s}
`
`Case 2:13-CV-OlOBl-JRG—RSP Document 334 Filed 03/25/15 Page 1 of 69 PagelD'#i 4863
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`Case No. 2:13—CV—1061—IRG—RSP
`LEAD CASE
`
`§
`
`§ §
`
`§ §
`
`§
`§
`
`§ §
`
`§ §
`
`E—WATCH INC., et al.,
`
`Plaintz‘fif
`
`V.
`.
`APPLE, INC,
`
`Defendant.
`
`MEMORANDUNI OPINION AND ORDER
`
`On January 16, 2015, the Court held a hearing to determine the proper construction of
`
`the disputed claim terms in United States Patent Nos. 7,365,871 (“the ‘871 Patent”) and
`
`7,643,168 (“the ‘168 Patent”) (collectively “the Asserted Patents”). After considering the
`
`arguments made by the parties at the hearing and in the parties’ claim construction briefing (Dkt.
`
`Nos. 216, 224, and 231), the Court issues this Claim Construction Memorandum and Order.
`
`|PR2015-00412
`
`(cid:36)(cid:83)(cid:83)(cid:79)(cid:72)(cid:3)(cid:44)(cid:81)(cid:70)(cid:17)
`Apple Inc.
`Exh. 1012
`Petitioner: Apple Inc./ Patent Owner: E-Watch, Inc.
`(cid:51)(cid:72)(cid:87)(cid:76)(cid:87)(cid:76)(cid:82)(cid:81)(cid:72)(cid:85)(cid:29)(cid:3)(cid:3)(cid:36)(cid:83)(cid:83)(cid:79)(cid:72)(cid:3)(cid:44)(cid:81)(cid:70)(cid:17)(cid:3)(cid:18)(cid:3)(cid:51)(cid:68)(cid:87)(cid:72)(cid:81)(cid:87)(cid:3)(cid:50)(cid:90)(cid:81)(cid:72)(cid:85)(cid:29)(cid:3)(cid:3)(cid:40)(cid:16)(cid:58)(cid:68)(cid:87)(cid:70)(cid:75)(cid:15)(cid:3)(cid:44)(cid:81)(cid:70)(cid:17)
`(cid:44)(cid:51)(cid:53)(cid:21)(cid:19)(cid:20)(cid:24)(cid:16)(cid:19)(cid:19)(cid:23)(cid:20)(cid:21)
`
`Exh.1012
`
`

`

`Case 2:13-cv-01061-JRG-RSP Document 334 Filed 03/25/15 Page 1 of 69 Page!D #: 4863
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`E-WATCH INC., et al.,
`
`Plaintiff,
`
`v.
`
`APPLE, INC.,
`
`Defendant.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Case No. 2:13-CV-1061-JRG-RSP
`LEAD CASE
`
`MEMORANDUM OPINION AND ORDER
`
`On January 16, :1015, the Court held a hearing to detennine the proper construction of
`
`the disputed claim terms in United States Patent Nos. 7,365,871 ("the '871 Patent") and
`
`7,643,168 ("the '168 Patent") (collectively "the Asserted Patents"). After considering the
`
`arguments made by the parties at the hearing and in the parties' claim construction briefing (Dkt.
`
`Nos. 216, 224, and 231), the Court issues this Claim Construction Memorandum and Order.
`
`Page 1 of69
`
`

