Case 2:12-cv-00548-MSD-DEM Document 65 Filed 04/16/13 Page 1 of 31 PageID# 895
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`NORFOLK DIVISION
`
`CIVIL ACTION NO.
`2:12-CV-00548-MSD-DEM
`
`VIRGINIA INNOVATION SCIENCES, INC.,
`
`Plaintiff,
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD;
`SAMSUNG ELECTRONICS AMERICA,
`INC.; SAMSUNG
`TELECOMMUNICATIONS AMERICA,
`LLC
`
`Defendants.
`
`DEFENDANTS’ OPENING CLAIM CONSTRUCTION BRIEF
`
`Pursuant to Paragraph 11(e) of the Court’s Rule 16(b) Scheduling Order (D.I. 56),
`
`Defendants Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung
`
`Telecommunications, LLC (collectively “Defendants”) submit this brief in support of their
`
`proposed claim constructions for the six patents-in-suit.
`
`I.
`
`BACKGROUND OF THE PATENTS-IN-SUIT
`
`Plaintiff Virginia Innovation Sciences, Inc. (“VIS”) has asserted over 150 claims from six
`
`different patents against the Defendants. For clarity, these related patents can be grouped into
`
`two patent “families.” The ’492 Patent Family includes U.S. Patents Nos. 7,899,492 (“the ’492
`
`Patent”), 8,050,711 (“the ’711 Patent”), 8,145,268 (“the ’268 Patent”), and 8,224,381 (“the ’381
`
`Patent”). The ’733 Patent Family includes U.S. Patents Nos. 7,957,733 (“the ’733 Patent”) and
`
`8,135,398 (“the ’398 Patent”). Though each of the six patents has multiple claims, VIS’s
`
`infringement allegations center on the concept of displaying multimedia content originally
`
`intended for a mobile device (such as a cellphone) onto a larger screen (such as a television).
`
`--1
`
`Samsung Ex. 1006
`
`

`
`Case 2:12-cv-00548-MSD-DEM Document 65 Filed 04/16/13 Page 2 of 31 PageID# 896
`
`A.
`
`The ’492 Patent Family: The Mobile Terminal Signal Conversion Module
`(“MTSCM”)
`
`VIS filed the ’492 Patent as application No. 11/165,341 on June 24, 2005, claiming
`
`priority to provisional application No. 60/588,358 filed on July 16, 2004 (“the ’358 provisional
`
`application”). The ’711, ’268, and ’381 Patents claim priority as continuations of the ’492
`
`Patent, and share a substantively identical specification and figures.
`
`The ’492 Patent Family describes a “mobile terminal signal conversion module”
`
`(“MTSCM”). ’492 Patent at 3:52-54. The MTSCM “processes signals to accommodate
`
`reproduction by an external device.” Id. at 3:58-59. The MTSCM “receives [a] video signal
`
`from [a] cellular phone” and “processes the video signal to provide a converted video signal that
`
`has a display format and/or signal power level appropriate for an external display terminal 114.”
`
`Id. at 4:4-20. The MTSCM is described in terms of “modules,” but the patents state that the
`
`MTSCM “may be provided as software, firmware, hardware, or any combination thereof,” id. at
`
`4:45-46, and “the described functionality may alternatively be provided by an MTSCM having
`
`fewer, greater, or differently named modules from those illustrated in the figure.” Id. at 4:56-60.
`
`The patents provide two “block diagrams” of the MTSCM. First, Figure 2 shows the
`
`MTSCM 200 including a “mobile terminal interface module 202, a signal conversion module
`
`204, and an external device interface module 206.” Id. at 5:9-11. Second, Figure 3 shows an
`
`MTSCM 300 including an interface/buffer module 302 “that is analogous to the previously
`
`described mobile terminal interface module,” id. at 5:57-59, as well as a video compress decoder
`
`304a, a digital/analog video encoder 304b, a digital/digital video encoder 304c, and
`
`“conventional interfaces 306a-b.” Id. at 6:40-43.
`
`-2-
`
`Samsung Ex. 1006
`
`

