IN THE UNITED STATES DISTRICT C(fTL E 0
`
`FOR THE WESTERN DISTRICT OF TE
`AUSTIN DIVISION
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`2015AU6 18 PH l:28
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`JOAO CONTROL & MONITORING
`SYSTEMS, LLC,
`
`PLAINTIFF,
`
`V.
`
`PROTECT AMERICA, INC.,
`DEFENDANT.
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`§
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`§
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`§
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`§
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`§
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`§
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`§
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`§
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`CAUSE NO. 1-14-CV-134-LY
`
`MEMORANDUM OPINION AND ORDER REGARDING
`CLAIM CONSTRUCTION
`
`Before the court in the above-styled and numbered cause are Plaintiff Joao Control &
`
`Monitoring Systems, LLC's ("Joao") Opening Claim Construction Brief filed April 3,2015 (Clerk's
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`Doc. No. 84); Defendant Protect America, Inc.'s ("Protect America") Opening Claim Construction
`
`Brief filed April 3, 2015 (Clerk's Doc. No. 83); Joao's Responsive Claim Construction Brief filed
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`May 8, 2015 (Clerk's Doc. No. 93); Protect America's Reply Claim Construction Brief filed May
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`8,2015 (Clerk's Doc. No. 92); the parties' Notice of Supplemental Authority filed June 22, 2015
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`(Clerk's Doc. No. 102); Joao' s Supplemental Claim Construction Brief filed June 26, 2015 (Clerk's
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`Doc. No. 106); Protect America's Supplemental Claim Construction Brief filed June 26, 2015
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`(Clerk's Doc. No. 105); Joao' s Notice of Supplemental Authority filed August 6,2015 (Clerk's Doe.
`
`No. 108); the parties' Amended Joint Claim Construction Statement filed March 19,2015 (Clerk's
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`Doe. No. 73); and the claim-construction presentations of both parties.
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`The court held a claim-construction hearing on May 27, 2015. See Markman v. Westview
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`Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en bane), aff'd, 517 U.S. 370 (1996). After
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`considering the patents and their prosecution history, the parties' claim-construction briefs, the
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`parties' opposing expert declarations, the applicable law regarding claim construction, and argument
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`of counsel, the court now renders its order with regard to claim construction.
`
`VWGoA - Ex. 1009
`Case No. IPR2015-01612
`Volkswagen Group of America, Inc. - Petitioner
`Joao Control & Monitoring Systems, LLC - Patent Owner
`
`1
`
`

`
`I.
`
`Introduction
`
`The court renders this memorandum opinion and order to construe the claims of U.S. Patent
`
`Nos. 6,542,076 (the '076 Patent), 6,549,130 (the '130 Patent), 7,397,363 (the '363 Patent), 7,277,010
`
`(the '010 Patent), 6,587,046 (the '046 Patent), and 6,542,077 (the '077 Patent) (collectively "patents-
`
`in-suit"). Joao asserts that Protect America infringes various claims of the six patents-in-suit. The
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`patents-in-suit generally relate to "systems for remotely controlling and/or monitoring devices such
`
`as appliances or other equipment at a premises." Collectively, the patents contain 906 claims and
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`consist of more than 500 pages.
`
`II.
`
`Legal Principles of Claim Construction
`
`Determining infringement is a two-step process. See Markman, 52 F.3d at 976 ("[There are]
`
`two elements of a simple patent case, construing the patent and determining whether infringement
`
`occurred .
`
`.
`
`. ."). First, the meaning and scope of the relevant claims must be ascertained.
`
`Id.
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`Second, the properly construed claims must be compared to the accused device. Id. Step one, claim
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`construction, is the current issue before the court.
`
`The court construes patent claims without the aid of a jury. See Markman 52 F.3d at 979.
`
`The "words of a claim 'are generally given their ordinary and customary meaning." Phillips v.
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`AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp v.
`
`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The ordinary and customary meaning of
`
`a claim term is the meaning that the term would have to a person of ordinary skill in the art in
`
`question at the time of the invention. Id. at 1313. The person of ordinary skill in the art is deemed
`
`to have read the claim term in the context of the entire patent. Id. Therefore, to ascertain the
`
`2
`
`2
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`