`

`Case 2:13-cv-01061-JRG-RSP Document 334 Filed 03/25/15 Page 2 of 69 Page!D #: 4864
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`IlL
`
`IV.
`
`BACKGROUND ................................................................................................................ 3
`
`APPLICABLE LAW .......................................................................................................... 5
`
`CONSTRUCTION OF AGREED TERMS ........................................................................ 9
`
`CONSTRUCTION OF DISPUTED TERMS ................................................................... 10
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`J.
`
`K.
`
`L.
`
`M.
`
`N.
`
`0.
`
`P.
`
`Q.
`
`R.
`
`S.
`
`"by the user" ........................................................................................................ 10
`
`"set-up" ................................................................................................................ 15
`
`"the portable housing being wireless" ................................................................. 17
`
`"adapted for transmitting" ................................................................................... 20
`
`"processor" phrases ............................................................................................. 22
`
`"manually portable housing," "handheld," and "portable housing" .................... 30
`
`"supported/supporting/suppmis" ......................................................................... 33
`
`"self-contained" ................................................................................................... 35
`
`"input keys," "keypad," and "a set of input keys" .............................................. 36
`
`"image data signal(s)" and "viewing incoming image data signals" .................. 41
`
`"image framed by the camera" and "generating a digitized framed image" ....... 44
`
`"digitiz[e][ed][ing]" ............................................................................................. 47
`
`"telephone network" ............................................................................................ 51
`
`"selectively transmitting" and "selectively displaying" ...................................... 53
`
`"camera control circuit" ...................................................................................... 56
`
`"transmission protocol" ....................................................................................... 58
`
`"media" ................................................................................................................ 60
`
`"vievvfinder" ........................................................................................................ 63
`
`"processing platform"······································:··················································· 66
`
`V.
`
`CONCLUSION ................................................................................................................. 69
`
`Page 2 of69
`
`

`

`Case 2:13-cv-01061-JRG-RSP Document 334 Filed- 03/25/15 Page 3 of 69 PageiD #: 4865
`
`I.
`
`BACKGROUND
`
`The Asserted Patents are titled "Apparatus for Capturing, Converting and Transmitting a
`
`Visual Image Signal via a Digital Transmission System," and generally share a common
`
`specification. The Asserted Patents relate to an apparatus used for image capture, conversion,
`
`1
`
`compression, storage, and transmission. See '168 Patent at Abstract. 1 The specification states
`
`that a camera and a signal converter may be incorporated into an integrated unit ''wherein the
`
`converted signal may be transmitted on a real time basis or may be stored in memory for later
`
`recall and transmission." Id at 2:28-31. The specification adds that this design "permits
`
`maximum flexibility, with the camera/converter/telephone or other transmission device being
`
`designed in a modular configuration wherein any or all of the devices may exist as integrated or
`
`independent units." Id at 2:32-36. For example, Figure 6B illustrates "a basic portable system,
`
`with a battery powered portable module 160 having a self-contained power source 162." Id at
`
`11:24-26.
`
`1 The Abstract of the '168 Patent follows:
`An image capture, conversion, compression, storage and transmission system
`provides a data signal representing the image in a format and protocol capable of
`being transmitted over any of a plurality of readily available transmission systems
`and received by readily available, standard equipment receiving stations. In its
`most comprehensive form, the system is capable of sending and receiving audio,
`documentary and visual image data to and from standard remote stations readily
`available throughout the world.
`
`Page 3 of69
`
`

`

`Case 2:13-cv-01061-JRG-RSP Document 334 Filed 03/25/15 Page 4 of 69 PageiD #: 4866
`
`RG. 68
`
`The specification adds that this system "may include an integral RAM and/or the removable
`
`memory module as indicated by the image card 72," and that "camera 1 0 may be an integral
`
`feature ofthe portable module 160, or may be a detached unit, as desired." Id. at 11:26-30. The
`
`specification further states that "cellular telephone 164 is provided with a data jack 166 for
`
`connecting to the output jack 168 of the module, whereby the image data signal may be
`
`transmitted via the cellular telephone to a remote facsimile machine over standard cellular and
`
`telephone company facilities." Id. at 11:3 0-35. As an alternate embodiment, the specification
`
`states that "where desired, an integral cellular phone can be incorporated in the camera housing
`
`and transmission can be sent directly from the camera housing to a remote receiving station." Id
`
`at 12:1-4.
`
`Regarding the camera, the specification states that the video image may be captured
`
`"using a digital camera, an analog camera, or a video camera such as a camcorder." Id. at 2:37-
`
`3 9. The specification adds that "[t]he captured video image is then converted into still frame
`
`digitized format for transmission over any of a variety of transmission systems." Id. at 2:3 9-41.
`
`The specification further states that "once the signal is digitized, the transmission protocols are
`
`viiiually endless." Id. at 2:43-45.
`
`Page 4 of69
`
`

