Case 6:11-cv-00622-LED-ZJH Document 196 Filed 07/25/13 Page 1 of 64 PageID #: 8462
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`
`ROY-G-BIV CORP.
`§
`§
`
`§
`v.
`§
`
`ABB, Ltd., ABB INC., MEADWESTVACO §
`TEXAS, LP, and MEADWESTVACO
`§
`CORP.
`§
`
`§
`
`§
`ROY-G-BIV Corp.
`§
`
`§
`v.
`§
`
`§
`HONEYWELL INTERNATIONAL, INC. §
`and MOTIVA ENTERPRISES, LLC
`§
`
`§
`
`§
`ROY-G-BIV CORP.
`§
`
`§
`v.
`§
`
`§
`SIEMENS CORP., et al.
`§
`
`
`
`
`
`
`NO. 6:11-CV-622 (Lead Case)
`
`NO. 6:11-CV-623
`
`NO. 6:11-CV-624
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`CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER
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`These cases are assigned for trial to the Honorable Leonard Davis, United States Chief
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`District Judge, and are referred to the undersigned United States Magistrate Judge for claim
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`construction purposes, including Defendants’ Motion for Summary Judgment of Indefiniteness.
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`(Doc. No. 158.) On June 19, 2013, the Court held a hearing to determine the proper construction
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`of the claim terms in U.S. Patent Nos. 6,513,058; 6,516,236; 6,941,543; and 8,073,557, and to hear
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`argument on the Defendants’ Motion for Summary Judgment. See (Transcript, Doc. No. 183.)
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`After considering the arguments made by the parties at the hearing and in the parties’ claim
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`construction and summary judgment briefing (Doc. Nos. 151, 157, 167, 168, 169, 171, 174, 175),
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`the Court adopts the constructions set forth below. See also Appendix A.
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`Also before the Court is the Defendants’ Joint Motion for Summary Judgment of
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`Indefiniteness. (Doc. No. 168.) While the terms underlying that Motion are construed in this
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`Order, the undersigned will also enter a separate report recommending that Chief Judge Davis
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`deny the Defendants’ Motion.
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`TABLE OF CONTENTS
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`I. BACKGROUND ..............................................................................................................................4
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`II. APPLICABLE LAW .......................................................................................................................5
` A. General Principles of Claim Construction .........................................................................5
` B. Effect of Prior Claim Construction .....................................................................................7
` C. Indefiniteness ......................................................................................................................8
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`III. CONSTRUCTION OF AGREED UPON TERMS ..............................................................................10
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`IV. CONSTRUCTION OF DISPUTED TERMS .....................................................................................11
` A. “Motion Control” .............................................................................................................11
` B. “Motion Control Operations” ..........................................................................................12
` C. “Primitive Operations” and “Non-Primitive Operations” ..............................................15
` D. “Motion Control Device” .................................................................................................28
`E. “Application Program” ....................................................................................................30
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`F. “Driver Functions” ...........................................................................................................35
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` G. “Core Driver Function” and “Extended Driver Function” ............................................39
` H. “Network” ........................................................................................................................45
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`V. CONSTRUCTION OF DISPUTED MEANS-PLUS-FUNCTION TERMS ...............................................46
` A. “Means for Determining a Driver Unit System Employed by the Software Drivers” .....48
` B. “Means for Converting an Application Unit System” ......................................................51
` C. “Means for Generating Command Data Strings” ............................................................53
` D. “Means for Parsing Response Data Strings”...................................................................55
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`E. “Stream Control Means for Communicating the Control Commands” ...........................58
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`VI. CONCLUSION ...........................................................................................................................61
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`APPENDIX A: COURT’S CONSTRUCTION OF CLAIM TERMS .............................................................62
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`I. Background
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`The Plaintiff Roy-G-Biv Corp. (“RGB”) sued the following Defendants for infringement
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`of U.S. Patent Nos. 6,513,058 (“the ‘058 Patent”), 6,516,236 (“the ‘236 Patent”), 6,941,543 (“the
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`‘543 Patent”), and 8,073,557 (“the ‘557 Patent”): ABB, Inc., Honeywell International, Inc.,
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`MeadWestvaco Corp., MeadWestvaco Texas, LP, Motiva Enterprises, LLC, Siemens AG, Inc.,
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`Siemens Corp., Siemens Industry, Inc., Siemens Product Lifecycle Management Software, Inc.,
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`and Siemens Product Lifecycle Management Software II (US), Inc.1 RGB asserts claims 1–5 of
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`the ‘058 patent, claims 1–10 of the ‘236 patent, claims 5–16 of the ‘543 patent, and claims 16–30
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`and 46–59 of the ‘557 patent.
