iLife Technologies Inc v. Nintendo of America Inc
Filing
142
MEMORANDUM OPINION AND ORDER: For the foregoing reasons, the Court ADOPTS the claim constructions as set in this order. The parties may not refer, directly or indirectly, to each other's claim construction positions in the presence of the jury. Likewise, the parties are ordered to refrain from mentioning in the presence of the jury any portion of this opinion, other than the actual definitions adopted by the Court. (Ordered by Chief Judge Barbara M.G. Lynn on 2/9/2017) (epm)
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF TEXAS
DALLAS DIVISION
ILIFE TECHNOLOGIES, INC.,
Plaintiff,
v.
NINTENDO OF AMERICA, INC.,
Defendant.
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No. 3:13-cv-04987-M
MEMORANDUM OPINION AND ORDER
On September 20, 2016, the Court held a claim construction hearing to determine the
proper construction of the disputed claim terms in United States Patent No. 6,864,796 (“the ’796
patent”). Having reviewed the claims, specification, prosecution history, and having considered
the parties’ arguments and the applicable law, the Court issues this Claim Construction Order.
I.
BACKGROUND
a. PROCEDURAL HISTORY
On January 27, 2015, the Court held a claim construction hearing to construe various
terms disputed by the parties. Before an order issued, Nintendo moved to stay the case on the
institution of inter partes review (“IPR”) of the six Asserted Patents. The case was stayed on
May 18, 2015 [ECF No. 91].
On April 28, 2016, the PTAB issued its Final Written Decisions in the IPRs, invalidating
the asserted claims of five of iLife’s patents. The ’796 patent was upheld by the PTAB as valid.
Nintendo of America, Inc. v. iLife Technologies, Inc., IPR2015-00109, Paper 40 (PTAB Apr. 28,
2016). iLife has not appealed the decisions invalidating other asserted claims and seeks to
proceed on the ’796 patent, the only remaining live patent. On June 29, 2016, Nintendo appealed
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the PTAB’s decision to uphold the ’796 patent to the Federal Circuit, but no decision has yet
issued.
This Court lifted the stay on July 11, 2016. During the course of the stay and the IPR
proceedings, the parties presented new arguments that could impact the construction of disputed
terms that had previously been considered by the Court in the January 27, 2015, Claim
Construction Hearing. The parties also asserted that new information arising from the IPRs
required the construction of two additional terms as to which no constructions had been urged at
the January 2015 hearing. On August 11, 2016, the Court ordered a second Markman hearing
and directed the parties to provide supplemental briefing on the additional terms.
b. BACKGROUND OF THE ’796 PATENT
The ’796 patent generally discloses systems and methods for evaluating movement or
activity of a body relative to an environment. The system is capable of analyzing both body
movement and position over time, to determine if the movement of the body is “acceptable or
unacceptable,” which the patent describes as being within or beyond “tolerance.” The initial
commercial product was a fall detection device intended for use by elderly patients.
The ’796 patent states that prior art methods fail to discern normal, acceptable, or
unacceptable changes in levels of body activity. ’796 Patent at 1:53–58. The ’796 specification
acknowledges that “accelerometers that measure both static and dynamic acceleration are
known,” but states that “their primary use has heretofore been substantially confined to
applications directed to measuring one or the other, but not both.” Id. at 2:1–4. The
specification distinguishes between “static acceleration, or gravity,” which is “a gauge of
position,” versus “dynamic acceleration (i.e., vibration, body movement, and the like).” Id. at
1:65–2:1. The system described in the ’796 patent includes a sensor associated with the body
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that operates to repeatedly sense dynamic and static accelerative phenomena of the body. Id. at
2:53–55. The sensor “senses one or more absolute values, changes in value, or some
combination of the same” and may be “a plural-axis sensor” that “generates an output signal to
the processor indicative of measurements of both dynamic and static acceleration of the body in
plural axes.” Id. at 2:64–3:5, 5:46–52. The processor “generates state indicia relative the
environment of interest, and determines whether the evaluated body movement is within
tolerance in the context of that environment.” Id. at 9:48–51. The specification of the ’796
patent states that “‘tolerance’ would . . . be very different for a monitored body of an elderly
person . . . , a toddler, a box in a freight car, a container of combustible gas, etc.” Id. at 9:51–54.
The relevant, disputed claims are provided below:
Claim 1)
A system within a communications device capable of evaluating movement of a body relative to
an environment, said system comprising:
a sensor, associable with said body, that senses dynamic and static accelerative
phenomena of said body, and
a processor, associated with said sensor, that processes said sensed dynamic and static
accelerative phenomena as a function of at least one accelerative event characteristic to thereby
determine whether said evaluated body movement is within environmental tolerance
wherein said processor generates tolerance indicia in response to said determination; and
wherein said communication device transmits said tolerance indicia.
Claim 2)
The system as claimed in claim 1 wherein said communications device comprises one of:
a cordless telephone, a cellular telephone and a personal digital assistant.
Claim 3)
The system as claimed in claim 1 wherein said communications device comprises one of:
a hand held computer, a laptop computer and a wireless Internet access device.
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Claim 4)
The system claimed in claim 1 wherein said communications device transmits an alarm
signal when said processor determines that an evaluated body movement signifies an
occurrence of a potentially dangerous event.
Claim 7)
The system as claimed in claim 4 wherein said communications device transmits
said alarm signal through one of: a wired network and a wireless network.
Claim 8)
The method as claimed in claim 4 wherein said communications device transmits
said alarm signal through a portion of the Internet.
Claim 9)
The system as claimed in claim 1 wherein said communications device transmits said
tolerance indicia to a monitoring controller.
Claim 10)
A method for operating a system within a communications device, wherein said system is
capable of evaluating movement of a body relative to an environment, wherein said system
comprises a sensor, associable with said body, that senses dynamic and static accelerative
phenomena of said body, and
a processor, associated with said sensor, that processes said sensed dynamic and static
accelerative phenomena as a function of at least one accelerative event characteristic to
thereby determine whether said evaluated body movement is within environmental
tolerance, wherein said method comprises the steps of:
generating tolerance indicia in said processor in response to said determination of
whether said evaluated body movement is within said environmental tolerance; and
transmitting said tolerance indicia through said communications device.
Claim 11)
The method as claimed in claim 10 wherein said communications device comprises one
of: a cordless telephone, a cellular telephone and a personal digital assistant.
Claim 12)
The method as claimed in claim 10 wherein said communications device comprises one
of: a hand held computer, a laptop computer and a wireless Internet access device.
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Claim 13)
The method as claimed in claim 10 wherein said communications device comprises one
of: a hand held computer, a laptop computer and a wireless Internet access device.
Claim 16)
The method as claimed in claim 13 further comprising the step of: transmitting
said alarm signal from said communications device through one of: a wired
network and a wireless network.
Claim 17)
The method as claimed in claim 13 further comprising the step of: transmitting
said alarm signal from said communications device through a portion of the
Internet.
Claim 18)
The method as claimed in claim 10 wherein said communications device comprises one
of: a hand held computer, a laptop computer and a wireless Internet access device.
Claim 19)
The method as claimed in claim 10 wherein said communications device comprises one
of: a hand held computer, a laptop computer and a wireless Internet access device.
Claim 20)
The method as claimed in claim 10 wherein said communications device comprises one
of: a hand held computer, a laptop computer and a wireless Internet access device.
II.
APPLICABLE LAW
The construction of disputed claims is a question of law for the court. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 971–72 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996).
“Ultimately, the interpretation to be given a term can only be determined and confirmed with a
full understanding of what the inventors actually invented and intended to envelop with the
claim.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (citations
omitted). Accordingly, a proper construction “stays true to the claim language and most
naturally aligns with the patent’s description of the invention.” Id. (citations omitted).
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“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.’” Id. at 1303 (quoting Innova/Pure Water,
Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). Courts first
“look to the words of the claims themselves . . . to define the scope of the patented invention.”
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (citation omitted).
The claim terms are “generally given their ordinary and customary meaning;” however, “a
patentee may choose to be his own lexicographer and use terms in a manner other than their
ordinary meaning, as long as the special definition of the term is clearly stated in the patent
specification or file history.” Id. (citation omitted). The “ordinary and customary meaning” of
the terms in a claim is “the meaning that the term[s] would have to a person of ordinary skill in
the art in question at the time of the invention.” Phillips, 415 F.3d at 1312–13.
When the meaning of a term to a person of ordinary skill in the art is not apparent, a court
is required to consult other sources, including “the words of the claims themselves, the remainder
of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific
principles, the meaning of technical terms, and the state of the art.” Id. at 1314 (citations
omitted). A court must consider the context in which the term is used in an asserted claim or
related claims in the patent, being mindful that “the person of ordinary skill in the art is deemed
to read the claim term not only in the context of the particular claim in which the disputed term
appears, but in the context of the entire patent, including the specification.” Id. at 1313. The
specification is “always highly relevant to the claim construction analysis” and is “the single best
guide to the meaning of a disputed term.” Id. at 1315 (quoting Vitronics, 90 F.3d at 1582). For
example, should the specification reveal that a claim term has been given a special definition by
the patentee that is different from the ordinary meaning of the term, the inventor’s lexicography
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is controlling. Id. at 1316 (citation omitted). Furthermore, if the specification reveals an
intentional disclaimer or disavowal of claim scope by the patentee, the claim scope dictated by
the specification is controlling. Id. (citation omitted).
If in evidence, a court should also consider the prosecution history, including prior art
and the record of proceedings before the Patent and Trademark Office (PTO). Id. at 1317 (citing
Markman, 52 F.3d at 980). For claim construction purposes, the prosecution history is
considered to be less reliable than the specification, if only because the prosecution history
merely illustrates an ongoing negotiation between the patentee and the PTO, and not necessarily
the final product of that negotiation. Id.
