Case 3:15-cv-00823-VLB Document 35 Filed 03/25/16 Page 1 of 27
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`UNITED STATES DISTRICT COURT
`DISTRICT OF CONNECTICUT
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`
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`LEGO SYSTEM A/S,
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`
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`Plaintiff/Counterclaim Defendant,
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`v.
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`
`RUBICON COMMUNICATIONS, LP DBA
`SMALLWORKS AND SMALLWORKS,
`LLC,
`
`Civil Action No.: 3:15-cv-00823 (VLB)
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`
`
` JURY TRIAL DEMANDED
`
` MARCH 25, 2016
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`:::::::::::
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`
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`Defendants/Counterclaim Plaintiff.
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`
`SMALLWORKS’ MARKMAN BRIEF
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`Defendant Smallworks, LLC (collectively, “Smallworks”) file its Markman Brief for
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`construction of the asserted claims, and will show the Court the following:
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`
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`I.
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`
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`Introduction.
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`Lego System A/S (“Lego”) has asserted four patents against Smallworks. These patents
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`were asserted against Smallworks in response to a patent infringement lawsuit filed by a company
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`related to Smallworks against one of Lego’s business partners, Belkin International, Inc., in the
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`United States District Court in Austin, Texas. See Civil Action No. 1:14-CV-1089 (the “Texas
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`Action”). Lego acquired these four patents from a third party company after the Texas Action was
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`filed against Lego’s business partner.
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`The four patents at issue in this case concern two basic embodiments. First, United States
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`Patent No. 7,731,191 (“the ‘191 Patent”) concerns controllers for video games in which the user
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`Smallworks’ Markman Brief
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`Page 1
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`Case 3:15-cv-00823-VLB Document 35 Filed 03/25/16 Page 2 of 27
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`can place building elements (e.g., lego blocks) on the controller itself to customize the controller
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`in certain ways. See Exhibit 1. This embodiment is shown below:
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`
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`Smallworks does not make, use, sell, offer for sale, or import any controllers or anything that could
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`even be used as a controller. Smallworks only makes and sells cases for iPhones, iPads, and iPods.
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`The ‘191 Patent has been asserted against Smallworks for a vindictive purpose and without proper
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`analysis by Lego under Rule 11 of the Federal Rules.
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`The remaining three patents concern cases for video game controllers, in which the user
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`can place building elements onto the case to customize the controller. This embodiment is shown
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`below:
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`Smallworks’ Markman Brief
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`Page 2
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`Case 3:15-cv-00823-VLB Document 35 Filed 03/25/16 Page 3 of 27
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`These three patents are:
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` United States Patent No. 8,091,892 (“the ‘892 Patent”) - which covers using
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`building elements to create finished surfaces on the case for the controller (Exhibit
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`2);
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` United States Patent No. 8,628,085 (“the ‘085 Patent”) – which covers using
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`building elements to make replica recreation equipment items (e.g., a golf club or
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`baseball bat) (Exhibit 3); and
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` United States Patent No. 8,894,066 (“the ‘066 Patent) – which covers using
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`building elements to make replica play items (which are the same as recreation
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`equipment items) (Exhibit 4).
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`Each of the four asserted patents listed above share the same specification and figures.1
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`1 For ease, all references to the specification for any of the patents will be made to the specification for the ‘191 Patent,
`which is attached as Exhibit 1. However, given that each of the asserted patents share the same specification, the
`Court can review any of the asserted patents to find the same support referenced in the ‘191 Patent.
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`Smallworks’ Markman Brief
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`Page 3
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`Case 3:15-cv-00823-VLB Document 35 Filed 03/25/16 Page 4 of 27
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`As will be demonstrated below, in order to maintain its infringement positions, Lego has
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`broadened the intended meaning of certain claim terms and phrases and in many instances read
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`out key limitations from the claims. Smallworks, on the other hand, presents proposed claim
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`constructions that rely upon the intrinsic record, which includes the claim language, the
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`specification, and the figures.
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`
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`At the end of the day, the four patents in this case cover (1) a customizable controller for
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`video games (which Smallworks does not make or sell) and (2) customizable cases which must be
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`used in very specific and limited ways for video games. Smallworks requests that the Court give
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`meaning to the limitations in the patent claims so that a jury can accurately determine the
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`infringement issues in this case.
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`
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`II.
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`Legal Standard for Construing Claims.