`

`Case 2:13-cv-01061-JRG-RSP Document 334 Filed 03/25/15 Page 5.of 69 PageJD #: 4867
`
`Plaintiff brings suit alleging infringement of claims 1-6 and 12-15 of the '871 Patent,
`
`and claims 1-6, 8, 10, 11, 13-29, and 31 ofthe '168 Patent. Claim 1 ofthe '871 Patent is an
`
`exemplary claim and recites the following elements (disputed terms in italics):
`
`1. A handheld self-contained cellular telephone and integrated
`image processing system for both sending and receiving
`telephonic audio signals and for capturing a visual image
`and transmitting it to a compatible remote receiving
`station of a wireless telephone network, the system
`comprising:
`a manually portable housing;
`an integral image capture device compnsmg an electronic
`camera contained within the portable housing;
`a display for displaying an image framed by the camera, the
`display being supported by the housing, the display and
`the electronic camera being commonly movable in the
`housing when the housing is moved by hand;
`a processor in the housing for generating an image data signal
`representing the image framed by the camera;
`a memory associated with the processor for receiving and
`the digitized framed
`image, accessible
`for
`storing
`selectively displaying
`in
`the display window and
`accessible for selectively transmitting over the wireless
`telephone network the digitized framed image;
`a user interface for enabling a user to select the image data
`signal for viewing and transmission;
`a telephonic system in the housing for sending and receiving
`digitized audio signals and for sending the image data
`signal;
`alphanumeric input keys in the housing for permitting manually
`input digitized alphanumeric signals to be input to the
`processor, the telephonic system further used for sending
`the digitized alphanumeric signals;
`a wireless communications device adapted for transmitting any
`of the digitized signals to the compatible remote receiving
`station; and
`a power supply for powering the system.
`
`II.
`
`APPLICABLE LAW
`
`Page 5 of69
`
`

`

`Case 2:13-cv-01061-JRG-RSP Document 334 Filed 03/25/15 Page 6 of 69 Page!D #: 4868
`
`A. Claim Construction
`
`"It is a 'bedrock principle' of patent law that 'the claims of a patent define the invention
`
`to which the patentee is entitled the right to exclude."' Phillips v. AWH Corp., 415 F.3d 1303,
`
`1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys.,
`
`Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning ofthe claims, courts start
`
`by considering the intrinsic evidence. See id. at 1313; C.R. Bard, Inc. v. US. Surgical Corp.,
`
`388 F.3d 858, 861 (Fed. Cir. 2004); Bell At!. Network Servs., Inc. v. Covad Commc'ns Group,
`
`Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims
`
`themselves, the specification, and the prosecution history. See Phillips, 415 F.3d at 1314; C.R.
`
`Bard, Inc., 388 F.3d at 861. Courts give claim terms their ordinary and accustomed meaning as
`
`understood by one of ordinary skill in the art at the time of the invention in the context of the
`
`entire patent. Phillips, 415 F.3d at 1312-13; Alloc, Inc. v. Int'l Trade Comm 'n, 342 F.3d 1361,
`
`1368 (Fed. Cir. 2003).
`
`The claims themselves provide substantial guidance in determining the meanmg of
`
`particular claim terms. Phillips, 415 F.3d at 1314. First, a term's context in the asserted claim
`
`can be very instructive. Id. Other asserted or unasserted claims can also aid in determining the
`
`claim's meaning because claim terms are typically used consistently throughout the patent. Id.
`
`Differences among the claim terms can also assist in understanding a term's meaning. Id. For
`
`example, when a dependent claim adds a limitation to an independent claim, it is presumed that
`
`the independent claim does not include the limitation. Id. at 1314-15.
`
`"[C]laims 'must be read in view of the specification, of which they are a part."' Id.
`
`(quoting 1\IJarkman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)).
`
`"[T]he specification 'is always highly relevant to the claim construction analysis. Usually, it is
`
`dispositive; it is the single best guide to the meaning of a disputed term."' Id. (quoting Vitronics
`
`Page 6 of69
`
`

