Emtel, Inc. v. LipidLabs, Inc. et al
Filing
173
MEMORANDUM AND OPINION entered: Simultaneous and simultaneously are construed to mean at the same time. No later than August 31, 2015, the parties must inform the court whether they agree to mediation and, if so, the anticipated timeline for mediating this dispute. The parties must also indicate whether they intend to file summary-judgment motions and, if so, propose a timeline for doing so. (Signed by Judge Lee H Rosenthal) Parties notified.(leddins, 4)
IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
EMTEL, INC.,
Plaintiff,
v.
LIPIDLABS, INC, et al.,
Defendants.
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CIVIL ACTION NO. H-07-1798
MEMORANDUM AND OPINION
This patent-infringement case involves videoconferencing technology that allows physicians
to provide medical advice to patients in other locations. Emtel’s U.S. Reissue Patent No. 42,288 (the
’288 Patent) claims a method and system for a physician to observe and consult with patients at
remote locations using a mobile cart equipped with a monitor and a remotely controlled video
camera. Emtel alleges that Specialists on Call (“SOC”) infringed this patent.1
After this suit was filed, the patent originally at issue was reissued as the ’288 Patent. The
’288 Patent was subject to an ex parte reexamination proceeding. The U.S. Patent and Trademark
Office (“PTO”) confirmed the patentability of the ’288 Patent in 2014. SOC argues that although
the parties stipulated before the reexamination that “simultaneous” and “simultaneously” meant “at
the same time,” these terms were narrowed during the reexamination proceedings.
The court held a Markman hearing on April 23, 2015, at which counsel presented argument
1
Emtel had also sued Lipidlabs, Inc., Doctors Telehealth Network, Inc., and Tele-Med Dox LLC,
but SOC is the only active defendant remaining. Doctors Telehealth and Tele-Med Dox defaulted. (Docket
Entry No. 114). Lipidlabs answered, (Docket Entry No. 12), but then did not respond to Emtel’s motion for
summary judgment, which the court granted, in part because of Lipidlab’s deemed admissions, (Docket Entry
No. 114).
1
in support of their competing constructions of these terms. (Docket Entry No. 171). The parties
have asked the court to construe “simultaneous” and “simultaneously” before other disputed terms.
The issue addressed in this Memorandum and Opinion is whether “simultaneous” and
“simultaneously” mean “at the same time,” as the parties originally agreed, or whether Emtel
narrowed the terms during the reexamination proceedings. Based on the parties’ claim-construction
briefing, the arguments of counsel, the record, and the applicable law, the court agrees with Emtel
that “simultaneous” and “simultaneously” mean “at the same time.”
The reasons for this ruling are explained below.
I.
Background
A.
Emtel’s ’288 Patent
The ’288 Patent claims a method and system for a physician to provide emergency medical
consultation to two or more patients at two or more remote locations. A “mobile emergency center
cart” with a video camera and a monitor is placed within a medical facility. The physician is based
at a central location and receives video images and sound of the remote patients “simultaneously.”
The physician can communicate with patients, control the video cameras remotely, and make
diagnoses or recommend treatments.
B.
Specialists on Call
SOC is a telemedicine company that provides patients across the country with access to
medical specialists. These specialists are available to consult with patients by telephone and
videoconference. SOC’s business is to support and facilitate patient access to medical diagnosis and
treatment by specialized physicians who would otherwise be unavailable to that patient. (Docket
Entry No. 99, Ex. 2, Joe Peterson Declaration at ¶¶ 5, 20).
2
SOC provides equipment to its specialist physicians at a central location, as well as in
subscribing hospitals or medical clinics. Patients at these hospitals or clinics and their treating
physicians use the equipment to communicate with the specialist, who is at a different location.
SOC uses commercially available off-the-shelf computer and videoconferencing equipment.
(Docket Entry No. 99, Ex. 4, David Gigas Declaration at ¶¶ 5, 8). The equipment has three main
elements: “hospital endpoint” equipment that is located at the hospital or clinic; “physician
endpoint” equipment that is at the same location as the SOC specialist; and a videocall server that
SOC maintains at its office. (Id. at ¶¶ 5–7).
When an SOC-subscribing hospital or clinic wants to speak to an SOC specialist, the hospital
or clinic telephones the SOC call center, which contacts the appropriate specialist on call. The
specialist in turn contacts the requesting hospital or clinic to gather information about the patient.
The specialist uses the videoconferencing equipment to examine the patient and communicate
questions and the diagnosis or treatment to the patient and the health-care professionals treating that
patient at the hospital or clinic.
C.
The Procedural and Factual Background
In 2007, Emtel filed this suit alleging that SOC and others infringed U.S. Patent No.
7,129,970 (the ’970 Patent). (Docket Entry No. 1). In 2008, this court ruled that SOC had not
infringed the ’970 Patent. (Docket Entry No. 58). This suit was stayed while Emtel sought
reissuance by the PTO. (Docket Entry Nos. 61, 62). When the proceedings ended, Emtel
surrendered the ’970 Patent, which the PTO reissued as the ’288 Patent in April 2011. (Docket
Entry Nos. 63, 64). The court lifted the stay and Emtel filed an amended complaint alleging that
SOC infringed the ’288 Patent. (Docket Entry Nos. 69, 86).
3
The ’970 Patent had 8 claims. The reissued ’288 Patent has 19 claims. (Docket Entry No.