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`The RGB Patents relate generally to “motion control” technology, in which the operation
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`of motorized mechanical devices (“motion control devices”) is controlled with software. More
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`specifically, the RGB Patents are directed to a system that allows an application program to
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`communicate with and control any one of a group of supported motion control devices that may
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`speak different “languages.” RGB describes the system in a three-tiered manner, involving an
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`application program that generates control commands, “middleware” that translates control
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`commands into a language understandable by software drivers, and device-specific software
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`drivers that directly communicate with and control particular motion control devices.
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`RGB previously asserted three of the RGB Patents in ROY-G-BIV Corp. v. Fanuc Ltd.,
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`(“Fanuc”), No. 2:07-CV-418 (E.D. Texas). In that case, Judge David Folsom construed many of
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`the same patent terms that are at issue in the present action. See Fanuc, No. 2:07-CV-418, 2009
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`U.S. Dist. LEXIS 127428 (E.D. Tex. Aug. 25, 2009) (construing claim terms in the ‘058, ‘236, and
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`‘543 Patents as well as U.S. Patent No. 5,691,897).
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`1. This order refers to the four asserted patents collectively as “the RGB Patents” and all defendants
`collectively as “the Defendants.”
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`A. General Principles of Claim Construction
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`II. Applicable Law
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`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to
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`which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312
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`(Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc.,
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`381 F.3d 1111, 1115 (Fed. Cir. 2004)). Courts generally give claim terms their ordinary and
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`customary meaning as understood by one of ordinary skill in the art at the time of the invention.
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`Id. at 1312–13. To determine the meaning of claims, courts begin by examining the intrinsic
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`evidence. Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group, Inc., 262 F.3d 1258, 1267
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`(Fed. Cir. 2001); see also Phillips, 415 F.3d at 1313–14; C.R. Bard, Inc. v. U.S. Surgical Corp.,
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`388 F.3d 858, 861 (Fed. Cir. 2004). The intrinsic evidence includes the claims themselves, the
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`specification, and the prosecution history. Bell Atl. Network Servs., Inc., 262 F.3d at 1267; see
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`also Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at 861.
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`“[T]he claims themselves provide substantial guidance as to the meaning of particular
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`claim terms.” Phillips, 415 F.3d at 1314. First, a term’s context in the asserted claim can be
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`highly instructive. Id. Other asserted or unasserted claims may likewise provide guidance on a
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`term’s meaning since claim terms are typically used consistently throughout a patent. Id.
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`Differences among claims can also assist in understanding a term’s meaning. Id. For example,
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`when a dependent claim adds a limitation to an independent claim, it is presumed that the
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`independent claim does not include the limitation. Id. at 1314–15.
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`Claims must also be read in view of the specification. Id. at 1315 (quoting Markman v.
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`Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)). “[T]he specification
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`‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the
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`single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics Corp. v.
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`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). This is true because a patentee may
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`define her own terms, give a claim term a different meaning than the term would otherwise
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`possess, or disclaim or disavow the claim scope. Id. at 1316. In these situations, the inventor’s
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`lexicography governs. Id. Further, the specification may serve to resolve ambiguous claim
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`terms “where the ordinary and accustomed meaning of the words used in the claims lack sufficient
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`clarity to permit the scope of the claim to be ascertained from the words alone.” Teleflex, Inc. v.
