Case 6:11-cv-00048-LED-JDL Document 255 Filed 07/30/12 Page 1 of 79 PageID #: 3004
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`
`
`Plaintiff,
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`
`SIPCO, LLC
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`
`
`
`
`V.
`
`ABB, INC., et al,
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`
`
`
`
`Defendants.
`
`CIVIL ACTION NO.
`6:11-CV-0048 LED-JDL
`
`
`
`JURY TRIAL REQUESTED
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`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`MEMORANDUM OPINION AND ORDER
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`
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`This claim construction opinion construes the disputed claim terms in the four asserted
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`patents: U.S. Patent No. 7,103,511 (the “‘511 patent) entitled “Wireless Communication
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`Networks For Providing Remote Monitoring Devices;” and U.S. Patent Nos. 6,437,692 (the
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`“‘692 patent”); 7,697,492 (the “‘492 patent”); 6,914,893 (the “‘893 patent”); all entitled “System
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`and Method for Monitoring and Controlling Remote Devices” (collectively, the “patents-in-
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`suit”). The matter has been fully briefed. 1 For the reasons stated herein, the Court adopts the
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`construction set forth below.
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`OVERVIEW OF THE PATENTS-IN-SUIT
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`The patents-in-suit are generally directed towards monitoring or controlling remote
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`devices using wireless mesh communications technology. See, e.g., ‘511 patent at Abstract; id.at
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`1 Plaintiff SIPCO, LLC (“SIPCO”) filed an Opening Claim Construction Brief (Doc. No. 202) (“Sipco Brief”).
`Defendant SmartLabs, Inc. (“SmartLabs”) filed a Responsive Claim Construction Brief (Doc. No. 215) (“SmartLabs
`Response”) to which SIPCO replied (Doc. No. 225) (“Reply to SmartLabs”). The Schlage/Trane Defendants
`(“Schlage/Trane”) also filed a Responsive Claim Construction Brief (Doc. No. 218) to which SIPCO replied (Doc.
`No. 227) (“Reply to Schlage/Trane”). Defendant Coulomb Technologies, Inc. (“Coulomb”) also filed a Responsive
`Claim Construction Brief (Doc. No. 219) to which SIPCO replied (Doc. No. 226) (“Reply to Coulomb”). Also
`present at the Claim Construction hearing was SmartSynch, Inc. (“SmartSynch”), the last remaining defendant at
`the time of the hearing in SIPCO LLC v. Energate, Inc. et al., 6:10-cv-533 (“the ‘533 action”). SmartSynch was
`dismissed from the ‘533 action after fully participating in the claim construction procedure. See, e.g., ‘533 action
`(Doc. No. 176) (“SmartSynch Response”); see also (Doc. No. 182) (“Reply to SmartSynch”). Because SmartSynch
`has been dismissed from this action, the Court will only discuss its arguments if relevant to the remaining
`Defendants’ position.
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`
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`1
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`Petitioner Emerson's Exhibit 1006
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`Case 6:11-cv-00048-LED-JDL Document 255 Filed 07/30/12 Page 2 of 79 PageID #: 3005
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`2:27-28. Figure 1 of the ‘511 patent , depicted below, shows an exemplary embodiment of the
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`invention. The exemplary embodiment includes “sensors/actuators 130” integrated with
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`transceivers 135 that transmit low-power radio-frequency (“RF”) signals, transceiver/repeaters
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`125, site controllers 150 that manage and relay data between the transceivers and a wide area
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`network. Id. at Fig. 1; id. at 2:47-3:39 (generally describing the preferred embodiments).
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`Further, a computer can send various control signals to the sensor/actuator and receive
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`sensor data transmitted from transceivers integrated into sensors/actuators in response to which
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`the integrated transceivers 135 can transmit sensor data. See, e.g., id. at 9:3-14; ‘692 patent at
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`Abstract. Lastly, the patents-in-suit are no strangers to litigation. Several of the disputed claim
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`terms have been previously construed by this Court or the Eastern District of Pennsylvania. See
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`Sipco LLC v. Toro Co., Civ. No. 08-0505, 2009 WL 330969 (E.D. Pa. Feb. 11, 2009); Sipco,
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`LLC v. Datamatic, Ltd., 6:09-cv-532-LED-JDL, 2011 WL 1742669 (E.D. Tex. May 6, 2011).
