MacroPoint, LLC v. Ruiz Food Products, Inc.

Filing 75

MEMORANDUM OPINION AND ORDER construing the disputed claim terms in United States Patent Nos. 8,275,358 ("the '358 Patent") and 9,429,659 ("the '659 Patent"). Signed by Magistrate Judge K. Nicole Mitchell on 2/14/2018. (rlf)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION

MACROPOINT, LLC
Plaintiff,
v.
RUIZ FOOD PRODUCTS, INC.
Defendant.

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CASE NO. 6:16-CV-1133-RWS-KNM

MEMORANDUM OPINION AND ORDER
This Memorandum Opinion construes the disputed claim terms in United States Patent
Nos. 8,275,358 (“the ‘358 Patent”) and 9,429,659 (“the ‘659 Patent”) asserted in this suit by
MacroPoint, LLC.
On September 28, 2017, the parties presented oral arguments on the disputed claim terms
at a Markman hearing. For the reasons stated herein, the court ADOPTS the constructions set forth
below.
BACKGROUND
Plaintiff, MacroPoint, LLC (“MacroPoint”) alleges that Defendant infringes the ‘358
Patent and the ‘659 Patent (collectively, the “patents-in-suit”). The patents-in-suit relate to systems
and methods for obtaining and monitoring the location of a mobile device, a vehicle, or a freight.
See ‘358 Patent, ‘659 Patent.
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

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(Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc.,
381 F.3d 1111, 1115 (Fed. Cir. 2004)). The Court examines a patent’s intrinsic evidence to define
the patented invention’s scope. Id. at 1313–1314; Bell Atl. Network Servs., Inc. v. Covad
Commc’ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). Intrinsic evidence includes the
claims, the specification, and the prosecution history. Phillips, 415 F.3d at 1312–13; Bell Atl.
Network Servs., 262 F.3d at 1267. Courts give claim terms their ordinary and customary meaning
as understood by one of ordinary skill in the art at the time of the invention in the context of the
patent as a whole. Phillips, 415 F.3d at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361,
1368 (Fed. Cir. 2003).
Claim language provides substantial guidance in 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 un-asserted, can provide additional instruction
because “terms are normally used consistently throughout the patent.” Id. The 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), aff’d, 517 U.S. 370,
116 S. Ct. 1384, 134 L. Ed. 2d 577 (1996)). “[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 also 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 the ordinary meaning of the term, or disclaim or disavow the claim scope. Phillips, 415 F.3d
at 1316. While the Court generally presumes terms possess their ordinary meaning, statements of

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clear disclaimer can overcome this presumption. See SciMed Life Sys., Inc. v. Advanced
Cardiovascular Sys., Inc., 242 F.3d 1337, 1343–44 (Fed. Cir. 2001). Further, 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 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, 1381 (Fed. Cir.
2004) (quoting Vitronics Corp., 90 F.3d at 1583). But, “[a]lthough the specification may aid the
court in interpreting the meaning of disputed language in the claims, particular embodiments and
examples appearing in the specification will not generally be read into the claims.” Constant v.
Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988); see also Phillips, 415 F.3d
at 1323.
The prosecution history is another tool to supply the proper context for claim construction
because a patentee may define a term during prosecution of the patent. Home Diagnostics Inc. v.
LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the specification, a patent
applicant may define a term in prosecuting a patent”). The well-established doctrine of prosecution
disclaimer “preclud[es] patentees from recapturing through claim interpretation specific meanings
disclaimed during prosecution.” Omega Eng’g Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed.
Cir. 2003). The prosecution history must show that the patentee clearly and unambiguously
disclaimed or disavowed the proposed interpretation during prosecution to obtain claim allowance.
Middleton Inc. v. 3M Co., 311 F.3d 1384, 1388 (Fed. Cir. 2002); see also Springs Window

