UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C. 20436
`
`Before the Honorable Charles E. Bullock
`Administrative Law Judge
`
`Investigation No. 337-TA-963
`
`
`
`
`
`In the Matter of
`
`CERTAIN ACTIVITY TRACKING
`DEVICES, SYSTEMS, AND COMPONENTS
`THEREOF
`
`
`
`RESPONDENTS FITBIT, INC., FLEXTRONICS INTERNATIONAL LTD., AND
`FLEXTRONICS SALES & MARKETING (A-P) LTD.’S
`INITIAL MARKMAN BRIEF
`
`Respondents’ Initial Markman Brief
`
`
`i of i
`
`FITBIT EXHIBIT 1015
`
`

`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION .............................................................................................................. 1
`LEGAL STANDARD ......................................................................................................... 1
`LEVEL OF ORDINARY SKILL IN THE ART ................................................................ 2
`PATENTS-IN-SUIT AND DISUTED CLAIM TERMS ................................................... 3
`A.
`Overview of the ’811 Patent ................................................................................... 3
`B.
`Disputed Terms from the ’811 Patent ..................................................................... 5
`1.
`“forming a . . . molding” (Claims 1 and 16 of the ’811 Patent) .................. 5
`Overview of the ’522 Patent ................................................................................... 9
`Disputed Terms from the ’522 Patent ................................................................... 10
`1.
`“band” (Claim 2 of the ’522 Patent) ......................................................... 10
`Overview of the ’546 Patent ................................................................................. 14
`Disputed Terms from the ’546 Patent ................................................................... 14
`1.
`“contextual data of the individual” (Claim 1 of the ’546 Patent) ............. 14
`CONCLUSION ................................................................................................................. 17
`
`C.
`D.
`
`E.
`F.
`
`I.
`II.
`III.
`IV.
`
`V.
`
`
`
`Respondents’ Initial Markman Brief
`
`
`i of iii
`
`

`
`TABLE OF AUTHORITIES
`
`Cases
`
`Page(s)
`
`Apple Computer, Inc. v. Articulate Sys., Inc.,
`234 F.3d 14 (Fed. Cir. 2000)......................................................................................................9
`
`Becton, Dickinson & Co. v. Tyco Healthcare Gp., LP,
`616 F.3d 1249 (Fed. Cir. 2010)..................................................................................................8
`
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006)....................................................................................................8
`
`Braintree Labs., Inc. v. Novel Labs, Inc.,
`749 F.3d 1349 (Fed. Cir. 2014)................................................................................................11
`
`Brown v. 3M,
`265 F.3d 1349 (Fed. Cir. 2001)................................................................................................11
`
`CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co.,
`224 F.3d 1308 (Fed. Cir. 2000)................................................................................................17
`
`Curtiss-Wright Flow Control Corp. v. Velan, Inc.,
`438 F.3d 1374 (Fed Cir. 2006)...................................................................................................9
`
`EPOS Techs. Ltd. v. Pegasus Techs., Ltd.,
`766 F.3d 1338 (Fed. Cir. 2014)................................................................................................11
`
`Ericsson, Inc. v. D-Link Sys., Inc.,
`773 F.3d 1201 (Fed. Cir. 2014)..................................................................................................1
`
`Helmsderfer v. Bobrick Washroom Equip., Inc.,
`527 F.3d 1379 (Fed. Cir. 2008)................................................................................................17
`
`Markman v. Westview Instruments, Inc.,
`52 F.3d 967 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996) .........................................................2
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (Fed. Cir. 2008)..................................................................................................7
`
`In re Paulsen,
`30 F.3d 1475 (Fed. Cir. 1994)............................................................................................11, 13
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ......................................................................1, 2, 6, 7
`
`Respondents’ Initial Markman Brief
`
`
`ii
`
`ii of iii
`
`