`
`Case 2:12-cv-00548-MSD-DEM Document 65 Filed 04/16/13 Page 3 of 31 PageID# 897
`
`The ’492 Patent’s prosecution spanned almost six years at the U.S. Patent and Trademark
`
`Office, with two different examiners handling the case, before the ‘492 Patent issued on March
`
`1, 2011. The ’711, ’268, and ’381 Patents issued on November 1, 2011, March 27, 2012, and
`
`July 17, 2012, respectively.
`
`B.
`
`The ’733 Patent Family: Transporting a Multimedia Content Item that is
`“Destined for a Destination Device” Via a “Predetermined Channel”
`
`VIS filed the ’733 Patent as application No. 11/802,418 on May 22, 2007, claiming
`
`priority to three pending U.S. patent applications, which in turn claimed priority to five
`
`provisional applications. The ’341 non-provisional application and the ’358 provisional
`
`application that led to the ’492, ’711, ’268, and ’381 Patents were included among these eight
`
`priority references.1 ’733 Patent at 1:8-42. The ’398 Patent, filed on May 6, 2011, as application
`
`No. 13/067,079, is a continuation of the ’733 Patent and shares a substantively identical
`
`specification.
`
`
`1 In addition to the ’341 non-provisional application and the ’358 provisional application, the
`’733 Patent claimed priority to non-provisional application Nos. 11/501,747 and 11/540,637, and
`to provisional applications Nos. 60/787,510, 60/707,561, 60/722,444, 60/832,962, 60/899,037.
`
`-3-
`
`Samsung Ex. 1006
`
`

`
`Case 2:12-cv-00548-MSD-DEM Document 65 Filed 04/16/13 Page 4 of 31 PageID# 898
`
`The shared specification of the ’733 and ’398 Patents describes several different systems
`
`including an Internet content delivery system where the “[p]rovision of Internet content is
`
`customized according to location” (’733 Patent at 5:39-9:13), a “systematical solution for mobile
`
`payment” (id. at 9:14-11:27), a system for “wireless management of tasks and corresponding
`
`alerts” for tasks such as “diaper management” or “home security monitoring” (id. at 11:28-42),
`
`and a system “with mobile terminal signal conversion” (id. at 14:43-19:57). For the “mobile
`
`terminal signal conversion” embodiments, the shared specification of the ’733 and ’398 Patents
`
`repeats the description and figures of the MTSCM from the ’492 Patent Family.
`
`The ’733 and ’398 Patents describe a “control system for multimedia communications
`
`between different user terminals” for these various applications. Id. at 20:14-19. The control
`
`system “receives, selects, converts, compresses, decompresses, and routs [sic] data” from one
`
`user terminal to another. Id. This so-called “Management Center (MC) System” is shown in
`
`Figure 16 of the patent.
`
`Content received by the MC System is routed to the various user terminals using a “data
`
`package that identifies the destination device.” Id. at 21:15-17. The destination device can be
`
`identified by “a unique device identifier” in the data package or “by referencing portions of the
`
`received data package according to a predefined protocol.” Id. at 21:18-27. The specification
`
`describes an example: “if the data package contains the identifier DI1 it is determined that the
`
`communication is intended for the main television in the household.” Id. at 21:41-44.
`
`The patents also describe a process for “directing a television to display content using
`
`signals received . . . through a cellular communications network.” Id. at 25:63-65. Either the
`
`MC System, the destination television, or a set-top box connected to the television is “equipped
`
`with processing capability for carrying out the signal conversion requirements, as described in
`
`-4-
`
`Samsung Ex. 1006
`
`