`
`meaning of a claim, a court must look to the claim, the specification, and the patent's prosecution
`
`history. Id. at 13 14-17; Markman, 52 F.3d at 979. Claim language guides the court's construction
`
`of a claim term. Phillips, 415 F.3d at 1314. "[T]he context in which a term is used in the asserted
`
`claim can be highly instructive." Id. Other claims, asserted and unasserted, can provide additional
`
`instruction because "terms are normally used consistently throughout the patent." Id. Differences
`
`among claims, such as additional limitations in dependent claims, can provide further guidance. Id.
`
`Claims must also be read "in view of the specification, of which they are a part." Markman,
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`52 F.3d at 979. The 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." Teleflex. Inc.
`
`v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002) (internal citations omitted). In the
`
`specification, a patentee may define a term to have a meaning that differs from the meaning that the
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`term would otherwise possess. Phillips, 415 F.3d at 1316.
`
`In such a case, the patentee's
`
`lexicography governs. Id. The specification may also reveal a patentee's intent to disclaim or
`
`disavow claim scope. Id. Such intention is dispositive of claim construction. Id. Although the
`
`specification may indicate that a certain embodiment is preferred, a particular embodiment appearing
`
`in the specification will not be read into the claim when the claim language is broader than the
`
`embodiment. Electro Med. Sys., S.A. v. CooperLfeScis., Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994).
`
`The prosecution history is another tool to supply the proper context for claim construction
`
`because it demonstrates how the inventor understood the invention. Phillips, 415 F.3d at 1317. A
`
`patentee may also serve as his own lexicographer and define a disputed term in prosecuting a patent.
`
`Home Diagnostics Inc. v. LfeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004). Similarly,
`
`distinguishing the claimed invention over the prior art during prosecution indicates what a claim
`
`3
`
`3
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`

`
`does not cover. Spectrum Int'l v. Sterilite Corp., 164 F.3d 1372, 1378-79 (Fed. Cir. 1988). The
`
`doctrine of prosecution disclaimer precludes a patentee from recapturing a specific meaning that was
`
`previously disclaimed during prosecution. Omega Eng 'g Inc. v. Raytek Corp., 334 F .3 d 13 14, 1323
`
`(Fed. Cir. 2003). A disclaimer of claim scope must be clear and unambiguous. Middleton Inc. v.
`
`3MCo., 311 F.3d 1384, 1388 (Fed. Cir. 2002).
`
`Although, "less significant than the intrinsic record in determining the legally operative
`
`meaning of claim language," the court may rely on extrinsic evidence to "shed useful light on the
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`relevant art." Phillips, 415 F.3d at 1317 (quotation omitted). Technical dictionaries and treatises
`
`may help the court understand the underlying technology and the manner in which one skilled in the
`
`art might use a claim term, but such sources may also provide overly broad definitions or may not
`
`be indicative of how a term is used in the patent. Id. at 1318. Similarly, expert testimony may aid
`
`the court in determining the particular meaning of a term in the pertinent field, but "conclusory,
`
`unsupported assertions by experts as to the definition of a claim term are not useful." Id. Generally,
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`extrinsic evidence is "less reliable than the patent and its prosecution history in determining how to
`
`read claim terms." Id. Extrinsic evidence may be useful when considered in the context of the
`
`intrinsic evidence, Id. at 1319, but it cannot "alter a claim construction dictated by a proper analysis
`
`of the intrinsic evidence," On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d
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`1133, 1139 (Fed. Cir. 2004).
`
`ri
`
`4
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`

