Smartflash LLC et al v. Apple Inc, et al

Filing 351

ORDER ADOPTING REPORT AND RECOMMENDATIONS. The Court ADOPTS 229 Report and Recommendations as the findings and conclusions of this Court; overrules 251 Objections, and denies 161 Motion for Summary Judgment for Invalidity. Signed by Judge Michael H. Schneider on 12/04/14. (mll, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
SMARTFLASH LLC, et al.,
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CIVIL ACTION NO. 6:13cv447
Plaintiffs,
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v.
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JURY TRIAL DEMANDED
APPLE INC., et al.,
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Defendants.
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SMARTFLASH LLC, et al.,
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Plaintiffs,
v.
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SAMSUNG ELECTRONICS CO., LTD. §
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et al.,
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Defendants.
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CIVIL ACTION NO. 6:13cv448
JURY TRIAL DEMANDED

ORDER ADOPTING REPORT AND RECOMMENDATION
OF UNITED STATES MAGISTRATE JUDGE
The above entitled and numbered civil action was referred to United States
Magistrate Judge K. Nicole Mitchell pursuant to 28 U.S.C. § 636.

The Report and

Recommendation of the Magistrate Judge (“R&R”), which recommends adoption of the
Court’s claim construction and denial of Defendants’ Motions for Summary Judgment for
Invalidity, has been presented for consideration (6:13cv447, Doc. No. 229; 6:13cv448,
Doc. No. 270). Defendants filed objections (6:13cv447, Doc. No. 251; 6:13cv448, Doc.
Nos. 303, 304) to the R&R.

Defendants’ objections assert that the R&R violated the “Federal Circuit’s clear
directions” by not applying 35 U.S.C. § 112, ¶ 6 to apparatus claims reciting the word
“processor.” 6:13cv448, Doc. No. 304 at 2 (citing Aristocrat Techs. Austl. PTY Ltd. v. Int’l
Game Tech.., 521 F.3d 1328 (holding that under § 112, ¶ 6, a “control means” claim
limitation was indefinite because the patent did not disclose an algorithm); Noah Sys. Inc.
v. Intuit Inc., 675 F.3d 1302 (holding that under § 112, ¶ 6, an “access means” claim
limitation was indefinite because the patent disclosed an algorithm that failed to enable one
skilled in the art)); see also 6:13cv447 Doc. No. 251 at 5. Additionally, Defendants point
out that the R&R did not address the Personal Audio case from this District that construed
limitations reciting a “processor” as means plus function claims subject to § 112, ¶ 6.
6:13cv448, Doc. No. 304 at 2; 6:13cv447, Doc. No. 251 at 5; Personal Audio, LLC v.
Apple, Inc., No. 9:09-cv-111, 2011 WL 11757163 (E.D. Tex. Jan. 30, 2011). The Court
addresses Federal Circuit guidance on this issue and the Personal Audio case below.
Federal Circuit Guidance
Section 112, ¶ 6(now § 112(f)) allows a patentee to claim a “means or step for” a
function without reciting structure to support that function, but the “claim shall be
construed to cover the corresponding structure . . . described in the specification and
equivalents thereof.” Accordingly, “[m]eans-plus-function claiming applies only to purely
functional limitations that do not provide the structure that performs the recited function.”
Phillips v. AWH Corp., 415 F.3d 1303, 1311 (Fed. Cir. 2005). Thus, the court must first
determine whether the limitation invokes § 112, ¶ 6. Rodine PLC v. Seagate Tech., Inc.,
174 F.3d 1294, 1302 (Fed. Cir. 1999). A limitation that actually uses the word “means”

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raises a rebuttable presumption that § 112, ¶ 6 applies. Lighting World, Inc. v. Birchwood
Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004). By contrast, when a claim limitation
lacks the term “means,” it creates a rebuttable presumption that § 112, ¶ 6 does not apply.
Id. “The use of the term ‘means’ is ‘central to the analysis,’ because the term ‘means,’
particularly as used in the phrase ‘means for,’ is ‘part of the classic template for functional
claim elements,’ and has come to be closely associated with means-plus-function
claiming.” Id. (internal citations omitted).
The presumption that §112, ¶ 6 does not apply can be “overcome if the claim fails
to recite sufficiently definite structure, or else recites function without sufficient structure
for performing that function.”

