should be added in the Court’s construction because if the
receive only components were not geographically distinct from the base station, their only
purpose of receiving low power signals from the subscriber units and passing on to the base
station cell would be defeated. Id. at 5.
Not surprisingly, whether the remote receivers must only relay transmissions from the
subscriber units was also the heart of the parties’ dispute in Sensus. SENSUS ORDER at 40 (Doc.
No. 205). The Court adopts and clarifies its rationale in Sensus herein. In Sensus, the Court
In the context of the entire specification, it is clear “receive only” refers to the
communication of messages to and from the base stations cells and the subscriber
units. That is, the subscriber unit can only receive digital data message directly
from the base station cell and not from the reception units. The reception unit’s
role with respect to those messages is simply to receive them from the low
powered subscriber units and to pass them along to the base station cell. This does
not, however, forbid routine handshaking, error checking, and other control
signals from being communicated between the reception units and the subscriber
Id. at 41.
The Court’s opinion in Sensus makes it clear that the Court’s construction does not
expand the claim to something it does not cover. In construing the terms, the Court relied on the
role of the reception unit in the patent to receive data messages from the low powered subscriber
units and to pass them along to the base station cell, while also accounting for “routine hand
shaking, error checking, and other control signals” that may be transmitted in the reverse
direction. Nothing in the Court’s construction then or now is to suggest that a “receive-only
station” would transmit data messages from the base station to the subscriber unit.
Aclara’s proposed construction, which adds a geographic limitation to the location of the
receive-only stations, is not supported by the specification of the ‘101 Patent. The specification
teaches a “plurality of receive only stations distributed throughout the region.” ‘101 Patent 3:
65–66. No context is given as to what is meant by “region,” and when read in light of the
specification, the only geographic limitation is the “base station designated area.” ‘101 Patent 3:
64–65; 4: 2. Further, nothing in the claims themselves limit the “receive-only stations” to being
geographically distinct from the base station. The only basis Alcara has to support its argument is
the role of the receive only stations to allow communication “over a significantly reduced
transmission path distance within the subdivided response area.” DEF. BR. at 6. Without more
specific language or a greater description regarding a geographically distinct requirement in the
specification or the claims, adding the limitation to the Court’s construction is unnecessary and
unfounded. Therefore, the Court clarifies and adopts its prior construction, and construes
“receive only stations” as “a receiver for receiving transmissions.”3
2. “base station broadcast signal”
EON proposes the Court’s prior “a wireless signal transmitted from a
construction: “a wireless signal base station directly to all subscriber
transmitted to a plurality of
units and/or receivers”
subscriber units and/or
Eon again proposes the Court’s prior construction from Sensus for “base station broadcast
signal.” PL.’S BR. at 18. Defendants argue for the addition of the words “directly” and “all” to the
construction to clarify and reflect the disclosed embodiment. DEF. BR. at 13–14. Eon counters
that if the Court were to limit the claim to “all” it would serve “no purpose other than to advance
Defendants’ non-infringement agenda” by avoiding infringement if one subscriber unit does not
receive the broadcast signal. PL.’S BR. at 18. Eon also argues that the addition of directly would
inappropriately limit the claims to video or television transmission applications. PL.’S BR. at 18.
The Court turns first to Defendants’ suggestion to add the term “all” to clarify the Court’s
Sensus opinion. In Sensus, all three parties proposed constructions arguing for transmission “to a
plurality of subscriber units.” SENSUS ORDER at 27. However, in Sensus, the Court made clear
that the patents-in-suit required transmission to all.
Finally, a broadcast signal may be intended for a specific subscriber unit, but it
must be broadcast to all units. This is inherent in the term, as the claim language
specifically describes the signal as a broadcast signal, as opposed to a multicast or
unicast signal. Any given message transmitted by the base station to a subscriber
unit is sent to all units.
Id. at 30.
The Court construes the related terms in the same manner.