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`Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). However, “particular embodiments
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`and examples appearing in the specification will not generally be read into the claims.” Comark
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`Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v.
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`Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)) (internal quotation marks
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`omitted); see also Phillips, 415 F.3d at 1323.
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`The prosecution history is another resource that courts should employ when defining claim
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`terms. Phillips, 415 F.3d at 1317. The prosecution history “consists of the complete record of
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`the proceedings before the PTO and includes the prior art cited during the examination of the
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`patent.” Id. “Like the specification, the prosecution history provides evidence of how the PTO
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`and the inventor understood the patent.” Id.; see also Diagnostics, Inc., v. LifeScan, Inc., 381
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`F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the specification, a patent applicant may
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`define a term in prosecuting a patent.”). But, because it represents “an ongoing negotiation
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`between the PTO and the applicant, rather than the final product of that negotiation,” the
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`prosecution history often lacks clarity and proves less useful for claim construction purposes than
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`the specification. Phillips, 415 F.3d at 1317. The well-established doctrine of prosecution
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`disclaimer “preclud[es] patentees from recapturing through claim interpretation specific meanings
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`disclaimed during prosecution.” Omega Eng’g Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed.
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`Cir. 2003).
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`Although extrinsic evidence can be useful, it is “less significant than the intrinsic record in
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`determining the legally operative meaning of claim language.” Phillips, 415 F.3d at 1317
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`(quoting C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)) (internal
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`quotation marks omitted). Extrinsic evidence “consists of all evidence external to the patent and
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`prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.”
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`Id. (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc))
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`(internal quotation marks omitted). Technical dictionaries and treatises may help a court
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`understand the underlying technology and the manner in which one skilled in the art might use
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`claim terms, but such sources may also provide overly broad definitions or may not be indicative
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`of how the term is used in the patent. See id. at 1318. Similarly, expert testimony may aid a
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`court in understanding the underlying technology and determining the particular meaning of a term
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`in the pertinent field, but an expert’s conclusory, unsupported assertions as to a term’s meaning is
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`entirely unhelpful to a court. Id. Generally, extrinsic evidence is “less reliable than the patent
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`and its prosecution history in determining how to read claim terms.” Id.
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`B. Effect of Prior Claim Construction
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`As indicated above, many of the claim terms at issue were previously construed by Judge
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`Folsom in a prior case where the Plaintiff asserted three of the patents in suit. Prior claim
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`construction proceedings involving the same asserted patents are “entitled to reasoned deference
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`under the broad principals of stare decisis and the goals articulated by the Supreme Court in
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`Markman, even though stare decisis may not be applicable per se.” Maurice Mitchell
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`Innovations, LP v. Intel Corp., No. 2:04-CV-450, 2006 WL 1751779, at *4 (E.D. Tex. June 21,
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`2006) (Davis, J.). However, previous constructions are not compelling or binding: a court still
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`conducts an independent evaluation during claim construction proceedings. See, e.g., Negotiated
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`Data Solutions, Inc. v. Apple, Inc., No. 2:11-CV-390, 2012 WL 6494240, at *5 (E.D. Tex. Dec.
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`13, 2012) (Gilstrap, J.); Burns, Morris & Stewart Ltd. P’ship v. Masonite Int’l Corp., 401 F. Supp.
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`2d 692, 697 (E.D. Tex. 2005) (Clark, J.); Tex. Instruments, Inc. v. Linear Techs. Corp., 182 F.
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`Supp. 2d 580 (E.D. Tex. 2002) (Folsom, J.).
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`C. Indefiniteness
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`Defendants also contend that some claims at issue are invalid for indefiniteness. A patent
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`is presumed valid; therefore, the party seeking to invalidate a patent must overcome that
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`presumption. 35 U.S.C. § 282; Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 2243 (2011).