`
`Case 2:12-cv-00548-MSD-DEM Document 65 Filed 04/16/13 Page 5 of 31 PageID# 899
`
`detail above regarding the MTSCM,” while the television or the set top box are also “equipped to
`
`receive the signals wirelessly from a cellular base station . . . to display the content on a given
`
`channel.” Id. at 25:66-26:9. The television is directed “to display the converted content on a
`
`predetermined channel,” such as a “tunable channel that is otherwise unused for other forms of
`
`content.” Id. at 26:41-55.
`
`The ’733 and ’398 Patents were handled by a different examiner than the ’492 Patent
`
`Family at the PTO. The ’733 Patent was pending for four years before it issued on June 7, 2011.
`
`The ’398 Patent was filed two months after the Notice of Allowance for the ’733 Patent, and
`
`issued less than eleven months later on March 13, 2012. VIS filed the present lawsuit seven
`
`months after that issuance.
`
`II.
`
`LEGAL PRINCIPLES OF CLAIM CONSTRUCTION
`
`Claim construction is a matter of law exclusively within the Court’s province. Markman
`
`v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). As an initial matter, a court should
`
`examine the intrinsic evidence of the patent—including the claims, the specification, and the
`
`prosecution history—to define the patented invention’s scope. C.R. Bard, Inc. v. U.S. Surgical
`
`Corp., 388 F.3d 858, 861 (Fed. Cir. 2004). The words of a claim are given their ordinary and
`
`customary meaning, which is the meaning the words would have to a person of ordinary skill in
`
`the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir.
`
`2005) (en banc). However, a “person of ordinary skill in the art is deemed to [have] read the
`
`claim term not only in the context of the particular claim in which the disputed term appears, but
`
`in the context of the entire patent, including the specification.” Id. at 1313. This standard
`
`“provides ‘an objective baseline from which to begin claim interpretation’ and is based upon ‘the
`
`well-settled understanding that inventors are typically persons skilled in the field of the invention
`
`and that patents are addressed to and intended to be read by others of skill in the pertinent art.’”
`
`-5-
`
`Samsung Ex. 1006
`
`

`
`Case 2:12-cv-00548-MSD-DEM Document 65 Filed 04/16/13 Page 6 of 31 PageID# 900
`
`iHance, Inc. v. Eloqua Ltd., No. 2:11-cv-257, 2012 WL 1571327, *2 (E.D. Va. 2012) (quoting
`
`Phillips, 415 F.3d at 1313).
`
`The intrinsic evidence also includes the prosecution history, which “[l]ike the
`
`specification . . . provides evidence of how the PTO and the inventor understood the patent.”
`
`Phillips, 415 F.3d at 1317. The specification “can often inform the meaning of the claim
`
`language by demonstrating how the inventor understood the invention and whether the inventor
`
`limited the invention in the course of prosecution, making the claim scope narrower than it
`
`would otherwise be.” Id. In particular, “[t]he prosecution history limits the interpretation of
`
`claim terms so as to exclude any interpretation that was disclaimed during prosecution.” Rheox,
`
`Inc. v. Entact, Inc., 276 F.3d 1319, 1325 (Fed. Cir. 2002) (citations omitted).
`
`Finally, dictionaries provide an unbiased source accessible to the public in advance of the
`
`litigation and are often useful to assist in determining the commonly understood meaning of
`
`words in the claims. Phillips, 415 F.3d at 1317-18. Such sources can aid the Court, for example,
`
`by providing a source of “accepted meanings of terms used in various fields of science and
`
`technology,” or by providing “background on the technology at issue.” Id.
`
`III.
`
`CLAIM TERMS FOR CONSTRUCTION
`
`A.
`
`Agreed Constructions
`
`In compliance with the Court’s Scheduling Order, the parties met and conferred after
`
`exchanging preliminary claim constructions. The parties have agreed on constructions for the
`
`three terms identified below.
`
`-6-
`
`Samsung Ex. 1006
`
`