`

`Case 2:13-cv-01061-JRG-RSP Document 334 Filed 03/25/15 Page 7 of 69 Page ID#: 4869
`
`Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N Am.
`
`Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). This is true because a patentee may define his own
`
`terms, give a claim term a different meaning than the term would otherwise possess, or disclaim
`
`or disavow the claim scope. Phillips, 415 F.3d at 1316.
`
`In these situations, the inventor's
`
`lexicography governs. Id. The specification may also resolve ambiguous claim terms "where
`
`the ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to
`
`permit the scope of the claim to be ascertained from the words alone." Telejlex, Inc., 299 F.3d at
`
`1325. But, "'[a]lthough the specification may aid the court in interpreting the meaning of
`
`disputed claim language, particular embodiments and examples appearing in the specification
`
`will not generally be read into the claims."' Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d
`
`1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560,
`
`1571 (Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323. The prosecution history is another
`
`tool to supply the proper context for claim construction because a patent applicant may also
`
`define a term in prosecuting the patent. Home Diagnostics, Inc., v. Lifescan, Inc., 381 F.3d 1352,
`
`1356 (Fed. Cir. 2004) ("As in the case of the specification, a patent applicant may define a term
`
`in prosecuting a patent.").
`
`Although extrinsic evidence can be useful, it is "'less significant than the intrinsic record
`
`in determining the legally operative meaning of claim language."' Phillips, 415 F.3d at 1317
`
`(quoting C.R. Bard, Inc., 3 88 F.3d at 862). Technical dictionaries and treatises may help a court
`
`understand the underlying technology and the manner in which one skilled in the art might use
`
`claim terms, but technical dictionaries and treatises may provide definitions that are too broad or
`
`may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert
`
`testimony may aid a court in understanding the underlying technology and determining the
`
`Page 7 of69
`
`

`

`Case 2:13-cv-01061-JRG-RSP Document 334 Filed 03/25/15 Page 8 of 69 Page!D #: 4870
`
`particular meaning of a term in the pertinent field, but an expert's conclusory, unsupported
`
`assertions as to a term's definition are entirely unhelpful to a court. Id. Generally, extrinsic
`
`evidence is "less reliable than the patent and its prosecution history in determining how to read
`
`claim terms." Id.
`
`B. Construction Indefiniteness
`
`Patent claims must particularly point out and distinctly claim the subject matter regarded
`
`as the invention. 35 U.S.C. § 112(b). "Whether a claim meets this definiteness requirement is a
`
`matter of law. Young v. Lumenis, Inc., 492 F.3d 1336, 1344 (Fed. Cir. 2007). A party
`
`challenging the definiteness of a claim must show it is invalid by clear and convincing evidence.
`
`Takeda Pharm. Co. v. Zydus Pharms. USA, Inc., 743 F.3d 1359, 1368 (Fed. Cir.2014). The
`
`ultimate issue is whether someone working in the relevant technical field could understand the
`
`bounds of a claim. Haemonetics Corp. v. Baxter Healthcare Corp., 607 F.3d 776, 783 (Fed. Cir.
`
`2010). Specifically, "[a] patent is invalid for indefiniteness if its claims, read in light of the
`
`specification delineating the patent, and the prosecution history, fail to inform, with reasonable
`
`certainty, those skilled in the art about the scope of the invention." Nautilus Inc. v. Biosig
`
`Instruments, Inc., 572 U.S. _ , _
`
`(2014) (slip. op., at 1).
`
`C. Means-plus-function Analysis
`
`"Where a claim limitation is expressed in "means plus function" language and does not
`
`recite definite structure in support of its function, the limitation is subject to 35 U.S.C. § 112, ~ 6.
`
`Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). In relevant part, 35
`
`U.S.C. § 112, ~ 6 mandates that "such a claim limitation 'be construed to cover the
`
`corresponding structure ... described in the specification and equivalents thereof."' Id (citing 35
`
`U.S.C. § 112, ~ 6). Accordingly, when faced with means-plus-function limitations, courts "must
`
`Page 8 of69
`
`

