Smartflash LLC et al v. Apple Inc, et al

Filing 432

MEMORANDUM OPINION AND ORDER. The Court ADOPTS the claim construction for the patents-in-suit. Signed by Magistrate Judge K. Nicole Mitchell on 01/26/15. (mll, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
SMARTFLASH LLC, et al.,
Plaintiffs,
v.
APPLE INC., et al.,
Defendants.

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CASE NO. 6:13cv447-JRG-KNM

JURY TRIAL DEMANDED

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Plaintiffs,
v.
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SAMSUNG ELECTRONICS CO., LTD. §
et al.,
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Defendants.
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SMARTFLASH LLC, et al.,

CASE NO. 6:13cv448-JRG-KNM
JURY TRIAL DEMANDED

MEMORANDUM OPINION AND ORDER
This Memorandum Opinion resolves an additional claim construction dispute in United
States Patent Numbers: (1) 7,334,720; (2) 7,942,317; (3) 8,033,458; (4) 8,061,598; (5) 8,118,221;
and (6) 8,336,772. For the reasons discussed below, the Court resolves the dispute as stated.
BACKGROUND
On November 14, 2014, Smartflash filed a Motion to Enforce Compliance with O2 Micro,
or in the Alternative, to Resolve Manufactured Claim Construction Disputes that Defendants Intend
to Argue to the Jury (6:13CV447, Doc. No 317; 6:13CV448, Doc. No. 363). 1 The Court heard
argument on dispositive and Daubert Motions on December 2, 2014. At that hearing, the Court also

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The Court GRANTED that motion in the alternative by ordering supplemental claim construction briefing as noted
below.

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heard argument on Smartflash’s Motion and ordered the parties to submit supplemental claim
construction briefing. Smartflash and Defendants Apple, Inc., Samsung Electronics Co., Ltd.,
Samsung Electronics America, Inc., Samsung Telecommunications America, LLC, HTC
Corporation, HTC America, Inc., Exedea, Inc. (collectively “Defendants”) submitted additional
briefing.
Smartflash alleges Defendants infringe the following patents: U.S. Patent No. 7,334,720 (the
’720 Patent); U.S. Patent No. 7,942,317 (the ’317 Patent); U.S. Patent No. 8,033,458 (the ’458
Patent); U.S. Patent No. 8,061,598 (the ’598 Patent); U.S. Patent No. 8,118,221 (the ’221 Patent);
and U.S. Patent No. 8,336,772 (the ’772 Patent). All patents are titled “Data Storage and Access
Systems.” The patents-in-suit all stem from a common specification and share a common written
description and figures.
APPLICABLE LAW
“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to
which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d
1111, 1115 (Fed. Cir. 2004)). The Court examines a patent’s intrinsic evidence to define the
patented invention’s scope. Id. at 1313–14; Bell Atl. Network Servs., Inc. v. Covad Commc’ns
Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). Intrinsic evidence includes the claims, the rest
of the specification, and the prosecution history. Phillips, 415 F.3d at 1312–13; Bell Atl. Network
Servs., 262 F.3d at 1267. The Court gives claim terms their ordinary and customary meaning as
understood by one of ordinary skill in the art at the time of the invention. Phillips, 415 F.3d at
1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 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
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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 than 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

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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., L.P., 323 F.3d 989, 994 (“The disclaimer . . . must be effected with ‘reasonable clarity
and deliberateness.’”) (citations omitted)). “Indeed, by distinguishing the claimed invention over the
prior art, an applicant is indicating what the claims do not cover.” Spectrum Int’l v. Sterilite Corp.,
164 F.3d 1372, 1378–79 (Fed. Cir. 1988) (internal 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.