The Court’s Sensus opinion makes clear that the broadcast signal must be to all units, and
its reasoning for that conclusion is evident. To clarify, the Court’s opinion states that the signal
must be transmitted to all, not necessarily received by all. As the patents-in-suit set out, “base
station broadcast signal” refers to the transmitted signal; thus, it is irrelevant whether the signal is
actually received by all units. ‘101 Patent 11:49–55, ‘546 Patent 11:20–26. In this regard, the
term “all” in the construction better encompasses the claims than a “plurality,” which designates
only two or more. Therefore, the Court finds the limitation “all” to be appropriate and
advantageous in clarifying its Sensus opinion.
Turning to “directly,” the parties dispute whether the limitation, if added, would foreclose
transmission through an intermediary. While the Court does not believe the addition of “directly”
to the construction would limit the claims to video or television transmission applications, it does
not find a sufficient reason to add the term to the Court’s prior construction given the absence of
any supporting evidence in the specification. Defendants point to Figures 1, 6A, and 7A and a
characterization by the inventor in the related ‘491 Patent to evidence direct transmission, but
offer no further evidence of this limitation in the ‘101 or ‘546 Patents. While the Figures show
directional arrows with no intermediaries to support an inference of direct transmission, the
Court has no sound basis to hold that the transmission must be “directly” as a matter of law
without any additional supporting evidence in the patents-in-suit.
For the reasons stated herein, the Court construes “base station broadcast signal” as “a
wireless signal transmitted to all subscriber units and/or receivers.”
3. “synchronously related,”
“multiplexed synchronously related digital data messages”
“synchronously related to [a/the/said] [base station broadcast signal/at least one data
message that is transmitted]”
EON proposes these terms be
“synchronously related” means
construed consistent with the
“related by a precise time
Court’s prior constructions.
EON proposes the Court’s prior
construction for “synchronously
related:” “related in time and/or
related digital data messages”
means “multiple digital data
messages interwoven into a single
signal according to a precise time
EON proposes the Court’s prior
construction for “multiplexed:”
“multiplexed” means “combined
“synchronously related to
messages transmitted over a single [a/the/said] [base station broadcast
signal/at least one data message
that is transmitted]” means “related
by a precise time function, namely
transmitted in a response interval
of the [broadcast signal/at least one
data message that is transmitted]”
Based on the parties’ briefing (Doc. Nos. 179, 190) and arguments at the September 6,
2012 Markman hearing, the parties’ dispute surrounds the meaning of “synchronously related.”
The parties include the term “multiplexed,” and Eon proposes it to mean “combined messages
over a single channel,” PL.’S BR. at 15, but Defendants only define “multiplexed synchronously
related digital data messages” as “multiple digital data messages interwoven into a single signal
according to a precise time function” and do not brief directly on the meaning of “multiplexed.”
DEF. BR. at 10–13. To the extent there is a dispute, the Court construes “multiplexed” by its plain
and ordinary meaning to be “combined messages transmitted over a single channel,” and adopts
the reasoning set forth in Sensus. SENSUS ORDER at 47.