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`The presumption places the burden on the challenging party to prove, by clear and convincing
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`evidence, that the patent is invalid. Microsoft Corp., 131 S. Ct. at 2243–52; United States
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`Gypsum Co. v. Nat’l Gypsum Co., 74 F.3d 1209, 1212 (Fed. Cir. 1996). Accordingly, close
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`questions of indefiniteness “are properly resolved in favor of the patentee.” Exxon Research &
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`Eng’g Co. v. United States, 265 F.3d 1371, 1380 (Fed. Cir. 2001).
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`Claims must particularly point out and distinctly claim the patentee’s invention. 35
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`U.S.C. § 112, ¶ 2 (2006) (“The specification shall conclude with one or more claims particularly
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`pointing out and distinctly claiming the subject matter which the applicant regards as his
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`invention.”). “Because the claims perform the fundamental function of delineating the scope of
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`the invention, the purpose of the definiteness requirement is to ensure that the claims delineate the
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`scope of the invention using language that adequately notifies the public of the patentee’s right to
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`exclude.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005)
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`(citations omitted). “The statutory requirement of particularity and distinctness in claims is met
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`only when [the claims] clearly distinguish what is claimed from what went before in the art and
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`clearly circumscribe what is foreclosed from future enterprise.” Id. (quoting United Carbon Co.
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`v. Binney & Smith Co., 317 U.S. 228, 236 (1942)) (internal quotation marks omitted).
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`Nonetheless, the definiteness requirement does not demand absolute clarity: only those claims
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`“not amenable to construction” or “insolubly ambiguous” are indefinite. Id.; see also Halliburton
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`Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1250 (Fed. Cir. 2008). A claim is insolubly
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`ambiguous when a person of ordinary skill in the art could not determine the bounds of the claims.
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`Halliburton Energy Servs., Inc., 514 F.3d at 1249.
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`“A determination of indefiniteness is a legal conclusion that is drawn from the court’s
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`performance of its duty as the construer of patent claims.” Atmel Corp. v. Info. Storage Devices,
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`Inc., 198 F.3d 1374, 1378 (Fed. Cir. 1999) (quoting Personalized Media Commc’ns, LLC v. Int’l
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`Trade Comm’n, 161 F.3d 696, 705 (Fed. Cir. 1998)) (internal quotation marks omitted).
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`“Indefiniteness, therefore, like claim construction, is a question of law . . . .” Id. When
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`determining indefiniteness, the general principles of claim construction described above apply.
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`Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010). To rule “on a claim
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`of patent indefiniteness, a court must determine whether those skilled in the art would understand
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`what is claimed when the claim is read in light of the specification.” Bancorp Servs., L.L.C. v.
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`Hartford Life Ins. Co., 359 F.3d 1367, 1372 (Fed. Cir. 2004).
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`“[A] difficult issue of claim construction does not ipso facto result in a holding of
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`indefiniteness.” Datamize, 417 F.3d at 1347 (citing Exxon Research & Eng’g Co. v. United
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`States, 265 F.3d 1371, 1375 (Fed. Cir. 2001)). “If the meaning of the claim is discernible, even
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`though the task may be formidable and the conclusion may be one over which reasonable persons
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`will disagree,” the claim is sufficiently clear to avoid invalidity on indefiniteness grounds.
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`Exxon, 265 F.3d at 1375. By finding a claim indefinite only when reasonable efforts at claim
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`construction prove futile, a court accords respect to the statutory presumption of validity, protects
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`the inventive contribution of patentees, and follows the requirement that clear and convincing
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`evidence be shown to invalidate a patent. Datamize, 417 F.3d at 1347–48.
