Case 2:11-cv-01292-DWA Document 142 Filed 11/19/12 Page 1 of 42
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF PENNSYLVANIA
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`SIGHTSOUND TECHNOLOGIES, LLC,
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`Plaintiff,
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`v.
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`APPLE, INC.,
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`Defendant.
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`Civil Action No. 2:11-cv-01292-DWA
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`Senior District Judge Donetta W. Ambrose
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`SPECIAL MASTER’S REPORT AND RECOMMENDATION
`ON CLAIM CONSTRUCTION
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`I.
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`RECOMMENDATION
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`It is respectfully recommended that the claim terms of the patents-in-suit be
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`interpreted as set forth in the following report.
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`II.
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`REPORT
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`Plaintiff, Sightsound Technologies, LLC (“Sightsound”), filed this patent infringement
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`action accusing Defendant, Apple, Inc. (“Apple”), of infringing various claims of its U.S. Patent
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`Nos. 5,191,573 (“the ‘573 patent”), 5,675,734 (“the ‘734 patent”) and 5,966,440 (the ‘440
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`patent”) (collectively, “the Patents”). The Patents all stem from and claim priority to a patent
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`application filed on June 13, 1988 (“the critical date”) by Mr. Arthur Hair, which application
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`eventually issued as the ‘573 patent. The ‘734 patent and the ‘440 patent are “continuations”
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`of the ‘573 patent and, as such, the Patents share common technical disclosures and drawings.
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`The Patents have been asserted in prior patent infringement actions before this Court.
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`In Sightsound.com, Inc. v. N2K, Inc. et al., Civil Action No. 2:98-cv-118-DWA (“the N2K case”),
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`this Court adopted Magistrate Judge Benson’s Report & Recommendation on Claim
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`Construction (“the prior R&R”), which construed a significant number of the claim terms and
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`phrases at issue here, in a Memorandum Order dated November 27, 2002 (“the prior Order”)
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`Apple Exhibit 1336 Page 00001
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`Case 2:11-cv-01292-DWA Document 142 Filed 11/19/12 Page 2 of 42
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`(Docket # 90-13).1 The N2K case was subsequently settled by the parties without a final
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`judgment being entered by this Court.
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`Later, in 2004, the Patents were again asserted in Sightsound Technologies, Inc. v. Roxio,
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`Inc. et al., Civil Action No. 2:04-cv-1549-DWA (“the Roxio case”). The Roxio case was eventually
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`stayed while the Patents were reexamined by the U.S. Patent & Trademark Office. The ‘573
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`patent and the ‘734 patent remained unchanged upon completion of the reexamination
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`proceeding while the ‘440 patent emerged with deleted, amended and new claims. After the
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`reexamination proceeding was completed, the parties settled the Roxio case.
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`Returning to the present litigation, pursuant to Local Patent Rule 4.2, on August 8, 2012,
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`the parties filed a Joint Disputed Claim Terms Chart (“JDCT Chart”) (Docket #82) listing those
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`claim terms and phrases the meanings of which are in dispute and therefore need to be
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`construed by the Court. Subsequently, pursuant to LPR 4.3 and the Court’s Case Management
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`Order (Docket #42), the parties filed opening claim construction briefs on September 7, 2012,
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`(Docket ## 90 & 91) and responsive claims construction briefs on September 28, 2012 (Docket
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`## 101 & 104).2 A claim construction hearing (“Markman hearing”) was held before the
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`undersigned on October 12, 2012, during which argument, demonstrative evidence and
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`exhibits were presented by counsel for the parties. Before turning to the construction of the
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`disputed claim terms, however, a number of issues raised by the parties will first be addressed.
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`A. The Prior Order and the Doctrine of Stare Decisis
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`Sightsound contends that this Court previously construed nearly all of the claim terms at
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`issue here in the N2K case, and should defer to the constructions in its prior Order under
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`principles of stare decisis. (Docket #90, pgs. 2 and 7-8)3. To support its position, Sightsound
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`proffers the underlying principles and benefits of stare decisis, contends that Apple has not
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`1 Magistrate Judge Benson’s initial Report & Recommendation, issued on February 8, 2002, is reported at 185
`F.Supp.2d 445 (W.D.Pa. 2002). Magistrate Judge Benson subsequently clarified his initial Report &
`Recommendation on April 2, 2002 (Docket #90-15).
