Azure Networks LLC et al v. CSR plc et al
Filing
266
MEMORANDUM AND OPINION and ORDER. Signed by Magistrate Judge John D. Love on 1/15/2013. (gsg)
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
AZURE NETWORKS, LLC et al.,
vs.
CSR PLC, et al.
§
§
§
§
§
NO. 6:11cv139 LED-JDL
PATENT CASE
MEMORANDUM OPINON AND ORDER
This claim construction opinion construes the disputed terms in U.S. Patent No.
7,756,129 (“the ‘129 Patent”). For the reasons stated herein, the Court adopts the constructions
set forth below.
BACKGROUND
Plaintiffs Azure Networks LLC and TRI-County Excelsior Foundation (collectively
“Plaintiffs”) allege Defendants1 infringe the ‘129 Patent (“patent-in-suit”). The parties have
presented extensive claim construction briefing (Doc. Nos. 237, 249, 253).
On October 16, 2012, Plaintiffs filed their opening claim construction brief in this case
(Doc. No. 237). (“PLS.’ BR.”). Defendants collectively filed a single response (Doc. No. 249)
(“DEFS.’ BR.”), and Plaintiffs filed a Reply (Doc. No. 253) (“REPLY”).
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
1
Defendants are CSR plc, Cambridge Silicon Radio International LLC, Atheros Communications, Inc., Broadcom
Corporation, Marvell Semiconductor, Inc., Qualcomm Incorporated, Ralink Technology Corporation (Taiwan),
Ralink Technology Corporation (USA), and Texas Instruments, Inc. (collectively “Defendants”).
1
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.
2003).
Claim language guides the Court’s construction of claim terms. Phillips, 415 F.3d at
1314. “[T]he context in which a term is used in the asserted claim can be highly instructive.” Id.
Other claims, asserted and unasserted, can provide additional instruction because “terms are
normally 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
2
lexicographer. See Irdeto Access, Inc. v. EchoStar Satellite Corp., 383 F.3d 1295, 1301 (Fed.
Cir. 2004).
The specification may also resolve ambiguous claim terms “where the ordinary and
accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of
the claim to be ascertained from the words alone.” Teleflex, 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”).
The well-
established doctrine of prosecution disclaimer “preclud[es] patentees from recapturing through
claim interpretation specific meanings disclaimed during prosecution.” Omega Eng’g Inc. v.
Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). 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 Fashions LP v. Novo Indus., LP, 323 F.3d 989, 994 (Fed. Cir.
2003) (“The disclaimer . . . must be effected with ‘reasonable clarity and deliberateness.’”)
3
(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.
DISCUSSION
A. Overviews of the Patent-in-Suit
The ‘129 Patent is titled “Personal Area Network with Automatic Attachment and
Detachment” and relates to wireless communication between two or more devices located in
close proximity to one another. More specifically, the ‘129 Patent relates to wireless
communication between a processor unit and multiple peripherals. The ‘129 Patent discloses a
Personal Area Network (“PAN”), which is managed by a hub device and can support wireless
4
“attachment” of multiple Personal Electronic Accessories (“PEAs”). ‘129 Patent at 3:10–32. The
PAN is diagrammed in Figure 1:
The PAN 100, as shown in Figure 1, contains a single hub device (110), located in the
center of the diagram, and surrounded by multiple PEAs (120). Id. at 3:27–29.
Plaintiffs accuse Defendants of infringing claims 43, 45–49, 51–53, 55, 57–59, 61, 63–
64, 75, 79, 81, 95, 111, 124–129, 132, 134, 137, 140, 145–148, and 156, all of which depend
from Claim 14 and which are referred to by the parties as “hub device claims.” PLS.’ BR. at 4–5.
Plaintiffs also accuse Defendants of infringing claims 221, 223–227, 229, 233, 236–237, 257,
5
259, 262–263, 302–304, 306, 311, 323, 334, all of which depend from Claim 27 and which are
referred to by the parties as the “peripheral device claims.” Id. at 5.
