Case 8:12-cv-00329-AG-JPR Document 60 Filed 02/01/13 Page 1 of 37 Page ID #:1717
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`UNITED STATES DISTRICT COURT
`FOR THE CENTRAL DISTRICT OF CALIFORNIA
`
`CASE NO. SACV 12-00329 AG (JPRx)
`
`CLAIM CONSTRUCTION ORDER
`
`))))))))))))))
`
`UNIVERSAL ELECTRONICS, INC.,
`Plaintiff,
`
`v.
`
`UNIVERSAL REMOTE CONTROL
`INC.
`
`Defendant.
`_________________________________
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`Universal Electronics Exhibit 2001, Page 1
`Universal Remote Control v. Universal Electronics, Trial No. IPR2013-00127
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`Case 8:12-cv-00329-AG-JPR Document 60 Filed 02/01/13 Page 2 of 37 Page ID #:1718
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`BACKGROUND
`
`•
`•
`
`Plaintiff Universal Electronics, Inc. (“Plaintiff”) alleges that Defendant Universal Remote
`Control, Inc. (“Defendant”) has infringed the following U.S. Patents:
`•
`5,414,426 (the “‘426 Patent”), titled “Favorite Key Macro Command and Chained Macro
`Command in a Remote Control”
`5,568,367 (the “‘367 Patent”), titled “Remote Control with Key Lighting”
`5,614,906 (the “‘906 Patent”), titled “Method for Selecting a Remote Control Command
`Set”
`6,587,067 (the “067 Patent”), titled “Universal Remote Control with Macro Command
`Capabilities”
`The parties dispute the meaning of twelve claim terms, and have agreed to the meaning of
`twenty-four claim terms. (Joint Claim Construction Chart.) The parties presented extensive
`arguments in their papers and at the hearing. In this Order, the Court determines the proper
`claim constructions of each disputed term.
`
`•
`
`LEGAL STANDARD
`
`Claim construction is an issue of law “exclusively within the province of the court.”
`Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). Such construction begins
`with an analysis of the claim language itself, Interactive Gift Express, Inc. v. Compuserve, Inc.,
`256 F.3d 1323, 1331 (Fed. Cir. 2001), since the claims define the scope of the claimed invention.
`Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). In construing the claim language,
`the Court begins with the principle that “the words of a claim are generally given their ordinary
`and customary meaning.” Id. at 1312 (internal quotation marks omitted).
`The ordinary and customary meaning is the meaning that the [claim] term would have to a
`person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. “[T]he
`person of ordinary skill in the art is deemed to read the claim term not only in the context of the
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`Universal Electronics Exhibit 2001, Page 2
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`Case 8:12-cv-00329-AG-JPR Document 60 Filed 02/01/13 Page 3 of 37 Page ID #:1719
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`particular claim in which the disputed term appears, but in the context of the entire patent.
`Where the patent itself does not make clear the meaning of a claim term, courts may look to
`“those sources available to the public that show what a person of skill in the art would have
`understood the disputed claim language to mean,” including the prosecution history and
`“extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and
`the state of the art.” Id. at 1314.
`“In some cases, the ordinary meaning of claim language as understood by a person of
`skill in the art may be readily apparent even to lay judges, and claim construction in such cases
`involves little more than the application of the widely accepted meaning of commonly
`understood words.” Id. “In such circumstances general purpose dictionaries may be helpful.”
`Id. at 1314. In other cases, claim terms will not be given their ordinary meaning because the
`specification defines the term to mean something else. Novartis Pharms. Corp. v. Abbott Labs.,
`375 F. 3d. 1328, 1334 (Fed. Cir. 2004); Kumar v. Ovonic Battery Co., Inc., 351 F.3d 1364, 1368
`(Fed. Cir. 2003). For the specification to define a term to mean something other than its
`ordinary meaning, it must set out its definition in a manner sufficient to provide notice of that
`meaning to a person of ordinary skill in the art. In re Paulson, 30 F.3d 1475, 1480 (Fed. Cir.