Id. (internal citation and quotation marks omitted).

However, the Federal Circuit has “repeatedly characterized this presumption as ‘strong’
and ‘not readily overcome’ and, as such, ha[s] ‘seldom’ held that a limitation without
recitation of ‘means’ is a means-plus-function limitation.” Apple, Inc. v. Motorola, Inc.,
757 F.3d 1286, 1297 (Fed. Cir. 2014) (citing Lighting World, 382 F.3d at 1358; Flo
Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1374 (Fed. Cir. 2012) (“When the
claim drafter has not signaled his intent to invoke § 112 ¶ 6 by using the term ‘means,’ we
are unwilling to apply that provision without a showing that the limitation is essentially
devoid of anything that can be construed as structure.”)). “The correct inquiry, when
‘means’ is absent from a limitation, is whether the limitation read in light of the remaining
claim language, specification, prosecution history, and relevant extrinsic evidence, has
sufficiently definite structure to a person of ordinary skill in the art.” Id. at 1298.

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In computer implemented inventions, one of ordinary skill in the art can understand
“structure” through an outline of an algorithm, a flowchart, or set of instructions or rules,
rather than traditional physical structure. Id. (citing Typhoon Touch Techs., Inc. v. Dell,
Inc., 659 F.3d 1376, 1385 (Fed. Cir. 2011) (“[T]he patent need only disclose sufficient
structure for a person of skill in the field to provide an operative software program for the
specified function.”)). Section 112, ¶ 6 will not apply to terms “used in common parlance
of by persons of ordinary skill in the pertinent art to designate structure.” Lighting World,
382 F.3d at 1359. Additionally, the Federal Circuit has held that terms such as “detector”
and “circuit” are structural terms while generic terms such as “means,” “element,” and
“device” are nonstructural.

Apple, 757 F.3d at 1299 (citing Personalized Media

Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 705 (Fed. Cir. 1998); Apex Inc. v.
Raritan Computer, Inc., 325 F.3d 1364, 1373 (Fed. Cir. 2003)). Even if a term covers a
broad class of structures and identifies structures by their function, it is sufficient to avoid
means-plus-function treatment. Lighting World, 382 F.3d at 1360. What is important is
whether the term is understood to describe structure and is not simply a substitute for
“means for.” Id.
As a preliminary matter, in two cases cited by Defendants as providing clear
directions to the Court, Aristocrat and Noah, the asserted claims included the term
“means.” There were no disputes that means-plus-function claim construction applied.
Thus, neither case analyzed the presumption against the applicability of § 112, ¶ 6 where a
claim does not recite “means.”

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In Aristocrat, the court determined that the specification’s disclosure for “control
means” of a standard microprocessor with appropriate programming did not sufficiently
define the scope of the means-plus-function claim. 521 F.3d at 1331, 1338. Noting its
clear applicability because the claim explicitly recited “means,” the court applied § 112, ¶
6, which requires the scope of the claim limitation to be defined by the structure disclosed
in the specification plus any equivalents thereof. Id. at 1331. The court noted that “[i]n
cases in which the inventor has invoked means-plus-function claiming, this court has
consistently required that the structure disclosed in the specification be more than simply a
general purpose computer or microprocessor.” Id. at 1333. Additionally, the court stated
that allowing the “patentee to claim a means for performing a particular function and then
to disclose only a general purpose computer as the structure designed to perform that
function amounts to pure functional claiming.” Id.; see also Personal Audio, 2011 WL
11757163, at *22.
Defendants’ argument essentially applies Aristocrat in reverse. Defendants argue
that because “processor” does not adequately define the scope of a means-plus-function
limitation, it also cannot describe sufficient structure to avoid means-plus-function
treatment when recited in the claim itself. 6:13cv448, Doc. No. 304 at 2; see also Doc. No.
177-1 ¶¶ 38–45 (asserting “the identified claims fail[] to disclose sufficient structure”
because “the identified claims do not disclose the specialized algorithms that would be
required to enable a general purpose processor to perform any of the claimed high-level
functions.”). However, in light of the Federal Circuit’s guidance in Apple, Defendants’
reasoning fails; Aristocrat does not apply here, where the claim is not drafted in means-