B. Disputed Terms
Claim Language
1. “MAC address”
129: 43, 221
Plaintiff’s Proposal
Defendants’
Proposal
Court’s Construction
“an address that
uniquely identifies a
device or group of
devices on a shared
communication
medium”
“a device identifier
created by the hub
device”
“a device identifier
generated by the hub
device”
Plaintiffs rely on the claims to support their proposed construction, citing Claims 43 and
221 as examples:
43. The hub device according to claim 14, wherein the hub device is configured
such that a plurality of MAC addresses is capable of being used for identification
in association with the first peripheral device. (‘129 Patent at 16:41–44).
221. The peripheral device according to claim 27, wherein the peripheral device is
configured such that a plurality of MAC addresses is capable of being used for
identification in association therewith. (‘129 Patent at 26:26–29).
PLS.’ BR. at 10.
Plaintiffs contend that the ‘129 Patent discloses a MAC address consistent with the
ordinary meaning of MAC address as understood by one of ordinary skill in the art. Plaintiffs
cite the rules and conventions of the Institute of Electrical and Electronic Engineers (“IEEE”) as
well as dictionary definitions to support their proposition that a MAC address uniquely identifies
a device or group of devices. See, e.g., PLS.’ BR. at 11, citing IEEE COMPUTER SOCIETY, IEEE
STANDARD
FOR
LOCAL
AND
METROPOLITAN AREA NETWORKS: OVERVIEW
AND
ARCHITECTURE
20–23 (2001); FRANK HARGRAVE, HARGRAVE’S COMMC’NS DICTIONARY at 313 (IEEE Press
6
2001) (defining MAC address as: “a 48 bit number unique to each network interface card (NIC).
Generally, the number is programmed into the NIC at the time of manufacture; hence, it is LAN
and location independent.”); HARRY NEWTON, NEWTON’S TELECOM DICTIONARY 450 (CMP
Books 2002) (discussing a MAC address as: “in the form of a 48-bit number, formally known as
an EUI-48 (Extended Unique Identifier-48), which is unique to each LAN (Local Area
Network)”). Plaintiffs argue that this ordinary meaning is consistent with the disclosure of the
‘129 Patent, whereby MAC addresses can be both universally administered addresses or locally
administered addresses. PLS.’ BR. at 11–12.
Defendants argue that the term “MAC address,” as used in the ‘129 Patent, has a meaning
other than the ordinary meaning argued by Plaintiffs. DEFS.’ BR. at 4. Specifically, Defendants
point out that MAC address is defined as “Media Access address” in the ‘129 Patent, which is
different than the customary “Medium Access Control address.” Id. Defendants similarly point
to the inventor’s own documents which refer to MAC as “Media Access,” not “Medium Access
Control,” suggesting the inventor acted as his own lexicographer in defining the term “MAC
address.” Id. at 5. In this regard, Defendants assert that the only embodiment disclosed by the
‘129 Patent shows the hub device creating and assigning the MACs. Id. at 10. (the hub “assigns a
MAC address to the PEA”) ‘129 Patent at 11:2–4. Therefore, Defendants argue that Plaintiffs’
proposed construction encompasses a network not disclosed by the ‘129 Patent or contemplated
by the patentee. DEFS.’ BR. at 10–11.
On the lexicography issue, Plaintiffs reply that there is not a clear intent by the patentee
to change the intended meaning of “MAC address” evidenced in the ‘129 Patent. REPLY at 1.
Further, Plaintiffs contend the patentee’s use of “Media Access” is insignificant because it is
merely the plural form of the singular noun “Medium.” Id. Plaintiffs also contend that
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Defendants’ construction excessively complicates an infringement analysis because one would
be required to determine (1) whether an address was created by a particular device; and (2)
whether that device was a hub device. PLS.’ BR. at 13. Finally, Plaintiffs argue that Defendants’
construction, which requires creation by the hub device, would exclude dependent claims
involving “self-selected MAC addresses (AMACs)” and “attach MAC (AMAC) addresses” used
during peripheral device attachment. REPLY at 3; ‘129 Patent at 7:61-62; 10:50-51.
