Joao Control & Monitoring Systems, LLC v. Protect America, Inc.
Filing
109
MEMORANDUM OPINION AND ORDER regarding Claim Construction. No further claim terms require construction. Scheduling Conference set for 10/21/2015 09:30 AM before Judge Lee Yeakel. Signed by Judge Lee Yeakel. (klw)
IN THE UNITED STATES DISTRICT C(fTL
FOR THE WESTERN DISTRICT OF TE
AUSTIN DIVISION
E0
2015AU6 18 PH l:28
JOAO CONTROL & MONITORING
SYSTEMS, LLC,
PLAINTIFF,
§
§
§
§
V.
§
CAUSE NO. 1-14-CV-134-LY
§
PROTECT AMERICA, INC.,
DEFENDANT.
§
§
MEMORANDUM OPINION AND ORDER REGARDING
CLAIM CONSTRUCTION
Before the court in the above-styled and numbered cause are Plaintiff Joao Control &
Monitoring Systems, LLC's ("Joao") Opening Claim Construction Brief filed April 3,2015 (Clerk's
Doc. No. 84); Defendant Protect America, Inc.'s ("Protect America") Opening Claim Construction
Brief filed April 3, 2015 (Clerk's Doc. No. 83); Joao's Responsive Claim Construction Brief filed
May 8, 2015 (Clerk's Doc. No. 93); Protect America's Reply Claim Construction Brief filed May
8,2015 (Clerk's Doc. No. 92); the parties' Notice of Supplemental Authority filed June 22, 2015
(Clerk's Doc. No. 102); Joao' s Supplemental Claim Construction Brief filed June 26, 2015 (Clerk's
Doc. No. 106); Protect America's Supplemental Claim Construction Brief filed June 26, 2015
(Clerk's Doc. No. 105); Joao' s Notice of Supplemental Authority filed August 6,2015 (Clerk's Doe.
No. 108); the parties' Amended Joint Claim Construction Statement filed March 19,2015 (Clerk's
Doe. No. 73); and the claim-construction presentations of both parties.
The court held a claim-construction hearing on May 27, 2015. See Markman
v.
Westview
Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en bane), aff'd, 517 U.S. 370 (1996). After
considering the patents and their prosecution history, the parties' claim-construction briefs, the
parties' opposing expert declarations, the applicable law regarding claim construction, and argument
of counsel, the court now renders its order with regard to claim construction.
I.
Introduction
The court renders this memorandum opinion and order to construe the claims of U.S. Patent
Nos. 6,542,076 (the '076 Patent), 6,549,130 (the '130 Patent), 7,397,363 (the '363 Patent), 7,277,010
(the '010 Patent), 6,587,046 (the '046 Patent), and 6,542,077 (the '077 Patent) (collectively "patents-
in-suit"). Joao asserts that Protect America infringes various claims of the six patents-in-suit. The
patents-in-suit generally relate to "systems for remotely controlling and/or monitoring devices such
as appliances or other equipment at a premises." Collectively, the patents contain 906 claims and
consist of more than 500 pages.
II.
Legal Principles of Claim Construction
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 the 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
AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp
v.
v.
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
2
meaning of a claim, a court must look to the claim, the specification, and the patent's prosecution
history. Id. at 13 14-17; Markman, 52 F.3d at 979. Claim language guides the court's construction
of a claim term. Phillips, 415 F.3d at 1314. "[T]he context in which a term is used in the asserted
claim can be highly instructive." Id. Other claims, asserted and unasserted, can provide additional
instruction because "terms are normally used consistently throughout the patent." Id. Differences
among claims, such as additional limitations in dependent claims, can provide further guidance. Id.
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." Teleflex. 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 a case, the patentee's
lexicography governs. Id. The specification may also reveal a patentee's intent to disclaim or
disavow claim scope. Id. Such intention is dispositive of claim construction. Id. Although the
specification may indicate that a certain embodiment is preferred, a particular embodiment appearing
in the specification will not be read into the claim when the claim language is broader than the
embodiment. Electro Med. Sys., S.A. v. CooperLfeScis., 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.3d at 1317. A
patentee may also 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 a claim
3
does not cover. Spectrum Int'l
v.
Sterilite Corp., 164 F.3d 1372, 1378-79 (Fed. Cir. 1988). The
doctrine ofprosecution disclaimer precludes a patentee from recapturing a specific meaning that was
previously disclaimed during prosecution. Omega Eng 'g Inc.
v.
