Katrinecz et al v. Motorola Mobility, Inc.
Filing
51
MEMORANDUM OPINION AND ORDER Regarding Claims Construction. Signed by Judge Lee Yeakel. (dm)
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS
AUSTIN DIVISION
2OIIiJAN-6
W±
CLER
ANDREW KATR1NECZ AND
DAVID BYRD,
PLAINTIFFS,
§
mSiT;V'
§
§
§
V.
§
CAUSE NO.
1:
12-CV-235-LY
§
MOTOROLA MOBILITY LLC,
DEFENDANT.
§
§
MEMORANDUM OPINION AND ORDER REGARDING
CLAIMS CONSTRUCTION
Before the court are Plaintiffs Andrew Katrinecz' s and David Byrd's (Katrinecz)'
Markman Brief filed July 15, 2013 (Clerk's Doc. No. 32); Defendant Motorola Mobility
LLC' s (Motorola's) Opening Claim Construction Brief filed July 15, 2013 (Clerk's Doe. No.
33); Motorola's Responsive Claim Construction Brief filed August 12, 2013 (Clerk's Doe.
No. 38); Katrinecz' s Response to Motorola's Markman Brief filed August 12,2013 (Clerk's
Doe. No. 39); the parties' Third Amended Joint Claim Construction Statement filed
September24, 2013 (Clerk's Doe. No. 49); and the parties' claim construction presentations.
The court held a claim construction hearing on September 23, 2013. See Markman
v.
Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S.
370 (1996). After considering the patent and its prosecution history, the parties' claim-
construction briefs, the applicable law regarding claim construction, and argument of
counsel, the court now renders its order with regard to claim construction.
Because the interests of Katrinecz and Byrd do not diverge, the court will refer to
them jointly as "Katrinecz."
1
PM 3:t
COURT
I.
Introduction
The court renders this memorandum opinion and order to construe the claims of the
patent-in-suit in this cause, U.S. Patent No. 7,284,872 (the "872 Patent"). Katrinecz asserts
claims against Motorola for infringement of the '872 Patent. The patent generally relates to
methods for adapting manufacturing processes for the purpose of illuminating keyboards,
keypads, mouses, and other data-entry devices.
Legal Principles of Claim Construction
II.
Determining infringement is a two-step process. See Markman, 52 F.3d at 976
("[There are] two elements of a simple patent case, construing the patent and determining
whether infringement occurred.
. .
."). First, the meaning and scope
of the relevant claims
must be ascertained. Id. Second, the properly construed claims must be compared to the
accused device. Id. Step one, claim construction, is the current issue before this court.
The court construes patent claims without the aid of a jury. See Markman 52 F.3d
at 979. The "words of a claim 'are generally given their ordinary and customary meaning."
Phillips
Corp
v.
v.
A WHCorp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The ordinary and
customary meaning of a claim term 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. Id. at 1313. The person of
ordinary skill in the art is deemed to have read the claim term in the context of the entire
patent. Id. Therefore, to ascertain the meaning of claims, courts must look to the claims, the
specification, and the patent's prosecution history. Id. at 1314-17; Markman, 52 F.3 dat 979.
Claim language guides the court's construction of claim terms. Phillips, 415 F.3d at
2
1314. "[T]he context in which a term is used in the asserted claim can be highly instructive."
Id. Other claims, asserted and unasserted, can provide additional instruction because "terms
are normally used consistently throughout the patent." Id. Differences among claims, such
as additional limitations in dependent claims, can provide further guidance. Id.
Claims must also be read "in view of the specification, of which they are a part."
Markman, 52 F.3d at 979. The specification "is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of
a disputed term." Telejiex. Inc. v.Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed.Cir.2002)
(internal citations omitted). In the specification, a patentee may define a term to have a
meaning that differs from the meaning that the term would otherwise possess. Phillips, 415
F.3d at 1316. In such cases, the patentee's lexicography governs. Id. The specification may
also reveal a patentee's intent to disclaim or disavow claim scope. Id. Such intentions are
dispositive for claim construction. Id. Although the specification may indicate that certain
embodiments are preferred, particular embodiments appearing in the specification will not
be read into the claims when the claim language is broader than the embodiment. Electro
Med. Sys., S.A.
v.
Cooper Life Scis., Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994).
The prosecution history is another tool to supply the proper context for claim
construction because it demonstrates how the inventor understood the invention. Phillips,
415 F.3 d at 1317. A patentee may serve as his own lexicographer and define a disputed term
in prosecuting a patent. Home Diagnostics Inc.
v.