163, Emtel Ex. 20, ’288 Patent). Claims 1 to 8 of the ’288 Patent are substantially the same as
the’970 Patent claims. (See id., col. 10, l. 57–col. 12, l. 54).2
The claims added in the ’288 Patent are system claims (Claims 9 to 14) and method claims
(Claims 15 to 19). These new claims are directed to a system and method of providing medicalconsultation services to two or more remote facilities, with a physician at a central location
simultaneously viewing video sent from the remote locations. All of the new claims require two or
more audio-video communications links between a central medical facility and two or more remote
facilities, so that a physician at the central facility can simultaneously watch the videos from the
remote locations. The ’288 Patent claims at issue are Claims 9 to 19.
In the Markman hearing held in February 2012, the parties argued the proposed constructions
of “geographically remote,” “video-conferencing communication link,” “station,” “said medical care
giver,” and “station.” (Docket Entry No. 114). The parties agreed that “simultaneous” and
“simultaneously” meant “at the same time.” (Id.).
The court denied SOC’s motion for summary judgment of noninfringement in October 2012,
finding that the record showed that SOC’s system was technologically capable of simultaneous
multiple-location, multiple-patient videoconferencing, and that some evidence showed that
simultaneous calls had occurred. (Docket Entry No. 131).
On November 26, 2012, after the Markman hearing but before the court construed the
2
Claims 4 to 8 are identical to the claims of the ’970 Patent. (Docket Entry No. 99, Ex. 1, col. 11,
l. 50–col. 12, l. 54). Independent Claim 1 was changed slightly in ways that do not affect this court’s rulings.
(Compare Docket Entry No. 58 at pp. 3–4, with Docket Entry No. 99, Ex. 1, col. 10, l. 57–col. 11, l. 38).
Claims 2 to 3 depend on Claim 1, but were not otherwise changed when reissued. (See Docket Entry No. 99,
Ex. 1, col. 11, ll. 39–49).
4
disputed claim terms, the PTO granted a request for ex parte reexamination of the ’288 Patent. That
request was filed by a defendant in another case in which Emtel claimed infringement of the reissued
Patent. (Docket Entry No. 135). The court stayed this case pending the PTO’s reexamination.
(Docket Entry No. 136, 140). The PTO initially rejected all of the claims as anticipated under 35
U.S.C. § 102(b) or as obvious under 35 U.S.C. § 103(a), in light of prior-art publications describing
telemedicine systems and videoconferencing technology. (Docket Entry No. 160, Exs. 3, 7). In
January 2014, on reconsideration, the PTO confirmed the patentability of all claims without
amendment. (Docket Entry No. 160, Ex. 9). The stay was lifted when the reexamination concluded.
The issue addressed in this Memorandum and Opinion is the proper claim construction of
“simultaneous” and “simultaneously.” The parties agreed before the reexamination that the terms
meant “at the same time.” SOC argues that Emtel disclaimed prior art during the reexamination
proceedings, narrowing the claims and the meaning of “simultaneous” and “simultaneously.”
(Docket Entry No. 160). SOC contends that the proper construction is that “images of at least two
patients are displayed on the same screen at the same time, in what is known as continuous presence
display and which is reminiscent of Hollywood Squares.” (Id. at p. 15). Emtel contends that the
reexamination proceedings did not change the parties’ agreed meaning of “simultaneous” and
“simultaneously” as “at the same time.” (Docket Entry Nos. 112, 163).
II.
The Applicable Legal Standard
The “‘claims of a patent define the invention to which the patentee is entitled the right to
exclude.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting
Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)).
“[T]he construction of a patent, including terms of art within its claim, is exclusively within the
5
province of the court.” Markman, 517 U.S. at 372. Claim terms are “‘generally given their ordinary
and customary meaning,’” which is “the meaning that the term 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 (quoting
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). A court is to read the
patent from the vantagepoint of a person with ordinary skill in the art at the time of the invention.
Phillips, 415 F.3d at 1313. That is a person who will “‘read the words used in the patent documents
with an understanding of their meaning in the field, and [has] knowledge of any special meaning and
usage in the field.’” Id. (quoting Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477
(Fed. Cir. 1998)); see also Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005)
(cautioning courts not to interpret claim terms “in a vacuum” (quotation omitted)).
When the words used in the context of the surrounding claim language make the ordinary
meaning readily apparent, claim construction “involves little more than the application of the widely
accepted meaning of commonly understood words.” Id. at 1314. The court looks first “to the words
of the claims themselves, both asserted and nonasserted, to define the scope of the patented
invention,” Vitronics, 90 F.3d at 1582, and construes the claim terms in the context of the
surrounding claim language. ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003)
(“[T]he context of the surrounding words of the claim also must be considered in determining the
ordinary and customary meaning of those terms.”); accord Lexion Medical, LLC v. Northgate
Techs., Inc., 641 F.3d 1352, 1356 (Fed. Cir. 2011).
If the meaning is unclear, the court reviews “the intrinsic evidence of record, i.e., the patent
itself, including the claims, the specification and, if in evidence, the prosecution history.” Vitronics,
90 F.3d at 1582; see also Am. Piledriving Equip., Inc. v. Geoquip, Inc., 637 F.3d 1324, 1331 (Fed.
6
Cir. 2011) (“[T]he role of a district court in construing claims is . . . to give meaning to the
limitations actually contained in the claims, informed by the written description, the prosecution
history if in evidence, and any relevant extrinsic evidence.”).