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`III. Construction of Agreed Upon Terms
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`The parties agreed to the construction of the following terms:
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`Terms
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`Agreed Definition
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`“control
`commands”
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`“motion control
`component”/
`“motion
`component”
`“component
`function”
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`Claims in Which
`Term Appears
`“code associated with a hardware device or
`“driver code” ‘236 Patent, claims 1–4, 6; ‘058
`Patent, claims 1, 3, 4; ‘557 Patent,
`group of related hardware devices, which
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`claims 16, 46; ‘543 Patent, claims 1, helps generate commands necessary to
`5, 14
`perform motion control operations
`associated with at least some driver
`functions”
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`‘236 Patent, claims 1, 4, 5, 8, 9; ‘058 “command codes in hardware language,
`Patent, claims 1, 3, 4; ‘557 Patent,
`which instruct a motion control device to
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`claims 16, 23, 24, 26, 28, 46, 53, 54, perform motion control operations”
`56, 58; ‘543 Patent, claims 1, 2, 5, 6,
`13, 14, 16
`‘236 Patent, claims 1, 4, 5, 10; ‘557
`“an intermediate software layer containing
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`Patent, claims 16, 20, 27, 46, 47, 50, component code that is separate and distinct
`57
`from the application program and the
`software driver”
`“a hardware independent function that
`‘236 Patent, claim 1; ‘058 Patent,
`claims 1–4; ‘557 Patent, claims 16–
`corresponds to a motion control operation”
`20, 29, 46–50; ‘543 Patent, claims 3,
`8, 13, 16
`“one or more controller dependent software
`“software
`‘236 Patent, claims 1–3, 7; ‘058
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`driver”/ “driver” Patent, claims 1, 3, 4; ‘557 Patent,
`modules that support some core driver
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`claims 16, 21, 22, 27, 46, 51, 52, 55, functions and are used to control a hardware
`57; ‘543 Patent, claim 1, 5, 13, 14
`device or group of related hardware
`devices”
`“software code in the motion control
`component that associates at least some of
`the component functions with at least some
`of the driver functions”2
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`“component
`code”
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`‘236 Patent, claim 1; ‘058 Patent,
`claims 1, 4; ‘557 Patent, claims 16–
`19, 22, 29, 46, 48–49, 52; ‘543
`Patent, claim 16
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`2. The parties agreed on this construction after filing their briefs and prior to the Markman hearing. The
`parties notified the Court by phone of their agreement, and the Court confirmed that they were in agreement at the
`Markman hearing. (Doc. No. 183, at 135:4–8.)
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`In view of the parties’ agreements on the proper construction of each of the identified terms, the
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`Court adopts the parties’ agreed-upon constructions as set forth above.3 These agreed-upon
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`constructions govern in this case as to these particular terms.
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`IV. Construction of Disputed Terms
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`A. “Motion Control”
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`Plaintiff’s Proposed Construction
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`Defendants’ Proposed Construction
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`no construction needed; in the alternative,
`“controlled movement”
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`control of movement of an object along a desired
`path
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`The noun “motion control” does not appear in the claims of the asserted RGB Patents.
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`Instead, motion control is used as an adjective within two other claim terms that the parties have
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`also asked the Court to construe: “motion control operation” and “motion control device.”
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`Because “motion control” was not used as a separate term in the claims, the Court instructed the
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`parties at the Markman hearing that it did not intend to define motion control separately from the
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`two terms that contained it. After considering the Court’s preliminary construction of claim
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`terms at the Markman hearing, the Defendants stated that they no longer believed that the Court
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`needed to define “motion control.” See (Doc. No. 18, at 9–11.)
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`Accordingly, the parties and the Court being in agreement, the Court finds that it is
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`unnecessary to define “motion control.”
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`3. The parties also agreed on the construction of the term “primitive operations.” As explained more fully
`below, the Court neither agrees with nor adopts the parties’ construction for this term. See infra Part IV.C.
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`B. “Motion Control Operations”4
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`Plaintiff’s Proposed Construction
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`Defendants’ Proposed Construction
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`“abstract operations (such as GET POSITION,
`MOVE RELATIVE, or CONTOUR MOVE)
`that are performed on or by a motion control
`device”
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`
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`hardware independent operations used to
`perform motion control (such as GET
`POSITION, MOVE RELATIVE, or CONTOUR
`MOVE)
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`In Fanuc, Judge Folsom construed this term as “abstract operations (such as GET
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`POSITION, MOVE RELATIVE, or CONTOUR MOVE) used to perform motion control.”
