Papst Licensing GmbH & Co., KG v. Apple, Inc.

Filing 275

MEMORANDUM OPINION AND ORDER construing disputed claim terms in U.S. Patent Nos. 6,470,399, 6,895,449, 8,504,746, 8,966,144 and 9,189,437. Signed by Judge Robert W. Schroeder, III on 3/7/17. (mjc, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
PAPST LICENSING GMBH & CO.
KG,
Plaintiff,
vs.

APPLE INC., et al.,
Defendants.

§
§
§
§
§
§
§
§
§
§
§

CASE NO. 6:15-cv-01095
[LEAD CASE]

MEMORANDUM OPINION AND ORDER
This Memorandum Opinion construes disputed claim terms in U.S. Patent Nos. 6,470,399
(“the ’399 Patent”), 6,895,449 (“the ’449 Patent”), 8,504,746 (“the ’746 Patent”), 8,966,144 (“the
’144 Patent”), and 9,189,437 (“the ’437 Patent”) (collectively, the “patents-in-suit”) asserted by
Plaintiff Papst Licensing GmbH & Co., KG (“Plaintiff”) against Defendants Apple Inc. (“Apple”),
Lenovo (United States) Inc. (“Lenovo”), Motorola Mobility LLC (“Motorola”), LG Electronics,
Inc., LG Electronics U.S.A., Inc., LG Electronics MobileComm U.S.A., Inc., (“LG”), Huawei
Technologies Co., Ltd., Huawei Technologies USA, Inc. (“Huawei”), Samsung Electronics Co.,
Ltd., Samsung Electronics America, Inc. (“Samsung”), and ZTE (USA) Inc. (“ZTE”) (collectively
“Defendants”). On January 5, 2017, the parties presented oral arguments on the disputed claim
terms at a Markman hearing. For the reasons stated below, the Court ADOPTS the following
constructions. 1

1

For ease of reference, the Court’s constructions are reproduced in Appendix A.

TABLE OF CONTENTS
BACKGROUND ............................................................................................................................ 3
APPLICABLE LAW ...................................................................................................................... 3
Section 112(b): Indefiniteness .................................................................................................... 5
Section 112(f): Means-Plus-Function Limitations...................................................................... 6
AGREED TERMS .......................................................................................................................... 7
CLAIM CONSTRUCTION OF DISPUTED TERMS ................................................................... 7
1. “connecting device” Terms .................................................................................................... 7
2. “first command interpreter” and “second command interpreter” ........................................ 13
3. “multi-purpose interface”..................................................................................................... 17
4. “specific driver for the multi-purpose interface” ................................................................. 19
5. “parameter” and “signal” Terms .......................................................................................... 20
6. “customary” Terms .............................................................................................................. 25
7. “automatic” Terms ............................................................................................................... 29
8. “data transmit/receive device” ............................................................................................. 34
9. “simulating a virtual file system to the host” ....................................................................... 37
10. “user-loaded” Terms .......................................................................................................... 39
11. “input/output (i/o) port” ..................................................................................................... 43
12. “analog signal acquisition channel[s],” “acquisition channels,” and “analog acquisition
channel” .................................................................................................................................... 44
APPENDIX A: COLLECTED CONSTRUCTIONS ................................................................... 47

Page 2 of 52

BACKGROUND
“The five asserted patents share a common specification.” Dkt. No. 185 at 1 n.1. “The
Patents generally relate to a unique method for achieving high data transfer rates for data
acquisition systems (e.g., still pictures, videos, voice recordings) to a general-purpose computer,
without requiring an end user to purchase, install, and/or run specialized software for each system.”
Dkt. No. 175 at 1 (citing ’399 Patent at 4:23–27).
Terms in the ’399 and ’449 Patents have been construed in a Multi-District Litigation
proceeding: In re Papst Licensing GmbH & Co. KG Patent Litig., MDL No. 1880, Misc. Action
No. 07-493 (D.D.C.) (“Papst MDL”). Claim constructions reached in the Papst MDL have been
addressed by the Federal Circuit. See In re Papst Licensing Digital Camera Patent Litig., 778
F.3d 1255, 1261–70 (Fed. Cir. 2015) (“Papst Opinion”).
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).

Page 3 of 52

Claim language guides the Court’s construction of claim terms. Phillips, 415 F.3d at 1314.
“[T]he context in which a term is used in the asserted claim can be highly instructive.” Id. Other
claims, asserted and unasserted, can provide additional instruction because “terms are normally
used consistently throughout the patent.” Id. Differences among claims, such as additional
limitations in dependent claims, can provide further guidance. Id.
“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id. (quoting
Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995)). “[T]he specification
‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the
single best guide to the meaning of a disputed term.’”

Id. (quoting Vitronics Corp. v.

Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); see 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. Elan Computer Group Inc., 362 F.3d 1367,

Page 4 of 52

1381 (Fed. Cir. 2004) (quoting Vitronics Corp., 90 F.3d at 1583).

But, “[a]lthough the

specification may aid the court in interpreting the meaning of disputed language in the claims,
particular embodiments and examples appearing in the specification will not generally be read into
the claims.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988);
see also Phillips, 415 F.3d at 1323.
Although “less significant than the intrinsic record in determining the legally operative
meaning of claim language,” the Court may rely on extrinsic evidence to “shed useful light on the
relevant art.” Phillips, 415 F.3d at 1317 (quotation omitted). Technical dictionaries and treatises
may help the Court understand the underlying technology and the manner in which one skilled in
the art might use claim terms, but such sources may also provide overly broad definitions or may
not be indicative of how terms are used in the patent. Id. at 1318. Similarly, expert testimony may
aid the Court in determining the particular meaning of a term in the pertinent field, but “conclusory,
unsupported assertions by experts as to the definition of a claim term are not useful.” Id.
Generally, extrinsic evidence is “less reliable than the patent and its prosecution history in
determining how to read claim terms.” Id.
Section 112(b): Indefiniteness
Patent claims must particularly point out and distinctly claim the subject matter regarded
as the invention. 35 U.S.C. § 112(b). “A claim is invalid for indefiniteness if its language, when
read in light of the specification and the prosecution history, ‘fail[s] to inform, with reasonable
certainty, those skilled in the art about the scope of the invention.’” Biosig Instruments, Inc. v.
Nautilus, Inc., 783 F.3d 1374, 1377 (Fed. Cir. 2015) (quoting Nautilus, Inc. v. Biosig Instruments,
Inc., 134 S. Ct. 2120, 2124 (2014)). Whether a claim meets this definiteness requirement is a
matter of law. Young v. Lumenis, Inc., 492 F.3d 1336, 1344 (Fed. Cir. 2007). A party seeking to

Page 5 of 52

invalidate a patent must overcome a presumption that the patent is valid. See 35 U.S.C. § 282;
Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 2243 (2011); U.S. Gypsum Co. v. Nat’l Gypsum
Co., 74 F.3d 1209, 1212 (Fed. Cir. 1996). As such, the burden is on the challenging party to prove
the patent’s invalidity by clear and convincing evidence. Microsoft, 131 S. Ct. at 2243; U.S.
Gypsum Co., 74 F.3d at 1212. The ultimate issue is whether someone working in the relevant
technical field could understand the bounds of a claim. Haemonetics Corp. v. Baxter Healthcare
Corp., 607 F.3d 776, 783 (Fed. Cir. 2010).
When a term of degree is used in a claim, “the court must determine whether the patent
provides some standard for measuring that degree.” Biosig Instruments, Inc., 783 F.3d at 1378
(internal quotation omitted). Likewise, when a subjective term is used in a claim, “the court must
determine whether that patent’s specification supplies some standard for measuring the scope of
the [limitation].” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1351 (Fed. Cir. 2005).
Section 112(f): Means-Plus-Function Limitations
Asserted patents may contain means-plus-function limitations that require construction.
Where a claim limitation is expressed in means-plus-function language and does not recite definite
structure in support of its function, the limitation is subject to 35 U.S.C. § 112(f) (formerly 35
U.S.C. § 112, ¶ 6). Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). In
relevant part, § 112(f) mandates that “such a claim limitation be construed to cover the
corresponding structure . . . described in the specification and equivalents thereof.” Id. (citing 35
U.S.C. § 112(f)). Accordingly, when faced with means-plus-function limitations, courts “must turn
to the written description of the patent to find the structure that corresponds to the means recited
in the [limitation].” Id.

Page 6 of 52

“It is well settled that a claim limitation that actually uses the word ‘means’ invokes a
rebuttable presumption that § 112, ¶ 6 applies. In contrast, a claim term that does not use ‘means’
will trigger the rebuttable presumption that § 112, ¶ 6 does not apply.” Apex Inc. v. Raritan Comp.,
Inc., 325 F.3d 1364, 1371 (Fed. Cir. 2003) (citations omitted). The Federal Circuit elaborated that
“[w]hen a claim term lacks the word ‘means,’ the presumption can be overcome and § 112, ¶ 6
will apply if the challenger demonstrates that the claim term fails to recite sufficiently definite
structure or else recites function without reciting sufficient structure for performing that function.”
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (quotations omitted).
“The standard is whether the words of the claim are understood by persons of ordinary skill in the
art to have a sufficiently definite meaning as the name for structure.” Id.
AGREED TERMS
The parties have presented no agreed-upon constructions. See Dkt. No. 151 at 2.
CLAIM CONSTRUCTION OF DISPUTED TERMS
1. “connecting device” Terms

“a first connecting device for interfacing the host device with the interface device via the
multi-purpose interface of the host device”
(’399 Patent, Claims 1, 11; ’449 Patent, Claims 1, 17)
“interfacing of the host device with a first connecting device of the interface device via
the multi-purpose interface of the host device”
(’399 Patent, Claim 14)
Plaintiff’s Proposed Construction
“a component or group of components for
interfacing the interface device with the host
device”

Defendants’ Proposed Construction
Samsung, Lenovo, and Motorola: Subject to
§112(6)

Function: [Agreed] interfacing the host device
If M+F [(means-plus-function)], alternatively: with the interface device via the multipurpose interface of the host device.
Function: Agreed

Page 7 of 52

Structure: Fig. 1 and associated text (’399 and
’449 Patents)

Structure: 12xx structures as described at
’399, col. 9:30–48 and Fig. 2.

“a second connecting device for interfacing the interface device with the data
transmit/receive device”
(’399 Patent, Claims 1, 11; ’449 Patent, Claims 1, 17)
“interfacing of the data transmit/receive device with a second connecting device of the
interface device”
(’399 Patent, Claim 14)
Plaintiff’s Proposed Construction
“a component or group of components for
interfacing the interface device with the data
transmit/receive device”

Defendants’ Proposed Construction
Samsung, Lenovo, and Motorola: Subject to
§112(6)

Function: [Agreed] interfacing the interface
If M+F [(means-plus-function)], alternatively: device with the data transmit/receive device.
Function: Agreed

Structure: 15xx structures as described at
’399, col. 9:49–64 and Fig. 2.

