VStream Technologies, LLC v. PLR IP Holdings, LLC et al
Filing
174
MEMORANDUM OPINION AND ORDER. The Court adopts the constructions as set forth in this Order. Signed by Magistrate Judge John D. Love on 09/27/16. (mll, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
VSTREAM TECHNOLOGIES, LLC
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§
§
§
§
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v.
PLR HOLDINGS, LLC, ET AL.
CASE NO.: 6:15cv974-JRG-JDL
(Lead Case)
MEMORANDUM OPINION AND ORDER
This claim construction opinion construes s o m e o f the disputed claim terms1 in
U.S. Patent No. 6,850,647 (“the ’647 Patent”), U.S. Patent No. 7,489,824 (“the ’824 Patent”),
U.S. Patent No. 7,627,183 (“the ’183 Patent”), U.S. Patent No. 6,690,731 (“the ’731 Patent”),
and U.S. Patent No. 8,179,971 (“the ’971 Patent”). Plaintiff VStream Technologies, LLC
alleges that Defendants infringe the asserted patents.
Plaintiff filed an Opening Claim
Construction Brief (Doc. No. 130), to which Defendants2 filed a Response (Doc. No. 136), and
Plaintiff filed a Reply (Doc. No. 141).
Construction Brief.
(Doc. No. 146.)
Defendants also filed a Supplemental Claim
The parties additionally submitted a Joint Claim
Construction Chart pursuant to P.R. 4-5(d). (Doc. No. 144.) On August 4, 2016, the Court
held a claim construction hearing. (See Doc. No. 149, August 4, 2016 Hearing Transcript
(“Tr.”).)
Upon consideration of the parties’ arguments, and for the reasons stated herein, the
Court adopts the constructions set forth below.
1
The remaining claim terms in dispute between the parties are construed in the Report and Recommendation of
United States Magistrate Judge John D. Love, issued concurrently herewith.
2
Defendants who have joined the claim construction briefing and hearing include: BlackBerry Corp., BlackBerry
Limited, and Motorola Mobility LLC. Contour LLC did not join with respect to claim construction. The Court
granted two joint motions to stay all deadlines in the case with respect to Ricoh Americas Corporation, Ricoh
Company Ltd., Ricoh Imaging Americas Corporation, Ricoh Imaging Company, Ltd., and Ricoh USA, Inc (“Ricoh
Defendants”). (Doc. Nos. 124 & 138.) The time period for the parties’ stays have passed; however, the Ricoh
Defendants have not joined with respect to claim construction. Default was entered against Drift Innovation, Inc. on
May 18, 2016. (Doc. No. 105.) PLR IP Holdings, LLC, PLR Ecommerce, LLC, PLR Brand Services, LLC, C&A
IP Holdings, LLC, C&A Licensing, LLC, and C&A Marketing, Inc. were dismissed from the case. (Doc. No. 118.)
1
OVERVIEW OF THE PATENTS
Plaintiff contends that Defendants literally infringe and induce infringement of the
asserted patents. The ’647 and ’824 Patents relate to “digital processing of compressed video
data and more particularly to decompressing a bit stream representative of a plurality of video
frames generated by a digital camera.” ’647 Patent, 1:13-16; ’824 Patent, 1:15-18. Both the
’647 Patent and the ’824 Patent are entitled “System, method and article of manufacture for
decompressing digital camera sensor data.” Claim 1 of the ’647 Patent is representative and
recites as follows:
1. A method for decompressing a bit stream of compressed data
representing a plurality of image portions, comprising:
obtaining a plurality of bits of compressed input data from a bit
stream;
executing a first AC decoding operation based on the obtained
plurality of bits of compressed input data in order to
generate first output data as a recommendation;
emitting the first output data if it is determined that the
recommendation should be accepted; and
executing a second AC decoding operation in order to generate
second output data if it is determined the recommendation
should not be accepted.
Claim 3 of the ’824 Patent is representative and recites as follows:
3. An apparatus for decoding video data comprising:
means for obtaining encoded video data;
means for executing a first decoding operation on at least a
portion of said encoded video data in order to generate first
decoded data;
means for determining whether the first decoding operation
was sufficiently correct;
means for executing a second decoding operation on said at
least portion of said encoded video data which is slower
than said first decoding operation in order to generate
second decoded data if said first decoding operation was
not sufficiently correct; and
means for using said first decoded data if it is determined that
said first decoding operation was sufficiently correct and
2
said second decoded data if it is determined that said first
decoding operation was not sufficiently correct.
The ’183 Patent is also entitled “System, method and article of manufacture for
decompressing digital camera sensor data.”
The ’183 Patent has substantially the same
specification as the ’647 and ’824 Patents, but its claims relate to pipelined parallel processing
for data decoding. See ’183 Patent, 13:10-14:30. Claim 5 of the ’183 Patent is representative
and recites as follows:
5. A system for decompressing compressed video data in a
processor for increased efficiency, comprising:
a processor module for extracting a plurality of components
from compressed video data using a look-up table;
a central processing unit having at least two pipelines for
receiving the components of the compressed video data for
processing purposes; and
a pipe analyzer coupled between the processor module and the
central processing unit for analyzing the components of the
compressed video data and directing the components of the
compressed video data into one of the pipelines of the
central processing unit based on the analysis.
The ’731 Patent is entitled “Method and apparatus for diagonal processing of video data”
and the ’971 Patent is entitled “Method and apparatus for video data compression.” Both patents
relate to pre-processing diagonally-arranged data. See, e.g., ’731 Patent, 2:30-34; ’971 Patent,
25-29. Claim 1 of the ’731 patent is representative and recites as follows:
1. A method for diagonal processing of video data comprising:
separating diagonally arranged data from rectilinearly arranged
data in a video stream;
rotating said diagonally arranged data to a rectilinear position;
and
compressing said rotated diagonally arranged data by a
rectilinear compression algorithm.
