Case 1:12-cv-00030-RGA Document 92 Filed 11/12/13 Page 1 of 20 PageID #: 2433
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`M2M SOLUTIONS LLC,
`
`Plaintiff,
`
`V.
`
`SIERRA WIRELESS AMERICA, INC. and
`SIERRA WIRELESS, INC.,
`
`Defendants.
`
`M2M SOLUTIONS LLC,
`
`Plaintiff,
`
`v.
`
`CINTERION WIRELESS MODULES
`GMBH and CINTERION WIRELESS
`MODULES NAFTA LLC,
`
`Defendants.
`
`M2M SOLUTIONS LLC,
`
`Plaintiff,
`
`v.
`
`ENFORA, INC., NOV A TEL WIRELESS
`SOLUTIONS, INC., and NOV A TEL
`WIRELESS, INC.,
`
`Defendants.
`
`Civil Action No. 12-30-RGA
`
`Civil Action No. 12-31-RGA
`
`Civil Action No. 12-32-RGA
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`Case 1:12-cv-00030-RGA Document 92 Filed 11/12/13 Page 2 of 20 PageID #: 2434
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`M2M SOLUTIONS LLC,
`
`Plaintiff,
`
`v.
`
`MOTOROLA SOLUTIONS, INC. TELIT
`COMMUNICATIONS PLC, and TELIT
`WIRELESS SOLUTIONS INC.,
`
`Defendants.
`
`M2M SOLUTIONS LLC,
`
`Plaintiff,
`
`V.
`
`SIMCOM WIRELESS SOLUTIONS CO.,
`LTD., SIM TECHNOLOGY GROUP LTD.,
`MICRON ELECTRONICS L.L.C., and
`KOWATEC CORPORATION,
`
`Defendants.
`
`Civil Action No. 12-33-RGA
`
`Civil Action No. 12-34-RGA
`
`!
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`MEMORANDUM OPINION
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`Richard D. Kirk, Esq., BAYARD, P.A., Wilmington, DE; Marc N. Henschke, Esq. (argued),
`FOLEY & LARDNER LLP, Boston, MA.
`
`Attorneys for Plaintiff M2M Solutions LLC.
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`Thomas C. Grimm, Esq., MORRIS, NICHOLS, ARSHT & TUNNELL LLP, Wilmington, DE;
`Christopher Mooney, Esq., NIXON PEABODY LLP, Palo Alto, CA.
`
`Attorneys for Defendants Sierra Wireless America, Inc. and Sierra Wireless, Inc.
`
`Richard L. Horwitz, Esq., POTTER ANDERSON & CORROON LLP, Wilmington, DE; Brian
`A. Rosenthal, Esq. (argued), MAYER BROWN LLP, Washington, DC; Bryon T. Wasserman,
`Esq., MAYER BROWN LLP, Washington, DC.
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`Case 1:12-cv-00030-RGA Document 92 Filed 11/12/13 Page 3 of 20 PageID #: 2435
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`Attorneys for Defendants Cinterion Wireless Modules GmbH and Cinterion Wireless
`Modules NAFTA LLC.
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`Francis DiGiovanni, Esq., NOVAK DRUCE CONNOLLY BOVE & QUIGG, Wilmington, DE;
`Michael J. Bettinger, Esq. (argued), K&L GATES LLP, San Francisco, CA.
`
`Attorneys for Defendants Enfora, Inc., Novatel Wireless Solutions, Inc. and Novatel
`Wireless, Inc.
`
`Jack B. Blumenfeld, Esq., MORRIS, NICHOLS, ARSHT & TUNNELL LLP, Wilmington, DE;
`David A. Loewenstein, Esq. (argued), PEARL COHEN ZEDEK LATZER, New York, NY.
`
`Attorneys for Defendants Motorola Solutions, Inc., Telit Communications PLC, and Telit
`Wireless Solutions Inc.
`
`George Pazuniak, Esq., O'KELLY ERNST & BIELLI, LLC, Wilmington, DE; Wenye Tan,
`Esq., Anova Law Group, PLLC, Sterling, VA.
`
`Attorneys for Defendant Kowatec Corporation.