Structure: Fig. 1 and associated text (’399 and
’449 Patents)

Dkt. No. 151, Ex. A at 1–2; Dkt. No. 175 at 4; Dkt. No. 185 at 2–3; Dkt. No. 197, Ex. A at 25–26,
30–32 & 37.
Plaintiff argues that its proposed construction is consistent with the Federal Circuit’s
findings in the Papst Opinion. Dkt. No. 175 at 5. Plaintiff also submits that “[t]he words of the
claims themselves explain the location of the first and second connecting device . . . .” Id. Further,
Plaintiff argues, “[t]he varied usage of a term in the specification is evidence that it should be
interpreted broadly.” Id. at 6. Finally, Plaintiff argues that Defendants cannot overcome the
presumption that these non-means terms should not be treated as means-plus-function terms. Id.
at 7–8.
Defendants respond that these disputed terms are means-plus-function terms because “they
have no structural meaning and the specification does not redefine the meaning of ‘connecting

Page 8 of 52

device’ in a way that connotes structure . . . .” Dkt. No. 185 at 3. In particular, Defendants argue
that “device” is a “nonce” word that is tantamount to “means.” Id. at 3–4. Further, Defendants
argue, “nothing in the specification or prosecution would inform one of skill in the art about the
structural nature of the ‘connecting device’ term or otherwise impart structure to it.” Id. at 4.
Plaintiff replies that a “term that identifies a variety of structures provides sufficient
structure.” Dkt. No. 191 at 1.
At the January 5, 2017 hearing, Defendants also urged that the word “component,”
proposed by Plaintiff, is another “nonce” word that lacks structure. Docket No. 220 at 14:8–20.
Plaintiff responded that Defendants are attempting to eliminate any consideration of the
understanding of a person of ordinary skill in the art. See id. at 21:19–22:3.
Title 35 U.S.C. § 112(f) (formerly 35 U.S.C. § 112, ¶ 6) provides: “An element in a claim
for a combination may be expressed as a means or step for performing a specified function without
the recital of structure, material, or acts in support thereof, and such claim shall be construed to
cover the corresponding structure, material, or acts described in the specification and equivalents
thereof.”
“[T]he failure to use the word ‘means’ . . . creates a rebuttable presumption . . . that § 112,
para. 6 does not apply.” Williamson, 792 F.3d at 1348 (citations and internal quotation marks
omitted). “When a claim term lacks the word ‘means,’ the presumption can be overcome and §
112, para. 6 will apply if the challenger demonstrates that the claim term fails to recite sufficiently
definite structure or else recites function without reciting sufficient structure for performing that
function.” Id. at 1349 (citations and internal quotation marks omitted).
Williamson, in an en banc portion of the decision, abrogated prior statements that the
absence of the word “means” gives rise to a “strong” presumption against means-plus-function

Page 9 of 52

treatment. Id. (citation omitted). Williamson also abrogated prior statements that this presumption
“is not readily overcome” and that this presumption cannot be overcome “without a showing that
the limitation essentially is devoid of anything that can be construed as structure.” Id. (citations
omitted). Instead, Williamson found, “[h]enceforth, we will apply the presumption as we have
done prior to Lighting World . . . .” Id. (citing Lighting World, Inc. v. Birchwood Lighting, Inc.,
382 F.3d 1354, 1358 (Fed. Cir. 2004)). In a subsequent part of the decision not considered en
banc, Williamson affirmed the district court’s finding that the term “distributed learning control
module” was a means-plus-function term that was indefinite because of lack of corresponding
structure, and in doing so Williamson stated that “‘module’ is a well-known nonce word.” 792
F.3d at 1350.
Williamson further noted that “[g]eneric terms such as ‘mechanism,’ ‘element,’ ‘device,’
and other nonce words that reflect nothing more than verbal constructs may be used in a claim in
a manner that is tantamount to using the word ‘means’ because they ‘typically do not connote
sufficiently definite structure’ and therefore may invoke § 112, para. 6.” Id. (emphasis added;
citations and internal quotation marks omitted).
The term “connecting device,” as used in the ’399 Patent and ’449 Patent claims that are
at issue here, is not a “nonce” term (see id.) but rather connotes a class of electrical connection
structures, for example as disclosed in the specification as follows:
In the preferred embodiment of the interface device 10 shown in FIG. 2, the first
connecting device 12 of FIG. 1 contains the following components: an SCSI
interface 1220 and a 50-pin SCSI connector 1240 for attachment to an SCSI
interface present on most host devices or laptops. The SCSI (small computer
system interface) interface 1220 translates the data received via the SCSI connector
1240 into data understood by the DSP 1300, as known by those skilled in the art.
Further, the first connecting device 12 comprises an EPP (enhanced parallel port)
with a data transfer rate of approx. 1 MBps which delivers a more moderate data
transfer rate of 1 MBps by comparison to the data transfer rate of 10 MBps of the

Page 10 of 52

SCSI interface. The EPP 1260 is connected to a 25-pin D-shell connector 1280 to
permit attachment to a printer interface of a host device for example. Optionally,
the first connecting device 12 also comprises a 25-pin connector 1282 which
permits the attachment of 8 digital outputs and 8 digital inputs 1284 at a host device.
***
As described above, the first connecting device 12 comprises the SCSI interface
1220 with a peak transfer rate of 10 MBps. An optional PCMCIA-to-SCSI adapter
permits high-speed communication with laptop computers which are desirable and
in widespread use, particularly by mobile service technicians. The EPP 1260 with
its associated connector 1280 permits data transfer at a more moderate rate.
’399 Patent at 9:29–47 & 10:59–65 (emphasis added). The opinion of Plaintiff’s expert is also
persuasive in this regard. See Dkt. No. 175, Ex. 8, Nov. 21, 2016 Fernald Decl. at ¶ 38
(“a component or group of components necessary to contribute to an electrical connection between
the two devices to be interfaced together”). Further, surrounding claim language provides context
as to the “inputs and outputs” and how a connecting device “interacts with other components . . .
in a way that . . . inform[s] the structural character of the limitation-in-question or otherwise
impart[s] structure.” Williamson, 792 F.3d at 1351. For example, a portion of Claim 1 of the ’399
Patent recites (emphasis added): “the data transmit/receive device attached to the second
connecting device of the interface device.” At the January 5, 2017 hearing, Plaintiff was amenable
to construing the disputed terms as being “electrical” components. E.g., Docket No. 220 at 11:4–
7 (“These are connecting devices or components that provide those electrical connections and
nothing more is needed than those electrical connections.”).
This finding of structure follows from the long-standing principles articulated prior to the
abrogated Lighting World decision. See, e.g., Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d
1311, 1320 (Fed. Cir. 2004) (“when the structure-connoting term ‘circuit’ is coupled with a
description of the circuit’s operation, sufficient structural meaning generally will be conveyed to

Page 11 of 52

persons of ordinary skill in the art, and § 112 ¶ 6 presumptively will not apply”; noting “language
reciting [the circuits’] respective objectives or operations”); Apex, 325 F.3d at 1372 (“While we
do not find it necessary to hold that the term ‘circuit’ by itself always connotes sufficient structure,
the term ‘circuit’ with an appropriate identifier such as ‘interface,’ ‘programming’ and ‘logic,’
certainly identifies some structural meaning to one of ordinary skill in the art.”); Personalized
Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 705 (Fed. Cir. 1998) (“Even though
the term ‘detector’ does not specifically evoke a particular structure, it does convey to one
knowledgeable in the art a variety of structures known as ‘detectors.’ We therefore conclude that
the term ‘detector’ is a sufficiently definite structural term to preclude the application of § 112,
¶ 6.”); Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (finding that
“detent mechanism” was not a means-plus-function term because it denotes a type of device with
a generally understood meaning in the mechanical arts). 2
Defendants have cited TracBeam, LLC v. T-Mobile US, Inc., 6:14-CV-678-RWS, 2016 WL
3751624, at *6 (E.D. Tex. July 14, 2016), but TracBeam is distinguishable because there the Court
found that the context in which the terms at issue were used failed to suggest any structure. Here,
by contrast, the above-discussed context provided by the claims and the specification demonstrate
that the “connecting device” terms refer to electrical connections.
The Court therefore hereby construes the disputed terms as set forth in the following chart:

2

Greenberg, 91 F.3d at 1583 (“‘detent’ denotes a type of device with a generally understood
meaning in the mechanical arts, even though the definitions are expressed in functional terms”);
id. (“It is true that the term ‘detent’ does not call to mind a single well-defined structure, but the
same could be said of other commonplace structural terms such as ‘clamp’ or ‘container.’ What
is important is not simply that a ‘detent’ or ‘detent mechanism’ is defined in terms of what it
does, but that the term, as the name for structure, has a reasonably well understood meaning in
the art.”)

Page 12 of 52

Term

Construction

“a first connecting device for interfacing
the host device with the interface device via
the multi-purpose interface of the host
device”

“first connecting device”:
“a first electrical component, or group of
electrical components, for interfacing the
interface device with the host device”

(’399 Patent, Claims 1, 11; ’449 Patent,
Claims 1, 17)

“interfacing of the host device with a first
connecting device of the interface device via
the multi-purpose interface of the host
device”
(’399 Patent, Claim 14)
“a second connecting device for interfacing
the interface device with the data
transmit/receive device”
(’399 Pat., Cls. 1, 11; ’449 Pat., Cls. 1, 17)

“second connecting device”:
“a second electrical component, or group
of electrical components, for interfacing the
interface device with the data
transmit/receive device”

“interfacing of the data transmit/receive
device with a second connecting device of
the interface device”
(’399 Pat., Cl. 14)

2. “first command interpreter” and “second command interpreter”

“first command interpreter” (’399 Patent, Claims 1, 11)
Plaintiff’s Proposed Construction
“a program that receives a command and
executes some function based on that
command” 3

Defendants’ Proposed Construction
Samsung, Lenovo, and Motorola: Subject to
§112(6)

Function: [Agreed] when receiving an inquiry
If M+F [(means-plus-function)], alternatively: from the host device as to a type of a device
3

Plaintiff previously proposed: “a component or group of components for interfacing the
interface device with the data transmit/receive device.” Dkt. No. 151, Ex. A at 2.