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Fashions LP v. Novo Indus., L.P., 323 F.3d 989, 994 (Fed. Cir. 2003) (“The disclaimer . . . must
be effected with ‘reasonable clarity and deliberateness.’”) (citations omitted). “Indeed, by
distinguishing the claimed invention over the prior art, an applicant is indicating what the claims
do not cover.” Spectrum Int’l v. Sterilite Corp., 164 F.3d 1372, 1378–79 (Fed. Cir. 1988)
(quotation omitted). “As a basic principle of claim interpretation, prosecution disclaimer promotes
the public notice function of the intrinsic evidence and protects the public’s reliance on definitive
statements made during prosecution.” Omega Eng’g, Inc., 334 F.3d at 1324.
Although “less significant than the intrinsic record in determining the legally operative
meaning of claim language,” the Court may rely on extrinsic evidence to “shed useful light on the
relevant art.” Phillips, 415 F.3d at 1317 (quotation omitted). Technical dictionaries and treatises
may help a 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 the term is 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.
ANALYSIS
I.

Disputed Terms in the ‘358 Patent
The ‘358 Patent is titled “Providing Notice and Receiving Consent to Obtain Location

Information of a Mobile Device,” was filed on March 1, 2012, and issued on September 25, 2012.
The Abstract states:
A system for receiving user consent to obtaining location information of a mobile
device includes a communications interface configured for communication with a
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mobile device, a validation logic configured to identify the mobile device at least
in part by obtaining an identifier associated with the mobile device, and a
notification logic configured to communicate a signal including data representing
an automated voice message. The automated voice message provides a notice or
the location of a notice including information indicating to the user of the mobile
device that consenting to the obtaining of the location information of the mobile
device would result in the location information of the mobile device being
disclosed. The communications interface is configured to transmit the automated
voice message to the mobile device, and to receive from the mobile device data
indicating the user consent for obtaining the location information of the mobile
device.
a. “within the telephone call, identifying the mobile device”1 (Claims 1, and
13)
Plaintiff’s Proposed Construction
“identifying the mobile device after the
telephone connection with the mobile device
is initiated and before the connection ends.”

Defendant’s Proposed Construction
No construction necessary; plain and
ordinary meaning.

The underlying dispute is whether the plain and ordinary meaning of “within the telephone
call” means “within the telephone call itself, and not during preliminary signals that may be sent
while the call is being connected.” Doc. No. 59 at 8.
Plaintiff argues that the plain and ordinary meaning of “within the telephone call” means
“after the telephone connection with the mobile device is set up and before the telephone
connection ends.” Id.
Defendant argues that the plain and ordinary meaning of “within the telephone call” means
“within the telephone call itself, and not during preliminary signals that may be sent while the call
is being connected.” Doc. No. 59 at 15. Defendant contends that the specification characterizes the
methods described in Figures 2 and 3 as merely “exemplary,” and discloses no example in which
identification of the mobile device occurs before the parties to a phone call participate. Id. at 13.

During the Markman hearing, the parties agreed that “identifying the mobile device” did not need construction. See
Doc. No. 70, 17:7-9; 23:7-9.
1

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Defendant also argues that the patentee disclaimed “the use of signals sent during the
establishment of a telephone connection (before the telephone call itself).” Id. Defendant contends
that the patentee overcame the Johansson rejection by amending the claims to expressly recite that
identification of the mobile device must “take place within the context of a telephone call (not just
a voice message, but a live, real time telephone call).” Id. (citing Doc. No. 54-6 at 11-12).
Defendant argues that the use of signals sent during the establishment of a telephone connection,
but before the actual telephone call itself, is inconsistent with the context of “a live, real time
telephone call.” Id.
Claim 1 of the ‘358 Patent recites (emphasis added):
A computer implemented method for receiving consent from a user of a mobile
device to obtaining location information of the mobile device, the method
comprising:
participating in a telephone call with the mobile device;
within the telephone call, identifying the mobile device at least in part by
obtaining an identifier associated with the mobile device;
transmitting to the mobile device during the telephone call and automated
voice message communicating to the user of the mobile device at least one of:
a notice including information indicating that consenting to the
obtaining of the location information of the mobile device would result in
the location information of the mobile device would result in the location
information of the mobile device being disclosed, and
a location at which to find the notice, wherein the location at which
to find the notice is represented by a web address corresponding to a
website where, during the telephone call, the user can find the notice
indicating to the user that consenting to the obtaining of the location
information of the mobile device would result in the location information
of the mobile device being disclosed; and
receiving from the mobile device during the telephone call a signal
including data indicating consent for obtaining the location information of the
mobile device.
Claim 1 explicitly requires the identification to occur “within the telephone call,” and the
specification clarifies the meaning of “within the telephone call.” The specification discloses a