`1994).
`Under 35 U.S.C. § 112, ¶ 6, a patentee may express a claim limitation as “a means or step
`for performing a specified function without the recital of structure, material, or acts in support
`thereof.” Inventio AG v. ThyssenKrupp Elevator Americas Corp., 649 F.3d 1350, 1356 (Fed.
`Cir. 2011). Such limitations, often referred to as “means plus function” claims, “shall be
`construed to cover the corresponding structure, material, or acts described in the specification
`and equivalents thereof.” Id. Section 112, ¶ 6 applies “only to purely functional limitations that
`do not provide the structure that performs the recited function.” DuPuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1023 (Fed. Cir. 2006).
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`Universal Electronics Exhibit 2001, Page 3
`Universal Remote Control v. Universal Electronics, Trial No. IPR2013-00127
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`Case 8:12-cv-00329-AG-JPR Document 60 Filed 02/01/13 Page 4 of 37 Page ID #:1720
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`ANALYSIS
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`1.
`
`‘426 PATENT
`
`The parties dispute the construction of three limitations in claim 10 of the ‘426 Patent.
`(Joint Claim Construction Chart 4-6.) Because they appear next to each other in the claim and
`are closely related, the Court will consider their construction as a group. Claim 10, with the
`disputed limitations in bold and designated A, B, and C, reads as follows:
`10. A remote control comprising:
`a microprocessor including a CPU and memory means;
`a keyboard coupled to said microprocessor and including a set of keys including
`number keys and at least one MACRO key;
`IR lamp driver circuitry coupled to said microprocessor;
`light emitting means for generating and emitting IR signals coupled to said IR
`lamp driver circuitry;
`code data stored in said memory means for creating the IR signals, which are sent
`by said light emitting means to a controlled device to cause the controlled
`device to perform specific command functions;
`a macro entry/definition program stored in said memory means;
`[A] means for determining if a predetermined keystroke sequence entered on
`the keyboard is, according to said macro entry/definition program, a
`command to establish a select channel macro;
`[B] means for determining, after a select channel macro command is sensed, if
`one or more of said number keys have been depressed followed by
`depression of the at least one MACRO key; and,
`[C] means for storing the number(s) of the depressed number key or keys in
`association with the at least one MACRO key in said memory means.
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`
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`1.1. Limitations A, B, and C Are All Means Plus Function Limitations
`
`The parties agree that limitations A and B are means plus function terms governed by 35
`U.S.C. § 112, ¶6 and that the identified structure in the specification includes a microprocessor.
`Plaintiff argues that limitation C is not a means plus function term. (Pl.’s Opening Claim
`Construction Br. 11.) Because resolution of that dispute will determine whether means plus
`function analysis will apply to all three limitations, the Court addresses it first.
`To decide whether a limitation is subject to means plus function treatment, the Court must
`first look to the claim terms. “The use of the term ‘means’ triggers a rebuttable presumption that
`§ 112 ¶ 6 governs the construction of the claim term.” Inventio, 649 F.3d at 1356 (citing
`TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008)).
`Plaintiff argues that “means for storing the number(s) of the depressed number key or
`keys in association with the at least one MACRO key in said memory means” is not governed by
`35 U.S.C. § 112, ¶6 because it “recites the structure (i.e. memory) necessary to perform the
`recited function.” (Pl.’s Opening Claim Construction Br. 11.) Plaintiff acknowledges that use of
`the word “means” creates a presumption that 35 U.S.C. § 112, ¶6 applies, but argues that “[i]f, in
`addition to the word ‘means’ and the functional language, the claim recites sufficient structure
`for performing the described functions in their entirety, the presumption of § 112 ¶6 is
`overcome.” (Id. (quoting TriMed, Inc. v. Stryker Corp., 514 F. 3d 1256, 1259 (Fed. Cir. 2008).)