Courts review the “specification to determine whether the inventor has used any terms in a
manner inconsistent with their ordinary meaning.” Vitronics, 90 F.3d at 1582. The Federal Circuit
has repeatedly stated that “claims ‘must be read in view of the specification, of which they are a
part.’” Phillips, 415 F.3d at 1315 (quoting Markman, 52 F.3d 967, 979 (Fed. Cir. 1995)). The
specification, a “concordance for the claims,” id. (quoting Autogiro Co. of Am. v. United States, 384
F.2d 391, 397–98 (Ct. Cl. 1967)), is the “best source for understanding a technical term,” id.
(quoting Multiform Desiccants, 133 F.3d at 1478).3 “In other cases, the specification may reveal an
intentional disclaimer, or disavowal, of claim scope by the inventor.” Id. (citing Life Sys., Inc. v.
Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343–44 (Fed. Cir. 2001)); see also Thorner
v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (explaining that claim
construction may deviate from the ordinary and customary meaning of a disputed term only if (1)
a patentee sets out a definition and acts as his own lexicographer, or (2) the patentee disavows the
full scope of a claim term either in the specification or during prosecution).
“‘The construction that stays true to the claim language and most naturally aligns with the
patent’s description of the invention will be, in the end, the correct construction.’” Phillips, 415
F.3d at 1316 (quoting Renishaw PLC v. Marposs Società per Azioni, 158 F.3d, 1243, 1250 (Fed. Cir.
3
See also Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1360 (Fed. Cir.
2004) (“In most cases, the best source for discerning the proper context of claim terms is the patent
specification wherein the patent applicant describes the invention.”). When the specification “reveal[s] a
special definition given to a claim term by the patentee that differs from the meaning it would otherwise
possess. . . . the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)).
7
1998)). “There is a fine line between construing the claims in light of the specification and
improperly importing a limitation from the specification into the claims.” Retractable Techs., Inc.
v. Becton, Dickinson & Co., 653 F.3d 1296, 1305 (Fed. Cir. 2011). Courts must “capture the scope
of the actual invention, rather than strictly limit the scope of claims to disclosed embodiments or
allow the claim language to become divorced from what the specification conveys is the invention.”
Id.
“[A] court ‘should also consider the patent’s prosecution history, if it is in evidence.’”
Phillips, 415 F.3d at 1317 (quoting Markman, 52 F.3d at 980); see also Typhoon Touch Techs., Inc.
v. Dell, Inc., 659 F.3d 1376, 1381 (Fed. Cir. 2011) (“[T]he specification is the primary source for
determining what was invented and what is covered by the claims, elucidated if needed by the
prosecution history.”). The prosecution history “can often inform the meaning of the claim language
by demonstrating how the inventor understood the invention and whether the inventor limited the
invention in the course of prosecution, making the claim scope narrower than it would otherwise
be.” Id. (citing Vitronics, 90 F.3d at 1582–83). The prosecution history includes “all express
representations made by or on behalf of the applicant to the examiner to induce a patent grant,
or . . . to reissue a patent. . . . includ[ing] amendments to the claims and arguments made to convince
the examiner that the claimed invention meets the statutory requirements of novelty, utility, and
nonobviousness.” Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985); see
also Sanofi-Aventis Deutschland GmbH v. Genentech, Inc., 473 F. App’x 885, 888 (Fed. Cir. 2012)
(“We have held that an otherwise broadly defined term can be narrowed during prosecution through
arguments made to distinguish prior art.”) (citing Phillips, 415 F.3d at 1317 (“The prosecution
history . . . consists of the complete record of the proceedings before the PTO and includes the prior
8
art cited during the examination of the patent.”)).
“The doctrine of prosecution disclaimer is well established in Supreme Court precedent,
precluding patentees from recapturing through claim interpretation specific meanings disclaimed
during prosecution.” Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003); see
also SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1286 (Fed. Cir. 2005). The doctrine
applies even if the disclaimers were not necessary to make the invention patentable. See Uship
Intellectual Props., LLC v. United States, 714 F.3d 1311, 1315 (Fed. Cir. 2013) (“We find no
support for [the] proposition that prosecution disclaimer applies only when applicants attempt to
overcome a claim rejection. Our cases broadly state that an applicant’s statements to the PTO
characterizing its invention may give rise to a prosecution disclaimer.”); cf. Southwall Techs., Inc.
v. Cardinal IG Co., 54 F.3d 1570, 1583 (Fed. Cir. 1995) (“Estoppel extends beyond the basis of
patentability. . . . Clear assertions made during prosecution in support of patentability, whether or
not actually required to secure allowance of the claim, may also create an estoppel.”) (citing Tex.
Instruments, Inc. v. U.S. Int’l Trade Comm’n, 988 F.2d 1165 (Fed. Cir. 1993)).4 The doctrine does
4
“There is a clear line of distinction between using the contents of the prosecution history to reach
an understanding about disputed claim language and the doctrine of prosecution history estoppel which
‘estops’ or limits later expansion of the protection accorded by the claim to the patent owner under the
doctrine of equivalents when the claims have been purposefully amended or distinguished over relevant prior
art to give up scope. . . . [T]he two uses of the prosecution history must not be confused.” Biodex Corp. v.