Raytek Corp., 334 F .3 d
13 14, 1323
(Fed. Cir. 2003). A disclaimer of claim scope must be clear and unambiguous. Middleton Inc.
v.
3MCo., 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 a claim term, but such sources may also provide overly broad definitions or may not
be indicative of how a term is used in the patent. Id. at 1318. Similarly, expert testimony may aid
the court in determining the particular meaning of a term in the pertinent field, but "conclusory,
unsupported assertions by experts as to the definition of a claim term are not useful." Id. Generally,
extrinsic evidence is "less reliable than the patent and its prosecution history in determining how to
read claim terms." Id. 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.
1133, 1139 (Fed. Cir. 2004).
ri
Bodenseewerk Perkin-Elmer GmbH, 386 F.3d
III.
Discussion
A.
Agreed Constructions
In their amended joint-claim-construction statement, the parties present two terms with
agreed constructions. Further, at the claim-construction hearing, Joao conceded that two of Protect
America's constructions were technically correct and Joao would not object if the court adopted the
constructions. The court hereby adopts the agreed construction of the claim term listed in the table
below.
Claim Term/Phrase
Adopted Agreed Construction
"premises"
"a building or a structure and the grounds or parcel
of land associated with the building or the structure,
or a building or structure or a portion, room, or
office, of or in the building or structure, or a home,
mobile home, mobile building, mobile structure,
residence, residential building, office, commercial
building, commercial office, structure, equipment,
facility, machine, rig, assembly line, or edifice."
[All Patents]
"located at"
"situated at, or situated in, or situated on"
[All Patents]
"remote"
"separate and apart from, or external from, or at a
distance from or distant from, or not located in"
[All Patents]
"video information"
['010 and '046 Patents]
"an image or images or a photograph, or data or
information containing, pertaining to, or
representing, an image or images or a photograph"
Throughout, the bolded terms indicate the court's adopted construction.
B.
Disputed Terms
The parties dispute the construction of 12 terms. The following table summarizes the
parties' proposed constructions of the disputed terms.
Term/Phrase
1.
Joao's Proposed Construction
"The act of stealing from the
premises"
"A theft of the premises"
Protect America's Proposed
Construction
[Indefinite]
"a system for detecting a failure"
means:
[Means-Plus-Function]
['076, '363, and '077 Patents]
"A system for detecting a
failure in the at least one of. ."
2.
.
['076 and '077 Patents]
Function: "detecting a failure in the at
"a system for detecting or least one of a premises system, a
discovering the existence, presence premises equipment system, a premises
or fact of a failure or a state of component, a premises device, a
inability to perform a normal premises equipment, and a premises
process or function"
appliance, wherein the detecting system
provides information regarding the
"in the at least one of. "means: failure"
.
.
"in one or more of the items
contained in the list (of claim 182
or 30)."
Structure: [Indefinite]
The list from claim 182 and 30 is:
"a premises system, a premises
equipment system, a premises
component, a premises device, a
premises equipment, and a premises
appliance"
3. "Performs a systematic check
" / "performing a systematic
check.
.
."
['076 and '130 Patents]
"Fulfill or carry out the function or "Check any and all of the apparatus and
act of testing or verifying or premises systems, including the status
evaluating a system"
or state of the premises equipment
systems, equipment, devices and/or
appliances"
4. "Intelligent agent"
['363 and '077 Patents]
5. "Software agent"
"A computing entity that performs
user delegated tasks autonomously
and which interprets monitored
events to make appropriate
actuation decisions for autonomous
operation(s)."
[Indefinite]
"A computing entity that performs
user delegated tasks autonomously"
[Indefinite]
"a computing entity which may be
dispatched from one computer to
another computer for performing
user delegated tasks autonomously"
[Indefinite]
Joao does not agree to add the term
"associated with" to the list ofterms
for the Court to construe. The
Court set deadlines for the claim
construction process and the
disclosure of terms to be construed.
This term was not identified by
Protect America until after the
deadline had passed in its "Clarified
Amended Proposed Claim Terms
for Construction, February 10,
2015", served four days after its
"Amended Proposed Claim Terms
for Construction", February 6,
2015.
[Indefinite]
['363 and '077 Patents]
6. "Mobile agent"
['363 and '077 Patents]
7. "Associated with"
['076,'363,'077,'010,and'046
Patents]
['076 and '130 Patents]
Joao argues that"control device"
and "first control device," "second
control device" and "third control
device" should be construed the
same as across all asserted patents.
