Stragent, LLC et al v. Pioneer Electronics (USA) Inc. et al

Filing 389

MEMORANDUM OPINION AND ORDER construing the disputed claim terms in U.S. Patent No. 7,953,599. Signed by Magistrate Judge John D. Love on 7/3/13. (mjc, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
STRAGENT LLC, et al.,
v.
BMW NORTH AMERICA LLC, et al.
STRAGENT LLC, et al.,
v.
MERCEDES-BENZ USA, LLC.

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STRAGENT LLC, et al.,
v.
CHRYSLER GROUP, LLC.

NO. 6:11cv278 LED-JDL
LEAD CASE

NO. 6:13cv378 LED-JDL
MEMBER CASE

NO. 6:13cv379 LED-JDL
MEMBER CASE

MEMORANDUM OPINION AND ORDER
This claim construction opinion construes the disputed claim terms in U.S. Patent No.
7,953,599 (“the ‘599 patent”).

Plaintiffs Stragent LLC and TAG Foundation (collectively

“Stragent”) allege that Defendants1 infringe the ‘599 patent. The parties have presented their
claim construction positions (Doc. Nos. 346, 352, 355 & 359).2 On February 28, 2013, the Court
held a claim construction hearing.

For the reasons stated herein, the Court adopts the

constructions set forth below.

1

Defendants include BMW of North America, LLC; Bayerische Motoren Werke A.G.; Chrysler Group LLC;
Mercedes-Benz USA, LLC; and Mitsubishi Motors North America, Inc. Defendant Mitsubishi Motors North
America, Inc. has since been dismissed (Doc. No. 374).
2
On May 8, 2013, after claim construction briefing had completed and the Court had conducted a Markman hearing,
the Defendants were severed into separate civil actions. All Defendants were then consolidated into Civil Action
No. 6:11cv278 (Doc. No. 379). Any reference to claim construction briefing shall refer to documents within Civil
Action No. 6:11cv278.

OVERVIEW OF THE PATENT
The ‘599 patent—a child of U.S. Patent No. 7,424,431 (“the ‘431 patent”)—is directed to
a “System, Method and Computer Program Product for Adding Voice Activation and Voice
Control to a Media Player.” A command for a media player is generated by an utterance, i.e.,
voice command. See ‘599 patent, ABSTRACT. The command is then used to control a media
player. Id.
Stragent accuses Defendants of infringing independent claims 1, 41, and 76, and the
dependent claims therefrom. Independent Claim 1, set forth below, contains many of the terms
in dispute (set forth in bold):
1. A computer program product embodied on a non-transitory
computer-readable medium, comprising:
computer code for controlling a media player adapted for
playing stored music, the media player capable of communicating
with a memory, a speaker, and a microphone;
computer code for initializing a plurality of program
variables stored in the memory, the program variables including at
least one of artists, songs, or playlists;
computer code for receiving a trigger signal;
computer code for receiving an utterance intended to
control the media player in association with the stored music;
computer code for verifying the utterance using the
speaker;
computer code for generating a corresponding command
for the media player based on the utterance, the corresponding
command selected from a command set including at least a
play command, a pause command, a shuffle command, an
artist command, a song command, and a playlist command;
and
computer code for channeling output of the media player;
wherein the computer program product is operable such
that the corresponding command enables wireless control of the
media player.
‘599 patent at 7:55-8:12.

2

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 1313-1314; 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
3

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.
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.

4

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., L.P., 323 F.3d 989, 994 (Fed. Cir.
2003) (“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.

5

DISCUSSION
I.

“the corresponding command selected from a command set including at least a
play command, a pause command, a shuffle command, an artist command, a
song command, and a playlist command”3

Plaintiff’s Proposed Construction
computer code for generating one or more
commands for the media player based on the
utterance, the one or more corresponding
commands selected from the following
command set: a play command, a pause
command, a shuffle command, an artist
command, a song command, and a playlist
command

Defendants’ Proposed Construction
a command selected from a conjunctive set of
commands including at least the following:
play, pause, shuffle, artist, song, and playlist

The parties dispute whether the “command set” requires computer programming for
generating responses to all six of the listed commands or merely one of the six enumerated
commands. PLTFF’S BRIEF AT 11; RESPONSE AT 7. Defendants contend the plain language of the
claims require a reading that the command set must include all of the six commands listed.
RESPONSE AT 7. In particular, Defendants argue that Claims 1 and 41 recite “at least” and “and”
to show that the command set must include, at minimum, a play, pause, shuffle, artist, song, and
playlist command. Id. at 7-8. Further, Claim 76 uses the phrases “at least one of” and “or” to
specify that only one of the commands must be included in the command set to satisfy the
elements of Claim 76. Such a contrast in claim language indicates the patentee intended to
require that the command set of Claims 1 and 41 include all of the recited commands. Id. at 8.
Moreover, Defendants contend that the prosecution history makes clear that the command
set recited in Claims 1 and 41 require inclusion of all six commands. During prosecution of the
‘599 patent’s parent, the ‘431 patent, the patentee distinguished a prior art reference, stating that
the reference “fail[ed] to even suggest . . . a command set including a play command, a pause
command, a shuffle command, a playlist command, an artist command, and a song command.”
3