Finally, in construing claims, a court may consult extrinsic evidence, including “expert
and inventor testimony, dictionaries, and learned treatises.” Id. (citing Markman, 52 F.3d at
980). Technical dictionaries may assist a court in “‘better understand[ing] the underlying
technology’ and the way in which one of skill in the art might use the claim terms.” Id. (quoting
Vitronics, 90 F.3d at 1584 n.6). Expert testimony may also be helpful to “provide background on
the technology at issue, to explain how an invention works, to ensure that the court's
understanding of the technical aspects of the patent is consistent with that of a person of skill in
the art, or to establish that a particular term in the patent or the prior art has a particular meaning
in the pertinent field.” Id. (citations omitted).
Although extrinsic evidence may “shed useful light on the relevant art,” it is considered
“less significant than the intrinsic record.” Id. (quoting C.R. Bard, Inc. v. U.S. Surgical Corp.,
388 F.3d 858, 862 (Fed. Cir. 2004)). More simply, “extrinsic evidence may be useful to the
court, but it is unlikely to result in a reliable interpretation of patent claim scope unless
considered in the context of the intrinsic evidence.” Id. at 1319. Accordingly, “a court should
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discount any expert testimony ‘that is clearly at odds with the claim construction mandated by
the claims themselves, the written description, and the prosecution history, in other words, with
the written record of the patent.’” Id. at 1318 (quoting Key Pharm. v. Hercon Labs. Corp., 161
F.3d 709, 716 (Fed. Cir. 1998)).
Patent claims can be construed by the PTAB during inter partes review. District courts
have differed in how they approach these PTAB construction decisions. The PTAB’s claim
construction rules differ slightly from those applied in district court; during an IPR, the claim
terms in an unexpired patent are interpreted according to their broadest reasonable construction,
in light of the specification of the patent in which they appear. 37 C.F.R. § 42(b) (2015); Office
Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); In re Cuozzo Speed
Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015), aff’d sub nom. Cuozzo Speed Techs.,
LLC v. Lee, 136 S. Ct. 2131 (2016).
Some courts consider PTAB decisions similarly to how they evaluate claim construction
decisions from other districts or judges, and give “reasoned deference” to PTAB’s constructions.
E.g., Contentguard Holdings, Inc. v. Amazon.com, Inc., No. 2:13-cv-1112, 2015 WL 8073722, at
*11 (E.D. Tex. Dec. 4, 2015) (“On balance, Plaintiff has failed to justify departing from the
PTAB’s construction, which is entitled to ‘reasoned deference.’”); see also Maurice Mitchell
Innovations, L.P. v. Intel Corp., No. 2:04-cv-450, 2006 WL 1751779, at *4 (E.D. Tex. June 21,
2006) (stating a district court’s earlier construction of claim limitations is entitled “to reasoned
deference under the broad principals of stare decisis and the goals articulated by the Supreme
Court in Markman, even though stare decisis may not be applicable per se”).
Other courts look to a PTAB decision only for guidance or comfort in reaching claim
construction decisions. Memory Integrity, LLC v. Intel Corp., No. 3:15-cv-00262, 2016 WL
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1122718, at *19 n.9 (D. Or. Mar. 2, 2016) (“PTAB decisions may at least provide a district court
with guidance. . . . This Court uses the PTAB decision on this issue not for guidance, but for
comfort.”); Evolutionary Intelligence, LLC v. Sprint Nextel Corp., No. C–13–04513, 2014 WL
4802426, at *4 (N.D. Cal. Sept. 26, 2014) (“While the PTAB's constructions will not be binding
on this court, the IPR will inform this court's ultimate reasoning.”). Others have suggested that
the PTAB’s claim construction decisions are intrinsic evidence of the claim’s meaning as part of
the patent’s prosecution history. E.g., Anglefix, LLC v. Wright Med. Tech., Inc., No. 2:13-cv02407, 2015 WL 9581865, at *7 (W.D. Tenn. Dec. 30, 2015) (noting that “[a] patentee's
statements during reexamination can be considered during claim construction” and that “IPR and
post-grant review have effectively replaced inter partes reexamination procedures”); Fairfield
Indus., Inv. V. Wireless Seismic, Inc., No. 4:14–CV–2972, 2015 WL 1034275, at *5 (S.D. Tex.
Mar. 10, 2015) (“The prosecution history of the patents-in-suit also bolsters Fairfield's
construction. . . . Although [the] PTAB applies a different construction standard than the district
courts do, its [IPR] claim construction analysis serves as further intrinsic evidence that Fairfield's
proposed construction is appropriate.”). However, some courts have treated PTAB claim
construction decisions as extrinsic evidence, to which the district court “owes no deference.”
Depuy Orthopaedics, Inc. v. Orthopaedic Hosp., No. 3:12-CV-299, 2016 WL 96164, at *5 (N.D.
Ind. Jan. 8, 2016) (“Extrinsic evidence may include a PTAB decision regarding IPR, but the
court ‘owes no deference to the PTAB's claim construction done as part of an inter partes
review.’”).
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III.
CONSTRUCTION OF AGREED TERMS
Claim Term / Phrase
Body
Environment
Accelerative Phenomena /
Accelerative Events
Associable /
associable with /
associable with said body /
associable with a sensor /
associated with said sensor /
Processor / Controller
Sensor
Tolerance Indicia
Accelerative Event Characteristic
Agreed Construction
any organic or inorganic object whose movement or
position may suitably be evaluated relative to its
environment
the conditions and the influences that determine the
behavior of the physical system in which the body is
located
occurrences of change in velocity of the body (or
acceleration), whether in magnitude, direction or both
to include, be included within, interconnect with, contain,
be contained within, connect to or with, couple to or with,
be communicable with, cooperate with, interleave,
juxtapose, be proximate to, be bound to or with, have,
have a property of, or the like
any device, system or part thereof that controls at least one
operation, such a device may be implemented in hardware,
firmware or software, or some suitable combination of at
least two of the same
a device that senses one or more absolute values, changes
in value, or some combination of the same, of at least the
sensed accelerative phenomena
information indicating whether evaluated body movement
is within environmental tolerance
Plain and ordinary meaning
[subject to express definition of “accelerative event”]
These agreed terms are taken from the initial briefing filed in preparation for the 2015
Markman hearing. The 2015 briefs also contained additional agreed terms that do not appear in
the ’796 patent, which is the only remaining patent at issue, and therefore are not included in this
table. In view of the parties’ agreement on the proper construction of each of the foregoing
terms, the Court hereby ADOPTS AND APPROVES the parties’ agreed constructions.
IV.
CONSTRUCTION OF DISPUTED TERMS
The parties dispute the meaning and scope of the terms “communication[s] device,”
“evaluating movement of a body relative to an environment,” “processes said sensed dynamic
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and static accelerative phenomena as a function of at least one accelerative event characteristic to
thereby determine whether said evaluated body movement is within environmental tolerance,”
“dynamic and static accelerative phenomena,” and “within environmental tolerance.”
a. “Communication[s] device”
Disputed Term
iLife’s Proposed
Construction
Nintendo’s Proposed
Construction
Court’s Construction
“Communication[s]
device”
One or more associated
components capable of
transmission of
information using a
wired or wireless
network
An existing device that
allows for interpersonal
communication
including at least
“cellular telephones,
personal digital
assistants, hand held
computers, laptops,
computers, wireless
Internet access devices,
or other similar types of
communications
equipment”
One device or one or
more associated
components acting
together capable of
transmission of
information using a
wired or wireless
network
Claims 1–4, 7–13,
16–20
i. The Parties’ Arguments
At the first Markman hearing in 2015, this term was not disputed and neither party
provided briefing on the proper construction. However, the IPR proceedings raised issues
relating to the scope of this term, and the parties requested an opportunity to argue for the correct
construction. PTAB ordered additional briefing on the construction of communication device
because the parties disputed whether the devices were required to engage in two-way
communication. PTAB eventually construed the term to mean that two-way communication was
not necessary.
The specification provides a definition of the contested term as follows:
The term “communication device” is defined broadly to include, without limitation,
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cellular telephones, personal digital assistants, hand held computers, laptops,
computers, wireless Internet access devices, and other similar types of
communications equipment.
’796 Patent, 2:46–50.
iLife maintains that “communication device” is a broad term, covering a “multicomponent device, including a device in which the sensors and processor are not located within
the same housing and are associated wirelessly.” ECF No. 113 at 2. iLife relies on the
specification’s definition in support of its broad definition, in particular the qualification that the
term is not limited to the examples provided in the definition. In support of the inclusion of
language permitting wireless and wired communication, iLife points to where the patent
describes systems in which components are “distributed”—meaning “the processor and sensor
are not co-located but rather associated wirelessly,” such as claim 3’s reference to a “wireless
Internet access device.” Furthermore, iLife maintains that two-way or interpersonal
communication is not required, alleging that the claims only describe devices that transmit
information, not receive it. The patent only describes devices that communicate with other
devices, and thus, iLife argues, “interpersonal” is an inappropriate adjective to include in the
construction. For support, iLife points to the claim construction of “communication device” in
the IPR, where the PTAB rejected Nintendo’s argument that the term excluded radio frequency
transmitters and included only devices with two-way communication. ECF No. 113 at 2–3.