`
`Case 2:12-cv-00548-MSD-DEM Document 65 Filed 04/16/13 Page 7 of 31 PageID# 901
`
`1.
`
`2.
`
`3.
`
`“housing interface” - Construction: “interface of the housing.”
`
`“a power level appropriate for driving the alternative display
`terminal” - Construction: “a signal power level appropriate for driving the
`alternative display terminal.”
`
`“a power level required by the alternative display terminal” -
`Construction: “a signal power level required by the alternative display
`terminal.”
`
`B.
`
`Disputed Terms for Construction by the Court
`
`1.
`
`“a multimedia content item . . . destined for a destination device” -
`’733 Patent Family
`
`Defendants’ Proposed Construction:
`“a multimedia content item that uniquely
`identifies the destination device on which it is
`to be displayed”
`
`Plaintiff’s Proposed Construction: Plain and
`ordinary meaning. No construction required.
`
`Each asserted claim in the ’733 and ’398 Patents2 includes the limitation of receiving a
`
`“multimedia content item” that is “destined for a destination device.”3 VIS refuses to construe
`
`this term, instead relying on a jury’s lay understanding of what the “plain and ordinary meaning”
`
`would have been for ”destined for a destination device.” The intrinsic and extrinsic record,
`
`however, dictate that “destined” in this context means more than the multimedia content item
`
`merely being fit for eventual delivery to any device. Instead, for a multimedia content item to be
`
`“destined for a destination device,” the multimedia content item uniquely identifies that
`
`particular device. Defendants’ proposed construction accurately makes this clarification, which
`
`
`2 VIS’s Interrogatory Responses indicate that it is asserting claims 4, 6, 10, 43, 45, and 49 of the
`‘733 Patent, each of which depend from either claim 1 or 40, and claims 1-5, 8, 9, 14-28, 31-65,
`73, 82, and 91 of the ‘398 Patent, which include or depend from independent claims 1 and 11-15.
`3 More specifically, independent claims 1 and 40 of the ’733 Patent and claims 1 and 10 of the
`’398 Patent recite receiving a multimedia content item “originated from a source located outside
`a home location and destined for a destination device located within the home location.” ’733
`Patent at 29:13-15 and 33:51-53; ’398 Patent at 29:12-14 and 29:64-67. Independent claims 11-
`15 of the ’398 Patent recite a multimedia content item “originated from a first source located
`outside the designated location and destined for a destination device.” ’398 Patent at 30:21-24;
`30:57-60; 31:26-29; 31:59-62; 32:16-19.
`
`-7-
`
`Samsung Ex. 1006
`
`

`
`Case 2:12-cv-00548-MSD-DEM Document 65 Filed 04/16/13 Page 8 of 31 PageID# 902
`
`is required to avoid an application of the term contrary to its intended meaning in the context of
`
`the asserted patents.
`
`In particular, the claim language itself explicitly states that the multimedia content item
`
`cannot be generally directed to any device capable of displaying (or requesting) such content, but
`
`instead must be “destined” for a “destination device.” To construe the limitation any other way
`
`would be to improperly read “destined” and “destination” out of the claims. In fact, the
`
`identification of a particular “destination device” by the multimedia content item is necessary for
`
`other aspects of the claims. For example, the asserted’733 Patent claims also recite “determining
`
`a communications protocol, a signal format and an address for the destination device” in order to
`
`perform “converting” and “routing” using the determined protocol, format, and address of the
`
`destination device. ’733 Patent at 29:16-32, 33:54-60. Similarly, claim 1 of the ‘398 Patent
`
`recites “converting a multimedia content item according to a determined signal format of the
`
`destination device.” ’398 Patent at 29:17-19 (emphasis added). In other words, the multimedia
`
`content item must be predetermined in some way as being directed to a uniquely identified
`
`destination device, so that the item can be converted and routed accordingly. This meaning is
`
`consistent with the dependent claims, which specify how the destination device is uniquely
`
`identified in various embodiments. ’733 Patent at 29:59-61 (reciting “the multimedia content is
`
`received from the source in connection with a data package that identifies the destination
`
`device.”) (Claim 8) (emphasis added).
`
`That the multimedia content item must uniquely identify the particular destination device
`
`on which it is to be displayed is further confirmed by the specification, which explains:
`
`When a communication is inbound to the MC System, it may
`include a data package that identifies the destination device. This
`may be in the form of a unique device identifier that is associated
`with each device managed by the MC System. The mapping table
`
`-8-
`
`Samsung Ex. 1006
`
`