This term is contained in Claims 1 and 41.
6

Id. at 10-11 (emphasis in original) (citing EXS. 16-17, ATTACHED TO RESPONSE). Such emphasis
indicates the collective importance of all six commands within the ‘431 patent. Id. Moreover,
during prosecution of the ‘599 patent, the examiner noted that prior art disclosed “a command set
of at least ‘a play command,’ ‘an artist command,’ and ‘a song command.’” Id. at 11 (citing EX.
12,

ATTACHED TO

RESPONSE). Defendants argue the patentee distinguished the prior art by

adding the language “at least” and “and” to the claims to highlight that the limitation requires all
six of the listed commands. Id.
Stragent responds that only one command need be selected. REPLY AT 4. In other words,
so long as the command selected is one of the following: a play, pause, shuffle, artist, song, or
playlist command, the claim limitation is met. Id. However, there is no requirement that the
computer program include code for generating all six of the commands recited in Claims 1 and
41. Id. Further, Stragent argues the prosecution history merely indicates that the examiner
interpreted the claim language to require generation of only one of the listed commands, and
further, that the command phrase was not relied on to distinguish the prior art. Id. at 5 (citing
EX. 18, ATTACHED TO RESPONSE). Finally, Stragent maintains that the ‘599 patent uses “or” and
“and” interchangeably, signifying that only one of the listed commands need be included in the
command set to meet the claim limitation. PLTFF’S BRIEF AT 11 (citing ‘599 patent at claims 28,
68 & 133; 2:33-3:18).
As stated above, the parties disagree whether the command set recited in Claims 1 and 41
requires at least all six command types, or simply one. In short, the command set must include at
least a play, pause, shuffle, artist, song, and playlist command. The plain language of the claims
requires as much:
computer code for generating a corresponding command for the media player
based on the utterance, the corresponding command selected from a command set
7

including at least a play command, a pause command, a shuffle command, an
artist command, a song command, and a playlist command.
‘599 patent at 8:3-8 (Claim 1) (emphasis added); 10:41-46 (Claim 41). The use of “at least” and
“and” indicate that, at minimum (“at least”), the command set must include all of the following
commands: a play command, a pause command, a shuffle command, an artist command, a song
command, and a playlist command. See Phillips, 415 F.3d at 1312 (“[T]he words of a claim ‘are
generally given their ordinary and customary meaning.’” (internal citations omitted)). The use of
“and” at the end of the recited list designates the list as conjunctive. See SuperGuide Corp. v.
DirecTV Enter., Inc., 358 F.3d 870, 885 (Fed. Cir. 2004) (concluding the use of “and” connotes a
conjunctive list).
Moreover, the other claims of the ‘599 patent support the conclusion that the command
set of Claims 1 and 41 must include, at minimum, the six disclosed command types. For
example, Claim 76, while similar to Claims 1 and 41, uses the disjunctive to indicate that all of
the command types recited are not necessary:
computer code for generating a corresponding command for the media player
based on the utterance, the corresponding command selected from a command set
of a plurality of commands including at least one of: a play command, a pause
command, a forward command, a rewind command, an on command, an off
command, a shuffle command, a repeat command, a search command, a volume
up command, a volume down command, a playlist command, or a next command.
‘599 patent at 12:47-56 (emphasis added). Claim 76 simply requires that “at least one of” the
listed commands be included in the command set; the disjunctive “or” at the conclusion of the
list of command types reinforces the idea that only one of the recited command types must be
included in the command set. Such language differs from that used in Claims 1 and 41,
highlighting the conscious choice to distinguish Claims 1 and 41 from Claim 76. See Phillips,
415 F.3d at 1314-15 (“Differences among claims can also be a useful guide in understanding the

8

meaning of particular claim terms.”). In other words, Claims 1 and 41 require certain commands
within a command set and Claim 76 merely requires selection of one command type from a
particular list of possible command types. Thus, the “at least” and “and” language of Claims 1
and 41 signify that all six of the command types must be contained within the command set.
Further examination of the patent claims does not reflect that “or” and “and” are used
interchangeably, as Stragent suggests. Claim 39, which depends on Claim 1, discusses program
variables in the conjunctive: “The computer program product of claim 1, wherein the program
variables include artists, songs, and playlists.” ‘599 patent at 10:19-20 (emphasis added). In
contrast, Claim 1 uses the disjunctive “or” to describe similar subject matter: “the program
variables including at least one of artists, songs, or playlists.” Id. at 7:62-63 (emphasis added).
Thus, to read “and” and “or” as interchangeable would render Claim 39 superfluous. See
Phillips, 415 F.3d at 1315 (“[T]he presence of a dependent claim that adds a particular limitation
gives rise to a presumption that the limitation in question is not present in the independent
claim.”).
Finally, the prosecution histories of the ‘431 and ‘599 patents highlight the importance of
the list of particular command types. For example, in prosecuting the ‘431 patent application,
the patentee argued the prior art taught “voice commands including interrupt-type commands
such as skipping, playing, and stopping, in addition to streaming-type commands such as louder,
faster, and forward.” AMENDMENT A AT 22-23, U.S. PATENT APPL. SER. NO. 11/281,964 (JAN. 4,
2008), EX. 16, ATTACHED TO RESPONSE. The patentee distinguished the prior art by emphasizing
particular commands that did not include interrupt or streaming-type commands:
[The prior art] simply fail[ed] to even suggest that “after verification of the
utterance, generating a corresponding command for the media player based on the
utterance, the corresponding command selected from a command set including a

