Case 2:12-cv-00548-MSD-DEM Document 70 Filed 04/30/13 Page 1 of 27 PageID# 1360
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`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’ REPLY CLAIM CONSTRUCTION BRIEF
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`Pursuant to Paragraph 11(f) of the Court’s Rule 16(b) Scheduling Order (D.I. 56),
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`Defendants Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung
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`Telecommunications, LLC (collectively “Defendants”) submit this brief in reply to plaintiff
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`Virginia Innovation Sciences, Inc.’s (“VIS”) Opening Claim Construction Brief (D.I. 64)
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`(hereinafter “Pl. Op. Br.”).
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`I.
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`INTRODUCTION
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`In Defendants’ Opening Claim Construction Brief (D.I. 65) (hereinafter “Def. Op. Br.”),
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`Defendants presented constructions for the disputed terms in the six patents-in-suit1 that were
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`supported by detailed analyses of the claim language and specification of the patents-in-suit, the
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`pertinent prosecution history, and relevant extrinsic evidence. Plaintiff’s Opening Brief, on the
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`other hand, suggests no construction for two of the terms, offers new “alternative” constructions
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`1 The patents-in-suit include U.S. Patents Nos. 7,899,492 (“the ’492 Patent”), 8,050,711 (“the
`’711 Patent”), 8,145,268 (“the ’268 Patent”), 8,224,381 (“the ’381 Patent”), 7,957,733 (“the ’733
`Patent”) and 8,135,398 (“the ’398 Patent”).
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`for two others, and proposes constructions that include non-limiting language— “such as” and
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`“or the like”— that do nothing but add confusion to already complex terms. In its discussion of
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`these constructions, VIS fails to analyze any of the intrinsic evidence beyond the specification
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`and claims in the patents, and advances arguments directly contrary to those that it made to the
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`Patent Office. For reasons set forth more fully below, VIS’s proposed constructions are
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`erroneous and should be rejected.
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`II.
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`DISPUTED TERMS
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`1.
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`“a multimedia content item . . . destined for a destination device” -
`’733 Patent Family
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`Defendants’ Proposed Construction:
`“a multimedia content item that uniquely
`identifies the destination device on which it is
`to be displayed”
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`Plaintiff’s Proposed Construction: Plain and
`ordinary meaning. No construction required.
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`VIS claims it “is readily comprehensible” how one of skill in the art would have
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`understood “a multimedia content item . . . destined for a destination device.” Pl. Op. Br. at 13.
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`Yet as Defendants explained in their Opening Brief, the intrinsic record dictates that “destined
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`for a destination device,” in the context of the ’733 and ’398 Patents, means more than the
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`multimedia content item merely being fit for eventual delivery to any device. See e.g., ’733
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`Patent at 21:15-44; see also Def. Op. Br. at 7-10. This understanding of one of skill in the art
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`would not be “readily comprehensible” to a lay jury, and VIS’s proposed construction would
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`provide no guidance as to how a multimedia content item “destined for a destination device”
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`differs from any other multimedia content item.
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`VIS’s argument appears to rest on the theory that “[a]dopting Defendants’ proposal
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`would improperly narrow the preferred embodiment to exclude [a] scenario” described in
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`connection with Figure 20 of the ’733 Patent. Pl. Op. Br. at 13-14.2 This argument fails on
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`several fronts.
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`First, the particular embodiment VIS identifies would not be excluded by Defendants’
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`proposed construction. The cited passage does not describe “a situation where instructions
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`transmitted from a cellular phone identify the destination device for the multimedia content
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`item,” as VIS asserts. See Pl. Op. Br. at 13. Rather, a portion of this passage (that VIS omits)
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`describes that “an initial step” may involve a cellular phone making “various types of
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`requests,” such as a call to another user’s cellular phone or a request to obtain information such
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`as current news stories, not providing address information for a destination device. ’733 Patent
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`at 28:12-21 (emphasis added). After this “initial step”:
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`Corresponding format and addressing information is then provided to the
`MC/CHS. For example, the MC/CHS may be instructed that the IP address of the
`user’s PC is the destination address for the requested cellular phone call, and the
`cable port address of the user’s television may be the destination address for the
`requested news.