Page 13 of 52

Function: Agreed
Structure: ’399 patent Fig. 1; 6:19–26, 6:48–
55

attached to the multi-purpose interface of the
host device, sends a signal, regardless of the
type of the data transmit/receive device
attached to the second connecting device of
the interface device, to the host device which
signals to the host device that it is an
input/output device customary in a host
device, whereupon the host device
communicates with the interface device by
means of the [driver for the input/output
device customary in a host device] [specific
driver for the multi-purpose interface].
Structure: No algorithm, source code, or flow
chart is disclosed for performing the recited
function, therefore the term is indefinite.

“second command interpreter” (’399 Patent, Claims 1, 11)
Plaintiff’s Proposed Construction
“a program that receives a command and
executes some function based on that
command” 4

Defendants’ Proposed Construction
Samsung, Lenovo, and Motorola: Subject to
§112(6)

Function: [Agreed] interpret a data request
If M+F [(means-plus-function)], alternatively: command from the host device to the type of
input/output device signaled by the first
Function: Agreed
command interpreter as a data transfer
command for initiating a transfer of the digital
Structure: ’399 patent Fig. 1; 6:19–26, 6:48–
data to the host device.
55
Structure: No algorithm, source code, or flow
chart is disclosed for performing the recited
function, therefore the term is indefinite.

Dkt. No. 151, Ex. A at 2–3; Dkt. No. 175 at 15; Dkt. No. 185 at 9; Dkt. No. 197, Ex. A at 38–39
& 41–42.

4

Plaintiff previously proposed: “a component or group of components for interfacing the
interface device with the data transmit/receive device.” Dkt. No. 151, Ex. A at 2.

Page 14 of 52

Plaintiff argues that its proposal is supported by the specification as well as by “[t]he
common and ordinary meaning of command interpreter at the time of the invention.” Dkt. No. 175
at 16. Plaintiff also argues that Defendants cannot overcome the presumption that these non-means
terms should not be treated as means-plus-function terms. Id. at 17.
Defendants respond that “command interpreter” is purely functional in nature and does not
connote any structure. Dkt. No. 185 at 10. Defendants also urge that “[t]he specification fails to
disclose any structure corresponding to the claimed functions” and “fails to disclose an algorithm
for performing the claimed functions.” Id. at 12, 14.
Plaintiff replies that “‘[c]ommand interpreter’ is a well-understood structure in computer
science,” and “the claims also explain exactly how the commands are interpreted.” Dkt. No. 191
at 3–4.
Legal principles regarding 35 U.S.C. § 112, ¶ 6 and Williamson, 792 F.3d 1339, are
discussed above as to the “connecting device” terms.
Here, “command interpreter” is not a “nonce” term (see Williamson, 792 F.3d at 1350) but
rather connotes a class of structures. See ’399 Patent at 6:48–55; see also Dkt. No. 175, Ex. 9, The
IEEE Standard Dictionary of Electrical and Electronics Terms 549 (6th ed. 1996) (“A computer
program that translates and executes each statement or construct of a computer program before
translating and executing the next.”); id., Ex. 11, Microsoft Press Computer Dictionary 101 (3d
ed. 1997); id., Ex. 8, Nov. 21, 2016 Fernald Decl. at ¶ 45. Also, surrounding claim language
provides context as to the “inputs and outputs” and how a command interpreter “interacts with
other components . . . in a way that . . . inform[s] the structural character of the limitation-inquestion or otherwise impart[s] structure.” Williamson, 792 F.3d at 1351. For example, a portion
of Claim 1 of the ’399 Patent recites (emphasis added): “wherein the first command interpreter is

Page 15 of 52

configured in such a way that the command interpreter, when receiving an inquiry from the host
device as to a type of a device attached to the multi-purpose interface of the host device, sends a
signal, regardless of the type of the data transmit/receive device attached to the second connecting
device of the interface device, to the host device which signals to the host device that it is an
input/output device customary in a host device.” Indeed, Defendants’ expert, Dr. Perry, agreed
during deposition that “a person of ordinary skill in the art at the time of the invention was aware
of this particular class of things called command interpreters.” Dkt. No. 191, Ex. 16, Dec. 8, 2016
Perry dep. at 56:18–23.
This finding of structure is consistent with the long-standing principles articulated prior to
the abrogated Lighting World decision, which are also cited above as to the “connecting device”
terms. See, e.g., Linear Tech., 379 F.3d at 1320; Apex, 325 F.3d at 1372; Personalized Media, 161
F.3d at 705; Greenberg, 91 F.3d at 1583.
Finally, although Defendants have argued that Plaintiff’s proposed constructions are purely
functional, Plaintiff’s proposal of a “program” is structural in the context here at issue. See, e.g.,
Affymetrix, Inc. v. Hyseq, Inc., 132 F. Supp. 2d 1212, 1232 (N.D. Cal. 2001) (finding that
“‘computer code’ is not a generic term, but rather recites structure that is understood by those of
skill in the art to be a type of device for accomplishing the stated functions”).
The Court therefore hereby construes the disputed terms as set forth in the following chart:
Term
“first command interpreter”
(’399 Patent, Claims 1, 11)
“second command interpreter”
(’399 Patent, Claims 1, 11)

Construction
“a first program that receives a command
and executes some function based on that
command”
“a second program that receives a command
and executes some function based on that
command”

Page 16 of 52

3. “multi-purpose interface”
Plaintiff’s Proposed Construction
No construction necessary apart from the
other proposed constructions, if any.

Defendants’ Proposed Construction
“an interface comprising both an interface
card and specific driver software for the
interface card”

Dkt. No. 151, Ex. A at 1; Dkt. No. 175 at 18; Dkt. No. 185 at 15; Dkt. No. 197, Ex. A at 1. The
parties submit that this term appears in “[a]ll claims.” Dkt. No. 151, Ex. A at 1.
Plaintiff urges that this term is “readily understandable.” Dkt. No. 175 at 19. Plaintiff
argues that Defendants’ proposal of a “card” should be rejected because the specification explains
that laptop host systems may have “little internal space to plug in an interface card.” Id. (quoting
’399 Patent at 2:12–13). As to Defendants’ proposal of a “specific driver,” Plaintiff argues that
“[w]hile additional claim elements may require a specific driver in some claims, this does not mean
the term itself embeds that requirement.” Dkt. No. 175 at 19.
Defendants respond that “the specification clearly provides a definition for the term ‘multipurpose interface’ and expresses a clear intention to redefine ‘multi-purpose interface.’” Dkt. No.
185 at 15.
Plaintiff replies that “the same paragraph [cited by Defendants] provides different methods
for creating a multi-purpose interface . . . .” Dkt. No. 191 at 5–6.
The specification indeed discloses that a multi-purpose interface can comprise an interface
card and specific driver software:
As described in the following, the interface device according to the present
invention is to be attached to a host device by means of a multi-purpose interface
of the host device which can be implemented, for example, as an SCSI interface or
as an enhanced printer interface. Multi-purpose interfaces comprise both an
interface card and specific driver software for the interface card. The driver
software can be designed so that it can replace the BIOS driver routines.
Communication between the host device and the devices attached to the multi-

Page 17 of 52

purpose interface then essentially takes place by means of the specific driver
software for the multi-purpose interface and no longer primarily by means of BIOS
routines of the host device. Recently however drivers for multi-purpose interfaces
can also already be integrated in the BIOS system of the host device as, alongside
classical input/output interfaces, multi-purpose interfaces are becoming
increasingly common in host devices. It is of course also possible to use BIOS
routines in parallel with the specific driver software for the multi-purpose interface,
if this is desired.
’399 Patent at 4:40–59 (emphasis added).
This disclosure of what multi-purpose interfaces can “comprise” does not rise to the level
of a lexicography. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed.
Cir. 2012) (“To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the
disputed claim term’ other than its plain and ordinary meaning.”) (quoting CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (emphasis added)).
In some circumstances, references to “the present invention” can limit the scope of a claim
term. See Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007)
(“When a patent thus describes the features of the ‘present invention’ as a whole, this description
limits the scope of the invention.”). Here, however, the specification teaches away from requiring
an interface card. See ’399 Patent at 2:7–13 (discussing “portable host systems in the form of
laptops whose minimum possible size leaves little internal space to plug in an interface card”).
Also, as quoted above, the specification discloses that “drivers for multi-purpose interfaces can
also already be integrated in the BIOS routines of the host system as, alongside classical
input/output interfaces, multi-purpose interfaces are becoming increasingly common in host
devices.” Id. at 4:52–56.
Finally, Defendants’ propose requiring a “specific driver,” but whereas Claim 11 of the
’399 Patent expressly recites such a limitation, no such limitation appears in, for example, Claim 1

Page 18 of 52

of the ’399 Patent. See Phillips, 415 F.3d at 1314 (“Differences among claims can also be a useful
guide in understanding the meaning of particular claim terms.”).

Defendants have not

demonstrated that a “specific driver” limitation should be applied across all instances of the
disputed term.
The Court therefore hereby expressly rejects Defendants’ proposed construction. No
further construction is necessary. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568
(Fed. Cir. 1997) (“Claim construction is a matter of resolution of disputed meanings and technical
scope, to clarify and when necessary to explain what the patentee covered by the claims, for use
in the determination of infringement. It is not an obligatory exercise in redundancy.”); see also
O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008)
(“[D]istrict courts are not (and should not be) required to construe every limitation present in a
patent’s asserted claims.”); Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1207 (Fed.
Cir. 2010) (“Unlike O2 Micro, where the court failed to resolve the parties’ quarrel, the district
court rejected Defendants’ construction.”); ActiveVideo Networks, Inc. v. Verizon Commcn’s, Inc.,
694 F.3d 1312, 1326 (Fed. Cir. 2012); Summit 6, LLC v. Samsung Elecs. Co., Ltd., 802 F.3d 1283,
1291 (Fed. Cir. 2015).
The Court accordingly hereby construes “multi-purpose interface” to have its plain
meaning.
4. “specific driver for the multi-purpose interface”
Plaintiff’s Proposed Construction
No construction necessary apart from the
other proposed constructions, if any.

Defendants’ Proposed Construction
No construction necessary. 5

5

Defendants previously proposed: “specific software for the specific multi-purpose interface.”
Dkt. No. 151, Ex. A at 8.

Page 19 of 52

Dkt. No. 151, Ex. A at 8; Dkt. No. 175 at 20; Dkt. No. 197, Ex. A at 119.
Plaintiff submits: “Defendants appear to have dropped their proposed construction for
‘specific driver for the multi-purpose interface.’ The term does not appear to be addressed in their
response brief.” Dkt. No. 191 at 5 n.31. In the parties’ Joint Claim Construction Chart, both sides
propose that no construction is necessary. Dkt. No. 197, Ex. A at 119.
The Court therefore concludes that this term is no longer in dispute.
5. “parameter” and “signal” Terms

“sends a signal, regardless of the type of the data transmit/receive device attached to the
second connecting device of the interface device, to the host device which signals to the
host device that it is an input/output device customary in a host device”
(’399 Patent, Claims 1, 11)
Plaintiff’s Proposed Construction
No construction necessary apart from the
other proposed constructions, if any.

