Case 3:15-cv-00823-VLB Document 36 Filed 03/25/16 Page 1 of 48
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`UNITED STATES DISTRICT COURT
`DISTRICT OF CONNECTICUT
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`March 25, 2016
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`Civil Action No.: 3:15-cv-00823 (VLB)
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`:::::::::::
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`RUBICON COMMUNICATIONS, LP DBA
`SMALLWORKS AND SMALLWORKS, LLC,
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`Defendants/Counterclaim Plaintiff.
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`PLAINTIFF LEGO SYSTEM A/S’S
`OPENING CLAIM CONSTRUCTION BRIEF
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`
`
`Elizabeth A. Alquist (ct15643)
`Catherine Dugan O’Connor (ct17316)
`DAY PITNEY LLP
`242 Trumbull Street
`Hartford, CT 06103-1212
`Tel: (860) 275-0100
`Fax: (860) 275-0343
`Email: eaalquist@daypitney.com
`cdoconnor@daypitney.com
`
`Attorneys for Plaintiff
`LEGO SYSTEM A/S
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`LEGO SYSTEM A/S,
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`Plaintiff/Counterclaim Defendant,
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`v.
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`LEGO A/S
`Ex. 2008
`Rubicon Communications, LP v. LEGO A/S
`IPR2016-01187
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`i
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`

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`Case 3:15-cv-00823-VLB Document 36 Filed 03/25/16 Page 2 of 48
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`TABLE OF CONTENTS
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`Page
`
`INTRODUCTION .................................................................................................. 1
`A.
`The Asserted Patents .............................................................................. 3
`i.
`The ‘191 Patent Family: The ‘191, ‘892, ‘085 and ‘066
`Patents ........................................................................................... 3
`CLAIM CONSTRUCTION PRINCIPLES ............................................................ 11
`CLAIM CONSTRUCTIONS ................................................................................ 15
`A.
`Stipulated Claim Constructions............................................................ 15
`i.
`“building elements” .................................................................... 15
`ii.
`“tactile manipulation” ................................................................. 15
`iii.
`“housing”..................................................................................... 15
`iv.
`“casing” ....................................................................................... 15
`
`I.
`
`II.
`III.
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`
`
`
`
`B.
`
`C.
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`Plaintiff’s Proposed Disputed Claim Terms Warranting
`Construction ......................................................................................... 16
`i.
`“manual controller” .................................................................... 16
`ii.
`“exoskeleton” .............................................................................. 21
`iii.
`“interior region” .......................................................................... 23
`iv.
`“control actuators” ..................................................................... 24
`v.
`“recreation equipment item” ...................................................... 26
`
`Defendant’s Proposed Disputed Claim Terms Warranting
`Construction ......................................................................................... 27
`i.
`“configurable manual controller” .............................................. 28
`ii.
`“controller” .................................................................................. 28
`iii.
`“an exoskeleton having an interior region and a
`patterned surface portion” ......................................................... 29
`“the internal electrical components operatively
`connected to control actuators to produce signals for
`manipulating images or symbols on the display” .................... 30
`“an interior region confining electrical components for
`producing signals for manipulating images or symbols
`on the display” ............................................................................ 32
`“display” ...................................................................................... 33
`
`v.
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`vi.
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`iv.
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`ii
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`

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`Case 3:15-cv-00823-VLB Document 36 Filed 03/25/16 Page 3 of 48
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`vii.
`viii.
`ix.
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`x.
`xi.
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`xii.
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`xiii.
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`“set of building elements”.......................................................... 35
`“a subset of building elements” ................................................ 35
`“the set of building elements including a subset of
`building elements having top surfaces that do not have
`mating features so as to enable a user to assemble the
`building elements in the subset to produce a finished
`surface of the main casing” ....................................................... 37
`“finished decorative pattern” ..................................................... 38
`“including multiple components of which adjacent ones
`mate with each other to form a replica of at least a
`portion of a recreation equipment item” ................................... 39
`“providing in the set of building elements a subset of
`building elements that are matable to one another and
`configured for a user to build on the patterned portion of
`the main casing a customized replica of at least a
`portion of a play item” ................................................................ 40
`“providing” .................................................................................. 42
`
`CONCLUSION ................................................................................................... 44
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`
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`IV.