9

play command, a pause command, a shuffle command, a playlist command, an
artist command, and a song command.”
Id. at 23 (emphasis in original). It was at this time that the patentee, to head off further
objections from the examiner, amended the claim to recite particular command types, rather than
simply claiming that the method generates a command for a media player based on an utterance
(amendments underlined):
after verification of the utterance, generating a corresponding command for [[a]]
the media player based on the utterance, the corresponding command selected
from a command set including a play command, a pause command, a shuffle
command, a playlist command, an artist command, and a song command.
Id. at 2. Given that the patentee (1) distinguished the prior art based on command types; and (2)
amended the claim to recite a specific set of commands to be included in the command set, the
patentee emphasized the importance of having the command set contain the play, pause, shuffle,
playlist, artist, and song commands.
While the prosecution history of the ‘431 patent, by itself, is not limiting, the prosecution
of the ‘599 patent illustrates that the command set of Claims 1 and 41 must, at a minimum,
comprise the play, pause, shuffle, artist, song, and playlist commands. Initially, claim 1 of the
‘599 patent application read, in relevant part: “the corresponding command selected from a
command set including a play command, a pause command, a shuffle command, an artist
command, a song command, a playlist command.” U.S. PATENT APPL. SER. NO. 12/104,207
(APR. 16, 2008), EX. 11,

ATTACHED TO

RESPONSE. Subsequently, the examiner rejected the

application, in part, because the prior art disclosed “a command set of at least ‘a play command’,
‘an artist command’, and ‘a song command’.” DETAILED ACTION AT 7, U.S. PATENT APPL. SER.
NO. 12/104,207 (SEPT. 1, 2010), EX. 12, ATTACHED TO RESPONSE. In response to the examiner’s
rejection, the patentee amended the claim to include “and” so that the claim subsequently read:

10

“the corresponding command selected from a command set including a play command, a pause
command, a shuffle command, an artist command, a song command, and a playlist command.”
AMENDMENT A

AT

3, U.S. PATENT APPL. SER. NO. 12/104,207 (FEB. 1, 2011) (emphasis in

original), EX. 13, ATTACHED TO RESPONSE; see also id. at 14. The amendment implies that the
conjunctive list of all six command types within the command set differentiates the ‘599 patent
from that of the prior art, which required, at minimum, a play command, an artist command, and
a song command.
Stragent maintains that the ‘599 patent was allowed not due to the conjunctive nature of
the command set, but on alternate grounds, citing the examiner’s remarks:
Independent claims 1 and 2 appear to be allowable because the prior art of
record does not disclose or reasonably suggest a combination for a computer
program product or a sub-system to control a media player by utterance for
wireless control of the media player that involves initializing a plurality of
program variables including at least one of artists, songs, or playlists, receiving a
trigger signal, and verifying an utterance using a speaker. Although it is known to
control a media player by voice in a wireless manner to play music, where the
commands include at least a play command, and it is sometimes known in the
prior art to receive an audible command to trigger operation, and where it is
sometimes known in the prior art to verify an utterance, the prior art of record
does not disclose or reasonably suggest all of the limitations in combination of
initializing a plurality of program variables including at least one of artists, songs,
or playlists, receiving a trigger signal, and verifying an utterance using a speaker.
DETAILED ACTION

AT

7-8, U.S. PATENT APPL. SER. NO. 12/104,207 (MAR. 1, 2011), EX. 18,

ATTACHED TO RESPONSE.

While the excerpt above does indicate that the ‘599 patent would have

been allowed on grounds that did not rely on the command set, the examiner’s comments were in
fact directed to grounds for allowance if the patentee could overcome the double-patenting
rejection in light of the ‘431 patent, the ‘599 patent’s parent. See id. at 2, 7. In the same Office
Action, the examiner rejected all claims “on the ground of nonstatutory obviousness-type double
patenting as being unpatentable over claims 1 to 63 of U.S. Patent No. 7,424,431,” stating the

11

claims in the ‘431 and ‘599 patents “are not patentably distinct from each other because the
corresponding claims of the [‘431] patent set forth all of the same limitations as the current
claims.” Id. at 2. The examiner specifically cited, in part, claim 1 of the ‘599 patent application,
which recited the command set limitation: “the corresponding command selected from a
command set including a play command, a pause command, a shuffle command, an artist
command, a song command, and a playlist command . . . .” Id.
In response to the double patenting rejection, the applicant filed a terminal disclaimer and
once again amended the claim, this time including the “at least” language: “the corresponding
command set selected from a command set including at least a play command, a pause
command, a shuffle command, an artist command, a song command, and a playlist command.”
SUBSTITUTE AMENDMENT B

AT

2, 22 (emphasis in original), U.S. PATENT APPL. SER. NO.