Defendants’ Proposed Construction
“sends a signal to the host device in response
to the inquiry that misidentifies the class of
the device connected to the host device as [an
input/output device] [a storage device]
customary in a host device”

“sends a signal, regardless of the type of the data transmit/receive device attached to the
second connecting device of the interface device, to the host device which signals to the
host device that it is a storage device customary in a host device”
(’449 Patent, Claims 1, 17)
Plaintiff’s Proposed Construction
No construction necessary apart from the
other proposed constructions, if any.

Defendants’ Proposed Construction
“sends a signal to the host device in response
to the inquiry that misidentifies the class of
the device connected to the host device as [an
input/output device] [a storage device]
customary in a host device”

Page 20 of 52

“at least one parameter indicative of the class of devices to be sent to the computer
through the multipurpose interface of the computer, independent of the analog source,
wherein the analog data acquisition device is not within the class of devices”
(’746 Patent, Claim 1)
Plaintiff’s Proposed Construction
No construction necessary apart from the
other proposed constructions, if any.

Defendants’ Proposed Construction
“at least one parameter that misidentifies the
class of the analog data acquisition device”

“the at least one parameter”
(’746 Patent, Claims 15, 17, 34; ’144 Patent, Claims 1, 27, 28, 29, 31, 34, 35, 61, 84, 86, 87;
’437 Patent, Claims 1, 22, 25)
Plaintiff’s Proposed Construction
No construction necessary apart from the
other proposed constructions, if any.

Defendants’ Proposed Construction
“the at least one parameter that misidentifies
the class of the [ADGPD] [analog data
acquisition device] to the computer”

“an identification parameter”
(’437 Patent, Claim 43)
Plaintiff’s Proposed Construction
No construction necessary apart from the
other proposed constructions, if any.

Defendants’ Proposed Construction
“a parameter that misidentifies the class of the
[ADGPD] to the host computer”

“at least one parameter identifying the analog data acquisition device as a digital mass
storage device, instead of as an analog data acquisition device and regardless of the
analog source”
(’746 Patent, Claim 31)
Plaintiff’s Proposed Construction
No construction necessary apart from the
other proposed constructions, if any.

Defendants’ Proposed Construction
“at least one parameter misidentifying the
class of the analog data acquisition device as
a [digital mass storage device] [digital device]
instead of as an analog data acquisition device
[, and] regardless of the analog source”

Page 21 of 52

“at least one parameter which provides identification information regarding the
ADGPD”
(’144 Patent, Claim 1)
Plaintiff’s Proposed Construction
No construction necessary apart from the
other proposed constructions, if any.

Defendants’ Proposed Construction
“at least one parameter that misidentifies the
class of the ADGPD to the computer”

“wherein the at least one parameter provides identification information regarding the
ADGPD”
(’144 Patent, Claim 86)
Plaintiff’s Proposed Construction
No construction necessary apart from the
other proposed constructions, if any.

Defendants’ Proposed Construction
“wherein the at least one parameter that
misidentifies the class of the ADGPD to the
host device”

“responding to the inquiry from the host device by the interface device in such a way that
it is an input/output device customary in a host device” (’399 Patent, Claim 14)
Plaintiff’s Proposed Construction
No construction necessary apart from [an
input/output device] [a storage device]
customary in a host device.

Defendants’ Proposed Construction
“responding to the inquiry from the host
device by the interface device by
misidentifying the class of the device
connected to the host device as [an
input/output device] [a storage device]
customary in a host device”

Dkt. No. 151, Ex. A at 3–6; Dkt. No. 175 at 20–22; Dkt. No. 185 at 19–20; Dkt. No. 197, Ex. A
at 44–45, 47–48, 50, 52, 59, 60–61, 63 & 66–67.
Plaintiff argues that whereas “[t]hese are common words that can be understood without
further construction,” “Defendants’ proposed constructions would not clarify the terms for the
jury, but rather import a new limitation, ‘misidentification,’ into the claims.” Dkt. No. 175 at 22.
Defendants respond that “including the word ‘misidentify’ in Defendants’ construction is
appropriate because it originates with the patentee’s own disclaimers and statements during

Page 22 of 52

prosecution.” Dkt. No. 185 at 20. Defendants also argue that the specification is consistent with
Defendants’ interpretation of the prosecution history. Id. at 23.
Plaintiff replies that “Defendants’ efforts to import this limitation into this grouping of
‘send/parameter signal’ terms—a grouping they concocted—is a ruse to mix together the various
prosecution histories of various patents.” Dkt. No. 191 at 7. Plaintiff also argues that Defendants
have not shown any disclaimer, particularly where the claims discussed during prosecution already
expressly recited the limitations that are the subject of Defendants’ proposed disclaimer. See id.
at 7–8.
At the January 5, 2017 hearing, Plaintiff urged that the patentee distinguished prior art
during prosecution based on the claimed invention being capable of misrepresenting, not
necessarily always misrepresenting. Docket No. 220 at 46:17–21. Defendants disagreed and also
argued that if these disputed terms require merely a capability, then the terms should be expressly
construed as such. Id. at 48:12–50:2.
On balance, Defendants’ proposal of “misidentifies” is too narrow because it would
exclude situations in which the identification is accurate. Defendants have cited prosecution
history in which the patentee explained that that the claimed invention “lies” regarding the device
type. See, e.g., Dkt. No. 185, Ex. 7, Mar. 18, 2002 Amendment (’399 Patent) at 6. Such statements,
however, can be readily understood as meaning that the claimed invention “lies” by specifying a
particular device type without regard to truthfulness. See ’399 Patent at 4:65–5:6 (“regardless of
the type of the data transmit/receive device”) (emphasis added); see also id. at 6:19–22 (similar).
Thus, Defendants have not demonstrated that the prosecution history contains any clear
disclaimer. See, e.g., Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1332 (Fed. Cir. 2004)
(“Because the statements in the prosecution history are subject to multiple reasonable

Page 23 of 52

interpretations, they do not constitute a clear and unmistakable departure from the ordinary
meaning of the term . . . .”). Defendants’ reliance upon Plaintiff’s prior statement that the claimed
invention “always ‘lies’” is similarly unavailing. See Dkt. No. 185, Ex. 15, No. 2014-1110 (Fed.
Cir.), Reply Brief at 1. Also of note, some of the claims expressly recite Defendants’ proposed
misidentification limitation where required. See, e.g., ’746 Patent at Cl. 1 (“at least one parameter
indicative of the class of devices . . . wherein the analog data acquisition device is not within the
class of devices”).
Finally, Defendants argue that the attached device must be analog and therefore cannot be
a hard drive (because a hard drive is necessarily digital). Specifically, Defendants have pointed to
“analog” limitations in claims of the ’399 Patent. To the extent that the claims recite analog
limitations, those limitations must be met, but Defendants have not shown that those limitations in
particular claims warrant restricting the meaning of the disputed terms across all claims of the
patents-in-suit.
On balance, these disputed terms are readily understandable as requiring a certain type of
identification regardless of whether such an identification is accurate or not. This is also consistent
with the statement in the Papst Opinion that “the interface device induces the host to treat it—and,
indirectly, data devices on the other side of the interface device, no matter what type of devices
they are—like the device that is already familiar to the host.” Papst Opinion at 1259 (emphasis
added).
The Court therefore hereby expressly rejects Defendants’ proposed constructions. No
further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521
F.3d at 1362; Finjan, 626 F.3d at 1207; ActiveVideo, 694 F.3d at 1326; Summit 6, 802 F.3d at 1291.

Page 24 of 52

The Court therefore hereby construes these disputed “parameter” and “signal” terms to
have their plain meaning.
6. “customary” Terms

“the driver for the [input/output] [storage] device customary in a host device”
(’399 Patent, Claims 1, 11; ’449 Patent, Claim 1)
Plaintiff’s Proposed Construction
“the driver for the data [input/output]
[storage] device normally part of
commercially available computer systems”

Defendants’ Proposed Construction
“a generic driver for a class of generic
input/output devices typically found on the
host device at the time of the invention, such
as hard disks, graphics devices, printers,
floppy disk drives, CD-ROM drives, or tape
drives”

“the usual driver for the [input/output] [storage] device”
(’399 Patent, Claim 14)
Plaintiff’s Proposed Construction
“the set of software routines used to direct a
data [input/output device] [storage device]
normally part of commercially available
computer systems”

Defendants’ Proposed Construction
“a generic driver for a class of generic
input/output devices typically found on the
host device at the time of the invention, such
as hard disks, graphics devices, printers,
floppy disk drives, CD-ROM drives, or tape
drives”

“whereupon the host device communicates with the interface device by means of the
driver for the input/output device customary in a host device”
(’399 Patent, Claim 1)
Plaintiff’s Proposed Construction
No construction necessary apart from the
other proposed constructions, if any.

Defendants’ Proposed Construction
“whereupon communication between a host
device and the interface device occurs using a
generic driver for a class of generic
input/output devices typically found on the
host device at the time of the invention, such
as hard disks, graphics devices, printers,
floppy disk drives, CD-ROM drives, or tape
drives”

Page 25 of 52

“customary driver”
(’144 Patent, Claims 1, 81–82, 86)
Plaintiff’s Proposed Construction
“a set of software routines normally part of
commercially available computer systems”

Defendants’ Proposed Construction
“a generic driver for a class of generic devices
typically found on the host device at the time
of the invention, such as hard disks, graphics
devices, printers, floppy disk drives, CDROM drives, or tape drives”

“a [storage] [input/output] device customary in a host device”
(’399 Patent, Claims 1, 11, 14; ’449 Patent, Claims 1, 17; ’144 Patent, Claims 81, 83)
Plaintiff’s Proposed Construction
“a [data input/output] [storage] device
normally part of commercially available
computer systems”

Defendants’ Proposed Construction
Samsung/Apple/ZTE/LG/Huawei propose:
“[input/output] [storage] device normally part
of commercially available computer systems
at the time of the invention”

Dkt. No. 151, Ex. A at 6; Dkt. No. 175 at 23–24; Dkt. No. 185 at 36; Dkt. No. 197, Ex. A at 68,
72, 73–75 & 79–80.
Plaintiff argues that “[t]he specification does not indicate that only drivers normally
installed in host devices at the time of the invention are somehow critical to practicing the
invention.” Dkt. No. 175 at 24.
Defendants respond that their proposal of “at the time of the invention” is consistent with
the Papst Opinion. Dkt. No. 185 at 36.
Plaintiff replies that Defendants have not addressed the prosecution history cited by
Plaintiff in which the patentee did not refer to any limitation of what was customary at the time of
the invention. Dkt. No. 191 at 9.