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`CLAIM CONSTRUCTION PRINCIPLES
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`2
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`Petitioner Emerson's Exhibit 1006
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`Case 6:11-cv-00048-LED-JDL Document 255 Filed 07/30/12 Page 3 of 79 PageID #: 3006
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`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention
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`to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303,
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`1312 (Fed. Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
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`381 F.3d 1111, 1115 (Fed. Cir. 2004)). The Court examines a patent’s intrinsic evidence to
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`define the patented invention’s scope. Id. at 1313-1314; Bell Atl. Network Servs., Inc. v.
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`Covad Commc’ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). Intrinsic evidence includes
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`the claims, the rest of the specification and the prosecution history. Phillips, 415 F.3d at 1312-
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`13; Bell Atl. Network Servs., 262 F.3d at 1267. The Court gives claim terms their ordinary and
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`customary meaning as understood by one of ordinary skill in the art at the time of the invention.
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`Phillips, 415 F.3d at 1312-13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed.
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`Cir. 2003).
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`
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`Claim language guides the Court’s construction of claim terms. Phillips, 415 F.3d at
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`1314. “[T]he context in which a term is used in the asserted claim can be highly instructive.” Id.
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`Other claims, asserted and unasserted, can provide additional instruction because “terms are
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`normally used consistently throughout the patent.” Id. Differences among claims, such as
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`additional limitations in dependent claims, can provide further guidance. Id.
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`
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`“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id.
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`(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995)). “[T]he
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`specification ‘is always highly relevant to the claim construction analysis. Usually, it is
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`dispositive; it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics
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`Corp.v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex. Inc. v. Ficosa N.
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`Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). In the specification, a patentee may define
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`his own terms, give a claim term a different meaning that it would otherwise possess, or disclaim
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`3
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`or disavow some claim scope. Phillips, 415 F.3d at 1316. Although the Court generally
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`presumes terms possess their ordinary meaning, this presumption can be overcome by statements
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`of clear disclaimer. See SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d
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`1337, 1343-44 (Fed. Cir. 2001). This presumption does not arise when the patentee acts as his
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`own lexicographer. See Irdeto Access, Inc. v. EchoStar Satellite Corp., 383 F.3d 1295, 1301
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`(Fed. Cir. 2004).
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`
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`The specification may also resolve ambiguous claim terms “where the ordinary and
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`accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of
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`the claim to be ascertained from the words alone.” Teleflex, Inc., 299 F.3d at 1325. For example,
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`“[a] claim interpretation that excludes a preferred embodiment from the scope of the claim ‘is
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`rarely, if ever, correct.” Globetrotter Software, Inc. v. Elam Computer Group Inc., 362 F.3d
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`1367, 1381 (Fed. Cir. 2004) (quoting Vitronics Corp., 90 F.3d at 1583). But, “[a]lthough the
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`specification may aid the court in interpreting the meaning of disputed language in the claims,
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`particular embodiments and examples appearing in the specification will not generally be read
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`into the claims.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir.
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`1988); see also Phillips, 415 F.3d at 1323.
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`
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`The prosecution history is another tool to supply the proper context for claim
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`construction because a patentee may define a term during prosecution of the patent. Home
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`Diagnostics Inc. v. LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the
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`specification, a patent applicant may define a term in prosecuting a patent”). The well-
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`established doctrine of prosecution disclaimer “preclud[es] patentees from recapturing through
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`claim interpretation specific meanings disclaimed during prosecution.” Omega Eng’g Inc. v.
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`Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). The prosecution history must show that the
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`patentee clearly and unambiguously disclaimed or disavowed the proposed interpretation during
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`prosecution to obtain claim allowance. Middleton Inc. v. 3M Co., 311 F.3d 1384, 1388 (Fed.