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system that includes a communications interface 120—which is configured to participate in
telephone calls with a mobile device 110, including calls with a toll free number—and a validation
logic 130. ‘358 Patent at 3:56-4:26. The specification states that “[t]he user of the mobile device
110 may initiate a telephone call by dialing the toll free number.” Id. at 3:64-66. The specification
also states:
In [this] embodiment, where the communications interface 120 is associated with a
toll free number … the validation logic 130 is configured to identify the mobile
device 110 at least in part by obtaining the telephone number associated with the
mobile device 110 via automatic number identification (ANI).
Id. at 4:11-17. Accordingly, the intrinsic evidence indicates that the identification steps occurs
within the time period between the initiation of the telephone call by dialing a number and the
termination of the call.
The prosecution history further indicates that the identification step must take place within
the context of the telephone call. In the May 15, 2012 Office Action, the examiner rejected claim
1 of the ‘358 Patent as unpatentable over U.S. Patent No. 6,442,391 (“Johansson”) in view of U.S.
Patent Application Publication No. 2008/0132252 (“Altman”). Doc. No. 54-5 at 4-5. The examiner
relied on Altman to fill in a gap left by Johansson, namely the transmission of a voice message.
Specifically, the examiner stated the following:
Johansson teaches transmitting a message communicating to the user of the mobile
device but does not specifically disclose transmitting a voice message
communicating to the user of the mobile device. However, it is well known in the
art the message may be in the form of text or voice message.
In the same field of endeavor, Altman discloses a messaging utility that can be used
to send and receive text or voice messages from users (see Altman, [0094]).
Doc. No. 54-5 at 5 (emphasis in original). The patentee responded by amending the claim to
include the phrase “within the telephone call,” as a further limitation of the identification step.
Doc. No. 54-6 at 3. Specifically, the patentee argued that “[t]he prior art combination, Johansson
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and Altman, does not teach … the series of steps of claim 1, which take place within the context
of a telephone call (not just a voice message, but a live, real time telephone call).” Id. at 12.
Defendant argues that the patentee disclaimed “the use of signals sent during the
establishment of a telephone connection (before the telephone call itself)” by amending the claims
to expressly recite that identification of the mobile device must “take place within the context of a
telephone call (not just a voice message, but a live, real time telephone call).” Doc. No. 59 at 13.
(citing Doc. No. 54-6 at 11-12). Defendant contends that the use of signals sent during the
establishment of a telephone connection (before the telephone call itself) is inconsistent with the
context of “a live, real time telephone call.”
However, the question of when a telephone call begins was not the issue or the reason for
the amendment. As discussed above, the cited prior art combination did not meet the amended
limitations of claim 1, which require the series of steps of claim 1 to “take place within the context
of a telephone call (not just a voice message, but a live, real time telephone call).” Doc. No. 54-6
at 12. The meaning and purpose of the arguments presented with that amendment are not a clear
and unmistakable disclaimer of “the use of signals sent during the establishment of a telephone
connection (before the telephone call itself).” Doc. No. 59 at 13. For prosecution disclaimer to
arise, “the alleged disavowing actions or statements made during prosecution [must] be both clear
and unmistakable.” Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1326 (Fed. Cir. 2003). The
amendment does not directly address whether data transmitted after a telephone number is dialed,
but before a voice conversation begins, is part of a telephone call.
The parties also rely on extrinsic evidence—the Qwest Enhanced 911 for Private
Switch/Automatic Location Identification Service Network Interface Specifications (“QWEST
publication”)—to support their conflicting positions. Doc. No. 54-7. Plaintiff contends that the