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`To determine infringement, one must first construe the claims of the patents in suit. See
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`Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff’d,
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`517 U.S. 370, 116 S. Ct. 1384, 134 L. Ed.2d 577 (1996). Claim construction is a question of law.
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`See Markman, supra, 116 S. Ct. at 1397.
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`Claim construction begins with the words of the claims. See Phillips v. AWH Corp., 415
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`F.3d 1303, 1312 (Fed. Cir. 2005) (“It is a ‘bedrock principle’ of patent law that ‘the claims of a
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`patent define the invention to which the patentee is entitled the right to exclude’ ”); Teleflex, Inc.
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`v. Ficosa North Am. Corp., 299 F.3d 1313, 1324 (Fed. Cir. 2002); Interactive Gift Express, Inc. v.
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`Compuserve, Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) (“In construing claims, the analytical
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`focus must begin and remain centered on the language of the claims themselves, for it is that
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`Smallworks’ Markman Brief
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`Case 3:15-cv-00823-VLB Document 35 Filed 03/25/16 Page 5 of 27
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`language that the patentee chose to use to ‘particularly point [ ] out and distinctly claim [ ] the
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`subject matter which the patentee regards as his invention’ ”).
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`The claim language defines the bounds of claim scope. See Bell Communications
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`Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 619-20 (Fed. Cir. 1995). The
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`ordinary meaning of a claim term may be determined by reference to a number of sources,
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`including the claims themselves, and other intrinsic evidence including the written description and
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`the prosecution history. See Teleflex, supra, 299 F.3d at 1325.
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`In order to properly construe a claim, the Court must also examine the intrinsic evidence
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`for a claim, which includes the written description, the drawings, and, if in evidence, the
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`prosecution history. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
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`1996); Interactive Gift, supra, 256 F.3d at 1331. The intrinsic evidence may provide “context and
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`clarification” about the meaning of claim terms. York Prods., Inc. v. Cent. Tractor Farm & Family
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`Ctr., 99 F.3d 1568, 1572 (Fed. Cir. 1996). It is also well established that the inventor may be his
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`own lexicographer, i.e., the inventor may clearly define the terms as the inventor chooses. See
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`Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 990 (Fed. Cir. 1999). The
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`specification should be used to explain ambiguous claim terms. See LaBounty Mfg., Inc. v. U.S.
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`Int’l Trade Comm., 867 F.2d 1572, 1574 (Fed. Cir. 1989). Only when intrinsic evidence is
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`insufficient to enable the court to determine the meaning of the claims, should extrinsic evidence
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`be considered. See Vitronics, supra, 90 F.3d at 1584.
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`
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`III. Claim Terms to be Construed by the Court.
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`The following claim terms need construction by the Court:
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`a. The “Controller” Terms
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`Smallworks’ Markman Brief
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`Page 5
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`Case 3:15-cv-00823-VLB Document 35 Filed 03/25/16 Page 6 of 27
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`In each of the asserted patents, a slightly different claim term for the word “controller” is
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`used. The following chart summarizes the different claim terms and sets forth each parties’
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`proposed claim constructions for each claim term:
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`Lego’s Construction
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` A
`
`to
` handheld device used
`manipulate images or symbols on
`a visual display of a computing
`device, wherein
`the handheld
`device and computing device may
`or may not be integrated (in a
`single device).
`
`Smallworks’ Construction
`
`
`An electronic device used to
`manually manipulate images or
`symbols on a visual display of a
`computing device, in which the
`electronic device is adapted by the
`user attaching building elements
`onto the electronic device itself.
`
`An electronic device used to
`manually manipulate images or
`symbols on a visual display of a
`computing device.
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`Claim Term
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`configurable manual
`controller
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`‘191 Patent
`Claims 1-6, 8
`
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`manual controller
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`‘085 Patent
`Claims 1, 2, 6
`
`‘892 Patent
`Claims 1, 4, 6
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`controller
`
`‘066 Patent
`Claims 1, 2, 4, 7
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`
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`Smallworks proposes two separate definitions because the claims of the ‘191 Patent cover a
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`different embodiment than the claims of the other patents (i.e., the ‘085 Patent, the ‘892 Patent,
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`and the ‘066 Patent). For instance, a comparison of claim 1 of the ‘191 Patent, which is attached
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`as Exhibit 1, and claim 1 of the ‘892 Patent, which is attached as Exhibit 2, are as follows:
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`Smallworks’ Markman Brief
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`Case 3:15-cv-00823-VLB Document 35 Filed 03/25/16 Page 7 of 27
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`Claim 1 of the ‘892 Patent
`
`
`1. A configurable casing for a manual
`controller for manipulating images or
`symbols on a display, the manual controller
`having a housing with an exterior surface and
`an interior region confining electrical
`components operatively connected to control
`actuators to produce signals for manipulating
`images or symbols on the display, and the
`casing adapted for construction with user-
`arranged matable building elements to exhibit
`a customized ornamental appearance,
`comprising:
`
` a
`
` main casing configured to conformably
`fit around a portion of the exterior surface
`of and thereby receive the housing of the
`manual controller, the main casing having
`a patterned surface portion configured to
`support a set of building elements that are
`configurable for mating to the patterned
`surface portion, 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.