`
`Case 2:12-cv-00548-MSD-DEM Document 65 Filed 04/16/13 Page 9 of 31 PageID# 903
`
`is queried for the presence of the unique identifier. Once this is
`successfully performed, corresponding information regarding the
`processing of the communication may be automatically gathered
`form the mapping table.
`
`Id. at 21:15-23. As an example, “if the data package contains the identifier DI1 it is determined
`
`that the communication is intended for the main television in the household.” Id. at 21:41-44.
`
`In particular, the ’733 Patent’s “MC System” uses the aforementioned process when it
`
`receives a multimedia content item from outside of a home location destined for a destination
`
`device within the home location — context that is explicitly recited in connection with
`
`multimedia content “destined for a destination device” in many of the independent claims.4 For
`
`example, in connection with Figure 18, the specification describes multimedia content “from a
`
`source outside the home location, to be directed to a destination device within the home
`
`location.” ’733 Patent at 26:66-27:1. The MC System determines the address for the destination
`
`device “by referring to the data package information, mapping table information, or a
`
`combination thereof.” Id. at 27:5-9. The multimedia content item “is routed to the destination
`
`device” using the address corresponding to the destination device that is determined through this
`
`process. Id. at 27:12-15. Again, this clearly indicates that the content must uniquely identify a
`
`particular device when it is received by the MC System.
`
`Finally, insofar as the specification at times contains permissive language (“may
`
`include,” “may be in the form of”) when discussing data packages that identify the destination
`
`device, the Defendants’ proposed construction acknowledges this scope by not limiting the
`
`claims to a particular manner in which the multimedia content item uniquely identifies the
`
`destination device on which it is to be displayed. Indeed, every embodiment in the patent is
`
`covered by the Defendants’ proposed construction. Accordingly, a person of ordinary skill in the
`
`4 Specifically, in independent claims 1 and 40 of the ’733 Patent and independent claims 1 and
`10 of the ’398 Patent. Id. at 29:13-15 and 33:51-53; ’398 Patent at 29:12-14 and 29:64-67.
`
`-9-
`
`Samsung Ex. 1006
`
`

`
`Case 2:12-cv-00548-MSD-DEM Document 65 Filed 04/16/13 Page 10 of 31 PageID# 904
`
`art having read the specification would understand that a multimedia content item is “destined
`
`for a destination device” when it uniquely identifies the destination device on which it is to be
`
`displayed, as construed by the Defendants.
`
`2.
`
`“establishing a predetermined channel” - ’733 Patent Family
`
`Defendants’ Proposed Construction:
`“specifying a selectable frequency band of an
`input on the destination device for receiving
`the multimedia content”
`
`Plaintiff’s Proposed Construction: Plain and
`ordinary meaning. No construction needed.
`
`The term “establishing a predetermined channel” appears in all of the independent claims
`
`of the ’733 and ’398 Patents. In particular, every independent claim in these two patents ends
`
`with a three-clause limitation similar to that found in claim 1 of the ’733 Patent:
`
`wherein the sending comprises:
`establishing a predetermined channel operatively in
`communication with the destination device, and
`transporting the multimedia content to the destination device via
`said predetermined channel,
`for directing5 the destination device to display the multimedia
`content in conjunction with a navigational command to the
`destination device for the predetermined channel.
`
`At the outset, it is important to recognize that the specification uses the term “channel” in
`
`two very different contexts. The term’s context-specific usage makes VIS’s proposed
`
`construction of “plain and ordinary meaning” improper because only one of the two contexts is
`
`applicable to the asserted claims. More specifically, the first context, which is not applicable to
`
`the asserted claims, is a “communication channel” or “connection channel,” referring to a
`
`standard data connection that can be either wired or wireless. For example, the specification
`
`
`5 The claims of the ’398 Patent omit the word “directing,” and thus recite “for the destination
`device to display the multimedia content in conjunction with a navigational command to the
`destination device for the predetermined channel.” See, e.g., ’398 Patent at 29:27-29.
`
`-10-
`
`Samsung Ex. 1006
`
`