3
Claim 1 of the ’971 Patent is representative and recites as follows:
1. A non-transitory computer readable medium embodying
executable code for implementing a method for compressing video
data comprising:
a code segment rotating diagonally arranged video data to a
rectilinear position when executing on a digital processing
system; and
a code segment compressing said rotated diagonally arranged
data by a rectilinear compression algorithm when executing
on a digital processing system.
LEGAL STANDARD
I.
Claim Construction
“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.”
4
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
5
read into the claims.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir.
1988); see also Phillips, 415 F.3d at 1323.
The prosecution history is another tool to supply the proper context for claim
construction because a patentee may define a term during prosecution of the patent. Home
Diagnostics Inc. v. LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the
specification, a patent applicant may define a term in prosecuting a patent.”).
The well-
established doctrine of prosecution disclaimer “preclud[es] patentees from recapturing through
claim interpretation specific meanings disclaimed during prosecution.” Omega Eng’g Inc. v.
Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). The prosecution history must show that the
patentee clearly and unambiguously disclaimed or disavowed the proposed interpretation during
prosecution to obtain claim allowance. Middleton Inc. v. 3M Co., 311 F.3d 1384, 1388 (Fed. Cir.
2002); see also Springs Window Fashions LP v. Novo Indus., 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
6
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.
In patent construction, “subsidiary fact finding is sometimes necessary” and the court
“may have to make ‘credibility judgments’ about witnesses.” Teva v. Sandoz, 135 S.Ct. 831, 838
(2015). In some cases, “the district court will need to look beyond the patent’s intrinsic evidence
and to consult extrinsic evidence in order to understand, for example, the background science or
the meaning of a term in the relevant art during the relevant time period.” Id. at 841. “If a
district court resolves a dispute between experts and makes a factual finding that, in general, a
certain term of art had a particular meaning to a person of ordinary skill in the art at the time of
the invention, the district court must then conduct a legal analysis: whether a skilled artisan
would ascribe that same meaning to that term in the context of the specific patent claim under
review.” Id. (emphasis in original). When the court makes subsidiary factual findings about the
extrinsic evidence in consideration of the “evidentiary underpinnings” of claim construction,
those findings are reviewed for clear error on appeal. Id.
II.
“Means-Plus-Function” Claim Terms
A patent claim may be expressed using functional language. See 35 U.S.C. § 112, ¶ 6;
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347–49 & n.3 (Fed. Cir. 2015) (en banc in
7
relevant portion). Section 112, paragraph 6,3 provides that a structure may be claimed as a
“means . . . for performing a specified function” and that an act may be claimed as a “step for
performing a specified function.” Masco Corp. v. United States, 303 F.3d 1316, 1326 (Fed. Cir.
2002).
But section 112, paragraph 6 does not apply to all functional claim language. There is a
rebuttable presumption that section 112, paragraph 6 applies when the claim language includes
“means” or “step for” terms, and that it does not apply in the absence of those terms. Masco
Corp., 303 F.3d at 1326; Williamson, 792 F.3d at 1348.
The presumption stands or falls
according to whether one of ordinary skill in the art would understand the claim with the
functional language, in the context of the entire specification, to denote sufficiently definite
structure or acts for performing the function. See Media Rights Techs., Inc. v. Capital One Fin.
Corp., 800 F.3d 1366, 1372 (Fed. Cir. 2015) (§ 112, ¶ 6 does not apply when “the claim
language, read in light of the specification, recites sufficiently definite structure” (quotation
marks omitted) (citing Williamson, 792 F.3d at 1349; Robert Bosch, LLC v. Snap-On Inc., 769
F.3d 1094, 1099 (Fed. Cir. 2014))); Williamson, 792 F.3d at 1349 (§ 112, ¶ 6 does not apply
when “the words of the claim are understood by persons of ordinary skill in the art to have
sufficiently definite meaning as the name for structure”); Masco Corp., 303 F.3d at 1326 (§ 112,
¶ 6 does not apply when the claim includes an “act” corresponding to “how the function is
performed”); Personalized Media Commc’ns, L.L.C. v. Int’l Trade Comm’n, 161 F.3d 696, 704
(Fed. Cir. 1998) (§ 112, ¶ 6 does not apply when the claim includes “sufficient structure,
material, or acts within the claim itself to perform entirely the recited function . . . even if the
claim uses the term ‘means.’” (quotation marks and citation omitted)).
3
The America Invents Act renumbered section 112, paragraph 6 to section 112(f). However, because each of the
patents at issue in this case was originally filed before September 16, 2012, the Court will refer to this code section
by its previous numbering, section 112, paragraph 6.
8
DISCUSSION
The parties dispute the meaning of the following claim terms:
I.
“diagonally arranged [. . .] data” (’731 Patent, claims 1, 20; and ’971 Patent, claims
1, 6, 7)
Claim Term
“diagonally arranged
[. . .] data”
(’731 Patent, claims
1, 20; ’971 Patent,
claims 1, 6, 7)
Plaintiffs’ Proposal
Plain and ordinary meaning.
Or, if the Court believes that this
term requires construction, then:
Data not arranged parallel or
perpendicular to a rectilinear axis.