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`iii
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`Case 3:15-cv-00823-VLB Document 36 Filed 03/25/16 Page 4 of 48
`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`GE Lighting Solutions, LLC v/ AgiLight, Inc.,
` 750 F. 3d 1304 (Fed. Cir. 2014) .............................................................................. 25
`
`Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,
`
`766 F.3d 1364 (Fed. Cir. 2004) ......................................................................... 12, 31
`
`In re Abbott Diabetes Care, Inc.,
`
`696 F.3d 1142 (Fed. Cir. 2012) ............................................................................... 17
`
`InterDigital Communs., LLC v. ITC,
`
`690 F.3d 1318 (Fed. Cir. 2012) ......................................................................... 28, 29
`
`Johnson Worldwide Assoc. v. Zebco Corp.,
`175 F.3d 985 (Fed. Cir. 1999) ........................................................................... 12, 30
`
`Liebel-Flarsheim Co. v. Medrad, Inc.,
`358 F.3d 898 (Fed. Cir. 2004) ..................................................................... 13, 20, 25
`
`Markman v. Westview Instruments, Inc.,
`52 F.3d 967 (Fed. Cir. 1995) (en banc), aff d, 517 U.S. 370 (1996) ................ 11, 12
`
`MBO Labs., Inc. v. Becton, Dickinson & Co.,
`
`474 F.3d 1323 (Fed. Cir. 2007) ............................................................ 23, 27, 38, 39
`
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`134 S. Ct. 2120 (2014) ............................................................................................ 41
`
`On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH,
`386 F.3d 1133 (Fed. Cir. 2004) ............................................................................... 14
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................ 11–13, 18, 24
`
`Playtex Prods., Inc. v. Procter & Gamble Co.,
`400 F.3d 901 (Fed. Cir. 2005) ................................................................................. 13
`
`Rexnord Corp. v. Laitram Corp.,
`274 F.3d 1336 (Fed. Cir. 2001) ............................................................................... 13
`
`RF Del. v. Pac Keystone Tecs. Inc.,
`326 F.3d 1255 (Fed. Cir. 2003) ......................................................................... 31, 35
`
`iv
`
`

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`Case 3:15-cv-00823-VLB Document 36 Filed 03/25/16 Page 5 of 48
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`SkinMedica, Inc. v. Histogen Inc..,
`727 F.3d 1187 (Fed. Cir. 2013) ............................................................................... 17
`
`Southwall Tech., Inc. v. Cardinal IG Co.,
`54 F.3d 1570 (Fed. Cir. 1995) ................................................................................. 14
`
`Starhome GmbH v. AT&T Mobility LLC,
`743 F.3d 849 (Fed. Cir. 2014) ................................................................................. 23
`
`Superguide Corp. v. DirecTV Enters. Inc.,
`358 F.3d 870 (Fed. Cir. 2004) ........................................................................... 12, 40
`
`Vitronics Corp. v. Conceptronic Inc.,
`90 F.3d 1576 (Fed. Cir. 1996) ..................................................................... 11–13, 18
`
`Watts v. XL Sys., Inc.,
`232 F.3d 877 (Fed. Cir. 2000) ................................................................................. 12
`
`
`
`
`
`
`
`v
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`

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`Case 3:15-cv-00823-VLB Document 36 Filed 03/25/16 Page 6 of 48
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`
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`Plaintiff, LEGO System A/S, (“LEGO” or “Plaintiff”) accuses Defendants
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`Rubicon Communications, LP and SmallWorks, LLC (collectively, “SmallWorks”
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`or “Defendants”) of infringing four patents by making, using, offering to sell and
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`selling cases for smart phones and similar devices, such as those depicted here:
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`http://www.smallworks.com/.
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`The patents-in-suit are U.S. Patent Nos. 7,731,191 (the “‘191 Patent”),
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`8,091,892 (the “‘892 Patent”), 8,628,085 (the “‘085 Patent”) and 8,894,066 (the
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`“‘066 Patent”) (collectively, the “Asserted Patents”).1
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`Pursuant to the Court’s Scheduling Order, LEGO System A/S (“LEGO”)
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`respectfully submits this Opening Claim Construction Brief in support of its
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`proposed constructions for certain claim terms in the Asserted Patents and to
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`address the constructions proposed by Defendants.2
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`1 The Asserted Patents and other evidentiary materials cited herein are included
`in the accompanying Appendix in Support of LEGO System A/S’s Opening Claim
`Construction Brief.