`2 Sightsound included expert declarations and exhibits in its respective opening and responsive claim construction
`briefs (Docket ## 90 & 104). Apple submitted expert declarations (Docket ## 92, 93, 108 & 109) and exhibit
`compilations (Docket ## 94 & 98) as separate docket entries. These declarations and exhibits will be specifically
`identified and referred to, as necessary, below.
`3 Docket citations herein (except for Docket #101, which was filed under seal) are made to the page numbers listed
`in the headers of the ECF-filed versions.
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`2
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`Case 2:11-cv-01292-DWA Document 142 Filed 11/19/12 Page 3 of 42
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`shown that the prior claim constructions are clearly wrong (Id. at pg. 1, fn. 1) and posits that the
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`prior constructions are apt to be more reliable because they were developed some 10 years ago
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`and therefore much closer temporally with what one of ordinary skill in the art would
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`understand those claims terms to mean at the critical date. (Docket #120, Markman Tr. at pg.
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`15, l. 12-22).
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`Apple vigorously contests Sightsound’s position and provides numerous grounds to
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`support its assertion that stare decisis does not obligate this Court to adopt its prior
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`constructions, including: (1) that the prior Order was a non-final, unappealed order and, thus,
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`not a precedential decision (Docket #101, pg. 2); that Apple was not a party to the N2K case
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`and, therefore, did not have an opportunity to litigate its claims (Id. at pg. 2-3.); that new
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`intrinsic evidence, developed subsequent to the prior Order in the reexamination proceeding
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`during the Roxio case, is available for the Court to consider in construing the claim terms in
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`dispute (Id. at pg. 3-4); that controlling claim construction law4 has been developed by the
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`Federal Circuit in the intervening years since the issuance of the prior Order (Id. at pg. 4); and
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`that Sightsound itself is arguing new constructions that differ from those set forth in the prior
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`Order (Id.).
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`The Supreme Court’s Markman decision seemingly encourages deference to prior claim
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`constructions in noting “the importance of uniformity in the treatment of a given patent as an
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`independent reason to allocate all issues of construction to the court.” Markman v. Westview
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`Instruments, Inc., 517 U.S. 370, 390 (1996). Further, the Supreme Court instructed that
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`“treating interpretative issues as purely legal will promote (though it will not guarantee)
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`intrajurisdictional certainty through the application of stare decisis . . . .” (Id. at 390-91). While
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`the Federal Circuit has “recognize[d] the national stare decisis effect that [its] decisions on
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`claim construction have[.]” (Key Pharm. v. Hercon Labs. Corp., 161 F.3d 709, 716 (Fed. Cir.
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`1998), the stare decisis effect of prior district court claim construction decisions is not as
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`straight forward.
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`While a district court’s claim construction is not binding precedent on the same judicial
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`district or the same judge in a different case for purposes of stare decisis, the caselaw indicates
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`4 E.g., Philips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) and Aristocrat Techs. Austrl. PTY Ltd., v. T-Mobile USA,
`Inc., 450 F.3d 1350 (Fed. Cir. 2006)
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`3
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`that district court claim construction decisions will be given careful consideration and
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`considerable deference by later courts unless there is intervening case law or a new party that
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`raises new arguments. See Amgen, Inc. v. F. Hoffmann-LaRoche Ltd., 494 F, Supp. 2d 54, 60 (D.