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`Cir. 2002). “Indeed, by distinguishing the claimed invention over the prior art, an applicant is
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`indicating what the claims do not cover.” Spectrum Int’l v. Sterilite Corp., 164 F.3d 1372, 1378-
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`79 (Fed. Cir. 1988) (quotation omitted). “As a basic principle of claim interpretation,
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`prosecution disclaimer promotes the public notice function of the intrinsic evidence and protects
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`the public’s reliance on definitive statements made during prosecution.” Omega Eng’g, Inc., 334
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`F.3d at 1324.
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`
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`Although, “less significant than the intrinsic record in determining the legally operative
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`meaning of claim language,” the Court may rely on extrinsic evidence to “shed useful light on
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`the relevant art.” Phillips, 415 F.3d at 1317 (quotation omitted). Technical dictionaries and
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`treatises may help the Court understand the underlying technology and the manner in which one
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`skilled in the art might use claim terms, but such sources may also provide overly broad
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`definitions or may not be indicative of how terms are used in the patent. Id. at 1318. Similarly,
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`expert testimony may aid the Court in determining the particular meaning of a term in the
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`pertinent field, but “conclusory, unsupported assertions by experts as to the definition of a claim
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`term are not useful.” Id. Generally, extrinsic evidence is “less reliable than the patent and its
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`prosecution history in determining how to read claim terms.” Id.
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`The patents-in-suit may contain means-plus-function limitations that require construction.
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`Where a claim limitation is expressed in means-plus-function language and does not recite
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`definite structure in support of its function, the limitation is subject to 35 U.S.C. § 112 ¶ 6.
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`Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). In relevant part, § 112
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`mandates that “such a claim limitation be construed to cover the corresponding structure . . .
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`described in the specification and equivalents thereof.” Id. (citing 35 U.S.C. § 112 ¶ 6. ).
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`Accordingly, when faced with means-plus-function limitations, courts “must turn to the written
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`description of the patent to find the structure that corresponds to the means recited in the
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`[limitations].” Id.
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`
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`Construing a means-plus-function limitation involves two inquiries. The first step
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`requires “a determination of the function of the means-plus-function limitation.” Medtronic, Inc.
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`v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001). Once a court has
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`determined the limitation’s function, “the next step is to determine the corresponding structure
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`disclosed in the specification and equivalents thereof.” Medtronic, 248 F.3d at 1311. A
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`structure is corresponding “only if the specification or prosecution history clearly links or
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`associates that structure to the function recited in the claim.” Id. Moreover, the focus of the
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`corresponding structure inquiry is not merely whether a structure is capable of performing the
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`recited function, but rather whether the corresponding structure is “clearly linked or associated
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`with the [recited] function.” Id.
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`I.
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`Non-Means-Plus-Function Terms
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`DISCUSSION
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`a. remote2
`
`SIPCO
`Does not require
`construction – entitled
`to plain & ordinary
`meaning.
`Alternatively,
`“located separately”
`
`
`Coulomb
`In a geographical
`location separate from
`a local gateway/site
`controller
`
`SmartLabs
`SmartLabs agrees
`with the co-
`defendants’
`constructions
`
`Schlage/Trane
`“far removed”
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`2 The term “remote” is found in the ‘692 patent at claims 1, 32, 42, 49; ‘511 patent claims 1, 8; ‘893 patent claims 1,
`37; and the ‘492 patent 1,6,8,9,11,25.
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`6
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`The parties appear to agree that the term “remote” connotes some degree of separateness.
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`Beyond that, however, there is a substantial dispute among the parties regarding the proper
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`construction of remote. The Court will address each party’s arguments in turn.3
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`
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`Schlage/Trane argues that the plain meaning of “remote” means more than merely
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`“separate” but also encompasses a concept of “at a distance far away, far removed.” MARKMAN
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`TRANSCRIPT at 14:1-8; see also SCHLAGE/TRANE RESPONSE at 4 (citing MERRIAM-WEBSTER
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`COLLEGIATE DICTIONARY (10th Ed. 2002) at 987). As a result, for Schlage/Trane, a construction
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`of “remote” that permits a “remote device” to be “located adjacent to” another item is improper.