`
`
`Claim 1 of the ‘191 Patent
`
`
`1. A configurable manual controller for
`manipulating images or symbols on a display
`and adapted for construction with user-
`arranged matable building elements to exhibit
`a customized shape and ornamental
`appearance, comprising:
`
`an exoskeleton having an interior region and
`a patterned surface portion;
`
`the interior region configured to confine
`internal electrical components, the internal
`electrical components operatively connected
`to control actuators to produce signals for
`manipulating images or symbols on the
`display; and
`
`the patterned surface portion configured to
`support a set of building elements that are
`configurable for mating to the patterned
`surface portion of the exoskeleton and for
`mating to one another, thereby to enable a
`user to establish an arbitrary shape and
`ornamental appearance of the controller.
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`
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`The ‘191 Patent covers an embodiment for a configurable manual controller, which has the
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`following features: (1) an exoskeleton for the controller with an interior region and a patterned
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`surface portion, (2) wherein the interior region houses confines the internal electronic portions,
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`and (3) the patterned surface portion is configured to allow a user to place building elements on
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`the patterned surface portion. This embodiment can be seen in Exhibit 1, Fig. 4 (and additionally
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`in Exhibit 1, Figs. 3, 5-9):
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`Smallworks’ Markman Brief
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`Case 3:15-cv-00823-VLB Document 35 Filed 03/25/16 Page 8 of 27
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`In other words, the ‘191 Patent claims a controller where the patterned surface portion is on the
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`actual controller and there is no separate casing for the controller. This is also why the ‘191 Patent
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`is the only asserted patent that uses the term “configurable manual controller” because, in the ‘191
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`Patent, the manual controller itself can have building elements placed on the controller.
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`
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`The rest of the asserted patents cover controllers with a casing (i.e., the ‘085 Patent, the
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`‘892 Patent, and the ‘066 Patent). For instance, looking back at claim 1 of the ‘892 Patent, that
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`patent claim covers a “configurable casing for a manual controller.” The claim then goes on to
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`discuss the characteristics of the casing, including “the casing adapted for construction with user-
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`arranged matable building elements,” the casing having a “patterned surface portion,” and the
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`“casing configured to comfortably fit around a portion of the exterior surface of and thereby
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`receive the housing of the main controller.” This embodiment can be seen below in Figure 1:
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`Smallworks’ Markman Brief
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`Page 8
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`Case 3:15-cv-00823-VLB Document 35 Filed 03/25/16 Page 9 of 27
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`As can be seen above, Figure 1 shows the main housing for the controller 14 with a separate casing
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`20 which has a patterned surface portion 80 on the casing itself. In this embodiment, the building
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`elements are placed on the casing. While in the previous embodiment, the building elements are
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`placed on the controller itself. See Exhibit 1, Fig. 3 above.
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`The specification for the asserted patents also supports that that there are two
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`fundamentally different embodiments: (1) a controller with a patterned surface portion (Figs. 3-9)
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`and (2) a casing with a patterned surface portion that can be placed around a controller (Figs. 1-2).
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`For instance, the embodiment in which the controller has a casing with a pattertned surface portion
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`is described in the specification as follows (emphasis added):
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`Manual controller 10 includes an exoskeleton 12 formed of a main housing 14 and
`a main casing 16 that conformably fits around the side surface of main housing 14.
`Main housing 14 fits inside of but is readily separable from main casing 16.
`Main housing 14 houses in its interior the electrical components necessary for
`controlling symbols or images on a display associated with a computer device.
`Main casing 16 has a patterned surface portion 20 that in part covers hand grip
`mounting plates 22 (one shown) to which removable hand grips 30 and 32 can be
`attached as described below.