Nintendo’s proposed construction incorporates the definition provided in the ’796
patent’s specification, and requires that a “communications device” include at least the types of
consumer electronic devices there described. In support of this construction, Nintendo argues (1)
the specification refers to a “communication device” as including the types identified in the
proposed construction; (2) all the communication devices identified in the patent are existing
devices that allow for interpersonal communication; (3) iLife’s proposed construction that
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includes mere component parts as opposed to fully functional devices is nonsensical in the
context of statements made in the specification, such as “[t]he general use of communication
devices has increased greatly over the last few years,” ’796 Patent at 2:18–19, and “[i]t would be
very useful to have a communications device that is capable of evaluating movement of a body,”
’796 Patent at 2:25–17; and (4) statements made by the inventor of the ’796 patent, Edward
Massman, show that a communication device is an existing device that allows for interpersonal
communication, and not merely a component. Massman submitted a declaration in the IPR
proceeding explaining why he was an inventor on the ’796 patent, but not the related ’481 patent,
which does not disclose a communication device. After the ’481 patent application was
submitted, Massman explains, he and the other inventors conceived of additional applications of
the invention, “including incorporating the invention within a cellphone,” and that “[l]ater
patents describe and claim such embodiments.” This declaration, Nintendo maintains, makes
clear that the communication device described in the ’796 patent is not merely a component, but
instead consists of an existing device such as a cell phone. ECF No. 115 at 11–13.
Nintendo further maintains that iLife’s construction is flawed because it does not require
two-way communication, and virtually any electronic device that could send information over a
wire would qualify as a communication device. Instead, Nintendo maintains, the plain and
ordinary meaning of “communication device” includes a device capable of both sending and
receiving messages. Nintendo points to language of the claims in refuting iLife’s proposed
construction: the claim language requires that the sensor and processor of the claimed invention
be “within a communications device,” and that if “communications device” includes mere
components, as proposed by iLife, the “within” language would be read out. See, e.g., ’796
Patent at 2:47–49.
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ii. Analysis
Nintendo’s proposed construction is unpersuasive. Nintendo’s construction originates in
the language of the specification, which defines the term. Generally, “[t]he patent’s specification
is the ‘single best guide to the meaning of a disputed term.’” Phillips, 415 F.3d at 1315 (quoting
Vitronics, 90 F.3d at 1582). When an inventor defines a term in the specification, “the inventor’s
lexicography governs.” Id. at 1316; see also, e.g., Kinik Co. v. Int’l Trade Comm’n, 362 F.3d
1359, 1365 (Fed. Cir. 2004) (“The words of patent claims have the meaning and scope with
which they are used in the specification and the prosecution history.”). Although the Court may
not “import limitations from the written description into the claims,” it is bound to construe the
terms as they are defined in the specification. Phillips, 415 F.3d at 1323.
Neither party disputes the definition in the specification. However, in its proposed
construction, Nintendo narrows this definition so as to require that a communication device be
“existing” and allow for “interpersonal communication.” Nintendo justifies the inclusion of
“interpersonal communication” by arguing that iLife’s proposed construction is too broad, in that
it would expand “communications device” beyond its plain and ordinary meaning. The language
of the claims, however, does not support the requirement that the invention be capable of both
sending and receiving information. Considering the express language of independent claims 1
and 10, claim 1 recites a “system within a communications device capable of evaluating
movement of a body relative to an environment . . . wherein said communication device
transmits said tolerance indicia,” and claim 10 recites a “method for operating a system within a
communications device . . . wherein said method comprises the steps of . . . transmitting said
tolerance indicia through said communications device.” ’796 Patent at 13:45–61, 14:19–36. It
thus appears that claims 1 and 10 only require that the “communications device” transmit
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tolerance indicia, and does not require two-way capability. Nintendo may argue that the devices
identified in the patent appear to be devices that allow for interpersonal communication, but it
would be improper to read an implied limitation from the specification into the claim language.
SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
Nintendo’s argument that “communications devices” comprise only “existing devices”
and cannot consist of component parts is unsupported by the intrinsic evidence. The qualifiers
“broadly,” “without limitation,” and “other similar types of communications equipment” in the
specification’s definition indicate that the patent was not intended to limit a communication
device to the particular list of examples provided in the definition, or even to “existing” devices.
See ’796 Patent at 2:45–50. Nintendo never satisfactorily explains why it chooses to introduce
“existing” into the specification’s definition, particularly as the word existing appears nowhere in
the patent and introduces its own ambiguities. Furthermore, Nintendo’s reliance on Massman’s
declaration submitted during the IPR proceeding is unconvincing. Although Massman’s
statements during the IPR may be considered for prosecution disclaimer, they do not rise to the
level of “unambiguous disavowals” so as to be binding on the patentee. Grober v. Mako Prods.,
686 F.3d 1335, 1341 (Fed. Cir. 2012).
Although Nintendo’s proposed construction is unconvincing, iLife’s proposal is not
without faults. iLife urges the Court to adopt a construction that includes the phrase “one or
more associated components,” which perplexingly permits the existence of one associated
component.
With its proposal, iLife seeks a construction broad enough to cover both multicomponent devices and a preferred embodiment in the patent. The independent claims of the
’796 patent require a communications device to contain a system that comprises a sensor and a
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processor:
A system within a communications device . . . , said system comprising: a
sensor, . . . and a processor, . . . wherein said processor generates tolerance
indicia . . . and wherein said communication device transmits said tolerance
indicia.
’796 Patent at 13:47–50.
The dependent claims in the ’796 patent refer to a communication device as being a
cordless telephone, a cellular telephone, a personal digital assistant, a hand held computer, a
laptop computer, or a wireless Internet access device. However, a preferred embodiment of the
’796 patent describes how the sensor and processor, which are key parts of the invention, are
“not co-located, but rather associated wirelessly.” ’796 Patent at 7:28–30. Thus, the construction
of “communication device” must be broad enough to cover this preferred embodiment, hence
iLife’s urging for a construction that permits for a communication device to be one component
(as in the cellular telephones, handheld computers, etc.), but also an embodiment where the
sensor and processor components are merely “associated.”
The Court agrees with iLife that the construction of “communications device” must be
broad enough to cover this preferred embodiment. However, it declines to adopt a
grammatically incorrect phrase that likely introduces error or confusion. Accordingly, the Court
defines “communication device” to mean “one device or one or more associated components
acting together capable of transmission of information using a wired or wireless network.”
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b. “Evaluating movement of a body relative to an environment”
Disputed Term
iLife’s Proposed
Construction
Nintendo’s Proposed
Construction
Court’s Construction
“Evaluating
movement of a body
relative to an
environment”
plain and ordinary
meaning
Evaluating movement of
a body relative to the
conditions and the
influences of the
physical system in
which the body is
located
plain and ordinary
meaning
see the agreed term
“environment”
Claims 1 and 10
see the agreed term
“environment”
“Environment” is expressly defined in the specification to mean “the conditions and the
influences that determine the behavior of the physical system in which the body is located.”
’796 Patent at 2:43–45. Nintendo’s proposed construction merely incorporates the definition of
“environment” into the claim term, while removing the words “that determine the behavior.”
The Court declines to construe this term. Here, the patentee has acted as the
lexicographer by defining “environment” in the specification, and accordingly, this lexicography
is controlling. Phillips, 415 F.3d at 1316.
c.
“Processes said sensed dynamic and static accelerative phenomena as a
function of at least one accelerative event characteristic to thereby determine
whether said evaluated body movement is within environmental tolerance”
Disputed Term
“Processes said sensed
dynamic and static
accelerative phenomena
as a function of at least
one accelerative event
characteristic to thereby
determine whether said
evaluated body
movement is within
environmental tolerance”
Claims 1 and 10
iLife’s Proposed
Construction
Plain and ordinary
meaning
(subject to the
separately
construed terms
“dynamic and static
accelerative
phenomena” and
“within
environmental
tolerance”)
Nintendo’s Proposed
Construction
Using both static
acceleration and
dynamic acceleration
separately as a function
of at least one
accelerative event
characteristic to
determine whether said
evaluated body
movement is within
environmental tolerance
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Court’s Construction
Plain and ordinary
meaning
(subject to the separately
construed terms
“dynamic and static
accelerative
phenomena” and
“within environmental
tolerance”)
i. The Parties’ Arguments
iLife argues that, once “within environmental tolerance” and “dynamic and static
accelerative phenomena” are construed, the “processing” element of this claim requires no
additional construction, and plain meaning should apply. In iLife’s words, the claim language
“does not contain words requiring any special type of processing” and accordingly the plain and
ordinary meaning of “process” is sufficient to understand the claim. ECF No. 113 at 5. iLife
points to the specification for support, in which a preferred embodiment is described using the
same form as iLife’s proposed construction: an accelerative phenomena can be determined by
processing dynamic and static acceleration and using specific values for each acceleration so as
to determine whether it is within tolerance. E.g., ’796 Patent at 7:62–67, 8:1–67, 9:1–36. iLife
also points to the results of the IPR proceeding for support, in that iLife successfully argued the
same position urged here, that no construction is necessary.
During the supplementary claim construction hearing before the Court, Nintendo
admitted that, for the most part, it does not dispute iLife’s proposed construction, and agrees that
“both” and “using” can be omitted from the final construction. Instead, Nintendo seeks only to
emphasize that the “processing” element in this claim must depend on both dynamic acceleration
and static acceleration separately, and in this vein, proposes to add the word “separately” to the
construction, to demonstrate this requirement. Nintendo argues that iLife’s statements during the
’796 IPR proceeding rose to a disclaimer, and narrowed the scope of the claim to require
processing of dynamic acceleration separately from static acceleration. The alleged disclaimer
occurred in the IPR when iLife was distinguishing the iLife patents from a prior art reference,
Unuma. Nintendo points to numerous statements by iLife’s during the IPR that, it argues,
emphasize a requirement that dynamic acceleration is processed separately from static
acceleration.