Defendants’ Proposal
mosaic sensor data arranged in a
cross-hatched pattern with respect
to the sensor edges
Plaintiff contends that it is not necessary for the Court to construe this term because
“diagonally arranged data” would have been readily understood by one of ordinary skill in the
art. (Doc. No. 130 at 18.) But Plaintiff further proposes an alternative construction and asserts
that the Court should reject Defendants’ proposed construction because it “imports limitations
from the specification regarding one embodiment.” (Id.) Plaintiff has two main disputes with
Defendants’ proposed construction: (1) the term should not be limited to mosaic sensor data, and
(2) the term should not be limited to data arranged in a cross-hatched pattern with respect to the
sensor edges. (Id.)
Plaintiff first argues that the claims make no reference to “mosaic sensors.” Plaintiff
contends that “[w]hen the applicants wanted to claim data coming from a sensor, they did so.”
(Doc. No. 130 at 18.) To support this argument, Plaintiff cites to Claim 9 of the ’731 Patent, a
dependent claim that recites a camera module including “a video sensor.” (Id.) Plaintiff further
argues that Figure 13a of the specification makes clear that the claimed data can come from any
“input source.” (Doc. No. 130, at 19 (citing ’731 Patent, Fig. 13a, 8:10-12 (“This input source
may be a video sensor array, or may be a digital storage or transmission medium.”)).) With
9
respect to diagonally arranged data, Plaintiff contends that this phrase “refers to the relationship
of data points, and is not tied to a mosaic sensor array, a cross-hatched pattern, or to any sensor
edge.” (Id. at 19.) Plaintiff further contends that the terms “cross-hatch” and “diagonal” are not
used interchangeably in the patent specification, noting that the specification describes a
crosshatch pattern as “illustrated by diagonal lines 38 and intersecting diagonal lines 40.” (Id.);
’731 Patent, 5:16-18.
Finally, Plaintiff cites to extrinsic evidence, including dictionary
definitions and a district court decision, for the assertion that diagonal means “not parallel or
perpendicular to a rectilinear axis.” (Id. at 20.)
Defendants argue that its proposed construction is supported by the intrinsic record.
Defendants cite the ’731 Patent and contend that “[t]he specification only discusses the ‘data’
and ‘video data’ captured by a mosaic sensor.” (Doc. No. 136, at 21 (citing ’731 Patent, 1:612:5, 2:30-36, 3:5-6, 3:10-11, 4:55-5:26, 7:22-28, 12:39-45, Figs. 1 & 3).) Defendants further
note that the “Summary of the Invention” section of the specification states that “[t]he present
invention uses ‘diagonal’ preprocessing to assembly [sic] green pixel data derived from a Bayer2G mosaic sensor . . . .” (Doc. No. 136, at 21); ’731 Patent, 2:30-32. Defendants also clarify
that “Defendants’ construction does not seek to add a sensor to the claims but rather to make
clear that the data is that from a mosaic sensor.” (Doc. No. 136, at 21 (emphasis in original).)
Defendants argue that the term should be limited to data in a “cross-hatch pattern” because “this
feature is inherent in mosaic sensors and is the key to the alleged invention’s specific attempt to
solve a problem in a mosaic sensor arrangement.” (Id. at 22.) Defendants further argue that the
phrase “with respect to the sensor edges” is necessary in order to provide a frame of reference,
and that Plaintiff’s proposal should be rejected because it would allow for confusion with respect
to the proper reference frame. (Id. at 22-23.)
10
The intrinsic record makes clear that the term “diagonally arranged data” should be
limited to mosaic sensor data. As Defendants note, the ’731 Patent specification consistently
refers to rotating mosaic sensor data. ’731 Patent, 2:61-65; 3:5-6; 3:10-37; 4:55-5:26; 6:62-7:4;
7:22-28; 8:13-30; 8:42-61; 10:23-12:23; 12:39-57; (see Doc. No. 136, at 21.) The first sentence
of the Background of the Invention states “[t]his invention relates generally to color digital
cameras, and more particularly to the processing of color data generated by the sensor of a
color digital camera.” ’731 Patent, 1:17-19 (emphasis added). The Background section then
goes on to specifically describe both the “advantage[s] of using a mosaic type sensor” and the
difficulties with processing data collected from mosaic sensors, specifically Bayer-2G mosaic
sensors. Id. at 1:61-2:5. The first sentence of the Summary of the Invention follows, stating
“[t]he present invention manipulates incoming sensor data through a number of filters, while
taking the geometry of the sensor into account.” Id. at 2:9-11. The Summary of the Invention
further states that “[t]he present invention uses ‘diagonal’ preprocessing to assembly [sic] green
pixel data derived from a Bayer-2G mosaic sensor into blocks that are suitable for discrete cosine
transformation (DCT) compression.” Id. at 2:30-34. The specification also states that rotation of
diagonally arranged mosaic sensor data into 8x8 blocks is “key to the proper and efficient
functioning of the present invention . . . .” Id. at 5:20-26 (emphasis added). It is a common
precept of patent law that references to something in the specification as “the present invention”
may limit the scope of the patent claims. See Honeywell Int'l, Inc. v. ITT Indus., Inc., 452 F.3d
1312, 1318 (Fed. Cir. 2006) (meaning of term was limited where “[o]n at least four occasions,
the written descriptions refers to the fuel filter as ‘this invention’ or ‘the present invention’.”). In
this case, where the specification consistently refers to the processing of sensor data as “the
11
present invention,” and also touts the advantages of mosaic sensor data specifically, it is proper
to limit this claim term to mosaic sensor data.