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QWEST publication indicates that “[w]hen a mobile device user places a telephone call to a toll
free number, the act of ‘identifying the mobile device’ includes obtaining a telephone number
associated with the mobile device via automatic number identification (ANI).” Doc. No. 54 at 20.
Plaintiff relies on Figure 4.1 of Qwest, Exhibit 7 to demonstrate that ANI is sent once the number
is dialed but before the call is disconnected, which is consistent with its proposed construction. Id.
at 20-21.
Defendant argues that the QWEST publication is extrinsic evidence, which is disfavored
in claim construction. Doc. No. 59 at 14. Nevertheless, Defendant argues that the QWEST
publication indicates that the ANI is provided before the telephone call itself is connected, which
is not “within the telephone call.” Id.
Ultimately, the QWEST publication is extrinsic evidence and is not particularly helpful in
resolving the issue before the Court. The QWEST publication addresses a very specific
embodiment, which is not explicitly discussed in the ’358 Patent. However, the “SIGNALING
SEQUENCE” illustrated in Figure 4-1 begins with “After a PBX station user dials 911.” Doc. No.
54-7 at 22. This is consistent with the disclosed embodiment of “[t]he user of the mobile device
110 may initiate a telephone call by dialing the toll free number.” ‘358 Patent at 3:64-66. A person
of ordinary skill in the art would understand that the beginning of the “live, real time telephone
call,” is after the call is initiated by dialing the number.
The Court construes the disputed term “within the telephone call” to mean “within
the time period between the initiation of a telephone call by dialing a number and the
termination of the call.”

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b. “communications interface” (Claims 19, 20, 21, 24-28, and 30)
Plaintiff’s Proposed Construction
This is not a means-plus-function
limitation.

Defendant’s Proposed Construction
This is a means-plus-function element to
be construed in accordance with 35
U.S.C. § 112, ¶ 6.

Not indefinite.
Indefinite.
To the extent the Court determines this is
a means-plus-function limitation:
Function: “participate in a telephone call
within a mobile device”
Structure: “a card; hardware, firmware,
software or combinations of each, a
‘logic,’ a software controlled
microprocessor, discrete logic like an
application specific integrated circuit
(ASIC), a programmed logic device, or a
memory device containing instructions”

Function: “participating in and
transmitting and receiving during a
telephone call according to an
undisclosed algorithm”
Structure: no corresponding algorithm,
structure, material, or acts disclosed for
performing recited functions

The parties originally disputed whether “communications interface” is a means-plusfunction term. Doc. No. 59 at 25. During the Markman hearing, Defendant provided a compromise
construction that concedes that “communications interface” is not a mean-plus-function term.
“A claim limitation that actually uses the word ‘means’ invokes a rebuttable presumption
that § 112, [¶] 6 applies.” Apex Inc. v. Raritan Comput., Inc., 325 F.3d 1364, 1371 (Fed. Cir. 2003)
(internal quotations omitted). Consequently, “a claim term that does not use ‘means’ will trigger
the rebuttable presumption that § 112, [¶] 6 does not apply.” Id. The disputed claim term here does
not recite the word “means,” and thus there is a rebuttable presumption that § 112, ¶ 6 does not
apply. Defendant has not cited authority that determined “interface” to be a nonce word or a verbal
construct. Williamson v. Citrix Online LLC, 792 F.3d 1339, 1350 (Fed. Cir. 2015) (“Generic 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’