Regarding “synchronously related,” Eon argues that the Court should adopt its prior
construction in Sensus, “related in time and/or frequency” for the reasons set forth therein. PL.’S
BR. at 11. Defendants argue that Eon’s proposed construction is too broad and “synchronously
related” must be “related by a precise time function.” DEF. BR. at 10. Defendants point to
multiple portions of the specification where “synchronous” and related words are tied directly to
“time” “timing” and “timed.” ‘101 Patent: 1:8–10, 2:36–39, 39–43, 3:6–11, 7:43–45, 9:44–49,
Turning to Defendants’ argument, the Court rejects the proposed addition of a “precise
time function.” First, although the portions of the specification Defendants offer do support the
conclusion that the synchronized signals are timed, nothing in the specification suggests the
Court limit the term to a precise time function. Second, the claims of the ‘101 and ‘546 Patents
provide some guided insight as to the relationship between “synchronously related” and a timing
function. Claim 1 of both the ‘101 and ‘546 Patents refers to “synchronously related” in one part
of the claim and “synchronously related to said base station broadcast signal and timed” in
another. ‘101 Patent 11:36, 53–54; ‘546 Patent 11: 3-4, 24-25. This disparity creates a
presumption that the claim terms “synchronously related” and “synchronously related … and
timed” have different meanings. Exchange v. Int’l Sec. Exchange, LLC, 677 F.3d 1361, 1369
(Fed. Cir. 2012) (stating claim construction principles create a presumption that different claim
terms have different meanings). If “synchronously related” meant only “related by a precise time
function,” as Defendants contend, it would render the claim language redundant where it says
“synchronously related … and timed.” In sum, while Defendants’ proposal encompasses one of
the disclosed embodiments, it is unnecessarily limiting and creates a redundancy in claim
Therefore, the Court construes “synchronously related” as “related in time and/or
4. “subscriber units limited to digital processing facilities comprising digital transducers”
“having only digital processing facilities,
No construction is
which include digital transducers, but do not
also contain non-digital transducers and other
A “digital transducer” is “any transducer that
presents information as discrete samples and
that does not introduce a quantization error
when the reading is represented in a digital
The disputed terms “limited to digital processing facilities” and “digital transducers”
appear only in conjunction in Claim 19 of the ‘101 Patent. ‘101 Patent 14: 34–35. Eon originally
proposed “no construction necessary.” PL.’S BR. at 19. However, at the September 6, 2012
Markman hearing, the Court was of the opinion that a construction needed to be proposed and
therefore ordered supplemental briefing. Eon submitted a supplemental construction (Doc. No.
217) (“PL.’S SUPP. BR.”) and Defendants also filed a supplemental claim construction brief (Doc.
No. 219) (“DEF. SUPP. BR.”), both addressing “limited to” and “digital transducers.”
In its supplemental brief, Eon argues that “limited to” defines a set of subscriber units as
digital processing facilities comprising a digital transducer and receiver. PL.’S SUPP. BR. at 1.
Both parties agree that the “limited to” modifies and restricts the subscriber units of Claim 19.
Id., DEF. BR. at 15. The parties’ dispute is really whether the subscriber units limited to digital
processing facilities can contain any analog (non-digital) processing circuitry. Defendants argue
that the plain language of “limited to” means only digital processing facilities and therefore
digital circuitry. DEF. BR. at 16. Eon argues that the subscriber units of Claim 19 may interact or
associate with elements that are non-digital, i.e. analog sensors and transducers. PL. SUPP. BR. at
Defendants miss the mark by arguing that “limited to” means only digital circuitry.
Clearly, the “limited to” language of Claim 19 restricts the encompassed subscriber units to
“digital processing facilities,” but it does not follow that those facilities must have only digital
processing circuitry without other evidence leading to such a conclusion. Defendants offer no
support for their leap to this conclusion other than superimposing this ordinary term, which
modifies the preceding term, onto a term of art following it. “Limited to” has a plain and
ordinary meaning that can be easily understood as a limitation placed upon the subscriber units
of Claim 19, precisely why neither party disputes its modification and restriction of the
subscriber units in Claim 19. Although “limited to” restricts and modifies the subscriber units, it
does nothing to restrict what is meant in the art by “digital processing facilities comprising
digital transducers.” Therefore, the Court finds no construction necessary for “limited to” and
construes it with respect to its plain and ordinary meaning.