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`Mass. 2007) (stating that a court is bound to follow a higher court's applicable holding, but
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`need only give consideration and careful analysis to a sister court's decision where applicable to
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`a similar fact pattern); Texas Instruments, Inc. v. Linear Techs. Corp., 182 F. Supp. 2d 580, 589-
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`90 (E.D. Tex. 2002) (expressing concern that refusing to consider a new party's claim
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`construction arguments raised due process concerns and therefore granting the party's request
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`for a Markman hearing); Sears Petroleum & Transport Corp. v. Archer Daniels Midland Co., 2007
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`WL 2156251, at *8, *12 (N.D.N.Y. 2007) (stating that “considerable deference should be given
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`to those prior decisions unless overruled or undermined by subsequent legal developments,
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`including intervening case law” before proceeding to consider arguments that had not been
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`heard during prior claim construction proceedings); KX Industries, L.P. v. PUR Water Purification
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`Products, Inc., 108 F.Supp.2d 380, 387 (D. Del. 2000) (holding that it would defer to its prior
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`claim construction, but only “to the extent the parties do not raise new arguments”);
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`Townshend Intellectual Property, L.L.C v. Broadcom Corp., 2008 WL 171039 (N.D.Cal. Jan.18,
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`2008) (modifying prior claim construction in light of a new party’s arguments); Rambus Inc. v.
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`Hynix Semiconductor Inc., 569 F.Supp.2d 946, 966-67 (N.D.Cal. 2008) (stating that “a fresh look
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`at a claim construction can hone a prior court’s understanding and construction of a patent”
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`and deciding that “this court will initially treat its prior construction as correct, but consider the
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`. . . arguments as to why a construction in [a prior proceeding] should be modified).
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`Based on the caselaw and the principles underlying the doctrine of stare decisis, the
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`undersigned declines to either blindly adopt or wholly ignore the claim constructions set forth
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`in the prior R&R and adopted in the prior Order. Rather, the undersigned will carefully consider
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`and give reasoned deference to the prior claim constructions to the extent that their viability is
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`not impacted by intervening caselaw, new evidence or new arguments raised by the parties.
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`This approach will balance the competing and compelling interests of promoting efficiency,
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`uniformity and predictability in construing the claims terms of the Patents, ensuring the legal
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`correctness of claim constructions based on intervening caselaw or new evidence or arguments,
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`4
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`and providing Apple -- a party who did not participate in the N2K case – an opportunity to be
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`heard in this proceeding.
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`B. Objections to Intrinsic and Extrinsic Evidence
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`The parties raise various objections to citations to intrinsic and/or extrinsic evidence in
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`the claim construction briefs. The undersigned will address those objections below.
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`1. Apple’s Objection to Sightsound’s Citation to Intrinsic Evidence
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`Apple contends that Sightsound has violated Local Patent Rule 4.2 by citing to intrinsic
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`evidence that it did not present in the JDCT Chart or in its appendix of intrinsic evidence (e.g.,
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`Docket #81). (Docket #101, pg. 5 and Docket #107, pg. 1). Apple correctly points out that
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`Sightsound cites to no prosecution history in the JDCT Chart and, for all the “non-means” claims
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`in dispute, cites only to the patent claims themselves (and not to other portions of the Patents’
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`specification), yet refers to and relies on portions of the prosecution history and the Patents’
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`specification in its briefs. (Id.)
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`Sightsound responds that it notified Apple in July 2012 (in Sightsound’s Identification of
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`Proposed Claim Terms and Phrases for Construction, Docket #90-3) that it intended to rely
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`upon the Court’s prior Order in the N2K case and that, in the JDCT Chart, Sightsound cited to
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`the Patents and to specific portions of the prior R&R, “which contained discussion of applicable
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`intrinsic evidence.” (Docket #121, pg. 2-3 and 4). Further, Sightsound maintains that it
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`provided Apple with a complete disclosure of its positions and that every item of intrinsic
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`evidence cited in its opening brief “was previously disclosed either by Sightsound or Apple, and
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`Sightsound was entitled to cite to and discuss evidence identified by Apple in addressing
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`Apple’s positions in its Opening Brief.” (Id. at pg. 2 and 4). Sightsound asserts that “no purpose
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`would have been served by re-identifying each item of intrinsic evidence in the Joint Chart
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`under these circumstances.” (Id. at pg. 2).