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CLAIM CONSTRUCTION

“content data memory” / “data memory” / “parameter memory” / “use rule memory” / “use status
data” / “use rules”
Uniloc’s Proposed Construction
No construction necessary

Defendant’s Proposed Construction
Each of (1) “content data memory,” and “data
memory” is, at least logically separate from
These terms do not require “logically separate” each of (2) “parameter memory” and “use rule
memory”
memories
“use status data” requires, at least, logically
separate storage from content data
“use rules” require, at least logically separate
storage from content data
At the claim construction hearing and in the parties’ claim construction briefing, initially the
dispute for these terms centered on whether the memory types had to be physically separate from
each other.

The Court determined that they did not have to be physically separate.

Now,

Defendants conten that the terms require some separation, if not physically, then logically separate.
Smartflash contends separation is not required.
Defendants argue that the claim language supports that the memory terms must be logically
separate. 6:13CV447, Doc. No. 360 at 2. Defendants point to Claim 1 of the ’720 Patent, which
recites “a data carrier comprising non-volatile data memory storing content memory and nonvolatile parameter memory storing use status data and use rules.” Id. at 2–3. Defendants assert that
where claim elements are listed separately and the claim uses “and,” the inventor clearly intended to
claim separate and distinct components.

Id. at 3 (citing TIP Sys. LLC, v. Phillips &

Brooks/Gladwin, Inc., 529 F.3d 1364, 1375–76 (Fed. Cir. 2008); Becton, Dickinson & Co. v. Tyco
Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010); Gaus v. Conair Corp., 363 F.3d
1284, 1288 (Fed. Cir. 2004)). Defendants contend that a person having ordinary skill in the art (a
“PHOSITA”) would similarly interpret Claims 2, 7, 15 and 31 of the ’598 Patent as referring to
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separate and distinct memories. Id. (citing Defendants’ experts’ declarations). Defendants further
contend that Smartflash’s construction ignores express claim language and impermissibly broadens
the claim scope. Id. at 4. Moreover, Defendants argue that Smartflash’s attempt to support its
position by citing Cannon Rubber Ltd. v First Years, Inc., 163 Fed. Appx. 870, 877 (Fed. Cir. 2005)
fails because the Federal Circuit distinguished between claims reciting functional language and
claims reciting purely structure. According to Defendants, Federal Circuit precedent requires that
where claims recite only structural components in separate claim elements, they must be distinct.
Id. at 5–6 (citing Gaus, 363 F.3d 1284).

Further, Defendants assert that the specification

“indisputably discloses distinct memory structures.” Id. at 6–7. (citing the ’720 Patent cols. 17:40–
42; 18:8–10; 18:18–20; Figure 9) (“. . . data memory also stores an index of content data stored in
Flash memory 214 and associated content use rules, as well as DRM and royalty data for
maintaining an audit trail of use history for rights management . . . . content data memory 214
preferably comprises at least 100 MB of data storage, partitioned as data blocks of a size selected to
match the stored content type.”).
Additionally, Defendants contend that the patentee made statements in the prosecution
history that support their construction. Id. at 7. Defendants highlight statements by the patentee
that explain how content data and “use status data” are separately stored when distinguishing over a
prior art reference.