The issue of digital versus analog arises in the parties’ proposed definitions of “digital
transducers.” In its supplemental claim construction brief, Eon defines “digital transducer” as “a
device that (1) produces digital data in response to receiving energy in some form; or (2)
produces an output responsive to received digital data.” PL. SUPP. BR. at 1. Particularly, Eon
argues that a digital transducer may receive non-digital input. Id. at 3. Eon submits that the
specification supports this contention where it describes “transducer 53” as “typically a manual
keyboard or a digital sensing instrument.” ‘101 Patent 10:18–20. Further, Eon cites extrinsic
evidence defining “digital transducer” as “[a] transducer that measures physical quantities and
transmits the information as coded digital signals rather than as continuously varying currents or
voltages.” MCGRAW HILL ELECTRONICS DICTIONARY 126 (6th ed. 1994). Defendants cite to the
paragraph titled “Transducers” of the book CONTROL SENSORS AND ACTUATORS, where it states
“[a]ny transducer that presents information as discrete samples and that does not introduce a
quantization error when the reading is represented in the digital form may be classified as a
Eon’s support in the specification, “transducer 53, typically a manual keyboard or a
digital sensing instrument” sets up a conflicting view of what is disclosed. A “manual keyboard”
suggests a broader interpretation is required to define the actual disclosed invention, while “a
digital sensing instrument” seems to preclude a digital instrument that senses analog data that is
then converted into digital data. Similarly, Defendants’ own extrinsic source contradicts
Defendants’ argument that digital processing facilities must contain only digital circuitry by
expressly stating the possibility of analog output processing in a digital transducer:
Nevertheless, the sensor stage of digital measuring devices is usually quite similar
to that of their analog counterparts. There are digital measuring devices that
incorporate microprocessors to perform numerical manipulations and
conditioning locally and provide output signals in either digital or analog form.
Although conflicting, both parties’ supporting evidence suggests there is nothing in the
‘101 Patent to exclude the possibility of an analog output in Claim 19. The “limited to” language
on the “digital processing facilities,” of which the “digital transducer” is a part, is not enough to
limit the claims to only “non-digital circuitry” when the specification and extrinsic evidence
suggest otherwise. Further, the interplay between the “digital processing facilities” and the
“digital transducer” is evidenced by “comprising” joining the claim terms. “‘Comprising’ is a
term of art used in claim language which means that the named elements are essential, but other
elements may be added and still form a construct within the scope of the claim.” Genentech, Inc.
v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997). Thus, the “digital processing facilities”
must contain “digital transducers,” but may also contain additional elements within the scope of
DE SILVA, CLARENCE W., CONTROL SENSORS AND ACTUATORS 218 (David Ershun ed. 1989).
the claim. Since at least the “digital transducer” part of the “digital processing facility” can
produce analog output, limiting the “digital processing facility” to only digital circuitry is
Therefore, the Court construes a “digital transducer” as one that measures physical
quantities and transmits the information as coded digital signals rather than as continuously
varying current or voltages, i.e., analog signals. A “digital transducer,” as used in the claims
does not preclude a transducer that measures quantities in analog format, and then converts those
analog signals to digital signals for transmission.
5. “predetermined base station geographic area” and “predetermined geographic area”
“An area with geographic boundaries that are
determined prior to the deployment of the base
station. The area does not substantially overlap
with adjacent geographic areas. The area is
designed to have within it a single base station
and multiple subscriber units in which the base
station only communicates with subscriber
units within the area”
No construction is
Eon contends that the terms need no construction and should be construed pursuant to
their plain and ordinary meanings. PL.’S BR. at 25. In support of its construction, Defendants
argue that a “predetermined base station geographic area” must have boundaries that are
determined before deployment of the base station. DEF. BR. at 27. Defendants point to Figure 2
to show the boundaries of this predetermined area and demonstrate that there is no overlap
between adjacent cells. Id. at 26. Eon argues that the boundaries of the base station geographic
area need not be determined prior to deployment because the base station is not tied to a
stationary cell tower or other base station repeater cell equipment, but rather is a “geographic
area where deployment of the communication service is desired.” REPLY at 8 (Doc. No. 207).
Eon cites portions of the specification describing the Federal Communications Commission
(“FCC”) licensing scheme for establishing the local area cell site to support its contention. ‘101
Patent 1:28–35, 45–47. Eon also argues that if the term were construed as Defendants suggest,
networks could never evolve or improve. REPLY at 8.