Turning first to whether the patentee acted as his own lexicographer, the ‘129 Patent
suggests that the patentee did in fact define MAC address in his own unique way. “When a
patentee acts as his own lexicographer in redefining the meaning of particular claim terms away
from their ordinary meaning, he must clearly express that intent in the written description…the
statement in the specification must have sufficient clarity to put one reasonably skilled in the art
on notice that the inventor intended to redefine the claim term.” Merck & Co. v. Teva Pharms.
USA, Inc., 395 F.3d 1364, 1370 (Fed. Cir. 2005) (citations omitted). “The specification acts as a
dictionary ‘when it expressly defines terms used in the claims or when it defines terms by
implication.’” Bell Atl. Network Servs., Inc., 262 F.3d at 1268 (quoting Vitronics Corp., 90 F.3d
at 1582).
Here, in the specification, the patentee expressly defined MAC address as “Media Access
address” (“[e]ach device is identified by a Media Access (MAC) address”). ‘129 Patent 3:31–32.
The specification then goes on to consistently discuss the generation and assignment of the MAC
address by the hub device. (“The Hub 110 then assigns a MAC address to the PEA address…”
11:2–3; “the Hub 110 sends the new MAC address 610 in an attachment assignment message to
the now-identified PEA…” 11:55–57; “[t]he unattached PEA 120 then waits for an attachassignment with an assigned MAC address from the Hub 110” 12:22–24; “a hub device
8
connected to multiple peripheral devices, includes receiving an attach request from the
unattached peripheral device, the attach request identifying the unattached peripheral device to
the hub device; generating a new address to identify the unattached peripheral device in
response to the received attach request” 1:64–67, 2:1–2 (emphasis added)). As is the case here,
“terms coined by the inventor are best understood by reference to the specification.” Bell Atl.
Network Servs., Inc., 262 F.3d at 1271. The specification of the ‘129 Patent consistently
describes a MAC address assigned and generated by the hub device in accordance with the
disclosed invention, a PAN wherein all communication is orchestrated by the Hub. Therefore,
the Court finds that the patentee did coin a new term, which should be construed in light of its
express and consistent use in the specification. Intervet Inc. v. Merial Ltd., 617 F.3d 1282, 1287
(Fed. Cir. 2010) (noting that “terms coined by the inventor are best understood by reference to
the specification”).
The core of the parties’ dispute comes down to whether the “MAC address” must be
created by the hub device. Plaintiffs argue that the self-selection of MAC addresses by the PEAs
disclosed in the ‘129 Patent supports their position that “MAC address” has its plain and
ordinary meaning, and regardless, has a meaning broader than Defendants’ suggestion that it be
created only by the hub device. Specifically, Plaintiffs point to the following portion of the
specification: “[e]ach attaching PEA 120 selects a new AMAC at random from the indicated
range when it hears the heartbeat.” ‘129 Patent at 11:30–31. While the PEA selects a new
AMAC at random, the specification goes on to disclose that it is the hub device that creates the
“range” of addresses from which the PEA selects. (“the Hub 110 occasionally indicates a large
AMAC range” 11:33–34; “the Hub 110 may select a small range of AMACs” 11:37–38). Thus,
although self-selection does occur, it occurs only among what is made available by the hub
9
device. Plaintiffs argue that a construction including the creation of the MAC address by the hub
device would conflict with the disclosure of self-selecting peripheral devices. The specification
makes it clear, however, that no such conflict exists. Similarly, the fact that the specification also
states that the hub device has its own MAC address does not present any conflict with the MAC
address being generated or assigned by the hub device. Therefore, the Court finds the purported
conflict presented by Plaintiffs unpersuasive.