`Plaintiff argues that the recitation of “said memory means” (referencing the structure recited
`earlier in the claim) is sufficient structure because the parties have agreed that “memory means”
`needs no construction and is not a means plus function term. (Id.) Plaintiff also cites a few
`cases holding, in the circumstances of those cases, that “memory means” was not a means plus
`function term. (Id.)
`But whether “memory means” is a means plus function term is not the question. The
`limitation is “means for storing the number(s) of the depressed number key or keys in
`association with the at least one MACRO key in said memory means” (emphasis added). The
`memory means, standing alone, cannot be the “means for storing the number . . . in the memory
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`Universal Electronics Exhibit 2001, Page 5
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`means.” While not an absolute rule, all claim terms are presumed to have meaning in a claim.
`Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1119 (Fed. Cir.
`2004). Thus, the “means for storing the number . . . in the memory means” invokes structure
`beyond the memory means itself. The fact that the claim states that the function is to act on a
`clearly defined structure does not convert the term into something other than a means plus
`function term. The Court holds that limitation C is a means plus function term governed by 35
`U.S.C. § 112, ¶6.
`
`1.2. The Claimed Functions for Limitations A, B, and C
`
`The construction of a means plus function limitation includes two steps: (1) determine the
`claimed function; (2) identify the corresponding structure in the written description that performs
`that function. JVW Enterprises, Inc. v. Interact Accessories, Inc., 424 F.3d 1324, 1330 (Fed. Cir.
`2005) (citing Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1321 (Fed. Cir. 2003)).
`As to limitations A and B, the parties agree on the claimed functions: they are the simply
`the portions of the limitation after the “means for” language. (Joint Claim Construction Chart 4-
`5.) The Court agrees. As to limitation C, only Defendant proposed a function. (Id. at 6.) As for
`the other limitations, it is simply the function recited in the claim. (Id.) The Court agrees that
`the Defendant has correctly identified the function. Therefore, the Court holds that the claimed
`functions are as follows:
`A.
`“determining if a predetermined keystroke sequence entered on the keyboard is,
`according to said macro entry/definition program, a command to establish a select
`channel macro”;
`“determining, after a select channel macro command is sensed, if one or
`more of said number keys have been depressed followed by depression of
`the at least one MACRO key”;
`“storing the number(s) of the depressed number key or keys in association with the
`at least one MACRO key in said memory means.”
`
`B.
`
`C.
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`Universal Electronics Exhibit 2001, Page 6
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`Case 8:12-cv-00329-AG-JPR Document 60 Filed 02/01/13 Page 7 of 37 Page ID #:1723
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`1.3. What Structure Does the ‘426 Patent’s Specification Link to the
`Claimed Functions, and Is It Sufficient?
`
`
`
`The parties agree that the structure corresponding to limitations A and B includes a
`microprocessor. (Joint Claim Construction Chart 4-5.) The parties dispute whether the
`specification sufficiently discloses an algorithm performed by the microprocessor for those
`limitations. (Id. at 4-6.) Defendant argues that limitation C also includes a microprocessor, and
`that the disclosed “algorithm” is insufficient. (Id. at 6.) Plaintiff does not propose a structure for
`limitation C, because as discussed in Section 1.1., Plaintiff argued that limitation C was not a
`means plus function claim. (Id.) Plaintiff therefore does not directly respond to Defendant’s
`“insufficient algorithm” argument as to limitation C, instead relying on its argument that the
`limitation does not invoke 35 U.S.C. § 112, ¶6. (Pl.’s Reply Claim Construction Br. 11-13.)
`35 U.S.C. § 112, ¶6 “requires disclosure of corresponding structure in the specification,
`and that disclosure must clearly link the disclosed structure to the claimed function with which it
`is associated.” Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1220
`(Fed. Cir. 2003). “The point of the requirement that the patentee disclose particular structure in
`the specification and that the scope of the patent claims be limited to that structure and its
`equivalents is to avoid pure functional claiming.” Aristocrat Technologies Australia Pty Ltd. v.
`Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).