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plus-function format. See 757 F.3d at 1298; see also Wi-Lan USA, Inc. v. Alcatel-Lucent
USA, Inc., No. 12-23568-CIV, 2013 WL 4811233, at *40 (S.D. Fla. Sept. 9, 2013). The
standard used to prove sufficient structure to avoid means-function-treatment is not
identical to the standard for identifying corresponding structure to a means-plus-function
claim. See 757 F.3d at 1298; see also Wi-Lan, 2013 WL 4811233, at *40–41. Similarly,
Noah does not apply here because it also analyzes the adequacy the specification’s
disclosure for defining claim scope where a patentee has explicitly invoked means-plusfunction claiming. 675 F.3d at 1314–18. It does not address the standard for overcoming
the presumption against means-plus-function treatment. Id.
Defendants’ expert report also fails to address the legal requirements for
overcoming the presumption against means-plus-function treatment when the claims
themselves do not recite the term “means.” In fact, Defendants’ expert begins with the
presumption that the disputed claims contain “‘means-plus-function’ terms governed by 35
U.S.C. § 112, ¶6.” Doc. No. 177-1 ¶ 38. Further, the report states that a processor
“available for purchase during the relevant [] time period is designed to interpret and
execute instructions that are provided to it as compiled machine code.” Id. at ¶ 40.
According to Defendants’ expert, even a “general purpose processor” without specific
instructions can perform “maintenance functions (like stopping, selftesting, or restarting.)”
Federal Circuit precedent requires only that the claim recite some structure.
Lighting World, 382 F.3d at 1359–60. Although “processor” may not define a specific
structure, it describes a class of structures.

See Apple, 757 F.3d at 1300 (citing

Personalized Media, 161 F.3d at 705 (finding that “detector” did not evoke particular

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structure but conveyed to one knowledgeable in the art the variety of structures known as
“detectors”); Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1374–75 (Fed. Cir.
2012) (finding that “height adjustment mechanism” designates “a class of structures that
are generally understood to persons of skill in the art”)).

Like “circuit” in Linear,

“processor” is a structure-connoting term. See 379 F.3d at 1320. It is not a generic
nonstructural term such as “means,” “element,” and “device” that typically do not connote
sufficient structure. Apple, 757 F.3d at 1299–1300. As Defendants’ expert noted, a
processor can be purchased, can perform certain functions even without specific
instructions, and has a design for interpreting and executing instructions. Thus, the term
“processor,” even on its own, recites at least some structure.
Moreover, the Court must not analyze the term “processor” on its own; limitations
should be examined as a whole. See Wi-Lan, 2013 WL 4811233, at *42 (citing Apex, 325
F.3d at 1372).

When a structure connoting term accompanies a description of its

operation, sufficient structural meaning is conveyed to persons of ordinary skill in the art.
Linear Tech, 379 F.3d at 1320 (finding language describing the objective of a “circuit”
such as “monitoring a signal” suggested sufficient structure to a person of ordinary skill in
the art); see also Eolas Techs., Inc. v. Adobe Sys., Inc., 810 F. Supp. 2d 795, 810 (E.D.
Tex. 2011); Aloft Media, LLC v. Adobe Sys. Inc., 570 F. Supp. 2d. 887, 898 (E.D. Tex.
2008), adopted, No. 6:07-CV-355, 2008 WL 5784443 (E.D. Tex. Sept. 24, 2008).
Additionally, the limitations must be read in light of the “remaining claim language,
specification, prosecution history, and relevant extrinsic evidence.” Apple, 757 F.3d at
1298. “Structure may also be provided by describing the claim limitation’s operation such