12/104,207 (MAR. 21, 2011), EX. 14 ATTACHED TO RESPONSE. Thus, looking at the prosecution
record as a whole, it does not appear that the examiner allowed the ‘599 patent on grounds
alternative to the command set. Rather, in order to “clarify what is claimed,” and to overcome
the double-patenting rejection, the applicant added the “at least” language to the Claim 1. See id.
at 22-23.
Accordingly, the plain language of Claims 1 and 41, in addition to the prosecution
history, dictate that “the corresponding command selected from a command set including at least
a play command, a pause command, a shuffle command, an artist command, a song command,
and a playlist command” be construed as “the corresponding command selected from a set of
commands including at least the following: play, pause, shuffle, artist, song, and playlist.”
Further, the list of command-types within the command set is conjunctive.

12

II.

“an assembly coupled to the automobile for receiving power therefrom and
further connected to a media player adapted for playing music, the assembly
including a power unit for providing the power unit to the media player, a
speaker, and a microphone”4

Plaintiff’s Proposed Construction
No construction necessary

Defendants’ Proposed Construction
a self-contained unit detachably coupled to,
and configured to receive power from, the
automobile, wherein the unit is connected to a
media player adapted for playing music, and
includes a speaker, a microphone, and a power
unit for powering the media player

Two issues are in dispute with respect to the “assembly” term: whether the assembly is
(1) self-contained and (2) detachably coupled to the automobile. Defendants contend that the
assembly is both self-contained and detachably coupled to the automobile. RESPONSE AT 18, 20.
According to Defendants, Claim 76 mandates that the assembly is a structure separate from the
automobile, and therefore the assembly, which includes a power unit, speaker, and microphone,
must be self-contained. Id. at 18-19. In addition, the specification expressly states that the
assembly is a separate structure that can be built-in or retrofitted to the media player. Id. at 19
(citing ‘599 patent at 3:27-29; Figures 5 & 6). Defendants further cite to the prosecution history
to illustrate that the assembly must be a separate structural element. Specifically, the patentee
claimed that the assembly of the ‘599 patent included its own speaker and microphone, whereas
the assembly in the prior art did not. Id. at 21. Finally, Defendants maintain that the assembly
should be defined as a separate structure in order to prevent Stragent from arguing that the
elements of the assembly—the power unit, microphone, and speaker—can be dispersed
throughout the automobile, which is inconsistent with the specification. Id. at 19.
Stragent, on the other hand, argues that the term requires no construction because the
claim language provides the structures required to comprise the assembly: “a power unit for
4

This term is contained in Claim 76.
13

providing the power to the media player, a speaker, and a microphone.” PLTFF’S BRIEF

AT

8

(citing ‘599 patent at 12:32-33). Moreover, the claim language describes how the assembly is
attached to the other elements of the claim: “coupled to the automobile . . . and further connected
to a media player.” Id. (citing ‘599 patent at 12:29-30). In addition, Stragent contends that
Defendants are merely importing unnecessary limitations; Claim 76 does not express that the
assembly must be a structure separate from the automobile. Id. at 8-9. In fact, the assembly may
be a part of the media player, and therefore, it need not be a self-contained unit. Id. at 9 (citing
‘599 patent at 3:24-31). Finally, Stragent maintains that requiring the assembly to be detachably
coupled to the automobile would render Claims 10 and 50 superfluous. Id.
As stated above, Stragent asserts that the claim language sufficiently informs the trier of
fact as to what an “assembly” is, and therefore, the term requires no construction. While the
claim language provides some context, the language does not fully explain that the assembly is a
structure separate from the automobile, rather than a variety of components within the
automobile. Consequently, construction is necessary.
Stragent’s chief complaint is that the assembly should not be limited to a “self-contained
unit.” Stragent contends that while some of the preferred embodiments describe a separate
assembly, Claim 76 does not, and further, the ‘599 patent discloses that the assembly may be
built-in to the media player. PLTFF’S BRIEF

AT

9. Thus, the assembly need not be a self-

contained unit.
While it does not appear that the assembly must be a “self-contained unit,” the assembly
is indeed separate from both the automobile and the media player. The claim language itself
implies that the assembly is a separate element: “an assembly coupled to the automobile . . . .”
‘599 patent at 12:29. If various components of the assembly were separately integrated into the

14

automobile, there would be no need to iterate that the assembly need be coupled to the vehicle.
Further, the specification notes that “the media player/assembly may be implemented in any
desired environment,” thus expanding the use of the invention beyond the boundaries of an
automobile. See ‘599 patent at 4:41-42; see also id. at 5:33-37. For example, “[a]s another
option, the utterance may be received utilizing an input device including a wireless device which
can be positioned for optimum voice control in an automobile, an indoor environment, and/or an
outdoor environment.” Id. at 2:46-50.
In addition, the disclosure recites that “the operations of the method [for providing
wireless control of a media player] of FIG. 3 may be carried out by the media player itself,
and/or by way of a separate assembly that is either built-in the media player or capable of being
retrofitted on the media player.”