`

`Case 2:13--cv-01061-JRG-RSP Document 334 Filed 03/25/15 Page 9 of 69 PageiD #: 4871
`
`turn to the written description of the patent to find the structure that corresponds to the means
`
`recited in the [limitations]." Id.
`
`However,
`
`'"a claim term that does not use
`
`'means' will trigger the rebuttable
`
`presumption that § 112, ~ 6 does not apply."' LightingWorld, Inc. v. Birchwood Lighting, Inc.,
`
`382 F.3d 1354, 1358 (Fed. Cir. 2004) (quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
`
`1359, 1369 (Fed. Cir. 2002)). This presumption can be rebutted "by showing that the claim
`
`element recite[s] a function without reciting sufficient structure for performing that function."
`
`Watts v. XL Sys., 232 F.3d 877, 880 (Fed. Cir. 2000) (citing Rodime PLC v. Seagate Tech., Inc.,
`
`174 F.3d 1294, 1302 (Fed. Cir. 1999)). However, the presumption "is a strong one that is not
`
`readily overcome." Lighting World, Inc., 382 F.3d at 1358. "In cases where the claims do not
`
`recite the term 'means,' considering intrinsic and extrinsic evidence is usually helpful, as the
`
`litigated issue often reduces to whether skilled artisans, after reading the patent, would conclude
`
`that a claim limitation is so devoid of structure that the drafter constructively engaged in means-
`
`plus-function claiming." Inventio AG v. Thyssenkrupp Elevator Ams. Corp., 649 F.3d 1350, 1357
`
`(Fed. Cir. 2011).
`
`IlL
`
`CONSTRUCTION OF AGREED TERMS
`
`The parties have agreed to the construction of the following terms:
`
`Claim 't~rili!Phrase .- .
`housing
`(' 871 Patent, claims 1, 4, 6, 8, 9, 1 0,
`12, 13, 15)
`alphanumeric
`('871 Patent, claims 1, 3, 6, 7, 9, 12)
`electronic camera
`('871 Patent, claims 1, 6, 9, 12)
`housing
`('168 Patent, claims 1, 3, 4, 19, 20, 21,
`22, 24, 26, 27, 29)
`imao-e collection device
`
`an enclosing structure
`
`characters consisting ofletters and/or digits
`
`a camera that operates electronically
`
`an enclosing structure
`
`Page 9 of69
`
`