`Thus, “in a means-plus-function claim ‘in which the disclosed structure is a computer, or
`microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general
`purpose computer, but rather the special purpose computer programmed to perform the disclosed
`algorithm.’” Id. (quoting WMS Gaming, Inc. v. Int’l Game Tech, 184 F.3d 1339, 1349 (Fed. Cir.
`1999)). That is because “to claim a means for performing a particular function and then to
`disclose only a general purpose computer as the structure designed to perform that function
`amounts to pure functional claiming.” Id.
` “The preferred definition of ‘algorithm’ in the computer art is: ‘A fixed step-by-step
`procedure for accomplishing a given result; usually a simplified procedure for solving a complex
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`Universal Electronics Exhibit 2001, Page 7
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`Case 8:12-cv-00329-AG-JPR Document 60 Filed 02/01/13 Page 8 of 37 Page ID #:1724
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`problem, also a full statement of a finite number of steps.’” Id. (quoting In re Freeman, 573
`F.2d 1237, 1246 (CCPA 1978)). To sufficiently disclose an algorithm, a patent need not include
`the actual computer code. Typhoon Touch Technologies, Inc. v. Dell, Inc., 659 F.3d 1376, 1385
`(Fed. Cir. 2011). Rather, “[a] description of the function in words may ‘disclose, at least to the
`satisfaction of one of ordinary skill in the art, enough of an algorithm to provide the necessary
`structure under § 112, ¶ 6.’” Id. (quoting Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323,
`1340 (Fed. Cir. 2008)).
`Using this standard, Plaintiff asserts that the disputed limitations can be construed and
`that the specification discloses adequate structure. (Pl.’s Opening Claim Construction Br. 5-11.)
`Defendant argues that the specification discloses insufficient structure, such that the claim is an
`invalid attempt at pure functional claiming. (Def.’s Opening Claim Construction Br. 7-12.) The
`Court will address each limitation in turn.
`
`1.3.1. Structure Corresponding to the Function Recited by Limitation A:
`“determining if a predetermined keystroke sequence entered on the
`keyboard is, according to said macro entry/definition program, a
`command to establish a select channel macro”
`
`Plaintiff argues that the corresponding structure for limitation A is a “microprocessor
`executing instructions described at Col. 2:64-67.” (Pl.’s Opening Claim Construction Br. 5.)
`Defendant argues that the term is invalid because specification fails to disclose adequate
`structure, and instead only discloses “that the program determines if the first keystroke is I and
`the second keystroke is III and is followed by the Macro key (Column 4, lines 16-19 and
`Column 5, lines 22-30).” (Def.’s Opening Claim Construction Br. 8.)
`Plaintiff’s cited “instructions” for the microprocessor are “determining if the
`predetermined keystroke sequence is, according to the macro entry/definition program, a
`command to establish a select channel macro.” (‘426 Patent 2:64-67.) Those “instructions” are
`nothing but the function recited by the limitation. If the Court were to adopt Plaintiff’s
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`construction, it would be hard to imagine a clearer case of purely functional claiming, and the
`claim would be invalid, as Defendant urges. “[T]he language ‘describes an outcome, not a
`means for achieving that outcome.’” Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371,
`1384 (Fed. Cir. 2009) (invaliding computer-implemented means plus function claim as
`indefinite, quoting Aristocrat, 521 F.3d at 1334); see also Aristocrat, 521 F.3d at 1334 (rejecting
`patentee’s contention that the function recited by the claim was the algorithm); Finisar, 523 F.3d
`at 1340 (rejecting patentee’s contention that a passage merely restating the function recited in the
`claim could be the corresponding structure).