18
iLife maintains that its statements during the IPR were merely to distinguish Unuma from
the ’796 patent, and do not constitute a disclaimer of patent scope. Specifically, iLife claims
that, during the IPR, it argued that Unuma processes acceleration with a frequency matching
technique that excludes static acceleration, and thus Unuma differs from the ’796 patent because
it processed only dynamic acceleration and not both static and dynamic acceleration.
Accordingly, iLife contends, its statements during the IPR did not constitute disclaimer—or, at
the very least, are ambiguous as to whether disclaimer occurred—and therefore neither limit nor
impose additional requirements on the “processing” term.
ii. Analysis
The Court concludes that iLife has the better argument. The “process . . .” term at issue
contains two phrases that are being separately construed in this Order, as well two agreed terms,
“accelerative event characteristic” and “body.” iLife’s argument is, more or less, that once you
factor in the other disputed terms and the agreed term, the only word left in this term that could
be construed is “processes,” which should be given its plain and ordinary meaning. In other
words, the disputed term describes an invention that “processes A as a function of B to determine
whether the evaluated movement is C,” where A, B, and C are all defined separately. In this
context, the Court agrees with iLife that “processes” does not appear to require additional
explanation or description, or deviation from its typical, ordinary meaning. Courts first “look to
the words of the claims themselves . . . to define the scope of the patented invention.” Vitronics
Corp., 90 F.3d at 1582. “The words of a claim are generally given their ordinary and customary
meaning as understood by a person of ordinary skill in the art when read in the context of the
specification and prosecution history.” Thorner v. Sony Comp. Entm’t Am. LLC, 669 F.3d 1362,
1365 (Fed. Cir. 2012). Here, the specification does not define “processes” nor give any
indication that any particular type of processing, beyond the ordinary meaning of the term, is
19
required.
During the supplemental claim construction hearing, Nintendo conceded that the plain
and ordinary meaning of the disputed term is likely sufficient. Nintendo maintains, however,
that iLife committed prosecution disclaimer during the inter partes examination, and that the
insertion of the word “separately” into the construction is required to reflect the disclaimer.
Statements made during a post-grant reexamination proceeding can be considered later by
district courts, and a claim’s scope may be narrowed under the doctrine of prosecution
disclaimer. Grober, 686 F.3d at 1341. “Statements made during reexamination can also be
considered in accordance with this doctrine.” Id.; Pragmatus AV, LLC v. Yahoo! Inc., No. C–
13–1176, 2014 WL 1922081, at *4 (N.D. Cal. May 13, 2014) (“Ultimately, what is important
here is not what the PTAB said about the claim term ‘addressing information’ but rather what
[patent owner] said about the term in the proceedings before the PTAB and whether any
disavowal or estoppel argument may be asserted based thereon.”). Disclaimer can arise when the
patentee “clearly characteriz[es] the invention in a way to try to overcome rejections based on
prior art.” Comp. Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2008).
However, the doctrine of prosecution disclaimer only applies to unambiguous
disavowals. Grober, 686 F.3d at 1341; N. Telecom Ltd. v. Samsung Elec. Co., 215 F.3d 1281,
1293–95 (Fed. Cir. 2000). Where the alleged disavowal is ambiguous or amenable to multiple
reasonable interpretations, there is no prosecution disclaimer. Avid Tech., Inc. v. Harmonic, Inc.,
812 F.3d 1040, 1045 (Fed. Cir. 2016). Prosecution disclaimer does not apply, for example, if the
applicant simply describes features of the prior art and does not distinguish the claimed invention
based on those features. See Eolas Techs., Inc. v. Microsoft Corp., 399 F.3d 1325, 1337 (Fed.
Cir. 2005). “As applied to a disclaimer analysis, ‘the prosecution history can often inform the
20
meaning of the claim language by demonstrating how the inventor understood the invention.’”
Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1063 (Fed. Cir. 2016) (quoting Phillips, 415 F.3d at
1317). “Any explanation, elaboration, or qualification presented by the inventor during patent
examination is relevant, for the role of claim construction is to ‘capture the scope of the actual
invention’ that is disclosed, described, and patented.” Fenner Invs., Ltd. v. Cellco P’ship, 778
F.3d 1320, 1323 (Fed. Cir. 2015)
In making its argument for iLife’s alleged prosecution disclaimer, Nintendo relies on
statements made by iLife’s counsel Michael Wilson during a hearing before a panel of three
administrative patent judges for combined IPR proceedings on the six Asserted Patents (“IPR
hearing”). See Nintendo of America, Inc. v. iLife Techs., IPR 2015-00109, Paper 39 (PTAB Jan.
27, 2016). The IPR hearing addressed whether two prior art references—Yashushi and Unuma—
rendered the claims in the six Asserted Patents obvious. Nintendo contends that during the IPR
hearing, while distinguishing the Asserted Patents from Unuma, iLife made the disclaimer that
the claims of the Asserted Patents require evaluation of static acceleration and dynamic
acceleration separately. Specifically, Nintendo maintains that iLife clearly argued “the claims
require splitting the two components of the acceleration into DC and AC, looking for a
magnitude on the dynamic component and looking for a position change on the static
component,” as shown in a demonstrative exhibit provided by iLife at the IPR hearing. ECF No.
118 at 4. For support, Nintendo references various portions of the oral hearing where, it
contends, iLife distinguished its patents by emphasizing that the Asserted Patents require
dynamic and static acceleration to be processed separately—i.e., to require demodulation,
splitting, or filtering of the acceleration signal into dynamic and static components—rather than
merely requiring that both types of acceleration be processed.
21
The Court is unpersuaded by Nintendo’s argument for disclaimer. In context, iLife’s
statements support the distinction that iLife maintains it made to the PTAB: that Unuma
processes only dynamic acceleration and the Asserted Patents—including the ’796 patent—
process both dynamic and static acceleration. Although the statements Nintendo refers to,
standing alone, could feasibly suggest that iLife relied on separation of the acceleration signal
into dynamic and static components to distinguish its patents from Unuma, in context iLife’s
statements are far from the unambiguous disavowal of patent scope required to commit
prosecution disclaimer. As will be discussed in greater detail below, because there is more than
one reasonable interpretation of iLife’s statements, the Court declines to find prosecution
disclaimer. See Avid. Techs., 812 F.3d at 1045.
Much of the testimony given during the IPR hearing concerned whether Unuma taught
sensing and processing of both dynamic and static acceleration to determine movement and
orientation, or just dynamic acceleration. Generally, an accelerometer produces a raw waveform,
which changes shape in amplitude and frequency depending on the movement of the
accelerometer. In Unuma, the raw waveform is processed using a Fourier transformation from
the time domain to the frequency domain, which creates acceleration patterns that are normalized
and compared to known patterns to determine what movement has occurred. Unuma states,
among other things, that “the gradient of a human body, that is, the state of the upright/leaning
posture of the human body, can be recognized from an average value of variations in acceleration
observed by an acceleration sensor.” E.P. App. No. 0,816,986, at 25 (Filed Feb. 2, 1997)
(“Unuma”). Nintendo’s position before the PTAB was that the “leaning posture,” or body
orientation, referred to in Unuma is another way of describing static acceleration, and therefore
taking “the average value of variations of the acceleration” impliedly processes static
22
acceleration. IPR 2015-00109, Paper 39, at 26:8–27:13. iLife, by contrast, argued that when the
transformed waveform is normalized for comparison purposes in Unuma, data relating to static
acceleration is eliminated, and therefore there processing of static acceleration is not taught by
Unuma. Id. at 51:1–18. Furthermore, iLife argued that processing of total average acceleration
does not mean processing static acceleration. Id. at 52:15–22.
This background information regarding the IPR hearing provides necessary context for
determining whether iLife disavowed the ’796 patent’s claim scope. In the following exchange,
for instance, Mr. Wilson, iLife’s attorney, distinguishes the Asserted Patents from Unuma on the
grounds that iLife believes total average acceleration does not include static acceleration, and
accordingly, Unuma does not process static acceleration at all, not that Unuma does not process
static acceleration separately:
MR. WILSON: As I understand the question, you are asking whether I agree that
the individual elements are actually disclosed at different places in Unuma?
JUDGE JUNG: Yes.
MR. WILSON: I do not agree with that. Unuma does not teach separating out and
processing static acceleration. What it teaches is you can use total average
acceleration in certain limited circumstances to judge body position. That's not
static acceleration as required by the patents.
Id. at 48:14–24.
Mr. Wilson made a similar point at other times during the IPR hearing. In the following
excerpt, Mr. Wilson discusses Unuma’s use of total average acceleration as a means of
determining body posture or orientation. As discussed, iLife’s position before the PTAB was
that Unuma’s method of processing accelerometer waveform data removed static acceleration.
Mr. Wilson urged that the iLife patents do not use averaging to determine body position, but
rather consider both dynamic and static acceleration (referred to as AC and DC components,
respectively):
23
MR. WILSON: So Unuma is telling us total average will give you some good
information if you are resting and total average might give you information if you
assume that there is no other movement going on.
Well, that's not very useful when you are back looking at page 16 on putting
together a series of different motions, many of which involve dynamic acceleration;
falling, hitting an object, walking, and then lying on the ground.
So, yes, it mentions using total average acceleration. It clearly says that it is
limited. And I think this distinguishes it from iLife where we're going to separately
filter out, as opposed to averaging, we're going to filter out the AC components and
look at what is the current direct component, what is the current static acceleration,
so we know what the body's position is at a particular given time.
Id. at 71:1–16.
Mr. Wilson’s quoted statements go to the same contention he made throughout the IPR
hearing: that the Asserted Patents differ from Unuma’s use of average acceleration because they
consider both dynamic and static acceleration, rather than just a total average acceleration:
MR WILSON: In conclusion, we believe that the evidence of record demonstrates
that Mr. Lehrman and his co-inventors were, in fact, the first people to invent a
method and system and device that processed both static and dynamic, separately
processed static and dynamic as a function of magnitude and orientation to make
acceptability determinations in that combination of elements, both with respect to
Unuma and with respect to Yasushi.