`
`III. Discussion
`
`A.
`
`Agreed Constructions
`
`In their amended joint-claim-construction statement, the parties present two terms with
`
`agreed constructions. Further, at the claim-construction hearing, Joao conceded that two of Protect
`
`America's constructions were technically correct and Joao would not object if the court adopted the
`
`constructions. The court hereby adopts the agreed construction of the claim term listed in the table
`
`below.
`
`Claim Term/Phrase
`
`Adopted Agreed Construction
`
`"premises"
`
`[All Patents]
`
`"located at"
`
`[All Patents]
`
`"remote"
`
`[All Patents]
`
`"a building or a structure and the grounds or parcel
`of land associated with the building or the structure,
`or a building or structure or a portion, room, or
`office, of or in the building or structure, or a home,
`mobile home, mobile building, mobile structure,
`residence, residential building, office, commercial
`building, commercial office, structure, equipment,
`facility, machine, rig, assembly line, or edifice."
`
`"situated at, or situated in, or situated on"
`
`"separate and apart from, or external from, or at a
`distance from or distant from, or not located in"
`
`"video information"
`
`['010 and '046 Patents]
`
`"an image or images or a photograph, or data or
`information containing, pertaining
`to, or
`representing, an image or images or a photograph"
`
`Throughout, the bolded terms indicate the court's adopted construction.
`
`5
`
`

`
`B.
`
`Disputed Terms
`
`The parties dispute the construction of 12 terms. The following table summarizes the
`
`parties' proposed constructions of the disputed terms.
`
`Term/Phrase
`
`Joao's Proposed Construction
`
`Protect America's Proposed
`Construction
`
`1. "A theft of the premises"
`
`['076, '363, and '077 Patents]
`
`"The act of stealing from
`premises"
`
`the
`
`[Indefinite]
`
`"A system for detecting a "a system for detecting a failure"
`2.
`failure in the at least one of. . ."
`means:
`
`[Means-Plus-Function]
`
`['076 and '077 Patents]
`
`Function: "detecting a failure in the at
`"a
`for detecting or
`system
`least one of a premises system, a
`discovering the existence, presence premises equipment system, a premises
`or fact of a failure or a state of component, a premises device, a
`inability
`to perform a normal premises equipment, and a premises
`process or function"
`appliance, wherein the detecting system
`provides
`information
`regarding the
`failure"
`
`"in the at least one of. .
`
`. "means:
`
`"in one or more of the items Structure: [Indefinite]
`contained in the list (of claim 182
`or 30)."
`
`The list from claim 182 and 30 is:
`
`"a premises system, a premises
`equipment system, a premises
`component, a premises device, a
`premises equipment, and a premises
`appliance"
`
`3. "Performs a systematic check "Fulfill or carry out the function or "Check any and all of the apparatus and
`" / "performing a systematic act of testing or verifying or premises systems, including the status
`check. . ."
`or state of the premises equipment
`evaluating a system"
`systems, equipment, devices and/or
`appliances"
`
`['076 and '130 Patents]
`
`6
`
`

`
`4. "Intelligent agent"
`
`['363 and '077 Patents]
`
`5. "Software agent"
`
`['363 and '077 Patents]
`
`6. "Mobile agent"
`
`['363 and '077 Patents]
`
`7. "Associated with"
`
`['076,'363,'077,'010,and'046
`Patents]
`
`[Indefinite]
`
`"A computing entity that performs
`user delegated tasks autonomously
`and which
`interprets monitored
`to make appropriate
`events
`actuation decisions for autonomous
`operation(s)."
`
`"A computing entity that performs
`user delegated tasks autonomously"
`
`[Indefinite]
`
`[Indefinite]
`
`[Indefinite]
`
`"a computing entity which may be
`dispatched from one computer to
`another computer for performing
`user delegated tasks autonomously"
`
`Joao does not agree to add the term
`"associated with" to the list of terms
`for the Court to construe. The
`Court set deadlines for the claim
`construction process and
`the
`disclosure of terms to be construed.
`This term was not identified by
`Protect America until after the
`deadline had passed in its "Clarified
`Amended Proposed Claim Terms
`for Construction, February 10,
`2015", served four days after its
`"Amended Proposed Claim Terms
`for Construction", February 6,
`2015.
`
`7
`
`