‘599 patent at 3:26-29 (emphasis added). Although the

specification does state that the assembly containing a power unit, speaker, and microphone, may
be built-in to the media player, the specification further states that said assembly is “separate” in
such scenarios. Thus, both the claim language and specification note that the assembly is a unit
separate from the automobile.
Moreover, the dictionary definition of “assembly” connotes a separate structure. An
assembly is “the fitting together of manufactured parts into a complete machine, structure, or unit
of a machine.” MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 73-74 (11th ed. 2003), EX. 21,
ATTACHED TO

RESPONSE. Thus, the Court’s interpretation of “assembly” comports with its

ordinary meaning, as well as the language of the claims and the specification.
While the assembly is a unit separate from the media player and automobile, the
assembly need not be “detachably coupled to” the automobile. Defendants have not provided

15

support to persuade the Court to import such a limitation into the claim. Therefore, the Court
declines to do so.5
Accordingly, the term “an assembly coupled to the automobile for receiving power
therefrom and further connected to a media player adapted for playing music, the assembly
including a power unit for providing the power unit to the media player, a speaker, and a
microphone” means “a separate unit coupled to, and configured to receive power from, the
automobile, wherein the separate unit is connected to a media player adapted for playing music,
and includes a speaker, a microphone, and a power unit for powering the media player.”
III.

“trigger signal”6

Plaintiff’s Proposed Construction
No construction necessary

Defendants’ Proposed Construction
any word capable of initiating a voice
recognition capability

The parties disagree as to whether the trigger signal must be a word. See PLTFF’S BRIEF
AT

12. Defendants contend that the trigger signal is limited to a word that activates the media

player. RESPONSE AT 12. According to Defendants, not only is the invention directed to voice
control of a media player, but the embodiments disclosed in the specification are limited to
voice-activated systems using a trigger word. Id. at 13 (citing ‘599 patent at 3:51-52; 3:47-57;
5:57-67; 6:53-59; Figs. 4, 7 & 8). Defendants further maintain that “the clear import of the
specification” overcomes any presumption of claim differentiation; because every embodiment
within the ‘599 patent describes voice activation due to a trigger word, dependent claims cannot
claim more than what is disclosed in the specification. See id. at 14.

5

Moreover, at the claim construction hearing, Defendants agreed to the Court’s proposed construction, which
omitted the “detachably coupled to” limitation. MARKMAN TRANSCRIPT AT 37:13-16 (Doc. No. 367). Further, at
the hearing, “detachably coupled to” did not seem to be a concern for the parties, eclipsed by the issue of whether
the assembly was a separate structure. See id. at 37:20-53:4.
6
This term is contained in Claims 1, 37, 41, 74, 76 & 111.
16

In contrast, Stragent maintains that “trigger signal” requires no construction. PLTFF’S
BRIEF AT 11. More importantly, Stragent contends that “trigger signal” should not be limited to a
word, especially because dependent Claims 31 and 32 already limit the “trigger signal” recited in
Claim 1 to a “trigger word” or something audible. Id. at 12. Thus, the presumption of claim
differentiation dictates that a “trigger word” is different from a “trigger signal.” Id. Further,
Stragent notes that the specification discloses multiple embodiments where the trigger signal is a
word or a signal. Id. (citing ‘599 patent at 3:46-67; 5:55-6:3 & 6:50-62).
The Court declines to limit “trigger signal” to a word, as Defendants propose. Claim 1 of
the ‘599 patent recites both a “trigger signal” and an “utterance,” indicating that the voice control
system may be operable via an utterance even if the trigger signal is not limited to a word:
computer code for receiving a trigger signal;
computer code for receiving an utterance intended to
control the media player in association with the stored music;
computer code for verifying the utterance using the
speaker;
computer code for generating a corresponding command
for the media player based on the utterance. . . .
‘599 patent at 7:64-8:4 (emphasis added). The excerpt above illustrates that the command to
control the media player is “based on the utterance,” which connotes vocal delivery,7 and is in
accord with the many voice-activated embodiments Defendants point out in the specification.
See e.g., ‘599 patent at 5:4-9 (“a verification speaker 404 for verifying utterances received, a
directional microphone 405 for receiving and transferring utterances to a processing circuit (not
shown) that translates the utterances into a computer code capable of being read by the media
player.”).

7

“The utterance may include any audible word, number, and/or sound capable of being received.” ‘599 patent at
2:40-41.

17

Further, the specification notes that a trigger signal could be something other than a word,
such as a lapse in time: “As another option, a time limit (e.g. 120 seconds, etc.) may be utilized
such that if no utterance is detected during operation 712 within the time limit, the method 700
[providing wireless control of a media player] may terminate, as shown in decision 716.” ‘599
patent at 6:12-14 (referring to Fig. 7); see also id. at 3:64-67. Moreover, the assembly depicted
in Figure 6 shows buttons associated with an FM frequency adjustment 506, and/or an FM
frequency display 508 that “include up and down arrows on the front of the assembly . . . and
may also include left and right channel programming capabilities.” Id. at 5:44-47; 4:62-67; Fig.
6. These buttons could likewise create a trigger signal. Given that the specification explicitly
describes a situation where the method for providing wireless control of a media player may
include responses to a nonverbal signal, it would be improper to limit “trigger signal” to a word.
The prosecution history does not compel a contrary result. In its remarks, the patentee
stated that “computer code for receiving a trigger signal” “may include, but is not limited to,
receiving an audible command to trigger operation.”