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`Fanuc, No. 2:07-CV-418, 2009 U.S. Dist. LEXIS 127428, at *29–34 (E.D. Tex. Aug. 25, 2009).
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`In its Brief, RGB notes that the Fanuc construction is “correct if applied reasonably.”
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`(Doc. No. 151, at 9.) However, in order to preclude the Defendants from reading their proposed
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`definition for motion control into this term, and excluding the preferred embodiment, RGB urges
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`the Court to substitute “that are performed on or by a motion control device” for “used to perform
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`motion control.” (Id.) RGB argues that this is not a substantive change because operations
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`performed on or by the motion control device advance the objective of performing motion control
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`and thus are used to perform motion control. (Id.) Similarly, RGB also argues that “abstract”
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`should be used instead of “hardware independent,” in order to head off an argument that it fears the
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`Defendants might later make. It also states that “abstract operations” is the language used in the
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`specification. (Id. at 10) (citing ‘236 Patent, 7:24).
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`In their Brief, the Defendants argue that the specification describes motion control
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`operations as used to move an object along a desired path. (Doc. No. 157, at 6) (citing ‘236
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`Patent, 8:26–30) (“motion control operations necessary to control a motion control device to move
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`an object in a desired manner”). The Defendants also note that during reexamination of the ‘058
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`Patent, RGB described motion control operations as “operations used to perform motion control.”
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`4. ‘236 Patent, claims 1, 4; ‘058 Patent, claim 4; ‘557 Patent, claims 16, 46; ‘543 Patent, claims 14, 15.
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`(Id. at 9 and Ex. B, at 38.) As for “hardware independent” instead of “abstract,” the Defendants
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`point out that the patents use the terms interchangeably and that “hardware independent” will
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`likely be easier for a jury to understand. (Id. at 7.)
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`1. Analysis
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`
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`The term “motion control operations” is used in claim 1 of the ‘236 Patent as follows:
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`A system for generating a sequence of control commands for controlling a selected
`motion control device selected from a group of supported motion control devices,
`comprising:
`a set of motion control operations, where each motion control operation
`is either a primitive operation the implementation of which is required to
`operate motion control devices and cannot be simulated using other
`motion control operations or a non-primitive operation that does not
`meet the definition of a primitive operation; . . . .
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`‘236 Patent, claim 1 (emphasis added). This demonstrates that a motion control operation is
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`something that is implemented or performed. The specification confirms that motion control
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`operations are performed, and further explains that they are performed by motion control devices:
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`The motion control operations are not specifically related to any particular
`motion control device hardware configuration, but are instead abstract operations
`that all motion control device hardware configurations must perform in order to
`function.
`
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`‘236 Patent, 7:22–26. Therefore, the claim terms and the specification make clear that a motion
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`control operation is performed by a motion control device. While RGB proposes a construction
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`defining motion control operations as being performed “on or by a motion control device,” the
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`Court finds no support for defining the term this broadly. The Court is unaware of motion control
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`operations being described in the RGB patents as operations performed on a motion control device
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`or by something other than a motion control device.
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`
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`As the Defendants point out, motion control operations are also referred to in the
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`specification and by RGB during reexamination as being used to move an object in a desired
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`manner or to perform motion control. (Doc. No. 157, at 6–9, and Ex. B, at 38) (citing ‘236 Patent,
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`8:26–30); see also ‘236 Patent, 7:20–22 (“The software system designer initially defines a set of
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`motion control operations that are used to perform motion control.”). However, defining motion
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`control operations as used to perform motion control—what appears to be the general purpose of
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`the claimed invention as a whole—while correct, provides little guidance to the jury as to what
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`motion control operations actually are: the operations performed by the motion control devices.