`
`Renishaw PLC v. Marposs Societa’ per Azioni,
`158 F.3d 1243 (Fed. Cir. 1998)..................................................................................................9
`
`Rexnord Corp. v. Laitram Corp.,
`274 F.3d 1336 (Fed. Cir. 2001)................................................................................................11
`
`Teva Pharma. USA, Inc. v. Sandoz, Inc.,
`135 S. Ct. 831 (2015) .................................................................................................................1
`
`Texas Digital Sys., Inc. v. Telegenix, Inc.,
`308 F.3d 1193 (Fed. Cir. 2002)................................................................................................17
`
`Trading Techs. Int’l, Inc. v. eSpeed, Inc.,
`595 F.3d 1340 (Fed. Cir. 2010)................................................................................................13
`
`U.S. Surgical Corp. v. Ethicon, Inc.,
`103 F.3d 1554 (Fed. Cir. 1997)..........................................................................................10, 11
`
`Verizon Servs. Corp. v. Vonage Holdings Corp.,
`503 F.3d 1295 (Fed. Cir. 2007)................................................................................................14
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996)....................................................................................................2
`
`Statutes
`
`19 U.S.C. § 1337 ..............................................................................................................................1
`
`Other Authorities
`
`Merriam-Webster’s Collegiate Dictionary, Eleventh Edition, Merriam-Webster,
`Inc., 2005 ...................................................................................................................................7
`
`
`
`Respondents’ Initial Markman Brief
`
`
`iii
`
`iii of iii
`
`

`
`Pursuant to Order No. 1 Setting the Procedural Schedule, and Ground Rule 5A,
`
`Respondents Fitbit, Inc., Flextronics International Ltd., and Flextronics Sales & Marketing (A-P)
`
`Ltd. (collectively, “Respondents”) hereby provide their Opening Claim Construction Brief in this
`
`Investigation.
`
`I.
`
`INTRODUCTION
`
`This investigation is based on the Complaint Aliphcom d/b/a Jawbone and BodyMedia,
`
`Inc. (collectively, “Complainants”) filed under Section 337 of the Tariff Act of 1930, as
`
`amended, 19 U.S.C. § 1337, naming as Respondents Fitbit, Inc., Flextronics International Ltd.,
`
`and Flextronics Sales & Marketing (A-P) Ltd. The Investigation involves certain activity
`
`tracking devices, systems, and components thereof that allegedly infringe certain claims of U.S.
`
`Patent Nos. 8,446,275 (“the ’275 patent”); 8,529,811 (“the ’811 patent”); 8,793,522 (“the ’522
`
`patent”); 8,398,546 (“the ’546 patent”); 8,074,707 (“the ’707 patent”); and 8,961,413 (“the ’413
`
`patent”).1
`
`II.
`
`LEGAL STANDARD
`
`Claim construction is a question of law for the court. Teva Pharma. USA, Inc. v. Sandoz,
`
`Inc., 135 S. Ct. 831, 837 (2015). Courts must construe each disputed claim term based on its
`
`ordinary and customary meaning to a person of ordinary skill in the art in light of the intrinsic
`
`evidence—the claims, the specification, and the prosecution history. Phillips v. AWH Corp., 415
`
`F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Claim construction “typically begins and ends
`
`with the intrinsic evidence.” Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201, 1218 (Fed. Cir.
`
`2014).
`
`
` 1 Because the parties do not presently have any dispute as to the construction of any of the terms in the asserted
`claims of the ’275, ’413, and ’707 patents, Respondents do not address those patents here.
`
`Respondents’ Initial Markman Brief
`
`
`1 of 20
`
`

`
`The language in the claims themselves provides substantial guidance as to the meaning of
`
`the terms, but they must be read in light of the specification. See Phillips, 415 F.3d at 1315
`
`(“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is
`
`dispositive; it is the single best guide to the meaning of a disputed term.’” (quoting Vitronics
`
`Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996))). The specification must be
`
`considered because it is part of the “fully integrated written instrument” that defines the scope of
`
`the claims. Markman v. Westview Instruments, Inc., 52 F.3d 967, 978 (Fed. Cir. 1995), aff’d,
`
`517 U.S. 370 (1996). In addition to the language of the claims and the specification, the patent’s
`
`prosecution history may also provide guidance as to how the PTO and inventor understood the
`
`scope of the patent. See Phillips, 415 F.3d at 1317.
`
`If, and only if, the meaning of a term is ambiguous after considering the entirety of the
`
`intrinsic record, the court may consider extrinsic evidence. Id. Extrinsic evidence is less reliable
`
`than the patent itself and its prosecution history for determining how to construe a term.
`
`Although a court may receive extrinsic evidence to educate itself about the invention and the
`
`relevant technology, it cannot construe a claim contrary to the construction mandated by the
`
`intrinsic record. Id. at 1317–18.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`
`The parties disagree on the amount of formal education the person of ordinary skill in the
`
`art would have possessed: Complainants argue that that person would have had a four-year
`
`degree in electrical engineering, computer science, computer engineering, or the equivalent,
`
`while Respondents contend that that person would have needed only two years of college-level
`
`coursework. Beyond this dispute, all parties generally agree that the person of ordinary skill in
`
`the art must have one to two years of post-education relevant work experience. See Fitbit’s
`
`Respondents’ Initial Markman Brief
`
`
`2
`
`2 of 20
`
`