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`Id. at 28:22-27.3 The specification does not suggest that a user provides an IP address or cable
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`port address for multimedia content “destined for a destination device” from a cellular phone.
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`Indeed, in the context of the ’733 Patent, the most likely way that such information would be
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`provided is from the data itself uniquely identifying the destination address. See, e.g., ’733
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`Patent at 21:15-44 and 27:5-9. VIS’s reading of the above-quoted passage of the specification
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`2 Defendants note that it is not the “embodiment” that is construed, but the claims.
`3 A separate portion of the specification that VIS cites in its argument discusses “[d]evices that
`are intended to work with the MC System” that conduct “communications with the MC System.”
`Id. at 22:35-38. It states: “For example, a cellular phone may be equipped with software that
`provides the appropriately configured data package in initiating communications with the MC
`System that are directed to destination devices.” Id. at 22:38-42. This disclosure appears to be
`directed to a cellular phone acting as a source for multimedia content sent to the MC System, and
`the specification makes clear that the “data packages” uniquely identify the destination device.
`See id. at 21:15-51 (“For example, if the data package contains the identifier DI1 it is determined
`that the communication is intended for the main television in the household.”).
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`would call for the user to instruct the MC/CHS of an IP address, an impractical and strained
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`reading of the specification.
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`Furthermore, VIS’s argument that a particular embodiment may be excluded is
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`inapposite, because “the claims of the patent need not encompass all disclosed embodiments.”
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`TIP Systems, LLC v. Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, 1373 (Fed. Cir. 2008).
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`“[T]he mere fact that there is an alternative embodiment disclosed in the [asserted] patent that is
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`not encompassed by district court's claim construction does not outweigh the language of the
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`claim, especially when the court's construction is supported by the intrinsic evidence.” Id. The
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`portion of the specification that VIS cites discusses the last of twenty figures in the ’733 Patent,
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`and nothing indicates that this is the “preferred embodiment.” See ’733 Patent at 27:41-28:47.
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`The ’733 Patent describes this particular embodiment as an alternative embodiment with features
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`distinct from those discussed in Defendants’ Opening Brief.4 In short, even if VIS were correct
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`that one embodiment would not include a multimedia content item “destined for a destination
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`device,” there is no basis for asserting that this is the “preferred embodiment.”5
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`On the other hand, Defendants’ proposed construction would give the jury the benefit of
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`understanding that a multimedia content item “destined for a destination device” is so-“destined”
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`4 See, e.g.,’733 Patent, at 27:41-47 (“According to still another aspect of the present invention,
`the MC System allows a user to remotely make orders for content using a cellular phone,
`wherein the content may come from a variety of different sources.”). Also, unlike the
`embodiment upon which VIS focuses, Defendants’ proposed construction considers
`embodiments that actually include the relevant claim language in an effort to interpret that
`language’s meaning. See, e.g., ’733 Patent at 26:66-27:1 (“multimedia content from a source
`outside the home location, to be directed to a destination device within the home location”) and
`27:29-33 (“multimedia content . . . destined for a second device within the home location”).
`5 This stands in stark contrast to the case VIS purportedly relies upon, SynQor, Inc. v. Artesyn
`Techs., Inc., 709 F.3d 1365 (Fed. Cir. Mar. 13, 2013), where the defendant’s expert witness
`conceded that adopting the defendant’s construction “would prevent the claims from
`encompassing the preferred embodiment,” id. at 1378-79.
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`because it uniquely identifies that device. Defendants’ proposed construction would also avoid
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`rendering the words “destined for a destination device” meaningless, in view of other claim
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`limitations reciting that the content is routed and sent to the destination device. See, e.g., ’733
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`Patent at 29:20-23. As discussed in Defendants’ Opening Brief, a person of ordinary skill in the
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`art having read the specification would understand that a multimedia content item is “destined
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`for a destination device” when it uniquely identifies the destination device.
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`2.