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`Sightsound’s argument misses the point. LPR 4.2 states, in relevant part, that “the
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`parties shall prepare and file a Joint Disputed Claim Terms Chart listing claim terms and phrases
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`and corresponding intrinsic evidence for each disputed claim term and phrase, asserted by each
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`party. The Joint Disputed Claim Terms Chart shall be in the format shown in “Appendix LPR
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`4.2”.” (LPR 4.2) (emphasis added.). LPR 4.2 states plainly that the corresponding intrinsic
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`evidence for each disputed claim term and phrase must be listed in the JDCT Chart, and
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`provides a form chart that includes a column for just that listing of intrinsic evidence. LPR 4.2
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`does not suggest that a party can satisfy its obligation to cite to intrinsic evidence by relying on
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`the other party’s citation or by referring to an extrinsic document or information source, such
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`as the correspondence between counsel or the prior R&R5 relied on by Sightsound, that itself
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`contains references to intrinsic evidence. Sightsound’s position would turn the purpose of LPR
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`4.2 on its head and allow a party to avoid having to provide its adversary with advance notice of
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`the specific intrinsic evidence on which it intends to rely to advance its claim construction
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`positions.
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`Having determined that Sightsound violated LPR 4.2, the question now turns to the
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`remedy to be applied. The Local Patent Rules are seemingly silent in this regard. Apple
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`requests that the intrinsic evidence not included by Sightsound in the JDCT Chart (and related
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`argument) be stricken from Sightsound’s briefing. (Docket #101, pg. 6 and Docket #107, pg. 1).
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`Sightsound essentially claims “no harm, no foul” – that Apple has not been prejudiced or
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`surprised because it was well aware of Sightsound’s positions on claim construction. (Docket
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`#121, pg. 4).
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`While Sightsound’s conduct here is not acceptable, the undersigned does not believe
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`that striking the noted intrinsic evidence from Sightsound’s briefing is the appropriate or
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`correct remedy in this case.6 Apple has not been prejudiced to such an extent that warrants
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`exclusion of the intrinsic evidence. Certainly, Apple cannot refute that it has been aware of the
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`intrinsic evidence – the Patents and their prosecution history – and its significance to claim
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`construction since at least the beginning of this case. Likewise, Apple has been on notice since
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`at least as early as July 2012 that Sightsound was at least in part relying on the prior R&R for its
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`proposed claim constructions in this case.
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`5 Sightsound’s citations to specific portions of the prior R&R are not even listed in the “Sightsound’s Citation to
`Intrinsic Evidence” column of the JDCT Chart. Rather, the prior R&R is cited to at numerous points in the
`“Sightsound’s Proposed Construction” column. (Docket #82).
`6 The District Court may of course consider other remedies that may be available outside the scope of the
`undersigned’s appointment.
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`Most importantly, however, is the fact that the intrinsic evidence is the primary
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`evidence used to properly construe the claims of a patent. Given that exclusion of intrinsic
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`evidence could result in improper or erroneous claim constructions, and in view of the absence
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`of controlling precedent declaring that intrinsic evidence can be stricken for a party’s failure to
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`comply with local court rules, the undersigned declines to impose Apple’s requested remedy to
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`strike the noted intrinsic evidence from Sightsound’s briefing.
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`2. Apple’s Objection to Sightsound’s Proposed §112 ¶6 Constructions
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`Apple contends that Sightsound violated both LPR 3.2 and LPR 4.2 by failing to identify
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`the function and corresponding structure disclosed in the Patents for those claim terms that
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`Sightsound believes are governed under 35 U.S.C. §112 ¶6 (so-called ‘means plus function’
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`claims).7 (Docket #91, pg. 31-32 and Docket #101, pg. 5-6). Apple’s argument is not well taken.
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`LPR 4.2 requires, in relevant part, that the parties shall list in the JDCT “the claim terms
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`and phrases and corresponding intrinsic evidence for each disputed claim term and phrase,
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`asserted by each party.” In stark comparison to this language, LPR 4.3 requires that a party’s
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`“Opening Claim Construction Brief shall also, for each element which the party contends is
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`governed by 35 U.S.C. §112(6), describe the claimed function of that element and identify the
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`structure(s), act(s), or material(s) corresponding to that element.”
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`The specific requirement of LPR 4.3 regarding the “function and corresponding
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`structure” of disputed “means plus function” claims could have been included in LPR 4.2, but
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`was not. Given the difference in the language between LPR 4.2 and 4.3, the undersigned
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`declines to rewrite or interpret the language of LPR 4.2 to require the specific identification of
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`function and corresponding structure set forth in LPR 4.3.