The Court notes that some of the specification’s discussion about “the present invention”
surrounds Bayer-2G mosaic sensors in particular. See, e.g., ’731 Patent, 2:30-35. However, the
parties agree that the ’731 Patent does contemplate other types of “sensor geometries,” such that
the term should not be limited exclusively to Bayer-2G sensors. (See Tr., 23:12-24:4); see also
’731 Patent, 12:38-42 (“As will be clear to persons skilled in the art, the code listing included
herein (HAL) can be easily adapted to different sensor mosaic geometries.”); ’731 Patent, 7:5-7
(“In other embodiments of the present invention, the R and B color planes may be rotated, while
the G plane may be rectilinear.”).
Plaintiff’s argument that applicant included the word “sensor” in other claims but
purposely chose not to use the word “sensor” with the term “diagonally arranged data” is without
merit. In the other claims Plaintiff identifies, the applicant is using the terms “sensor” or “sensor
array” to describe a physical sensor, not a type of data. See, e.g. ’731 Patent, Claim 9 (“a camera
module . . . further including . . . a video sensor, and a lens assembly aligned with said video
sensor.”) The claims must be construed in light of the specification in which they appear.
Phillips, 415 F.3d at 1314. If anything, these additional claims in combination with the rest of
the intrinsic record reinforce the construction of “diagonally arranged data” as requiring mosaic
sensor data.
Likewise, Plaintiff’s argument that construing the term to require mosaic sensor data
excludes express embodiments of other data “input sources” is unsupported. The specification
states that “the electronic circuitry of the module, such as the encoder and the USB, need not
receive its digital input from a lens assembly and sensor array.” ’731 Patent, 9:44-47. The
12
specification continues on to state that the encoder could alternatively receive the digital input
from “a hard disk, CD-ROM, or DVD.” ’731 Patent, 9:47-53. This is consistent with a
construction of “data” as “mosaic sensor data.” As Defendants have clarified, the claimed data
need only originate from a sensor; it need not come directly from a sensor to be considered
mosaic sensor data. (Doc. No. 136, at 21.) Contrary to Plaintiff’s assertion, these embodiments
are indeed covered by this construction of the claim term.
The term diagonal would have been readily understood by one of skill in the art.
Defendants’ proposal equating diagonal with crosshatch is not supported by the intrinsic record
because the specification identifies a crosshatch pattern as formed from multiple sets of diagonal
lines.
See, e.g., ’731 Patent, 5:16-18 (“a green mosaic 44 forms a crosshatch pattern, as
illustrated by diagonal lines 38 and intersecting diagonal lines 40.”) While Defendants contend
that a crosshatch pattern is “inherent” in mosaic sensor patterns (Doc. No. 136, at 22), the
specification makes clear that the crosshatch pattern is specifically related to the Bayer-2G
sensor, which “places the green pixels in a crosshatched pattern.”
’731 Patent, 2:3-4.
Defendants have not submitted any evidence that all types of mosaic sensors include a crosshatched geometry. Because this claim term is not limited to Bayer-2G sensor data, it is also not
limited to crosshatched data.
The Court also finds it unnecessary to adopt Plaintiff’s alternative proposal of “data not
arranged parallel or perpendicular to a rectilinear axis.” “Diagonal” is a commonly understood
term, both by lay persons and by a person of skill in the art reviewing the specification. (Doc.
No. 130, at 20.) Further, as Defendants note, Plaintiff’s construction of “not arranged parallel or
perpendicular to a rectilinear axis” is so vague that some of the meaning inherent in the term
“diagonal” is lost in translation; a wide variety of data arrangements could presumably be
13
considered “not parallel or perpendicular to an axis,” without necessarily being arranged
diagonal to that axis. No additional construction of “diagonal” is required.
The Court agrees with the parties that a frame of reference is necessary for this term.
When the claimed data is originally collected by the sensors, it does not exist in a vacuum.
Stating that the data is diagonal “with respect to the sensor edges” allows a person of ordinary
skill in the art to orient themselves when reviewing the data in light of the claim. Plaintiff’s
argument that whether the data is diagonal or rectilinear refers to the “relationship between the
data points” does not provide enough information.
Indeed, in its Reply brief, Plaintiff
emphasizes that “the proper frame of reference to determine a rectilinear axis is the grid of video
data.” (Doc. No. 141, at 10 (emphasis added).) With this statement, Plaintiff at least inherently
recognizes that some frame of reference beyond simply between the data points is necessary for
this term. The phrase “with respect to the sensor edges” provides that frame of reference.
Furthermore, the phrase is consistent with Plaintiff’s “grid of video data” reference, since that
video data was originally collected by a mosaic sensor. The Court does note, however, that
consistent with Defendants’ clarification above, inclusion of the frame of reference “with respect
to the sensor edges” does not mean that the data must come directly from a sensor in order to
satisfy this claim term. It simply means that the orientation of the data is evaluated based on
how the data was arranged when it was first collected by the sensor. See, e.g., ’731 Patent, 4:5659 (“[A green address generator’s] design differs from the red and blue address generators
because the green mosaic cells are arranged differently than the red and blue data; it is not
rectilinear with respect to the sensor edges.” (emphasis added)).
14
After thus considering the parties’ arguments, the Court finds the phrase “diagonally
arranged [. . .] data” should be construed as “mosaic sensor data arranged in a diagonal pattern
with respect to the sensor edges.”
II.
“rectilinear [] . . . data” (’731 Patent, claims 1, 20)
Claim Term
“rectilinear[] . . .
data”
(’731 Patent, claims
1, 20)
Plaintiffs’ Proposal
Plain and ordinary meaning.
Or, if the Court believes that this
term requires construction, then:
Data arranged parallel or
perpendicular to a rectilinear axis.