Protect America argues that the terms
"a first control device," "a second
control device," and "a third control
device" refer to different devices and
should be construed separately.
"Control device" means
"Control device" (first,
second, third)
8.
Also, the asserted patents use the same
terms to refer to different devices in
different claims. In other words, "first
control device" may refer to one device
in one claim, but a different device in
another claim.
"a device or a computer, or that part
of a device or a computer, which
performs an operation, an action, or
a function, or which performs a
number of operations, actions, or
Protect America proposes separate
functions."
means-plus-function constructions for
Each of the "first control device," each asserted claim where the term is
"second control device" and "third used.
control device" is a separate control
device with a purpose, function or [Indefinite]
role that is not identical to the
purpose, function or role of the
other control device(s).
"Processing device" (first,
second, third)
9.
['363, '077, '010, and '046
Patents]
term Protect America argues that the terms
"first "a processing device," "a first
processing device," "second processing device," "a second
processing device" and "third processing device," and "a third
processing device" should be processing device"refer to different
construed the same as across all devices and should be construed
separately.
asserted patents.
argues that the
"processing device" and
Joao
"Processing device" means "a Also, the asserted patents use the same
device or a computer, or that part of terms to refer to different devices in
a device or a computer, which different claims. In other words, "first
performs an operation, an action, or processing device" may refer to one
a function, or which performs a device in one claim, but a different
number of operations, actions, or device in another claim.
functions."
Protect America proposes separate
Each of the "first processing means-plus-function constructions for
device," "second processing each asserted claim where the term is
device" and "third processing used.
device" "is a separate processing
device with a purpose or function or [Indefinite]
role that is not identical to the
purpose, function or role of the
other processing device(s)."
8
10. "A communication device"
['076, '363, and '010 Patents]
Joao argues that the term "a
communication device" should be
construed the same as across all
asserted patents.
Protect America argues that the term
"communication device" refers to
different devices and should be
construed separately.
"a device that transmits and/or Therefore Protect America proposes
receives information."
separate means-plus-function
constructions for each asserted claim
where the term is used. For some
claims, Protect America provides
alternative construction if not meansplus-function.
11. "A video recording device"
['010 and '046 Patents]
"A device that captures video
information on any kind of medium
for any period of time."
[Means-Plus-Function]
Function:
is located at a premises and records
video information
Structure: [Indefinite]
12. "A monitoring device"
[Plain and Ordinary meaning]
[Means-Plus-Function]
['076 and '130 Patents]
In the alternative:
"A device for watching, listening,
observing, keeping track of,
checking, or verifying, a device,
system, or activity, or an operation,
status, or state, of a device, a
system, or an activity, or watching,
listening, observing, keeping track
of, checking, or verifying, an
activity, or a state of an act or
instance, process, or manner of
functioning."
Function: "detecting an occurrence
warranting providing notice to at least
one of an owner, a user, and an
authorized operator"
Structure: [Indefinite]
1.
"A theft of the premises"
Joao argues that this phrase means "the act of stealing from the premises," whereas Protect
America argues that the phrase is indefinite under Nautilus, Inc.
v.
S.Ct. 2120, 2124 (2014) ("[A] patent is invalid for indefiniteness
if its claims, read in light of the
Biosig Instruments, Inc. 134
specification delineating the patent, and the prosecution history, fail to inform, with reasonable
certainty, those skilled in the art about the scope of the invention.").
The court rejects both
arguments and finds the construction of this phrase facile in light of the clear claim language and the
parties' agreed construction of the term "premises."
The parties agree that, in the context of the patents-in-suit, the things that may be called a
"premises" include, inter alia, a "mobile home, mobile building, mobile structure .
.
.
equipment.
machine, [or] rig." All of these items are things ofwhich a theft may occur. The patentee is very
specific in his repeated use of the turn of phrase "of the premises" in the claims. Contrary to the
meaning argued by Joao, the patentee did not use the words "from the premises," "an item from the
premises," or "burglary of the premises." Further, the specification does not support a construction
of this term in a way other than the plain-and-ordinary English meaning of the words as they would
be understood by any English speaker, much less one of skill in the art. The parties agree that
premises may include things of which a theft may occur; therefore the court concludes that the term
is to be given its plain
and ordinary meaning with no further construction required.
2. "A system for detecting a failure in the at least one
of. . ."