`
`"Control device"
`8.
`second, third)
`
`(first,
`
`['076 and '130 Patents]
`
`Joao argues that"control device"
`and "first control device," "second
`control device" and "third control
`device" should be construed the
`same as across all asserted patents.
`
`Protect America argues that the terms
`"a first control device," "a second
`control device," and "a third control
`device" refer to different devices and
`should be construed separately.
`
`"Control device" means
`
`"a device or a computer, or that part
`of a device or a computer, which
`performs an operation, an action, or
`a function, or which performs a
`number of operations, actions, or
`functions."
`
`Each of the "first control device,"
`"second control device" and "third
`control device" is a separate control
`device with a purpose, function or
`role that is not identical to the
`purpose, function or role of the
`other control device(s).
`
`Also, the asserted patents use the same
`terms to refer to different devices in
`different claims. In other words, "first
`control device" may refer to one device
`in one claim, but a different device in
`another claim.
`
`Protect America proposes separate
`means-plus-function constructions for
`each asserted claim where the term is
`used.
`
`[Indefinite]
`
`"Processing device" (first,
`9.
`second, third)
`
`'077,
`['363,
`Patents]
`
`'010, and
`
`'046
`
`that
`argues
`term
`the
`Joao
`"processing device" and "first
`processing device," "second
`processing device" and "third
`should be
`processing device"
`construed the same as across all
`asserted patents.
`
`Protect America argues that the terms
`"a processing device," "a
`first
`processing device,"
`second
`"a
`processing device," and "a
`third
`processing device"refer to different
`devices and should be construed
`separately.
`
`Also, the asserted patents use the same
`terms to refer to different devices in
`different claims. In other words, "first
`processing device" may refer to one
`device in one claim, but a different
`device in another claim.
`
`Protect America proposes separate
`means-plus-function constructions for
`each asserted claim where the term is
`used.
`
`[Indefinite]
`
`"Processing device" means "a
`device or a computer, or that part of
`a device or a computer, which
`performs an operation, an action, or
`a function, or which performs a
`number of operations, actions, or
`functions."
`
`Each of the "first processing
`device," "second processing
`device" and "third processing
`device" "is a separate processing
`device with a purpose or function or
`role that is not identical to the
`purpose, function or role of the
`other processing device(s)."
`
`8
`
`8
`
`

`
`10. "A communication device"
`
`['076, '363, and '010 Patents]
`
`term "a
`that the
`Joao argues
`communication device" should be
`construed the same as across all
`asserted patents.
`
`Protect America argues that the term
`"communication device"
`refers
`to
`different devices and
`should be
`construed separately.
`
`"a device that transmits and/or
`receives information."
`
`11. "A video recording device"
`
`['010 and '046 Patents]
`
`"A device
`that captures video
`information on any kind of medium
`for any period of time."
`
`Therefore Protect America proposes
`separate means-plus-function
`constructions for each asserted claim
`where the term is used. For some
`claims, Protect America provides
`alternative construction if not means-
`plus-function.
`
`[Means-Plus-Function]
`
`Function:
`is located at a premises and records
`video information
`
`Structure: [Indefinite]
`
`12. "A monitoring device"
`
`[Plain and Ordinary meaning]
`
`[Means-Plus-Function]
`
`['076 and '130 Patents]
`
`Function: "detecting an occurrence
`warranting providing notice to at least
`one of an owner, a user, and an
`authorized operator"
`
`Structure: [Indefinite]
`
`In the alternative:
`"A device for watching, listening,
`observing, keeping
`track of,
`checking, or verifying, a device,
`system, or activity, or an operation,
`status, or state, of a device, a
`system, or an activity, or watching,
`listening, observing, keeping track
`of, checking, or verifying, an
`activity, or a state of an act or
`instance, process, or manner of
`functioning."
`
`9
`
`

`
`1. "A theft of the premises"
`
`Joao argues that this phrase means "the act of stealing from the premises," whereas Protect
`
`America argues that the phrase is indefinite under Nautilus, Inc. v. Biosig Instruments, Inc. 134
`
`S.Ct. 2120, 2124 (2014) ("[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."). The court rejects both
`
`arguments and finds the construction of this phrase facile in light of the clear claim language and the
`
`parties' agreed construction of the term "premises."
`
`The parties agree that, in the context of the patents-in-suit, the things that may be called a
`
`"premises" include, inter alia, a "mobile home, mobile building, mobile structure .
`
`. equipment.
`
`.
`
`machine, [or] rig." All of these items are things of which a theft may occur. The patentee is very
`
`specific in his repeated use of the turn of phrase "of the premises" in the claims. Contrary to the
`
`meaning argued by Joao, the patentee did not use the words "from the premises," "an item from the
`
`premises," or "burglary of the premises." Further, the specification does not support a construction
`
`of this term in a way other than the plain-and-ordinary English meaning of the words as they would
`
`be understood by any English speaker, much less one of skill in the art. The parties agree that
`
`premises may include things of which a theft may occur; therefore the court concludes that the term
`
`is to be given its plain and ordinary meaning with no further construction required.
`
`2. "A system for detecting a failure in the at least one of. . ."
`
`Protect America argues that this disputed term should be construed as a means-plus-function
`
`term, and that the claims in which the term appears are indefinite for a lack of corresponding
`
`10
`
`10
`
`