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`Id; MARKMAN TRANSCRIPT at 14:1-8.
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`Although Coulomb does not disagree that remote means “far removed,” MARKMAN
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`TRANSCRIPT at 20-21, Coulomb argues that further construction is required in order to provide
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`the proper context. The crux of Coulomb’s proposal is that a “remote device” is different from a
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`“local gateway” or “site controller.” See, e.g., id. at 12:8-11. In support, Coulomb points to
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`several portions of the specification that describe devices used at a distance from the gateway or
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`the site controller. COULOMB RESPONSE at 16 (citing ‘692 patent at 6:15-20; Abstract; Fig. 5;
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`‘492 patent at 2:29-35; 4:18-35; ‘511 patent at 2:28-47; 5:57-61; 14:49-59). For Coulomb, the
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`patents-in-suit thus describe transceivers and a host computer as “remote” while referring to the
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`gateway as the “local” component that receives “remote” transmissions. Id. at 16-17.
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`
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`The Court agrees with Defendants that the term “remote” should be construed; however,
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`each of Defendants’ proposed constructions improperly narrow the term “remote” by either
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`importing limitations from the specification or by selecting a dictionary definition to
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`3 SmartLabs states that it “agrees with the co-defendants’ briefing of the claim term[] ‘remote’ . . . and joins the
`portions of their brief seeking construction of [this] term[].” SMARTLABS RESPONSE at 3. Because the Defendants’
`propose multiple competing constructions the Court will interpret SmartLabs comments as indicating its belief that
`“remote” should be construed.
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`Petitioner Emerson's Exhibit 1006
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`manufacture noninfringement arguments. As an initial matter, a term should be construed
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`consistent with its usage throughout a patent family. See NTP, Inc. v. Research In Motion, Ltd.,
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`418 F.3d 1282, 1293 (Fed. Cir. 2005) (“Because NTP’s patents all derive from the same parent
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`application and share many common terms, we must interpret the claims consistently across all
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`asserted patents”). Moreover, the patents-in-suit describe a “remote device” that can vary in
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`location, moving closer to or further away from the local gateway controller as the circumstances
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`of the particular wireless communication system dictate. For example, the patents-in-suit
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`describe battery operated mobile transceivers used to track individual’s movement from room to
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`room within a controlled facility. See ‘511 patent at 22:22-30; Id. at 7:53-54. Similarly, the ‘692
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`patent describes a sensor-transceiver assembly integrated into mobile inventory units (e.g.,
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`“package, ship, airplane, trains, and/or taxi”) that are “within radio-frequency transmission and
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`receiving range of stand-alone receiver 221.” ‘692 patent at 16:35-56. Further, a remote device
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`may be located close enough to a site controller such that the two may be hardwired together.
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`‘511 patent at 5:30-35. Thus, a “remote device” may be located in close proximity to or at a
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`great distance from a site controller/gateway.
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`
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`Schlage/Trane’s proposal is flawed because it does not provide a point of reference for
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`measuring “far removed.” Further, Schlage/Trane relies on a dictionary definition at the expense
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`of the plain the language of the specification. As described above, a “remote” device may be
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`mobile and can be in close enough proximity to a site controller to permit hardwiring. See ‘511
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`patent at 5:30-35. This squarely contradicts Schlage/ Trane’s proposal. See Phillips, 415 F.3d at
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`1321 (warning against the elevation of dictionary definitions above the plain language of the
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`claims and specification). Accordingly, the Court declines to adopt a definition of “remote”
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`requiring the device to be “far removed.”