Protect America argues that this disputed term should be construed as a means-plus-function
term, and that the claims in which the term appears are indefinite for a lack of corresponding
10
structure in the specification. Joao argues that the term is not appropriately construed as a means-
plus-function term and instead should be defined with two separate definitions: one for "a system
for detecting a failure" and one for "in the at least one of.
.
.
The "means-plus-function" technique of claim drafting is a "convenience" for patentees that
allows the expression of claim limitations in functional terms "without requiring the patentee to
recite in the claims all possible structures" that could be used as a means in the invention. Medical
Instrumentation & Diags. Corp.
U.S.C.
§ 112(f).2
v.
Elekta AB, 344 F.3d 1205, 1211 (Fed. Cir.2003); see also 35
In return for this drafting convenience, patentees pay the price of having to
disclose, in the specification, a corresponding structure for performing the claimed function. See
Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1318 (Fed. Cir. 2012). "If the specification is not clear
as to the structure that the patentee intends to correspond to the claimed function, then the patentee
has not paid the price but is rather attempting to claim in functional terms unbounded by any
reference to structure in the specification." Med. Instrumentation, 344 F .3 d at 1211.
In determining whether means-plus-function construction applies, the Federal Circuit "has
long recognized the importance of the presence or absence of the word 'means." Williamson
Citrix Online, LLC,
F.3d
v.
,No. 2013-1130, 2015 WL 3687459, *6 (Fed. Cir. June 16, 2015).
Where, as here, the disputed claim terms do not include the word "means," there is a rebuttable
presumption that means-plus-function construction does not
apply.3
Id. That presumption can be
The America Invents Act replaced Section 112, paragraph 6 with Section 112(f) for all
patent applications filed after September 15, 2012. Leahy-Smith America Invents Act, Pub. L. No.
112-29, 125 Stat. 284 (2011) (codified in scattered sections of 35 U.S.C.). Because the patents-insuit were all filed prior to this date, the court will refer to the then-applicable Section 112, paragraph
2
6.
In Williamson, the Federal Circuit abandoned its previous characterization of the
presumption as "strong." 2015 WL 3687459 at *7
11
overcome "if the challenger demonstrates that the claim term fails to 'recite sufficiently definite
structure' or else recites 'function without reciting sufficient structure for performing that function."
Id. The essential inquiry is "whether the words
of the claim are understood by persons of ordinary
skill in the art to have a sufficiently definite meaning as the name for structure." Id.
The court examines the entire claim phrase in examining the structure at issue. The claim
recites an apparatus wherein the at least one of a number of different types of previously enumerated
systems or equipment "is a system for detecting a failure in the at least one of4 a premises system,
a premises equipment system, a premises component, a premises device, a premises equipment, and
a premises appliance, wherein the detecting system provides information regarding the failure." A
plain reading of the claim demonstrates that the patentee merely substitutes the word "system" for
the word "means" and then describes the function of the claimed system. The court finds that
"system," as used in the claim, functions merely as a "nonce word or a verbal construct that is not
recognized as the name of structure and is simply a substitute for the term 'means for." Welker
Bearing Co.
v.
PHD, Inc., 550 F.3d 1090, 1096 (Fed.Cir.2008) (quoting Lighting World
v.
BirchwoodLighting, Inc., 382 F.3 d 1354, 1360 (Fed.Cir.2004)). The court further finds no recitation
of sufficient structure within the claim capable of performing the function of "detecting a failure"
in a system or equipment and "providing] information regarding the failure." Nor does the
specification shed any light on the structure of the claim language. The court therefore concludes
that "a system for detecting a failure in the at least one of. . ." does not connote sufficiently definite
structure and must be treated as a means-plus-function limitation under Section 112, paragraph 6.
Although the claims' use of "in the at least one of' strikes the court as a particularly
awkward combination of wordseven for a patent, where awkward phraseology is frequently
encounteredthe language is used consistently in the claims; absent evidence of a typographical
error, the court construes the language as it exists in the claims.
12
Having determined that a means-plus-function construction is appropriate, the court must
perform two steps in construing the claim: "First, the court must determine the claimed function.
Second, the court must identify the corresponding structure in the written description of the patent
that performs the function." Noah Sys., 675 F.3d at 1311. "Structure disclosed in the specification
qualifies as a 'corresponding structure' if the intrinsic evidence clearly links or associates that
structure to the function recited in the claim." Williamson, 2015 WL 3687459, at *10.