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because they ‘typically do not connote sufficiently definite structure.’”).
The intrinsic evidence demonstrates that a person of ordinary skill in the art would
understand the necessary structure of the “communications interface.” The relevant portion of
Claim 19 recites (emphasis added):
wherein the communications interface is configured to transmit during the
telephone call the automated voice message to the mobile device, and
wherein the communications interface is further configured to, during the telephone
call, receive from the mobile device data indicating the user consent for obtaining the
location information of the mobile device.
Claim 19 indicates that the recited “mobile device” is physically separate from the recited “system”
because the “communication interface” enables the system to communicate with the mobile
device.
In one embodiment, the specification indicates that the “communication interface” is a card
device that operably connects disk 606 to computer 600. ‘358 Patent at 11:62-65. The specification
also states that network devices 620 may be connected to computer 600 via communication
interface. ‘358 Patent at 12:29-31. Furthermore, Figure 6 illustrates the “communication interface”
is connected to a number of other physical devices (e.g., I/O Ports, Computer, Disk, Network
Devices, etc.). Accordingly, the term “communication interface” conveys structure to a person of
ordinary skill in the art.
During the Markman hearing, Defendant proposed construing “communication interface”
to mean “a wired or wireless device that connections a computer to a network.” Defendant’s Claim
Construction Hearing Presentation at 59. Plaintiff continued to argue its proposed construction.
The specification states that the communication interface is “configured to participate in
telephone calls” or “initiate the telephone call.” ’358 Patent at 3:59–4:2. The specification further
states that the communication interface can be configured to transmit automated voice messages

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and to receive data indicating consent for obtaining location information. Id. at 4:44–5:3, 6:42–57.
Thus, the specification indicates that the “communication interface” operates as “a wired or
wireless device that connects to a mobile device.”
The extrinsic evidence is consistent with the intrinsic evidence and defines “interface” as
“a circuit, device or port” that allows communication between units. Doc. No. 54-10 at 4. In one
embodiment, the “communication” interface may be a card that operably connects disk 606 to
computer 600. ‘358 Patent at 11:62-65. Furthermore, claim 19 requires that the communications
interface facilitate communication with the mobile device.
Thus, a person of ordinary skill in the art would understand that the recited “communication
interface” is “a wired or wireless device that connects to a mobile device.” See, e.g., Inventio AG
v. Thyssenkrupp Elevator Ams. Corp., 649 F.3d 1350, 1358 (“[T]he claims indicate that the
‘modernizing device’ functions as an electrical circuit that receives signals, processes signals, and
outputs signals to other components in the patented system.”); Apex Inc. v. Raritan Computer, Inc.,
325 F.3d 1364, 1372 (Fed. Cir. 2003) (“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.”)
The Court construes the disputed term “communications interface” to mean “a wired or
wireless device that connects to a mobile device.”
c.
Term
validation
logic

“validation logic” (Claim 19) / “notification logic” (Claim 19, 21, 27)
Plaintiff’s Proposed
Construction
To the extent a construction is
required, this term should be
construed as “hardware,
firmware, software or
combinations of each that
performs or causes a validation
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Defendant’s Proposed
Construction
This is a means-plus-function
element to be construed in
accordance with 35 U.S.C. §
112, ¶ 6.
Indefinite.

action to be performed”
Function: “identifying a mobile
device according to an
undisclosed algorithm”

This is not a means-plusfunction limitation.
To the extent the Court
determines this is a means-plusfunction limitation:

Structure: no corresponding
algorithm, structure, material,
or acts disclosed for performing
recited functions

Function: “identifying a mobile
device”

notification
logic

Structure: “hardware, firmware,
software or a combinations of
each, a “logic,” a software
controlled microprocessor,
discrete logic like an application
specific integrated circuit
(ASIC), a programmed logic
device, a memory device
containing instructions”
To the extent a construction is
required, this term should be
construed as “hardware,
firmware, software or
combinations of each that
performs or causes a notification
action to be performed”

This is a means-plus-function
element to be construed in
accordance with 35 U.S.C. §
112, ¶ 6.
Indefinite.
Function: “communicating an
automatic voice message during
a telephone call according to an
undisclosed algorithm”

This is not a means-plusfunction limitation.
To the extent the Court
determines this is a means-plusfunction limitation:
Function: “communicating
information”
Structure: “hardware, firmware,
software or a combinations of
each, a “logic,” a software
controlled microprocessor,
discrete logic like an application
specific integrated circuit
(ASIC), a programmed logic
13