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`7 Sightsound’s purported violation of LPR 3.2 will not be addressed here because it relates to Sightsound’s
`infringement contentions (not claim construction), and is therefore outside the scope of the undersigned’s
`appointment.
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`3. Apple’s Objections to Sightsound’s Identification of Extrinsic Evidence
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`Apple also objects to and seeks to strike Sightsound’s offer of any extrinsic evidence for
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`its purported failure to serve and file an identification of such evidence pursuant to LPR 4.3.
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`(Docket #107, pg. 1). Apple’s argument is without merit.
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`LPR 4.3 requires that “[a]t the same time the party services its Opening Claim
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`Construction Brief, that party shall serve and file an identification of extrinsic evidence,
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`including testimony of lay and expert witnesses the party contends supports its claim
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`construction.”
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`In this case, Sightsound served and filed witness declarations and other extrinsic sources
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`of evidence as separate attachments to its Opening Claim Construction Brief. (See Docket
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`##90-1 – 90-16). While Sightsound did not serve and file its extrinsic evidence in a separate
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`document as Apple did (see Docket #94), LPR 4.3 does not appear to specifically require that
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`extrinsic evidence be submitted in a separate document in order to be properly considered in
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`the claim construction analysis. In any event, Apple does not and cannot claim to be prejudiced
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`by Sightsound’s timely filing of the extrinsic evidence as attachments to its Opening Claim
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`Construction Brief.8
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`4. Sightsound’s Objections to Apple’s Extrinsic Evidence
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`Sightsound objects to a majority of Apple’s cited extrinsic evidence “because (1) they
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`are not contemporaneous with the invention or (2) contradict the unambiguous terms of the
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`specification.” (Docket # 104, pg. 2).
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`Apple responds that (1) Sightsound has not cited any authority for barring post-dated
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`(i.e., after the critical date) extrinsic evidence from consideration in the claim construction
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`analysis and (2) its extrinsic evidence reinforces Apple’s correct claim constructions, which are
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`consistent with and supported by the intrinsic evidence.9 (Docket #122, pg. 1 and 5).
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`8 Magistrate Judge Hay appears to have reached the same conclusion in Copper Innovations Grp., LLC v. Nintendo
`Co., 2009 WL 8080100, at *31 n. 17 (W.D. Pa. Oct 6, 2009).
`9 Sightsound objected to Apple’s Response (Docket #122) because (1) the Court did not instruct Apple to file any
`response during the Markman hearing on October 12, 2012, and (2) LPR 4.3 does not contemplate or authorize a
`response filing. The undersigned has decided to entertain Apple’s Response because he believes the transcripts of
`the technology tutorial (held on October 11, 2012) and the Markman hearing are ambiguous as to whether Apple
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`The Federal Circuit has confirmed that courts are free to consider extrinsic evidence
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`because it “can help educate the court regarding the field of the invention and can help the
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`court determine what a person of ordinary skill in the art would understand claim terms to
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`mean . . ..” Philips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en banc). Nevertheless,
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`the Federal Circuit has cautioned that extrinsic evidence is generally less reliable than the
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`intrinsic evidence in construing claim terms. Id. Thus, a court should discount any extrinsic
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`evidence that contradicts the claim construction supported by the intrinsic evidence (the claims
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`themselves, the written description and the prosecution history). Id. (citations omitted).
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`Sightsound has cited no authority for a per se rule that post-dated extrinsic evidence
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`should not be considered for purposes of claim construction. In fact, both Sightsound and
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`Apple cite to post-dated extrinsic evidence – and each object to the other’s proffer of that
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`evidence.
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`Further, Sightsound’s request for the Court not to consider Apple’s extrinsic evidence
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`can be addressed during the claim construction analysis, if in fact the noted extrinsic evidence
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`even is considered by the undersigned in rendering a recommendation. Considering the
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`safeguards articulated by the Federal Circuit, the undersigned does not believe that a wholesale
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`rejection of the noted extrinsic evidence cited by Apple is warranted. Rather, the undersigned
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`will use his discretion in considering such evidence, if there is a need to do so in the claim
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`construction analysis.