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`November \1_, 2013
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`Case 1:12-cv-00030-RGA Document 92 Filed 11/12/13 Page 4 of 20 PageID #: 2436
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`A~. ~s RICT JUDGE:
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`Pending before this Court is the issue of claim construction of various disputed terms
`
`found in U.S. Patent Nos. 8,094,010 ('"010 patent") and 7,583,197 ("' 197 patent"). 1
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`I. BACKGROUND
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`On January 1, 2012, M2M Solutions LLC ("Plaintiff'') filed five patent infringement
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`actions. 2 (Nos. 12-30, 12-31, 12-32, 12-33, and 12-34). The defendants are Sierra Wireless
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`America, Inc., Sierra Wireless, Inc., Cinterion Wireless Modules GmbH, Cinterion Wireless
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`Modules NAFTA LLC, Enfora, Inc., Novate! Wireless Solutions, Inc., Novate! Wireless, Inc.,
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`Motorola Solutions, Inc., Telit Communications PLC, Telit Wireless Solutions, Inc., Simcom
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`Wireless Solutions Co., Sim Technology Group Ltd.,3 and Kowatec Corporation (collectively,
`
`"Defendants"). The patents in suit are U.S. Patent Nos. 8,094,010 and 7,583,197. The Court has
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`considered the parties' Joint Claim Construction Brief (D.I. 54), appendix (D.I. 55), Amended
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`Joint Claim Construction Statement (D.I. 60), and oral argument on September 12, 2013. (D.I.
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`70).
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`II. LEGALSTANDARD
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`"It is a bedrock principle of patent law that the claims of a patent define the invention to
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`which the patentee is entitled the right to exclude." Phillips v. AWH Corp., 415 F.3d 1303, 1312
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`I
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`1 The patents have the same specification and several disputed claim terms appear in the
`asserted claims for both patents. Unless otherwise noted, the claim terms are construed
`consistently between both patents.
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`2 All further citations are to the record in Civ. Act. No. 12-30.
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`3 Simcom and Sim have not answered the Complaint, and did not participate in the
`Markman hearing.
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`Case 1:12-cv-00030-RGA Document 92 Filed 11/12/13 Page 5 of 20 PageID #: 2437
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`(Fed. Cir. 2005) (en bane) (internal quotation marks omitted). '" [T]here is no magic formula or
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`catechism for conducting claim construction.' Instead, the court is free to attach the appropriate
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`weight to appropriate sources 'in light of the statutes and policies that inform patent law."'
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`SoftView LLC v. Apple Inc., 2013 WL 4758195 (D. Del. Sept. 4, 2013) (quoting Phillips, 415
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`F.3d at 1324). When construing patent claims, a matter of law, a court considers the literal
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`language of the claim, the patent specification, and the prosecution history. Markman v.
`
`Westview Instruments, Inc., 52 F.3d 967,977-80 (Fed. Cir. 1995) (en bane), aff'd, 517 U.S. 370
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`(1996). Of these sources, "the specification is always highly relevant to the claim construction
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`analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term."
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`Phillips, 415 F.3d at 1315 (internal quotations and citations omitted).
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`Furthermore, "the words of a claim are generally given their ordinary and customary
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`meaning ... [which is] the meaning that the term would have to a person of ordinary skill in the
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`art in question at the time of the invention, i.e., as of the effective filing date of the patent
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`application." Phillips, 415 F.3d at 1312-13 (internal citations and quotation marks omitted).
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`"[T]he ordinary meaning of a claim term is its meaning to [an] ordinary artisan after reading the
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`entire patent." Id at 1321 (internal quotation marks omitted). "In some cases, the ordinary
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`meaning of claim language as understood by a person of skill in the art may be readily apparent
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`even to lay judges, and claim construction in such cases involves little more than the application
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`of the widely accepted meaning of commonly understood words." Id at 1314 (internal citations
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`omitted).
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`A court may consider extrinsic evidence, which "consists of all evidence external to the
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`patent and prosecution history, including expert and inventor testimony, dictionaries, and learned
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`Case 1:12-cv-00030-RGA Document 92 Filed 11/12/13 Page 6 of 20 PageID #: 2438
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`treatises," in order to assist the court in understanding the underlying technology, the meaning of
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`terms to one skilled in the art and how the invention works. !d. at 1317-19 (internal quotation
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`marks and citations omitted). However, extrinsic evidence is less reliable and less useful in
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`claim construction than the patent and its prosecution history. ld.