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`“establishing a predetermined channel” - ’733 Patent Family
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`Defendants’ Proposed Construction:
`“specifying a selectable frequency band of an
`input on the destination device for receiving
`the multimedia content”
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`Plaintiff’s Proposed Construction: Plain and
`ordinary meaning. No construction needed.
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`Alternative: “establishing a communication
`pathway, such as an HDMI connection or the
`like”
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`In supporting its position for the term “establishing a predetermined channel,” VIS makes
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`two conflicting arguments, neither of which can withstand scrutiny. First, VIS argues that the
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`term does not require construction. Pl. Op. Br. at 15. Then, three sentences later, VIS proposes
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`a new construction of the term, and argues that “[w]ithin the context of the patents-in-suit a
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`‘predetermined channel’ refers to the communication pathways, such as an HDMI or S-Video
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`connection.” Id. VIS’s misguided incorporation of the patents’ inapplicable context for
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`“channel” contradicts the assertion that no construction of this term is needed. See, e.g., Info.
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`Tech. Innovation, LLC v. Motorola, Inc., 391 F. Supp. 2d 719, 723 (N.D. Ill. 2005) (“The very
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`fact that the meaning of a particular limitation is disputed suggests that the meaning is not
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`entirely clear from the language used in the patent and that the Court must construe the term.”).
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`Furthermore, VIS’s proposed “alternative” construction includes confusing non-limiting
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`language and is contrary to all of the intrinsic and extrinsic evidence. As Defendants discussed
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`in detail in their Opening Brief, the specification of the ’733 Patent uses the term “channel” in
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`two very different contexts. See Def. Op. Br. at 10-12. The first context, which is not applicable
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`to the asserted claims, is a “communication channel” or “connection channel,” referring to a
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`standard data connection that can be either wired or wireless. ’733 Patent at 25:22-29. The
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`second context, which is applicable to the asserted claims, uses “channel” in reference to
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`selectable frequency bands in an input. Id. at 20:1-9 and 26:41-55.
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`VIS’s Opening Brief contains no discussion of this dichotomy. Instead, it attempts to
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`substitute a term - “communication pathway” - that is not used in either of these contexts in the
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`specification. The specification of the ’733 Patent uses “communication pathway” in two
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`completely inapplicable scenarios: first, discussing networks used to send “locally applicable
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`internet content” to users, such as a Radio Access Network (“RAN”) or Core Cellular Network
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`(“CCN”) (’733 Patent, at 8:49-54); and second, as a general method of sending messages -
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`“phone, e-mail, etc.,” (id. at 12:51-55). Nothing in the specification of the ’733 Patent suggests
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`that these “communication pathways” are “operatively in communication with the destination
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`device” or selected by a “navigational command,” as required by the claims, and nowhere does
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`the specification suggest an “HDMI connection” as an example of a “communication pathway.”
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`Incredibly, VIS also does not provide any discussion of the prosecution history that led
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`directly to the addition of the term “establishing a predetermined channel” to the claims. VIS
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`argues that the intrinsic evidence “indicates that a selectable frequency channel is merely an
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`example of a predetermined channel in one embodiment” (Pl. Op. Br. at 15), yet ignores the
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`intrinsic evidence indisputably stating that this claim limitation refers to the “channel” in that
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`embodiment. Indeed, this embodiment is the sole support that the examiner identified for the
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`claim limitation. See Def. Op. Br., Ex. A (Feb. 18, 2011 Email of Quan Hua to Christopher
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`Tobin) at VIS-001197 (Examiner proposing amendment and stating that “support can be found
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`in Paragraph 00195 in Specification,” which corresponds to Column 26, lines 41-55 of the issued
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`’733 Patent). Such statements by the Examiner “may be evidence of how one skilled in the art
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`understood the term at the time the application as filed.” Morpho Detection, Inc. v. Smiths
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`Detection Inc., 2012 WL 5194076, *12 n.20 (E.D. Va. Oct. 19, 2012) (quoting Salazar v.
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`Procter & Gamble Co., 414 F.3d 1342, 1347 (Fed. Cir. 2005)).
