4:13-cv-13957-MAG-MAR Doc # 36 Filed 09/24/14 Pg 1 of 46 Pg ID 574
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`IN THE UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF MICHIGAN
`
`HONORABLE Mark A. Goldsmith
`
`
`
`Case No. 4:13-cv-13957-MAG
`
`
`
`
`
`
`
`
`Defendant.
`
`PLAINTIFF JOAO CONTROL & MONITORING SYSTEMS, LLC’S
`OPENING CLAIM CONSTRUCTION BRIEF
`
`
`
`JOAO CONTROL &
`MONITORING SYSTEMS, LLC,
`
`
`
`Plaintiff,
`
`v.
`
`CHRYSLER GROUP LLC,
`
`
`
`
`
`
`
`
`
`
`
`
`Page 1 of 46
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`4:13-cv-13957-MAG-MAR Doc # 36 Filed 09/24/14 Pg 2 of 46 Pg ID 575
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`
`
`I.
`
`Table of Contents
`INTRODUCTION ............................................................................................... 1
`A. THE ASSERTED PATENTS AND THEIR FILE HISTORIES .................... 1
`II. CLAIM CONSTRUCTION LAW ...................................................................... 5
`III. ARGUMENT .................................................................................................... 13
`A. CLAIM TERMS EXPLICITLY DEFINED BY PATENTEE DURING
`PROSECUTION ................................................................................................... 13
` “Control Device” ........................................................................................ 16
`a.
`
` “Remote” .................................................................................................... 19 b.
` “Located at” ................................................................................................ 21
`c.
`
` “Processing Device” ................................................................................... 23 d.
` “Signal” ...................................................................................................... 26
`e.
`B. CLAIM TERM THAT INCLUDES TERMS DEFINED BY PATENTEE
`DURING PROSECUTION .................................................................................. 29
` “Signal for” ................................................................................................ 29
`a.
`C. CLAIM TERMS NOT EXPLICITLY DEFINED BY PATENTEE DURING
`PROSECUTION ................................................................................................... 30
` “first signal,” “second signal” and “third signal” ...................................... 30
`a.
`
` “an interface device” .................................................................................. 33 b.
` “determines whether an action or an operation associated with information
`c.
`contained in the second signal . . . is an authorized or an allowed action or an
`authorized or an allowed operation” ................................................................. 36
` “at least one of a central office control and a central office monitoring of
`d.
`the vehicle” ........................................................................................................ 38
`IV. CONCLUSION .............................................................................................. 40
`CERTIFICATE OF SERVICE ................................................................................ 42
`
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`Table of Authorities
`
`Cases
`Apple Inc. v. Motorola, Inc., 757 F.3d 1286 (Fed. Cir. 2014) ................................. 12
`Athletic Alternatives, Inc. v. Prince Manufacturing, Inc. 73 F.3d 1573 (Fed. Cir.
`1996). .................................................................................................................... 10
`Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374 (Fed. Cir. 1999)
` .............................................................................................................................. 12
`Biomedino, LLC v. Waters Technology Corp., 490 F.3d 946 (Fed. Cir. 2007) ....... 12
`Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403 (1920) ............................... 11
`CCS Fitness Inc. v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002) .......... passim
`Chimie v. PPG Indus., Inc., 402 F.3d 1371 (Fed. Cir. 2005)). ........................... 7, 10
`Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005) ... 10, 11
`Dow Chemical Co. v. Astro-Valcour, Inc., 47 F. Supp. 2d 294 (N.D. N.Y. 1999) . 35
`Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366 (Fed. Cir. 2006) . 12
`Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572 (Fed. Cir. 1996) . 9
`Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002) ....... 11
`Gart v. Logitech, Inc., 254 F.3d 1334 (Fed. Cir. 2001) ............................................. 7
`General American Transportation Corp. v. Cryo-Trans, Inc., 93 F.3d 766 (Fed.