`Additionally, Plaintiff cites to the wrong part of the specification. Claim 10 is an
`apparatus claim (“A remote control comprising”), in contrast to claim 5, which is a method claim
`(“A method for entering a channel select macro . . . .”). The Summary of the Invention to which
`Plaintiff cites has one paragraph describing “a remote control” and another describing “a method
`for entering a channel select macro . . . .”). (‘426 Patent 2:22-23, 47-49.) Plaintiff cites to the
`method paragraph, but because claim 10 is directed to an apparatus, it should have cited to the
`apparatus paragraph. Had Plaintiff done so, it would have cited “circuitry and program
`instructions for determining if the predetermined keystroke is, according to the macro
`entry/definition program, a command to establish a select channel macro.” (‘426 Patent 2:36-
`39.) By citing to the method paragraph, Plaintiff presumably sought to avoid the additional
`“circuitry and program instructions” language recited in the apparatus paragraph. That language
`refutes Plaintiff’s contention that the mere recitation of the function is sufficient structure: even
`the Summary of the Invention stated that circuitry and programming instructions—unspecified
`circuitry and programming instructions—were necessary to carry out that function.
`While Defendant contends that there is no corresponding structure whatsoever described
`in the specification, it previously identified column 4, lines 16-19 and column 5, lines 22-30,
`although it claimed that the structure disclosed there was “insufficient.” (Pl.’s Reply Claim
`Construction Br. 7.) Those portions of the specification do in fact identify structure that
`constitutes the means—the “circuitry and program instructions”—for the claimed function.
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`Universal Electronics Exhibit 2001, Page 9
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`As to circuitry, column 4, lines 16-19, referencing Figure 3, provide that “[t]he keypad 20
`is coupled to the microprocessor 38 by an interrupt line 46 and a bus 48 to the CPU 44.” A
`relevant portion of Figure 3 is reproduced below:
`
`Given that the claimed function is “determining if a predetermined keystroke sequence entered
`on the keyboard” is a macro command, the structures that couple the keypad to the
`microprocessor—the interrupt line and bus—are part of the structure that performs the function.
`See Herbert Taub, Digital Circuits and Microprocessors 126, 365, 472-74 (1982) (a bus
`transfers information from a number of signal sources, and an interrupt allows a request to the
`CPU to be handled immediately even if the CPU is engaged in executing another function).
`And column 5, lines 22-30 does provide an algorithm—a “fixed step-by-step procedure
`for accomplishing a given result”—for the microprocessor to perform:
`As apparent from a study of FIG. 4, the program first determines whether a
`depressed key or keystroke is the “I” key. If not, the program performs other
`functions as required and exits to the idle state. If yes, the program then determines
`if the next keystroke is the “III” key. If not, the program performs other functions
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`as required and exits to an idle state. Then the program determines if the third
`keystroke is a MACRO key.
`(‘426 Patent 5:22-30.) Figure 4 “is a flow chart of the steps performed by the macro entry
`definition program stored in the remote control.” (‘426 Patent 3:15-18.) The following excerpt
`from Figure 4 illustrates those instructions in graphical form:
`
`Plaintiff dislikes the specificity of the identified structure, and argues that the “disclosure
`was included to teach a person of skill how to practice the invention—not to limit the claim.”
`(Pl.’s Opening Claim Construction Br. 9 (citing Rexnord Corp. v. Laitram, 274 F.3d 1336, 1344
`(Fed. Cir. 2001) (“Specifications teach. Claims claim.”).)) But Rexnord was not discussing
`means plus function terms. Disclosure of the structure is the quid pro quo of means plus
`function claiming. Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1381 (Fed. Cir.
`1999). Such claims “shall be construed to cover the corresponding structure, material, or acts
`described in the specification and equivalents thereof.” 35 U.S.C. § 112, ¶ 6.
`Thus, the Court construes “means for determining if a predetermined keystroke sequence
`entered on the keyboard is, according to said macro entry/definition program, a command to
`establish a select channel macro” as the following structure and equivalents thereof: an interrupt
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`line, bus, and microprocessor. The microprocessor is programmed with the following algorithm:
`if a depressed key or keystroke is the “I” key, and the next keystroke is the “III” key, and the
`third keystroke is a MACRO key, then a command to establish a select channel macro has been
`entered. If the sequence is interrupted by other keystrokes, then the program performs other
`functions as required and exits to an idle state.