SUBSTITUTE AMENDMENT B

AT

23

(emphasis in original), U.S. PATENT APPL. SER. NO. 12/104,207 (MAR. 21, 2011), EX. 14
ATTACHED TO RESPONSE.
AT

The application was subsequently allowed. REASONS FOR ALLOWANCE

2, U.S. PATENT APPL. SER. NO. 12/104,207 (APR. 7, 2011), EX. 19 ATTACHED TO RESPONSE.

Thus, neither the specification nor the prosecution history reflect a clear intent to restrict “trigger
signal” to a word. See Arlington Industries, Inc. v. Bridge Fittings, Inc., 632 F.3d 1246, 1254
(Fed. Cir. 2011) (“[E]ven where a patent describes only a single embodiment, claims will not be
read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope
using words or expressions of manifest exclusion or restriction.”) (internal citations omitted);
Libel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004). Defendants do not

18

point out any clear disclaimer within the specification or the prosecution history that would
dictate a claim construction contrary to the claim language. Thus, both the specification and
prosecution history support a reading where the trigger signal may be an inaudible indicator.
Moreover, Claims 31 and 32—which both depend on Claim 1—present a presumption
that the trigger signal is not required to be a word. See Phillips, 415 F.3d at 1315 (“[T]he
presence of a dependent claim that adds a particular limitation gives rise to a presumption that
the limitation in question is not present in the independent claim.”). “This presumption is
‘especially strong when the limitation in dispute is the only meaningful difference between an
independent and dependent claim, and one party is urging that the limitation in the dependent
claim should be read into the independent claim.’” Retractable Technologies, Inc. v. Becton,
Dickinson and Co., 653 F.3d 1296, 1312 (Fed. Cir. 2011) (Rader, J., dissenting) (citing SunRace
roots Enter. Co., Ltd. v. SRAM Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003)). Claim 31 states
that “the trigger signal is audible,” and Claim 32 states that “the trigger signal includes an
audible trigger word.” ‘599 patent at 9:59-63. Because these dependent claims add limitations
that further narrow Claim 1, specifically, the “audible” and “word” limitations, the presumption
of claim differentiation favors a reading where “trigger signal” need not be a word. See DigitalVending Serv. Int’l, LLC v. Univ. of Phoenix, Inc., 372 F.3d 1270, 1275 (Fed. Cir. Mar. 7, 2012)
(“[C]laims are interpreted with an eye toward giving effect to all terms in the claim.”) (internal
citations omitted); Retractable, 653 F.3d at 1312 (Rader, J., dissenting); Innova/Pure Water, Inc.,
381 F.3d at 1119 (“[A]ll claim terms are presumed to having meaning in a claim.”).
Defendants cite to Retractable for the proposition that the presumption of claim
differentiation is overcome because “every embodiment and every drawing of the ‘599 patent
exclusively describes voice activation via a ‘trigger word.’” RESPONSE

19

AT

14. However, as

illustrated above, the specification discloses some examples of inaudible trigger signals, i.e.,
trigger signals that are not words. Further, “[t]he claims of a patent define the invention to which
the patentee is entitled the right to exclude.” Phillips, 415 F.3d at 1312 (quoting Innova/Pure
Water, Inc., 381 F.3d at 1115). While the claims must be read in light of the specification, the
disclosures within the specification do not overcome the “bedrock principle” that the claims, not
the written description, define the invention. Id. at 1312, 1315, 1327 (holding that a baffle may
be at a right angle despite no such disclosure in the specification). To do otherwise would be to
improperly import a limitation from the specification into the claims. Thus, Retractable is
inapplicable under these circumstances; this is not a situation where “a contrary construction [is]
dictated by the written description or prosecution history.” See Retractable, 653 F.3d at 1305.
Consequently, the Court concludes that a trigger signal is not necessarily a word. Having
resolved the parties’ claim scope dispute, the Court finds that no construction is necessary for the
term “trigger signal.” See O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351,
1362 (Fed. Cir. 2008).
IV.

“wireless control”8

Plaintiff’s Proposed Construction
No construction necessary

Defendants’ Proposed Construction
use of the media player without hardwired
controls
alternatively, control of the media player
without hardwired controls

The central dispute is whether all control of the media player must be wireless.
Defendants argue that “wireless control” means “without hardwired controls,” which reflects the
patent’s invention: the ability to control the media player wirelessly, i.e., via voice recognition.
RESPONSE AT 15-17. While Stragent does not dispute that “wireless” means “without hardwired
8

This term is contained in Claims 1, 41 & 76.
20

controls,” Stragent maintains that Defendants’ proposed constructions may be misinterpreted to
mean that (1) the media player itself cannot have any hardwired controls/connections; and (2) the
media player must always be controlled wirelessly. PLTFF’S BRIEF

AT

14-15. To that end,

Defendants clarify that its proposals do not require that all aspects of the media player need be
wireless or that all control of the media player is wireless.