`
`Supplemental Interrogatory Response to Complainants’ Interrogatory No. 52 (Oct. 19, 2015);
`
`Complainants’ Supplemental Interrogatory Response to Fitbit’s Interrogatory No. 9 (Nov. 6,
`
`2015).
`
`Complainant’s proposed definition overstates the level of education possessed by the
`
`person of ordinary skill. Although Respondents disagree with Complainants’ proposed
`
`definition of a person of ordinary skill in the art, they do not believe that such dispute alters the
`
`construction of any disputed term.
`
`IV.
`
`PATENTS-IN-SUIT AND DISUTED CLAIM TERMS
`
`A.
`
`Overview of the ’811 Patent
`
`The ’811 patent is directed to a specific method of manufacturing a data capture device—
`
`such as a fitness watch—with a “protective overmolding using protective external coatings.” Ex.
`
`1 (’811 Patent), Abstract. According to the ’811 patent, data capture devices are gaining
`
`enhanced capabilities through the use of electronic components, such as sensors. But the
`
`inclusion of such sensors creates a manufacturing challenge because data capture devices often
`
`are manufactured using a molding process that subjects the sensors to high temperatures as well
`
`as high pressures. See id., col. 2:16–18; id., col. 9:2–3. To protect the electronic components
`
`from damage during the molding step, the ’811 patent discloses first selectively applying a
`
`protective material over the sensitive components. See id., cols. 3:57–4:4; id., col. 4:15–28.
`
`With the protective material in place to shield the electronic components, one can then use
`
`traditional methods to apply the molding material to the device without damaging those sensitive
`
`components. See id., col. 12:30–32. In addition, the ’811 patent describes a need for the applied
`
`moldings to protect the underlying components during use from environmental elements, such as
`
`Respondents’ Initial Markman Brief
`
`
`3
`
`3 of 20
`
`

`
`shock, temperature, and water. See id., col. 9:38–44. For example, Figure 4 depicts the applied
`
`moldings 412 and 312 formed over sensitive electronic components 104 and 106.
`
`
`
`The ’811 patent teaches that two different moldings can protect the framework and
`
`elements of the device: the inner molding and the outer molding. The inner molding is applied to
`
`the framework and electronic sensors, and “may include plastics, thermoplastics, thermoplastic
`
`elastomers, polymers, elastomers, or any other organic or inorganic material that can [be] molded
`
`in mold cavity.” Id., col. 5:20–23. After any inner moldings are applied, an additional outer
`
`molding, which may be a material like thermoplastic polymer elastomer, also can be applied over
`
`the inner molding. Id., col. 5:59–61.
`
`Complainants have asserted here Claims 1, 5–7, 16, and 17 of the ’811 patent.
`
`
`
`Respondents’ Initial Markman Brief
`
`
`4
`
`4 of 20
`
`