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`VIS relies on a few dependent claims found in the ’398 Patent as support for a
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`construction that is contrary to the directly applicable intrinsic and extrinsic evidence noted in
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`Defendants’ Opening Brief. VIS is wrong when it asserts that these claims “require that the
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`‘predetermined channel,’ or communication pathway, be an HDMI connection to the television.”
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`Pl. Op. Br. at 16. None of these dependent claims state that the “predetermined channel” is a
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`“communication pathway” or an HDMI connection, as VIS’s argument seems to imply.6
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`Furthermore, VIS cannot base a construction directly contradictory to the relevant
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`intrinsic and extrinsic evidence solely on its interpretation of a subset of dependent claims
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`(which appear only in the continuation ’398 Patent). VIS improperly relies on AK Steel Corp. v.
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`Sollac, 344 F.3d 1234 (Fed. Cir. 2003), to argue (erroneously) that there is a hard-and-fast rule
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`that independent claims “must be at least as broad as the claims that depend from them.” Id. at
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`1242. The Federal Circuit rejected exactly this argument in Regents of University of Cal. v.
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`Dakocytomation Cal., Inc., 517 F.3d 1364 (Fed. Cir. 2008):
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`6 Claims 5, 40, and 58 recite that a “predetermined processing category prompts routing to the
`television through an HDMI input of the television,” not that the predetermined channel is an
`HDMI connection. ’398 Patent at 29:44-46, 33:62-64, 35:7-9. Similarly, claim 35 recites that
`“converting the multimedia content item comprises encoding the multimedia content item to
`HDMI format.” Id. at 33:39-41. The other dependent claims incorporate limitations reciting that
`“establishing a predetermined channel comprises managing a communication path for said
`transporting the multimedia content item to the destination device,” and that the “communication
`path implements an HDMI connection to the destination device.” Id. at 32:65-67 (claim 24),
`33:9-11 (claim 26), 34:27-29 (claim 48), 34:38-40 (claim 50), 35:27-29 (claim 63).
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`Appellants rely on AK Steel Corp . . . for the proposition that “dependent claims
`are presumed to be of narrower scope than the independent claims from which
`they depend” under the doctrine of claim differentiation. That argument,
`however, is likewise unpersuasive. Presumptions are rebuttable. We have held
`that “[w]hile it is true that dependent claims can aid in interpreting the scope of
`claims from which they depend, they are only an aid to interpretation and are not
`conclusive.” . . . Indeed, the presumption created by the doctrine of claim
`differentiation is “not a hard and fast rule and will be overcome by a contrary
`construction dictated by the written description or prosecution history.”
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`Id. at 1375 (quoting N. Am. Vaccine, Inc. v. Am. Cyanamid Co., 7 F.3d 1571, 1577 (Fed. Cir.
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`1993) and Seachange Int'l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1369 (Fed. Cir. 2005)) (emphasis
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`added). In Regents of University of Cal., the Federal Circuit upheld the district court’s
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`construction and held that “the prosecution history overcomes the presumption,” and that “the
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`correct construction . . . is one that excludes repetitive sequences, notwithstanding the presence
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`of certain dependent claims that do not exclude them.” Id.
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`Here, even if the few dependent claims VIS cites from the ’398 Patent conflict with
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`Defendants’ construction of “establishing a predetermined channel,” any reliance on the doctrine
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`of claim differentiation is clearly overcome by the written description and prosecution history in
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`this case. As discussed above and in detail in Defendants’ Opening Brief, during prosecution of
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`the ’733 Patent, the Examiner proposed the limitation of “establishing a predetermined channel,”
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`and when he did so, he pointed to the specific paragraph of the specification that supports
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`Defendants’ proposed construction. Def. Op. Br. at 12-13. The specification describes a “given
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`channel on [a] set top box,” such as channel 10 (i.e., the frequency band for NBC in Norfolk),
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`and distinguishes this type of “channel” from a conventional connection to the television,
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`including an HDMI connection. ’733 Patent at 26:41-55. As discussed above, the specification
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`also describes “communication pathway” and a “channel” as two completely different things.