`Cir. 1996) ................................................................................................................ 7
`Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575 (Fed. Cir. 1996) ............ 6
`Honeywell Int’l, Inc. v. Int’l Trade Comm’n, 341 F.3d 1332 (Fed. Cir. 2003) ....... 10
`In re Donaldson Co., 16 F.3d 1189 (Fed. Cir. 1994) (en banc) .............................. 12
`Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384 (Fed. Cir. 1992) .................... 6
`Inventio AG v. ThyssenKrupp Elevator Americas Corp., 649 F.3d 1350 (Fed. Cir.
`2011) ..................................................................................................................... 12
`Laitram Corp. v. NEC Corp., 163 F.3d 1342 (Fed. Cir. 1998) ................................. 5
`Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc),
`aff’d, 517 U.S. 370, 391 (1996) ................................................................... 5, 6, 11
`McCarty v. Lehigh Val R. Co., 160 U.S. 110 (1895) ............................................... 13
`Microsoft Corporation v. Multi-Tech Systems, Inc., 357 F.3d 1340 (Fed. Cir. 2004)
` ......................................................................................................................... 8, 14
`Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014) .................... 10, 11
`Ormco Corporation v. Align Technology, Inc., 498 F.3d 1307 (Fed. Cir. 2007) ...... 8
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) .................. 5, 7, 9
`Southwall Techs. Inc. v. Cardinal IG Co., 54 F.3d 1570 (Fed. Cir. 1995) ............6, 7
`Sprint Communications Company L.P. v. Vonage Holdings Corp., 518 F. Supp. 2d
`1306 (D. Kan. 2007) ............................................................................................... 8
`SRI International v. Matsushita Electric Corp., 775 F.2d 1107 (Fed. Cir. 1985) (en
`banc) ................................................................................................................ 6, 13
`
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`Teleflex, Inc. v. Ficosa North America Corp., 299 F.3d 1313 (Fed. Cir. 2002) ...... 13
`Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376 (Fed. Cir. 2011). .............. 6
`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) ............. 6, 7, 9
`Statutes
`35 U.S.C. § 112 ........................................................................................................ 16
`35 U.S.C. § 112(a), (b). ............................................................................................ 10
`35 U.S.C. § 112(b) ........................................................................................ 9, 11, 12
`35 U.S.C. § 112(f) .................................................................................................... 12
`Other Authorities
`IEEE Standard Glossary of Software Engineering Terminology, Std 610.12-1990
`(1990) ............................................................................................................. 29, 36
`Merriam Webster Dictionary, 2d. edition (1994) .................................................... 37
`www.merriam-webster.com/dictionary/physical ..................................................... 29
`
`
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`I.
`
`INTRODUCTION
`
`Pursuant to this Court’s Scheduling Order(s) and the practices of the Eastern
`
`District of Michigan, Plaintiff Joao Control & Monitoring Systems, LLC
`
`(“JCMS”), by and through its counsel, provides its Opening Claim Construction
`
`Brief in support of those certain terms of the asserted claims from U.S. Patent Nos.
`
`6,549,130 (the “’130 Patent”), 5,917,405 (the “’405 Patent”), 6,542,076 (the “’076
`
`Patent”) and 7,397,363 (the “’363 Patent”), and their claim constructions, as set
`
`forth in the Parties’ Supplemental Final Joint Claim Construction Chart (Dkt. No.
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`35).
`
`JCMS reserves the right to alter its constructions based on further discovery,
`
`its continuing analysis, and due to new information being learned from Defendant
`
`in the course of claim construction briefing.
`
`A. THE ASSERTED PATENTS AND THEIR FILE HISTORIES
`The ‘130 Patent issued on April 15, 2003 from Application No. 09/277,935,
`
`which was filed on March 29, 1999, which is a continuation of Application No.