Nothing in the intrinsic record suggests that a permanent boundary for the base station
geographic area be determined prior to deployment of the base station. Defendants mainly rely
on the use of the word “predetermined” to come to the conclusion that the base station
geographic area must be determined prior to deployment. As Eon points out, the “predetermined
base station geographic area” cannot be permanently defined prior to deployment; in most
instances, depending on the topography and changes in the environment of the area, adjustments
must be made to determine whether the base station will be able to reliably communicate with
the subscriber units. Id. at 9, see also FN 30, In the Matter of Amendment of Parts 0, 1, 2, and 95
of the Commission’s Rules to Provide for Interactive Video Data Services, Notice of Proposed
Rule Making, (Doc. No. 91-2) (The FCC stated that: “[e]ach applicant must submit as part of the
application a detailed plan indicating how the frequency segment requested will be utilized
including the number and location of CTUs and how the proposed system will provide service to
at least 50 percent of the area within the protected service area,” suggesting modification for
providing reliable service.)
The Court finds the terms do not require construction because their meanings are clear in
the context of the claims and will be readily understandable to the jury. O2 Micro Int’l Ltd. v.
Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008). Although the Court does
not construe these terms, the parties may not interpret them in a manner inconsistent with this
6. “cell site divided into a plurality of subdivided zones”
“a cell site subdivided into a plurality
of fixed, geographically bound areas,
wherein subscriber units in one such
area do not communicate with receive
only digital receivers contained in any
other such fixed, geographically bound
No construction is
Eon contends that “cell site divided into a plurality of subdivided zones” needs no
construction and should be construed pursuant to its plain and ordinary meaning. PL.’S BR. at 27.
Defendants wish to limit the term to “fixed geographically bound areas” and prohibit subscriber
unit communication with receive only digital receivers between the fixed areas. DEF. BR. at 29.
Regarding the “fixed” limitation, Defendants claim the specification supports the
limitation where it states “fixed-location relay stations 20A-20N are positioned at strategic
locations within the cell area.” ‘546 Patent 5:43–45. However, that description refers directly to
the remote relay stations. It does not follow, nor is it supported by the intrinsic record, that the
subdivided zones must be “fixed.” Therefore, the Court finds such a limitation improper.
Turning to Defendants’ proposed limitation that the subscriber units “do not
communicate with receive only digital receivers in any other such fixed, geographically bound
area,” the parties dispute whether a subscriber unit can communicate with more than one receiver
during a “hand off.”5 Defendants point to Figure 2 to show the fringe areas where the hand off
occurs, but point to no evidence to support their contention that at all times the subscriber unit
A hand off occurs when a subscriber unit moves from one stationary local site to another. ‘546 Patent: 8:38–40.
only communicates with a receiver in any other zone. DEF. BR. at 30. Eon points to several
places in the ‘101 Patent that suggest transmissions are sent to multiple receivers. ‘101 Patent 9:
27–31, 26–28, 8: 31–34.
The Court is not convinced that Defendants’ limitation on communication between the
subdivided zones is necessary. At best, Defendants’ construction seems extraneous to the claim
and unsupported by the intrinsic evidence. Further, the Court finds the term “cell site divided
into a plurality of subdivided zones” to have a plain and ordinary meaning that would be easy for
a jury to understand in light of the claims. Therefore, the Court finds no construction necessary.
Although the Court does not construe these terms, the parties may not interpret them in a manner
inconsistent with this opinion.
No construction is
“capable of being easily and conveniently
moved from one location where the subscriber
unit is operable to a second location where the
subscriber unit is operable, and designed to
operate without a fixed location”
No construction is
“capable of being easily and conveniently
moved from one location where the subscriber
unit is operable to a second location where the
subscriber unit is operable, and designed to
operate without a fixed location”
The issue of portability was extensively briefed by the parties in Sensus and the parties in
the instant case. Eon contends that neither “mobile” nor “portable” requires a construction other
than a plain and ordinary meaning. PL.’S BR. at 6, 9. Defendants contend “mobile” and
“portable” are used synonymously in the patents-in-suit and therefore offer the same argument
and construction for both terms.
DEF. BR. at 7. The parties’ dispute comes down to the
distinction drawn in the patents-in-suit between “fixed” or “stationary” and “mobile” or
“portable.” (‘101 Patent 1:16–18 “wherein the subscriber units comprise low energy, stationary
and mobile, digital transceivers;” ‘101 Patent 4:62–63 “subscriber units for digital only fixed or
mobile communication services.”)