LfeScan, Inc., 381 F.3d 1352, 1356
(Fed.Cir.2004). Similarly, distinguishing the claimed invention over the prior art during
prosecution indicates what the claims do not cover. Spectrum Int'l v. Sterilite Corp., 164
3
F.3d 1372, 1378-79 (Fed.Cir.1988). The doctrine of prosecution disclaimer precludes
patentees from recapturing specific meanings that were previously disclaimed during
prosecution. Omega Eng'g Inc.
v.
Raytek Corp., 334 F.3d 1314, 1323 (Fed.Cir.2003).
Disclaimers of claim scope must be clear and unambiguous. Middleton Inc.
v.
3M Co., 311
F.3d 1384, 1388 (Fed.Cir.2002).
Although, "less significant than the intrinsic record in determining the legally
operative meaning of claim language," the court may rely on extrinsic evidence to "shed
useful light on the relevant art." Phillips, 415 F.3d at 1317 (quotation omitted). Technical
dictionaries and treatises may help the court understand the underlying technology and the
manner in which one skilled in the art might use claim terms, but such sources may also
provide overly broad definitions or may not be indicative of how terms are used in the patent.
Id. at 1318. Similarly, expert testimony may aid the court in determining the particular
meaning of a term in the pertinent field, but "conclusory, unsupported assertions by experts
as to the definition of a claim term are not useful." Id. Generally, extrinsic evidence is "less
reliable than the patent and its prosecution history in determining how to read claim terms."
Id.
Extrinsic evidence may be useful when considered in the context of the intrinsic
evidence, Id. at 1319, but it cannot "alter a claim construction dictated by a proper analysis
of the intrinsic evidence," On-Line Techs., Inc. v. BodenseewerkPerkin-Elmer GmbH, 386
F.3d 1133, 1139 (Fed. Cir. 2004).
ri
III.
Discussion
A.
Agreed Constructions
Prior to the claims-construction hearing on September 23, 2013, the parties agreed
to the construction of various claim terms. The following table summarizes the parties'
agreement. The court hereby adopts the agreed construction of all claim terms as listed
below.
Claim Term/Phrase
Adopted Agreed Construction2
"keys of an optically transmissive material"
"keys manufactured from a material that
transmits light through the material."
(Claims 5-9)
"to provide an intensity of illumination to
said keys visual to said user of the
apparatus"
"to provide light to the keys so that a user of the
data entry device can see light through the
optically transmissive key material"
(Claims 5-9)
"a device for entering data into a machine"
"data entry apparatus"
(Claims 5-9)
"making said keys
transmissive material"
of an optically "making the keys from a material that allows light
to transmit through the material"
(Claim 8)
"a method for illuminating the keys of a data
entry apparatus"
The preamble is limiting.
The method is for illuminating the keys of a device
for entering data into a machine.
(Claim 8)
2Throughout, the bolded terms indicate the court's adopted construction.
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B.
Disputed Terms
The parties dispute the construction of three claim terms. The following table
summarizes the parties' proposed constructions of the disputed terms. The court will address
and construe each term in turn.
Claim TermlPhrase
Katrinecz's Proposed Construction
Motorola's Proposed Construction
"flexible luminescent sheets" Thin, flexible luminescent sheets that flexible luminescent sheets
can be twisted, bent, and formed into
any shape. When coimected to a
(Claims 5-9)
power source, the sheets will emit
light.
1.
2. "optically transmissive Material that is between or encloses the upper plate of the keyboard which is
keyboard top plate"
the keys. Light from the luminescent manufactured from a material that
sheet will transmit through the top transmits light through the material
(Claims 5-7)
plate to provide illumination of the
top plate surface areas as well as the
keys.
3. "different keys or groups of At least one key or one group of keys at least one key or one group of keys is
keys are tinted with different has color added to be a different color manufactured with color added to be a
than other keys.
different color than other keys
colors"
(Claim 8)
1.
"flexible luminescent sheets"
Katrinecz argues that the inventors acted as their own lexicographers by clearly
defining, via the specification, what was meant by "flexible luminescent sheets" and that
Katrinecz' s proposed construction merely incorporates clarifying language from the
specification "almost verbatim." Katrinecz also argues that the language relied upon for the
proposed construction comes not merely from a preferred embodiment, but from the only
embodiment described in the patent, an application of an electroluminescent ("E-L") lamp.
Additionally, Katrinecz asserts that the words "flexible luminescent sheets" are not
straightforward or readily understandable by most people.
Conversely, Motorola argues that the words "flexible luminescent sheets" are readily
understood and are not terms of art requiring any particular construction beyond their plain
and ordinary meaning. Motorola also contends that Katrinecz's proposed construction
merely repeats the claim terms with the addition of 22 words over two sentences in an effort
to add further limitations to the claim that are not otherwise present. Motorola asserts that
Katrinecz' s proposed definition attempts to limit the broad term actually claimed to a
preferred embodiment of an E-L lamp as described in the specification.