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`C. Construction of the Disputed Claim Terms
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`1. Introduction to the Patents
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`The Patents here are directed to “a system and associated method for the electronic
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`sales and distribution of digital audio or video signals, and more particularly, to a system and
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`method which a user may purchase and receive digital audio or video signals from any location
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`which the user has access to telecommunication lines.” (Docket #81-3, pg. 5, col. 1, l. 15-21).
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`requested or preserved a right to file a Response, and further because LPR 4.3 does not appear to specifically
`address the filing of responses to objections to extrinsic evidence when, as here, the briefing schedule required the
`filing of both responsive claim construction briefs to occur contemporaneously.
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`In describing the sales, distribution and transferability of music at or prior to the critical
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`date, the named inventor of the Patents, Mr. Hair, discussed a number of drawbacks to then-
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`current music media: records, tapes and compact discs (collectively, “the prior art media”). (Id.
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`at col. 1-2). From a capacity standpoint, Mr. Hair noted that the prior art media was limited in
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`the amount of music that can be stored on each unit. (Id. at col. 1, l. 27-29). The prior art
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`media also limited a user’s ability to play, in a user-selected sequence, songs from different
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`albums. (Id. at l. 39-44). From a sales and distribution standpoint, Mr. Hair described the need
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`to physically transfer the prior art media from the manufacturing facility to the wholesale
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`warehouse to the retail warehouse to the retail outlet prior to final purchase, resulting in lag
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`time between music creation and marketing as well as the resulting transfer and handling costs.
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`(Id. at l. 45-51). Mr. Hair also noted that, until the invention of Digital Audio Music (music
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`converted into binary code (a series of ones and zeros)), as used on compact discs, distortion-
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`free transfer of the music from records and tapes to a stereo system was virtually impossible.
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`(Id. at l. 55-63).
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`Summarizing the drawbacks to the prior art media and their sale and distribution,
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`Mr. Hair explained that the “inflexible form in which the songs are purchased by an end user,
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`and the distribution channels of the songs, requires the end user to go to a location to purchase
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`the songs, and not necessarily be able to purchase only the songs desired to be heard, in a
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`sequence the end user would like to hear them.” (Id. at col. 2, l. 14-20).
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`In subsequent passages of the Patents, Mr. Hair explains that his invention provides “a
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`new and improved methodology/system of electronic sales, distribution, storage, manipulation,
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`retrieval, playback and copyright protection of Digital Audio Music.” (Id. at col. 2, l. 23-44). Mr.
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`Hair describes a number of the benefits of his invention, including the high speed transfer of
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`Digital Audio Music for storage onto a hard disk, the recall of stored music for playback as
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`selected or programmed by the user, the sorting of stored music based on different criteria,
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`such as music category, artist, or user’s favorite songs, and the random playback of music based
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`on the user’s selection. (Id. at l. 44-61).
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`With respect to transfer or distribution of music, Mr. Hair discloses that Digital Audio
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`Music can be transferred from a source authorized by the copyright holder to sell and distribute
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`the copyrighted materials (i.e., the Digital Audio Music) (Id. at pg. 5, l. 65-67 and pg. 3, Figure
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`1). Mr. Hair further explains that the “electronic sales and distribution of the music can take
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`place via telephone lines onto a hard disk” and that his “new methodology/system of music
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`sales and distribution will reduce the lag time between music creation and music
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`marketing . . . . ” (Id. at pg. 6, l. 8-12).
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`2. The Claims of the Patents
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`Sightsound contends that eighty-four (84) claims of the Patents are infringed by various
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`Apple devices.10 (Docket #90, pg. 10). A representative asserted claim from each of the Patents
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`is summarized below.
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`Claim 1 of the ‘573 patent relates to a method of transmitting a desired digital audio
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`signal from a first party to a second party, including the steps of: (1) transferring money
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`electronically via a telecommunications line to the first party from the second party;
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`(2) electronically connecting via a telecommunications line a first memory of the first party with
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`a second memory of the second party so that the desired digital audio signal can pass
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`therebetween; (3) transmitting the desired digital audio signal from the first memory to the
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`second memory; and (4) storing the digital signal in the second memory. (Docket #81-1, pg. 7,
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`col. 6, l. 4-24).