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`Finally, while VIS argues that Defendants’ proposed construction ignores “ordinary
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`information in the field” (Pl. Op. Br. at 16), VIS offers no evidence of what that “ordinary
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`information in the field” might be. Defendants, on the other hand, have identified several
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`contemporary dictionaries demonstrating that one of skill in the art would have understood
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`“establishing a predetermined channel” to mean “specifying a selectable frequency band of an
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`input on the destination device for receiving the multimedia content.” Defendants’ proposed
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`construction gives the claim term the meaning it would have to one of skill in the art, in view of
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`the overwhelming intrinsic and extrinsic evidence that VIS tries to ignore. For these reasons,
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`Defendants’ proposed construction should be adopted.
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`3.
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`“in conjunction with a navigational command to the destination
`device for the predetermined channel” - ’733 Patent Family
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`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”
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`Plaintiff’s Proposed Construction: Plain and
`ordinary meaning. No construction required.
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`Alternative: “in conjunction with a command
`to the destination device to select the
`communication pathway”
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`Once again, VIS contradicts its own argument, first arguing that no construction is
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`required, and then proposing, for the first time, an “alternative” construction that finds no
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`support in the intrinsic or extrinsic evidence. Indeed, VIS’s Opening Brief does not cite any
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`intrinsic or extrinsic evidence supporting its “alternative” construction. Pl. Op. Br. at 17.
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`VIS argues that the claim language “in conjunction with a navigational command to the
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`destination device for the predetermined channel” is already “readily comprehensible.” Id. Yet
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`as discussed above and in Defendants’ Opening Brief, Plaintiff’s refusal to construe this term
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`ignores the two different meanings of “channel” used in the specification and would leave the
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`jury to guess as to which applies here. See Def. Op. Br. at 14. In addition, not construing this
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`term would leave the jury to guess how one of skill in the art would have understood the term
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`“navigational command,” a term that appears nowhere in the specification.
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`Tacitly acknowledging that the term is not so clear, VIS proposes an “alternative”
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`construction. Pl. Op. Br. at 17. Rather than proposing a construction that clarifies the claim term
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`“navigational command,” VIS simply eliminates the term “navigational,” and (without any
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`explanation) replaces the phrase “for the predetermined channel” with “to select the
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`communication pathway.” Id. VIS does not identify a single example from the specification of a
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`command used “to select the communication pathway,” and in fact does not offer any evidence,
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`argument, or rationale in support of its “alternative” construction. Id. VIS once again ignores
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`the intrinsic evidence that flatly contradicts its proposed construction, including the exact portion
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`of the specification that the Examiner relied upon to show “a navigational command to the
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`destination device for the predetermined channel.” See Def. Op. Br., Ex. A at VIS-001197
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`While VIS now recognizes that construction of this term is necessary, it fails to show any
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`support for its construction from the intrinsic and extrinsic evidence. Instead, VIS relies only on
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`a Federal Circuit case stating the truism that “Courts do not rewrite claims; instead, we give
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`effect to the terms chosen by the patentee.” Smartmetric Inc. v. America Exp. Co., 476 F. App’x
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`742, 744-45 (Fed. Cir. 2012) (quoting K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1364 (Fed. Cir.
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`1999)). This is not a controversial point of law and does not advance VIS’s position. Giving
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`effect to the terms chosen by the patentee does not mean foregoing claim construction. In fact,
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`in Smartmetric, the Federal Circuit upheld the district court’s arguably narrowing construction of
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`the disputed claim term against the plaintiff’s challenge. Smartmetric, 476 F. App’x at 744-45
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`(affirming construction of “insertion of said data card into said data card reader” as meaning “the
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`data card is physically inserted into a recess of the data card reader”).
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`In this case, Defendants’ proposed construction gives effect to the term “in conjunction
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`with a navigational command to the destination device for the predetermined channel,” as
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`proposed by the Examiner and agreed to by the patentee. Accordingly, Defendants’ proposed
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`construction should be adopted.
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`4.
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`“converted video signal” - ’492 Patent Family
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`Defendants’ Proposed Construction:
`“a video signal where the underlying video
`content has been changed to be appropriate for
`display on the alternative display”
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`Plaintiff’s Proposed Construction: Plain and
`ordinary meaning. No construction required.