Loredan Biomedical, Inc., 946 F.2d 850, 862 (Fed. Cir. 1991) (citations and internal quotation marks
omitted); see also Ballard Med. Prods. v. Allegiance Healthcare Corp., 268 F.3d 1352, 1358–59 (Fed. Cir.
2001) (distinguishing the two); Spectrum Int’l Corp. v. Sterilite Corp., 164 F.3d 1372, 1378 n.2 (Fed. Cir.
1998) (same). “Just as prosecution history estoppel may act to estop an equivalence argument under the
doctrine of equivalents, positions taken before the PTO may bar an inconsistent position on claim
construction.” Ballard Med. Prods., 268 F.3d at 1359 (quoting Cybor Corp. v. FAS Techs., Inc., 138 F.3d
1448, 1457 (Fed. Cir. 1998)) (alteration omitted). When the accused infringer argues that the prosecution
history results in a narrowing of a claim’s scope, there is no difference, and the Federal Circuit has refused
to reverse based on references to estoppel. See id. at 1359 (“Because the substance of the district court’s
analysis was sound, we disregard the fact that the court used the term ‘prosecution history estoppel’ in an
unconventional manner.”); Biodex Corp., 946 F.2d at 862–63 (observing that “Biodex is technically correct
in asserting that the doctrine of prosecution history estoppel is ‘irrelevant’ to determination of literal claim
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not apply “where the alleged disavowal of claim scope is ambiguous.” Omega Eng’g, 334 F.3d at
1324; see also id. at 1325 (“[W]e have required the alleged disavowing statements to be both so
clear as to show reasonable clarity and deliberateness and so unmistakable as to be unambiguous
evidence of disclaimer.”) (citations omitted). Only when “the patentee has unequivocally disavowed
a certain meaning to obtain his patent [does] the doctrine of prosecution disclaimer attach[ ] and
narrow[ ] the ordinary meaning of the claim congruent with the scope of the surrender.” Id. at 1324.
Courts may also “rely on extrinsic evidence, which ‘consists of all evidence external to the
patent and prosecution history, including expert and inventor testimony, dictionaries, and learned
treatises.’” Phillips, 415 F.3d at 1317 (quoting Markman, 52 F.3d at 980). Although extrinsic
evidence “‘can shed useful light on the relevant art,’ it is ‘less significant than the intrinsic record
in determining the legally operative meaning of claim language.’” Zircon Corp. v. Stanley Black
& Decker, Inc., 452 F. App’x 966, 972–73 (Fed. Cir. 2011) (quoting Phillips, 415 F.3d at 1317).
Extrinsic evidence is “in general . . . less reliable than the patent and its prosecution history” because
it is “not part of the patent” and was not created at the time of the patent’s prosecution; “extrinsic
publications may not be written by or for skilled artisans”; and expert reports and testimony created
at the time of litigation may “suffer from bias not present in intrinsic evidence.” Phillips, 415 F.3d
at 1318. A court must exercise “sound discretion” in admitting and using extrinsic evidence. Id.
at 1319; see also Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir.
1984) (“A trial judge has sole discretion to decide whether or not [s]he needs, or even just desires,
an expert’s assistance to understand a patent. We will not disturb that discretionary decision except
in the clearest case.”).
scope” but upholding the district court because prosecution history is relevant to claim interpretation) (citation
omitted).
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“[E]xtrinsic 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.”
Phillips, 415 F.3d at 1319. Although a court may consider extrinsic evidence, it must not relegate
the intrinsic evidence to a mere “check on the dictionary meaning of a claim term.” Id. at 1320–21
(noting that relying on dictionaries “too often” causes “the adoption of a dictionary definition
entirely divorced from the context of the written description”). “The sequence of steps used by the
judge in consulting various sources is not important; what matters is for the court to attach the
appropriate weight to be assigned to those sources in light of the statutes and policies that inform
patent law.” Id. at 1324 (citing Vitronics, 90 F.3d at 1582).
These claim-construction tools are applied to the record in this case.
III.
Analysis
A.
Claim Language
Claim 12 is representative of the claims at issue, Claims 9 to 19. Claim 12 states:
12.
An arrangement for diagnosing emergency medical conditions of patients
comprising:
a central medical video conferencing station;
first and second satellite emergency medical care facilities which are
geographically remotely located from each other and from said
central medical video conferencing station;
a first video camera located at said first satellite emergency medical
care facility;
a second video camera located at said second satellite emergency
medical care facility;
a first video conferencing communication link established between
said central medical video conferencing station and said first satellite
emergency medical care facility which enables a first video image
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from said first video camera of a first patient at said first satellite
emergency medical care facility to be displayed at said central
medical video conferencing station; and
a second video conferencing communication link established between
said central medical video conferencing station and said second
satellite emergency medical care facility which enables a second
video image from said second video camera of a second patient at
said second satellite emergency medical care facility to be displayed
at said central medical video conferencing station simultaneously
with display of said first video image at said central medical video
conferencing station;
whereby medical conditions of said first and second patients can be
evaluated substantially simultaneously by an emergency room
physician at said central medical video conferencing station.
(’288 Patent at col. 13, l. 50–col. 14, l. 14 (emphasis added)).
The italicized language, requiring the establishment (or, in Claim 15, “use”) of a
videoconference link between the central facility and two remote facilities, is also in Claims 9 to 19.