RESPONSE

AT

17.

Rather,

Defendants’ constructions simply emphasize that the system “is ‘operable’ so as to ‘enable’ the
user to control the media player without having to use hardwired controls.” Id.
Stragent contends that the term “wireless control” will be easily understood by a jury, and
therefore, the term requires no construction. REPLY

AT

8. The Court agrees. In general, the

parties do not seem to present a claim scope dispute, having clarified arguments within the
briefing. However, to the extent an issue remains, the Court finds that the media player may be
equipped with hardwired controls that may control the media player.
As stated above, the preferred embodiment discloses the use of hardwired buttons that
may be used to control the media player. See supra SECTION III. Specifically, buttons may be
used to adjust the FM frequency. See ‘599 patent at 5:44-47; Figs. 4 & 5; accord id. at 2:52-53
(“media player may include an iPod®”). The specification discloses the FM frequency-adjusting
buttons in conjunction with a method for controlling the media player by wireless means, in this
case, via utterances.

Id. at 5:31-33 (“a media player in connection with an assembly for

receiving utterances”). Thus, as the specification notes, and as Defendants concede, the ability to
control the media player via hardwired controls, i.e., buttons, does not preclude the ability to
control the media player via wireless controls or voice commands.
The prosecution history further supports such a reading. In Plaintiff’s PCT application,
the patentee noted that “any voice command is a means for wireless control.” PCT/US05/41640

21

(APR. 2005), EX. 2 AT V.2., ATTACHED TO PLTFF’S BRIEF. Thus, an audible command can control
the media player; however the patentee’s comment does not preclude the use of hardwired
controls to manipulate the media player.

In the examiner’s statement for allowance, the

examiner commented that the prior art, which used dials, buttons, and touch screens, “only
disclosed hardwired control of the media player,” contrary to the ‘599 patent. RESPONSE AT 16
(emphasis in original). Specifically, the examiner stated that the “the media player [disclosed in
the prior art] is not provided for wireless control to generate a corresponding command based on
an utterance. That is, there is nothing that suggests speech recognition for controlling a media
player by a command based on an utterance or for wireless control.” REASONS FOR ALLOWANCE
AT

2, U.S. PATENT APPL. SER. NO. 12/104,207 (APR. 7, 2011), EX. 19 ATTACHED TO RESPONSE.

Not only did the examiner point out that the prior art did not use wireless control at all, but the
examiner implied that such wireless control occurred via an utterance. Such an observation does
not preclude the coexistence of hardwired buttons and wireless control of the media player.
Finally, the Court finds that construction of the term “wireless control,” as Defendants
propose, would confuse the jury. Defendants’ proposals could potentially mislead the jury into
thinking that the media player must be void of any hardwired controls. As stated above, neither
the specification nor the prosecution history support such a reading. Therefore, the Court finds
that control of the media player may be conducted by both hardwired and wireless means.
Accordingly, the Court finds that no construction is necessary for “wireless control.”
V.

“computer code for verifying the utterance using [utilizing] the speaker”9

Plaintiff’s Proposed Construction
No construction necessary

9

Defendants’ Proposed Construction
computer code for replaying the utterance for
the user who provided the utterance and
allowing the user to either accept or reject the
utterance

This term is contained in Claims 1, 41, 76 & 96.
22

Stragent takes issue with Defendants’ proposed construction because it unnecessarily
imports two limitations, requiring that the computer code: (1) replay the utterance for the user
and (2) allow the user to accept or reject the utterance. PLTFF’S BRIEF AT 18. Stragent notes that
many of the dependent claims disclose such limitations, and therefore these requirements should
not restrict the independent claims. Id. at 17-18. Further, Defendants’ proposal limits the term
to a preferred embodiment disclosed in the specification. Id. at 18.
Defendants argue that verifying the utterance requires playback of the utterance in order
to confirm the utterance was properly received, and subsequently, feedback from the user to
verify that the replayed utterance is correct. RESPONSE AT 25. This two-step process is disclosed
in the specification. Id. at 26 (citing ‘599 patent at 5:11-20).
Defendants cite to a portion of the specification that notes the utterance is replayed and
then either accepted or rejected in order to verify the utterance:
In use, the utterance may be verified by replaying the utterance for the user who
provided the utterance and allowing the user to either accept or reject the
utterance. For example, in playing the utterance back for the user, the user may
be prompted to either state “yes” or “no.” If the user rejects the utterance, the
user may then be prompted to give the utterance again. In this way, the verifying
may allow for the adjusting of the received utterance if it is not verified. Of
course, any type of verification process may optionally be utilized for verifying
the utterance.
‘599 patent at 5:11-20. While the majority of Defendants’ proposed construction is taken
directly from the specification, Defendants’ proposal is nonetheless limited to a preferred
embodiment of the invention.