Defendants’ Proposal
mosaic sensor data arranged in a
horizontal and vertical grid pattern
with respect to the sensor edges
The parties’ dispute over the term “rectilinear data” is substantially similar to their
dispute over “diagonally arranged data.” Plaintiff’s arguments focus on the phrase “with respect
to the sensor edges.” As with diagonally arranged data, Plaintiff argues that there is no reason to
include reference to an external framework or data source. (Doc. No. 130, at 20-21.) Plaintiff
urges that the specification refers to the position of the data points with respect to each other,
“not just with respect to the sensor edges.” (Id. at 21.) As explained above with respect to
“diagonally arranged data,” a point of reference beyond simply describing the relationship
between the data points is necessary for these terms in order to orient the person of skill in the
art.
Thus, the Court construes the phrase “rectilinear[] . . . data” as “mosaic sensor data
arranged in a horizontal and vertical grid pattern with respect to the sensor edges.”
III.
“second AC decoding operation” (’647 Patent, claims 1, 8) and “second decoding
operation” (’824 Patent, claims 1-3)
Claim Term
“second AC decoding
operation”
Plaintiffs’ Proposal
Plain and ordinary meaning. Or,
if the Court believes that this term
requires construction, then:
15
Defendants’ Proposal
“a second operation that decodes
bits representing an image block
other than DC code bits of the
(’647 Patent, claims
1, 8)
“second decoding
operation”
(’824 Patent, claims
1-3)
“An AC decoding operation
performed after a first AC
decoding operation”
image block, where the second
operation uses a different decoding
operation than the first AC
decoding operation”
Plain and ordinary meaning. Or,
“a second operation that decodes
if the Court believes that this term encoded video data, where the
requires construction, then:
second operation uses a different
decoding operation than the first
“A decoding operation performed decoding operation”
after a first decoding operation.”
Plaintiff argues that the terms “second AC decoding operation” and “second decoding
operation” do not require construction. (Doc. No. 130, at 3.) Alternatively, Plaintiff argues that
these terms should be construed to mean “a[n AC] decoding operation performed after a first
[AC] decoding operation.” (Id.) Plaintiff, in essence, argues that the second decoding operation
may be the same as the first decoding operation; the second decoding operation simply occurs
later in time. (Id. at 4-6.) On the other hand, Defendant argues that the second decoding
operation must be different than the first decoding operation. (Doc. No. 136, at 4.)
Plaintiff argues that the claim language itself does not require that the decoding
operations are different. (Doc. No. 130, at 4.) Plaintiff refers to dependent claims of the ’647
Patent where the applicants expressly described the steps in a second decoding operation. (Id.)
According to Plaintiff, this shows that “when the inventors wanted to claim different processes
for decoding operations, they did so expressly.” (Id.)
Defendants argue that the intrinsic record “consistently refers to the second decoding
operation as an ‘alternate second decoding operation.’” (Doc. No. 136, at 4-5 (citing ’647
Patent, Abstract, 3:44-47, 4:35-38, 8:54-59, 9:5-10).)
Defendants also refer to one of the
patentee’s amendments during prosecution where the patentee argued that the first AC decoding
operation is “typically a fast, but possibly error-prone operation” and the second decoding
16
operation is “typically a slower operation, but is generally error-free.” (Doc. No. 136, at 5; Ex.
1.) Defendants further argue that the claims refer to first and second output data, and that those
output data are different. (Id. at 6.) Defendants thus argue that in order to use the terms “first”
and “second” consistently, “first” and “second” operations should also be construed as
“different” operations. (Id.)
Claim 1 of the ’647 Patent recites:
1. A method for decompressing a bit stream of compressed data
representing a plurality of image portions, comprising:
obtaining a plurality of bits of compressed input data from a bit
stream;
executing a first AC decoding operation based on the obtained
plurality of bits of compressed input data in order to
generate first output data as a recommendation;
emitting the first output data if it is determined that the
recommendation should be accepted; and
executing a second AC decoding operation in order to
generate second output data if it is determined the
recommendation should not be accepted.
(emphasis added). Essentially, the claim provides for an alternative decoding operation if “it is
determined that the recommendation should not be accepted.” Claim 8 of the ’647 Patent and
Claims 1-3 of the ’824 Patent similarly recite that a second decoding operation is performed
based on the outcome of a first decoding operation. It is unclear why a person practicing the
claims would choose to perform the same decoding operation twice. If one were to do so, then
more likely than not the second operation would result in the same output data, or same
recommendation. Given that this same recommendation was originally rejected, this result
would not advance the goals of the invention.
From a logic standpoint alone, Plaintiff’s
construction is untenable.
At the hearing, Plaintiff argued that it is possible that performing the same operation
could still result in a different output if one were to start with a different number of “n bits.” (Tr.
17
at 38:11-15.) Plaintiff has not presented any briefing to support this argument. During the
hearing, Plaintiff pointed to Figures 12 and 13, which both include the step of “obtain n bits” to
support this argument. (Tr. at 38:20-39:1.) However, there is no indication from the claims that
a person would select a different number of bits for the second operation compared to the first
operation. A plain reading of the claim language indicates that 1) a plurality of bits is obtained
from a bit stream; 2) a first AC decoding operation is executed; and 3) if the output data from the
first decoding operation is rejected, then a second AC decoding operation is executed. There is
no explanation in either the claims themselves or the intrinsic record generally for why a
different plurality of bits would be used for the first operation compared to the second operation.
Indeed, Claims 1-3 of the ’824 Patent make clear that “said at least portion of said encoded video
data” is used in both the first and second decoding operations.
Plaintiff’s argument is
unpersuasive.
Plaintiff’s arguments regarding the dependent claims of the ’647 Patent are likewise
unpersuasive. Plaintiff argues that because the dependent claims recite additional details of the
first and second decoding operations, this shows that independent Claim 1 encompasses
scenarios where the first and second decoding operations are the same. The Court disagrees.