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`Further, the construction that the Court gives to “motion control device,” infra, makes clear that
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`such devices move objects in a desired manner. See infra Part IV.D (construing “motion control
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`device” as “a device comprising a controller and a mechanical system capable of moving an object
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`in a desired manner”). Therefore, the Court rejects the Defendants’ construction as it pertains to
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`this issue.
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`
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`Regarding the dispute over “abstract” or “hardware independent,” the Court agrees with
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`the Defendants that the two terms as used synonymously: “The motion control operations are not
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`specifically related to any particular motion control device hardware configuration, but are
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`instead abstract operations that all motion control device hardware configurations must perform
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`in order to function.” ‘236 Patent, 7:22–26. RGB does not appear to dispute that the terms are
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`used synonymously.5 The Court also agrees with the Defendants that “hardware independent”
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`provides more guidance to a jury than does “abstract.” Accordingly, the Court will employ the
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`term that provides the most clarity to a jury.
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`
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`Lastly, both parties’ proposed constructions include examples of motion control
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`operations. The Court finds these examples unnecessary and potentially distracting to a jury. At
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`5. At the Markman hearing, RGB also stated that it was unopposed to the Court’s preliminary construction,
`which used “hardware independent” instead of “abstract.” See (Doc. No. 183, at 37–39.)
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`the Markman hearing, the Court notified the parties that it intended to leave out examples when
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`defining the terms. The parties did not object to this approach. See (Doc. No. 183, at 37.)
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`2. Court’s Construction
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`
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`In light of the claim language and specification, the Court construes “motion control
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`operations” to mean “hardware independent operations that are performed by a motion
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`control device.”
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`C. “Primitive Operations” and “Non-Primitive Operations”6
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`
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`The RGB Patents disclose two categories of motion control operations: “primitive
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`operations” and “non-primitive operations.” These two categories (and consequently, the terms’
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`definitions) are mutually exclusive: a motion control operation is “either a primitive operation . . .
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`or a non-primitive operation.” ‘236 Patent, claim 1. These two terms also form the basis for the
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`Defendants’ Motion for Summary Judgment of Invalidity for Indefiniteness. (Doc. No. 158.)
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`The Defendants claim that the two terms are insolubly ambiguous because it is impossible to
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`distinguish the boundary between a primitive operation and a non-primitive operation. (Id. at 1.)
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`Because the construction of these two terms is interrelated, the Court construes the terms together.
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`
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`The parties agree on the following definition of primitive operations: “motion control
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`operations, such as GET POSITION and MOVE RELATIVE, necessary for motion control, which
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`cannot be simulated using a combination of other motion control operations.”7 This language is
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`taken directly from the specifications of the RGB Patents. ‘058 Patent, 6:56–67; ‘236 Patent,
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`6. ‘236 Patent, claim 1; ‘058 Patent, claims 1, 3; ‘557 Patent, claims 16, 46; ‘543 Patent, claim 15.
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`7. In Fanuc, as in this case, the parties agreed that primitive operations are necessary for motion control and
`cannot be simulated using a combination of other motion control operations. Fanuc, No. 2:07-CV-418, 2009 U.S.
`Dist. LEXIS 127428, at *34–35 (E.D. Tex. Aug. 25, 2009). The disagreement between the parties in that case was
`whether examples should be included. Judge Folsom adopted RGB’s definition, which is the same definition that the
`parties have agreed to in this case. Id.
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`7:27–38; ‘557 Patent, 8:17–28; ‘543 Patent, 5:62 to 6:6. RGB contends that the patentee acted as
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`a lexicographer by defining the term in the specification in this manner. (Doc. No. 151, at 11);
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`(Doc. No. 183, at 56:10–22). The Defendants, while stating that they agree with this definition,
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`argue that the term is indefinite because the RGB Patents fail to provide a standard for determining
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`whether an operation is necessary for motion control and because MOVE RELATIVE can be
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`simulated using a combination of other motion control operations. (Doc. No. 168, at 1–2.) RGB
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`explains that “necessary for motion control” means required for any class of mot