Id. at 172:6–22.
MR WILSON: So there are two glaring gaps in the Petitioner's case with respect to
Unuma. First, Unuma never discusses separate processing of static. It only
discusses using total average acceleration in a very limited context and says it is
not useful for complex types of motions where there is non-cyclic activities. It is
basically useful if somebody is at rest or you make an assumption of no other types
of motion.
So static, actual static is missing. And then, second, even if the Board concludes
that the reference to total average acceleration is static acceleration, the record, the
evidentiary record is completely devoid of any evidence explaining why a person
skilled in the art would combine these different elements that exist in different
embodiments, different applications, different limitations, why would they
combine those together to now, since both static and dynamic, process both static
and dynamic as a function of magnitude and orientation, and to use both of those
to then make an acceptability determination.
Id. at 85:4–21.
24
The Court determines Mr. Wilson’s references in the preceding excerpts to processing
static acceleration separately was an attempt to articulate that the Asserted Patents do not teach
consideration of static acceleration as being wrapped up and part of total average acceleration,
but instead as its own, individual piece of data to be processed in conjunction with dynamic
acceleration. Under this reading of Mr. Wilson’s statements, which this Court finds to be
reasonable, there is no disclaimer of scope as argued by Nintendo.
Nintendo maintains that iLife made additional statements disclaiming scope during the
IPR hearing. In the following exchange, Mr. Wilson initially appears to describe the Asserted
Patents as requiring that the dynamic and static components of acceleration be split or separated
somehow, to process the signal magnitude and position; however, on a question from Judge
Jung, Mr. Wilson clarified that no specific type of processing or separating was required, and
that the only thing required by the Asserted Patents was that both dynamic and static acceleration
be considered for determining magnitude and position:
MR. WILSON: Slide 87 contains kind of a pictorial diagram showing what we
believe the patent discloses in the specification and also what the claims require.
There is a sensing of the waveform, as Your Honor pointed out. That waveform is
just showing the sensing, it is not showing processing.
Then we split the two components of the acceleration into DC and AC. We're
going to look for a magnitude on the alternating current or the dynamic. We're going
to look for a position change on the separated DC. And we're going to use both of
those in the acceptability determination.
So let's talk about Unuma. Here is a summary . . . of the pattern matching in
Unuma. One thing is the main embodiment . . . discusses identifying particular
motions by frequency analysis. Static acceleration has no frequency. It doesn't
change.
And so as we will see as we go through the Unuma disclosures, when you do a
frequency analysis by necessity, you are not evaluating static acceleration.
The second thing we will talk about in Unuma is the fact that it is normalized,
which strips out magnitude or direction. And then I am going to talk about a specific
embodiment discussed in Unuma whereby it uses a series of individually-identified
motions to make a decision on a collapsed state. And I am going to again show how
that is based purely on dynamic motions, not static.
25
JUDGE JUNG: Mr. Wilson, before you go on with Unuma, back to the challenged
patents, it seems like you are trying to read into the word “process” in the claim
limitations that the processing requires a demodulation, a filtering, a separating out
of AC and DC signals, and then figuring out the magnitude and the direction. What
is the reason to read in all those features into the word “process”?
MR. WILSON: I don't think that I am just reading all those features into the word
“process.” What I believe, based on the Board's interpretation of accelerative event
characteristic, the Board has decided that an accelerative event characteristic relates
to magnitude and direction.
So I am using the Board's adopted definition of accelerative event characteristic
to address the part about magnitude and/or direction, that the processing requires
looking at those issues.
So it is not so much the processing. I don't think that I'm using a narrow
construction of the word “processing.” What is important is that we have processing
that looks at magnitude and directional thresholds, and that that processing using
those thresholds is what makes the acceptability determination.
JUDGE JUNG: So we can apply the plain and ordinary definition of “processing”?
MR. WILSON: Yes, I believe so. So long as the processing uses those features of
acceleration and it is that processing using those acceleration features that is used
to make the determination on acceptability. Then I believe that satisfies the claim.
Id. at 54:4–56:11
Here, despite iLife’s clarification, Nintendo argues that iLife’s statement “[s]o long as the
processing uses those features of acceleration” refers “back to the statements iLife made just
moments earlier about the need for processing ‘the separate components of acceleration, AC and
DC.’” ECF No. 118 at 4. The Court is unconvinced that the transcript must be read this way;
it’s likely that by “those features of acceleration,” iLife was referring to dynamic and static
components generally, and not dynamic and static acceleration separately or demodulated. As
there is more than one reasonable reading of this statement, the Court will not find disclaimer.
See Avid. Techs., 812 F.3d at 1045.
Nintendo also points to the following exchange as proof of disclaimer, where iLife
argued that a preferred embodiment described in Unuma relied entirely on dynamic
26
acceleration—specifically, frequency analysis that iLife argued does not include static
acceleration—to identify when someone wearing the invention collapses:
MR. WILSON: The first embodiment [in Unuma] was we’re going to identify
individual motions through frequency analysis. Then . . . it tells us one of the things
we couldn’t do using the method before is identify a more complicated activity,
such as collapsing on the ground. . . . However, it makes clear it is using the same
method, which . . . is based entirely on frequency analysis.
...
When you are falling, you are seeing acceleration due to dynamic acceleration.
When you hit an obstacle, the acceleration sensed is from a dynamic -- it is from
motion or vibration.
So there is nothing there indicating that they are using static. They do mention
lying still, but, again, . . . what they have told us is we're going to identify lying on
the ground based on the frequency components and the frequency components
necessarily are based on dynamic acceleration.
...
JUDGE BONILLA: I'm sorry, can you explain how it would know a distinction
between standing still and lying still on the ground? I mean, it talks about that as
two distinct things that it recognizes. How would it do that?
MR. WILSON: It doesn't explain. It does not explain. And, as a matter of fact, I
believe that the [sic] Unuma acknowledges that they may be difficult to distinguish
between. That's why it talks about adding location. That's why it talks about having
animation and other features.
But there is no discussion in Unuma that says we are going to separately process
static acceleration in these embodiments, . . . no teaching that says, by the way,
we're going to distinguish standing still and lying down by looking at total average
acceleration or processing static acceleration. It just doesn't exist.
. . . [O]ne thing you learn from Unuma is that Unuma loved frequency analysis.
He believed all motions could be identified by breaking down frequency and
looking at frequency components.
. . . [T]hat is his invention. Frequency necessarily is dynamic acceleration.
And he believed that you could do that, you could tell, look at lying still, standing
erect, looking only at frequency, looking only at dynamic. I don't think he is correct.
I think that iLife is an improvement that says no, we're also going to process static
together with that to make decisions. And Unuma doesn't teach that.
JUDGE BONILLA: So let me ask you, this part on page 16 talks about looking at
motion patterns. By doing that, they are figuring out that somebody is walking or
standing still and maybe they fall and then they lie still on the ground.
And your position is at that point they are always just measuring frequency,
they are always only measuring dynamic, but by looking at that stuff when they are
looking at a pattern, are they also discerning what would be the static also and then
27
processing that to make a determination about whether there is a collapse, for
example? Is that one way to look at it?
MR. WILSON: Well, I think using hindsight, we could now, based on the
teachings in iLife, realize that you could add to what is discussed on 6 and 16, you
could add a separate processing of the separate static component to aid in that
decision-making but that's not what Unuma teaches.
IPR 2015-00109, Paper 39, at 63:15–67:18.
Here, Mr. Wilson distinguished the Asserted Patents by emphasizing that, in its analysis
of what happens when someone collapses on the ground, Unuma lacks consideration of static
acceleration. In the context of the whole exchange, his statements go to the fact that iLife
believes Unuma does not consider static acceleration at all when it processes total average
acceleration and performs its frequency analysis, and not Nintendo’s contention that the Asserted
Patents require consideration of static acceleration separately.
In conclusion, the Court declines to find disclaimer on the basis of iLife’s statements
before the PTAB. Mr. Wilson’s statements do not rise to the level of unambiguous disavowal
required for disclaimer of patent scope. See Grober, 686 F.3d at 1341. Furthermore, the Court
notes that there are multiple times in the record of the oral hearing where iLife distinguishes the
Asserted Patents from Unuma without suggesting that dynamic and static acceleration must be
processed separately. See, e.g., IPR 2015-00109, Paper 39, at 49:14–18; 50:7–10; 50:18–22;
52:10–22; 54:21–55:6. The Court finds that it is reasonable to interpret the alleged disavowals
quoted previously as being consistent with Mr. Wilson’s other statements during the oral
hearing, and accordingly there is not prosecution disclaimer. Avid Tech., 812 F.3d at 1045.