Finally, Plaintiffs make claim differentiation arguments to support their proposal that
MAC address has a broader meaning. Plaintiffs point to Claim 14 to show that what is being
claimed in step (iii) includes a “first peripheral device identifier,” an identifier that is not a MAC
address. Plaintiffs then contrast Claim 14 with its dependent Claim 43, where the named
identifier is a MAC address. Plaintiffs contend that an identifier is therefore broader than MAC
address, and accordingly, MAC address should be construed more broadly because the patentee
is signaling that the claims should not be limited through his use of multiple identifiers. While
such an argument may support a broader interpretation of the “first peripheral identifier,” it does
not follow that therefore the meaning of MAC address in the dependent claim should also be
interpreted more broadly. Plaintiffs’ claim differentiation argument as to Claim 50 should also be
rejected. Claim 50, which depends from Claim 43, simply requires that the link layer, in
particular, is responsible for the assignment of the plurality of MAC addresses. Finally, “claim
differentiation is a rule of thumb that does not trump the clear import of the specification.”
Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1331 (Fed. Cir. 2009).
The Court therefore construes “MAC address” as “a device identifier generated by the
hub device.”
10
Defendants’
Court’s Construction
Proposal
2. “capable of being used for identification in association with the first peripheral device”
Claim Language
Plaintiff’s Proposal
“capable of being used for identification in association therewith”
129: 43, 221
Indefinite, or
alternatively,
No construction
necessary
“capable of being used
to distinguish the first
peripheral device from
other devices”
“capable of being
used as the first
peripheral device
identifier / capable
of being used as the
peripheral device
identifier”
“capable of being used
to distinguish the
peripheral device from
other devices”
Alternatively:
“[T]he phrase
‘capable of being used
for identification in
association with the
first peripheral
device’ is understood
to mean ‘capable of
being used by the hub
device to distinguish
the first peripheral
device from other
devices.’”
“Likewise, . . . the
phrase ‘capable of
being used for
identification in
association therewith’
is readily understood
to mean ‘capable of
being used to
distinguish the
peripheral device
from other devices.’”
The “capable of” phrases in dispute are found in Claims 43 and 221 of the ‘129 Patent,
and read as follows:
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43. The hub device according to claim 14, wherein the hub device is configured
such that a plurality of MAC addresses is capable of being used for identification
in association with the first peripheral device. (‘129 Patent at 16:41–44).
221. The peripheral device according to claim 27, wherein the peripheral device is
configured such that a plurality of MAC addresses is capable of being used for
identification in association therewith. (‘129 Patent at 26:26–29).
In their briefing, Plaintiffs proposed no construction necessary on the basis that the
“capable of” phrases are easily understood because they use commonly understood words and
phrases. PLS.’ BR. at 24. Alternatively, Plaintiffs proposed the phrases be construed as: “capable
of being used by the hub device to distinguish the first peripheral device from other devices;”
and “capable of being used to distinguish the peripheral device from other devices.” Id. at 25. At
the Markman hearing on December 20, 2012, the Court proposed the following constructions:
“capable of being used by the hub device to distinguish the first peripheral device from other
devices;” and “capable of being used to distinguish the peripheral device from other devices.”
Based on the Court’s proposed constructions, Plaintiffs suggested the Court adopt its proposed
constructions with the insertion “or subcomponents thereof” after “peripheral device.”
Defendants maintained that the “capable of” phrases are indefinite and filed a
corresponding Motion for Summary Judgment on Invalidity for Indefiniteness (Doc. No. 248). In
the alternative, Defendants proposed the Court construe the terms as “capable of being used as
the first peripheral device identifier;” and “capable of being used as the peripheral device
identifier.” DEFS.’ BR. at 22.
The parties agree as to the basic contours of a construction for the “capable of” phrases.