`
`1.3.2. Structure Corresponding to the Function Recited by Limitation B:
`“determining, after a select channel macro command is sensed, if one
`or more of said number keys have been depressed followed by
`depression of the at least one MACRO key”
`
`The parties again disagree about whether the specification sufficiently discloses an
`algorithm for the microprocessor to carry out the claimed function. Plaintiff’s “algorithm” is a
`“microprocessor executing instructions described at Col. 2:67 – Col. 3:1.” (Pl.’s Opening Claim
`Construction Br. 9.) But that portion of the specification merely recites the function: it says
`“determining, after a select channel macro command is sensed, if one or more of said number
`keys have been depressed followed by depression of the at least one MACRO key.” Again, if
`the Court were to adopt that construction, the claim would be purely functional and invalid under
`Aristocrat. Plaintiff also again cites to the Summary of Invention paragraph describing the
`method, rather than the apparatus, and therefore again omits “circuitry and program instructions”
`from the corresponding structure. (Pl.’s Opening Claim Construction Br. 9., ‘426 Patent 2:39-
`43.)
`
`Defendant argues that “the specification includes no structure for determining whether a
`MACRO key has been depressed after the number keys have been pressed as also required by
`the claimed function, let alone any algorithm for making this determination.” (Def.’s Opening
`Claim Construction Br. 10.)
`The Court holds that the hardware component of the structure is the same as for the
`previous phrase, limitation A. The structure includes “a microprocessor including a CPU and
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`Case 8:12-cv-00329-AG-JPR Document 60 Filed 02/01/13 Page 13 of 37 Page ID #:1729
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`memory; a keyboard coupled to the microprocessor and including the keypad which comprises a
`set of keys including number keys and at least one MACRO key . . . and, a macro
`entry/definition program stored in the memory . . . .” (‘426 Patent 2:47-3:1 (quoted but partially
`ignored by Plaintiff’s Opening Br. 10).) The hardware structure is therefore again a keyboard,
`interrupt line, bus, and microprocessor.
`As to the algorithm/program instructions, Plaintiff admits that there is no flow chart
`describing how the remote control performs this function, and instead provides an “exemplary
`flow chart” that the inventors could have submitted. (Pl.’s Opening Claim Construction Br. 11.)
`Plaintiff argues that the prose description is sufficient. (Id.) The problem with Plaintiff’s
`position is that other than the bare recitation of the function, the specification does not anywhere
`describe “determining, after a select channel macro command is sensed, if one or more of said
`number keys have been depressed followed by depression of the at least one MACRO key.”
`None of the four flow charts in the specification show steps for carrying out that function, nor
`are such steps described in prose anywhere in the specification other than in the mere recitation
`of the function.
`In an attempt to bolster the adequacy of the corresponding “structure,” Plaintiff submitted
`the declaration of Shawn Burke, Ph.D. with its rebuttal briefing. (Pl.’s Rebuttal Claim
`Construction Br., Ex. N.) Defendant objects to the late submission of the declaration, arguing
`that (1) no unexpected issues were raised in Defendant’s opening brief, (2) the parties never
`indicated any intent to rely on expert witnesses, (3) the declaration goes beyond responding to
`Defendant’s arguments, and instead raises new theories that Plaintiff should have presented in its
`opening brief, and (4) the declaration should have been filed with Plaintiff’s opening brief.
`(Defendants’ Evidentiary Objections to the Declaration of Shawn Burke 1-4.) The Court
`sustains Defendant’s objections to the declaration. Due to the scheduled established by the
`Court, including the exchange of proposed claim constructions, and as shown by the negotiations
`between the parties that reduced the number of claim terms in dispute, Plaintiff was well aware
`of Defendants’ position on these claim terms. Plaintiff could have submitted Dr. Burke’s
`declaration along with its opening brief, if not earlier. Plaintiff has no sufficient excuse for
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`Universal Electronics Exhibit 2001, Page 13
`Universal Remote Control v. Universal Electronics, Trial No. IPR2013-00127
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`

`

`Case 8:12-cv-00329-AG-JPR Document 60 Filed 02/01/13 Page 14 of 37 Page ID #:1730
`
`waiting until the reply to introduce extrinsic evidence for the first time. See In re Katz
`Interactive Call Processing Patent Litig., 712 F. Supp. 2d 1080, 1097 (C.D. Cal. 2010) aff’d in
`part, vacated in part, remanded, 639 F.3d 1303 (Fed. Cir. 2011) (“This Court does not address
`the two new arguments Charter raised in its reply brief because Katz did not have an opportunity
`to brief these issues.”)