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` Despite having already exchanged proposed definitions and submitted them to
`the Court over a month ago, at 8:00 pm last evening, Defendants took the
`extraordinary step of notifying the undersigned that they now agree to two
`
` 2
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`1
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`

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`Case 3:15-cv-00823-VLB Document 36 Filed 03/25/16 Page 7 of 48
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`I.
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`
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`INTRODUCTION
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`Founded in 1932 by a toymaker in Denmark, LEGO has grown from a small
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`carpenter’s workshop to a global company that is one of the world’s largest toy
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`manufacturers. LEGO is best known for the traditional LEGO® brick, which was
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`launched in its present form in 1958. The LEGO® brick features an interlocking fit
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`achieved through knobs that mate with corresponding tubes or recesses,
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`allowing bricks to clutch to other bricks or to various building elements.
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`
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`The inventions claimed in the Asserted Patents are addressed to the
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`creative pursuits of fans of LEGO® and similar play bricks, extending the endless
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`play and creative options offered by play bricks to the realm of handheld
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`electronic devices. More specifically, the Asserted Patents involve a manual
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`controller, or handheld device, which is used to manipulate images or symbols
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`on a visual display (or screen) of a computing device, which can be separate from
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`or part of the manual controller. Examples of manual controllers include, among
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`other things, joysticks, game pads, remote devices for television, cellular
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`telephones, portable video game systems and portable multi-media devices.
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`The inventions of the Asserted Patents feature a manual controller or
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`handheld device that is “configurable,” i.e., it has an outer surface or casing with
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`additional constructions proposed by LEGO (for the terms “housing” and
`“casing”) and are rescinding one of Defendants’ proposed claim terms (“play
`activity”). This is not the first time Defendants have changed their position on the
`eve of a claim construction deadline; on January 20th, Defendants rescinded their
`request to construe 11 of their proposed terms, just one day before the parties
`were to exchange proposed claim constructions and support under the
`Scheduling Order. Defendants have provided no reason for their belated
`changes, which obviously place unnecessary burdens on Plaintiff who had to
`both prepare arguments for those terms and revise its brief to reflect the last-
`minute changes.
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`2
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`

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`Case 3:15-cv-00823-VLB Document 36 Filed 03/25/16 Page 8 of 48
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`a patterned surface portion that is configured to support a set of building
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`elements. This enables a user to customize the manual controller to an arbitrary
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`shape and ornamental appearance, according to the user’s own game-inspired,
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`ergonomic, or style preferences. In short, it allows the user to play with LEGO®
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`bricks on the outside of, for example, his or her game pad or cellphone.
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`The inventions of the Asserted Patents were created by Aaron B.
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`Sternberg, who is named inventor on a number of patents relating to manual
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`controllers and other technologies. The Asserted Patents were assigned to
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`LEGO in November 2014. LEGO commenced this action by Complaint dated May
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`29, 2015, claiming infringement of the Asserted Patents by products sold by
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`Defendants.
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`A.
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`The Asserted Patents
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` The Asserted Patents are part of a family of patents directed to manual
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`controllers constructed with user-arranged matable building elements to exhibit a
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`desired shape or ornamental appearance, and related methods of configuring
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`manual controllers with matable building elements to achieve a desired shape or
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`ornamental appearance.
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`
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`i. The ‘191 Patent Family: The ‘191, ‘892, ‘085 and ‘066 Patents
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`General Overview of `191 Patent Family and the Asserted Claims
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`The ‘191 family is a chain of Continuation Patents; that is to say the latest-
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`filed ‘066 Patent is a continuation of the ‘085 Patent, the ‘085 Patent is a
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`continuation of the ‘892 Patent, and the ‘892 Patent, in turn, is a continuation of
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`the original ‘191 Patent. All four patents share essentially the same specification.
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`3
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`Case 3:15-cv-00823-VLB Document 36 Filed 03/25/16 Page 9 of 48
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`The ‘191 Patent, entitled “Configurable Manual Controller,” was filed as an
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`International PCT Patent Application on February 9, 2007, and claims priority from
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`provisional application No. 60/772,343 filed February 10, 2006. The patent
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`includes one independent claim and seven dependent claims, all directed to a
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`configurable manual controller for manipulating images or symbols on a display
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`and adapted for construction with user-arranged matable building elements to
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`exhibit a customized shape and ornamental appearance.