`
`Case 2:12-cv-00548-MSD-DEM Document 65 Filed 04/16/13 Page 11 of 31 PageID# 905
`
`describes “communication channels” for transmitting data between the MC System and the user
`
`terminals:
`
`Communication channels between the MC System and user
`terminals include the following: (1) direct connection using the
`available transmission port/standard such as USB, RS232, TV
`cable, Ethernet, Telephone line, etc.; (2) Wireless Personal Area
`Network such as UWB, Bluetooth, WLAN, etc.; (3) Long-range
`wireless connections such as WiMax, Satellite, e.g., VSAT, TV
`broadcast, etc.; or (4) Wire-line connection such as DSL, Cable,
`Ethernet, etc.
`
`’733 Patent at 25:22-29.
`
`The second context, which is applicable to the asserted claims, uses “channel” in
`
`reference to selectable frequency bands in an input. The specification describes this type of
`
`channel as follows:
`
`Here, a television in form and functionality also includes cellular
`communication features as well as the above-described conversion
`functionalities. Preferably, one or more "channels" corresponding
`to the cellular application are provided in the cellular television
`so that the content received in this fashion may be accessed and
`viewed by a user in a fashion similar to that used for accessing
`traditional television channels.
`
`Id. at 20:1-9 (emphasis added). “Channel” in this context is used in the traditional lay sense,
`
`e.g., changing a traditional television from channel 10— the selectable frequency band for NBC
`
`in the Norfolk area—to channel 43— the selectable frequency band for FOX in the same area –
`
`and vice versa. In this second context, the television is directed “to display the converted content
`
`on a predetermined channel.” Id. at 26:41-42. The “predetermined channel may, for example,
`
`be a tunable channel that is otherwise unused for other forms of content.” Id. at 26:42-44. By
`
`way of example, a traditional television may display content from a VCR on a “predetermined
`
`channel”—such as channel 3—by having the user navigate to that predetermined channel by
`
`pressing an appropriate button on a remote control.
`
`-11-
`
`Samsung Ex. 1006
`
`

`
`Case 2:12-cv-00548-MSD-DEM Document 65 Filed 04/16/13 Page 12 of 31 PageID# 906
`
`Of the two different uses of the term “channel” described above, only the latter context
`
`analogous to channels of a traditional television is relevant to the disputed claim language. To
`
`this end, both the specification and the prosecution history clearly distinguish the claimed
`
`“channels” from generic inputs (e.g., HDMI, component, S-video, etc.) on a destination device.
`
`For example, the specification describes a “given channel on the set top box” associated with a
`
`television, such as channel 10 (NBC) on a cable set top box. Id. at 26:50-51. The specification
`
`goes on to distinguish this channel from the output of the set top box that provides the content to
`
`the television “through a conventional connection to the television such as an HDMI,
`
`component cable, S-video or other connection.” Id. at 26:52-55 (emphasis added). Stated
`
`another way, the specification makes clear that a user selection of a particular input (e.g., HDMI,
`
`component, S-video, etc.) on the television to receive content from the cable set-top box is a
`
`separate and distinct concept from user selection of a particular channel (e.g., the selectable
`
`frequency band associated with channel 10 (NBC)) amongst a plurality of channels that are
`
`conveyed to the television on that input.
`
`That the claimed “channel” refers to selectable frequency bands rather than selectable
`
`inputs is further confirmed by the prosecution history. Specifically, the examiner proposed the
`
`following amendment during prosecution of the asserted ’733 Patent:
`
`-12-
`
`Samsung Ex. 1006
`
`