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`Finally, "(a] claim construction is persuasive, not because it follows a certain rule, but
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`because it defines terms in the context of the whole patent." Renishaw P LC v. Marposs Societa'
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`per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows that "a claim interpretation that
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`would exclude the inventor's device is rarely the correct interpretation." Osram GmbH v. lnt 'I
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`Trade Comm 'n, 505 F. 3d 1351, 1358 (Fed. Cir. 2007) (internal quotation marks and citation
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`omitted).
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`III. CONSTRUCTION OF DISPUTED TERMS
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`A. U.S. Patent No. 8,094,010
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`1. "permitted caller"
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`a. Plaintiffs proposed construction: "A network-connected device from which
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`the programmable communicator device is permitted to receive incoming transmissions for
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`processing, and/or to which the programmable communicator device is permitted to send
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`outgoing transmissions."
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`b. Defendants' proposed construction: "A telephone number or IP address on a
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`list of numbers that are designated to cause the programmable communicator to ring or answer
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`when an incoming call is received from that number."
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`c. Court's construction: "A telephone number or IP address on a list of numbers
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`that are designated to cause the programmable communicator to accept an incoming call received
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`from that number."
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`The Court agrees with Defendants that the plain and ordinary meaning of "caller" is the
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`number that places an incoming call and not the number receiving the call. (D.I. 54 at 1 0).
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`Absent evidence to the contrary, a claim term should be construed in accordance with its plain
`
`meaning. Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003) ("We
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`indulge a 'heavy presumption' that claim terms carry their full ordinary and customary meaning
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`unless the patentee unequivocally imparted a novel meaning to those terms or expressly
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`relinquished claim scope during prosecution." (citations omitted) (quoting CCS Fitness, Inc. v.
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`Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002))). Additional support for this
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`construction can be found in Figures 2 and 3 ofthe '010 patent. Figure 2 depicts the action
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`performed by the programmable communicator in response to an incoming call or message. In
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`each scenario, the programmable communicator attempts to verify that the caller is on the
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`"permitted callers list." By contrast, Figure 3 shows the action performed by the programmable
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`communicator for an outgoing call or message. There is no mention of a "permitted caller."
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`Instead, it displays the programmable communicator transmitting information to a "linked
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`telephone or IP address."
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`Plaintiff relies on claim differentiation to support its overly broad construction. Claim
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`differentiation, however, "is not a rigid rule but rather is one of several claim construction tools."
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`ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1376 (Fed. Cir. 2009). This is especially
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`true when the patentee seeks to use claim differentiation to expand the claim scope years after the
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`patent was originally filed-i.e., a situation where the dependent claim that would be rendered
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`superfluous was added long after the original patent's filing date and shortly before the initiation
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`of litigation. See id. (rejecting claim differentiation argument advanced by patentee where
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`dependent claim "was only added to the [] patent in 2001, years after the filing date of the
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`original patents ... and the introduction of the allegedly infringing Alaris products"). Here,
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`dependent claims 7 and 8, which Plaintiff argues would be read out of the patent, were added
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`almost a decade after the original patent application first used the disputed term and just a few
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`months before the complaint in this case was filed. (D.I. 55-21 at M2M 0002030-2048; D.I. 55-
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`23 at M2MOOO 1912). Thus, Plaintiff's claim differentiation argument is not persuasive here.
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`Where the Plaintiff's construction is too broad, Defendants' construction that would
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`require the programmable communicator to "ring or answer" is too narrow. This interpretation
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`would read the optional features of a described embodiment into the claims, and the Federal
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`Circuit has found this to be impermissible. Comark Commc 'ns, Inc. v. Harris Corp., 156 F.3d
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`1182, 1186 (Fed. Cir. 1998) ("[T]here is sometimes a fine line between reading a claim in light
`
`of the specification, and reading a limitation into the claim from the specification."). Although
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`Defendants can point to embodiments that have features consistent with their proposed
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`limitation, other disclosed embodiments, including the remote monitoring of a vending machine,
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`are based on data messages that do not require the answering limitation. See, e.g., '010 patent,
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`col. 3 11. 43-52; col. 411. 8-13. Therefore, this proposed limitation is too narrow.