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` LEGO asserts
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`infringement of claims 1–6 and 8 of the ‘191 Patent.
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`The
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`‘892 Patent, entitled “Manual Controller Configurable By User
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`Arrangement of Matable Building Elements,” was filed June 7, 2010 as a
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`continuation of the application that became the ‘191 Patent. The ‘892 Patent
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`includes one independent claim and five dependent claims, all directed to a
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`configurable casing for a manual controller for manipulating images or symbols
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`on a display. The claims of the ‘892 Patent cover subject matter closely related to
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`the ‘191 Patent but include a distinction between a casing for receiving a manual
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`controller, and the manual controller itself. LEGO asserts infringement of claims
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`1–6 of the ‘892 Patent.
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`The
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`‘085 Patent, entitled “User-Configurable Casing For Manual
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`Controller,” was filed January 10, 2012 as a continuation of the application that
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`became the ‘892 Patent. The ‘085 Patent includes one independent claim and
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`three dependent claims, all directed to a configurable casing for a manual
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`controller for manipulating images or symbols on a display. LEGO asserts
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`infringement of claims 1–4 of the ‘085 Patent.
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`4
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`Case 3:15-cv-00823-VLB Document 36 Filed 03/25/16 Page 10 of 48
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`The ‘066 Patent, entitled “Method Of Facilitating User Preference In
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`Creative Design Of A Controller,” was filed January 14, 2014 as a continuation of
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`the application that became the ‘085 Patent. The ‘066 Patent includes one
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`independent claim and seven dependent claims, all directed to a method of
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`facilitating user preference in creative design of a controller for manipulating
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`images or symbols on a display. LEGO asserts infringement of claims 1–8 of the
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`‘066 Patent.
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`Description of the Subject Matter of ‘191 Patent Family
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`As noted above, the ‘191 Patent Family is directed to configuring a manual
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`controller for manipulating images on a display according to a user’s game-
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`inspired, ergonomic, or style preferences. By using matable attachments, such
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`as well-known LEGO® building elements, various handles, grips and other items
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`can be appended to a manual controller to create a variety of customized shapes
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`and appearances. See Specification3 at 4:3–12. The term “manual controller” has
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`a broad scope encompassing a wide variety of hand-held devices:
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`Manual controllers for manipulating images or symbols on a visual
`display of a computer device include, for example, joysticks, game
`pads, steering wheels, guns, mice, remote devices for television,
`stored multi-media display and recording machines, cellular
`telephones, portable video game systems, and portable multi-media
`devices.
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`(Id. at 1:29–34).
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`
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`The Detailed Description section describes how exemplary manual
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`controllers can be configured or reshaped using matable building elements. The
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`3 References to the Specification from this point forward refer to the ‘191 Patent
`Specification, for ease of reference.
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`5
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`Case 3:15-cv-00823-VLB Document 36 Filed 03/25/16 Page 11 of 48
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`illustrated manual controllers are gaming console embodiments; a first gaming
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`console is shown in Figures 1–3, and a second gaming console — a WiiTM
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`controller used in the Nintendo Wii gaming system — is shown in Figures 4
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`through 9C. The illustrated examples depicting gaming consoles are preferred
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`embodiments, and there are no statements in the Specification that limit the type
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`of manual controllers that can be configured with matable elements or otherwise
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`contradict the scope of manual controller presented in the Background.
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`
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`Figure 1 of the ‘191 Patent, shown below, depicts an “exploded” view of a
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`first example manual controller (10), which is a gaming console for controlling
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`images and symbols on a display to which the manual controller is connected by
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`a cable or wirelessly. The manual controller (10) comprises two distinct parts, a
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`main housing (14), which includes the electronic components of the controller on
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`the inside and actuators (buttons, e.g., (46)) for manual control on the outside,
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`and a main casing (16) that fits around the sides of the main housing (14). Id. at
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`2:62–65. When the main housing (14) is received into the main casing (16), the
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`entire external surface of the combination of the main housing (14) and main
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`casing (16) is termed the “exoskeleton” (12). Id. at 2:62–63. As can be discerned
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`in the illustration, the casing (16) includes patterned surface portions (80) on its
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`exterior surface which consist of an array of mutually spaced-apart cylindrical
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`mating features or bosses. Id. at 3:25–28.