Both parties agree that a MAC address is a device identifier and when used in the context of
Claim 43, which depends from Claim 14, it identifies the first peripheral device. DEFS.’ BR. at
12
43; PLS.’ BR. at 25–26; REPLY at 9. The parties’ dispute lies with whether the construction should
include the term “peripheral device identifier.”
The parties agree that the term “peripheral device identifier” means “an element that
identifies a peripheral device.” (Doc. No. 231), at 2 (“JOINT CLAIM CONSTRUCTION”). However,
the parties disagree as to its inclusion in the construction of the “capable of” phrases.
Defendants’ argument for the inclusion of the “peripheral device identifier” in the construction
of the “capable of” phrases is that it flows logically from the parties’ agreement that a
“peripheral device identifier” identifies a peripheral device. DEFS.’ BR. at 24. Plaintiffs argue that
because the patentee did not use the term “peripheral device identifier” in the “capable of”
phrases, it would be improper to insert that term (although agreed) in the construction of those
phrases. REPLY at 10. Plaintiffs stress that the failure to include the term “peripheral device
identifier” is because the “plurality of MAC addresses” in the claims may be, but are not limited
to being the peripheral device identifier as required by the claims. Id. Plaintiffs contend that,
when read in the context of the claims in which they are present, the “capable of” phrases are
readily understood to mean “capable of being used by the hub device to distinguish the first
peripheral device from other devices;” and “capable of being used to distinguish the peripheral
device from other devices.” PLS.’ BR. at 25.
The Court agrees with Plaintiffs that had the patentee wanted to include the term
“peripheral device identifier” in the capable of phrases contained in Claims 43 and 221, he could
have done so, as both claims depend from claims which include “peripheral device identifier.”
When read in the context of Claims 43 and 221, Defendants’ construction conflates the terms
“peripheral device identifier” and “MAC address” and complicates the claims for the finder of
fact.
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Rather than use the term “peripheral device identifier,” the claims use “a plurality of
MAC addresses.” The specification discloses that MAC addresses may be used to distinguish
one peripheral device from another. ‘129 Patent at Figs. 9B, 9C, & 11–12; 1:55–2:14; 3:31–32
(“Each device is identified by a Media Access (MAC) address.”), 3:60–4:3 (“The Hub 110 might
also use MAC addresses to identify virtual PEAs within any one physical PEA 120. . . . The PEA
120 responds to the Hub 110 if it identifies its own MAC address or the Hub MAC address in the
token and if the stream number in the token is active for the MAC address of the PEA 120.”),
8:18–22 (“The MAC address 610 and stream number 620 in the token 640 together specify a
particular PEA 120 to transmit or receive data, or, in the case of the Hub’s MAC address 610,
specify no, many, or all PEAs to receive data from the Hub 110 (depending on the stream
number).”) & 11:55–56 (“The Hub 110 sends the new MAC address 610 in an attach-assignment
message to the now-identified PEA 120 . . . .”). These disclosures demonstrate that “capable of
being used for identification in association” with peripheral devices refers to distinguishing
different peripheral devices, or multiple virtual devices within a single physical device, that are
attached to (or requesting attachment to) a network.
While the Court acknowledges the specification’s disclosure that a MAC address may
identify a device as a whole, or multiple virtual entities within a single device, the Court finds
the addition of “and subcomponents thereof” to the construction unnecessary. This addition
would only raise ambiguity as to the meaning of “subcomponent,” a term not found in the ‘129
Patent, and confuse the plain language of the claims. The Court therefore construes “capable of
being used for identification in association with the first peripheral device” and “capable of being
used for identification in association therewith” as “capable of being used to distinguish the first
peripheral device from other devices” and “capable of being used to distinguish the peripheral
14
device from other devices,” respectively.