Here, the function of the claim is clear from the claim language. The recited function is:
"detecting a failure in the at least one of a premises system, a premises equipment system, a premises
component, a premises device, a premises equipment, and a premises appliance, wherein the
detecting system provides information regarding the failure." The true issue before the court with
regard to this term is whether the specification discloses corresponding structure that performs the
claimed function.
The court, after a thorough examination of the specification and consideration of the parties'
experts' conflicting declarations, concludes that it does not. The specification discusses no structure
that is capable of detecting a failure or performing the function of detecting a failure; the only time
detecting a failure is discussed, the language of the specification mirrors the language used to claim
the function. No structural component is taught or implied. The court finds a complete lack of any
structural component associated with the claimed function and determines that a person of skill in
the art would not comprehendwith reasonable certaintythe specification to support the claimed
function with corresponding structure. Nautilus, 134 S.Ct. at 2124.
Due to this complete lack of structural support in the specification, the court concludes that
the term "a system for detecting a failure in the at least one of. . ." is indefinite.
13
3.
"Performs a systematic check" I "performing a systematic check"
Joao argues that this pair of terms should be given its plain and ordinary meaning; however,
Joao also provides the court with a proposed definition of what it believes that ordinary meaning to
be. Protect America contends that its definition, with language taken directly from the patents'
specification, is the proper definition.
The court first looks to the disputed claim language itself. The three dependent claims where
the disputed terms appear describe either a system or apparatus, each of which "perform[sI a
systematic check of at least one of a status and a state of the at least one of a premises system, a
premises device, a premises equipment, a premises equipment system, and a premises appliance."
Although the phraseology could be more precise, the meaning is readily understood with minimal
parsing. The "systematic check" is performed on all of the components of the system or apparatus,
such components to include a premises system, a premises device, a premises equipment, a premises
equipment system, and a premises device. All components are included because of the use of "the"
in the "the at least one of' clause in the claim. If the clause had read simply "at least one of," the
meaning would not have required all of the components to be checked. As is, however, "the at least
one" implies that there will be at least one, and possibly many, components and they all are checked.
The "systematic check" checks a status or a
stateor bothof the components listed.
This interpretation is bolstered by the specifications' sole reference to a "systematic check:"
The apparatus and method of the present invention may be equipped
with software and hardware for providing a systematic check of any
and all of the apparatus and vehicle systems, including the status or
state of the vehicle equipment systems, equipment, devices and/or
appliances and provide data relating thereto to the user or operator
and/or to the authorized individual(s) at the above-described central
security office.
14
'076 Patent
58:48-55
(emphasis added). This passage confirms that the "systematic check" is
performed on any and all of the system components that are part of the system or apparatus.
The court concludes that the term "performing a systematic check of at least one of a status
and a state of the at least one of a premises system, a premises device, a premises equipment, a
premises equipment system, and a premises appliance" is construed to mean "checking the status,
state, or status and state of any and all of a premises system, a premises device, a premises
equipment, a premises equipment system, or a premises appliance." The court further concludes
that the term "performs a systematic check of at least one of a status and a state of the at least one
of a premises system, a premises device, a premises equipment, a premises equipment system, and
a premises appliance" is construed to mean "checks the status, state, or status and state of any
and all of a premises system, a premises device, a premises equipment, a premises equipment
system, or a premises appliance."
4. "Intelligent agent"
5. "Software agent"
6. "Mobile
agent"
The parties briefed and argued these three terms together, as they appear together in the
patent claims. Protect America asserts that the "agent" terms are indefinite in light of the patents'
specification and the lack of a fixed meaning of these terms in the art at the time of invention. Joao
counters that the patentee incorporated by reference two books that provide clear definitions of the
agent terms, and which would have been known and understood by a person of ordinary skill in the
art at the time of the invention.
15
An external book or publication that is incorporated by reference into a patent becomes part
of the intrinsic record. Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308, 1323
(Fed. Cir. 2010) (citing Telemac Cellular Corp.
v.