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`Smallworks’ Markman Brief
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`Page 9
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`Case 3:15-cv-00823-VLB Document 35 Filed 03/25/16 Page 10 of 27
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`See Exhibit 1, 2:62-3:4. The specification then states in the same paragraph:
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`Skilled persons will appreciate that exoskeleton 12 can be alternatively made as a
`unitary structure having a surface on which patterned surface portion 20 is formed.
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`See Exhibit 1, 3:4-7. The patents go on to describe in detail embodiments that have this type of
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`structure (i.e., a controller with a patterned surface portion on the controller). See Exhibit 1, 3:64-
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`5:28. An example of these descriptions is below:
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`FIG. 3 shows a patterned surface portion 120 covering most of the top surface of
`main housing 14 (FIG. 1), except for the actuators on control pads 34 and 44.
`Patterned surface portion 120 includes a surface pattern in the form of an array of
`mutually spaced-apart bosses 80 in the same array pattern as that of patterned
`surface portion 20 (FIG. 1). Patterned surface portion 120 is configured to receive
`matable building elements 122.
`
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`See Exhibit 1, 3:64-4:4.
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`
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`Thus, Lego’s position that all of the patents should have a common claim construction for
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`“manual controller” is fundamentally wrong because the claims for the ‘191 Patent (which uses
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`the term “configurable manual controller”) cover different embodiments than the other asserted
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`patents (which use the terms “manual controller” and “controller”). By Lego not including the
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`language “in which the electronic device is adapted by the user attaching building elements onto
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`the electronic device itself,” Lego’s proposed claim construction is not just improper, it is
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`fundamentally wrong. The Court should therefore find for Smallworks with respect to the
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`proposed claim construction of configurable manual controller for the ‘191 Patent because the
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`claims themselves, the specification, and the figures support Smallworks’ proposed claim
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`construction.
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`With respect to the the claim constructions for the terms “manual controller” and
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`“controller” for the ‘085 Patent, the ‘892 Patent and the ‘066 Patent, the parties propose the
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`following claim constructions:
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`Smallworks’ Markman Brief
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`Page 10
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`Case 3:15-cv-00823-VLB Document 35 Filed 03/25/16 Page 11 of 27
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`Lego’s Construction
`
` handheld device used to
`manipulate images or symbols
`on a visual display of a
`computing device, wherein the
`handheld device and computing
`device may or may not be
`integrated (in a single device).
`
` A
`
`Smallworks’ Construction
`
`
`to
`An electronic device used
`manually manipulate
`images or
`symbols on a visual display of a
`computing device.
`
`Claim Term
`
`manual controller
`
`‘085 Patent
`Claims 1, 2, 6
`
`‘892 Patent
`Claims 1, 4, 6
`
`controller
`
`‘066 Patent
`Claims 1, 2, 4, 7
`
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`The major difference between the proposed claim constructions is Lego’s addition: “wherein the
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`handheld device and computing device may or may not be integrated (in a single device).”2 There
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`is absolutely no support for this language in any of the intrinsic evidence. This language never
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`appears in any of the asserted claims, and the specification actually teaches the opposite. The
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`specification for the asserted patents states (emphasis added):
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`FIG. 1 is an exploded view of a first preferred embodiment of a configurable
`manual controller 10 that is used with a computing device (not shown) for
`manipulating images or symbols on a display (not shown). Although it does not
`show a cable, this embodiment can be connected to a computing device through
`a cable or a wireless communication link.
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`See Exhibit 1, 2:56-61. Thus, the specification teaches that the controller is “connected to a
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`computing device through a cable or a wireless communication link.” There is never a teaching
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`that the computing device is part of the controller, but actually teaches that the controller is
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`“connected to a computing device” through a cable or wireless connection. In other words, Lego
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`is arguing that the controller is (or could be) the same as the computing device. If the computing
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`2 This language added by Lego is also incorrect for the term “manual configurable controller” for the ‘191 Patent for
`the reasons stated herein.
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`Smallworks’ Markman Brief
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`Case 3:15-cv-00823-VLB Document 35 Filed 03/25/16 Page 12 of 27
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`device and controller were “integrated” (as Lego wrongly proposes) then the cable or wireless
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`connection would be unnecessary.
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`Given this, the Court should accept Smallworks’ proposed claim constructions.
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`b.
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`“Exoskeleton”
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`Lego proposes that “exoskeleton” be construed by itself. Smallworks proposes that the
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`term “exoskeleton” be construed within the claim phrase that uses the term. This will allow the
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`jury to fully understand the meaning of the exoskeleton instead of defining the term out of context.