Defendants’
Court’s Construction
Proposal
3. “availability of the hub device for peripheral device attachment” “availability of the first
peripheral device for communication with the hub device” “availability of the peripheral
device for communication with the hub device”
Claim Language
Plaintiff’s Proposal
129: 14, 27
“the hub device is
available for
unattached peripheral
devices to establish an
attachment
relationship”
“availability of an
identified hub
device for
attachment to any
peripheral device”
“the [first] peripheral
device is available to
establish an
attachment
relationship with the
hub device”
“availability of the
[first] peripheral
device for
communication with
the hub device in
step (i)”
“availability of the hub
device for attachment to
any peripheral device”
No construction
necessary (agreed)
In the “availability” briefing provided to the Court, the parties extensively disputed
whether the message from the hub device indicated availability to all peripheral devices or only
to unattached peripheral devices. PLS.’ BR. at 16–17; DEFS.’ BR. at 14. At the Markman hearing,
the parties clarified that their real dispute is actually whether the message from the hub device,
signaling its availability, is a general message sent to all devices, or whether the hub device
targets the message to a specific peripheral device or group of devices.
At the Markman hearing, the parties agreed with the Court’s proposal that the term
“availability of the [first] peripheral device for communication with the hub device” requires no
construction. As to the term “availability of the hub device for peripheral device attachment,” the
Court proposed the following construction: “availability of the hub device for attachment to any
15
peripheral device.”
Plaintiffs argue that the word “any” should not be included in the Court’s construction
because it precludes the possibility that a message could be targeted to a specific device.
Plaintiffs support their contention that a message could be targeted to a specific device by
pointing to dependent claims that indicate the message might be broadcast. For example, Claims
32 and 33 indicate the “…transceiver is configured to receive a signal broadcast from the hub
device…” and the “…transceiver is configured to receive a broadcast signal from the hub
device…” ‘129 Patent at 16:4–8. Plaintiffs contend that because these dependent claims say the
message might be a broadcast message, the message is differentiated and not limited to just a
broadcast message. Similarly, Plaintiffs argue that because Claims 14 and 27 refer to the “hub
device” and the “peripheral device” in the singular form and not in the plural, it supports their
contention that a message may be targeted to one specific device. Accordingly, Plaintiffs
suggested that the Court construe the phrase as “availability of the hub device for attachment to a
peripheral device.”
Defendants counter that there is no dispute that the specification’s disclosed
embodiments include only a message that is generally sent, and argue that there is nothing in the
specification that would limit the message to something more specific. ‘129 Patent at 11:22–43
(The Hub 110 periodically broadcasts heartbeats…”). Defendants also argue that the structure of
Claim 14 suggests that the first message is sent out generally in step (i) for peripheral device
attachment. (“send message to indicate the availability of the hub device for peripheral device
attachment”) 14:44–46. This step, Defendants argue, is contrasted with the following steps,
where, in the second step, a specific message is received from a specific device, and in the third
step, communication is directed to a specific device. (“receive, from a first peripheral device, a
16
message indicating the availability of the first peripheral device for communication with the hub
device;” and “send, to the first peripheral device, a signal including a first peripheral device
identifier.”) 14:47–51. Defendants counter Plaintiffs’ differentiation argument by asserting it is
not clear that by using the term broadcast, the patentee meant to differentiate from the general
message disclosed in the specification and articulated in step (i) of Claim 14. Plaintiffs replied
that Defendants are improperly reading the specification into the claim.