Defendants assert such statements are binding even if not necessary to

overcome prior art because the patentee made claim amendments to overcome a Patent Office
rejection. Id. (citing Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1377 (Fed. Cir.
2008)). Further, Defendants assert that a PHOSITA would read the pre-amendment claim language
to cover “use status data and use rules read from either recited memory,” but the post-amendment
language “makes clear that use status data and use rules are read from only parameter memory,
separate from data memory.” Id. at 8 (citing the Court’s Claim Construction Order, 6:13CV447,
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Doc. No. 229 at 17). Defendants cite Shire Dev., LLC v. Watson Pharms., Inc., 746 F.3d 1326,
1332 (Fed. Cir. 2014) (finding claims required separate and distinct matrices based on a prosecution
history statement), for the proposition that, even where statements in prosecution history do not rise
to an unmistakable disavowal, they still inform the claim construction. Id. at 9. Defendants
contend that the Court should also interpret the patentee’s prosecution history statements about “use
status data” and “use rules” to require a distinction between the different recited memories in the
claims.
Moreover, Defendants assert that the same reasoning applies for “use status data” as the
“memory” terms for the requirement that “use status data” is always stored separately from content
data. Id. at 10. According to Defendants, the plain claim language and the prosecution history
similarly support that “use status data” must be stored logically separate from content.
Smartflash responds that prosecution disclaimer does not apply because the Court could
reasonably interpret the prosecution statements as relating to the lack of disclosure of “use rules” in
the prior art, not storing “use status data” and content data separately. 6:13CV447, Doc. 365 at 4.
Smartflash points to the Court’s Claim Construction Order stating, “[t]he applicant contrasted the
invention with the electronic ticket information of [the prior art], which was validated by an
electronic signature, not use rules.” Id. (quoting 6:13CV447, Doc. No. 229 at 18). Smartflash
asserts that because this interpretation is reasonable, Defendants cannot show clear and
unambiguous disavowal that would warrant anything less than the full claim scope. Id. at 4–5.
Smartflash argues that Shire does not apply here because claim language in that case made it
chemically and spatially impossible for the inner and outer matrices to be the same thing. Id. at 5
n.3. Smartflash continues that even if prosecution disclaimer applies, it should only apply to “twomemory claims like [C]laim 1 of the’720 [P]atent.” 2 Id. at 6. Smartflash takes the position that

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According to Smartflash, these include Claim 1 of the ’720 Patent and Claims 2, 7, and 15 of the ’598 Patent.

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claims that do not explicitly recite content and use rules as stored in two different memories do not
require separate storage. Id. at 7. Smartflash asserts that the prosecution statements referred only to
those claims, and other claims should be unaffected. Id. 7–8.
Moreover, Smartflash contends that any degree of separation satisfies the alleged
requirement. Id. at 8. According to Smartflash, Defendants’ own experts provided inconsistent
theories of “logical separation” in their reports and depositions despite now submitting declarations
that present a unified theory.

Id. at 9. (citing several different reports and depositions from

Defendants’ experts). Smartflash contends that Defendants’ failure to withdraw the conflicting
theories indicates they plan to argue claim construction to the jury. Id. As an example, Smartflash
argues that Defendants’ experts have no basis for their theory that two files are sufficiently separate
inside a folder but not inside a ZIP file. Id. at 10. Smartflash maintains that this theory is a clear
attempt to set up non-infringement arguments and explains how Apple’s applications contain “use
status data” and “content data” in a data structure analogous to a ZIP file. Id. Instead, Smartflash
asserts, separate data structures in the same file can also be “logically separate.” Id.
Smartflash does not address the plain language of Claim 1 of the ’720 Patent that distinctly
recites content and parameter memories or similar language from other claims. Although the claim
language does not require physically separate memories, separately listed claim elements require
some distinction. See, e.g., Becton, Dickinson, 616 F.3d at 1254. Neither does Smartflash address
Defendants’ other arguments regarding the support for separate memories in the specification.
Similarly, the specification provides support for some degree of separateness among the memories,
at least where recited distinctly in the claims. See ’720 Patent cols. 6:33–39; 18:1–23.
Smartflash focuses on one of the Court’s statements in the Claim Construction Order: “The
applicant contrasted the invention with the electronic ticket information of [the prior art], which was
validated by an electronic signature, not use rules.” 6:13CV447, Doc. No. 229 at 18. However,
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immediately preceding that statement, the Court noted “the applicant relied on evaluating ‘separate
use data’ according to use rules.” These separate use rules were in contrast to “‘ticket data that is
either valid or not valid in and of itself’” with no degree of separateness. Id. (quoting 6:13CV447,
Doc. No. 160, Ex. G, 2/6/2007 Amendment at 2 & 9–10). Therefore, even though the Court
rejected Defendants’ proposal of physically separate memories, the Court did not preclude a
requirement of logically separate memories.
Further, “[a]n applicant’s invocation of multiple grounds for distinguishing a prior art
reference does not immunize each of them from being used to construe the claim language. Rather,
as [the Federal Circuit has] made clear, an applicant’s argument that a prior art reference is
distinguishable on a particular ground can serve as a disclaimer of claim scope even if the applicant
distinguishes the reference on other grounds as well.” Andersen Corp. v. Fiber Composites, LLC,
474 F.3d 1361, 1374 (Fed. Cir. 2007). The patentee therefore, may be held to statements explaining
how content data and use status data are separately stored when distinguishing over the prior art
even if there were additional grounds for distinguishing the prior art. Additionally, clear disavowal
is not required to simply inform claim construction. See Shire, 746 F.3d at 1332 (“Although the
prosecution history statements do not rise to the level of unmistakable disavowal, they do inform
the claim construction.”).
Thus, the patentee’s statements during prosecution support Defendants’ argument that some
degree of separation is required where distinct memories are recited or the claims indicate that
particularly types of data are separately stored.
On balance, where claims recite two distinct memories, such as “parameter memory” and
“content memory,” or otherwise state that content data is stored separately from “use rules” or “use
status data,” logically separate storage is necessary. Smartflash concedes that, if adopted, the