Topp Telecom, Inc., 247 F.3d 1316, 1329
(Fed.Cir.2001) ("When a document is 'incorporated by reference' into a host document, such as a
patent, the referenced document becomes effectively part ofthe host document as if it were explicitly
contained therein.")). Although Joao' s proposed definitions appear to be derived primarily from one
of the two incorporated references, the strength of those definitions are directly contradicted by
additional statements contained in both of the references. The court concludes, after a review of the
two incorporated references, that there was no single agreed-upon definition of the "agent" terms
which a skilled artisan would have understoodwith reasonable certaintybased on the terms' use
in the claim language alone. Furthermore, the court concludes that the specification to which the
artisan would turn to resolve any ambiguities in the terms' definition provides no additional guidance
to discern the exact contours of the "agent" terms with any degree of reasonable certainty. Nautilus,
134 S.Ct. at 2124.
For these reasons, the court concludes that the terms "intelligent agent," "software agent,"
and "mobile agent" are indefinite.
7. "Associated with"
Joao argues that the court should not construe this term because it was not timely disclosed
by Protect America. However, Joao provides no explanation of how construing this term would
prejudice Joao, particularly in light of the fact that the term was disclosed nearly two months before
the parties' opening claim-construction briefs were due. In addition, Joao briefed the term and
16
presented argument on the term at the claim-construction hearing. The court OVERRULES Joao's
objection to the inclusion of this term in the court's construction.
The court does, however, agree with Joao that this term is not indefinite. The words
"associated with" are a common English phrase with a clear meaning and connotation, and the fact
that the phrase is used in a patent claim does not somehow render the words ambiguous. A skilled
artisan reading the claims would certainly be able to ascertain, with reasonable certainty, the contours
of each of the claims where "associated with" is used. Moreover, contrary to its arguments, Protect
America cannot sincerely contend that "associated with" is ambiguous to the point of indefiniteness
in light of the parties' agreed definition of "premises," a construction that contains the phrase "parcel
of land associated with the building" (emphasis added).
The court concludes that the term "associated with" is to be given its plain and ordinary
meaning with no further construction required.
8.
"Control device" (first, second, third)
9. "Processing device" (first, second,
third)
10. "A communication device"
11. "A video
recording device"
12. "A monitoring device"
The parties spend the bulk oftheir briefing, as well as the bulk of their argument in the claim-
construction hearing, on the above-listed collection of various "device"
terms.5
The court will
The court notes that the parties each submitted supplemental briefing following the Federal
Circuit's en banc decision in Williamson. The parties' claim-construction positions and arguments
remain substantively unchanged in light of Williamson, and both parties assert that their positions
are correct in light of the clarified standard applied to means-plus-function construction.
17
address the terms together, as the parties largely argued these terms together. At base, Protect
America argues that each of the device terms should be given a means-plus-function construction
due to the patents' consistent use of purely functional claiming, and that each of the terms are
indefinite due to an insufficient disclosure of structure to perform the claimed function. In addition,
Protect America argues that "control device," "processing device," and "a communication device"
should be given individual constructions corresponding to the terms' usage in different claims.
Protect America argues that because the same term is used in various asserted claims in unique ways,
each requires its own construction. For some, but not all, of the device terms, Protect America
proposes an alternative means-plus-function construction in addition to the argument that the term
is indefinite.
Joao primarily argues that Protect America's approach to construction is incorrect. Joao
contends that the terms should be construed identically across the patents, that the terms do not
require means-plus-function constructions, and that the claim language surrounding the occurrence
of each of the terms clearly provides structure and meaning. Joao additionally argues, in a somewhat
obtuse fashion, that the patentee acted as his own lexicographer in defining certain of these terms
through unsolicited "remarks" sent to the United States Patent and Trademark Office ("PlO") during
the prosecution of the '010 Patent, and that these "constructions" carry the day. Joao has argued this
point in other litigations on the same or related patents. See e.g. Joao Control & Monitoring Sys.,
LLC
v.
Digital Playground, Inc., No. 12-cv-6781, Dkt. No. 119 (S.D.N.Y. Aug. 6, 2015). Here,
however, the court need not address Joao's lexicography arguments because the court's conclusions
regarding these terms is based upon an examination and analysis of the claim language itself, as well
as the specification that supports the various claims. The patentee's communications with the PTO,
18
though arguably part of the intrinsic record for certain of the patents-in-suit and part of the extrinsic
record on others, see id., do not substantively change the court's analysis in construing this set of
claim terms in the context of the patents currently before the court.