Page 26 of 52

At the January 5, 2017 hearing, Plaintiff submitted that there is no prohibition against
“after-arising technology” being within the literal scope of claims. Innogenetics, N.V. v. Abbott
Labs., 512 F.3d 1363, 1371–72 (Fed. Cir. 2008).
The Papst Opinion found:
Papst appeals the district court’s construction of the term “input/output device
customary in a host device” in the ’399 patent and the term “storage device
customary in a host device” in the ’449 patent. The district court construed the ’399
term to be a “data input/output device that was normally present within the chassis
of most commercially available computers at the time of the invention.” Claim
Constr. Op. at 55. The court’s construction for the ’449 patent is identical, except
that the words “data input/output” are replaced with the word “storage.” Id.
When a host computer asks the claimed interface device what type of device it is,
the interface device must respond that it is an “input/output device customary in a
host device” so that the host will communicate with the interface device using the
host’s native software for that type of device. The parties disagree over whether
the claims require that the device the interface device says it is be a type of device
“normally present within the chassis” of a computer. We hold that the claims are
not so limited. The written description makes clear that it is enough for the device
to be one that was normally part of commercially available computer systems at
the time of the invention.
Papst Opinion at 1269–70 (emphasis added).
The Court therefore applies the Federal Circuit’s finding that “customary” includes a
limitation of “normally part of commercially available computer systems at the time of the
invention.” Id. at 1270 (emphasis added); see PC Connector Solutions LLC v. SmartDisk Corp.,
406 F.3d 1359, 1363 (Fed. Cir. 2005) (“meaning must be interpreted as of [the] effective filing
date”); see also Kopykake Enters., Inc. v. Lucks Co., 264 F.3d 1377, 1383 (Fed. Cir. 2001)
(“[W]hen a claim term understood to have a narrow meaning when the application is filed later
acquires a broader definition, the literal scope of the term is limited to what it was understood to
mean at the time of filing.”) (citation omitted); cf. Muniauction, Inc. v. Thomson Corp., 532 F.3d

Page 27 of 52

1318, 1326 (Fed. Cir. 2008) (“The use of ‘conventional’ to modify ‘Internet browser’ and ‘web
browsing software’ denotes a reference to web browsers in existence at the time of the alleged
invention . . . .”); PC Connector, 406 F.3d at 1363 (as to “normally,” “conventional,”
“traditionally,” and “standard,” noting that “their time-related significance is implicit from their
ordinary usage”).
Finally, Defendants’ proposed list of examples, which begins in Defendants’ proposals
with the phrase “such as,” is hereby expressly rejected because any potential benefit of including
the proposed list is outweighed by the risk that such a list might be perceived as limiting.
The Court therefore hereby construes the disputed terms as set forth in the following chart:
Term

Construction

“the driver for the [input/output] [storage]
device customary in a host device”

“the driver for the [input/output] [storage]
device normally part of commercially
available computer systems at the time of the
invention”

(’399 Patent, Claims 1, 11; ’449 Patent,
Claim 1)
“the usual driver for the [input/output]
[storage] device”
(’399 Patent, Claim 14)
“whereupon the host device communicates
with the interface device by means of the
driver for the input/output device
customary in a host device”

“the driver for the [input/output] [storage]
device normally part of commercially
available computer systems at the time of the
invention”
“whereupon the host device communicates
with the interface device by means of the
driver for the input/output device normally
part of commercially available computer
systems at the time of the invention”

(’399 Patent, Claim 1)
“customary driver”
(’144 Patent, Claims 1, 81–82, 86)

“driver for a device normally part of
commercially available computer systems at
the time of the invention”

Page 28 of 52

“a [storage] [input/output] device
customary in a host device”

“[storage] [input/output] device normally
part of commercially available computer
systems at the time of the invention”

(’399 Patent, Claims 1, 11, 14; ’449 Patent,
Claims 1, 17; ’144 Patent, Claims 81, 83)

7. “automatic” Terms

“automatic” / “automatically”
(ʼ144 Patent, Claims 1, 61–63, 78–79, 86; ’437 Patent, Claims 1, 43; ’746 Patent,
Claims 1, 17, 31, 34)
Plaintiff’s Proposed Construction
No construction necessary apart from the
other proposed constructions, if any.

Defendants’ Proposed Construction
Lenovo/Motorola:
“to independently perform an action
without any external influence or control”
Samsung/Apple/ZTE/LG/Huawei:
“without any user intervention”

“automatic [] transfer”
(’437 Patent, Claim 1)
Plaintiff’s Proposed Construction
No construction necessary apart from the
other proposed constructions, if any.

Defendants’ Proposed Construction
Samsung/Apple/ZTE/LG:
“transfer without any user intervention”

“automatically transfer”
(’746 Patent, Claims 31, 34)
Plaintiff’s Proposed Construction
No construction necessary apart from the
other proposed constructions, if any.

Defendants’ Proposed Construction
Samsung/Apple/ZTE/LG:
“transfer without any user intervention”

“automatic file transfer process”
(’144 Patent, Claims 1, 79, 86; ’437 Patent, Claim 1)
Plaintiff’s Proposed Construction
No construction necessary apart from the
other proposed constructions, if any.

Defendants’ Proposed Construction
Samsung/Apple/ZTE/LG:
“transfer without any user intervention”

Page 29 of 52

“automatically transferring data from the analog source to the host device in response to
a digital data read command from the host device”
(’746 Patent, Claim 34)
Plaintiff’s Proposed Construction
No construction necessary apart from the
other proposed constructions, if any, or, in
the alternative:
“transfer data without user intervention
other than to start the process, data from the
analog source to the host device in response
to a digital data read command from the host
device”

Defendants’ Proposed Construction
Samsung/Apple/ZTE/LG/Huawei propose:
“transferring, without any user
intervention, data from the analog source to
the host device in response to a digital data
read command from the host device”

“automatic recognition process”
(’144 Patent, Claims 1, 61–63, 78, 86; ’437 Patent, Claim 1)
Plaintiff’s Proposed Construction
“process by which the computer recognizes
the ADGPD upon connection with the
computer without requiring any user
intervention other than to start the process”

Defendants’ Proposed Construction
No construction necessary apart from other
proposed constructions.

Dkt. No. 151, Ex. A at 6–7; Dkt. No. 175 at 26; Dkt. No. 185 at 26; Dkt. No. 197, Ex. A at 86, 96–
97, 99, 103–104 & 105.
Plaintiff argues that Defendants’ proposals “could result in a misreading of the claims that
would forbid any kind of user intervention (including that required to start it) from an ‘automatic
process.’” Dkt. No. 175 at 27–28. As to the term “automatic recognition process,” in particular,
Plaintiff argues that the term “does not preclude basic, initiating manual operations such as
connecting the host and device and starting the automatic recognition process itself.” Id. at 28.
Defendants Lenovo and Motorola respond that “[i]n the context of the asserted claims, the
‘automatic’ terms relate to actions performed by the processor of the claimed interface device.”

Page 30 of 52

Dkt. No. 185 at 26. Defendants Samsung, Apple, ZTE, and LG separately urge that the proposed
constructions “should at least include the language ‘without user intervention.’” Id. at 30.
Plaintiff replies that during prosecution the patentee distinguished intervention by userloaded software but “[t]he patentee identifie[d] prompting from the host PC as within the scope of
the claims.” Dkt. No. 191 at 9–10.
At the January 5, 2017 hearing, Plaintiff alternatively proposed that “automatic” could be
construed to mean “without any end user intervention other than to start the process.” Docket No.
220 at 61:10–12.
Claim 1 of the ’144 Patent, for example, recites in relevant part (emphasis added):
wherein the processor also is adapted to be involved in an automatic recognition
process in which, when the i/o port is operatively interfaced with a multi-purpose
interface of a computer, the processor executes at least one instruction set stored in
the program memory and thereby causes at least one parameter which provides
identification information regarding the ADGPD [(analog data generating and
processing device)] to be automatically sent through the i/o port and to the multipurpose interface of the computer . . . .;
***
wherein the processor is further adapted to be involved in an automatic file transfer
process in which, when the i/o port is operatively interfaced with the multi-purpose
interface of the computer, and after the at least one parameter has been received by
the multi-purpose interface of the computer, the processor executes at least one
other instruction set stored in the program memory and thereby causes the at least
one file of digitized analog data to be transferred to the computer regardless of the
identity of the manufacturer of the computer and without requiring any user-loaded
file transfer enabling software to be loaded on or installed in the computer at any
time.
The context of surrounding claim language thus suggests that “automatically” merely
means without user intervention. Also, Defendants Lenovo and Motorola’s proposal of excluding
“external influence” appears to be inconsistent with express claim language. For example, a
portion of Claim 31 of the ’746 Patent expressly recites (emphasis added): “the processor is
configured to automatically transfer the digitized analog data acquired from the analog source to

Page 31 of 52

the host device in response to a digital mass storage device data read signal from the host device
. . . .” See also ’144 Patent at 6:2–5. Likewise, Defendants Lenovo and Motorola have not shown
how an “automatic file transfer process,” for example, could transfer a file to the host without any
“influence or control” by the host.
As to the prosecution history, the patentee stated, for example:
It is respectfully submitted that the automatic processing for device recognition
claim feature covers software that is executed by a processor of a peripheral device
(and not a processor of a PC) and that causes “data transfer and communications
enabling data” to be automatically generated and thereafter to be sent to a PC. This
software is run by the peripheral without any user intervention and without any
processing intervention via the PC.
Dkt. No. 185, Ex. 18, Sept. 12, 2008 Amendment (’144 Patent) at 13 (emphasis omitted); see, e.g.,
id., Ex. 13, Oct. 29, 2012 Amendment (’746 Patent) at 13–14 (“the host computer in Smith assigns
an identifying number rather than the peripheral processor automatically sending identification
information”; “The cited passages of Smith do not mention a peripheral processor automatically
providing identification information to the host computer.”); id., Ex. 18, Sept. 12, 2008
Amendment (’144 Patent) at 13 (“software is run by the peripheral without any user intervention
and without any processing intervention via the PC”); id., Ex. 19, Aug. 21, 2008 Amendment (’144
Patent) at 10; id., Ex. 8, July 26, 2010 Appellant’s Brief (’144 Patent) at 24 (“there is no description
anywhere in Hashimoto of any process that sends an identification parameter to the host computer,
automatically or otherwise”); id., Ex. 20, Aug. 8, 2007 Supplemental Preliminary Amendment
(’144 Patent) at 12–13 (“[T]he Coolpix 100 References do not involve active processing by the
camera in connection with a recognition process. Rather, the Coolpix 100 References merely teach
the use of ‘dummy’ memory cards that are recognized by a computer reading information stored
in a defined memory location in the card.”).