`The Court notes that the Burke declaration implicitly confirms the Court’s analysis that
`the corresponding structure cannot be found in the specification. Referring to limitation B, Dr.
`Burke notes that “[t]he disputed claim element and corresponding structure at Col. 2:67 – Col.
`3:1 merely re-arranges the logic tests to have the MACRO key test follow the number key or
`keys test.” (Burke Decl. ¶ 22 (emphasis added).) So Burke admits that the specification
`nowhere actually describes the series of steps that correspond, in order, to the function of
`limitation B. Thus, even if the Court had not sustained Defendant’s objection to the Burke
`declaration, it would support the conclusion that the specification fails to disclose structure
`corresponding to the recited function.
`Likewise, Plaintiff’s rebuttal brief confirms that the specification only contains
`“alternative sequence[s] of keystrokes,” and “alternative embodiment[s],” that is, the
`specification describes other functions, but not the function that is in the claim. (Pl.’s
`Rebuttal Claim Construction Br. 10.) That it would be easy to re-arrange the structure described
`in the specification is irrelevant. “The question before us is whether the specification contains a
`sufficiently precise description of the ‘corresponding structure’ to satisfy section 112, paragraph
`6, not whether a person of skill in the art could devise some means to carry out the recited
`function. Blackboard, 574 F.3d at 1385.
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`Universal Remote Control v. Universal Electronics, Trial No. IPR2013-00127
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`Case 8:12-cv-00329-AG-JPR Document 60 Filed 02/01/13 Page 15 of 37 Page ID #:1731
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`
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`1.3.3. Structure Corresponding to the Function Recited by Limitation C:
`“storing the number(s) of the depressed number key or keys in association
`with the at least one MACRO key in said memory means”
`
`
`
`As discussed in Section 1.1, Plaintiff argues, contrary to the Court’s holding, that “means
`for storing the number(s) of the depressed number key or keys in association with the at least
`one MACRO key in said memory means” is not a means plus function term. (Pl.’s Opening
`Claim Construction Br. 12.) Plaintiff therefore declined to identify corresponding structure in
`the specification. Defendant argues that the function is implemented by the device’s
`microprocessor, and thus: (1) an algorithm must be disclosed, and (2) the absence of a disclosed
`algorithm means that the limitation is invalid.
`The Court has conducted an independent review of the specification, and is unable to
`locate the structure corresponding to the recited function. While it is possible that guidance from
`the Plaintiff could have lead the Court to a different conclusion, the Court is left with only
`Defendant’s argument and the Court’s own analysis. The Court therefore finds the limitation
`invalid as indefinite. See HTC Corp. v. IPCom GmbH & Co., KG, 667 F.3d 1270, 1283 (Fed.
`Cir. 2012) (finding waiver of means plus function indefiniteness argument).
`
`2.
`
`‘367 PATENT
`
`The parties dispute the construction of two terms in the ‘367 Patent. Both are found in
`claim 4, reproduced with the disputed terms in bold here:
`A hand held, battery operated remote control for controlling an appliance from a
`remote location, said remote control comprising: a housing having openings
`through an upper wall thereof; a plurality of transparent or translucent
`push-buttons each extending upwardly through one of said openings; one of said
`push-buttons being a light actuation button; a plurality of switch means each
`associated with one of said push-buttons; and a light emitting circuit located inside
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`Universal Electronics Exhibit 2001,