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`In arguing that the “converted video signal” limitation of the ’492 Patent family does not
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`need to be construed, VIS’s Opening Brief fails to address its statements to the Patent Office
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`during prosecution. Specifically, VIS fails to mention that it argued to the Patent Office that the
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`conversion of “underlying content” distinguished its claims from the prior art. See Def. Op. Br.
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`at 15-18. Instead, VIS improperly tries to recapture subject matter expressly given up during
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`prosecution, telling this Court that no construction of the term is necessary and then also offering
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`an unsupportable overbroad interpretation of “converted video signal.” Pl. Op. Br. at 11.
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`First, VIS argues that “[t]he term ‘converted video signal’ does not require construction.”
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`Id. In support, VIS cites a host of cases for the unremarkable proposition that plain and ordinary
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`meaning is appropriate in some circumstances. Id. Defendants do not dispute the premise, but
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`disagree with its applicability when the patentee repeatedly emphasized an interpretation of the
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`claim term in order to distinguish prior art.7 Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed.
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`Cir. 2005) (the prosecution history, “[l]ike the specification . . . provides evidence of who the
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`PTO and the inventor understood the patent,” and “was created by the patentee in attempting to
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`explain and obtain the patent”); see also iHance, Inc. v. Eloqua Ltd., 2012 WL 1571327, *11-12
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`(E.D. Va. May 3, 2012) (holding that, although claim language was “at first blush” subject to
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`7 See Def. Op. Br. at 15-18 (discussing, e.g., Ex. H, at VIS-001681-82, including VIS’s
`arguments including that prior art did not include “the conversion of the underlying content
`(video or otherwise)”).
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`plaintiff’s interpretation, “consideration of the entire intrinsic record,” including arguments to
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`distinguish over prior art, “mandates a modification to such interpretation”). VIS could not have
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`been clearer in providing its understanding, to the Examiner and for the intrinsic record of the
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`patents, that a converted video signal required the conversion of underlying content.
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`In addition, despite arguing that no construction is necessary, VIS offers yet another
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`interpretation of “converted video signal,” purportedly “[a]s used in the specification.” Pl. Op.
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`Br. at 11. VIS argues that “converted video signal” “simply requires that the video signal has
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`changed, such as by altering the video format or changing the signal strength.” Id. (emphasis
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`added).8 In so arguing, VIS contradicts not only its prosecution arguments that conversion
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`requires a change in the “underlying content,” as discussed above and in Defendants’ Opening
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`Brief, but also its repeated arguments distinguishing “mere decoding of a compressed video
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`signal.” See Ex. R (Amend. dated May 3, 2010, VIS-001423-1445) at VIS-001436-37
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`(“Applicant’s claimed invention deals not only with mere decoding of a compressed video
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`signal, but a conversion from a mobile terminal format to a different display format for the
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`alternative display terminal.”); Ex. S (Amend. dated Oct. 8, 2013, VIS-001353-1377) at VIS-
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`001368 (again arguing, to distinguish a different reference, that “Applicant’s claimed invention
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`deals not only with mere decoding of a compressed video signal, but a conversion from a mobile
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`terminal format to a different display format for the alternative display terminal.”).
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`Rather than address the prosecution history, VIS falsely argues that “the patents-in-suit
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`never mention changing ‘the underlying video content,’” and thus that “Defendants’ construction
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`is simply inconsistent with the intrinsic record.” Pl. Op. Br. at 12. Of course, the “intrinsic
`
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`8 Elsewhere in its Opening Brief, VIS argues for another construction that directly contradicts its
`statements during prosecution, arguing “the invention of the patents-in-suit concerns changing
`the signal format, not the underlying content.” Id. at 12 (emphasis added).
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`Samsung Ex. 1007
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`Case 2:12-cv-00548-MSD-DEM Document 70 Filed 04/30/13 Page 13 of 27 PageID# 1372
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`record” includes not just the specification and claims, but also these statements that VIS made
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`during prosecution. See Phillips, 415 F.3d at 1317. Here, the intrinsic evidence clarifies that a
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`“converted video signal,” in the context of the patents-in-suit, is a video signal in which the
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`underlying video content has been changed. Accordingly, Defendants’ proposed construction
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`should be adopted.