These claims require that a physician at the central conference station be able to view video from
both remote facilities “simultaneously.” (Id. at col. 13, ll. 29–32 (Claim 9); col. 14, ll. 11–14 (Claim
12); col. 14, ll. 59–67 (Claim 15); col. 15, ll. 26–col. 16, ll. 2 (Claim 18)).
B.
Ordinary Meaning
Before the reexamination proceedings, the parties agreed that “simultaneous” and
“simultaneously” meant “at the same time.” (Docket Entry No. 114). The court finds that “at the
same time” is the ordinary meaning of these claim terms. (See Docket Entry No. 163, Emtel Ex. 23,
American Heritage Dictionary Online (defining “simultaneous” as “happening, existing, or done at
the same time)); Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1324 (Fed. Cir. 2004)
(stating that the plain meaning of “simultaneously” is “in a simultaneous manner: at the same time:
concurrently” (emphasis omitted))). That ordinary meaning supports Emtel’s proposed construction,
12
and the context of the surrounding words is consistent.
The patent specifications also support this construction. They describe:
•
a “plurality of video monitors,” (’288 Patent, col. 10, ll. 14–15);
•
that are “simultaneously inspected,” (id. at col. 8, ll. 49–50);
•
and “monitored by a medical practitioner,” (id. at col. 10, ll. 23–24);
•
who can examine the videos either “simultaneously or selectively,” (id. at col. 8, ll.
52–53).
The specifications do not mention “continuous presence,” much less “Hollywood Squares.” The
specifications suggest that all of the videos should be displayed at the same time and that more than
one monitor may be used to display the videos. (Id., col. 10, ll. 14–16).
The use of the disputed terms in other parts of the ’288 Patent also favors Emtel’s
construction. “[T]he same terms appearing in different portions of the claims should be given the
same meaning unless it is clear from the specification and prosecution history that the terms have
different meanings at different portions of the claims.” Fin Control Sys. Pty, Ltd. v. OAM, Inc., 265
F.3d 1311, 1318 (Fed. Cir. 2001). “If possible, this court construes claim terms ‘in a manner that
renders the patent internally consistent.’” Frank’s Casing Crew v. Weatherford Int’l, 389 F.3d
1370, 1377 (Fed. Cir. 2004) (quoting Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1379–80 (Fed.
Cir. 2001)). The parties agree that several ’288 Patent claims use the terms “simultaneous” and
“simultaneously” to mean “at the same time.” Claim 3 refers to “simultaneously controlling said
video-conferencing system” at multiple medical care facilities. (’288 Patent, col. 11, ll. 47–49).
Claim 12 recites that patients can be “evaluated substantially simultaneously.” (Id., col. 14, l. 12).
SOC’s proposed construction of the same word is different. SOC justifies its construction by
13
arguing that it would apply only when “simultaneous” or “simultaneously” refers to “viewing” or
“display.” (Docket Entry No. 171 at pp. 16–17). SOC bases this argument on Emtel’s disclaimers
in the reexamination proceedings, allegedly made to overcome the PTO’s initial rejection of the
patent.
C.
Disclaimer Based on the Reexamination Proceedings
SOC argues that in the reexamination proceedings, Emtel disclaimed the broad construction
of “simultaneous” and “simultaneously” that the parties had agreed to earlier in this litigation. The
PTO opened those proceedings based on the finding that prior art raised substantial questions of
patentability. (Docket Entry No. 160, Ex. 3 at p. 2). The PTO found that the prior art taught
“simultaneous displaying” of first and second images on first and second monitors, “simultaneous
video-conferencing connections,” “simultaneous display” of video images, and “simultaneous calls.”
(Docket Entry No. 160, Ex. 3 at pp. 14, 15, 21, 22).
The PTO relied primarily on a 1997 article by Dr. Michael Ricci, Dr. Peter Callas, and
William Montgomery about a Vermont telemedicine program.5 (Docket Entry No. 160, Ex. 2, “The
Vermont Telemedicine Project: Initial Implementation Phases,” Telemedicine Journal, Vol. 3, No.
3, 1997, Ricci et al.).
The Ricci article described a telemedicine system that allowed
videoconferencing between several rural hospitals and the University of Vermont hospital to provide
care to patients at remote facilities. (Id. at p. 197). The project used “VTEL MCU-II” hardware,
which could handle up to six simultaneous video calls through “bridging.” (Id. at p. 200). The PTO
initially rejected Emtel’s patent in March 2013 on the ground that the Ricci system disclosed the
simultaneous viewing or display of video images. (Docket Entry No. 160, Ex. 3 at pp. 12–15,
5
The PTO also relied on WO 1999/12349 (“Hendricks”) and U.S. Patent No. 5,544,649 (“David”).
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23–25, 30–31).
Emtel objected to the PTO’s finding that substantial questions of patentability existed that
undermined the patent. Emtel argued that Ricci did not “teach or suggest a video conferencing
system that supports simultaneous display or viewing of images or video images,” (Docket Entry
No. 160, Ex. 4 at pp. 7, 16), and that the VTEL MCU-II system did not support “simultaneous
display of images or video images.” (Id. at pp. 5–6). Emtel contrasted the “multipoint” hardware
that Ricci’s VTEL MCU-II system used6 with “continuous presence” hardware, which provided “the
ability to see four independent sources of video in one view.” The Buyer’s Guide described
“continuous presence” as “ an optional conference view where participants view other sites in one
of four windows displayed simultaneously—think ‘Hollywood Squares.’” (Id. at p. 5).