`

`Case 2:13-cv-01061-JRG-RSP Document 334 Filed 03/25/15 Page 10 of 69 PageiD #: 4872
`
`('168 Patent, claims 1, 8, 19, 21, 22,
`24, 26, 27, 29)
`compress[ ed][ion]
`('168 Patent, claims 1, 6, 16, 18, 22,
`24, 26, 27, 29)
`a display screen apart from the
`viewfinder
`('168 Patent, claims 23, 25, 28, 31)
`compression algorithm
`('168 Patent, claims 1, 22, 24, 26, 27,
`29)
`
`represent in a more compact manner
`
`the display screen is separate from the viewfinder
`
`No construction necessary
`
`Dkt. No. 241 at 10, 12. In view ofthe parties' agreements on the proper construction of each of
`
`the identified terms, the Court hereby ADOPTS AND APPROVES the parties' agreed
`
`constructions.
`
`IV.
`
`CONSTRUCTION OF DISPUTED TERMS
`
`The parties' dispute focuses on the meaning and scope of eight terms/phrases in the '168
`
`Patent and tvventy-one terms/phrase in the '871 Patent?
`
`A. "by the user"
`
`Indefinite
`
`The parties dispute whether the independent claims of the '16 8 Patent are indefinite.
`
`Defendants argue that the independent claims fall squarely within JP XL and its progeny by
`
`improperly mixing apparatus and method elements. (Dkt. No. 224 at 9) (citing IPXL Holdings,
`
`L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005)). Specifically, Defendants
`
`argue that the phrase "operation of the input device by the user," the phrase "movement by the
`
`2 The Court notes that the parties did not present oral arguments for the following tenns/phrases:
`"setup,"
`"the
`portable
`housing
`being wireless,"
`"adapted
`for
`transmitting,"
`"supported/supporting/supports," "image data signal(s)," "viewing
`incoming
`image data
`signals," "image framed by the camera," "generating a digitized framed image," "telephone
`network," "selectively transmitting," "selectively displaying," "circuit," "transmission protocol,"
`"media," "viewfinder," and "processing platform."
`
`Page 10 of69
`
`

`

`Case 2:13-cv-01061-JRG-RSP Document 334 Filed 03/25/15 Page 11 of 69 Page ID#: 4873
`
`user of the portable housing commonly moving the image collection device," and the phrase
`
`"movement by the user of the portable housing commonly moving the display," recite steps that
`
`must be performed by the user. (Dkt. No. 224 at 9.) According to Defendants, the recitation of
`
`these phrases improperly mixes apparatus and method limitations, making each independent
`
`claim indefinite, and thus invalid under 35 U.S.C. §112, ~ 2. (Dkt. No. 224 at 10.)
`
`Defendants further argue that these method steps are not mere functional limitations, but
`
`instead are stand-alone limitations. (Dkt. No. 224 at 1 0.) According to Defendants, the '168
`
`Patent claims cover not only the apparatus and its hardware components, but also the acts of
`
`operating and moving the apparatus. (Dkt. No. 224 at 1 0.) Defendants further argue that the
`
`claims specifically state that the "operation" and "movement" steps are performed "by the user,"
`
`and external input by a person canriot be a functional description of the capabilities of a claimed
`
`device. (Dkt. No. 224 at 10.)
`
`Plaintiff responds that the independent claims of the '168 Patent set forth certain
`
`functional limitations of the claimed apparatus, and do not mix apparatus and method claims.
`
`(Dkt. No. 231 at 3.) Plaintiff argues that apparatus claims that use functional language are "not
`
`necessarily indefinite." (Dkt. No. 231 at 3.) (quoting Microprocessor Enhancement Corp. v.
`
`Texas Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008)). Plaintiff contends that reading
`
`the phrase "by the user" in context makes clear that the phrase describes the capabilities of the
`
`claimed apparatus. (Dkt. No. 231 at 4.) Plaintiff argues that the phrase "operation of the input
`
`device by the user enabling the memory," refer to the capabilities of the input device to cause the
`
`memory to retain a visual data image. (Dkt. No. 231 at 4.) Plaintiff further argues that nowhere
`
`does the claim language require a user to perform any steps to infringe. (Dkt. No. 231 at 4.)
`
`Plaintiff next contends that the phrase "movement by the user of the portable housing
`
`Page 11 of69
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`