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`6
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`Case 3:15-cv-00823-VLB Document 36 Filed 03/25/16 Page 12 of 48
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`Due to the projecting patterned surface portions (80) on the casing (16),
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`separable grip components, such as elements (30) (shown detached) and (32)
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`(shown attached to the casing), which have corresponding (reverse) mating
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`features to the pattern of cylindrical features (80), can be snugly fitted onto the
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`casing (16). By adding the grips, the manual controller in this example is
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`customized in a way that makes the device as a whole more convenient to hold.
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`Id. at 3:43–63. As shown, the components added to the manual controller, such
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`as the left grip (30), may include smooth surfaces (e.g., (102)) and/or patterned
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`surfaces (e.g., (80)) that allow the addition of other components. Id. at 3:37–42. In
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`alternative embodiments, such as illustrated in Figure 3 (shown below), the main
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`housing (14) itself, rather than or in addition to casing (16), may include patterned
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`portions on its surface (120) for mating with corresponding building elements. Id.
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`at 3:64 to 4:12.
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`7
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`Case 3:15-cv-00823-VLB Document 36 Filed 03/25/16 Page 13 of 48
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`As to methods of configuring the manual controller in various ways with
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`matable building elements by stacking them with respect to one another, the
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`Specification notes that some building elements may have mating features that
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`operationally match the patterned surface on both sides (in other words,
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`protruding elements on one side, and recessed elements on another) and other
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`building elements may have matching mating features on one side only, with a
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`different type of mating feature on the other. Id. at 4:41–60.
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`Figure 4 of the ‘191 Patent, shown on the next page, depicts a perspective
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`view of a second example manual controller (140), based on the Nintendo Wii
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`controller, which includes movement sensors for sensing manual movement of
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`the controller. Id. at 4:61 to 5:1.
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`8
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`Case 3:15-cv-00823-VLB Document 36 Filed 03/25/16 Page 14 of 48
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`In this example, the exterior of the main housing itself constitutes the
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`exoskeleton (140), i.e., there is no additional casing. Similarly embossed
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`patterned surface portions (170) cover parts of the surface of the main housing
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`(142) that are not allocated to other elements such as control and actuator
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`buttons (144, 152, 154). In the example shown, the patterned surface portion
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`(170) covers the front and sides of the controller, and also covers the back (not
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`shown in Figure 4). The patterned surface portions allow a number of building
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`elements to be attached, either to the main housing (142) or to each other, to
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`produce customized designs. For example, Figure 6D (shown below) depicts an
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`exploded view of how golf club-shaped building elements
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`that have
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`corresponding patterned portions may be attached to the Wii controller; Figure
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`6C depicts the controller as assembled with the additional building elements.
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`9
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`Case 3:15-cv-00823-VLB Document 36 Filed 03/25/16 Page 15 of 48
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`The Specification describes and
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`illustrates additional preferred
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`embodiments. See Spec. at 5:55 to 6:36 and Figs. 7A through 9C. In another
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`example using a Wii controller, a baseball bat design may be created in a similar
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`fashion. Figure 8D, on the left side below, is an exploded view illustrating how
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`building elements can be attached to the Wii controller to achieve a baseball bat
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`shape, and Figure 7C depicts the controller as assembled with the additional
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`building elements.
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`10
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`Case 3:15-cv-00823-VLB Document 36 Filed 03/25/16 Page 16 of 48
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`II.
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`CLAIM CONSTRUCTION PRINCIPLES
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`It is axiomatic that “the claims of a patent define the invention,” and the
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`central inquiry of claim construction is to determine “the meaning that the [claim]
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`term would have to a person of ordinary skill in the art in question at the time of
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`the invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en
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`banc). To ascertain the meaning of claims, courts look primarily to the “intrinsic
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`evidence.” Id. at 1314–17; Markman v. Westview Instruments, Inc., 52 F.3d 967,
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`979 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). “Intrinsic evidence”
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`refers to the patent documents: the claims, the written patent specification, its
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`drawings/illustrations, and the patent’s prosecution history. Vitronics Corp. v.
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`Conceptronic Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (holding that intrinsic
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`evidence is “the most significant source of the legally operative meaning of
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`disputed claim language”).