`
`08/683,828, filed July 18, 1996, and issued as the ‘405 Patent, which is a
`
`continuation-in-part of Application No. 08/587,628, filed January 17, 1996, now
`
`abandoned, which is a continuation of Application No. 08/489,238, filed June 12,
`
`1995, and issued as U.S. Patent No. 5,513,244, which is a continuation of
`
`Application No. 08/073,755, filed on June 8, 1993, now abandoned. Application
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`No. 09/277,935, issued as the ‘130 Patent, is also a continuation-in-part of
`
`Application No. 08/587,628 and a continuation-in-part of Application No.
`
`08/622,749, filed March 27, 1996, now abandoned. Application No. 08/683,828,
`
`issued as the ‘405 Patent, is also a continuation-in-part of Application No.
`
`08/622,749, now abandoned.
`
`The ‘405 Patent issued on June 29, 1999, from Application No. 08/683,828,
`
`which was filed on July 18, 1996, which is a continuation-in-part of Application
`
`No. 08/587,628, filed January 17, 1996, now abandoned, which is a continuation of
`
`Application No. 08/489,238, filed June 12, 1995, and issued as U.S. Patent No.
`
`5,513,244, which is a continuation of Application No. 08/073,755, filed on June 8,
`
`1993, now abandoned. Application No. 08/683,828, issued as the ‘405 Patent,
`
`which is also a continuation-in-part of Application No. 08/622,749, now
`
`abandoned.
`
`The ‘076 Patent issued on April 1, 2003, from Application No. 09/551,365,
`
`which was filed on April 17, 2000, which is a continuation-in-part of Application
`
`No. 09/277,935, filed on March 29, 1999, and issued as the ‘130 Patent, which is a
`
`continuation of Application No. 08/683,828, filed July 18, 1996 and issued as the
`
`‘405 Patent, which is a continuation-in-part of Application No. 08/587,628, filed
`
`January 17, 1996, now abandoned, which is a continuation of Application No.
`
`08/489,238, filed June 12, 1995, and issued as U.S. Patent No. 5,513,244, which is
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`a continuation of Application No. 08/073,755, filed on June 8, 1993, now
`
`abandoned. Application No. 09/277,935, issued as the ‘130 Patent, is also a
`
`continuation-in-part of Application No. 08/587,628, and a continuation-in-part of
`
`Application No. 08/622,749, filed March 27, 1996, now abandoned. Application
`
`No. 08/683,828, issued as the ‘405 Patent, is also a continuation-in-part of
`
`Application No. 08/622,749, now abandoned. Application No. 09/551,365, issued
`
`as the ‘076 Patent, also claims priority to U.S. Provisional Application Nos.
`
`60/187,735, filed on March 8, 2000, and 60/190,379, filed on March 17, 2000.
`
`The ‘363 Patent issued on July 8, 2008, from Application No. 10/244,334,
`
`which was filed on September 16, 2002, which is a continuation-in-part of
`
`Application No. 09/551,365, filed on April 17, 2000, and issued as the ‘076 Patent,
`
`which is a continuation-in-part of Application No. 09/277,935, filed on March 29,
`
`1999, and issued as the ‘130 Patent, which is a continuation of Application No.
`
`08/683,828, filed July 18, 1996, and issued as the ‘405 Patent, which is a
`
`continuation-in-part of Application No. 08/587,628, filed January 17, 1996, now
`
`abandoned, which is a continuation of Application No. 08/489,238, filed June 12,
`
`1995, and issued as U.S. Patent No. 5,513,244, which is a continuation of
`
`Application No. 08/073,755, filed on June 8, 1993, now abandoned. Application
`
`No. 09/277,935, issued as the ‘130 Patent, is also a continuation-in-part of
`
`Application No. 08/587,628 and a continuation-in-part of Application No.
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`08/622,749, filed March 27, 1996, now abandoned. Application No. 08/683,828,
`
`issued as the ‘405 Patent, is also a continuation-in-part of Application No.
`
`08/622,749, now abandoned. Application No. 09/551,365, issued as the ‘076
`
`Patent, also claims priority to U.S. Provisional Application Nos. 60/187,735, filed
`
`on March 8, 2000, and 60/190,379, filed on March 17, 2000.