`
`B.
`
`Disputed Terms from the ’811 Patent
`
`1.
`
`“forming a . . . molding”2 (Claims 1 and 16 of the ’811 Patent)
`
`Respondents’ Proposed
`Construction
`
`Complainants’ Proposed
`Construction
`
`Staff’s Proposed
`Construction
`
`using a . . . mold to apply
`material
`
`No construction necessary. If
`the term is construed, “making
`with a mold”
`
`No construction necessary. If
`the term is construed, the
`proper construction is
`“making with a mold.”
`
`The proposed constructions by Staff and Complainants, on the one hand, and
`
`Respondents, on the other hand, reveal uniform agreement on one issue, and disagreement on
`
`another issue. There is uniform agreement that the molding must be created with a mold, i.e., an
`
`enclosure used to shape the material being applied, and not, for example, by cutting a larger
`
`piece of material into the required shape and size. But there is disagreement as to how this
`
`process fits with the remainder of the claim language, which requires “forming a . . . molding”
`
`that “covers all or substantially all” of a covering or another molding, depending on the context.
`
`’811 Patent, at Claim 1. Consistent with the claim language, Respondents’ proposed
`
`construction requires that the material formed by the mold “covers all or substantially all” of the
`
`underlying component or device. The Staff and Complainants’ proposed construction, on the
`
`other hand, requires that the mold (i.e., enclosing shell) itself, and not the material applied within
`
`it, be what “covers all or substantially all” of the underlying component or device. This latter
`
`interpretation is not faithful to the claim language, and should be rejected at least for that reason.
`
`For example, a Jell-O mold is the enclosing shell, whereas the Jell-O itself is the molding.
`
`Because the molding (Jell-O) is removed from the mold once the Jell-O hardens and sets, it is
`
`
` 2
`Respondents contend that the construction of this term also applies to “forming one or more inner
`moldings” in claim 16. Id., col. 14:29.
`
`Respondents’ Initial Markman Brief
`
`
`5
`
`5 of 20
`
`

`
`crucial that the molding itself “covers all or substantially all” of the underlying components, not
`
`the mold, which is going to be removed once the molding sets.
`
`As a preliminary matter, this phrase should be construed because it relates to
`
`manufacturing techniques regularly utilized by persons of skill in the art, but less well known to
`
`those who are not skilled in the art. See Phillips, 415 F.3d at 1314 (“Because the meaning of a
`
`claim term as understood by persons of skill in the art is often not immediately apparent, and
`
`because patentees frequently use terms idiosyncratically, the court looks to those sources
`
`available to the public that show what a person of skill in the art would have understood the
`
`disputed claim language to mean.”) (internal quotation omitted).
`
`In particular, the “alternate” constructions proffered by the Staff and Complainants, as
`
`well as the construction proffered by Respondents, reveals at least one aspect of the phrase that
`
`may not be apparent to those not skilled in the art. The claims generally require “forming” a
`
`molding such as the first inner molding, but do not explicitly state how to form that molding. All
`
`three proposed constructions confirm and clarify that a person of ordinary skill reading the ’811
`
`patent specification and claims would understand that the process requires using a mold—i.e., an
`
`enclosure to shape the molding material—to create the molding.3 Staff and Complainants
`
`suggest that the molding must be made “with a mold,” while Respondents suggest that the
`
`process must be accomplished “using a . . . mold.” Given this point of agreement by Staff and
`
`the parties, the Commission should at a minimum construe the term to give it this proper
`
`meaning to a person of ordinary skill. See Phillips, 415 F.3d at 1314.
`
`
` 3
`This understanding of the term consistent with the common usage of “molding” in recent and intermediate
`history. See, e.g., Ex. 2, OED Online, Oxford University Press, September 2015, entry for molding (“A
`moulded object.”); Ex. 3, Merriam-Webster’s Collegiate Dictionary, Eleventh Edition, Merriam-Webster, Inc.,
`2005, entry for molding (“an object produced by molding”).
`
`Respondents’ Initial Markman Brief
`
`
`6
`
`6 of 20
`
`