Finally, other references Nintendo cites to in the prosecution history and the IPR proceeding do
not explain why “separately” is required. The references all appear to quote iLife in
acknowledging the use of both static and dynamic acceleration in determining acceptability, but
28
do not seem to indicate that the inventors limited themselves to the two types separately.1
For the foregoing reasons, therefore, the Court construes “processes said sensed dynamic
and static accelerative phenomena as a function of at least one accelerative event characteristic to
thereby determine whether said evaluated body movement is within environmental tolerance” to
have its plain and ordinary meaning, subject to the separately construed terms “dynamic and
static accelerative phenomena” and “within environmental tolerance.”
d. “Dynamic and static accelerative phenomena”
Disputed Term
iLife’s Proposed
Construction
Nintendo’s Proposed
Construction
“Dynamic and static
accelerative
phenomena”
occurrences of change in
velocity (or
acceleration) indicating
vibration or movement
of the body and position
of the body relative to
earth using gravity as a
gauge of position
Accelerative phenomena occurrences of change in
experienced as a result
velocity (or
of motion and of gravity acceleration) indicating
vibration or movement
“body” retains its agreed of the body and position
construction
of the body relative to
earth using gravity as a
gauge of position
Claims 1 and 10
Court’s Construction
iLife argues that its proposed construction for “dynamic and static accelerative
phenomena” is correct because it incorporates express definitions from the specification. ECF
No. 51 at 17. Nintendo argues that the definitions of “static acceleration” and “dynamic
acceleration” provided in the specification are inaccurate with regard to how the terms are
actually used in the specification. Nintendo wishes to simplify the definitions to emphasize that
static acceleration is acceleration due to gravity, and that dynamic acceleration is acceleration
1
E.g. IPR2015-00109, Paper 39, at 54:4–15 (“[W]e’re going to use both [static and dynamic acceleration]
in the acceptability determination.”); IPR2015-00109, Patent Owner Response, Paper 14, at 37
(“Although [prior art reference] recognizes the difference between static and dynamic acceleration, its
simplified approach fails to teach or suggest that both static and dynamic acceleration needs to be
processed . . . .”); id. at 20 (“The inventors saw the need . . . for systems that processed and analyzed both
dynamic and static acceleration.”).
29
due to movement.
The Court finds that the specification expressly defines the terms at issue in this claim,
and accordingly that definition controls. The specification may reveal a special definition given
to a claim term by the patentee that differs from the meaning it would otherwise possess.
Phillips, 415 F.3d at 1317. However, absent lexicography or disavowal, the Court does not
depart from the plain meaning of the claims. Thorner, 669 F.3d at 1365. To act as a
lexicographer, a patentee must “clearly set forth a definition of the disputed claim term” and
“clearly express an intent to redefine the term.” Luminara Worldwide, LLC v. Liown Elecs. Co.,
814 F.3d 1343, 1353 (Fed. Cir. 2016) (citing Thorner, 669 F.3d at 1365). The standards for
finding lexicography are “exacting.” Id. (citing GE Lighting Sols., LLC v. AgiLight, Inc., 750
F.3d 1304, 1309 (Fed. Cir. 2014).
The specification language of the ’796 patent provides several definitions that apply to
this claim term. For instance, “the phrases ‘accelerative events’ or ‘accelerative phenomena’ are
defined as occurrences of change in velocity of the body (or acceleration), whether in magnitude,
direction or both.” ’796 Patent at 5:20–24. Dynamic acceleration is described in the following
way: “dynamic acceleration (i.e., vibration, body movement, and the like).” Id. at 1:66–67.
“[S]tatic acceleration, or gravity, is not the same as a lack of dynamic acceleration . . . , but is
instead a gauge of position.” Id. at 1:65–2:1. Additionally, the specification distinguishes “static
acceleration” from “static acceleration of the body”: “static acceleration of the body (i.e., the
position of a body relative to earth within broad limits).” Id. at 1:63–65.
The specification language indicates that the patentee is defining the terms as they will be
used in the patent. This conclusion is supported by the distinction between “static acceleration”
and “static acceleration of the body,” which shows that the terms are being used in a particular
30
and meaningful way. Based on the foregoing evidence, the Court construes “dynamic and static
accelerative phenomena” to mean “occurrences of change in velocity (or acceleration) indicating
vibration or movement of the body and position of the body relative to earth using gravity as a
gauge of position.”
e.
“Within environmental tolerance”
Disputed Term
iLife’s Proposed
Construction
Nintendo’s Proposed
Construction
Court’s Construction
“Within
environmental
tolerance” / “within
said environmental
tolerance”
Acceptable based on
criteria including a
specified value given the
environment and
application for which
body movement is being
evaluated
Not so abnormal as to be
damaging, destructive,
crippling, harmful,
injurious or otherwise
alarming or, possibly,
distressing to the body
relative to the physical
system in which the
body is located
Acceptable based on
criteria including a
specified value given the
environment for which
body movement is being
evaluated
Claims 1 and 10
In the alternative, if
iLife’s proposed
construction is adopted,
it should be modified to
read:
Acceptable based upon
criteria to determine
whether such
movements are
abnormal, including a
specified value given the
environment and
application for which
body movement is being
evaluated
i. The Parties’ Arguments
iLife maintains that “environmental tolerance” is not limited to sensing and identifying
only harmful or abnormal events. iLife argues that the claims were drafted to cover “movement
31
or activity of a body” broadly, and that the phrase “within environmental tolerance” was
intentionally used to avoid limiting the claims to detection of damaging or destructive events
such as falls. They assert there is nothing in the claims to suggest that the invention is limited to
the detection of damaging events; although some of the dependent claims discuss transmission of
an “alarm signal” or a “potentially dangerous event,” the independent and other asserted claims
do not. ’796 Patent, claims. 4–6, 8, 13–17. Furthermore, iLife argues that the specification
indicates that the disclosed fall detection system is merely an example of one embodiment of the
invention:
For example, when a communications device detects a body movement that
signifies the occurrence of a potentially dangerous event (e.g., a fall), the
communication device can immediately send an alarm to call for assistance.
’796 Patent at 2:27–32.
Instead of indicating an abnormal or dangerous event, iLife argues, “within
environmental tolerance” indicates a binary determination of whether a measurement is
acceptable or unacceptable, or inside or outside of a normal range. In support, iLife points to the
specification, which discloses that conventional body monitoring devices were unable to “discern
‘normal,’ or acceptable, changes in levels of body activity.” ’796 Patent at 1:53–54. Thus, iLife
asserts, the invention disclosed in the ’796 patent is able to discern between acceptable or
unacceptable changes in levels of body activity—i.e., those within environmental tolerance, but
not necessarily harmful or dangerous. In other words, iLife is arguing that events within
environmental tolerance are simply those that fall inside a range of acceptability based on a
particular environmental context.
Furthermore, iLife argues that the patent explains that the determination of environmental
tolerance must be based on criteria that include a specified value. In support, iLife points to
different embodiments of the invention in which the criteria indicates numerical values, such as
32
embodiments that may include values for thresholds, values for change in body position, and
values for time. E.g. ’796 Patent at 3:38, 9:18–9, 12:11. Furthermore, “tolerance,” iLife asserts,
is used according to its plain and ordinary meaning of utilizing a specific value; for support, iLife
cites to various dictionaries.2
In support of its proposed construction, iLife points to its consistency in arguing for the
same construction of “within environmental tolerance” in each proceeding involving its related
iLife patents. In contrast, iLife argues, Nintendo has taken “drastically inconsistent positions
depending on their desired objective in that particular forum.”3 iLife asks that the Court give
“reasoned deference” to Judge Conti’s construction in iLife Techs. Inc. v. Body Media, Inc., 90 F.
Supp. 3d 415 (W.D. Pa. 2015), in which Judge Conti adopted iLife’s proposed construction for
“within environmental tolerance” in related patents,4 and to the three-judge PTAB panel’s partial
adoption of iLife’s proposed construction in the ’796 patent IPR proceeding. Nintendo of
America, Inc. v. iLife Techs., Inc., IPR2015-00109, Paper 26, at 9–13 (PTAB Apr. 28, 2016).
In the initial round of claim construction briefing, Nintendo urged “within environmental
tolerance” to be construed as “not so abnormal as to be damaging, destructive, crippling,
harmful, injurious or otherwise alarming or, possibly, distressing to the body relative to the
2
iLife cites definitions from the McGraw-Hill Dictionary of Scientific and Technical Terms, at 2159 (“A
permissible deviation from a specified value”); Modern Dictionary of Electronics, at 787 (“A permissible
deviation from a specified value”; “[a] specified allowance for error from a desired or measured
quantity.”); and Webster’s New Universal Unabridged Dictionary, at 1992 (“[T]he permissible range of
variation in a dimension of an object.”). ECF No. 51 at 17.
3
iLife asserts that Nintendo has asserted four different constructions of the same claim: one in the
proceeding in front of Judge Conti (which is also the construction proposed originally at the 2015
hearing), one in front of PTAB, the proposed alternative construction offered in the supplemental
briefing, and apparently a fourth exchanged between the parties that concerned “alarm criteria.” ECF
No. 119 at 3.
4
Body Media, 90 F. Supp. 3d at 429 (“Body Media asserts that all intolerable movements or events must
cause harm, damage, or alarm to the body. iLife contends that intolerable events are simply those that fall
outside a range of acceptability, based upon the context of a particular environment. The record does not
support the narrow construction that Body Media proposes, and does support iLife's proposed
construction.” (citations omitted)).