Page 32 of 52

On balance, the prosecution history cited by Defendants can be fairly read as meaning
merely that the peripheral must have its own processor that performs the processing required of it
in each claim. In other words, although processing in the peripheral is required, no showing has
been made that involvement by the host device is prohibited. Defendants Lenovo and Motorola
thus have not demonstrated any disclaimer that precludes action by the host device. See, e.g.,
Golight, 355 F.3d at 1332.
Nonetheless, “automatically” is presumed to have some meaning because “claims are
interpreted with an eye toward giving effect to all terms in the claim.” Digital-Vending Servs.
Int’l, LLC v. Univ. of Phoenix, Inc., 672 F.3d 1270, 1275 (Fed. Cir. 2012) (quoting Bicon, Inc. v.
Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006)).
Here, the above-discussed claim language and prosecution history demonstrate that
“automatically” means without user intervention. See also CollegeNet, Inc. v. ApplyYourself, Inc.,
418 F.3d 1225, 1235 (Fed. Cir. 2005) (affirming construction of “automatically” as “once initiated,
the function is performed by a machine, without the need for manually performing the function”).
Naturally, however, “automatic” operation does not preclude any user involvement, such
as in physically connecting devices or providing electrical power. See, e.g., Z4 Techs., Inc. v.
Microsoft Corp., 507 F.3d 1340, 1351 (Fed. Cir. 2007) (“nothing in the claims or specification
precludes user interaction in the selection or initialization of the automatic registration”).
Likewise, the ’144 Patent specification discloses that “from the host device the user can also create
a configuration file, whose entries automatically set and control various functions of the interface
device . . . .” ’144 Patent at 6:47–49.
At the January 5, 2017 hearing, Defendants Lenovo and Motorola argued that Z4 is
distinguishable because the claims in Z4 were “silent as to the initiation of the registration process”

Page 33 of 52

that was there at issue. Docket No. 220 at 66:20–67:12 (quoting 507 F.3d at 1351 (emphasis
added)). Defendants Lenovo and Motorola argued that here, by contrast, the claims recite how the
automatic processes are initiated. E.g., id. at 70:35–71:18. On balance, Defendants Motorola and
Lenovo have not demonstrated that the initiation limitations they have cited are necessarily
exclusive. In other words, Defendants Motorola and Lenovo have not shown that the claims
require that nothing other than the recited limitations can be involved in initializing or controlling
the recited automatic processes. On balance, Z4 is instructive as to the possibility of, for example,
“user interaction in the selection or initialization” in addition to whatever limitations are expressly
recited in the claims. 507 F.3d at 1351.
Also, at the January 5, 2017 hearing, the other Defendants argued that the word “any” (as
part of their proposal of “without any user intervention”) should be adopted and was not intended
to exclude, for example, a user plugging in a device. Docket No. 220 at 76:17–79:13. Nonetheless,
on balance, the word “any” should be omitted from the construction so as to reduce the risk of an
overbroad reading of “user involvement” as discussed above.
The Court thus hereby construes “automatic” and “automatically” to mean “without
user intervention.” No separate construction of the other disputed terms is necessary apart from
this construction of “automatic” and “automatically.”
8. “data transmit/receive device”
Plaintiff’s Proposed Construction
“a device that is capable of either
(a) transmitting data or (b) transmitting data
and receiving data”

Defendants’ Proposed Construction
“a device that is capable of transmitting
analog data to and receiving data from the
host device and that is capable of actively
communicating with the host device” 6

6

Defendants previously proposed: “a device that is capable of transmitting data to or receiving
data from the host device and that is capable of actively communicating with the host device.”
Dkt. No. 151, Ex. A at 7.

Page 34 of 52

Dkt. No. 151, Ex. A at 7–8; Dkt. No. 175 at 30; Dkt. No. 185 at 32; Dkt. No. 197, Ex. A at 109–
110.
Plaintiff argues that “[t]he term ‘device’ should be construed broadly, given its broad and
varied scope found in the claims and specifications of the Patents.” Dkt. No. 175 at 30. Plaintiff
also asserts that “[i]n some claims, the device is only required to transmit data, while in other
claims the device is required to both transmit and receive data, e.g. to support two-way
communications.” Id. at 31. Plaintiff urges that Defendants’ proposal of requiring “actively
communicating with the host device” “seeks to import a limitation from the specification and
confine the claim to a preferred embodiment.” Id. (citing ’399 Patent at 3:25–28 & 5:56–63).
Defendants respond that “[t]he specification . . . appears to use the slash or slant to indicate
an ‘and’ relationship.” Dkt. No. 185 at 32; see ’399 Patent at Abstract (“input/output interfaces”;
“input/output device”), 3:10–12 (“MFM encoder/decoder”; “serial/parallel adapter”), 5:13–20
(“BIOS system (Basic Input/Output System)”), 6:52–55 (“read/write assignment”), 9:50–54 (“8
sample/hold (S&H) circuits”) & 10:36–39 (“high-speed sample/hold amplifier”). Defendants also
argue that their proposal of “analog” is supported by the specification, such as the Title of the ’399
Patent and the Title of the ’449 Patent, as well as by the context of surrounding claim language.
Dkt. No. 185 at 33.
Plaintiff replies that “[t]he specification uses ‘/’ in a variety of ways.” Dkt. No. 191 at 10.
Claim 1 of the ’399 Patent recites (emphasis added):
1. An interface device for communication between a host device, which comprises
drivers for input/output devices customary in a host device and a multi-purpose
interface, and a data transmit/receive device, the data transmit/receive device being
arranged for providing analog data, comprising:
a processor;
a memory;

Page 35 of 52

a first connecting device for interfacing the host device with the interface
device via the multi-purpose interface of the host device; and
a second connecting device for interfacing the interface device with the data
transmit/receive device, the second connecting device including a sampling circuit
for sampling the analog data provided by the data transmit/receive device and an
analog-to-digital converter for converting data sampled by the sampling circuit into
digital data,
wherein the interface device is configured by the processor and the memory
to include a first command interpreter and a second command interpreter,
wherein the first command interpreter is configured in such a way that the
command interpreter, when receiving an inquiry from the host device as to a type
of a device attached to the multi-purpose interface of the host device, sends a signal,
regardless of the type of the data transmit/receive device attached to the second
connecting device of the interface device, to the host device which signals to the
host device that it is an input/output device customary in a host device, whereupon
the host device communicates with the interface device by means of the driver for
the input/output device customary in a host device, and
wherein the second command interpreter is configured to interpret a data
request command from the host device to the type of input/output device signaled
by the first command interpreter as a data transfer command for initiating a transfer
of the digital data to the host device.
In the context of the claims and the specification, the “/” in “data transmit/receive device”
can be readily understood as meaning “and/or.” For example, above-quoted Claim 1 of the ’399
Patent specifically refers to the “data transmit/receive device” as “being arranged for providing
analog data” but does not recite that the device must also receive data.
As to whether the “data transmit/receive device” must be able to “communicate actively
with the host device,” this is disclosed as a specific feature of a particular embodiment “according
to the present invention” and should not limit the disputed term (unless so limited by other claim
language). ’399 Patent at 5:47–63; see Phillips, 415 F.3d at 1323.
Finally, as to whether this term should be construed to require “analog” data, Defendants’
reliance upon the Titles of the patents and upon surrounding claim language is unavailing. In some
instances the claims expressly recite analog limitations, but Defendants have not demonstrated any

Page 36 of 52

definition or disclaimer that would warrant requiring analog data where the claims recite no such
limitation. See, e.g., ’399 Patent at 10:27–32 (cited by Defendants at the January 5, 2017 hearing).
Indeed, to whatever extent Defendants are relying upon other claim language as requiring analog
data, any such limitation is set forth by that other claim language and should not be incorporated
into the construction of “data transmit/receive device.”
The Court therefore hereby construes “data transmit/receive device” as used in the ’399
Patent, claims 1, 3, 6, 11 and 14, the ’449 Patent, claims 1, 2, 5 and 16–17, the ’746 Patent, claim
7 and the ’144 Patent, claims 17 and 19, to mean “data transmit and/or receive device.”
9. “simulating a virtual file system to the host”
Plaintiff’s Proposed Construction
“emulating a file system, including a directory
structure, such that the host device use [sic,
can use] its native driver to access data even if
the data is not actually on a device for which
the native driver was designed” 7

Defendants’ Proposed Construction
“presenting to the host device a file system
that emulates the file system of the storage
device customary in the host device, even
though the emulated file system does not exist
on the interface device” 8

Dkt. No. 151, Ex. A at 8; Dkt. No. 175 at 31–32; Dkt. No. 185 at 33; Dkt. No. 197, Ex. A at 117.
Plaintiff argues that its proposed construction is consistent with the specification and the
Papst Opinion. Dkt. No. 175 at 32.
Defendants respond that Plaintiff’s proposal “introduces the unsupported term ‘native
driver’ and fails to address that the ‘virtual file system’ must be simulated.” Dkt. No. 185 at 34.

7

Plaintiff previously proposed: “representing one or more data sets as if they are stored on a
customary device.” Dkt. No. 151, Ex. A at 8.
8

Defendants previously proposed: “imitating a file system that can be referenced by the host
device, but such file system does not exist on either the host device or the interface device.” Dkt.
No. 151, Ex. A at 8.