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`Thus, Smallworks proposes the following claim construction:
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`Claim Phrase
`
`an exoskeleton
`having an interior
`region and a
`patterned surface
`portion
`
`‘191 Patent
`Claims 1, 6, 8
`
`
`Smallworks’ Construction
`
`
`An exterior housing that is part of and
`for the configurable manual controller
`in which an interior portion of the
`housing
`is
`for
`the
`electronic
`components of the configurable manual
`controller, and the exterior portion is a
`patterned surface portion without a
`casing or case.
`
`Lego’s Construction
`
`“exoskeleton” means “the
`entire external portions of or
`surrounding a manual
`controller”
`
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`This claim phrase only appears in the ‘191 Patent. For the reasons stated above, the ‘191 Patent
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`only concerns the configurable manual controller with a patterned surface portion on the manual
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`controller itself. The ‘191 Patent does not address casings with patterned surface portions.
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`
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`The problem with Lego’s proposed claim construction is that it attempts to read out
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`limitations in the claims from the term “exoskeleton.” Specifically, the claim states that the
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`exoskeleton has “an interior region and a patterned surface portion.” See claim 1 of the ‘191 patent.
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`Lego’s proposed claim construction fails to define the interior region and the patterned surface
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`portion relative to the exoskeleton.
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`Smallworks’ Markman Brief
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`Page 12
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`Case 3:15-cv-00823-VLB Document 35 Filed 03/25/16 Page 13 of 27
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`
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`Smallworks’ proposed claim construction is consistent with the specification and figures.
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`The specification states (with reference to Fig. 4 shown above):
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`Manual controller 140 includes an exoskeleton 142 that is a main housing that
`houses in its interior the electrical components necessary for controlling symbols
`or images on a display associated with a computer device.
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`Exoskeleton 142 has patterned surface portions 170 and 172 that together cover
`most of the exterior of exoskeleton 142. Similar to patterned surface portion 20
`of main casing 16 of manual controller 10 shown in FIG. 1, patterned surface
`portion 170 covering the top surface of manual controller 140 includes a
`surface pattern in the form of an array of mutually spaced-apart cylindrical
`mating features or bosses 80.
`
`See Exhibit 1, 5:1-5 and 5:16-22. Thus, the specification describes in detail that the exoskeleton
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`of the manual controller (as claimed in the ‘191 Patent) “houses the interior electronic
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`components” for the manual controller, and has a patterned surface on the exoskeleton itself. This
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`is exactly what is shown in Fig. 4:
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`The specification also distinguishes the embodiment in Fig. 1, which is an embodiment with a
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`casing that has a patterned surface portion on the casing. All of these limitations, which are present
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`Smallworks’ Markman Brief
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`Page 13
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`Case 3:15-cv-00823-VLB Document 35 Filed 03/25/16 Page 14 of 27
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`in the claims themselves, the specification, and the figures, are absent from Lego’s proposed claim
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`construction. For these reasons, the Court should adopt Smallworks’ proposed claim construction.
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`
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`c. “Interior Region” and “Control Actuators”
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`As with the previous section, Lego would like to define these terms by themselves and in
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`a vacuum. Smallworks proposes defining these terms within the context of the other relevant
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`language within the claims. This will allow the jury to better understand the meaning of the claims
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`because the terms are read within the context of the claims themselves and with the benefit of other
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`words within the claims in order in order to explain the true meaning. The following chart
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`summarizes each party’s proposed claim constructions:
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`Smallworks’ Construction
`
`
`electrical
`internal
`The
`components within
`the
`housing of the controller are
`connected to control actuators
`(i.e., mechanical
`hand
`operated buttons or analog
`control sticks) to allow a user
`to control the gaming images
`and symbols on the display.
`
`Lego’s Construction
`
`
`“interior region” means “the
`region bounded by
`the
`inwardly facing surfaces of
`the housing portion of the
`exoskeleton.”
`
`“control actuators” means
`“any mechanism on
`the
`manual controller that may
`be touched by a user to
`produce
`signals
`for
`manipulating
`images
`or
`symbols on the display.”