Emtel submitted an affidavit from Kelvin James, an inventor of the ’970 Patent who claimed
to be knowledgeable about the state of the art in telemedicine and videoconferencing systems in
1997. James stated that Ricci’s multipoint system used “voice activated switching,” meaning that
instead of displaying images from all video sources at the same time, it displayed only one image
from a single video source, the one with the most active audio component. (Docket Entry No. 160,
Ex. 6, James Declaration at ¶¶ 7–10). James stated that when Ricci was published, the only type of
switching hardware that permitted simultaneous viewing and display of video images was
“continuous presence.” (Id.). He explained that “a Video Conferencing system in 1995–1997 [when
the system Ricci described was implemented] that lacked ‘continuous presence’ video display ability
would not be capable of simultaneous display of multiple video images from different input
6
“Multipoint” hardware “permits three or more remote sites to see and hear one another without
perceptible delay.” (Docket Entry No. 160, Ex. 5 at p. 41). But although all of the audio sources are heard
at once, only one video image is displayed. (Docket Entry No. 160, Ex. 4 at p. 5).
15
sources.” (Id.). James also concluded that “because the MCU-II lacked ‘continuous presence’ video
display ability, . . . the video-conferencing system described in the Ricci article was not capable of
simultaneous display of multiple video images from different input sources.”
Emtel also referred to the Buyer’s Guide, a publication that criticized the VTEL MCU-II,
that the Ricci system used, for its inability to display multiple video streams at the same time. The
Buyer’s Guide recommended that companies implementing videoconferencing systems use a
bridging hardware that permitted continuous-presence technology. (Docket Entry No. 160, Ex. 5,
Perey, Christine, “Buyer’s Guide: Video Face-off,” Network World magazine, May 19, 1997, at
p. 44). The Buyer’s Guide described continuous-presence technology as providing“the ability to
see four independent sources of video in one view,” and a glossary stated that “[c]ontinuous
presence” was “an optional conference view where participants view other sites in one of four
windows displayed simultaneously.” (Docket Entry No. 160, Ex. 5 at p. 44).
The PTO initially rejected all of the ’288 Patent claims as obvious in light of Ricci and the
Buyer’s Guide. (Docket Entry No. 160, Ex. 7). Although the ’288 Patent system supported
“simultaneous viewing of images received from multiple locations,” which Ricci and the other priorart systems did not, (Docket Entry No. 160, Ex. 7 at p. 19), the PTO found that the addition of a
continuous-presence display was an obvious modification of the systems described in earlier
publications. (Id. at pp. 19–20). The PTO stated that although Ricci “does not teach the capability
of simultaneous display of images of first and second patients,” the Buyer’s Guide suggested such
a feature. (Id.). “While Ricci’s ‘bridging’ hardware is capable of handling simultaneous calls,
evidence on the record suggests only one image is displayed at a time because the specific ‘bridging’
hardware does not support simultaneous viewing of images received from multiple locations.”
16
(Id. at p. 19). The PTO concluded that it was obvious to modify Ricci’s VTEL MCU-II system to
add a bridge the Buyer’s Guide recommended that “support[ed] continuous presence or the ability
to display multiple images simultaneously.” (Id. at pp. 19–20).
Emtel argued that the prior art did not anticipate the ’288 Patent or make it obvious because
the system Ricci described could not display images from all of the video sources on the screen at
the same time. Emtel also asserted that Ricci discouraged using continuous-presence display and
that the Buyer’s Guide did not mention the potential telemedicine applications of continuouspresence technology. (Docket Entry No. 160, Ex. 8 at p. 7). Emtel argued that:
In short, neither Ricci nor Buyer’s Guide suggests the desirability of
using “continuous presence” feature for telemedicine applications;
and Ricci, moreover, teaches against it. For at least the reasons stated
above, adding “continuous presence” to a telemedecine system would
not “improve a known system in a known manner” nor would it
achieve similar or predictable results, as asserted in the Office
Action. The Examiner has thus failed to make a prima facie case that
claims 9, 11, 12–13, and 18–20 are obvious over Ricci in light of
Buyer’s Guide.
(Id.). These arguments prevailed. The PTO confirmed the patentability of all of the ’288 Patent
claims in February 2014. (Docket Entry No. 160, Ex. 9).
SOC asserts that Emtel’s arguments and representations during reexamination effectively
narrowed the meaning of “simultaneous” by restricting it to continuous-presence videoconferencing,
as defined in the James declaration and the Buyer’s Guide. (Docket Entry No. 160). Both the James
declaration and the Buyer’s Guide defined continuous-presence videoconferencing as the display
of multiple video images at the same time, on a single monitor or in a single view. Both James and
the Buyer’s Guide compared continuous-presence technology to the television game show
“Hollywood Squares.” Emtel argues that it did not disclaim or surrender a broader meaning of
17
“simultaneously,” but merely described the state of prior art. (Docket Entry No. 163).