Moreover, the portion of the specification Defendants cite

elaborates that “any type of verification process may optionally be utilized for verifying the
utterance.” Id. at 5:18-20. Thus, the replay and accept/reject limitations Defendants propose
unduly limit the claims—contrary to the specification—and therefore the Court declines to

23

import these limitations into the claims. See Arlington Indus., 632 F.3d at 1254; Phillips, 415
F.3d at 1323 (cautioning against confining claims to preferred embodiments); Libel-Flarsheim,
358 F.3d at 906 (refusing to limit the claims to the single embodiment described in the
specification).
In addition, the claims simply require “computer code for verifying the utterance.” See
e.g., ‘599 patent at 8:1-2. The plain language of the claim does not require additional limitations
such as replaying, accepting, or rejecting the utterance. Moreover, many of the dependent claims
further limit the independent claims to include the replay, accept, and reject limitations. For
example, Claim 17, which depends on Claim 1 (via intermediary dependent claim 16), recites:
“The computer program of claim 16, wherein the computer program product is operable such
that a user is allowed to accept or reject the utterance outputted via the speaker.” ‘599 patent at
9:5-8; see also id. at 13:46-49 (Claim 95).

Thus, Claim 17 already narrows Claim 1 by

disclosing the additional accept/reject limitation Defendants propose.

Similarly, dependent

Claims 96 and 97 iterate the replay limitation: “The system of claim 76, wherein the verifying
includes playing a word corresponding to the utterance,” id. at 13:50-51 (Claim 96) and “The
system of Claim 96, wherein the playing includes replaying.” Id. at 13:52-53 (Claim 97).
Because the dependent claims recite the replay, accept, and reject limitations, the doctrine of
claim differentiation creates a presumption that these limitations shall not be read into the
independent claims.
Having resolved the parties’ claim scope dispute, the Court finds that no construction is
necessary for the term “computer code for verifying the utterance using [utilizing] the speaker.”
See O2 Micro, 521 F.3d at 1362.

24

VI.

“media player”10

Plaintiff’s Proposed Construction
No construction necessary

Defendants’ Proposed Construction
any portable software and/or hardware capable
of outputting any sort of media

The parties dispute whether the media player must be portable. Stragent contends that
the media player need not be portable, especially in light of the specification’s disclosure that the
media player may be built-in to stationary devices, such as servers. PLTFF’S BRIEF

AT

15-16

(citing ‘599 patent at 2:52-65; Fig. 1). Stragent further maintains that the claims of the ‘599
patent sufficiently describe the media player such that no construction is necessary. Id. at 15.
To the contrary, Defendants propose that the patentee acted as its own lexicographer,
providing a special definition of media player. RESPONSE AT 22. In particular, Defendants point
to the specification where the patentee discloses that the media player is portable. Id. at 22-23
(citing ‘599 patent at 2:52-55). Moreover, the specification repeatedly discloses embodiments
where the media player is an iPod, which is a portable device. Id. at 24-25 (citing 3:15-25; 5:2324; 5:39; Figs. 5 & 6).
Defendants are correct that the specification identifies an iPod as a type of media player.
However, while an iPod, or something similar, may be the preferred embodiment, the
specification does not limit the media player to an iPod or other portable device:
In the context of the present description, a media player may include an iPod®, a
portable satellite radio player, and/or any portable software and/or hardware
capable of outputting any sort of media [e.g. audible media (e.g. music, news,
non-fiction information, fictional stories, etc.), visual media (e.g. pictures, video
in the form of movies, news, programming, etc.), etc.].
Still yet, as an option, the media player may be used in conjunction (e.g.
built-in, retrofitted with, coupled to, etc.) [with] any desired device including, but
not limited to a cellular phone, personal digital assistant, etc. (e.g. see, for
example, any of the devices of FIG. 1, etc.). Of course, it is contemplated that the
media player may further be a stand alone product.
10

This term is contained in Claims 1, 41, 44, 51, 76 & 77.
25

‘599 patent at 2:52-65 (emphasis added). The portion of the specification cited above states that
a media player may be an iPod or other portable device, expressing that a media player is not
confined to such examples. Moreover, the disclosure notes that the media player may be “builtin . . . any desired device including . . . any devices of FIG. 1.” Such devices of Figure 1 include
a server device and a desktop computer. Id. at 1:64-2:7. These types of devices are not
necessarily portable, and further, the specification articulates that “any of the foregoing devices
[server device or desktop computer] in the present network architecture 100, as well as any other
unillustrated hardware and/or software, may be equipped with voice control of an associated
media player.” Id. at 2:4-7. Thus, the specification contemplates that the media player may be
built-in to a non-portable device, such as a server or desktop computer.
.
.
Accordingly, to construe “media player” as a portable device would unnecessarily limit
the claim language. Further, the Court finds that “media player” will be easily understood by a
layperson.

Having resolved the parties’ dispute, the Court concludes that “media player”

requires no construction.
CONCLUSION
For the foregoing reasons, the Court adopts the constructions set forth above.
SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 3rd day of July, 2013.

So ORDERED and SIGNED this 3rd day of July, 2013.

26