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`8
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`Coulomb’s proposed construction requires a “remote” device to be “in a geographical
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`location separate from a local gateway/site controller.” First, the separate geographical location
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`limitation is flawed for the same reasons that “far removed” is improper, i.e. a remote device can
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`be mobile and vary in geographic locations, including in same geographic location as the locate
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`gateway/site controller. See, e.g., ‘511 patent at 22:1-8 (describing a remote device integrated
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`with a vehicle diagnostics bus that “transmits [data] to a local transceiver that further transmits
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`the [data] through a local gateway onto a WAN”); id. at 22:22-30 (a remote monitoring system
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`for an assisted living community).
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`Furthermore, as noted above, Coulomb’s primary concern is to distinguish between
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`“remote devices” and a “gateway” or “site controller.” However, the claims themselves
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`distinguish between “remote devices” and the gateway/site controller when necessary. For
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`example, claim 1 of the ‘692 recites a “remotely located device” that is separate from a
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`“computer” that communicates with a “gateway:”
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`A system for remote data collection, assembly, and storage comprising:
`a computer configured to execute at least one computer program that
`formats and stores select information for retrieval upon demand from a remotely
`located device, said computer integrated with a wide area network (WAN);
`at least one wireless transmitter configured to transmit select information
`and transmitter identification information;
`a plurality of relatively low-power radio-frequency (RF) transceivers
`dispersed geographically at defined locations configured to receive select
`information transmitted from at least one nearby wireless transmitter and further
`configured to transmit the select information, the transmitter identification
`information and transceiver identification information; and
`at least one gateway connected to the wide area network configured to
`receive and translate the select information, the transmitter identification
`information, and transceiver identification information, said gateway further
`configured to farther transmit the translated information to the computer
`over the WAN.
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`‘692 patent at claim 1 (emphasis added). The plain language of the claim does not, however,
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`distinguish between a gateway and the “remotely located device.” Cf. id. at claim 11 (“The
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`system as defined in claim 1, wherein the gateway includes one selected from the group
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`consisting of: a modem for establishing a dial-up connection with a remote computer . . .”). In
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`contrast, claim 1 of the ‘511 patent clearly distinguishes between a “site controller” and a
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`“remote device:”
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`A wireless communication network adapted for use in an automated monitoring
`system for monitoring and controlling a plurality of remote devices via a host
`computer connected to a wide area network, the wireless communication
`networking comprising:
`
`A plurality of wireless transceivers having unique identifiers . . .
`
`A site controller in communication with at least one of the plurality of
`wireless transceivers, the site controller configured to . . . identify the remote
`device associated with the corresponding sensor data signal, and provide
`information related to the sensor data signal to the wide area network for delivery
`to the host computer.
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`‘511 patent at claim 1(emphasis added). Thus, the plain language of the claims identify when a
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`“remote device” or a “remotely located device” is distinct from a gateway or site controller.
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`Accordingly, the Court rejects Coulomb’s proposal to further distinguish “remote” from the
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`gateway/site controller.
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`
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`Lastly, while the specification does not require “geographically separate” or “far
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`removed,” the above discussion makes clear that “remote” carries with it some degree of
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`“separateness.” “Remote” devices are described as hardwired and/or communicating wirelessly.
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`The ‘511 patent plainly discloses a system where “remote” devices communicate with a separate
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`local gateway or site controller within wireless communication range. See, e.g., ‘511 patent at
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`Fig. 1 (depicting wireless communication devices communicating with a separate site controller);
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`id. at 5:17-20 (“As illustrated in FIG. 1, one or more sensors 140 may communicate with at least
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`one site controller 150 via a wireless transmitter 145, a wireless transceiver 135, or a wireless
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`transceivers/repeater 125”); id. at 5:30-35; id. at 5:57-66 (“One or more site controllers 150 are
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`configured and disposed to receive remote data transmissions from the various stand-alone
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`wireless transceivers/repeaters 125, integrated wireless transmitters 145, or the integrated
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`wireless transceivers”).
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`
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`In conclusion, the Court finds that “remote” as used in the disputed claims should be
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`construed as “located separately.” Defendants’ proposed constructions artificially limit the
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`claims by, in the case of Schlage/Trane, attempting to force a dictionary definition that
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`contradicts the teachings of the specification or by importing limitations from preferred
`
`embodiments into the claims.