`Case 2:13-cv-01061-JRG-RSP Document 334 Filed 03/25/15 Page 12 of 69 PageiD #: 4874
`
`commonly moving the image collection device," and the phrase "movement by the user of the
`
`portable housing commonly moving the display," refer to the physical characteristic that the
`
`image collection device and display move contemporaneously with the portable housing. (Dkt.
`
`No. 231 at 4.) According to Plaintiff, the user need not move the apparatus to infringe, and the
`
`recitation of"by the user" does not introduce indefiniteness. (Dkt. No. 231 at 4.)
`
`For the following reasons, the Court finds that the claims of the '168 Patent are indefinite
`
`because they improperly include method steps in apparatus claims.
`
`1. Analysis
`
`The phrase "operation of the input device by the user ... "appears in claims 1, 22, 24, 26,
`
`27, and 29 ofthe '168 Patent. The Court finds that the phrase is used consistently in the claims
`
`and is intended to have the same general meaning in each claim. The Court further notes that the
`
`phrase appears in all of the independent claims, and is therefore incorporated into all of the
`
`dependent claims of the '168 Patent. The phrase "movement by the user of the portable housing
`
`commonly moving the image collection device" appears in claims 1, 22, and 24 of the '168
`
`Patent. The Court finds that the phrase is used consistently in the claims and is intended to have
`
`I
`
`the same general meaning in each claim. The phrase "movement by the user of the portable
`
`housing commonly moving the display" appears in claims 1, 22, and 24 ofthe '168 Patent. The
`
`Court finds that the phrase is used consistently in the claims and is intended to have the same
`
`general meaning in each claim.
`
`Focusing on the claim language, the Court finds that a plain reading of the claims require
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`a step to be performed "by the user." Moreover, it is undisputed that all of the independent
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`claims are apparatus claims. Thus, the Court agrees with Defendants that the claims are
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`indefinite under the Federal Circuit's holding in IPXL Holdings, L.L.C. v. Amazon. cam, Inc., 430
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`F.3d 1377 (Fed. Cir. 2005). In JP XL, the Federal Circuit addressed a claim that covered a system
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`Case 2:13-cv-01061-JRG-RSP Document 334 Filed 03/25/15 Page 13 of 69 Page ID#: 4875
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`with "an input means" and required a user to use the input means. Id. at 1384. The court held
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`that the claim was indefinite because it was unclear "whether infringement ... occurs when one
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`creates a system that allows the user [to use the input means], or whether infringement occurs
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`when the user actually uses the input means." Id. The Court finds the same here, because the
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`independent claims recite both an apparatus and a method for using the apparatus.
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`Plaintiff contends that this claim language does not require a user to perform any steps to
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`infringe. (Dk.t. No. 231 at 4.) Specifically, Plaintiff argues that the phrase "operation of the input
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`device by the user enabling the memory" refers to the capabilities of the input device to cause
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`the memory to retain a visual data image. (Dk.t. No. 231 at 4.) The Court disagrees that this is
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`consistent with a plain reading of the claims. Plaintiffs interpretation would require the Court to
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`redraft the claims and read the words "operation of the input device by the user" out of the
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`claims. This would be improper. Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d
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`1358, 1362 (Fed. Cir. 2008) ("[C]ourts may not redraft claims, whether to make them operable
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`or to sustain their validity.").
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`Indeed, the surrounding claim language contradicts Plaintiffs interpretation because it
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`indicates that the patentee understood how to draft claim language that referred to the
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`capabilities of an element. For example, claim 1 of the '168 Patent recites an "image collection
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`device being operable to provide visual image data," a "display being operable to display for
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`viewing by a user a perceptible visual image," a "memory being suitable to receive visual image
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`data in digital format," an "input device being operable by the user," and a "media being suitable
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`to embody at least one compression algorithm." '168 Patent at 15:17-34 (emphasis added). In
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`contrast to this capability language, claim 1 also explicitly recites "operation of the input device
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`by the user," which under any plain reading of the claims requires action by a user.3
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`Accordingly, like the claim language at issue in JP XL, the language used in the
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`independent claims of the '168 Patent is directed to user actions, not system capabilities. Thus,
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`the claims improperly mix an apparatus and a method of using the apparatus. Consistent with
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`the court's holding in JP XL, the independent claims are not definite as to whether the claim is
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`infringed when the apparatus is made or sold, or when a user actually operates the input device.