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`2. "coded number"
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`a. Plaintiff's proposed construction: "A designated sequence of characters used
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`for purposes of attaining authentication or access."
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`Case 1:12-cv-00030-RGA Document 92 Filed 11/12/13 Page 9 of 20 PageID #: 2441
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`b. Defendants' proposed construction: "The 'unique identifier,' which is unique
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`to the programmable communicator, received by the programmable communicator from a
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`programming transmitter and is used to authenticate the at least one programming transmission."
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`c. Court's construction: "A designated, unique sequence of characters."
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`One object of the present invention is to provide an apparatus for processing coded
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`transmissions comprising a coded number, thereby determining the authenticity of the contained
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`message, prior to allowing the transmission through to the receiver device. See '010 patent, col.
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`4ll. 35-40. The specification makes frequent reference to a PUK code, the unique code of the
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`Subscriber Identity Module (SIM card), as being used for purposes of authentication. See, e.g.,
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`'010 patent, col. 9ll. 41-49; col. 9ll. 61-67.
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`Plaintiff contends that the coded number need not be unique, and that its selection of a
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`PUK code as a coded number was "by way of example only." '010 patent, col. 9ll. 32-33.
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`However, the specification goes on to state that "any similar unique coding may be used for the
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`purpose ofthe invention." '010 patent, col. 911. 33-34 (emphasis added). Although other coding
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`schemes may be used, the specification teaches that the code must be unique. Additionally,
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`Plaintiff's proposed inclusion of "used for purposes of attaining authentication or access" in its
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`claim construction is unnecessary and confusing because the claim language recites the purpose.
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`See '010 patent, claim 1 ("A programmable communicator device comprising: a processing
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`module for authenticating an at least one transmission . .. , the at least one transmission
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`including a coded number.") (emphasis added). Therefore, including this in the construction of
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`"coded number" would be redundant.
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`3. "a programmable interface"
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`a. Plaintiffs proposed construction: "A hardware interface with associated
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`management software that is able to be programmed and through which a programmable
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`communicator device can establish a connection with a monitored technical device."
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`b. Defendants' proposed construction: This is a means-plus-function limitation
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`with the function of "establishing a communication link with at least one monitored technical
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`device" and no corresponding structure, thereby rendering the claim indefinite. "The limitation
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`is additionally indefinite because the term 'programmable' is insolubly ambiguous."
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`c. Court's construction: "An interface that is able to be directly programmed."
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`The term "programmable interface" is presumptively not subject to § 112 ~ 6 (now§
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`112(f)) because it does not contain the term "means." See CCS Fitness, 288 F.3d at 1369. The
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`presumption "can be overcome if it is demonstrated that 'the claim term fails to recite sufficiently
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`definite structure or else recites function without reciting sufficient structure for performing that
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`function."' Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir.
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`2004) (quoting CCS Fitness, 288 F. 3d at 1369). This presumption "is a strong one that is not
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`readily overcome." Id Even though a term might not bring a particular structure to mind, that is
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`not dispositive and the court can look to the dictionary to see if the term is one that is
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`"understood to describe structure, as opposed to a term that is simply a nonce word or a verbal
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`construct that is not recognized as the name of structure and is simply a substitute for the term
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`'means for."' Id at 1360; Mass. Inst. of1ech. & Elecs. for Imaging, Inc. v. Abacus Software,
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`462 F.3d 1344, 1354 (Fed. Cir. 2006) ("MIT').
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`In MIT, the Federal Circuit found that the term "colorant selection mechanism" is subject
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`to § 112 ~ 6. See MIT, 462 F.3d at 1354 (noting that patentee used "mechanism" and "means" as
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`synonyms and that "[a]t least one dictionary definition equates mechanism with means").
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`Moreover, "colorant selection" was not defined in the specification, did not have a dictionary
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`definition, and there was no showing that "colorant selection mechanism" would "connote
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`sufficient structure" to one of ordinary skill in the art. Id. By contrast, "detent mechanism" is
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`not subject to § 112 ~ 6 because "the noun 'detent' denotes a type of device with a generally
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`understood meaning in the mechanical arts, even though the definitions are expressed in
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`functional terms." Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir.
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`1996).