`
`b. “configured to”4
`
`SIPCO
`Does not require
`construction– entitled
`to plain & ordinary
`meaning.
`
`Alternatively,
`“programmed or
`equipped with
`hardware or software
`to be capable of”
`
`Coulomb
`“programmed or
`equipped with
`hardware or software
`to be capable of”
`
`Or
`
`“programmed and
`able to” [perform the
`stated functions]5
`
`SmartLabs
`SmartLabs agrees
`with the co-
`defendants’
`constructions
`
`Schlage/Trane
`For the asserted
`claims of the ‘692
`Patent, all
`communications
`between the
`transceivers,
`repeaters, gateway
`and host computer
`must be formatted
`according to the
`message protocol
`(data structure)
`provided in the
`specification and as
`depicted in FIG. 11 of
`the ‘692 Patent. The
`fields and order
`depicted in FIG. 11
`are required.
`
`
`
`
`There are two essential disputes with regards to the proper construction of “configured
`
`to:” (1) whether “configured to” should be limited to a particular embodiment in the ‘692 patent
`
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`4 The phrase “configured to” is found in all asserted claims in the ‘692 patent, ‘511 claims 1,8; and the ‘492 patent
`claims 1, 25.
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`5 Coulomb adopted SmartSynch’s proposal at the Claim Construction hearing. See MARKMAN TRANSCRIPT at
`35:20-36:12.
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`
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`11
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`as argued by Schlage/Trane and (2) whether “configured to” requires more than mere capability.
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`For the reasons set forth below, the Court declines to limit “configured to” the particular
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`embodiment disclosed in the ‘692 patent and construes “configured to” as “actually programmed
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`or equipped with hardware or software to.”
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`i.
`
`“configured to” is not limited to the embodiment disclosed in Fig. 11 of the ‘692
`patent.
`
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`Schlage/Trane seeks to limit the communications “between the transceivers, repeaters,
`
`gateway and host computer” to the “message protocol” or “data structure” identified in the
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`specification of the ‘692 patent. S CHLAGE/TRANE RESPONSE at 16-17. Specifically,
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`Schlage/Trane argues that these communications must correspond to the precise fields and the
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`particular order described in Fig. 11 because the patentee referred to the embodiment described
`
`in Fig. 11 as “the invention” of the ‘692 patent. Id. at 14. Schlage/Trane attempts to force such a
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`limitation into the construction of the term “configured to” in only the ‘692 patent despite the
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`fact that “configured to” is used in a variety of contexts throughout the claims of the ‘692 patent
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`and in the ‘511 and ‘492 patents. The Court declines to limit all claims of the ‘692 patent to the
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`particular message protocol described in Fig. 11 because the specification discloses alternative
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`message structures that do not conform to the precise fields and order depicted in Fig. 11.
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`Further, even if Schlage/Trane is correct that the specification only discloses communication via
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`the “message protocol” of Figure 11, nothing in the specification supports forcing that limitation
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`into a construction of “configured to.”
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`The Federal Circuit has cautioned that the claims define the metes and bounds of the
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`patentee’s invention. Phillips, 415 F.3d at 1313. While the claims are interpreted in light of the
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`specification, the Federal Circuit has consistently warned against importing limitations from the
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`specification into the claim even where the specification only discloses a single embodiment. Id.
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`at 1323 (citing Comark Commc’n, Inc. v. Harris Corp., 156 F.3d 1182, 1186-87 (Fed Cir.
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`1998)). Further, “[t]he patentee is free to choose a broad term and expect to obtain the full scope
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`of its plain and ordinary meaning unless the patentee explicitly redefines the term or disavows its
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`full scope.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1367 (Fed. Cir. 2012).
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`In discussing the “exacting” standard for disavowal of claim scope, the Thorner court explains:
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`Mere criticism of a particular embodiment encompassed in the plain meaning of a
`claim term is not sufficient to rise to the level of clear disavowal. Epistar Corp. v.
`Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009) (holding that even a
`direct criticism of a particular technique did not rise to the level of clear
`disavowal). In Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., we
`explained that even where a particular structure makes it “particularly difficult” to
`obtain certain benefits of the claimed invention, this does not rise to the level of
`disavowal of the structure. 620 F.3d 1305, 1315 (Fed. Cir. 2010). It is likewise not
`enough that the only embodiments, or all of the embodiments, contain a particular
`limitation. We do not read limitations from the specification into claims; we do
`not redefine words. Only the patentee can do that. To constitute disclaimer, there
`must be a clear and unmistakable disclaimer.
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`Thorner, 669 F.3d at 1366-67. The Federal Circuit has found such a disclaimer in certain
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`circumstances where the patentee uses the phrase “the present invention” or “this invention” to
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`describe a particular feature. See Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121,
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`1136 (Fed. Cir. 2011)(collecting cases). These phrases may not be limiting where references to
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`“the invention” are not uniform or “where other portions of the intrinsic record do not support
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`applying the limitation to the entire patent.” Id. For example, in Absolute Software, the court
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`declined to import a limitation into the claim where a portion of specification identified the
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`purported limitation as one of “two optional features of the ‘present invention’” despite earlier
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`references in the specification requiring the “present invention” to include both features. Id. at
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`1137.
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`Schlage/Trane has failed to point out with particularity any disclaimers or disavowals
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`with regards to the term “configured to.” The term “configured to” is used in a variety of
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`contexts that cannot be limited to the particular message protocol of Figure 11. Claim 1 uses
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`“configured to” in at least three contexts: (1) a computer configured to execute a program, (2)
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`various devices configured to communicate over a wireless network and (3) a gateway
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`configured to receive and translate the information sent over the wires network and further
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`configured to transmit the information over a wide area network:
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`A system for remote data collection, assembly, and storage comprising:
`a computer configured to execute at least one computer program that formats
`and stores select information for retrieval upon demand from a remotely located
`device, said computer integrated with a wide area network (WAN);
`at least one wireless transmitter configured to transmit select information and
`transmitter identification information;
`a plurality of relatively low-power radio-frequency (RF) transceivers
`dispersed geographically at defined locations configured to receive select
`information transmitted from at least one nearby wireless transmitter and further
`configured to transmit the select information, the transmitter identification
`information and transceiver identification information; and
`at least one gateway connected to the wide area network configured to
`receive and translate the select information, the transmitter identification
`information, and transceiver identification information, said gateway further
`configured to farther transmit the translated information to the computer
`over the WAN.
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`‘692 patent at claim 1 (emphasis added). At no point does Schlage/Trane precisely identify what
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`“configured to” it is seeking construction of or how Figure 11 limits that particular claim term.
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`Schlage/Trane’s briefing simply identifies “configured to . . .” as used in the ‘692 patent. See
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`SCHLAGE/TRANE RESPONSE at 13. At the Claim Construction Hearing, Schlage/Trane identified
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`“a plurality of relatively low-power RF transceivers . . . configured to transmit information” and
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`“several other similar phrases” as the element it seeks construed. MARKMAN TRANSCRIPT at
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`26:18-24. However, it cannot be ignored that “configured to” is used in a variety of contexts
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`throughout the claims and the specification.
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`In contrast, the Federal Circuit has limited particular terms to the specific embodiments
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`where the specification describes “the invention” as a particular embodiment of the disputed
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`term. In other words, there must be a “link” between the particular embodiment and the disputed
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`term. For example, in Verizon Services Corp., the court found that “localized gateway system”
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`was limited to a particular embodiment in the specification because “[i]n the course of describing
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`the ‘present invention,’ the specification then states that ‘[t]he gateway compresses and
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`decompresses voice frequency communication signals and sends and receives the compressed
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`signals in packet form via the network.’” Verizon Services Corp. v. Vonage Holdings Corp., 503
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`F.3d 1295, 1308 (Fed. Cir. 2007) (citations omitted). Thus, the court limited “localized w