Defendants argue that Federal Circuit precedent would
require these express teachings of the patent to be defined so the jury can understand that these
terms “do not cover fixed or stationary products that are only theoretically capable of being
moved.” DEF. BR. at 8 (citing O2 Micro, 521 F.3d at 1362).
Here, Defendants attempt to weave the difference between “stationary” and “mobile” into
a long and unnecessarily complicated definition of “portable” and “mobile.” Defendants are
asking for nothing that the plain and ordinary meaning of the terms cannot do on their face—
distinguish from “stationary” or “fixed.” Accordingly, the specification does not describe these
terms other than using the words “mobile” or “portable” and describing generally how the
subscriber units can be moved. ‘101 Patent 6:15–21, 1–4. When deciding this issue in Sensus,
the Court previously made clear that “nothing in the specification suggests that the terms were
used in a way inconsistent with their plain and ordinary meanings – i.e., ‘capable of being carried
or moved about,’ MERRIAN-WEBSTER’S COLLEGIATE DICTIONARY 907 (10th ed. 1999), or
‘capable of being easily and conveniently transported.’ MCGRAW-HILL DICTIONARY
SCIENTIFIC AND TECHNICAL TERMS 1550 (5th ed. 1994); see also CSS Fitness, 288 F.3d at 1366
(stating there is ‘a heavy presumption that a claim term carries its ordinary and customary
meaning’ (quotation omitted)).”
Although the Defendants in Sensus were advocating a position that the subscriber units
be readily operable while moving, the underlying rationale remains the same for Defendants’
current position. Based on the use of the terms throughout the ‘101 and ‘546 Patents, and their
description in the specification, these terms require nothing more than an interpretation
consistent with their plain and ordinary meaning. Ultimately, this is the definition Defendants
attempt to offer the Court as a proposed construction, only adding an infringement-based agenda
that complicates the plain and ordinary meaning of the terms as they are read in the context of
the claims. The Court declines to construe the terms in light of Defendants’ accused products.
Having resolved the parties’ claim scope dispute, the Court finds the terms do not require
construction because their meanings are clear in the context of the claims and will be readily
understandable to the jury. O2 Micro, 521 F.3d at 1362; Fenner Inv. Ltd. v. Microsoft Corp., No.
6:07-cv-8, 2008 WL 3981838, at *3 (E.D. Tex. Aug. 22, 2008) (finding a court need not construe
a disputed term so long as it has resolved the claim scope dispute between the parties). Although
the Court does not construe these terms, the parties may not interpret them in a manner
inconsistent with this opinion.
9. “point-to-point communication”
“direct communication between only two
No construction is necessary.
Initially, Eon argued no construction was necessary for “point-to-point communication.”
PL.’S BR. at 24. However, at the September 6, 2012 Markman hearing, the Court was of the
opinion that a construction was necessary and ordered supplemental briefing. Both Eon and
Defendants filed supplemental briefs on “point-to-point communication.” (Doc. Nos. 216, 218).
Eon still contends no construction is necessary, but provides the following construction at
the Court’s request: “communication having the ability within a transmission to identify and
distinguish points, including the point of origin, intermediate points, or the desired final
destination point.” PLAINTIFF’S SUPPLEMENTAL BRIEF at 2 (Doc. No. 216) (“PL.’S SUPP. BR.”).
Defendants argue that “point-to-point communication” must be direct and only between two
points. DEFENDANTS’ SUPPLEMENTAL BRIEF at 3 (Doc. No. 218) (“DEF. SUPP. BR.”).
Specifically, Defendants contend that the system must know the point of origin and the end point
on any leg of signal length, and that there must only be one point of origin and one end point for
each signal length. Id. Defendants contend that otherwise the signal would be broadcast or “point
to multipoint.” Id.