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`Here, there is a strong presumption against applying § 112 ~ 6 to "programmable
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`interface" because the word "means" is not used in the claim language. Unlike in MIT, the
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`presumption cannot be overcome because "programmable interface" connotes sufficient structure
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`to one of skill in the art, and both component terms have well understood definitions. The
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`Federal Circuit has previously construed "interface" as "[t]he signal connection and associated
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`control circuits that are used to connect devices." Apex, Inc. v. Raritan Computer, Inc., 325 F.3d
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`1364, 1374 (Fed. Cir. 2003). "Programmable" is generally understood in the art to mean
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`"[ c ]apable of accepting instructions for performing a task or an operation." MICROSOFT
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`CoMPUTER DICTIONARY 360 (4th ed. 1999). The Defendants fail to overcome the presumption
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`that "programmable interface" is not a means-plus-function. Accordingly, § 112 ~ 6 does not
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`apply.
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`Although the Court rejects the Defendants' proposed construction, the Court also rejects
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`the Plaintiff's proposal. The Court sees no reason to include "associated management software"
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`in the definition, or to make reference to the programmable communicator device or the
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`monitored technical device. Instead, a more helpful construction, and one the Court believes is
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`truer to the term's language and the intrinsic record, is the one the Court adopts, namely, "an
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`interface that is able to be directly programmed."
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`4. "processing module"
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`a. Plaintiff's proposed construction: "A processor with executable program code
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`for authenticating an at least one transmission received from a programming transmitter
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`including an at least one telephone number or IP address corresponding to an at least one
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`monitoring device by determining whether the at least one transmission includes a coded
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`number."
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`b. Defendants' proposed construction: This is a means-plus-function limitation
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`with the function of "authenticating an at least one transmission sent from a programming
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`transmitter and received by the programmable communicator device, the at least one
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`transmission including a coded number and at least one telephone number or Internet Protocol
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`(IP) address corresponding to an at least one monitoring device, wherein the processing module
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`authenticates the at least one transmission by determining if the at least one transmission contains
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`the coded number, the processing module authenticating the at least one transmission ifthe
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`transmission includes the coded number." There is no corresponding structure, so the limitation
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`is indefinite.
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`c. Court's construction: "Components or units of a computer program."
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`The Court applies the same analysis detailed in Section III.A.3, supra, to determine that§
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`112 ,-r 6 does not apply to "processing module." "Means" language is not used in the claim itself,
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`and several district courts have construed "module" as connoting sufficient structure to avoid the
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`application of§ 112 ,-r 6. See, e.g., Stanacard LLC v. Rebtel Networks, AB, 680 F. Supp. 2d 483,
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`498-99 (S.D.N.Y. 2010); Beneficial Innovations, Inc. v. Blockdot, Inc., 2010 WL 1441779, at
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`*16 (E.D. Tex. Apr. 12, 2010); C2 Commc'ns 1echs., Inc. v. AT&1, Inc., 2008 WL 2462951, at
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`* 11 (E.D. Tex. June 13, 2008). The Defendants counter by citing an opinion finding that
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`"distributed learning control module" was subject to § 112 ,-r 6. Williamson v. Citrix Online LLC,
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`2012 WL 2523827, at *24 (C.D. Cal. Sept. 4, 2012) ("The term 'module,' as used in the disputed
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`terms, does not connote sufficient structure to avoid a means-plus-function construction under§
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`112 ,-r 6."). While the Court recognizes the split in the district courts over the construction of
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`"module," the Court agrees with the Plaintiff, and the weight of authority in its favor, in finding
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`that § 112 ,-r 6 does not apply in this case to the term.
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`Indeed, the construction in Beneficial Innovations is especially instructive because the
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`defendants there raised similar arguments to the Defendants in this case, and the disputed claim
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`terms were nearly identical. See Beneficial Innovations, 201 0 WL 1441779, at * 16
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`("Defendants argue that the phrase 'user response processing modules' does not recite
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`sufficiently definite structure, does not appear anywhere in the specification of the '366 patent,
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`and does not have a generally understood meaning to a person of ordinary skill in the art."). The
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`court rejected these arguments and construed "user response processing modules" to mean
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`"components or units of a computer program .... " Id (supporting its conclusion with decisions
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`from other courts and fact that patentee provided definitions for both "processing" and
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`"module"). The Court sees no justification for straying from the well-reasoned conclusion
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`offered by the court in Beneficial Innovations.