The court, after undertaking a thorough examination of each of the asserted claims in which
the disputed device terms appear, concludes that, although the claims do not use the term "means
for," each of the claims where the device terms appear employs purely functional claiming without
reciting sufficient structure in the claims to perform the function
described.6
Therefore, the court
agrees with Protect America that each of the device terms, where used in the disputed claims, is
correctly construed as a means-plus-function term. Despite the fact that the claims do not employ
the traditional "means" signal word, the consistent purely functional drafting of the claimsand lack
of corresponding structureindicate to the court that the presumption against means-plus-function
interpretation is overcome; the claims fall under the ambit of Section 112, paragraph 6.
The court further agrees with Protect America that the specification supporting the claims
does not contain a sufficiently definite disclosure of structure to inform with reasonable certainty a
person of skill in the art exactly which structure is capable of performing each function. Nautilus,
134 S.Ct. at 2124. Each claim is reasonably clear, due to the functional nature
of the patentee's
claim language, as to what comprises the unique function of each of the means-plus-function claims.
However, the specification's disclosure of supporting structure is extremely broad and generic.
Despite a through examination of the specification, the court finds no clear description or disclosure
of structure that serves to "pay the price" of employing the sort of functional claiming allowed under
Section 112, paragraph 6. Med. Instrumentation, 344 F.3d at 1211. The competing declarations of
6
See discussion supra, pp. 11-13.
19
the parties' expertsdeclarations that predictably reach opposite conclusionsfurther serve to
highlight that a person of skill in the art could not determine with reasonable certainty the bounds
of any disclosed structure which performs each of the function claimed. The lack of sufficient
structural detail found in the patents-in-suit's specifications is fatal to Joao's claim-construction
position. The court concludes that the device terms are indefinite because of inadequate disclosure
of structure to support the functions claimed.
The court therefore concludes that the terms "control device" (first, second, third),
"processing device" (first, second, third), "a communication device", "a video recording device,"
and "a monitoring device," as used in the disputed asserted claims, are indefinite.
C.
Summary Table ofAdoptedAgreed and Disputed Terms
.-:>
Terni/Phr.se, $
"premises"
[All Patentsl
"located at"
i
Court',s Adopted Construction
a building or a structure and the grounds or
parcel of land associated with the building
or the structure, or a building or structure
or a portion, room, or office, of or in the
building or structure, or a home, mobile
home, mobile building, mobile structure,
residence, residential building, office,
commercial building, commercial office,
structure, equipment, facility, machine, rig,
assembly line, or edifice.
situated at, or situated in, or situated on
[All Patents]
"remote"
separate and apart from, or external from,
or at a distance from or distant from, or not
[All Patents]
located in
!L1J
"video information"
['010 and '046 Patents]
an image or images or a photograph, or data
or information containing, pertaining to, or
representing, an image or images or a
photograph
1.
[plain and ordinary meaning]
"A theft of the premises"
['076, '363, and '077 Patents]
[means-plus-function; indefinite]
2. "A system for detecting a failure in the at
least one of.
.
['076 and '077 Patents]
of at least checking the status, state, or status and state
one of a status and a state of the at least one of of any and all of a premises system, a
3. "performing a systematic check
a premises system, a premises device, a
premises equipment, a premises equipment
system, and a premises appliance"
premises device, a premises equipment, a
premises equipment system, or a premises
appliance
"performs a systematic check of at least one of
a status and a state of the at least one of a
premises system, a premises device, a premises
equipment, a premises equipment system, and
a premises appliance"
checks the status, state, or status and state of
any and all of a premises system, a premises
device, a premises equipment, a premises
equipment system, or a premises appliance
['076 and '130 Patents]
[indefinite]
4. "Intelligent agent"
['363 and '077 Patents]
[indefinite]
5. "Software agent"
['363 and '077 Patents]
21
6.
"Mobile agent"
[indefinite]
['363 and '077 Patents]
7.
"Associated with"
[plain and ordinary meaning]
['076, '363, '077, '010, and '046 Patents]
8.
"Control device" (first, second, third)
[means-plus-function; indefinite]
['076 and '130 Patents]
9. "Processing device" (first, second, third)
[means-plus-function; indefinite]
['363, '077, '010, and '046 Patents]
10.
"A communication device"
[means-plus-function; indefinitej
['076, '363, and '010 Patents]
11. "A video recording device"
[means-plus-function; indefinite]
['010 and '046 Patents]
12. "A monitoring device"
[means-plus-function; indefinite]
['076 and '130 Patents]
22
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
October 21,2015, at 9:30 a.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 October 21, 2015 conference.
SIGNED this
/1day of August, 2015.
LEE'EAKEL
UITED STAT1
23
DISTRICT JUDGE
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