`
`structure in the specification. Joao argues that the term is not appropriately construed as a means-
`
`plus-function term and instead should be defined with two separate definitions: one for "a system
`
`for detecting a failure" and one for "in the at least one of. .
`
`.
`
`The "means-plus-function" technique of claim drafting is a "convenience" for patentees that
`
`allows the expression of claim limitations in functional terms "without requiring the patentee to
`
`recite in the claims all possible structures" that could be used as a means in the invention. Medical
`
`Instrumentation & Diags. Corp. v. Elekta AB, 344 F.3d 1205, 1211 (Fed. Cir.2003); see also 35
`
`U.S.C. § 112(f).2 In return for this drafting convenience, patentees pay the price of having to
`
`disclose, in the specification, a corresponding structure for performing the claimed function. See
`
`Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1318 (Fed. Cir. 2012). "If the specification is not clear
`
`as to the structure that the patentee intends to correspond to the claimed function, then the patentee
`
`has not paid the price but is rather attempting to claim in functional terms unbounded by any
`
`reference to structure in the specification." Med. Instrumentation, 344 F .3 d at 1211.
`
`In determining whether means-plus-function construction applies, the Federal Circuit "has
`
`long recognized the importance of the presence or absence of the word 'means." Williamson v.
`F.3d ,No. 2013-1130, 2015 WL 3687459, *6 (Fed. Cir. June 16, 2015).
`
`Citrix Online, LLC,
`
`Where, as here, the disputed claim terms do not include the word "means," there is a rebuttable
`
`presumption that means-plus-function construction does not apply.3 Id. That presumption can be
`
`2 The America Invents Act replaced Section 112, paragraph 6 with Section 112(f) for all
`patent applications filed after September 15, 2012. Leahy-Smith America Invents Act, Pub. L. No.
`112-29, 125 Stat. 284 (2011) (codified in scattered sections of 35 U.S.C.). Because the patents-in-
`suit were all filed prior to this date, the court will refer to the then-applicable Section 112, paragraph
`6.
`
`In Williamson, the Federal Circuit abandoned its previous characterization of the
`presumption as "strong." 2015 WL 3687459 at *7
`11
`
`11
`
`

`
`overcome "if the challenger demonstrates that the claim term fails to 'recite sufficiently definite
`
`structure' or else recites 'function without reciting sufficient structure for performing that function."
`
`Id. The essential inquiry is "whether the words of the claim are understood by persons of ordinary
`
`skill in the art to have a sufficiently definite meaning as the name for structure." Id.
`
`The court examines the entire claim phrase in examining the structure at issue. The claim
`
`recites an apparatus wherein the at least one of a number of different types of previously enumerated
`
`systems or equipment "is a system for detecting a failure in the at least one of4 a premises system,
`
`a premises equipment system, a premises component, a premises device, a premises equipment, and
`
`a premises appliance, wherein the detecting system provides information regarding the failure." A
`
`plain reading of the claim demonstrates that the patentee merely substitutes the word "system" for
`
`the word "means" and then describes the function of the claimed system. The court finds that
`
`"system," as used in the claim, functions merely as a "nonce word or a verbal construct that is not
`
`recognized as the name of structure and is simply a substitute for the term 'means for." Welker
`
`Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1096 (Fed.Cir.2008) (quoting Lighting World v.
`
`BirchwoodLighting, Inc., 382 F.3 d 1354, 1360 (Fed.Cir.2004)). The court further finds no recitation
`
`of sufficient structure within the claim capable of performing the function of "detecting a failure"
`
`in a system or equipment and "providing] information regarding the failure." Nor does the
`
`specification shed any light on the structure of the claim language. The court therefore concludes
`
`that "a system for detecting a failure in the at least one of. . ." does not connote sufficiently definite
`
`structure and must be treated as a means-plus-function limitation under Section 112, paragraph 6.
`
`Although the claims' use of "in the at least one of' strikes the court as a particularly
`awkward combination of wordseven for a patent, where awkward phraseology is frequently
`encounteredthe language is used consistently in the claims; absent evidence of a typographical
`error, the court construes the language as it exists in the claims.
`12
`
`12
`
`