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`5. "monitoring device"
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`a. Plaintiff's proposed construction: "A network-connected device configured to
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`remotely monitor a programmable communicator device and/or a monitored technical device."
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`b. Defendants' proposed construction: "A device configured to remotely monitor
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`a programmable communicator device and/or a monitored technical device."
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`c. Court's construction: "A device configured to remotely monitor a
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`programmable communicator device and/or a monitored technical device."
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`Both parties agree that "monitoring device" should be construed to mean "a device
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`configured to remotely monitor a programmable communicator device and/or a monitored
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`technical device"-the sole dispute is whether, as Plaintiff contends, there should be a further
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`limitation that the monitoring device must be "network-connected." (D.I. 54 at 56, 59).
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`Independent claims 1, 52, 104, and 151 ofthe '010 patent each recite a telephone number or IP
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`address corresponding to the monitoring device. Plaintiff argues that because the monitoring
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`device is remote, it must be network-connected in order to receive transmissions from the
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`programmable communicator and to perform its monitoring duties. (D.I. 54 at 56-57 ("Indeed,
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`were the 'monitoring device' not connected to the network, it would be unable to communicate
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`with the programmable communicator .... ")). However, the specification recognizes that a
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`number or IP address might not always be available and discloses a procedure for what happens
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`when the programmable communicator "detects that the telephone number is engaged or does not
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`answer or that the IP address is invalid." '010 patent, col. 511. 38-45; col. 911. 1-4 ("In the case
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`that the programmable communicator is unable to make an immediate connection with the linked
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`telephone number or IP address, a reselection means 150 provides one or more connection
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`Case 1:12-cv-00030-RGA Document 92 Filed 11/12/13 Page 15 of 20 PageID #: 2447
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`numbers from the permitted callers list."). This belies Plaintiff's argument, and the Court agrees
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`with Defendants that there is no basis for importing the "network-connected" limitation into the
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`meaning of"monitoring device."
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`6. "wireless communications circuit for communicating through an antenna"
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`a. Plaintiffs proposed construction: "Circuitry that enables the sending and
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`receiving of wireless transmissions through an antenna."
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`b. Defendants' proposed construction: "A complete circuit that transmits and
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`receives data and includes at least an antenna, transmitter, receiver, power supply, a ringing tone
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`generator and an auto answer module."
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`c. Court's construction: "A complete wireless circuit that transmits and receives
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`data and includes an antenna."
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`The term "circuit" encompasses both "open" and "closed" circuits. However, only a
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`closed or complete circuit will provide the functionality disclosed in the specification-i.e., in
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`order for the circuit to perform its wireless communication function, there must be a "path for the
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`flow of current." Compare THE FREE DICTIONARY,
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`http://www.thefreedictionary.com/closed+circuit (last visited Sept. 17, 2013) (defining "closed
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`circuit" as "[a]n electric circuit through which current can flow in an uninterrupted path"), with
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`THE FREE DICTIONARY, http://www.thefreedictionary.com/open+circuit (last visited Sept. 17,
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`2013) (defining "open circuit" as "an incomplete electrical circuit in which no current flows"). 4
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`Although there is no language in the specification explicitly limiting the invention to a closed
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`4 The Defendants provided a citation to this online dictionary in support of their
`argument. The Plaintiff does not assert, nor is there any evidence to suggest, that the definition
`of "closed circuit" or "open circuit" has changed since the time of the invention.
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`circuit, the claims and the embodiments described in the specification would not be possible if no
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`current flowed through the circuit. Therefore, the Court construes the "wireless communications
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`circuit" as being a complete circuit.
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`The Defendants' proposed inclusion of limitations addressing a "transmitter, receiver,
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`power supply, a ringing tone generator and an auto answer module" is inappropriate based on the
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`claims and specification. Unlike "antenna," none of these proposed limitations can be found in
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`the claim language. See '010 patent, claim 1 ("A programmable communicator device
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`comprising: a wireless communications circuit for communicating through an antenna .... ").
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`The Abstract provides further support for including the "antenna" limitation because it refers to a
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`wireless circuit "including an antenna." '01 0 patent, Abstract. The other elements cannot be
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`found in the claim language at all. The Summary of the Invention section states that the
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`"programmable communicator preferably comprises a basic mobile telephone circuit ... and a
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`rechargeable battery and antenna and a basic two-way microphone device .... " '010 patent, col.