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`IPXL, 430 F.3d at 1384. Consequently, the Court finds that the independent claims, and the
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`respective dependent claims, are indefinite under 35 U.S.C. § 112, ~ 2.
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`Plaintiff also argues that the phrases, "movement by the user of the portable housing
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`commonly moving the image collection device" and "movement by the user of the portable
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`housing commonly moving the display," refer to the physical characteristic that the image
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`collection device and display move contemporaneously with the portable housing. (Dkt. No. 231
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`at 4.) Again, Plaintiffs interpretation of the claim language would require the Comi to read the
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`words "movement by the user" out of the claims. However, these are the words chosen by the
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`patentee, and their plain meaning creates confusion as to whether the claim is infringed when the
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`apparatus is made or sold, or when a user actually moves the apparatus. Chef Am., Inc. v. Lamb-
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`Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004) ("[I]n accord with our settled practice we
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`construe the claim as written, not as the patentees wish they had written it.").
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`Indeed, claim 6 of the '871 Patent includes language that illustrates the difference
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`between the plain language ofthese claims and Plaintiffs contention. Claim 6 of the '871 Patent
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`recites "the cellular telephone and the integrated electronic camera being movable in common
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`3 During the j\1arkman hearing, Plaintiff also argued that the phrase "the input device being
`operable by the user," provided antecedent basis for the phrase "operation of the input device by
`the user." The Court is not persuaded that Plaintiffs antecedent basis argument changes the
`plain reading ofthe claim, which explicitly requires "operation of the input device by the user."
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`Page 14 of69
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`;;
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`Case 2:13-cv-01061-JRG-RSP Document 334 Filed 03/25/15 Page 15 of 69 Page!D #: 4877
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`with the housing." '871 Patent at 15:41-43 (emphasis added). In contrast, claim 1 of the '168
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`Patent recites "movement by the user of the portable housing commonly moving the image
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`collection device." '168 Patent at 15:47-48 (emphasis added). Accordingly, the claims fall
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`within the rationale of JP XL and are indefinite.
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`2. Court's Construction
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`In light of the intrinsic evidence, the Court finds that the independent claims
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`improperly mix an apparatus and a method, and are not definite as to when the claim is
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`infringed. Accordingly, independent claims 1, 22, 24, 26, 27, and 29, and their dependents
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`claims 2-21,23,25, and 28 in the '168 Patent, are indefinite under 35 U.S.C. § 112 'if 2.
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`B. "setup"
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`The parties dispute whether the term "setup" in the '871 Patent has a very specific
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`meaning in relation to camera technology. Defendants contend that "setup" refers to the
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`execution of special microprocessor-controlled patterns by means of a diascope projector
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`included in the lens of a triaxial-code video camera. (Dkt. No. 224 at 11) (citing Dkt. No. 224-3
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`at 4 (Broadcast Production Equipment, Systems and Services, in Television Engineering
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`Handbook, §14.97)). Defendants argue that there is no indication that "setup" was or could be
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`used by any of the devices disclosed in the specification, because it relates to conventional
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`analog and digital cameras and a camcorder. (Dkt. No. 224 at 11.) Defendants further argue that
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`none of the cameras disclosed in the specification are triaxial cable video cameras, and therefore
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`none could use "setup" as the claim term is understood in its proper context. (Dkt. No. 224 at
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`11.) According to Defendants, the term is meaningless and indefinite. (Dkt. No. 224 at 11.)
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`Plaintiff responds that Defendants attach a highly technical and narrow meaning to the
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`term "setup" for the sole purpose of manufacturing an indefiniteness argument. (Dkt. No. 231 at
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`5.) Plaintiff argues that Defendants' construction of "setup" ignores the specification and the
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`dictionary definition ofthis term as it relates to cameras. (Dkt. No. 231 at 5) (citing '871 Patent,
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`13:46-52). Plaintiff contends that the specification indicates that digital commands are
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`converted to analog signals for controlling features/functions of the camera (e.g., setup). (Dkt.
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`No. 231 at 5.) Plaintifffurther argues that the term "setup" as it relates to cameras is "a c