`
`Having determined that a means-plus-function construction is appropriate, the court must
`
`perform two steps in construing the claim: "First, the court must determine the claimed function.
`
`Second, the court must identify the corresponding structure in the written description of the patent
`
`that performs the function." Noah Sys., 675 F.3d at 1311. "Structure disclosed in the specification
`
`qualifies as a 'corresponding structure' if the intrinsic evidence clearly links or associates that
`
`structure to the function recited in the claim." Williamson, 2015 WL 3687459, at *10.
`
`Here, the function of the claim is clear from the claim language. The recited function is:
`
`"detecting a failure in the at least one of a premises system, a premises equipment system, a premises
`
`component, a premises device, a premises equipment, and a premises appliance, wherein the
`
`detecting system provides information regarding the failure." The true issue before the court with
`
`regard to this term is whether the specification discloses corresponding structure that performs the
`
`claimed function.
`
`The court, after a thorough examination of the specification and consideration of the parties'
`
`experts' conflicting declarations, concludes that it does not. The specification discusses no structure
`
`that is capable of detecting a failure or performing the function of detecting a failure; the only time
`
`detecting a failure is discussed, the language of the specification mirrors the language used to claim
`
`the function. No structural component is taught or implied. The court finds a complete lack of any
`
`structural component associated with the claimed function and determines that a person of skill in
`
`the art would not comprehendwith reasonable certaintythe specification to support the claimed
`
`function with corresponding structure. Nautilus, 134 S.Ct. at 2124.
`
`Due to this complete lack of structural support in the specification, the court concludes that
`
`the term "a system for detecting a failure in the at least one of. . ." is indefinite.
`
`13
`
`13
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`