Page 37 of 52

Plaintiff replies that “Defendants argue that ‘simulating’ means the file system must not
exist on the interface device, but the specification supports that it may.” Dkt. No. 191 at 10 (citing
’449 Patent at 5:38–45).
In the Papst MDL, the parties submitted an agreement that this term means “emulating a
file system, such that the host device can use its native driver to access data even if the data is not
actually on a device for which the native driver was designed.” Papst MDL, Dkt. No. 651, Dec.
8, 2016 Joint Notice. No such agreement has been reached in the above-captioned case, as to
“native driver” or otherwise.
Although the parties in the Papst MDL agreed upon a construction that includes the phrase
“native driver” (id.), Plaintiff has not sufficiently supported its proposal of “native driver” in the
above-captioned case, and introducing the phrase “native driver” would tend to confuse rather than
clarify the scope of the claims. Further, Plaintiff’s proposal of using such a driver “to access data
even if the data is not actually on a device for which the native driver was designed” is not
sufficiently tethered to this disputed term, which requires “simulating a virtual file system.”
Instead, what makes the file system “virtual” and “simulat[ed]” is that the file system does
not actually exist (other than in “simulat[ed]” form). See ’399 Patent at 5:19–47; see also id. at
12:30–31 (“simulation of a freely definable file structure on the ‘virtual’ hard disk”). This is
consistent with the Papst Opinion, in which the Federal Circuit noted that “‘[v]irtual’ conveys
some kind of as if action, one thing emulating another; the term was prominently used that way in
the computer field at the time of the inventions here.” Papst Opinion at 1268.
The Court therefore hereby construes “simulating a virtual file system to the host” as
used in the ’449 Patent, claims 1 and 17, to mean “presenting to the host device a file system

Page 38 of 52

that emulates the file system of the storage device customary in the host device, even though
the emulated file system does not actually exist on the interface device.”
10. “user-loaded” Terms

“user-loaded file transfer enabling software”
(’144 Patent, Claims 1, 86; ’746 Patent, Claims 1, 31, 34; ’437 Patent, Claim 1)
Plaintiff’s Proposed Construction
No construction necessary other than other
constructions offered. 9

Defendants’ Proposed Construction
“specific drivers or software for the [analog
data acquisition device or the interface of the
analog data acquisition device] / [ADGPD or
the i/o port] beyond that provided in or with
the operating system or BIOS”

“whereby there is no requirement for any user-loaded file transfer enabling software to
be loaded on or installed in the computer in addition to the operating system”
(’746 Patent, Claim 1)
“without requiring any end user to load any software onto the computer at any time”
(’746 Patent, Claim 17; ’144 Patent, Claims 1, 84)
“without requiring any user-loaded file transfer enabling software to be loaded on or
installed in the computer”
(’746 Patent, Claims 31, 34; ’144 Patent, Claims 1, 86; ’437 Patent, Claims 1, 43)
Plaintiff’s Proposed Construction
“without requiring the end user to install or
load specific drivers or software for the
[ADGPD/analog data acquisition
device/analog data acquisition and interface
device] beyond that included in the operating
system or BIOS”

Defendants’ Proposed Construction
No construction necessary beyond the
proposed construction identified above.

9

Plaintiff previously proposed: “without requiring the end user to install or load specific drivers
or software for the [ADGPD/analog data acquisition device/analog data acquisition and interface
device] beyond that included in the operating system or BIOS.” Dkt. No. 151, Ex. A at 8.

Page 39 of 52

“(a) without requiring any end user to load any software onto the computer at any time
and (b) without requiring any end user to interact with the computer to set up a file
system in the ADGPD at any time, wherein the at least one parameter is consistent with
the ADGPD being responsive to commands issued from a customary device driver”
(’144 Patent, Claim 1; ’437 Patent, Claim 1)
Plaintiff’s Proposed Construction
“without requiring the end user to install or
load specific drivers or software for the
[ADGPD/analog data acquisition
device/analog data acquisition and interface
device] beyond that included in the operating
system or BIOS and (b) without requiring any
end user to interact with the computer to set
up a file system in the ADGPD at any time,[]
wherein the at least one parameter is
consistent with the ADGPD being responsive
to commands issued from a customary device
driver” 10

Defendants’ Proposed Construction
No construction necessary apart from other
proposed constructions.

“without requiring the user to load the device driver”
(’437 Patent, Claim 43)
Plaintiff’s Proposed Construction
“without requiring the end user to install or
load specific drivers or software for the
[ADGPD/analog data acquisition
device/analog data acquisition and interface
device] beyond that included in the operating
system or BIOS” 11

Defendants’ Proposed Construction
No construction necessary apart from other
proposed constructions.

10

Plaintiff previously proposed: “without requiring the end user to install or load specific drivers
or software for the [ADGPD/analog data acquisition device/analog data acquisition and interface
device] beyond that included in the operating system or BIOS, wherein the at least one parameter
is consistent with the ADGPD being responsive to commands issued from a customary device
driver.” Dkt. No. 151, Ex. A at 9; Dkt. No. 175 at 33.
11

Plaintiff previously proposed: “without requiring the end user to install or load a customary
device driver beyond that included in the operating system of [sic, or] BIOS.” Dkt. No. 151,
Ex. A at 9.

Page 40 of 52

“without requiring any user-loaded file transfer enabling software to be loaded on or
installed in the host device”
(’746 Patent, Claim 34)
Plaintiff’s Proposed Construction
“without requiring the end user to install or
load specific drivers or software for the
[ADGPD/analog data acquisition
device/analog data acquisition and interface
device] beyond that included in the operating
system or BIOS”

Defendants’ Proposed Construction
No construction necessary apart from other
proposed constructions.

“without requiring any end user to load any software onto the first computer at any
time”
(’144 Patent, Claim 86)
Plaintiff’s Proposed Construction
“without requiring the end user to install or
load specific drivers or software for the
[ADGPD/analog data acquisition
device/analog data acquisition and interface
device] beyond that included in the operating
system or BIOS”

Defendants’ Proposed Construction
No construction necessary apart from other
proposed constructions.

“without requiring any end user to load any software onto the second computer at any
time”
(’144 Patent, Claim 86)
Plaintiff’s Proposed Construction
“without requiring the end user to install or
load specific drivers or software for the
[ADGPD/analog data acquisition
device/analog data acquisition and interface
device] beyond that included in the operating
system or BIOS”

Defendants’ Proposed Construction
No construction necessary apart from other
proposed constructions.

Dkt. No. 151, Ex. A at 8–10; Dkt. No. 175 at 32–34; Dkt. No. 185 at 38; Dkt. No. 197, Ex. A at
122, 131, 133, 135, 143–44, 146–148 & 151.

Page 41 of 52

Plaintiff argues that “[t]hese terms capture one of the central concepts of the ’746 and ’144
patents—that an end user need not install or load any software onto the computer or host device to
connect to the interface device.” Dkt. No. 175 at 34. Nonetheless, Plaintiff urges, “[Plaintiff’s]
construction clarifies that these claim limitations do not preclude pre-installed, host computer
software packages that the invention leverages to implement the inventive concept, i.e., BIOS
(Basic Input/Output System) and operating system software.” Id.
Defendants respond, as to “user-loaded file transfer enabling software”: “There is nothing
in the claims, specification or file history that restricts file transfer enabling software from being
provided ‘with’ (as opposed to ‘in’) an operating system or the BIOS. Both options are available.”
Dkt. No. 185 at 38. As to the remaining “user-loaded” terms, Defendants respond that “no further
construction is necessary as the surrounding plain language by itself is clear that user does not
have to load any software.” Id. at 39.
In reply, Plaintiff refers to its opening arguments. Dkt. No. 191 at 10 n.49.
The parties appear to dispute whether these “without requiring” limitations preclude “preloaded” software, such as software loaded at a factory prior to a computer device being sold. These
limitations preclude requiring “user-loaded” software and thus, on their face, preclude requiring a
user to load any software (other than an operating system, which is necessary for the computer
device to operate, see Dkt. No. 175, Ex. 8, Nov. 21, 2016 Fernald Decl. at ¶¶ 81–83).
The Court therefore hereby construes “user-loaded” and “user to load” to mean “loaded
by a user other than as necessary to load or maintain an operating system.” 12

12

At the January 5, 2017 hearing, Defendants endorsed construing “user-loaded” as meaning
“loaded by a user other than as necessary to load or maintain the operating system,” which the
Court had preliminarily proposed. Docket No. 220 at 114:14–16.

Page 42 of 52

11. “input/output (i/o) port”
Plaintiff’s Proposed Construction
No construction necessary apart from the
other proposed constructions, if any.

Defendants’ Proposed Construction
“the physical components necessary to make
a connection” 13

Dkt. No. 151, Ex. A at 10; Dkt. No. 175 at 35; Dkt. No. 185 at 39; Dkt. No. 197, Ex. A at 154.
Plaintiff argues that no construction is necessary because “[t]he terms ‘port’ and ‘i/o port’
were widely and broadly used in the art at the time of the invention.” Dkt. No. 175 at 35. As to
Defendants’ proposed construction, Plaintiff argues that in the context of the “enhanced parallel
port” discussed in the specification, for example, “the port includes the components that permit
attachment to a printer interface, but it is not the connection itself.” Id. at 36.
Defendants respond that “in the context of the asserted claims, the components are
physical.” Dkt. No. 185 at 39.
In reply, Plaintiff refers to its opening arguments. Dkt. No. 191 at 10 n.49.
Claim 1 of the ’144 Patent, for example, includes a recital of “when the i/o port is
operatively interfaced with a multi-purpose interface of a computer.” The context in which “i/o
port” is used in the claims, particularly when read in light of the specification, thus demonstrates
that an “i/o port” is physical. See, e.g., ’399 Patent at 4:42–44 (“a multi-purpose interface of the
host device which can be implemented, for example, as an SCSI interface or as an enhanced printer
interface”), 9:32 (“50-pin SCSI connector”) & 9:38 (“EPP (enhanced parallel port)”). Likewise,
extrinsic evidence confirms that the term “port” has been understood in the relevant context as
referring to a physical interface. See Dkt. No. 175, Ex. 8B, C and the 8051 22–23 (1998).

13

Defendants previously proposed: “physical connection to a host computer.” Dkt. No. 151,
Ex. A at 10.

Page 43 of 52

The Court therefore hereby construes “input/output (i/o) port” as used in the ’144 Patent,
claims 1–2, 15–16, 56–57 and 86 and in the ’437 Patent, claim 1 to mean “the physical
components necessary to make a connection.”
12. “analog signal acquisition channel[s],” “acquisition channels,” and “analog acquisition
channel”
Plaintiff’s Proposed Construction
No construction necessary apart from the
other proposed constructions, if any.