After reviewing the intrinsic record, it is evident to the court that Katrinecz's
invention contemplated the use of a known E-L lamp connected to a power source. The
specification repeatedly describes E-L lamps and refers to E-L iamps in the figures that
accompany the patent. However, the court must begin its inquiry by looking directly at the
language of the claimed invention.
See Phillips, 415
F.3d at 1314. In other words, as is so
often quoted by parties before this court, "the name of the game is the claim."
The patented invention claims a "flexible luminescent sheet" with no elaboration or
qualification. The inventors did not claim a flexible electroluminescent lamp or a flexible
electroluminescent sheet.
Now, Katrinecz proposes a lengthy construction importing
language from the specification that, in addition to repeating the disputed words "flexible
luminescent sheet," applies characteristics of E-L lamps. Moreover, although Katrinecz
stresses that the E-L lamp embodiment is the only embodiment contemplated by the patent,
the specification explicitly refers to the illustration of Figure 2 as "[a] preferred embodiment
of the present invention." Specifically, the flexible luminescent sheet 100 illustrated in
Figure 2 is described as being comprised of a commercially available electroluminescent
lamp in a preferred embodiment. See '872 Patent, 3:31-67. Where, as here, the claim
language is broader than a preferred embodiment, "it is well settled that claims are not to be
confined to that embodiment." DSW, Inc.
v.
Shoe Pavillion, Inc., 537 F.3d 1342, 1348 (Fed.
Cir. 2008). Further, it is well established that even when a patent describes only a single
embodiment, the claims of the patent cannot be construed as being limited to that
embodiment. See Liebel-Flarsheim Co.
v.
Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004).
Katrinecz is asking the court to do just that.
The court declines to limit the claim language by applying the definition taken from
the inventors' preferred embodiment, Instead, the court finds the disputed term "flexible
luminescent sheets" to be commonly understood, both as individual words and as grouped
together. Indeed, the word "luminescent," in some form, is used without definition more
than 50 times within the patent document. Sometimes, "the ordinary meaning of the claim
language as understood by a person of skill in the art may be readily apparent even to lay
judges," in which case claim construction consists of little more than applying "widely
accepted meaning of commonly understood words." AcumedLLC v. Stryker Corp., 483 F.3d
800, 805 (Fed. Cir. 2007). As commonly understood, "flexible luminescent sheets" are
sheets that are both flexible and luminescent. No further definition is required.
The court adopts Motorola's proposed construction of "flexible luminescent sheets."
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2. "optically transmissive keyboard top plate"
The construction of this term is aided significantly by the parties' agreed construction
of the term "keys of an optically transmissive material." It is well established that "the 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." Fin Control Sys. Pty., Lrd.
v.
see also Am. Piledriving Equip., Inc.
Geoquip, Inc., 637 F.3d 1324, 1333 (Fed. Cir. 2011)
v.
OAM Inc., 265 F.3d 1311, 1318 (Fed. Cir. 2001);
("Where a claim term is used consistently throughout the claims, the usage of [the] term in
one claim can often illuminate the meaning of the same term in other claims.") (internal
quotation and citation omitted). Because there is no evidence in the intrinsic record that
"optically transmissive" has a different meaning when applied to a keyboard top plate than
it does when applied to keys, the court will adopt the parties' agreed construction of
"optically transmissive." Therefore, the court now addresses the construction of "keyboard
top plate."
Succinctly stated, parties dispute whether "keyboard top plate" means either
"[m]aterial that is between or encloses the keys" or "the upper plate of the keyboard."3 Each
party's proposed definition overlooks a key aspect of the term. Katrinecz's definition is
overly broad; the intrinsic record does not support that a top plate is any material that is
The parties' briefing materials thoroughly discuss Motorola's proposed term
including the additional limitation of "through which the keys extend and." During the
claims-construction hearing, Motorola amended its proposed construction in order to focus
the issues before the court. Thus, the court considers the parties' most recent amended
proposed constructions, submitted post-hearing. See Third Amended Joint Claim
Construction Statement filed September 24, 2013 (Clerk's Doc. No. 49).
either between or enclosing the keys. As Motorola correctly argues, a top plate is certainly
made of material, but not just any material is a top plate. On the other hand, Motorola
merely substitutes "upper" for "top" in its definition and leaves "plate" undefined.
As "keyboard top plate" is not otherwise defined in the claim language, the court
turns to the patent specification. There, a clear definition is provided: a "[k]ey board top
plate [] fits over or otherwise attaches to key board bottom plate [],and thereby provides
enclosure for the keyboard." '872 Patent, col. 3, lines 14-16 (emphasis added). Nowhere
in the specification is this definition contradicted or otherwise improved upon. Therefore,
when combined with the agreed construction of optically transmissive, the court arrives at
the proper construction.