Turning first to Defendants’ proposed limitation of “direct,” Defendants rely on several
extrinsic sources to determine how one of ordinary skill in the art would have understood “pointto-point communication” at the time of the invention. DEF. BR. at 22. Specifically, Defendants
rely on a definition from Technical Aspects of Data Communication (3d ed. Digital Press, 1988):
“1. communication connection between only two points; and 2. the connection is established
without the use of any intermediate terminal or computer.” Id. (emphasis added). However,
Defendants leave out a portion of the definition that states “[t]he connection may include
switching facilities.” The Abstract of the ‘101 and ‘546 Patents similarly states “[m]essages are
compiled and relayed by satellite to a network switching center transmitter site for nationwide
point-to-point communications.” ‘101 ABSTRACT, ‘546 ABSTRACT. Thus, both the patents-in-suit
and the extrinsic evidence contemplate an intermediary of at least some form, namely, a
switching center. Accordingly, the Court finds “direct” to be an unnecessary limitation.
For the proposition that “point-to-point communication” be between two and only two
points, Defendants also rely primarily on extrinsic evidence in the technical field. As such, the
sources the Defendants rely on have at best only marginal relevance to the proper construction of
“point-to-point communication” as used in the patents-in-suit. Indeed, other sources have
different definitions. The MCGRAW-HILL DICTIONARY
1535 (5th ed. 1994), for example, defines “point-to-point communications” in the field of
communications as “[r]adio communication between two fixed stations.” There is no intrinsic
evidence that limits the term in the manner suggested by Defendants. In fact, the Abstract of the
patents-in-suit discuss “nationwide point-to-point communication” to more than one subscriber
unit at “different geographic locations,” suggesting a “only two point” limitation may be too
narrow in the context of the patents-in-suit. ‘101 ABSTRACT, ‘546 ABSTRACT.
Although Eon re-urges its contention that no construction is necessary, it gives no basis,
through declarations or other evidence, on which the Court could rely to conclude “point-to-point
communication” could be understood by its plain and ordinary meaning.
When examining Claim 1 of the ‘101 Patent, the claim calls for:
…base station data processing and transmission facilities for transmitting to a set
of local subscriber units and receiving from a subset of those local subscriber
units multiplexed synchronously related digital data messages of variable lengths
for point-to-point communication between individual subscribers with remotely
located reception stations…
‘101 Patent 11:33 –39 (emphasis added).
As it reads, Claim 1 indicates that “point-to-point communication” refers to the
communication link between individual subscribers and remotely located reception stations. The
specification similarly explains, in reference to Figure 1, “a set of subscribers at response units 4
communicate over the wireless 218-219 MHz r-f links 5 to either a set of local remote receivers
20, each connected by a link 21 such as a telephone line to repeater cell 3, or to a local area base
station repeater cell 3, one of a set of such repeater stations in different geographic locations for
communicating via satellite 1 under control of a data and switching control center 2.” ‘101
Patent 5:2–9. In that context in Claim 1 of the ‘101 patent, “point-to-point communication”
refers to communication between two points, namely between subscribers and the “remotely
located reception stations.” That does not, however, mean that there can be only “two points,” as
the Defendants’ proposed construction would require. That is, the ‘101 Patent clearly
contemplates multiple subscribers communicating with one or more “remotely located reception
stations.” Moreover, it also uses “point-to-point” in a broader sense in other contexts. For
example, “FIG. 1 is a block system diagram of a nationwide interactive video data satellite
system embodiment of the invention that provides point-to-point communications between
subscriber response units in local service areas and with various vendors of goods and
services.” ‘101 Patent 4:25–29.
In that context, “point-to-point communications” refer to
communications between subscriber response units and “various vendors of goods and services,”
which may include multiple “points.”
Turning to Claim 1 of the ‘546 Patent, the claim provides:
…base station data processing and transmission means for transmitting to a set of
said local subscriber units contained within said local base station geographic area
associated with said local base station repeater cell means and receiving from a
subset of said local set of subscriber units multiplexed synchronously related
digital data messages of variable lengths for point-to-point communication
between said local base station repeater cell means and said subset of said local
‘546 Patent 10:65–67, 11:1–7 (emphasis added).