`
`The named inventor of the ‘130, ‘405, ‘076 and ‘363 Patents is Raymond
`
`Anthony Joao, and all patents are duly and legally assigned to Joao Control &
`
`Monitoring Systems, LLC.
`
`The inventions claimed in the ‘130, ‘405, ‘076 and ‘363 Patents relate to,
`
`inter alia, systems for control, monitoring, and/or security of a vehicle and/or a
`
`premises. During the prosecution of the ‘363 Patent, as well as during the
`
`prosecution of related U.S. Patent No. 7,277,0101 (the “’010 Patent”)(which is a
`
`continuation-in-part of the ‘363 Patent), the patentee filed submissions that
`
`contained specific definitions for many key claim terms used in the ‘130, ‘405,
`
`
`1 The ‘010 Patent issued on October 2, 2007 from Application No. 10/263,554, which was filed
`on October 3, 2002, which is a continuation-in-part of Application No. 10/244,334, filed
`September 16, 2002 and issued as U.S. Patent No. 7,397,363, which is a continuation-in-part of
`Application No. 09/551,365, filed on April 17, 2000 and issued as U.S. Patent No. 6,542,076,
`which is a continuation-in-part of Application No. 09/277,935, filed on March 29, 1999 and
`issued as U.S. Patent No. 6,549,130, which is a continuation of Application No. 08/683,828,
`filed July 18, 1996 and issued as U.S. Patent No. 5,917,405, which is a continuation-in-part of
`Application No. 08/587,628, filed January 17, 1996 now abandoned, which is a continuation of
`Application No. 08/489,238, filed June 12, 1995 and issued as U.S. Patent No. 5,513,244, which
`is a continuation of Application No. 08/073,755, filed on June 8, 1993, now abandoned.
`Application No. 09/277,935, issued as U.S. Pat. No. 6,549,130 is also a continuation-in-part of
`Application No. 08/587,628 and a continuation-in-part of Application No. 08/622,749, filed
`March 27, 1996, now abandoned. Application No. 08/683,828, issued as U.S. Pat. No. 5,917,405
`is also a continuation-in-part of Application No. 08/622,749, now abandoned.
`
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`‘076 and ‘363 Patents, and are discussed infra. The patentee believed it necessary
`
`to present these definitions through submission to the PTO to ensure a full and
`
`complete understanding and examination by the PTO and the public as to the
`
`patentee’s understanding and meaning of the terms, so that the invention could be
`
`properly and fully understood as to the scope of the claims and what inventions the
`
`claims covered. Because the inventor has chosen to be his own lexicographer as to
`
`those terms, the court should construe the disputed terms in accordance with those
`
`definitions.
`
`Plaintiff reserves its right to amend its argument, facts and the law, including
`
`additional reliance on expert testimony in the form of a declaration, to respond to
`
`Defendant’s arguments and law for its theories challenging validity of any claim
`
`term or element.
`
`II. CLAIM CONSTRUCTION LAW
`Patent claim construction is a question of law for the Court. Markman v.
`
`Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff’d, 517
`
`U.S. 370, 391 (1996). The claims of a patent define the “metes and bounds” of the
`
`invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc);
`
`see also Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1347 (Fed. Cir. 1998). The
`
`proper construction of a given claim requires the consideration of several factors,
`
`including the claim language itself, the patent’s specification, other claims of the
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`patent, the prior art, and the prosecution history of the patent. Markman, 52 F.3d
`
`at 979-981; SRI International v. Matsushita Electric Corp., 775 F.2d 1107, 1118
`
`(Fed. Cir. 1985) (en banc). “Ultimately, the interpretation to be given a term can
`
`only be determined and confirmed with a full understanding of what the inventors
`
`actually invented and intended to envelop with the claim.” Typhoon Touch Techs.,
`
`Inc. v. Dell, Inc., 659 F.3d 1376, 1382 (Fed. Cir. 2011).