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`
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`Claim 4 of the ‘734 patent relates to a system for transferring digital audio signals,
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`including: (1) a first party control unit having a hard disk including desired digital audio signals,
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`a sales random access memory chip electronically connected to the first party hard disk, and
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`means for electronically selling the desired digital audio signals; (2) a second party control unit
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`having a control panel, a second memory connected to the control panel, and means for
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`playing the desired digital audio signals connected to the second memory and the control
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`panel; and (3) telecommunications lines connected to the first party control unit and the
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`second party control unit through which the electronic sales and transfer of the desired digital
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`audio signals occur after the desired digital audio signals are sold to the second party by the
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`first party. (Docket #81-2, pg. 9, col. 9, l. 41 to col. 10, l. 6).
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`10 Sightsound provided an appendix of the asserted claims of the Patents in its Opening Claim Construction Brief
`(Docket #90, pg. 59-79).
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`11
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`Page 00011
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`Case 2:11-cv-01292-DWA Document 142 Filed 11/19/12 Page 12 of 42
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`
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`Claim 23 of the ‘440 patent relates to a system for transmitting desired digital audio
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`signals stored on a first memory of a first party to a second memory of a second party,
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`including: (1) means for transferring money electronically via telecommunications lines from
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`the second party to the first party, the second memory including a non-volatile storage portion
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`that is not a tape or CD; (2) means for connecting electronically via telecommunication lines the
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`first memory with the second memory such that the desired digital audio signals can pass
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`therebetween; (3) means for transmitting the desired digital audio signals from the first
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`memory with a transmitter to a receiver having the second memory of the second party;
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`(4) means for storing the digital audio signals in the non-volatile storage portion of the second
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`memory; and (5) means for playing the digital audio signals stored in the non-volatile storage
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`portion of the second memory.
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`
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`In the JDCT, the parties filed a list of forty (40) disputed claim terms or phrases (or
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`groups of similar claim terms or phrases) for construction, including many “means plus
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`function” claims terms that are governed by 35 U.S.C. §112, ¶6.11 (Docket #82). Before turning
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`to the construction of the disputed claim terms, the law applicable to claim construction will be
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`briefly reviewed.12
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`
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`3. The Law of Claim Construction
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`Claim construction is a matter of law for the Court to decide. Markman v. Westview
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`Instr., Inc., 517 U.S. 370 (1996). “[T]he words of a claim ‘are generally given their ordinary and
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`customary meaning,’ [which] . . . is the meaning that the [words] would have to a person of
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`ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing
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`date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005)
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`(en banc) (internal citations omitted). When construction is necessary, one considers claim
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`language itself, other claims in the patent, the specification and the prosecution history. Id. at
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`11 The parties dispute whether all the disputed claim terms reciting “means” language are governed by 35 U.S.C.
`§112, ¶6.
`12 The parties do not seem to seriously contest the characteristics and knowledge of a person having ordinary skill
`in the art (“PHOSITA”) to which the subject matter of the claims pertain. (Docket #90-1, pg. 3-4, and Docket # 93,
`pg. 5). Therefore, for this case, the PHOSITA is a person having an undergraduate degree in electrical engineering
`or computer science and/or approximately 2-4 years of industry experience in the design of systems and methods
`for storing and transmitting digital information.
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`
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`12
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`Page 00012
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`Case 2:11-cv-01292-DWA Document 142 Filed 11/19/12 Page 13 of 42
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`1313-18. Because of their context, “[t]he claims themselves provide substantial guidance as to
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`the meaning of particular claim terms.” Id. at 1314.
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`
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`The court looks to the words of the claims themselves, both asserted and non-asserted,
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`to define the scope of the patented invention. Id. at 1313. Because claim terms are normally
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`used consistently throughout the patent, the usage of a term in one claim can often illuminate
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`the meaning of the same term in other claims. Id. at 1314. Differences among claims can also
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`be a useful guide in understanding the meaning of particular claim terms. Id. “For example, the
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`presence of a dependent claim that adds a particular limitation gives rise to the presumption
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`that the limitation in question is not present in the independent claim.” Id. at