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`In examining the intrinsic evidence, the Court begins with the words of the
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`claims themselves. “It is a ‘bedrock principle’ of patent law that ‘the claims of a
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`11
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`Case 3:15-cv-00823-VLB Document 36 Filed 03/25/16 Page 17 of 48
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`patent define the invention to which the patentee is entitled the right to exclude.’”
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`Phillips, 415 F.3d at 1312 (quoting Innova/Pure Water, Inc. v. Safari Water
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`Filtration Sys., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). The context in which a claim
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`term is used, however, is highly relevant. Id. at 1314. The “words of a claim ‘are
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`generally given their ordinary and customary meaning.’” Id. at 1312 (quoting
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`Vitronics, 90 F.3d at 1582). “[T]he ordinary and customary meaning of a claim
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`term 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
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`patent application.” Id. at 1313. There is a presumption in favor of the ordinary
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`meaning of claim language. Johnson Worldwide Assoc. v. Zebco Corp., 175 F.3d
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`985, 989 (Fed. Cir. 1999).
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`The specification is “always highly relevant to the claim construction
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`analysis [and] . . . is the single best guide to the meaning of a disputed term.”
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`Vitronics, 90 F.3d at 1582. “One purpose for examining the specification is to
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`determine if the patentee has limited the scope of the claims.” Watts v. XL Sys.,
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`Inc., 232 F.3d 877, 882 (Fed. Cir. 2000). The specification may reveal “a special
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`definition given to a claim term by the patentee that differs from the meaning it
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`would otherwise possess. In such cases, the inventor’s lexicography governs.”
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`Phillips, 415 F.3d at 1316. Indeed, the specification’s written description “may act
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`as a sort of dictionary, which explains the invention and may define terms used in
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`claims.” Markman, 52 F.3d at 979. However, limitations not present in the claims
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`should not be added to the claims through the construction process. Superguide
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`Corp. v. DirecTV Enters. Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Thus, although
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`12
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`Case 3:15-cv-00823-VLB Document 36 Filed 03/25/16 Page 18 of 48
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`claims must be read in light of the specification, limitations from the specification
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`may not be imported into the claims. Playtex Prods., Inc. v. Procter & Gamble
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`Co., 400 F.3d 901, 906 (Fed. Cir. 2005). “Even when the specification describes
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`only a single embodiment, the claims of the patent will not be read restrictively
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`unless the patentee has demonstrated a clear intention to limit the claim scope
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`using words or expressions of manifest exclusion or restriction.” Liebel-
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`Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (internal
`
`quotation marks omitted). “[A]n applicant is not required to describe in the
`
`specification every conceivable and possible future embodiment of his
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`invention. . . . In short, it is the claims that measure the invention, as informed by
`
`the specification.” Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1344 (Fed. Cir.
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`2001).
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`In addition to the claim language and patent specification, the Court also
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`consults the prosecution history. Vitronics, 90 F.3d at 1582. The “record before
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`the Patent and Trademark Office is often of critical significance in determining the
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`meaning of the claims.” Id. However, here, the prosecution history of the
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`Asserted Patents is not illuminating, given that the patents were issued without
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`any amendments to the language or scope of the claims.
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`Finally, extrinsic evidence may also be considered. The Court may rely on
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`dictionary definitions, so long as the dictionary definition of a term is not
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`inconsistent with the meaning of the term manifested by the intrinsic evidence.
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`Phillips, 415 F.3d at 1322–23. Although extrinsic evidence, such as dictionaries,
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`may be helpful, such evidence may be less reliable than intrinsic evidence. Id. at
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`13
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`

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`Case 3:15-cv-00823-VLB Document 36 Filed 03/25/16 Page 19 of 48
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`1318. Extrinsic evidence may be useful when considered in the context of the
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`intrinsic evidence, id. at 1319, but it cannot “alter a claim construction dictated by
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`a proper analysis of the
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`intrinsic evidence.”
`
` On-Line Techs.,
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`Inc. v.
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`Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133, 1139 (Fed. Cir. 2004). In
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`particular, extrinsic evidence, such as expert testimony, may not be used to
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`“proffer an interpretation for the purposes of litigation that would alter the
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`indisputable public record consisting of the claims, the specification and the
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`prosecution history.” Southwall, 54 F.3d at 1578.
`
`III.