`
`The terms used in a claim “are given their ordinary meaning to one of skill
`
`in the art unless it appears from the patent and file history that the terms were used
`
`differently by the inventors.” Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384,
`
`1387 (Fed. Cir. 1992); see also Southwall Techs. Inc. v. Cardinal IG Co., 54 F.3d
`
`1570, 1578 (Fed. Cir. 1995). “[A] patentee may choose to be his own
`
`lexicographer” and assign special definitions to the words in the claim, as long as
`
`those definitions are clearly stated in the patent specification or file history.
`
`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (citing
`
`Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1578 (Fed. Cir. 1996)).
`
`Therefore, “it is always necessary to review the specification to determine whether
`
`the inventor has used any terms in a manner inconsistent with their ordinary
`
`meaning. The specification acts as a dictionary when it expressly defines terms
`
`used in the claims or when it defines terms by implication.” Id. (citing Markman,
`
`52 F.3d at 979). The Federal Circuit has stated that “claims must be read in view
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`of the specification, of which they are a part.” Id. (citing Markman, 52 F.3d at
`
`979); see also Gart v. Logitech, Inc., 254 F.3d 1334, 1341 (Fed. Cir. 2001) (“[I]t is
`
`certainly correct that the specification and the prosecution history should be
`
`consulted to construe the language of the claims.”). Because the specification must
`
`contain a description sufficient to those of ordinary skill in the art to make and use
`
`the invention, the specification “is the single best guide to the meaning of a
`
`disputed claim term.” Id.
`
`The prosecution history of the patent, sometimes called the “file wrapper” or
`
`“file history,” is also important to a proper claim construction. As a complete
`
`record of proceedings before the Patent and Trademark Office, it may contain
`
`representations made by the applicant regarding the scope of the claims. Vitronics,
`
`90 F.3d at 1582. “The patentee is bound by representations made and actions that
`
`were taken in order to obtain the patent.” Phillips, 415 F.3d at 1317 (quoting
`
`Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005)). The file
`
`history limits the meaning of claim terms “so as to exclude any interpretation that
`
`was disclaimed during prosecution.” Southwall, 54 F.3d at 1576. Prior art, some
`
`of which may be contained in the file history, is also important because a valid
`
`claim cannot read on, or cover within its scope, what is disclosed in the prior art.
`
`See General American Transportation Corp. v. Cryo-Trans, Inc., 93 F.3d 766, 771
`
`(Fed. Cir. 1996).
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`Further, the Federal Circuit has stated that “[w]hen the application of
`
`prosecution disclaimer involves statements from prosecution of a familial patent
`
`relating to the same subject matter as the claim language at issue in the patent
`
`being construed, those statements in the familial application are relevant in
`
`construing the claims at issue.” Ormco Corporation v. Align Technology, Inc., 498
`
`F.3d 1307, 1314 (Fed. Cir. 2007). This principle has been used to apply statements
`
`from child applications to ancestor applications:
`
`Any statement of the patentee in the prosecution of a related
`application as to the scope of the invention would be relevant to claim
`construction, and the relevance of the statement made in this instance
`is enhanced by the fact that it was made in an official proceeding in
`which
`the patentee had every
`incentive
`to exercise care
`in
`characterizing the scope of its invention. Accordingly, we conclude
`that Multi-tech’s statements made during the prosecution of the ‘627
`patent with regard to the scope of it inventions as disclosed in the
`common specification are relevant not only to the ‘627 and ‘532
`patents, but also to the earlier issued ‘649 patent.
`
`Microsoft Corporation v. Multi-Tech Systems, Inc., 357 F.3d 1340, 1350 (Fed. Cir.