Structure: no corresponding
algorithm, structure, material,
or acts disclosed for performing
recited functions

device, a memory device
containing instructions”
The parties originally disputed whether the terms “validation logic” and “notification
logic” are means-plus-function terms. During the Markman hearing, Defendant provided
compromise constructions that concede that “validation logic” and “notification logic” are not
mean-plus-function terms. Specifically, Defendant proposed construing “validation logic” and
“notification logic” to mean “computer hardware, firmware, software, or a combination thereof.”
The parties also agreed during the Markman hearing that the Court only needs to construe the term
“logic” because “validation” and “notification” are further identified in the claim language.2 Doc.
No. 70 at 79:12-80:2.
The specification defines “logic” as follows:
A “logic,” as used herein, includes but is not limited to hardware, firmware,
software or combinations of each to perform a function(s) or an action(s), or to
cause a function or action from another logic, method, or system. For example,
based on a desired application or needs, a logic may include a software controlled
microprocessor, discrete logic like an application specific integrated circuit (ASIC),
a programmed logic device, a memory device containing instructions, or the like.
A logic may include one or more gates, combinations of gates, or other circuit
components. A logic may also be fully embodied as software. Where multiple
logical logics are described, it may be possible to incorporate the multiple logical
logics into one physical logic. Similarly, where a single logical logic is described,
it may be possible to distribute that single logical logic between multiple physical
logics.
‘358 Patent at 13:47-61 (emphasis). Thus, the intrinsic evidence indicates that the “logic” is
“computer hardware, firmware, software, or a combination thereof.” device.
Given the parties’ agreement that the terms “notification” and “validation” no longer
require construction, the Court construes the disputed term “logic” to mean “computer hardware,
firmware, software, or a combination thereof.”

The parties agreed that “validation” means “identifying the mobile device.” Doc. No. 70, 75:7-10 and 77:15-16.
Plaintiff is not permitted to argue that “validation” means something other than “identifying the mobile device.”
2

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d. “receiving from the mobile device during the telephone call a signal
including data indicating consent for obtaining the location information
of the mobile device” (Claim 1)
Plaintiff’s Proposed Construction
“before the end of the telephone call,
receiving from the mobile device one or
more electrical or optical signals, analog
or digital signals, data, one or more
computer or processor instructions,
messages, a bit or bit stream, or other
means that can be received, transmitted or
detected that signifies that consent to
obtain the location information of the
mobile device was granted”

Defendant’s Proposed Construction
No construction necessary.
Plain and ordinary meaning.

The parties dispute whether the phrase “receiving from the mobile device during the
telephone call a signal including data indicating consent for obtaining the location information of
the mobile device” requires construction. This dispute centers on the meaning of the term “signal”
and the phrase “during the telephone call.”3
i. “a signal”
Plaintiff’s proposed construction for the term “signal” comes directly from the
specification. The specification defines the term as “one or more electrical or optical signals,
analog or digital signals, data, one or more computer or processor instructions, messages, a bit or
bit stream, or other means that can be received, transmitted or detected.” ‘358 Patent at 14:8-13.
Defendant argues that this definition would not assist a jury, but would rather confuse a jury. Doc.
No. 59 at 16. Defendant argues that the specification’s definition is circular because it uses the
word “signals” twice. Id. at 16-17. Defendant also argues that the construction does not appear to

Plaintiff originally asked the Court to construe the phrase “including data indicating consent for obtaining the location
information of the mobile device.” During the Markman hearing, Plaintiff agreed that the phrase “including data
indicating consent for obtaining the location information of the mobile device” does not require construction. Doc.
No. 70 at 46:17-25.
3

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resolve any dispute as to the scope of the claims. Id. at 17.
Defendant’s arguments are unpersuasive. Plaintiff’s proposed construction is explicitly
how patentee defined the term, and provides necessary insight as to the meaning of the term, which
clarifies any dispute over the scope of the claim. Further, Defendant’s argument that the definition
is circular fails because the definition provides specific examples of types of signals (e.g., electrical
signals, digital signals, etc.).
ii. “during the telephone call”
The phrase “during the telephone call” was added to claim 1 at the same time the phrase
“within the telephone call” was added to claim 1. The arguments made by the patentee for the
phrase “within the telephone call” equally apply to “during the telephone call.” Thus, for the
reasons discussed above, the phrase “during the telephone call” will be construed to mean “during
the time period between the initiation of a telephone call by dialing a number and the termination
of the call.”
The Court construes the disputed terms as follows:
“during the telephone call” means “during the time period between the initiation of a
telephone call by dialing a number and the termination of the call.”
“a signal” means “one or more electrical or optical signals, analog or digital signals,
data, one or more computer or processor instructions, messages, a bit or bit stream, or other
means that can be received, transmitted or detected.”
II.