`
`3. "Performs a systematic check" I "performing a systematic check"
`
`Joao argues that this pair of terms should be given its plain and ordinary meaning; however,
`
`Joao also provides the court with a proposed definition of what it believes that ordinary meaning to
`
`be. Protect America contends that its definition, with language taken directly from the patents'
`
`specification, is the proper definition.
`
`The court first looks to the disputed claim language itself. The three dependent claims where
`
`the disputed terms appear describe either a system or apparatus, each of which "perform[sI a
`
`systematic check of at least one of a status and a state of the at least one of a premises system, a
`
`premises device, a premises equipment, a premises equipment system, and a premises appliance."
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`Although the phraseology could be more precise, the meaning is readily understood with minimal
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`parsing. The "systematic check" is performed on all of the components of the system or apparatus,
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`such components to include a premises system, a premises device, a premises equipment, a premises
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`equipment system, and a premises device. All components are included because of the use of "the"
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`in the "the at least one of' clause in the claim. If the clause had read simply "at least one of," the
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`meaning would not have required all of the components to be checked. As is, however, "the at least
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`one" implies that there will be at least one, and possibly many, components and they all are checked.
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`The "systematic check" checks a status or a stateor bothof the components listed.
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`This interpretation is bolstered by the specifications' sole reference to a "systematic check:"
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`The apparatus and method of the present invention may be equipped
`with software and hardware for providing a systematic check of any
`and all of the apparatus and vehicle systems, including the status or
`state of the vehicle equipment systems, equipment, devices and/or
`appliances and provide data relating thereto to the user or operator
`and/or to the authorized individual(s) at the above-described central
`security office.
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`'076 Patent 58:48-55 (emphasis added). This passage confirms that the "systematic check" is
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`performed on any and all of the system components that are part of the system or apparatus.
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`The court concludes that the term "performing a systematic check of at least one of a status
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`and a state of the at least one of a premises system, a premises device, a premises equipment, a
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`premises equipment system, and a premises appliance" is construed to mean "checking the status,
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`state, or status and state of any and all of a premises system, a premises device, a premises
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`equipment, a premises equipment system, or a premises appliance." The court further concludes
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`that the term "performs a systematic check of at least one of a status and a state of the at least one
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`of a premises system, a premises device, a premises equipment, a premises equipment system, and
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`a premises appliance" is construed to mean "checks the status, state, or status and state of any
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`and all of a premises system, a premises device, a premises equipment, a premises equipment
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`system, or a premises appliance."
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`4. "Intelligent agent"
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`5. "Software agent"
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`6. "Mobile agent"
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`The parties briefed and argued these three terms together, as they appear together in the
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`patent claims. Protect America asserts that the "agent" terms are indefinite in light of the patents'
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`specification and the lack of a fixed meaning of these terms in the art at the time of invention. Joao
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`counters that the patentee incorporated by reference two books that provide clear definitions of the
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`agent terms, and which would have been known and understood by a person of ordinary skill in the
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`art at the time of the invention.
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`An external book or publication that is incorporated by reference into a patent becomes part
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`of the intrinsic record. Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308, 1323
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`(Fed. Cir. 2010) (citing Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1329
`
`(Fed.Cir.2001) ("When a document is 'incorporated by reference' into a host document, such as a
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`patent, the referenced document becomes effectively part of the host document as if it were explicitly
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`contained therein.")). Although Joao' s proposed definitions appear to be derived primarily from one
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`of the two incorporated references, the strength of those definitions are directly contradicted by
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`additional statements contained in both of the references. The court concludes, after a review of the
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`two incorporated references, that there was no single agreed-upon definition of the "agent" terms
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`which a skilled artisan would have understoodwith reasonable certaintybased on the terms' use
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`in the claim language alone. Furthermore, the court concludes that the specification to which the
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`artisan would turn to resolve any ambiguities in the terms' definition provides no additional guidance
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`to discern the exact contours of the "agent" terms with any degree of reasonable certainty. Nautilus,
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`134 S.Ct. at 2124.
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`For these reasons, the court concludes that the terms "intelligent agent," "software agent,"
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`and "mobile agent" are indefinite.
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`7. "Associated with"
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`Joao argues that the court should not construe this term because it was not timely disclosed
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`by Protect America. However, Joao provides no explanation of how construing this term would
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`prejudice Joao, particularly in light of the fact that the term was disclosed nearly two months before
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`the parties' opening claim-construction briefs were due. In addition, Joao briefed the term and
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`presented argument on the term at the claim-construction hearing. The court OVERRULES Joao's
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`objection to the inclusion of this term in the court's construction.
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`The court does, however, agree with Joao that this term is not indefinite. The words
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`"associated with" are a common English phrase with a clear meaning and connotation, and the fact
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`that the phrase is used in a patent claim does not somehow render the words ambiguous. A skilled
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`artisan reading the claims would certainly be able to ascertain, with reasonable certainty, the contours
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`of each of the claims where "associated with" is used. Moreover, contrary to its arguments, Protect
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`America cannot sincerely contend that "associated with" is ambiguous to the point of indefiniteness
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`in light of the parties' agreed definition of "premises," a construction that contains the phrase "parcel
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`of land associated with the building" (emphasis added).
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`The court concludes that the term "associated with" is to be given its plain and ordinary
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`meaning with no further construction required.
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`8. "Control device" (first, second, third)
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`9. "Processing device" (first, second, third)
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`10. "A communication device"
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`11. "A video recording device"
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`12. "A monitoring device"
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`The parties spend the bulk of their briefing, as well as the bulk of their argument in the claim-
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`construction hearing, on the above-listed collection of various "device" terms.5 The court will
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`The court notes that the parties each submitted supplemental briefing following the Federal
`Circuit's en banc decision in Williamson. The parties' claim-construction positions and arguments
`remain substantively unchanged in light of Williamson, and both parties assert that their positions
`are correct in light of the clarified standard applied to means-plus-function construction.
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`address the terms together, as the parties largely argued these terms together. At base, Protect
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`America argues that each of the device terms should be given a means-plus-function construction
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`due to the patents' consistent use of purely functional claiming, and that each of the terms are
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`indefinite due to an insufficient disclosu