`
`The Commission also should construe the phrase because the “alternate” constructions
`
`proffered by Complainants and Staff reveal a fundamental disagreement as to the alleged “plain
`
`meaning” of the construed phrase in the context of the overall claim language. See O2 Micro
`
`Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008) (“When the
`
`parties raise an actual dispute regarding the proper scope of these claims, the court, not the jury,
`
`must resolve that dispute.”). As noted above, the relevant claim language reads as follows, with
`
`the construed portion in brackets: “selectively [forming a first inner molding] that covers all or
`
`substantially all of the at least one covering.” ’811 Patent, at Claim 1. In other words, the
`
`process of forming the molding must cover the at least one covering.
`
`Respondents’ proposed construction is consistent with the claim language. Applying
`
`Respondents’ construction to the first relevant limitation in Claim 1 would require “selectively
`
`[using a [first inner] mold to apply material] that covers all or substantially all the at least one
`
`covering.” Id., at Claim 1. The resulting phrase requires that the material formed by the
`
`process, or molding, “covers . . . the at least one covering.” Id.
`
`Complainants’ and Staff’s proposed construction, on the other hand, would read out the
`
`limitation that the molding be formed such that it covers the underlying device, and replace it
`
`with an entirely new limitation that requires the mold to cover the underlying device. See Bicon,
`
`Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (“[C]laims are interpreted with an eye
`
`toward giving effect to all terms in the claim.”); see also Becton, Dickinson & Co. v. Tyco
`
`Healthcare Gp., LP, 616 F.3d 1249, 1257 (Fed. Cir. 2010) (refusing to adopt a claim
`
`construction which would render a claim limitation meaningless). By way of real world
`
`example, this would be like replacing a limitation that the Jell-O cover an object with the
`
`limitation that the Jell-O mold—which will be removed once the Jell-O sets—cover the object
`
`Respondents’ Initial Markman Brief
`
`
`7
`
`7 of 20
`
`

`
`instead. Indeed, Complainants’ and Staff’s proposed construction eliminates altogether the
`
`object of the process that is in the original claim language: the “molding” itself. Under
`
`Complainants’ and Staff’s proposed construction, the limitation would require “selectively
`
`[making with a mold] that covers all or substantially all of the at least one covering.” ’811
`
`Patent, at Claim 1.
`
`Not only is the Complainants’ and Staff’s proposed construction inconsistent with the
`
`claim language, it also is inconsistent with the specification, which repeatedly states that the
`
`purpose of the molding is to protect the underlying components of the device from various
`
`environmental conditions, such as water and shock. See id., col. 9:38–44. In furtherance of this
`
`goal, the specification discloses (and the claims require) that the molding should cover “all or
`
`substantially all” of the underlying components. Complainants’ and Staff’s proposed
`
`construction, which only requires the mold to be the same size as the underlying components,
`
`may fail to achieve this goal because the mold is by necessity larger than the resulting object
`
`formed within the mold. In other words, if the mold is identical to (or smaller than) the size of
`
`the underlying device or component, then the molding material that remains once the mold is
`
`removed will inherently be smaller than the underlying device or component, thereby exposing a
`
`vital gap in protection. Not surprisingly, then, in a specification spanning thirteen columns, the
`
`patentees never once state that the mold itself (as opposed to the molding) should cover all or
`
`substantially all of the underlying device or component. Accordingly, Complainants’ and Staff’s
`
`proposed construction should be rejected not only because it is contrary to the claim language
`
`and specification, but also because it is contrary to (and would in fact defeat) the very purpose of
`
`the claimed invention. See Apple Computer, Inc. v. Articulate Sys., Inc., 234 F.3d 14, 25 (Fed.
`
`Cir. 2000) (“[T]he claim must be interpreted in light of the teachings of the written description
`
`Respondents’ Initial Markman Brief
`
`
`8
`
`8 of 20
`
`

`
`and the purpose of the invention described therein.”); see, e.g., Curtiss-Wright Flow Control
`
`Corp. v. Velan, Inc., 438 F.3d 1374, 1381 (Fed Cir. 2006) (“Any construction to the contrary is
`
`not consistent with the overall context of this invention and this field of art as described in the
`
`specification.”); Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1251 (Fed. Cir.
`
`1998) (“[The claim] does not exist in rarefied air, but rather is surrounded by a patent disclosure
`
`of singular purpose.”).
`
`When read in light the rest of the claim language and the specification, a person of
`
`ordinary skill would understand that “forming a . . . molding” means “using a . . . mold to apply
`
`material.”
`
`C.
`
`Overview of the ’522 Patent
`
`The ’522 patent is directed at a method for preserving the battery life of an electronic
`
`device while it is “transitioning from manufacture to operation by a user.” Ex. 4 (’522 Patent),
`
`col. 2:11–12. For example, to save power during shipment of a device, the ’522 patent discloses
`
`placing the device into a special power mode, in which negligible power is consumed. Id., cols.
`
`21:63–22:39. The device’s power manager will then switch from the shipping power mode into
`
`regular power mode when it detects a specific signal from the device, such as the user’s first
`
`activation or use of the device. Id. In sum, the purported invention allows the device to
`
`conserve energy during the shipping process, to increase the likelihood that the device will be
`
`quickly usable (i.e., little or no charge necessary) or usable for a longer period of time (i.e.,
`
`delivered with a higher battery level), when the end customer first interacts with the device.
`
`Complainants have asserted Claim 2 of the ’522 patent against Respondents.
`
`
`
`Respondents’ Initial Markman Brief
`
`
`9
`
`9 of 20
`
`