`
`Case 2:12-cv-00548-MSD-DEM Document 65 Filed 04/16/13 Page 13 of 31 PageID# 907
`
`Ex. A (Feb. 18, 2011 Email of Quan Hua to Christopher Tobin, VIS-001195-1212) at VIS-
`
`001197. A similar amendment was approved by VIS in an interview with Examiner Hua six
`
`days later, resulting in the limitation found in the current claims and the allowance of the ’733
`
`Patent. See Ex. B (Notice of Allowance dated Mar. 3, 2011, VIS-001836-1864) at VIS-001842.
`
`According to the Examiner, this claim language was intended to reflect the description of a
`
`tunable channel of a television found in paragraph 00195 of the then-pending application and
`
`corresponding to Column 26, lines 41-55 of the issued ’733 Patent (described above). See Ex. A
`
`at VIS-001197; ’733 Patent at 26:41-55. This discussion by the Examiner clearly weighs in
`
`favor of the Defendants’ proposed construction. See Morpho Detection, Inc. v. Smiths Detection
`
`Inc., No. 2:11-cv-498, 2012 WL 5194076, *12 n.20 (E.D. Va. Oct. 19, 2012) (quoting Salazar v.
`
`Procter & Gamble Co., 414 F.3d 1342, 1347 (Fed. Cir. 2005)) (“Although ‘unilateral statements
`
`by an examiner do not give rise to a clear disavowal of claim scope by an applicant, such
`
`statements . . . ‘may be evidence of how one skilled in the art understood the term at the time the
`
`application was filed.’”).
`
`Finally, insofar as VIS asserts that the term should be given its plain and ordinary
`
`meaning, Defendants note that their construction incorporates the accepted meaning of “channel”
`
`as it is used in the context of the asserted patents, which refers to selectable frequency bands:
`
` Dictionary of Video and Television Technology from 2002: a “band of
`frequencies allocated to a specific use – for example, a single TV
`transmitter. TV bands are subdivided into numbered channels . . . .” See
`Ex. C (Keith Jack and Vladimir Tsatsulin, Dictionary of Video and
`Television Technology 47 (2002)) at SAMV00312847; and
`
` The Penguin Dictionary of Electronics: “a specified frequency band or a
`particular path used in communications for the reception or transmission
`of electrical signals.” See Ex. D (The Penguin Dictionary of Electronics
`67 (Valerie Illingworth ed., 3d. ed. 1998)) at SAMV00312857.
`
`-13-
`
`Samsung Ex. 1006
`
`

`
`Case 2:12-cv-00548-MSD-DEM Document 65 Filed 04/16/13 Page 14 of 31 PageID# 908
`
`It is thus unclear why VIS refuses to accept Defendants’ proposed construction, or otherwise
`
`explain what is purportedly meant by “plain and ordinary meaning” for this term.
`
`In light of the overwhelming evidence in the specification, the prosecution history, and
`
`the understanding in the art, Defendants’ proposed construction of “specifying a selectable
`
`frequency band of an input on the destination device for receiving the multimedia content” is the
`
`only appropriate construction of the term “establishing a predetermined channel,” as it is
`
`necessary to avoid confusing the jury and is dictated by the intrinsic and extrinsic evidence of
`
`record.
`
`3.
`
`“in conjunction with a navigational command to the destination
`device for the predetermined channel” - ’733 Patent Family
`
`Defendants’ Proposed Construction:
`“upon selection amongst a plurality of
`selectable frequency bands of the input of the
`specified frequency band for receiving the
`multimedia content”
`
`Plaintiff’s Proposed Construction: Plain and
`ordinary meaning. No construction required.
`
`This claim term appears in all of the claims of the ’733 and ’398 Patents, in the same
`
`clause as “establishing a predetermined channel” discussed above. Defendants propose
`
`construing this term, and in particular the “navigational command” aspect of this term, to make
`
`clear that a user selects a particular frequency band (e.g., for channel 10 (NBC)) amongst a
`
`plurality of such bands on a given input (e.g., coaxial). VIS, by contrast, provides no
`
`construction whatsoever. VIS’s refusal to construe this claim term would leave the jury to guess
`
`how one of skill in the art would have understood the term “navigational command,” and without
`
`any guidance regarding how to interpret the meaning of a “navigational command . . . for [a]
`
`predetermined channel,” a term which itself needs construction as discussed above.
`
`Defendants’ proposed construction is accurate and essential to avoid jury confusion.
`
`Indeed, the only discussion of “navigation” in the specification is found in the very portion cited
`
`-14-
`
`Samsung Ex. 1006
`
`