Defendants’ Proposed Construction
“distinct analog signal input[s] each
separately connected to the [analog data
acquisition device] [data acquisition device]
[ADGPD] [analog data device] and to signal
processing circuitry”

Dkt. No. 151, Ex. A at 10; Dkt. No. 175 at 36; Dkt. No. 185 at 40; Dkt. No. 197, Ex. A at 159.
Plaintiff submits that “[t]he term ‘channel’ was used in the art at the time of the invention
to refer to ‘a path along which signals can be sent.’” Dkt. No. 175 at 36–37 (quoting id., Ex. 8C,
The New IEEE Standard Dictionary of Electrical and Electronics Terms 174 (5th ed. 1993)).
Plaintiff concludes that “[a] person of ordinary skill in the art would understand the ordinary
meaning of the ‘analog acquisition channel’ terms to include paths along which analog signals can
be acquired and that a channel can generally send multiple signals through a common path (the
definition uses ‘signals’ rather than ‘signal’).” Id. at 37 (citation omitted).
Defendants respond that “[t]he plain language of the claims and the specification confirm
that each ‘channel’ is a distinct analog signal input with separate connections.” Dkt. No. 185 at 40.
Plaintiff replies that “[a]t the time of the invention, ‘channel’ referred to ‘a path along
which signals can be sent,’ which is both singular and plural.” Dkt. No. 191 at 10 n.49.
Defendants have argued that “each channel is a distinct analog input with a separate
connection.” Dkt. No. 185 at 40 (emphasis added). This is a specific feature of particular
embodiments that should not be imported into the claims. See Phillips, 415 F.3d at 1323. Instead,

Page 44 of 52

Plaintiff has submitted evidence that “channel” has been understood in the context of computers
to mean “a path along which signals can be sent.” Dkt. No. 175, Ex. 8C, The New IEEE Standard
Dictionary of Electrical and Electronics Terms 174 (5th ed. 1993).
Analogously, the Papst Opinion found that “the term ‘interface device’ is not limited to a
‘stand-alone device’ in the district court’s sense relied on for summary judgment: a device that is
physically separate and apart from, and not permanently attached to, a data device (or a host
computer).” Papst Opinion at 1262 (emphasis added).
At the January 5, 2017 hearing, Defendants endorsed the Court’s preliminary construction,
which was “a path along which analog signals can be acquired,” except that Defendants proposed
modifying the construction by replacing “a path” with “a path or paths” so as to account for plural
as well as singular recitations in the claims. Docket No. 220 at 119:3–14. Plaintiff

responded

that the channels are not necessarily analog, depending upon the particular claim language. Id. at
119:20–24.
On balance, to the extent that Defendants are relying upon recitals of the word “analog” as
support for requiring that the channels are for “analog” signals, any such analog limitations are
expressly recited and should not be imported into the meaning of “channel.”
The Court therefore hereby construes the disputed terms as set forth in the following chart:

Page 45 of 52

Term
“analog signal acquisition channel”

Construction
“a path along which analog signals can be
acquired”

(’746 Pat., Cl. 1)
“analog signal acquisition channels”

“paths along which analog signals can be
acquired”

(’746 Pat., Cl. 10)
“acquisition channels”

“paths along which signals can be
acquired”

(’746 Pat., Cl. 35)

.
“analog acquisition channel”

“a path along which analog signals can be
acquired”

(’437 Pat., Cls. 1, 14, 43)
“analog acquisition channels”

“paths along which analog signals can be
acquired”

(’437 Pat., Cls. 1, 13–14, 18, 43, 45)

SIGNED this 7th day of March, 2017.

____________________________________
ROBERT W. SCHROEDER III
UNITED STATES DISTRICT JUDGE

Page 46 of 52

APPENDIX A: COLLECTED CONSTRUCTIONS
Claim Term
“a first connecting device for interfacing the
host device with the interface device via the
multi-purpose interface of the host device”

Court’s Construction
“a first electrical component, or group of
electrical components, for interfacing the
interface device with the host device”

(’399 Pat., Cls. 1, 11; ’449 Pat., Cls. 1, 17)

“interfacing of the host device with a first
connecting device of the interface device via
the multi-purpose interface of the host
device”
(’399 Pat., Cl. 14)
“a second connecting device for interfacing
the interface device with the data
transmit/receive device”

“a second electrical component, or group of
electrical components, for interfacing the
interface device with the host device”

(’399 Pat., Cls. 1, 11; ’449 Pat., Cls. 1, 17)

“interfacing of the data transmit/receive
device with a second connecting device of the
interface device”
(’399 Pat., Cl. 14)
“first command interpreter” (’399 Pat., Cls. 1,
11)

“a first program that receives a command and
executes some function based on that
command”

“second command interpreter” (’399 Pat.,
Cls. 1, 11)

“a second program that receives a command
and executes some function based on that
command”

“multi-purpose interface”

Plain meaning

(All Claims)

Page 47 of 52

“sends a signal, regardless of the type of the
data transmit/receive device attached to the
second connecting device of the interface
device, to the host device which signals to the
host device that it is an input/output device
customary in a host device”

Plain meaning

(’399 Pat., Cls. 1, 11)
“sends a signal, regardless of the type of the
data transmit/receive device attached to the
second connecting device of the interface
device, to the host device which signals to the
host device that it is a storage device
customary in a host device”

Plain meaning

(’449 Pat., Cls. 1, 17)
“at least one parameter indicative of the class
of devices to be sent to the computer through
the multipurpose interface of the computer,
independent of the analog source, wherein the
analog data acquisition device is not within
the class of devices”

Plain meaning

(’746 Pat., Cl. 1)
“the at least one parameter”

Plain meaning

(’746 Pat., Cls. 15, 17, 34; ’144 Pat., Cls. 1,
27–29, 31, 34–35, 61, 84, 86–87; ’437 Pat.,
Cls. 1, 22, 25)
“an identification parameter”

Plain meaning

(’437 Pat., Cl. 43)
“at least one parameter identifying the analog
data acquisition device as a digital mass
storage device, instead of as an analog data
acquisition device and regardless of the
analog source”

Plain meaning

(’746 Pat., Cl. 31)

Page 48 of 52

“at least one parameter which provides
identification information regarding the
ADGPD”

Plain meaning

(’144 Pat., Cl. 1)
“wherein the at least one parameter provides
identification information regarding the
ADGPD”

Plain meaning

(’144 Pat., Cl. 86)
“responding to the inquiry from the host
Plain meaning
device by the interface device in such a way
that it is an input/output device customary in a
host device”
(’399 Pat., Cl. 14)
“the driver for the [input/output] [storage]
device customary in a host device”
(’399 Pat., Cls. 1, 11; ’449 Pat., Cl. 1)
“the usual driver for the [input/output]
[storage] device”

“the driver for the [input/output] [storage]
device normally part of commercially
available computer systems at the time of the
invention”
“the driver for the [input/output] [storage]
device normally part of commercially
available computer systems at the time of the
invention”

(’399 Pat., Cl. 14)
“whereupon the host device communicates
with the interface device by means of the
driver for the input/output device customary
in a host device”

“whereupon the host device communicates
with the interface device by means of the
driver for the input/output device normally
part of commercially available computer
systems at the time of the invention”

(’399 Pat., Cl. 1)
“customary driver”

“driver for a device normally part of
commercially available computer systems at
the time of the invention”

(’144 Pat., Cls. 1, 81–82, 86)
“a [storage] [input/output] device customary
in a host device”

“[storage] [input/output] device normally part
of commercially available computer systems
at the time of the invention”

(’399 Pat., Cls. 1, 11, 14; ’449 Pat., Cls. 1, 17;
’144 Pat., Cls. 81, 83)

Page 49 of 52

“automatic” / “automatically”

“without user intervention”

(ʼ144 Pat., Cls. 1, 61–63, 78–79, 86; ’437
Pat., Cls. 1, 43; ’746 Pat., Cls. 1, 17, 31, 34)
“automatic [] transfer”

No separate construction necessary

(’437 Pat., Cl. 1)
“automatically transfer”

No separate construction necessary

(’746 Pat., Cls. 31, 34)
“automatic file transfer process”

No separate construction necessary

(’144 Pat., Cls. 1, 79, 86; ’437 Pat., Cl. 1)
“automatically transferring data from the
analog source to the host device in response
to a digital data read command from the host
device”

No separate construction necessary

(’746 Pat., Cl. 34)
“automatic recognition process”

No separate construction necessary

(’144 Pat., Cls. 1, 61–63, 78, 86; ’437 Pat.,
Cl. 1)
“data transmit/receive device”

“data transmit and/or receive device”

(’399 Pat., Cls. 1, 3, 6, 11, 14; ’449 Pat., Cls.
1–2, 5, 16–17; ’746 Pat., Cl. 7; ’144 Pat., Cls.
17, 19)
“simulating a virtual file system to the host”
(’449 Pat., Cls. 1, 17)

“presenting to the host device a file system
that emulates the file system of the storage
device customary in the host device, even
though the emulated file system does not
actually exist on the interface device”

Page 50 of 52

“user-loaded file transfer enabling software”
(’144 Pat., Cls. 1, 86; ’746 Pat., Cls. 1, 31, 34; ’437 Pat., Cl. 1)
“whereby there is no requirement for any user-loaded file transfer
enabling software to be loaded on or installed in the computer in
addition to the operating system”
(’746 Pat., Cl. 1)

“user-loaded” and
“user to load”:
“loaded by a user
other than as
necessary to load or
maintain an operating
system”

“without requiring any end user to load any software onto the
computer at any time”
(’746 Pat., Cl. 17; ’144 Pat., Cls. 1, 84)
“without requiring any user-loaded file transfer enabling software to
be loaded on or installed in the computer”
(’746 Pat., Cls. 31, 34; ’144 Pat., Cls. 1, 86; ’437 Pat., Cls. 1, 43)
“(a) without requiring any end user to load any software onto the
computer at any time and (b) without requiring any end user to
interact with the computer to set up a file system in the ADGPD at
any time, wherein the at least one parameter is consistent with the
ADGPD being responsive to commands issued from a customary
device driver”
(’144 Pat., Cl. 1; ’437 Pat., Cl. 1)
“without requiring the user to load the device driver”
(’437 Pat., Cl. 43)
“without requiring any user-loaded file transfer enabling software to
be loaded on or installed in the host device”
(’746 Pat., Cl. 34)
“without requiring any end user to load any software onto the first
computer at any time”
(’144 Pat., Cl. 86)
“without requiring any end user to load any software onto the second
computer at any time”
(’144 Pat., Cl. 86)
“input/output (i/o) port”

“the physical components necessary to make
a connection”

(’144 Pat., Cls. 1–2, 15–16, 56–57, 86;
’437 Pat., Cl. 1)

Page 51 of 52

“analog signal acquisition channel”

“a path along which analog signals can be
acquired”

(’746 Pat., Cl. 1)
“analog signal acquisition channels”

“paths along which analog signals can be
acquired”

(’746 Pat., Cls. 10)
“acquisition channels”

.

“paths along which signals can be acquired”

(’746 Pat., Cl. 35)
“analog acquisition channel”

“a path along which analog signals can be
acquired”

(’437 Pat., Cls. 1, 14, 43)
“analog acquisition channels”

“paths along which analog signals can be
acquired”

(’437 Pat., Cls. 1, 13–14, 18, 43, 45)

Page 52 of 52