Disputed Terms in the ‘659 Patent
The ‘659 Patent is titled “Machine or Group of Machines for Monitoring Location of a

Vehicle or Freight Carried by a Vehicle,” was filed on January 4, 2016, and issued on August 30,
2016. The Abstract states:

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A machine or group of machines for monitoring location of at least one of a vehicle
or freight carried by the vehicle includes a server comprising a central processing
unit, a memory, a clock, and a server communication transceiver that receives
location information of a mobile device, the mobile device comprising a GPS
receiver, a microprocessor and a wireless communication transceiver coupled to the
GPS receiver, the mobile device comprising the GPS receiver programmed to
receive data sent by a plurality of GPS satellites, calculate location information of
the mobile device comprising the GPS receiver and transmit the location
information.
a. “receive a signal that indicates that consent was given to the transmission
of location information” (Claims 1 and 2)
Plaintiff’s Proposed Construction
“receive one or more electrical or optical
signals, analog or digital signals, data, one or
more computer or processor instructions,
messages, a bit or bit stream, or other means
that can be received, transmitted or detected
that indicates that consent to send location
information was given”

Defendant’s Proposed Construction
No construction necessary. Plain and ordinary
meaning.

During the Markman hearing, the parties agreed that there was no claim scope dispute as
to “signal” because the specification provided an explicit definition. Doc. No. 70 at 52:9-12.
Further, the Court has construed “signal” in the previous disputed term to comport with the
specification’s definition.
The remainder of Plaintiff’s proposed construction redrafts claim 2 of the ’659 Patent from
a signal “that indicates that consent was given to transmission of location information” to a signal
“that indicates that consent to send location information was given.” Plaintiff has not provided a
persuasive reason to redraft the claim as it proposes.
Therefore, the Court construes the disputed term “a signal” to mean “one or more
electrical or optical signals, analog or digital signals, data, one or more computer or
processor instructions, messages, a bit or bit stream, or other means that can be received,
transmitted or detected;” and gives the remaining terms in the phrase their plain and ordinary
17

meaning.
b. “receive an indication that consent to transmission of location
information has been given” (Claim 23)
Plaintiff’s Proposed Construction
Plain and ordinary meaning of “receive a
sign or piece of information that consent
to sending location information has been
given”

Defendant’s Proposed Construction
No construction necessary. Plain and ordinary
meaning.

The underlying dispute centers on the meaning of “indication.” During the Markman
hearing, the parties agreed that an “indication” includes at least “computer data indicating.” Doc.
No. 70, 54:16-19; 56:18-21. The parties dispute whether “indication” should mean the same as
“signal,” which is recited in the other independent claims.
Plaintiff contends that the patentee purposefully chose to use different terms in claims 2
and 23 of the ‘659 Patent. Doc. No. 60 at 9. Defendant argues that Plaintiff attempts to invoke the
doctrine of claim differentiation to argue that claim 23 should be so broad as to include any “sign”
of consent. Doc. No. 59 at 22.
The specification states that receiving consent from the communications device for
monitoring the location of the vehicle “includes receiving data indicating that the user has
performed an action on the communications device.” ‘659 Patent at 13:40-43. For example, the
specification states that “the user may have pressed a key in the communication device, touched
or swipe a particular portion of the device's screen, shaken the communications device,
combinations thereon and so on.” Id. at 13:43-47. The specification adds that “[i]n another
embodiment, the receiving from the communications device consent for monitoring the location
of the vehicle includes receiving a voice command from the communications device.” Id. at 13:4750. Thus, the intrinsic evidence indicates that an indication is “data indicating that the user has