33
physical system in which the body is located.” In support, Nintendo points to the specification of
the ’796 patent, which describes movement that is “so abnormal to be beyond tolerance, for
instance, to be damaging, destructive, crippling, harmful, injurious, or otherwise alarming or,
possibly, distressing to the body.” ’796 Patent at 2:11–13. It follows, Nintendo asserts, that
behavior within tolerance is behavior that is not “damaging, destructive, crippling, harmful,
injurious, or otherwise alarming or, possibly, distressing to the body.” The specification defines
“environment” to mean “the conditions and influences that determine the behavior of the
physical system in which the body is located.” Id. at 2:43–45. Nintendo combines these two
phrases to get to its proposed construction of “within environmental tolerance.” In support,
Nintendo points to other references in the patent where movements are evaluated for tolerance
after it is determined that they are abnormal; specifically, Nintendo quotes the Summary of the
Invention and several portions of the Description of the Invention.5 Nintendo also points to
several dictionaries that support the conclusion that tolerance is related to capacity to withstand
destruction or harm.6
Although Nintendo still contends that its originally proposed construction is correct, in its
most recent supplemental claim construction briefing Nintendo also argues for a slight
5
For support, Nintendo references the Summary of the Invention and other ideal embodiments of other
related patents. ’796 Patent at 3:7–11 (“The processor is preferably programmed to distinguish between
normal and abnormal accelerative events, and, when an abnormal event is identified, to indicate whether
the abnormal event is tolerable, or within tolerance.”); id. 6:33–40 (“[T]he sensed accelerative phenomena
of the body may subsequently be processed to distinguish a variety of accelerative phenomena and,
ultimately, to selectively act based on the distinctions, as is described in detail hereafter to determine
whether the evaluated body movement is normal or abnormal, and, if abnormal, whether the same is
within tolerance.”); id. 12:13–20 (“Exemplary processor 47 is programmed to distinguish between normal
and abnormal accelerative events (e.g., walking, sitting, lying down, etc. versus tripping, falling down,
etc.), and, when an abnormal event is identified, indicates whether the abnormal event is tolerable, or
within tolerance. Processor 47 may also suitably be programmed to distinguish other physical
characteristics, including temperature, pressure, force, sound, light, relative position (including lying
down), and the like.”).
6
“The capacity to endure hardship or pain.” See, e.g., American Heritage College Dictionary, Third
Edition (1997) at 1423; Webster’s II New College Dictionary (1999) at 1159.
34
modification of iLife’s proposed construction if it is adopted. ECF No. 115 at 9. Nintendo
contends that “application” is an undefined and superfluous addition to the claim language
“body” and “environment,” which have agreed constructions, and should be excised. Nintendo
further asks that if iLife’s proposed construction is adopted, it be modified to clarify that
“acceptable based on criteria” requires “criteria to determine whether such movements are
abnormal.” It argues that “environmental tolerance” denotes more than just any arbitrary
threshold, because the specification indicates that the “invention is not simply directed to
measuring whether acceleration in a particular axis passed a certain threshold (which the prior art
already did), but instead seeks to detect movements that are out of ‘tolerance’ or in some way
‘abnormal.’” Id. at 11. Nintendo urges that this distinction should be captured in the
construction of the term, despite also arguing that “[Nintendo] believes that Judge Conti’s
construction already captures the concept that ‘acceptable’ must distinguish between normal and
abnormal movements.” Id. at 10.
ii. Analysis
The Court begins its analysis of “within environmental tolerance” with its belief that
Judge Conti’s previous construction of this disputed term is entitled to reasoned deference. Prior
to being invalidated during inter partes review, the ’481 patent was a patent-in-suit in this case.
The ’796 patent was a continuation in part of the ’481 patent and contains similar language and
claims.7 As a general rule, claim language used in one patent of a family is presumed to have the
same meaning when used in another patent of the same family, absent clear evidence to the
contrary. NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005). A prior
7
See ’796 Patent at 1:6–10 (“This application is a continuation of prior U.S. Application Ser. No.
09/727,974 filed on Nov. 30, 2000, now issued as U.S. Pat. No. 6,501,386 on Dec. 31, 2002, which is a
continuation-in-part of U.S. Application Ser. No. 09/396,991 filed Sep. 15, 1999, now U.S. Pat. No.
6,307,481.”).
35
construction involving the same patents-in-suit is entitled to “reasoned deference under the broad
principles of stare decisis and the goals articulated in Markman.” Blue Calypso, Inc. v. Groupon,
Inc., 93 F. Supp. 3d 575, 583 (E.D. Tex. 2015). Prior constructions are entitled to “substantial
weight” and should not be departed from “absent a strong reason for doing so.” TQP
Development, LLC v. Intuit Inc., 2:12-cv-180, 2014 WL 2810016, at *6 (E.D. Tex. June 20,
2014); see also Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 839–40 (2015)
(“[A]ttorneys will no doubt bring cases construing the same claim to the attention of the trial
judge; those prior cases will sometimes be binding because of issue preclusion, and sometimes
will serve as persuasive authority.” (citation omitted)). Additionally, there are significant
similarities between the two cases that justify reasoned deference to Judge Conti’s construction.
The Body Media defendants in the earlier case proposed a practically identical construction for
“within environmental tolerance” as Nintendo does in the case currently before the Court.8 Like
Nintendo, Body Media cited various parts of the patent that indicated associated abnormality or
dangerousness with the concept of tolerance, but like the ’796 patent at issue in this case, all of
the references relied on were in the specification, not the claims. Body Media, 90 F. Supp. 3d at
428. Body Media similarly relied on a single passage in the specification of the ’481 patent
(which also appears in the ’796 patent) that provides the basis for the “damaging, destructive,
crippling . . .” language in Nintendo’s proposed construction.
With regard to its first proposed construction, Nintendo has not provided a strong reason
for departing from Judge Conti’s construction. The Court is generally bound to construe the
8
Compare Body Media, 90 F. Supp. 3d at 425 (“[N]ot so abnormal so as to be damaging, crippling,
harmful, injurious or otherwise alarming or, possibly, distressing to the body.”), with ECF No. 115 at 9
(“Not so abnormal as to be damaging, destructive, crippling, harmful, injurious or otherwise alarming or,
possibly, distressing to the body relative to the physical system in which the body is located.”). Note that
the court in Body Media did not consider Nintendo’s alternative construction proposed in its supplemental
briefing.
36
terms as they are defined in the specification, but the Court may not “import limitations from the
written description into the claims.” Phillips, 415 F.3d at 1323. A particular written
embodiment appearing in the specification or written description “may not be read into a claim
when the claim language is broader than the embodiment.” SuperGuide Corp., 358 F.3d at 875.
In this case, there is no dispute that the specification of the ’796 patent includes the “damaging,
destructive, crippling, harmful, injurious, or otherwise alarming or, possibly, distressing to the
body” language proposed by Nintendo, but this language is not present in the claims themselves.
Additionally, the language surrounding descriptions of movements being evaluated for tolerance
after it is determined that they are abnormal indicate that they are examples; the specification
states that “[f]or example . . . a communications device detects a body movement that signifies
the occurrence of a potentially dangerous event (e.g., a fall).” ’796 Patent at 2:27–30. Nintendo
cites to various embodiments of the invention in support of its proposed language. However, the
claim language is broader than that urged by Nintendo; the claims reference a “potentially
dangerous event” in only two dependent claims, and the independent claims—the only claims
that contain the contested phrase “within environmental tolerance”—contain no such limitation.
See id. claims 6, 13. Accordingly, the limitations of the particular written embodiments pointed
to by Nintendo cannot by read into the claim, because the claim language is broader than the
embodiment. Furthermore, under the doctrine of claim differentiation there is a presumption that
“an independent claim should not be construed as requiring a limitation added by a dependent
claim.” Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1381 (Fed. Cir. 2006).
Claim differentiation thus supports concluding that the “potentially dangerous event” required by
dependent claims 6 and 13 are not required by the independent claims 1 and 10 where “within
environmental tolerance” appears.
37
With regards to its alternative proposed construction, Nintendo requests that iLife’s
proposed construction be altered, first to modify “acceptable based on criteria” by adding “to
determine whether such movements are abnormal”, and second, to remove the phrase “and
application.” These proposed changes will each be addressed in turn.
1. “Acceptable Based on Criteria To Determine Whether Such
Movements Are Abnormal”
Nintendo argues that the invention detects movements that are out of “tolerance” or are in
some way “abnormal,” and does not merely detect when a movement passes a certain threshold;
accordingly, it wants to add language to clarify that “acceptable” distinguishes between normal
and abnormal events. Nintendo points to various parts of the specification for support, which
reference embodiments of the invention that evaluate body movement as being normal or
abnormal. E.g. ’796 Patent at 3:6–11 (“The processor is preferably programmed to distinguish
between normal and abnormal accelerative events . . .”). During the claim construction hearing,
Nintendo argued that the word “acceptable,” standing alone, lacks sufficient mooring to the
patent, and thus, relying on the Federal Circuit’s decision in Curtiss-Wright, the construction
requires additional clarification using abnormality language from the specification.
In response, iLife argues that “within environmental tolerance” does not incorporate an
abnormality determination, and that to do so would improperly incorporate limitations from the
specification into the claim terms. Specifically, iLife highlights how all references to normality
or abnormality in the specification are examples or preferred embodiments. In this regard, iLife
urges the Court to follow Judge Conti’s construction, in which iLife argues she considered and
rejected the argument for abnormality.
The Court finds iLife’s argument to be more persuasive. iLife’s broad characterization of
the “within environmental tolerance” as being dependent on criteria specified by the environment
38
—rather than notions of normal or abnormal movements—is supported by the claim language,
which is broad; for example, claims 1 and 10 describes a processor that senses an “accelerative
event characteristic to thereby determine whether said evaluated body movement is within
environmental tolerance,” and does not include any limitations on “environmental tolerance” or
what sort of criteria is used to evaluate environmental tolerance. The only instances of a
limitation on the type of system being evaluated or the criteria informing the system are in
dependent claims 4 and 13, which describe a variation of the patent in which the evaluated body
movement signifies a potentially dangerous event. Therefore, Nintendo’s suggested change
would create an additional limitation on the independent claims that the criteria for evaluating
whether a movement is within environmental tolerance must be based on use of the words
“abnormal” and “normal” discussed in the specification, which is improper.
The ’796 patent clearly contemplates that tolerance determinations do not always invoke
considerations of normality, but rely instead on varying potential criteria that will change given
the environment for which the body movement is being evaluated. “Acceptable,” in this regard,
could be exchanged for any number of other adjectives signifying that a movement satisfies
some criteria in whatever environment it is being evaluated.9 Judge Conti made a similar
conclusion in her analysis of this term in the ’481 patent, in which she noted that “[s]imply put,
and from a layman’s perspective, tolerable and acceptable are synonyms; as are permissible and
allowable.” Body Media, 90 F. Supp. 3d at 431.