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“logically separate” requirement would apply to Claim 1 of the ’720 Patent and Claims 2, 7, and 15
of the ’598 Patent. 6:14CV447, Doc. No. 365 at 5–6.
Claim 31 of the ’598 Patent recites that “use rules” and “ use status data” are read from
“parameter memory,” but, as Smartflash notes, the claim does not explicitly recite another distinct
memory type for storing content. However, “parameter memory” is used throughout the claims and
specification as storing “use rules” and “use status data” separately from content. Claim 31 of the
’598 Patent must be consistently interpreted in light of the specification and the context of the other
claims that distinctly recite both “parameter memory” and “content data memory.” See Phillips,
415 F.3d at 1314 (”Because claim terms are normally used consistently throughout the patent, the
usage of a term in one claim can often illuminate the meaning of the same term in other claims.”);
CardSoft v. Verifone, Inc., 769 F.3d 1114, 1117 (Fed. Cir. 2014). Therefore, logically separate
storage is also required for “parameter memory” and content for Claim 31 of the ’598 Patent.
Claim 26 of the ’772 Patent, by contrast, recites only “non-volatile memory” (rather than
distinguishing between non-volatile “parameter memory” and non-volatile “content memory”) and
does not otherwise specify that content is necessarily stored separately from “use status data and use
rules.” Therefore, there is no separate storage requirement for that claim. Similarly, for example,
Claims 8, 10, and 11 of the ’458 Patent and Claim 32 of the ’772 Patent do not distinctly recite
separate memories for “use status data” and “stored data.”
Arguments related to whether two files stored in a ZIP archive file are logically separate, as
well as arguments related to memory cells, partitioned memory, and memory linking, relate to
questions of fact for determining infringement rather than questions of law for claim construction.
See PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998) (“[A]fter the court
has defined the claim with whatever specificity and precision is warranted by the language of the

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claim and the evidence bearing on the proper construction, the task of determining whether the
construed claim reads on the accused product is for the finder of fact.”).
Thus, for claims reciting both “data memory” and “parameter memory” or “use rule
memory,” 3 the “content data memory” or “data memory” must be logically separate from the
“parameter memory” or “use rule memory.” Likewise, the claims require “use status data” and
“use rules” to be stored separately from content only where the claims explicitly recite such a
requirement, such as by distinctly reciting different memories.
CONCLUSION
The Court hereby ADOPTS the above claim construction for the patents-in-suit.

So ORDERED and SIGNED this 26th day of January, 2015.

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Of the claims that the parties have addressed, the claims that fall into this category are Claim 1 of the ’720
Patent and Claims 2, 7, and 15 of the ’598 Patent. See 6:14CV447, Doc. 360 at 2; id., Doc. No. 365 at 6.
Claim 31 of the ’598 Patent requires similar treatment.

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