A patentee’s statements during prosecution cannot limit claim scope unless it is “clear and
unmistakable that the patentee intended that limitation.” Aria Diagnostics, Inc. v. Sequenom, Inc.,
726 F.3d 1296, 1302 (Fed. Cir. 2013). Statements in the prosecution history that “merely provide
an example to illustrate differences between the invention and the prior art” “do not indicate a
disavowal or disclaimer of claim scope.” Gemstar-TV Guide Int’l, Inc. v. ITC, 383 F.3d 1352, 1375
(Fed. Cir. 2004).
The prosecution history shows that Emtel disclaimed the “voice-activated switching”
technology used in Ricci, and disclaimed technology that could not show two video images at once.
But Emtel did not disclaim the meaning of “simultaneous” or “simultaneously” as “at the same
time.” Instead, Emtel stated that Ricci’s technology did not permit “simultaneous display” or
“simultaneous viewing” of images, as the relevant ’288 Patent claims require, because Ricci did not
show multiple video images “at the same time.”
The opinion in Shire Development, LLC v. Watson Pharma., Inc., 746 F.3d 1326, 1331 (Fed.
Cir. 2014), vacated on other grounds, 135 S. Ct. 1174
(2015) (vacated in light of Teva
Pharmaceuticals USA, Inc., v. Sandoz, Inc., 574 U. S. —, 135 S. Ct. 831 (2015)), is instructive. The
claims included both an “inner lipophilic matrix” and an “outer hydrophilic matrix.” The defendant
argued that the two matrices had to be “separate and distinct” structures because the plaintiff had
disclaimed a single structure. Id. The Federal Circuit found that the plaintiff had “carefully
characterized the prior art as not having separate matrices but never actually stated that the claimed
invention does have separate matrices.” Id. at 1332 (emphasis omitted). There was no broad
disclaimer to overcome the prior art, but instead a description of the prior art.
18
Similarly, Emtel repeatedly argued that the Ricci system lacked continuous presence and that
when Ricci was published in 1997, continuous-presence technology was the only technology that
supported the simultaneous display of video images on a single screen. But Emtel never stated that
its own design did have continuous-presence technology, that its claimed design did not encompass
the use of other technologies, or that only continuous-presence technology supported simultaneous
display when the ’970 Patent was issued in 2006.
Gemstar-TV Guide Int’l, 383 F.3d at 1374, is also instructive. The patent at issue described
a TV Guide system for users to see what is showing on television at a given time and date. This
guide allowed users to search by “combining” multiple selection criteria. During prosecution, the
patentee contrasted a prior-art system as unable to “automatically combine two selection criteria
such as ‘weather’ and ‘channels 2, 5, and 11.’” Id. at 1375. The defendant argued that this prior-art
reference was a disavowal or disclaimer that limited “combining” to specific “AND/OR
combinations” like the one referred to. Id. The Federal Circuit disagreed, finding that the reference
to prior art “merely provide[d] an example to illustrate differences between the invention and the
prior art. In essence, Gemstar stated only that the [prior art] was incapable of performing a certain
type of search, not that the scope of the claimed invention was limited to that particular type of
search.” Id. While the reference to prior art might have disclaimed a system that could not perform
the particular type of search described, the reference did not limit the claimed invention to the type
of search described in the example. See id. Arguments that prior art lacks a feature necessary for
the patented claims, without more, do not present a basis to conclude that the claims are limited to
that feature. See id. at 1375 (“In essence, Gemstar stated only that the Kram reference was incapable
of performing a certain type of search, not that the scope of the claimed invention was limited to that
19
particular type of search.”).
During the reexamination proceedings, Emtel argued that a videoconference was not
“simultaneous” unless it could display multiple video images at the same time. Because Ricci did
not allow multiple video images to be displayed at the same time, Emtel distinguished it from the
’288 Patent claims on the basis that it was not simultaneous. Like the patentee in Gemstar, Emtel
used a term—continuous presence—as an example of what was simultaneous in the prior art, but
it did not limit the scope of the claims to the particular technology—here, continuouspresence—described.
SOC contends that because Emtel described technology that could display multiple images
simultaneously as continuous-presence technology, Emtel necessarily limited the meaning of
“simultaneously” to exclude any technology other than continuous-presence. But Emtel did not
clearly and unambiguously limit “simultaneously” as SOC asserts. Through Kelvin James’s
declaration, Emtel stated that when Ricci was published in 1997, continuous-presence technology
was the only type allowing the simultaneous display or viewing of images. Emtel did not state that
in 2006, when the PTO issued the ’970 Patent, or in 2013, when the PTO reexamined the ’288
Patent, continuous-presence technology was the only system that supported simultaneous viewing
or display, or that Emtel was limiting the claim scope to that particular type of continuous-presence
technology. The proceedings refer to “continuous presence or the ability to display multiple images
from remote locations simultaneously,” apparently contemplating that technology other than
continuous-presence could support simultaneous display. (Docket Entry No. 160, Ex. 7 at p. 20).
The definitions of continuous presence used in the James declaration and the Buyer’s Guide,
20
and urged here by SOC, also suggest that Emtel did not intend to limit the terms “simultaneous” or
“simultaneously” to the use of continuous-presence technology. Both James and the Buyer’s Guide
define continuous presence as display on a single monitor or view. But, as SOC conceded at the
Markman hearing, the ’288 Patent claims do not require a single monitor, and the prosecution
history contains no evidence that Emtel disclaimed a multiple-monitor embodiment. (Docket Entry
No. 171 at pp. 19–20). To the contrary, the ’288 Patent claims a system that can incorporate
multiple monitors. The PTO confirmed the patentability of Claims 7, 10, and 16, all of which recite
a two-monitor embodiment. Claims 10 and 16 refer to a system with two monitors, in which one
patient video image is displayed on each monitor. (’288 Patent, col. 13, l. 41; col. 15, ll. 5–6).