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`5.
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`“mobile terminal” - ’492 and ’733 Patent Families
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`Defendants’ Proposed Construction:
`“a portable cellular-equipped device”
`
`Plaintiff’s Proposed Construction: “hand-
`held mobile devices such as cellular phones
`and personal digital assistants, not desktop or
`laptop computers”
`
`For the limitation “mobile terminal,” Defendants have proposed a construction that
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`incorporates the two touchstones of the “mobile terminal” described in VIS’s patents –
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`portability and cellular-capability. Every Penny Counts, Inc. v. American Express Co., 563 F.3d
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`1378, 1381 (Fed. Cir. 2009) (“The purpose of claim construction is to determine the meaning and
`
`scope of the patent claims that the plaintiff alleges have been infringed.”). Defendants’
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`construction “assign[s] a fixed, unambiguous, legally operative meaning to the claim.” Liquid
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`Dynamics Corp. v. Vaughan Co., Inc., 355 F.3d 1361, 1367 (Fed. Cir. 2004). VIS, in contrast,
`
`merely proposes a list of devices that it believes satisfies the term. Such an approach does not
`
`provide a “fixed, unambiguous, legally operative” definition of a “mobile terminal,” and thus is
`
`not a proper construction of the term. Id.; see also, Plant Equip., Inc. v. Intrado, Inc., 2012 WL
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`1468594 at *11 (E.D. Tex. Apr. 27, 2012) (“[T]he suggested inclusion of an example in a
`
`construction—‘such as TCP/IP’—is improper.”).
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`To this end, adopting VIS’s construction-by-example would provide no guidance to a
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`jury seeking to determine whether any accused device met these terms and, in fact, would create
`
`further uncertainty. For example, in VIS’s infringement contentions, VIS alleges that a tablet is
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`Case 2:12-cv-00548-MSD-DEM Document 70 Filed 04/30/13 Page 14 of 27 PageID# 1373
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`a “personal digital assistant.” Ex. T (“Application of U.S. Patent No. 8,050,711 to Samsung
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`Galaxy Tablets with Galaxy Tab HDTV Adapter”) at 6. To supposedly support this allegation,
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`VIS provides citations to the website Wikipedia.org and to a dictionary reference that apparently
`
`has not been produced in this case. Id. Neither of these citations discusses a “tablet.” VIS’s
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`approach begs further questions: What constitutes a personal digital assistant versus a laptop?
`
`Just what size must a particular device have to qualify as “handheld?” Adopting a construction
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`that would merely invite these questions runs contrary to the very reason courts are charged with
`
`construing the scope of disputed claim terms. See, e.g., Every Penny Counts, 563 F.3d at 1383
`
`(“The court's obligation is to ensure that questions of the scope of the patent claims are not left to
`
`the jury. In order to fulfill this obligation, the court must see to it that disputes concerning the
`
`scope of the patent claims are fully resolved.”).
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`VIS alleges that Defendants’ proposed construction is “inconsistent with, and
`
`contradicted by, the intrinsic evidence,” and “ignor[es] the explicit definition of the term
`
`provided by the patentee.” Pl. Op. Br. at 7. Defendants’ construction does no such thing. As
`
`noted in Defendants’ Opening Brief, the passage in the specification to which VIS refers merely
`
`lists examples of a “mobile terminal,” referring to them as typically handheld mobile devices,
`
`such as cellular phones and personal digital assistants. See ’492 Patent at 4:37-39. The
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`specification describes a cellular phone receiving the processed multimedia information through
`
`a cellular network or, in the sentence cited by VIS, through a wireless LAN network. Id. at 3:31-
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`42; see also Def. Op. Br. at 19-20. But this merely describes from where a device receives the
`
`particular signal that is processed, not what a “mobile terminal” is.
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`Samsung Ex. 1007
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`For these reasons, as well as those discussed in Defe