The fact that the dependent claims specifically recite different ways to execute the decoding
operations does not say anything about whether the independent claim also covers situations
where the first and second decoding operations are the same. If anything, it further indicates that
the patentee intended different steps for the first and second decoding operations.
The specification likewise indicates that the second decoding operation includes different
steps than the first decoding operation. As Defendants note, the specification refers to “alternate
second decoding operations” throughout. (Doc. No. 136, at 4-5 (citing ’647 Patent, Abstract
18
(“on the other hand, if it is determined that there is insufficient space for the first output data, an
alternate second decoding operation is executed in order to generate second output data.”), 3:4447, 4:35-38, 8:54-59, 9:5-10).)
Furthermore, the patentee used different language in the
specification to refer to repeated instances of a decoding operation. See, e.g., ’647 Patent, 8:5354 (“the first decoding operation [] is repeated.”).
In its Reply brief, Plaintiff contends that since the word “alternate” does not appear in the
claims, relying on the specification’s references to an “alternate second decoding operation”
impermissibly imports “limitations from the written description into the claims.” (Doc. No. 141,
at 1 (citing Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1347 (Fed. Cir. 1998)).) This is not the
case. Indeed, the specification interchanges the terms “alternate second decoding operation” and
“second decoding operation.” See, e.g., ’647 Patent, 4:35-41 (“[I]f during AC decoding it is
determined that there is insufficient space for the first output data, an alternate second decoding
operation is executed . . . Such second decoding operation includes multiple acts . . .”). Rather
than importing limitations from the specification, the Court is simply using the specification to
inform the proper scope of the claim term. Phillips, 415 F.3d at 1314; Edwards Lifesciences
LLC v. Cook Inc., 582 F.3d 1322, 1329 (Fed. Cir. 2009). Moreover, Plaintiff’s argument that
“alternate” does not mean “different” is unsupported. (See Doc. No. 141, at 1.) Plaintiff’s own
dictionary definition of “alternate” includes the definition “being one of two or more choices;
alternative.” (Doc. No. 141, Ex. A.)
Plaintiff also argues that the specification’s references to repeated instances of a decoding
operation support Plaintiff’s argument that the decoding operations may be the same. According
to Plaintiff, the patent “describes what happens during the iterative process (‘an alternate second
decoding operation 1220 is executed’) as different from what occurs after the iterative process is
19
complete (‘the first decoding operation 1203 is repeated’).” (Doc. No. 141, at 2 (citing ’647
Patent, 8:52-57).) This argument draws too thin of a distinction between the various steps of the
decoding operation. The entire program is an iterative process that requires certain events to
occur before others can be executed. For instance, the first decoding operation is repeated until
either 1) there is insufficient space for the recommended output or 2) the operation reaches the
end of the image block. See ’647 Patent, Figure 12 (labels 1214 and 1223). The second
decoding operation (“alternate decoder”) is performed only if condition 1 is met. See id. at
Figure 12 (labels 1214 and 1220), Figure 13. If the first and second decoding operations could
be the same, there would be no reason to distinguish between these conditions at all, or to
separately reference a “repeated” first decoding operation and an “alternate operation.”
The prosecution history also shows that the patentee intended for the decoding operations
to be different. In remarks to the Patent Office, the applicant stated:
Applicant’s claim 1 specifies that a number of bits are obtained from a bit stream,
and a first AC decoding operation is performed. This is typically a fast, but
possibly error-prone operation. The resultant of the first AC decoding operation
is a “recommendation” output. If the recommendation is accepted, it becomes the
output data. If the recommendation is not accepted, then a second AC decoding
operation is performed. This is typically a slower operation, but is generally
error-free. The resultant of the second AC decoding operation then becomes the
output.
(Doc. No. 136, Ex. 1.) Plaintiff argues that because the patentee uses the term “typically” to
describe the characteristics of the two decoding operations, it left open the possibility that the
two decoding operations could be the same. This interpretation of the patentee’s statements,
however, places undue emphasis on the word “typically.” Taken in context with the written
description and claims, the patentee used the word “typically” to indicate the general
characteristics of the two operations, not imply that they could also potentially be the same.
After first describing the characteristics of the two decoding operations as “typical,” the patentee
20
continues to distinguish the prior art by directly stating that “[the prior art] does not have a first
(fast) decoder and a second (slower) decoder” and “does not teach creating a recommendation
from a first decoder, and executing a second (slower) decoder if the recommendation is not
accepted.” (Doc. No. 136, Ex. 1.) The patentee’s statements during prosecution support the
conclusion that the two decoding operations are different.
Plaintiff’s argument that the patentee distinguished the prior art on other grounds (Doc.
No. 141, at 2) is likewise unsupported by the plain statements in the prosecution history. As is
apparent from the patentee’s remarks above, the patentee did not equate the two decoding
operations or state that the second operation was a repeat of the first. Instead, the patentee
specifically highlighted the differences between the two operations in order to distinguish the
prior art. Although there may have been other differences between the prior art and the claimed
invention, as Plaintiff indicates, the patentee made a point to include this explanation of the
decoding operations.
Plaintiff asserts that it is a “well-settled principle of patent construction that ‘first’ and
‘second’ do not refer to different elements, but to repeated instances of the same element.” (Id.
at 4-5 (citing 3M Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371 (Fed. Cir.
2003); Stone Basket Innovations LLC v. Cook Med. LLC, No. 2:15-CV-464-JRG-RSP, 2016 U.S.