The term "optically transmissive keyboard top plate" means "the upper enclosure
of the keyboard that transmits light through the enclosure."
3. "different keys or groups
of keys are tinted with different colors"
The dispute over this term essentially centers on the meaning of "are tinted" as it is
applied to "keys or groups of keys" in claim 8. The parties' proposed definition varies only
by substituing the words "has" or "is manufactured with." Both sides urge that the term be
given its plain and ordinary meaning. Katrinecz refers to the patent specification, which
describes a variety of methods for providing different colors of illumination, including use
of multiple luminescent sheets of different colors, different tinted optically transmissive
material for the keys, and mixing the keys with phosphors of different colors. Katrinecz
asserts that there is no requirement that the keys themselves be tinted during manufacture.
10
Motorola argues that the term should be construed as requiring that the keys
themselves be tinted during manufacture. Motorola contends that the requirement that keys
be "tinted" limits the claims; not all ways of making keys which emit light of different colors
can be considered tinting the keys. In support ofthis argument, Motorola points out that: (1)
claim 9 does not require tinted keys, (2) the written description supports that not every way
of making keys that emit light of different colors makes those keys tinted, and (3) that
addition of the color during manufacturing is consistent with the plain usage of the term "are
tinted."
Motorola's proposed construction includes the limitation that the keys be
"manufactured with" color added. Problematic to the court is that the word "manufacture"
or "manufactured" appears nowhere within claim 8 (or any other claim). Manufacturing and
the manufacturing process are frequently discussed within the patent specification, but only
mentioned one time in conjunction with keys:
"[t]he keys are also manufactured as required by the manufacturing process
ordinarily used, except that the keys are made from an optically transmissive
material, and may further contain phosphorescent material that glows
residually during and after illumination."
'872 Patent, col. 2, lines 13-17. Notably, this discussion involves potentially adding in
phosphorescent material during manufacturing, but makes no mention of tinting.
Motorola correctly points out that the specification describes several ways of
obtaining the desired result of differently colored light emission. Tinting, as described in the
patent, is one of at least three ways the inventors detailed. However, the claim applies the
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transient verb "are tinted" to "different keys or groups of keys." Therefore, the court must
address the limitation that the word tint imposes upon the claim.
The parties agree that, at least in part, to "tint" means to add color. The court can find
no additional support in the intrinsic record that to "tint", as used in the claims, must be
limited to manufacture. Certainly, keys must be made or manufactured, but neither the claim
nor the specification dictates when, how, and in what manner the color must be added.
Therefore, the court adopts the less-limited proposed definition of "has color added" as
opposed to the more-limited "is manufactured with color added."
The court construes this term as "at least one key or one group of keys has color
added to be a different color than other keys."
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C.
Summary Table ofAdopted Agreed and Disputed Terms
Claim Term/Phrase
Court's Construction
"keys of an optically transmissive
material"
"keys manufactured from a material that transmits light
through the material."
(Claims 5-9)
"to provide an intensity of "to provide light to the keys so that a user of the data
illumination to said keys visual to entry device can see light through the optically
transmissive key material"
said user of the apparatus"
(Claims 5-9)
"data entry apparatus"
"a device for entering data into a machine"
(Claims 5-9)
"making said keys of an optically
transmissive material"
"making the keys from a material that allows light to
transmit through the material"
(Claim 8)
"a method for illuminating the keys
of a data entry apparatus"
The preamble is limiting.
The method is for illuminating the keys of a device for
entering data into a machine.
(Claim 8)
"flexible luminescent sheets"
"flexible luminescent sheets"
(Claims 5-9)
"optically transmissive keyboard top
plate"
"the upper enclosure of the keyboard that transmits
light through the enclosure"
(Claims 5-7)
"different keys or groups of keys are
tinted with different colors"
"at least one key or one group of keys has color added
to be a different color than other keys."
(Claim 8)
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IV.
Conclusion
For the above reasons, the court construes the disputed claims as noted and so
ORDERS. No further claim terms require construction.
IT IS FURTHER ORDERED that this case is set for a Scheduling Conference on
March 11, 2014, at 2:00 p.m., in Courtroom 7, Seventh Floor, United States Courthouse,
501 W. 5th Street, Austin, Texas 78701. The parties shall meet and confer in advance of that
date in an attempt to settle this case. If the case is not settled, the parties shall confer in an
attempt to reach agreement on a schedule to follow for the remainder of this case. The court
will render a Scheduling Order as a result of the March 11, 2014 conference.
SIGNED this
day of January, 2014.
ED STA
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S DISTRIICT
JUDGE
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