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`7 11. 31-34. Absent something more, this mention is insufficient to impute these limitations into
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`the claim's construction. Kinik Co. v. Int'l Trade Comm 'n, 362 F.3d 1359, 1364 (Fed. Cir. 2004)
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`("[W]hen the specification describes the invention in broad terms, accompanied by specific
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`examples or embodiments, the claims are generally not restricted to the specific examples or the
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`preferred embodiments unless that scope was limited during prosecution."). Similarly, the only
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`discussion of a "ringing tone generator" or "auto answer" module relates to a few of the
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`described embodiments. See, e.g., '010 patent, col. 61. 65-col. 71. 8; col. 811. 31-41. But
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`numerous other embodiments are included in the specification, and thus it would be improper to
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`read the limitations from some embodiments into the claim language. See Kinik Co., 362 F. 3d at
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`1364.
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`7. "monitored technical device "5
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`a. Plaintiff's proposed construction: "A technical device that is locally connected
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`with the programmable interface of a programmable communicator device so as to be monitored
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`by the programmable communicator device and/or by a monitoring device."
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`b. Defendants' proposed construction: "A device that provides status information
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`to the remote monitoring device through the communicator."
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`c. Court's construction: "A device that provides information to the remote
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`monitoring device through the programmable communicator device."
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`The specification is replete with references in various embodiments to both "data" and
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`"status" information that is transmitted by the monitored technical device. Compare '010 patent,
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`col. 3 ll. 43-46 ("[T]here exists the need for a [device] which can be used to relay information
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`about the status of a remote piece of technical equipment ... . "),with '01 0 patent, col. 5 ll. 46-50
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`("It is a further object of the present invention to provide a [device] which is able to store a sound
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`byte or store a data record and send the sound byte or data record to any other telephone number
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`or IP address .... "). Similarly, Figure 3 depicts the collection and transmission of data as well
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`as the collection and transmission of a status condition. There is no indication that one is
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`preferred over the other. Either can be used depending on the embodiment being practiced. '0 1 0
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`patent, col. 11 ll. 6-9 ("The types of data the communicator can provide periodically, or on
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`request, are determined directly by the application of the invention .... "). "Status information"
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`5 The parties agree that "monitored technical device" as used in the '0 1 0 patent is
`equivalent to "interfaced device" in the '197 patent. (D.I. 54 at 48, 52).
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`is a subset of the overall "data" that could be sent, and it would be improper to limit the
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`monitored technical device to a device that only provides "status information," as Defendants
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`suggest.
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`B. U.S. Patent No. 7,583,197
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`1. "at least one wired or wirelessly attached monitoring device"
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`a. Plaintiff's proposed construction: "A programmable interface having a wired
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`or wireless connection with a monitoring device."
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`b. Defendants' proposed construction: The claim is indefinite, but to the extent
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`that it is construed, it should mean "a device local to the programmable communicator that
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`monitors the status of another device and is connected to the personal communicator by wire or
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`wirelessly."
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`c. Court's construction: The claim is indefinite.
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`As used in the independent claims of the' 197 patent,6 the claim term "at least one wired
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`or wirelessly attached monitoring device" is indefinite because it is "not amenable to
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`construction." Datamize LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005)
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`("Only claims 'not amenable to construction' or 'insolubly ambiguous' are indefinite."). As
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`discussed in Section III.A.5, supra, a "monitoring device" is construed to mean, "A device
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`configured to remotely monitor a programmable communicator device and/or a monitored
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`technical device." The parties do not dispute the "remote" nature of the monitoring device.
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`Consistent with the understanding that the monitoring device is remote, claim 107 of the '197
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`patent refers to "at least one telephone number or IP address corresponding to the at least one
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`6 At issue are independent claims 1, 29, 40, 68, 79, and 1 07 of the '197 patent.
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`Case 1:12-cv-00030-RGA Document 92 Filed 11/12/13 Page 19 of 20 PageID #: 2451
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`monitoring device." '197 patent, claim 1 07 (emphasis added). The word "the" in this claim
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`term, however, indicates the presence of an antecedent basis and points the Court to "a
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`programmable interface connected to at least one wired or wirel