Step (i) of Claims 14 and 27 recite a general message indicating the availability of the
hub device for peripheral device attachment. Claims 14 and 27 recite:
14. A hub device for use within a personal area network, comprising:
circuitry, and
a transceiver in communication with the circuitry, the hub device
configured to cause the transceiver to
i) send a message to indicate the availability of the hub device for
peripheral device attachment,
ii) receive, from a first peripheral device, a message indicating the
availability of the first peripheral device for communication with the hub device,
iii) send, to the first peripheral device, a signal including a first peripheral
device identifier,
iv) receive, from the first peripheral device, a response,
v) send a hub response to the first peripheral device, and
vi) receive, from the first peripheral device, a second peripheral response
including the first peripheral device identifier. (‘129 Patent at 14:39–56)
27. A peripheral device for use within a personal area network, comprising:
circuitry, and
a transceiver in communication with the circuitry, the peripheral device
configured to cause the transceiver to
i) receive a sent message from a hub device to indicate the availability of
the hub device for peripheral device attachment,
ii) send, to the hub device, a message indicating the availability of the
peripheral device for communication with the hub device,
iii) receive, from the hub device, a signal including a peripheral device
identifier,
iv) send a response to the hub device,
v) receive, from the hub device, a hub response, and
17
vi) send, to the hub device, a second peripheral response including the
peripheral device identifier. (‘129 Patent at 15:39–56)
As between steps (i) and (ii) found in Claims 14 and 27, there is a transition from the
message sent “for peripheral device attachment” in step (i), to “availability of the [first]
peripheral device” in step (ii). Had the patentee wanted to indicate a specific targeted message in
step (i) he could have done so, as was done with communication in step (ii) using the definite
article “the” to indicate a specific device. This is further supported by the specification, which
discloses a general message whereby the hub device sends “heartbeat” messages that can be
received by any PEA within range. ‘129 Patent at 7:67–8:3 (referencing “the Hub’s use of its
MAC address to broadcast its heartbeat 770…to all PEAs.”). As such, Plaintiffs’ differentiation
argument is insufficient to conclude that the hub device targets a message to a specific peripheral
device. “[C]laim differentiation is a rule of thumb that does not trump the clear import of the
specification.” Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1331 (Fed. Cir. 2009).
Therefore, the Court construes “availability of the hub device for peripheral device
attachment” as “availability of the hub device for attachment to any peripheral device.” As to the
remaining “availability” phrases, the parties agreed at the Markman hearing that no constructions
were necessary.
Claim Language
4. “virtual entities”
129: 45, 46, 224
Plaintiff’s Proposal
Defendants’
Proposal
“emulation of
“a simulation or
emulation of physical physical entities”
entities, or subsystems
of a system”
18
Court’s Construction
“simulation of physical
entities” (agreed)
At the Markman hearing, the parties agreed to the following construction for “virtual
entities” proposed by the Court: “simulation of physical entities.”
Claim Language
Plaintiff’s Proposal
Defendants’
Proposal
Court’s Construction
“one or more
elements that
identifies, other than
the first peripheral
device identifier or a
MAC address”
“one or more elements
that identifies, other
than the first peripheral
device identifier”
5. “additional identifiers”
129: 81, 95, 259
“one or more
elements that
identifies, other than
the first peripheral
device identifier”
With regard to the term “additional identifiers,” the parties seemingly agree on the basic
contours of a construction. However, a dispute remains as to whether a MAC address can be an
“additional identifier.” Defendants maintain that an “additional identifier” cannot be a MAC
address. DEFS.’ BR. at 25. Specifically, Defendants argue that because “[t]he parties agree that
both ‘MAC address(es)’ and ‘peripheral device identifier[s]’ are ‘identifiers” that serve the
function of ‘identif[ying]’ devices, “[t]he inventor’s use of a different term, ‘additional
identifiers,’ in Claims 81, 95, and 259 gives rise to a presumption that this phrase must refer to
something other than the ‘identifier’ of a ‘MAC address’ referred to in the earlier claims.” Id.
(citing PLS.’ BR. at 10 & 26–27). Plaintiffs argue that Defendants’ construction reads out the
plain and ordinary meaning of the word “additional” because there is nothing about the word
additional that would preclude “additional identifiers” from meaning simply more of the same
type of identifier. REPLY at 10.
19
The resolution to the parties’ dispute calls for the reconciliation of Claims 43 and 95.
Claims 43 and 95 recite:
43. The hub device according to claim 14, wherein the hub device is configured
such that a plurality of MAC addresses is capable of being used for identification
in association with the first peripheral device. (‘129 Patent at 16:41–44).