Dist. LEXIS 39806, at *15 (E.D. Tex. Mar. 25, 2016).) The Court agrees with Defendants that
Plaintiff “draws the wrong inference from the cases it cites.” (Doc. No. 136, at 7); see, e.g., 3M
Innovative Props., 350 F.3d at 1372 (“In the context of claim 1, the use of the terms ‘first . . .
pattern’ and ‘second . . . pattern’ . . . should not in and of itself impose a serial or temporal
limitation onto claim 1”). Indeed, VStream itself recognizes that none of its cited cases “are
entirely analogous because they deal with physical elements, not the timing of computer
21
processes.” (Doc. No. 141, at 2-3.) To that end, the Court emphasizes that construing patent
claim terms does not occur in a vacuum, but in the context of the patent specification and from
the perspective of a person of skill in the art at the time of the invention. Phillips, 415 F.3d at
1314. In this case and as described above, the intrinsic record indicates that the claimed second
decoding operation is different from the first decoding operation. Abandoning this record based
on how other Courts have construed other terms from patents claiming different technologies
would be incorrect as a matter of law.
As such, the Court construes the term “second AC decoding operation” as “an AC
decoding operation that uses a different decoding operation than the first AC decoding
operation.” In addition, the Court construes the term “second decoding operation” as “a second
operation that decodes encoded video data, where the second operation uses a different decoding
operation than the first decoding operation.”
IV.
“means including a digital processor and memory rotating diagonally arranged
video data to a rectilinear position” (’971 Patent, claim 19)
Claim Term
“means including a
digital processor and
memory rotating
diagonally arranged
video data to a
rectilinear position”
Plaintiffs’ Proposal
Structure: 5:15-55; 6:41-45;
7:30-38; 8:12-23; 8:25-29
Defendants’ Proposal
This term is subject to § 112(f)
Function: rotating diagonally
arranged video data to a rectilinear
position, which should be construed
to mean rotating mosaic sensor data
arranged in a cross-hatched pattern
with respect to the sensor edges
around an origin to generate data
arranged in a horizontal and vertical
grid pattern with respect to the
sensor edges before compression
Structure: a digital processor and
memory including software and/or
hardware for performing a rotation
algorithm as described in column
10, line 64-column 11, line 61,
(’971 Patent, claim
19)
22
including: (1) translating coordinate
pairs for all diagonally arranged
pixels so that the origin of the
coordinate system is located at a
point corresponding to a diagonally
arranged pixel, (2) rotating the data
clockwise about the origin using
equations found at col.11, ll.20-25,
and (3) scaling the data so that it
can be arranged in a rectilinear
horizontal and vertical grid by
ensuring that the distance between
neighboring points is 1.
“In determining whether to apply the statutory procedures of section 112, paragraph 6,
the use of the word ‘means’ triggers a presumption that the inventor used this term advisedly to
invoke the statutory mandates for means-plus-function clauses.” York Products, Inc. v. Central
Tractor Farm & Family Center, 99 F.3d 1568, 1574 (Fed.Cir.1996) (citation omitted). Both
parties agree that “means including a digital processor and memory rotating diagonally arranged
video data to a rectilinear position” is governed by section 112, paragraph 6. (Doc. No. 136, at
28.) Thus, the claim term must be construed to identify a function and corresponding structure.
35 U.S.C. § 112, ¶ 6.
Regarding function, “[t]he court must construe the function of a means-plus-function
limitation to include the limitations contained in the claim language, and only those limitations.
Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 296 F.3d 1106, 1113 (Fed. Cir. 2002).
Plaintiff agreed to Defendants’ proposed function for “rotating diagonally arranged video data to
a rectilinear position.” (Doc. No. 141, at 10.) The Court agrees that this proposed function is
supported by the language of the claim. Thus, the function is: “rotating diagonally arranged
video data to a rectilinear position.” The Court does not separately construe the term “diagonally
23
arranged video data” in this instance and directs the parties to the other settled claim
constructions in this matter.
The parties dispute the proper structure for this term. (Id.) While Plaintiff proposes
various portions of the specification in its claim chart, the substance of Plaintiff’s argument only
refers to one excerpt:
In FIG. 13A, a method 51 for diagonal processing of video data begins with an
operation 53 of obtaining video data from an input source. This input source may
be a video sensor array, or may be a digital storage or transmission medium. An
operation 55 separates diagonally arranged data from rectilinearly arranged data
in the video stream. Next, an operation 57 rotates the diagonally arranged data to
a rectilinear position, and an operation 59 compresses the rotated diagonally
arranged data by a rectilinear compression algorithm
’731 Patent, 7:30-38. On the other hand, Defendants propose an algorithm in the written
description of the patent “which describes an abstraction from which software code can be
generated to ‘mimic[] the transformations performed by the model,’ resulting in the rotation of
diagonal data.” (Doc. No. 136, at 28-29 (citing ’731 Patent, 10:20-22).)
When the corresponding structure is a computer, the specification must disclose an
algorithm to perform the claimed function. Aristocrat Techs. Austl. Pty Ltd. v. Int'l Game Tech.,
521 F.3d 1328, 1333 (Fed. Cir. 2008); see also WMS Gaming, Inc. v. International Game
Technology, 184 F.3d 1339 (Fed. Cir. 1999). Plaintiff’s proposal fails to recite an algorithm
linked to the claimed function. The Court thus agrees with Defendants that the structure of this
term is the processor and memory programmed to perform the algorithm disclosed in the ’971
Patent at column 9, line 65 to column 10, line 66.
The Court finds that “means including a digital processor and memory rotating
diagonally arranged video data to a rectilinear position” is a means-plus-function term. The
function of the term is rotating diagonally arranged mosaic sensor data to a rectilinear position.