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as its input, output, or connections.” Id. at 1300. Here, the “processor” terms at issue are
coupled to “controlling acess to data” and “implementing . . . code.” These accompanying
phrases describe the processor’s objective and operation. The patents further describe the
processor’s connections where, in one example, it is “coupled to said non-volatile memory,
said program store, said wireless interface, and a user interface . . . .” ’772 Patent col.
27:62–63; see also id. col 31:5–7 (“a processor coupled to the user interface, to the data
carrier interface and to the program store for implementing the stored code . . . .”).
Contrary to Defendants’ assertions, the patent need not disclose a specific algorithm for
performing claimed functions. Apple, 757 F.3d at 1298. Accordingly, Defendants failed
to overcome the strong presumption that § 112, ¶ 6 does not apply to the “processor” claim
limitations, none of which include the term “means.”
Personal Audio
In Personal Audio, another court in this District found that the strong presumption
against means-plus-function treatment flowing from the absence of “means” had been
rebutted. Personal Audio, 2011 WL 11757163, at *21–22. As in this case, the claim
limitations recited a “processor.” Id. However, the reasoning in Personal Audio relied
heavily on Aristocrat. Id. Since Personal Audio, the Federal Circuit clarified that “where
the claim is not drafted in means-plus-function format, the reasoning in the Aristocrat line
of cases does not automatically apply, and an algorithm is not necessarily required.”
Apple, 757 F.3d at 1298. The Aristocrat reasoning applies where a patentee has expressly
invoked means-plus-function claiming to determine whether the patentee has disclosed

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sufficient structure to define the scope of such a claim. Accordingly, the analysis of
recited structure in Personal Audio differs from the Federal Circuit’s guidance in Apple.
Moreover, Personal Audio differs further from this case. In Personal Audio, both
asserted patents shared a common specification and nearly identical claims were at issue.
2011 WL 11757163, at *1–2, *21–22. The second-issued patent was a divisional of the
first-issued patent. Id. at *1. The court noted that “[t]he claim terms at issue in the
[second-issued] patent are nearly identical to the means-plus-function terms found in the
[first-issued] patent, except that ‘means for’ and ‘means responsive’ have been replaced
with “processor for” and “said processor responds.” Id. at *21. Accordingly, there was
support for finding that the “processer” terms did not describe structure and were simply a
substitute for “means for,” which overcame the presumption. See Lighting World, 382
F.3d at 1360. In this case, “processor” has not simply replaced “means” in otherwise
identical claim language between asserted patents. Therefore, Personal Audio is even less
persuasive in this situation.
Conclusion
The R&R’s reasoning on the “processor” terms follows Federal Circuit precedent
on the strong presumption against applying § 112 ¶ 6 where claims do not recite “means.”
Defendants cite case law instead addressing the adequacy the specification’s disclosure for
defining claim scope where a patentee has explicitly invoked means-plus-function
claiming. Even though Personal Audio is from this District, it does not control here for the

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reasons above. 1 Accordingly, Defendants failed to overcome the presumption against
treating the “processor” limitations as means-plus-function claims.
.
Having also made a de novo review of the other objections filed by Defendants, the
Court finds that the findings, conclusions, and recommendation of the Magistrate Judge are
correct and Defendants’ objections are without merit.

Therefore, the Court hereby

ADOPTS the Report and Recommendation of the United States Magistrate Judge as the
findings and conclusions of this Court. Accordingly, all objections are overruled.
It is SO ORDERED.
SIGNED this 4th day of December, 2014.

____________________________________
MICHAEL H. SCHNEIDER
UNITED STATES DISTRICT JUDGE

1

Neither does Robert Bosch, LLC v. Snap-On Inc., No. 2014-1040, 2014 WL 5137569, *1 (Fed. Cir. Oct.
14, 2014) apply here. Bosch involved claims reciting “device,” a term that the Federal Circuit explicitly
recognizes as a non-structural “nonce” word. Id. at 4; see also Apple, 757 F.3d at 1299. Thus, Bosch’s
analysis differs significantly from this case, where “processor” connotes at least some structure, and does not
affect the Court’s outcome.

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