9
This characterization is supported by the specification, which uses “acceptable” and “normal” as
interchangeable synonyms in the context of a fall detection environment:
These [prior art] methods however fail to discern normal, or acceptable, changes in levels
of body activity. Stated another way, the foregoing fall detection methodologies provide
no position change analysis and, therefore, cannot determine whether a change in position,
once attained, is acceptable or unacceptable.
’796 Patent at 1:53–58.
39
Thus, while in certain embodiments of the invention, a movement may be evaluated for
whether it is normal or abnormal, it is not the case that every embodiment will consider whether
a movement is normal. For instance, the specification of the ’796 patent describes applications
of the invention to cargo monitoring and tactical maneuver monitoring, and discloses that the
processor may be programmed to distinguish “other physical characteristics, including
temperature, pressure, force, sound, light, relative position, and the like.” ’796 Patent at 3:11–
25. Identical language appeared in the ’481 patent, leading Judge Conti to note that, in these
embodiments:
[I]ntolerance need not indicate that the “body,” i.e., the package or the soldier, has
been harmed. A package can tip over, which the shipper may not prefer, allow,
accept, or permit, but not be injured or in distress. Likewise, a particular level of
sound could be deemed unacceptable, but not harmful, as, for example, in a
classroom. The patent’s disclosure of these variant applications reflects that
intolerable events need not be harmful.
Body Media, 90 F. Supp. 3d at 430.
The Court finds that Judge Conti’s explanation is equally compelling in the context of
making abnormality determinations. A package can tip over, which the shipper may not prefer,
allow, accept, or permit, but not be abnormal in its movement. A particular level of sound in a
classroom may be considered unacceptable for daily lessons, but not necessarily be abnormal.
Accordingly, the Court declines to incorporate a normality determination into consideration of
environmental tolerance, and instead follows Judge Conti’s decision to use “acceptance” in
construing this term.
During the claim construction hearing, Nintendo relied on the Federal Circuit’s decision
in Curtiss-Wright for its argument that “acceptable” must be tethered to the specification by
incorporating an abnormality determination. However, the Court finds that Curtiss-Wright can
be distinguished from the current case. In Curtiss-Wright, the patent described a system for
40
removing solid coke from an oil drum, in a process generally known as de-heading. 438 F.3d at
1375. The patent’s specification described deficiencies in the prior art, specifically that the
patent was an improvement over conventional drums because it permitted de-heading to occur
without the removal of the entire drum head unit. Id. at 1378. The specification “associate[d]
the adjustability of the live loaded seat with that critical aspect of the invention.” Id. at 1379.
Specifically, “the patent stresse[d] that adjustment occurs during operation and without removal
of the head unit.” Id.
Under an apparent theory of claim differentiation, the district court in Curtiss-Wright
construed “adjustable” to mean that the live loaded seat could be changed in a manner “not
limited by any time, place, manner, or means of adjustment.” Id. at 1378 (internal quotation
marks removed). However, the Federal Circuit reversed, holding that the district court had
placed “too much emphasis on the ordinary meaning of ‘adjustable’ without adequate grounding
of that term within the context of the specification.” Id. The specification “consistently, and
without exception, describe[d] adjustment that occurs during the operation of the de-header
system,” and the trial court’s decision to construe “adjustable” according to plain and ordinary
meaning, “which includes a structure that requires dismantling of the [drum head] valve to
perform the adjustment, [found] no support in the overall context” of the patent’s specification.
Id. at 1379.
In the current case, the specification does not “consistently, and without exception”
describe environmental tolerance as depending on a determination of abnormality. Although
Nintendo is correct that the specification makes frequent reference to abnormal movements as
falling outside of environmental tolerance, it also refers to environmental tolerance indicia not
related to whether a movement is normal or abnormal. E.g., ’796 Patent at 3:32–44; 6:52–59;
41
9:47–54; 10:2–9. Accordingly, Curtiss-Wright does not control in this case.
2. “And Application”
Removing the phrase “and application” from the proposed construction, Nintendo
contends, prevents the introduction of language that is superfluous to the language of the claims.
iLife responds by arguing that the ’796 specification “makes clear that tolerance decisions are
environment and application specific.” ECF No. 119 at 4. However, during the claim
construction hearing, iLife conceded that inclusion of “and application” was not necessary for
inclusion.
When construing claim terms, the Court first looks to the plain language of the claims.
The word “application” does not appear in the patent’s claims. Instead, the disputed term
“within environmental tolerance” is used only in relation to the environment in which the body
movement is being evaluated—i.e., the “conditions and influences” that determine behavior.
The plain language of the claims does not directly support adding “and application” to the
proposed construction.
The specification does, however, refer to instances where the accelerative event criteria—
i.e., the criteria that is applied in tolerance determinations—is defined by the specific application
of a preferred embodiment, and not just the environment in which the body is located. E.g., ’796
Patent at 3:47–50 (“[I]n an assistance monitoring application, the sensor may repeatedly sense
dynamic and static acceleration of the body in the plural axes and generate output signals
indicative of the measurements.”); id. at 3:42–47 (“[The] processor is operable to process sensed
accelerative phenomena as a function of at least one accelerative event characteristic, and that
such characteristics will largely be defined by the specific application.”). In other words, some
preferred embodiments described in the specification support inclusion of “and application,”
42
because the accelerative event characteristics and criteria are defined by the application of the
preferred embodiment, and not just the environment.
However, there is also language that indicates that “environment” implies consideration
of the application for which the invention is being used, or even that the terms “environment”
and “application” are interchangeable. For instance, in an embodiment of the invention used for
assistance monitoring, the specification describes the environment as being an “assistance
monitoring environment.” Id. at 3:37–42 (“[T]he present invention broadly introduces
systems . . . that evaluate movement of a body relative to an environment, which in the abovegiven example is an assistance monitoring environment.”). Other parts of the specification
describe how the invention evaluates body movements relative to different environments, in
which the environment is different depending on the application for which it is being used. Id. at
3:15–21 (“It should be noted that the relevant environment may be statically or dynamically
represented. The sophistication of any such representation may be as complex or as
uncomplicated as needed by a given application (e.g., disability, injury, infirmity, relative
position, or other organic assistance monitoring; cargo or other transport monitoring; military,
paramilitary, or other tactical maneuver monitoring; etc.)”); id. at 8:25–30 (“[S]uitable alternate
embodiments of system 11 for evaluating movement of a body relative to different environments
may likewise be implemented in accordance with the principles hereof, such as for relative
position, other assistance monitoring, transparent monitoring, tactical maneuver monitoring
etc.”). In these examples, the environment appears to change depending on the application the
system is being used for, be it assistance monitoring, cargo or other transport monitoring, etc.
Thus, there is also support in the specification that the term “environment” with regards to
tolerance decisions broadly includes consideration of the application at issue.
43
The specification, therefore, appears to support both inclusion and exclusion of the term
“and application.” What is determinative in deciding this claim construction is whether
“environment and application” imposes an additional limitation such that the specific application
must be considered in every embodiment of the invention, or whether consideration of the
application is allowed but not mandatory. To impose an additional limitation would be
improper, because it would import a limitation from the written description into the claims,
which do not reference consideration of the application. See Phillips, 415 F.3d at 1323.
However, the patent’s specification clearly contemplates that decisions regarding tolerance will
depend on both the environment and the application, and “[c]laims must always be read in light
of the specification.” SimpleAir, Inc. v. Sony Ericsson Mobile Comms., 820 F.3d 419, 429 (Fed.
Cir. 2016) (citing Phillips, 415 F.3d at 1315). In adopting a construction that includes reference
to the invention’s application, Judge Conti followed this latter approach, explaining that “[t]he
’481 Patent explains that ‘environmental tolerance’ is a function of the application and the
environment and ‘would likely be very different for a monitored body of an elderly person with a
heart condition, a toddler, a box in a freight car, a container of combustible gas, etc.’” Body
Media, 90 F. Supp. 3d at 430.
Although Judge Conti’s decision is persuasive authority, the Court is not inclined to read
what it perceives to be an additional limitation from the specification into the claim terms. The
Court instead concludes that the term “environment” is broad enough to include consideration of
the specific application, and therefore adopts Nintendo’s suggested modification of iLife’s
proposed construction not to include “and application.” The patent states that “environment” is
“defined broadly as the conditions and the influences that determine the behavior of the physical
system in which the body is located.” ’796 Patent at 2:43–45. In the Court’s opinion, the
44
condition and influences of the environment would take into account the application being
considered. And, as discussed, the specification appears to support this conclusion.
Additionally, although the Court is not bound to follow or take guidance from the PTAB’s
decisions, the PTAB in the ’796 patent IPR proceeding adopted iLife’s proposed construction for
“within environmental tolerance,” but declined to incorporate “and application” into the final
construction. 2015IPR-00109, Paper 12, at 13.
For the foregoing reasons, the Court defines “within environmental tolerance” to mean
“acceptable based on criteria including a specified value given the environment for which body
movement is being evaluated.”
V.
CONCLUSION
For the foregoing reasons, the Court ADOPTS the claim constructions as set forth above.
The parties may not refer, directly or indirectly, to each other’s claim construction positions in
the presence of the jury. Likewise, the parties are ordered to refrain from mentioning in the
presence of the jury any portion of this opinion, other than the actual definitions adopted by the
Court.
SO ORDERED.
February 9, 2017.
_________________________________
BARBARA M. G. LYNN
CHIEF JUDGE
45
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