Claim 7 refers to a dual-monitor system that “simultaneously display[s] a first patient on a first
monitor and a second patient on a second monitor. (Id., col. 12, ll. 40–43). And the specifications
refer to a “plurality of video monitors, typically one for each of the remote emergency center
facilities.” (Id., col. 10, ll. 14–16).
Far from disavowing the use of two monitors, screens, or other displays, Emtel’s
representations to the PTO explicitly discussed the ’288 Patent’s two-monitor claims. (See, e.g.,
Docket Entry No. 160, Ex. 4 at pp. 18–19 (“Ricci does not state or describe any system including
first and second monitors”), 22 (“the combination of Ricci and Hendricks does not teach or suggest
displaying an image of the second patient on a second monitor while simultaneously displaying an
image of the first patient on the first monitor.”), 26 (“nor does David describe multiple video
monitors”)).
The Buyer’s Guide states that continuous presence means “an optional conference view
where participants view other sites in one of four windows displayed simultaneously.” The ’288
21
Patent does not require four windows or four videos to be shown at the same time. The ’288 Patent
claims that the medical practitioner will see at least two patient videos “simultaneously,” and the
specifications refer to a “plurality” of videos. Nor do the claims state that the patients will view
other patients, meaning that all of the “participants” will not view the other sites. The ’288 Patent
is not limited to the exact definition of “continuous presence” given in the Buyer’s Guide.
There are also practical reasons to reject SOC’s proposed construction limiting
“simultaneous” and “simultaneously” to “display[ing]” “images of at least two patients.” While
SOC is correct that the ’288 Patent requires at least two patients and requires that those two patients’
images be displayed at the same time, these limitations are not based on, or derived from, the
meaning of “simultaneously” or Emtel’s alleged restriction of that term to continuous-presence
technology. Instead, other claim terms provide these limitations. Claim 12, for example, requires
“a first video image . . . of a first patient . . . and . . . a second video image . . . of a second patient
. . . to be displayed simultaneously.” (Col. 13, l. 50–col. 14, l. 14). Restricting “simultaneously”
to the display of two or more patients’ images here is redundant, because that limitation is already
present in the claim. Importing the requirement of two or more patients whose images are displayed
conflates the meaning of “simultaneously” with the meaning of other claim terms and risks
confusing the jury.
The James declaration, the Buyer’s Guide, and SOC’s proposed construction all define
continuous presence by referring to “Hollywood Squares,” a more-than dated television game show
in which contestants played tic-tac-toe with celebrity guests to win prizes. See Hollywood Squares,
IMDb (last visited Aug. 19, 2015, 9:00 p.m.), http://www.imdb.com/title/tt0059995/. Emtel’s only
reference to the Hollywood Squares type of display was through submitting the Buyer’s Guide and
22
Kelvin James’s declaration. Both the Buyer’s Guide and James compared continuous-presence
technology to the Hollywood Squares television show’s screen appearance. The Guide and James
used the Hollywood Squares reference as an example of how the simultaneous display of multiple
video images in a continuous-presence system might look. Emtel did not state that the claimed
method or system was restricted to a layout that was “reminiscent of Hollywood Squares,” and the
record shows no such disclaimer.
SOC also appears to argue that even if there is no disclaimer, the court should include a
reference to “Hollywood Squares” in the claim construction because the analogy would be helpful
to the jury. (See Docket Entry No. 166 at pp. 5–6). But there is no reason to believe that the jury
will be confused by defining “simultaneous” as “at the same time,” or that referring to the set design
of a game show that many jurors are unlikely to know will help.7 The reference to “Hollywood
Squares” is both unnecessary and potentially confusing. This language is not incorporated into the
court’s construction of the disputed terms.
The construction “at the same time” is consistent with the ordinary meaning of the terms
“simultaneous” and “simultaneously.” This construction can be applied consistently across the ’288
Patent, is not redundant, does not import claim limitations that derive from other claim terms, and
does not encourage the jury to confuse “simultaneously” with other claim terms. Because the record
shows no disclaimer in the reexamination proceedings, the court adopts this construction of the
disputed terms.
7
The original show was cancelled in the 1980s. See Hollywood Squares, IMDb (last visited Aug.
19, 2015, 9:00 p.m.), http://www.imdb.com/title/tt0059995/. A new version of the show ran more recently
but was cancelled in 2004. See Hollywood Squares, IMDb (last visited Aug. 19, 2015, 9:00 p.m.),
http://www.imdb.com/title/tt0138968/.
23
IV.
Conclusion
“Simultaneous” and “simultaneously” are construed to mean “at the same time.” No later
than August 31, 2015, the parties must inform the court whether they agree to mediation and, if so,
the anticipated timeline for mediating this dispute. The parties must also indicate whether they
intend to file summary-judgment motions and, if so, propose a timeline for doing so.
SIGNED on August 24, 2015, at Houston, Texas.
______________________________________
Lee H. Rosenthal
United States District Judge
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