`
`Case 2:12-cv-00548-MSD-DEM Document 65 Filed 04/16/13 Page 15 of 31 PageID# 909
`
`by the Examiner in support for these limitations (and discussed above in connection with the
`
`term “establishing a predetermined channel”).6 This excerpt of the specification recites in
`
`pertinent part “[t]o view video content in this fashion, the user merely uses a channel button or
`
`the like to navigate to the appropriate channel, and then the converted content is shown on the
`
`display screen of the television.” ’733 Patent at 26:44-48 (emphasis added); see also id. at
`
`26:48-50 (describing the process of navigating to a channel as “tuning”).
`
`The extrinsic evidence reflects the same accepted meaning in the art for navigating to a
`
`predetermined channel. By way of example, the Dictionary of Video and Television Technology
`
`explains the concept of subdividing a TV band into a number of selectable channels, each of
`
`which has a certain width (in frequency). See Ex. C at SAMV00312847. A user thus navigates
`
`to a particular channel (e.g., channel 10 (NBC)) by selecting the frequency band (e.g., 192 to 198
`
`Mhz) associated with that channel. Defendants’ proposed construction of the term “in
`
`conjunction with a navigational command to the destination device for a predetermined channel”
`
`thus properly applies both the specification’s contextual use of the term, and the understanding
`
`of one of skill in the art as reflected by the accepted industry definition.
`
`4.
`
`“converted video signal” - ’492 Patent Family
`
`Defendants’ Proposed Construction:
`“a video signal where the underlying video
`content has been changed to be appropriate for
`display on the alternative display”
`
`Plaintiff’s Proposed Construction: Plain and
`ordinary meaning. No construction required.
`
`The term “converted video signal” is found in all of the claims of the ’492 Patent Family.
`
`For example, claim 1 of the ’492 Patent recites “processing by the conversion module the video
`
`signal to produce a converted video signal for use by the alternative display terminal.” ‘492
`
`Patent at 8:36-38. The parties’ dispute regarding this term essentially distills down to whether
`
`
`6 See Ex. A at VIS-001197.
`
`-15-
`
`Samsung Ex. 1006
`
`

`
`Case 2:12-cv-00548-MSD-DEM Document 65 Filed 04/16/13 Page 16 of 31 PageID# 910
`
`VIS can recapture claim scope expressly disclaimed during prosecution. See Phillips, 415 F.3d
`
`at 1317 (“[T]he prosecution history can often inform the meaning of the claim language by
`
`demonstrating how the inventor understood the invention and whether the inventor limited the
`
`invention in the course of prosecution, making the claim scope narrower than it would otherwise
`
`be.”). Not surprisingly, VIS proposes no construction and would instead have the jury ignore the
`
`extensive prosecution history surrounding this term.
`
`Specifically, during prosecution of the ’492 Patent the Examiner rejected then-pending
`
`claims in light of U.S. Patent 5,880,732 (“Tryding”) (Ex. E) and U.S. Publication No.
`
`2002/0102998 (“Lin”) (Ex. F). See Ex. G (Non-Final Office Action dated Jun. 13, 2007). In
`
`response, the Applicants distinguished Tryding and Lin by focusing on an apparent failure in
`
`those references to disclose converting underlying video content to be appropriate for display on
`
`the alternative display. See Ex. H (Amendment dated Aug. 22, 2007) at VIS-001681-1682.
`
`With respect to Tryding in particular, Applicants argued that this reference converts
`
`alphanumeric data from one protocol to an