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`CLAIM CONSTRUCTIONS
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`LEGO first sets forth in Part III(A) the claim terms for which the parties
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`agree on the proposed construction. This is followed in Part III(B) by the claim
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`terms that LEGO proposes should be construed. Lastly, in Part III(C) LEGO
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`addresses the claim terms that Defendants propose should be construed.
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`As noted in its Proposed Terms to be Construed (Dkt. No. 34 Exhibit 1.A),
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`Plaintiff disagrees with Defendants’ proposal to construe lengthy excerpts of
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`certain patent claims as a single claim term. This approach is unlikely to help in
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`ascertaining the meaning and scope of the patent claims but instead is likely to
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`engender confusion. Further, there is no apparent reason for burdening the Court
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`to construe such lengthy phrases. Instead, this appears to be an attempt by
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`Defendants to surreptitiously obtain favorable constructions for other disputed
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`claim terms. For example, in several instances noted in more detail below, the
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`lengthy definition proposed by Defendants has buried within it disputed
`
`constructions or incorporates terms that are not even part of the claim language
`
`14
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`

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`Case 3:15-cv-00823-VLB Document 36 Filed 03/25/16 Page 20 of 48
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`at issue in such construction. A notable example is Defendants’ reciting their
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`proposed definition of “control actuators” within much longer phrases from the
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`patent claims and lengthy proposed definitions (e.g., infra at Part III(iv, v)).
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`For all of the reasons set forth herein, LEGO requests that the Court adopt
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`its proposed terms for construction and its proposed claim constructions, in their
`
`entireties, and reject those propounded by Defendants.
`
`A.
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`Stipulated Claim Constructions
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`The following claim terms warrant construction, and the parties have
`
`agreed on those constructions. Accordingly, LEGO respectfully requests that the
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`Court adopt the following constructions.
`
`i. “building elements ”
`
`Relevant Patent Claims: ‘191 cl. 1–5; ‘892 cl. 1; ‘085 cl. 1; ‘066 cl. 1, 6, 8
`Agreed Construction
`Any components or objects that are configured for mating to a patterned surface
`of the exoskeleton and to one another
`
`
`
`
`ii. “tactile manipulation”
`
`Relevant Patent Claims: ‘892 cl. 6; ‘085 cl. 4; ‘066 cl. 4
`Agreed Construction
` When the user’s fingers touch and manually manipulate the control actuators
`
`
`iii. “housing”
`
`Relevant Patent Claims: ‘892 cl. 1, 4–6; ‘085 cl. 1; ‘066 cl. 1
`Agreed Construction
`The exterior shell of the controller that covers the internal electronics of the
`controller
`
`
`
`
`iv. “casing”
`
`15
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`

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`Case 3:15-cv-00823-VLB Document 36 Filed 03/25/16 Page 21 of 48
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`Relevant Patent Claims: ‘892 cl. 1–6; ‘085 cl. 1–4; ‘066 cl. 1, 5, 6
`Agreed Construction
`A structure that is separable from and covers one or more surfaces of the
`housing of the manual controller
`
`
`
`
`B.
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`Plaintiff’s Proposed Terms to be Construed
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`The following claim terms warrant construction, but the parties disagree on
`
`the correct constructions. Apparently unable to point to any factual reasons why
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`their accused products do not infringe, 4 Defendants ask the Court to adopt
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`artificially
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`limited constructions for multiple claim elements, contrary to
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`controlling claim-construction principles and the clear intrinsic evidence of the
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`Asserted Patents. A common pattern in Defendants’ proposed constructions is
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`to define terms limited solely to descriptions of preferred embodiments, ignoring
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`the patent claims, the Specification, and repeated Federal Circuit warnings
`
`against such an approach. LEGO’s proposed constructions, on the other hand,
`
`remain true to each of these guideposts. For these reasons, and those set forth
`
`below, the Court should adopt LEGO’s proposed constructions and reject the
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`constructions proposed by Defendants.
`
`i.
`
` “manual controller”
`
`Relevant Patent Claims: ‘191 cl. 1–6, 8; ‘892 cl. 1, 4, 6; ‘085 cl. 1, 2, 4
`LEGO’s Proposed Construction
`SmallWorks’ Proposed Construction
`
`An
`
` A
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` handheld device used to manipulate
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`electronic
`
`device
`
`used
`
`to
`
`