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performed an action on the mobile device.”
Plaintiff contends that “indication” should be construed to mean “a sign or piece of
information,” because claim 23 does not require a “signal.” As discussed above, the patentee
provided an explicit definition for the term “signal,” and used the term in other claims. The
patentee did not use “signal” in claim 23, and did not provide an explicit definition of an
“indication.” However, Plaintiff has not provided any intrinsic support for construing “indication”
as “sign or piece of information.” Accordingly, “indication” should be construed to mean
“computer data indicating that the user has performed an action on the mobile device” based on
the intrinsic evidence cited above.
The parties also dispute whether a user is required for this claim term. Defendant argues
that the patents-in-suit require express, affirmative user consent to be obtained via the mobile
device before tracking. Doc. No. 59 at 17-18. (citing ’358 Patent at 2:1–3, 1:9–11, 1:20–22, 1:47–
51, 4:47–50, 4:51–56, 4:61–5:3, 6:45–48, 4:6–10; ’659 Patent at 2:1–3, 8:40–46). Defendant also
argues that:
a person of ordinary skill in the art would understand that these claim terms would
not encompass embodiments in which the consent was provided by someone other
than the user, or in which the fact of consent was merely inferred from the fact that
location information was being provided.
Doc. No. 59 at 19. Defendant further contends that during prosecution of the ’659 Patent, the
applicant made arguments attempting to distinguish prior art cited in a third party protest under 37
C.F.R. § 1.291(a). Id. at 21 (citing Doc. No. 59-5 at 3, 5, 7). Defendant objects to Plaintiff’s
construction because it appears to broaden the claims so that something other than a user’s
affirmative consent to be tracked could satisfy these claim limitations. Doc. No. 59 at 17.
Defendant notes that the examiner agreed with the applicant that “the [prior art] reference
does not appear to disclose anything specifically about receiving a signal that indicates that consent
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was given to transmission of location information, as recited in the independent claims.” Doc. No.
59-6 at 14, 18, 20. As recited by the disputed term, the claim requires “receive an indication that
consent to transmission of location information has been given.” Notwithstanding the difference
between the terms “signal” and “indication,” the claim language requires receiving consent to the
transmission of location information, and the intrinsic evidence indicates that this consent is from
the user. Thus, a user is required for this claim term.
Plaintiff’s construction redrafts claims 23 of the ’659 Patent from an indication “that
consent to transmission of location information has been given” to an indication “that consent to
sending location information has been given.” Plaintiff has not provided a persuasive reason to
redraft the claim as it proposes. The remaining terms in the phrase are unambiguous and should be
given their plain and ordinary meaning.
Therefore, the Court construes the disputed term “indication” to mean “computer data
indicating that the user has performed an action on the mobile device;” and gives the
remaining terms in the phrase their plain and ordinary meaning.
CONCLUSION
For the foregoing reasons, the Court hereby ADOPTS the above claim constructions for
the patents-in-suit. For ease of reference, the Court’s claim interpretations are set forth in a table
in Appendix A.

So ORDERED and SIGNED this 14th day of February, 2018.

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APPENDIX A
Court’s Construction

Terms, Phrases, or Clauses

United States Patent No. 8,275,358
“within the telephone call”

“within the time period between the initiation of a
telephone call by dialing a number and the
termination of the call”

“communications interface”

“a wired or wireless device that connects to a
mobile device”

“logic”

“computer hardware, firmware, software, or a
combination thereof”

“during the telephone call”

“during the time period between the initiation of a
telephone call by dialing a number and the
termination of the call”

“a signal”

“one or more electrical or optical signals, analog or
digital signals, data, one or more computer or
processor instructions, messages, a bit or bit
stream, or other means that can be received,
transmitted or detected”
United States Patent No. 9,429,659

“a signal”

“one or more electrical or optical signals, analog or
digital signals, data, one or more computer or
processor instructions, messages, a bit or bit
stream, or other means that can be received,
transmitted or detected”

“indication”

“computer data indicating that the user has
performed an action on the mobile device”

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