24
The structure of the term is processor and memory programmed to perform the algorithm
disclosed in the ’971 Patent at column 9, line 65 to column 10, line 66.
V.
“additional compression” (’731 Patent, claim 5; ’971 Patent, claim 5)
Claim Term
“additional
compression”
(’731 Patent, claim 5;
’971 Patent, claim 5)
Plaintiffs’ Proposal
Any reduction in the amount of
data to represent video data
following some prior
compression.
Defendants’ Proposal
further encoding to reduce the size
of the data used to represent video
data following some prior
compression
The parties primarily dispute whether the term “additional compression” means “any
reduction” of data or a “further encoding” of data.
Plaintiff argues that limiting this term to
mean “encoding” would impermissibly exclude other forms of data compression contemplated
by the patent. (Doc. No. 130, at 22.) On the other hand, Defendants argue that all forms of data
compression disclosed in the patent require a form of encoding. (Doc. No. 136, at 26.) During
the hearing, Defendants emphasized that their main concern with Plaintiff’s proposal is that they
believe it is overly broad and could encompass any inadvertent loss of data. (Tr. at 98:4-8; see
also Doc. No. 136, at 26.)
The specification does not explicitly limit “additional compression” solely to encoding.
The specification states that “[a]s part of the DCT operation various data reduction operations
may be performed, including quantization that reduces the accuracy of DCT coefficients to
achieve greater compression.” ’731 Patent, 6:32-36. The specification continues by stating: “[a]
run length encoding (RLE) block 22 identifies patterns in the amplitudes that are emitted from
the DCT and compress them by generating a count for the number or repetitions that are seen in
the data.” ’731 Patent, 6:44-47. In other words, the specification appears to set forth an example
25
of data reduction, i.e. compression, that includes encoding (an RLE encoding block) and an
example that does not include encoding (quantization). (Doc. No. 130, at 23.)
During oral argument, the Court asked the parties about Defendants’ concerns
surrounding inadvertent data loss.
Defendants agreed that if the term did not encompass
inadvertent loss of data, that would satisfy their concerns about the term. (Tr. at 103:14-19.)
Plaintiff agreed that the language of the claims contemplate an intentional reduction of data. For
instance, Claim 5 of the ’731 Patent recites: “A method for diagonal processing of video data as
recited in claim 4 further comprising performing additional compression on the output of the
rectilinear compression algorithm.” The claim thus requires an active “performing” of additional
compression; not a passive additional compression that might somehow encompass inadvertent
data loss.
Thus, the Court construes “additional compression” to mean “further reduction in the size
of the data used to represent video data following some prior compression.”
Finally, the parties submitted the following terms for which they agreed on constructions:
(’647 Patent, claims 1, 8)
Court’s Construction
a decoding operation for decoding bits representing
an image block other than DC code bits of the
image block
“first decoding operation”
a first operation that decodes encoded video data
Term
“AC decoding operation”
(’824 Patent, claims 1-3)
“means including a digital processor and
memory compressing said rotated
diagonally arranged data by a rectilinear
compression algorithm”
(’971 Patent, claim 19)
Function: compressing said rotated diagonally
arranged data by a rectilinear compression
algorithm
Structure: processor and memory programmed to
perform the algorithm disclosed in the ’971 Patent
at 6:41-45.
26
“means performing additional compression Function: performing additional compression on
on the output of the rectilinear
the output of the rectilinear compression algorithm
compression algorithm”
Structure: processor and memory programmed to
perform the encoding disclosed in the ’971 Patent
at 6:7-22.
(’971 Patent, claim 23)
“means for obtaining encoded video data”
(’824 Patent, claim 3)
“means for executing a first decoding
operation on at least a portion of said
encoded video data in order to generate
first decoded data”
Function: obtaining encoded video data
Structure: a hardware configuration as disclosed
in the ’824 Patent at 6:65-7:12
(’824 Patent, claim 3)
Function: executing a first decoding operation on
at least a portion of said encoded video data in
order to generate first decoded data.
Structure: processor programmed to perform the
algorithm disclosed in the ’824 Patent, at 8:5-25,
9:47-11:6.
“means for executing a second decoding
operation on said at least portion of said
encoded video data which is slower than
said first decoding operation in order to
generate second decoded data if said first
decoding operation was not sufficiently
correct”
Function: executing a second decoding operation
on said at least portion of said encoded video data
which is slower than said first decoding operation
in order to generate second decoded data if said
first decoding operation was not sufficiently correct
Structure: processor programmed to perform the
algorithm disclosed in the ’824 Patent at 8:64-9:46.
(’824 Patent, claim 3)
“means for using said first decoded data if
it is determined that said first decoding
operation was sufficiently correct and said
second decoded data if it is determined
that said first decoding operation was not
sufficiently correct”
(’824 Patent, claim 3)
Function: using said first decoded data if it is
determined that said first decoding operation was
sufficiently correct and said second decoded data if
it is determined that said first decoding operation
was not sufficiently correct
Structure: processor programmed to perform the
algorithm disclosed in the ’824 Patent at 8:31-34,
8:41-45, 8:58-61.
The parties submitted agreed constructions to the Court, which the Court reviewed along
with the asserted claims, specifications, and prosecution history. The Court found the parties’
agreed constructions appropriate, and proposed slight changes to the parties’ proposed
constructions for the terms construed under section 112, paragraph 6 by proposing a written
27
function for each of the terms. The parties agreed to these proposed modifications during the
claim construction hearing. The modifications are reflected in the chart above.
CONCLUSION
For the foregoing reasons, the Court adopts the constructions set forth above.
So ORDERED and SIGNED this 27th day of September, 2016.
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