`
`2004); see also Sprint Communications Company L.P. v. Vonage Holdings Corp.,
`
`518 F. Supp. 2d 1306, 1316 (D. Kan. 2007)(“[T]he court will consider the
`
`possibility that statements made during prosecution of the child ‘928 patent are
`
`relevant to construing the same claim terms in the ancestor ‘429 and ‘064 patent
`
`claims.”). With regards to multiple sibling applications (applications that stem
`
`from a common parent application), if a statement is made during prosecution of
`
`one sibling application, that statement can be applied to a second sibling
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`application, even though the second sibling application issued before the first
`
`sibling application. Id. at 1350 (“Furthermore, even though the ‘649 patent had
`
`already issued, we think that it is not unsound to apply the same interpretation to
`
`that patent. We take the patentee at its word and will not construe the scope of the
`
`‘649 patent’s claims more broadly than the patentee itself clearly envisioned.”).
`
`If no ambiguity is found in the meaning of the terms of a claim after review
`
`of the specification and prosecution history, the inquiry is at an end. If uncertainty
`
`remains, extrinsic evidence (e.g., expert and inventor testimony), may be
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`considered. Vitronics, 90 F.3d at 1583.
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`However, reliance on such evidence is unnecessary, and improper, when the
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`terms may be understood from the public record. Phillips, 415 F.3d at 1317
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`(Extrinsic evidence “is less significant than the intrinsic record in determining the
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`legally operative meaning of claim language”).
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`If a court finds a term ambiguous after considering intrinsic and extrinsic
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`evidence, the ambiguity is resolved by adopting the definition of the term that
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`results in the narrower scope of the claim. This result is compelled by 35 U.S.C. §
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`112(b) which requires that an applicant distinctly claim that which he regards as
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`his invention. Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572,
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`1581 (Fed. Cir. 1996) (noting that a claim can be properly construed only as
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`broadly as its unambiguous scope); see also Athletic Alternatives, Inc. v. Prince
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`Manufacturing, Inc. 73 F.3d 1573, 1581 (Fed. Cir. 1996).
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`The Patent Laws, as recently revised under the America Invents Act, set
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`forth the written description and enablement requirements as follows:
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`(a) In General. The specification shall contain a written description of
`the invention, and of the manner and process of making and using it,
`in such full, clear, concise, and exact terms as to enable any person
`skilled in the art to which it pertains, or with which it is most nearly
`connected, to make and use the same, and shall set forth the best mode
`contemplated by the inventor or joint inventor of carrying out the
`invention.
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`(b) Conclusion. The specification shall conclude with one or more
`claims particularly pointing out and distinctly claiming the subject
`matter which the inventor or a joint inventor regards as the invention.
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`35 U.S.C. § 112(a), (b).
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`As the claims of a patent must delineate the scope of the invention, Chimie ,
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`402 F.3d at 1379, “the purpose of the definiteness requirement is to ensure that the
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`claims delineate the scope of the invention using language that adequately notifies
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`the public of the patentee’s right to exclude.” Datamize, LLC v. Plumtree
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`Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005) (citing Honeywell Int’l, Inc. v.
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`Int’l Trade Comm’n, 341 F.3d 1332, 1338 (Fed. Cir. 2003)). The definiteness
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`requirement of Section 112 must account for “the inherent limitations of
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`language,” thereby allowing for “some modicum of uncertainty.” Nautilus, Inc. v.
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`Biosig Instruments, Inc., 134 S.Ct. 2120, 2128 (2014) (quoting Festo Corp. v.
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`Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, at 731-732 (2002). One
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`must remember, however, that patents are directed to “those skilled in the relevant
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`art,” and not lawyers or the general public. Id. at 2128-2129 (citing to Carnegie
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`Steel Co. v. Cambria Iron Co., 185 U.S. 403, 537 (1920). “Any description which
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`is sufficient to apprise [steel manufacturers] in the language of the art of the
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`definite feature of the invention, and to serve as a warning to others of what the
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`patent claims as a monopoly, is sufficiently definite to sustain the patent.” Id.