In Claim 1 of the ‘546 Patent, “point-to-point communication” refers to the
communication link between the “local base station repeater cell means” and the “subset” of
“local subscriber units.” Similarly, the claim language of the ‘546 Patent does not require that
there can be only two points, as the Defendants’ proposed construction would suggest. The
patent clearly contemplates multiple subscriber units and communication between a subscriber
unit and more than one “local base station repeater cell means,” at least in the case of mobile
subscriber units moving between “local base station repeater cell means.”
Accordingly, the Court construes “point-to-point communication” in the context of Claim
1 of the ‘101 Patent as a communication link between individual subscribers and remotely
located reception stations. That includes multiple subscribers communicating with one or more
“remotely located reception stations.” The Court construes “point-to-point communication” in
the context of Claim 1 of the ‘546 Patent as a communication link between the “local base
station repeater cell means” and the “subset” of “local subscriber units.” That includes multiple
subscriber units and communication between a subscriber unit and more than one “local base
station repeater cell means.”
No construction is necessary.
“effective radiated power (ERP) of not
more than 0.5 Watt”
10. “low power”
When construing “low power” in Sensus, the Court concluded “the specification
describes ‘low power subscriber interaction units’ as the sort of units intended for use on the
FCC 218-219 MHz band. ‘101 Patent at 1:30–35. The maximum effective radiated power of
such units was less than twenty Watts. Id. at 1:33–35. Thus, the specification defines ‘lower
power’ and ‘limited power’ to ‘a maximum effective radiated power of less than twenty Watts.’”
SENSUS ORDER at 46.
Defendants now offer a new prosecution history estoppel argument, limiting “low power”
to less than 0.5 Watt. DEF. BR. at 19. “The doctrine of prosecution disclaimer is well established
in Supreme Court precedent, precluding 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) (internal citations omitted). However, the purported disclaimer must
not merely be an isolated statement, lending ambiguity to whether the patent applicant clearly
disavowed the particular subject matter; it must be clear and unambiguous to constitute a clear
disavowal of scope. Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1356–57 (Fed. Cir.
Defendants argue that Eon “clearly disavowed claim scope for systems having greater
than 0.5 Watts ERP by representing to the European Patent Office (“EPO”) in 1996 that a prior
art patent system having 0.5 Watts ERP does not disclose ‘low power.’” DEF. BR. at 19–20. The
EPO examiner rejected Eon’s claims on June 13, 1996 over the prior art teaching of Freedburg,
which incorporates by reference the Cooper Patent (U.S. Patent No. 3,906,166) (the “‘166
Patent”). It is the Cooper Patent, referenced in the Freedburg Patent, that discloses a 1 Watt raw
output transmitter amplifier. ‘166 Patent Fig. 9. Defendants argue that through Eon’s response
arguing the dependent claims are independently patentable, they disclaimed coverage over
systems having 1 Watt or greater transmitter amplifiers. DEF. BR. at 20. Accordingly, because
Eon argues there is attenuation in the output path of 50%, Defendants claim the transmitter
amplifier is attenuated to 0.5 Watt ERP.
The Court disagrees with Defendants that Eon’s response was a clear and unambiguous
disavowal of claim scope. In Eon’s response, it argued simply that the amended claims are
different from the cited references due to their dependency on Claim 1, and merely distinguished
that Claim 8 recites the maximum peak output power of the subscriber units in the milliwatt
power range. EON RESPONSE TO EPO December 19, 1996, at M-76. The Cooper reference is only
a reference within the prior art cited by the EPO examiner, and Eon’s statement does not clearly
and unambiguously disclaim systems with ERP greater than 0.5 Watt. Under these facts, such a
reference is too tenuous to constitute a clear and unambiguous disclaimer. As such, the Court
finds Defendants’ prosecution history estoppel argument unpersuasive.
The Court therefore adopts its Sensus opinion in construing “low power.”
For the foregoing reasons, the Court adopts the constructions set forth above.
So ORDERED and SIGNED this 20th day of November, 2012.
JOHN D. LOVE
UNITED STATES MAGISTRATE JUDGE
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