`
`D.
`
`Disputed Terms from the ’522 Patent
`
`1.
`
`“band” (Claim 2 of the ’522 Patent)
`
`Respondents’ Proposed
`Construction
`
`Complainants’ Proposed
`Construction
`
`Staff’s Proposed
`Construction
`
`plain meaning; no
`construction needed
`
`data-capable device that may
`be worn as a strap or band
`around an arm, leg, ankle, or
`other bodily appendage or
`feature
`
`No construction necessary.
`Plain and ordinary meaning.
`If construed, the proper
`construction is “a substantially
`flat encircling strip.”
`
`Respondents’ position is that the term “band” is not a technical term of art, and thus
`
`should be given its plain and ordinary meaning. Complainants, on the other hand, propose to
`
`replace “band” with a twenty-three word construction that is not tied to the plain meaning of the
`
`term and was not used by the patentees acting as their own lexicographers. This is both
`
`unnecessary and improper. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed.
`
`Cir. 1997) (explaining claim construction is appropriate to “clarify and when necessary to
`
`explain what the patentee covered by the claims,” but is not an “obligatory exercise in
`
`redundancy”); Brown v. 3M, 265 F.3d 1349, 1352 (Fed. Cir. 2001) (“We agree with this
`
`construction of the claim, for it is the plain reading of the claim text. These are not technical
`
`terms of art, and do not require elaborate interpretation.”). It appears Complainants are
`
`improperly trying to exclude invalidating prior art by seeking this tortured construction.
`
`“[C]laim terms [are given] their plain and ordinary meaning unless the patentee acted as
`
`its own lexicographer or there was a disavowal of claim scope.” Braintree Labs., Inc. v. Novel
`
`Labs, Inc., 749 F.3d 1349, 1365 (Fed. Cir. 2014); Rexnord Corp. v. Laitram Corp., 274 F.3d
`
`1336, 1342 (Fed. Cir. 2001) (“[U]nless compelled to do otherwise, a court will give a claim term
`
`the full range of its ordinary meaning as understood by an artisan of ordinary skill.”); EPOS
`
`Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1341 (Fed. Cir. 2014) (explaining that claim
`Respondents’ Initial Markman Brief
`
`
`10
`
`10 of 20
`
`

`
`terms are interpreted “not only in the context of the particular claim in which the disputed term
`
`appears, but in the context of the entire patent, including the specification” (internal quotation
`
`omitted)); In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (“Although an inventor is indeed
`
`free to define the specific terms used to describe his or her invention, this must be done with
`
`reasonable clarity, deliberateness, and precision.”).
`
`Here, the word “band” has a common meaning that has been used in a variety of contexts
`
`over a long period of time, and there is no indication that the word has a different meaning as a
`
`technical term of art. As such, people intuitively understand what is meant by terms such as
`
`rubber band or headband. See Brown, 265 F.3d at 1352 (“We agree with this construction of the
`
`claim, for it is the plain reading of the claim text. These are not technical terms of art, and do not
`
`require elaborate interpretation.”); U.S. Surgical, 103 F.3d at 1568 (explaining claim
`
`construction is appropriate to “clarify and when necessary to explain what the patentee covered
`
`by the claims,” but is not an “obligatory exercise in redundancy”). Indeed, the term is so
`
`commonly understood that in recent years, the phrase “fitness band”—to which the ’522 patent
`
`allegedly relates—has entered the public lexicon, without any effort—or need—to define that
`
`phrase.
`
`Notwithstanding the foregoing, Complainants now assert that the “band” recited in the
`
`claims must be a “data-capable device that may be worn as a strap or band around an arm, leg,
`
`ankle, or other bodily appendage or feature.” Complainant created this construction by picking
`
`out one specific sentence in the overall specification without giving any context or credit to the
`
`rest of the specification: “‘strapband’ and ‘band’ may be used to refer to the same or
`
`substantially similar data-capable device that may be worn as a strap or band around an arm, leg,
`
`ankle, or other bodily appendage or feature.” ’522 Patent, col. 4:20–23.
`
`Respondents’ Initial Markman Brief
`
`
`11
`
`11 of 20
`
`