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`(quoting Carnegie Steel Co., 185 U.S. at 405). “A patent must also be precise
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`enough to afford clear notice of what is claimed, thereby ‘appris[ing] the public of
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`what is still open to them.’” Nautilus, Inc., 134 U.S. at 2129 (quoting Markman,
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`517 U.S. at 373. The definiteness requirement “mandates clarity, while
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`recognizing that absolute precision is unattainable.” Id. at 2129. Claim
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`construction requires “the necessarily sophisticated analysis of the whole
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`document,” and may turn on evaluations of expert testimony.” Id. at 2130 (quoting
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`Markman, 517 U.S. at 389).
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`“To the extent there are any factual findings upon which a trial court's
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`indefiniteness conclusion depends, they must be proven by the challenger by clear
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`and convincing evidence.” Datamize, 417 F.3d at 1348. Construction of the claims
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`is also necessary prior to proceeding with any analysis under 35 U.S.C. § 112(b).
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`“An analysis of claim indefiniteness under Section 112 § 2 is ‘inextricably
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`intertwined with claim construction.’” Energizer Holdings, Inc. v. Int’l Trade
`
`Comm’n, 435 F.3d 1366, 1368 (Fed. Cir. 2006)(citing Atmel Corp. v. Information
`
`Storage Devices, Inc., 198 F.3d 1374, 1379 (Fed. Cir. 1999)).
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`Further, with respect to a means plus function claim, where a claim uses the
`
`word “means,” it creates a rebuttable presumption that the claim element is to be
`
`treated pursuant to 35 U.S.C. § 112(f). The absence of the word “means” in a
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`claim creates a rebuttable presumption that the claim element is not to be treated
`
`pursuant to 35 U.S.C. § 112(f). Inventio AG v. ThyssenKrupp Elevator Americas
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`Corp., 649 F.3d 1350, 1356 (Fed. Cir. 2011); Apple Inc. v. Motorola, Inc., 757
`
`F.3d 1286, 1296-1297 (Fed. Cir. 2014).
`
`That presumption (against application of § 112(f)) is rebutted where the
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`claim element recites function but fails to recite sufficient definite structure or
`
`material to perform that function. See CCS Fitness Inc. v. Brunswick Corp., 288
`
`F.3d 1359, 1369 (Fed. Cir. 2002). A rejection under 35 U.S.C. § 112(b) is
`
`appropriate if there is no disclosure (or insufficient disclosure) of structure,
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`material, or acts for performing the claimed function. See In re Donaldson Co., 16
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`F.3d 1189, 1195 (Fed. Cir. 1994) (en banc); Biomedino, LLC v. Waters Technology
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`Corp., 490 F.3d 946, 952 (Fed. Cir. 2007).
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`These principles of claim construction are long standing and unassailable.
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`Indeed, as the United States Supreme Court held over 100 years ago in McCarty v.
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`Lehigh Val R. Co., 160 U.S. 110, 116 (1895), “Specifications teach. Claims claim.
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`That a specification describes only one embodiment does not require that each
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`claim be limited to that one embodiment.” Teleflex, Inc. v. Ficosa North America
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`Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002); SRI Int’l, 775 F.2d at 1121, n. 14.
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`The law does not require applicant to describe in his specification every
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`conceivable and possible future embodiment of his invention. SRI Int’l, 775 F.2d
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`at 1121.
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`III. ARGUMENT
`A. CLAIM TERMS EXPLICITLY DEFINED BY PATENTEE
`DURING PROSECUTION
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`The patentee provided his own definitions for many of the claim terms and
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`claim elements used in the ‘130, ‘405, ‘076 and ‘363 Patents during prosecution of
`
`the ‘363 Patent, as well as during prosecution of the related ’010 Patent. These
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`definitions were provided via remarks submitted to the PTO on November 23,
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`2007 in connection with the ‘363 Patent, and on November 26, 2006 in connection
`
`with the ‘010 Patent (see Exhibit A: “Supplement to the Remarks for the
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`Amendment filed on October 24, 2007,” dated November 23, 2007, (hereinafter
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`“First Remarks”) and Exhibit B: “Preliminary Remarks,” dated November