95. The hub device according to claim 43, wherein the hub device is configured to
cause the transceiver to communicate between the hub device and the first
peripheral device, utilizing one or more additional identifiers. (‘129 Patent at
19:59–62).
“Additional identifier” is found in Claim 95, which depends from Claim 43, which
depends from Claim 14. There is no dispute that all three claims discuss identifiers. Claim 14
contains the “first peripheral device identifier,” Claim 43 contains a “plurality of MAC
addresses,” and Claim 95 contains “one or more additional identifiers.” ‘129 Patent at 14:51, 55–
56; 16:42, 19:62. The dispute is whether “additional identifiers,” as used in Claim 95, must be
something other than the plurality of MAC addresses in Claim 43. Defendants argue that,
logically, “additional identifiers” as used in Claim 95 (which depends from 43 and 14) must be a
third category of identifiers, something other than the “first peripheral identifier” used in Claim
14 and something other than the “plurality of MAC addresses” used in Claim 43. Again,
Plaintiffs maintain that “additional identifiers” just means more identifiers, which could include
more of the same type of identifiers.
There is nothing in the specification that directly resolves the dispute between the parties.
However, the word “additional” as used in the claims and the specification is used in a manner
consistent with its plain and ordinary meaning. (“[d]uring attachment…, the PEA 120 may have
two additional active MAC addresses 610, the one it selected for attachment and the one the Hub
110 assigned to the PEA 120.”) ‘129 Patent at 9:13–16. Essentially, the dispute between the
20
parties revolves around the plain and ordinary meaning of the word “additional.” Defendants
would read it to mean “other” while Plaintiffs would read it to mean “more.” However, both of
these synonyms showcase that either interpretation is consistent with the plain and ordinary
meaning of the word as used in the ‘129 Patent. These easily understood meanings are not
mutually exclusive, although the parties’ dispute presents them to be. The ‘129 Patent gives no
indication that the meaning should be limited to one interpretation or the other. Thus, “additional
identifiers” could mean more of the same identifiers and/or other identifiers. Therefore, the Court
finds it improper to further limit the meaning of “additional identifiers” to exclude “MAC
addresses,” which are indisputably used in Claim 43 as identifiers.
Accordingly, in conjunction with the agreed upon portion of the parties’ construction, the
Court construes “additional identifiers” to mean “one or more elements that identifies, other than
the first peripheral device identifier.”
Claim Language
Plaintiff’s Proposal
Defendants’
Proposal
Court’s Construction
“reestablish an
attachment
relationship”
“initiating attachment
after detachment
caused by exceeding a
predefined threshold”
No construction
necessary (agreed)
6. “reattachment”
129: 262, 263
At the Markman hearing, the parties agreed that no construction was necessary for the
term “reattachment.”
Claim Language
Plaintiff’s Proposal
7. “controlling retransmission”
129: 55, 233
“exerting control over
a repeated
Defendants’
Proposal
Plain and ordinary
meaning
21
Court’s Construction
“controlling a repeated
transmission to the
same addressee of a
previously transmitted
signal”
transmission of
previously transmitted
data” (agreed)
At the Markman hearing, the parties agreed to the following construction proposed by the
Court for the term “controlling retransmission:” “controlling a repeated transmission of
previously transmitted data.”
Claim Language
Defendants’
Proposal
Plaintiff’s Proposal
Court’s
Construction
8. “separate class of MAC address”
129: 63
“MAC address with a “different category of
different
MAC addresses”
configuration”
(agreed)
No construction
necessary
Alternatively, “separate
class of an address that
uniquely identifies a
device or group of
devices on a shared
communication
medium”
At the Markman hearing, the parties agreed to the following construction proposed by the
Court for the term “separate class of MAC address:” “different category of MAC addresses.”
.
CONCLUSION
For the foregoing reasons, the Court adopts the constructions set forth above.
So ORDERED and SIGNED this 15th day of January, 2013.
22
___________________________________
JOHN D. LOVE
UNITED STATES MAGISTRATE JUDGE
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