`
`Complainants’ reliance on this passage of the specification is misguided for several
`
`reasons, not the least of which is that the passage does not purport to describe the band itself, but
`
`rather, how the band may be worn. The pitfalls of relying on such a passage to define “band” are
`
`as serious as they are obvious. To illustrate the point, consider the description of a camera that
`
`“may be worn around one’s neck.” This description does not suggest that all cameras must have
`
`the capability of being worn around one’s neck. Nor does it require that the camera itself have
`
`an integral physical characteristic that facilitates such carry; instead, it leaves open the possibility
`
`that the camera may be attached to a strap that, in turn, permits it to be worn around the neck.
`
`Complainants’ use of this passage to support its proposed construction is contrary not
`
`only to logic, but to law as well. “Although an inventor is indeed free to define the specific
`
`terms used to describe his or her invention, this must be done with reasonable clarity,
`
`deliberateness, and precision.” Paulsen, 30 F. 3d at 1480 (emphasis added). None of those
`
`hallmarks are present here. To the contrary, the patentees explicitly stated that the embodiments
`
`described in the specification are not intended to limit the scope of the claims: “The detailed
`
`description is provided in connection with such examples, but is not limited to any particular
`
`example. The scope is limited only by the claims and numerous alternatives, modifications, and
`
`equivalents are encompassed.” ’522 Patent, col. 3:67–4:4 (emphasis added).
`
`Consistent with the effort to leave the terms as broad as possible, the sentence of the
`
`specification following that relied upon by Complainants makes clear that the bands also “may
`
`be attached directly or indirectly to other items, organic, or inorganic, animate, or static.” Id.,
`
`col. 4:20–23. Furthermore, the patent discloses other embodiments where “bands [] can be
`
`attached to the body or affixed to clothing, or otherwise disposed at a relatively predetermined
`
`distance from a user’s person.” Id., col. 4:28–29. And the specification also clarifies that “band
`
`Respondents’ Initial Markman Brief
`
`
`12
`
`12 of 20
`
`

`
`900 and the elements described above in connection with FIGS. 1–9[] may be varied in type,
`
`configuration, function, structure, or other aspects, without limitation to any of the examples
`
`shown and described.” Id., col. 19:50–53; see also id., col. 19:54–58 (“[T]he number, type,
`
`function, configuration, ornamental appearance, or other aspects shown may be varied without
`
`limitation.”); id., col. 3:67–4:4.
`
`Thus, far from acting as lexicographers to narrowly define “band,” the patentees provided
`
`numerous illustrations in an effort to demonstrate that the bands can be utilized in a variety of
`
`ways. See Trading Techs. Int’l, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1352 (Fed. Cir. 2010)
`
`(explaining that “courts should not limit the broader claim language to that embodiment unless
`
`the patentee has demonstrated a clear intention to limit the claim scope using words or
`
`expressions of manifest execution or restriction.” (internal quotations omitted)). This is
`
`unsurprising, given that the ‘522 patent never discloses that the precise shape of the band is
`
`important to the purported invention regarding a power manager for a data-capture device.
`
`Although it suffers from fewer deficiencies than Complainant’s proposal, Staff’s alternate
`
`construction of “a substantially flat encircling strip” also is improper. While a band may be a
`
`“substantially flat encircling strip,” not all bands share those characteristics. Indeed, the bands
`
`illustrated in the ’522 patent are neither substantially flat, nor are they encircling in the sense of
`
`forming a complete circle. ’522 Patent, Figs. 7C and 7A. As the Federal Circuit has warned,
`
`claims should not be interpreted “in a way that excludes disclosed examples in the specification.”
`
`See Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1305 (Fed. Cir. 2007).
`
`Accordingly, Respondents’ and Staff’s proposal that the plain meaning be used is correct.
`
`Respondents’ Initial Markman Brief
`
`
`13
`
`13 of 20
`
`

`
`E.
`
`Overview of the ’546 Patent
`
`The ’546 patent is generally directed