`
`Claim Phrase
`
`
`the internal electrical components
`operatively connected to control
`actuators to produce signals for
`manipulating images or symbols
`on the display
`
`‘191 Patent Claim 1
`
`an interior region confining
`electrical components operatively
`connected to control actuators to
`produce signals for manipulating
`image or symbols on the display
`
`‘085 Patent Claim 1
`‘892 Patent Claim 1
`
`an interior region confining
`electrical components for
`producing signals for
`manipulating image or symbols
`on the display
`
`‘066 Patent Claim 1
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`Smallworks’ Markman Brief
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`Page 14
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`Case 3:15-cv-00823-VLB Document 35 Filed 03/25/16 Page 15 of 27
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`There are two major problems with Lego’s proposed claim construction. First, Lego’s
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`proposed claim construction ignores the claim language requiring that the internal electrical
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`components are “operatively connected” to the control actuators. This language is present in the
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`claims themselves as set forth above. Furthermore, the specification supports inclusion of this
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`language in the claim construction (emphasis added):
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`The interior region is configured to confine internal electrical components that are
`operatively connected to and cooperate with control actuators to produce signals
`for manipulating images or symbols on the display. The control actuators are
`positioned for tactile manipulation by a user to cause production of the signals.
`
`See Exhibit 1, 1:52-59. Smallworks’ proposed claim construction includes this claim language
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`and should therefore be adopted by the Court.
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`
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`The second problem with Lego’s proposed claim construction for “control actuators” is
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`that the claim construction is overbroad and attempts to cover functionality not addressed in the
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`asserted patents. The applicant specifically used the term “actuators” in the claim terms. An
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`actuator is “a mechanical device for moving or controlling something.” See Exhibit 5 (emphasis
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`added). This definition is also consistent with the specification and the figures for the asserted
`
`patents. The specification lists examples of control actuators as control pads (34), analog stick
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`controls (38 and 48), and various mechanical buttons (46, 64, and 66). See Exhibit 1, 3:8-25.
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`Those control actuators can be seen below in Fig. 1:
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`
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`Smallworks’ Markman Brief
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`Page 15
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`Case 3:15-cv-00823-VLB Document 35 Filed 03/25/16 Page 16 of 27
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`The patent also identifies the following “control actuators” for figure 4 of the patents: button 144,
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`control pad 146, buttons 150, 152, 154, 156, 158 and 160. See Exhibit 1, 5:5-12.
`
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`There is not a single example of a “control actuator” in the asserted patents that is not a mechanical
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`device. However, Lego’s proposed claim construction ignores the actual words chosen by the
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`applicant and the intrinsic evidence by defining this term to be “any mechanism on the manual
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`controller that may be touched by a user to produce signals for manipulating images or symbols
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`on the display.” In other words, Lego has read out of the claims the term “actuators” so that touch
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`screens and electronic buttons can be included as a control actuator, when such technology was
`
`never claimed or disclosed in the asserted patent and the inventor specifically only claimed
`
`“actuators.”
`
`
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`A plaintiff cannot read out claim language or extend the scope of a patent after prosecution
`
`for infringement purposes. See Texas Instruments Inc. v. United States Int’l Trade Comm’n, 988
`
`F.2d 1165, 1171 (Fed. Cir. 1993) (“[T]o construe the claims in the manner suggested [by the
`
`patentee] would read an express limitation out of the claims. This we will not do because ‘[c]ourts
`
`can neither broaden nor narrow claims to give the patentee something different [from] what he has
`
`Smallworks’ Markman Brief
`
`
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`Page 16
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`

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`Case 3:15-cv-00823-VLB Document 35 Filed 03/25/16 Page 17 of 27
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`set forth.’ ”). This is exactly what Lego is attempting to do now and it is improper and contrary to
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`Federal Circuit law.
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`d.
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`“Recreation Equipment Item”
`
`Lego proposes that the Court only construe the term “recreation equipment item” from
`
`claim 1 of the ‘085 Patent. Smallworks proposes that the Court construe the claim phrase to give
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`meaning and context to the claim language for the jury. As will be demonstrated below, Lego’s
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`proposed claim construction is incorrect and will result in jury confusion. The parties propose the
`
`following claim constructions:
`
`Smallworks’ Construction
`
`
`a
`to
`elements
`Attaching building
`controller so
`that adjacent building
`elements mate to one another to form an
`exact copy or a very close copy of at least
`a portion of a piece of sports equipment
`(i.e., a bat or a golf club) for use with a
`video game.
`
`Lego’s Construction
`
`“recreation equipment
`item” means “an item or
`device that may be used in
`a recreation activity”
`
`Claim Phrase
`
`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
`
`‘085 Patent Claim 1
`
`
`
`The specification for the asserted patents sets forth the intended meaning of the claim phrase. For
`
`instance, the following figures demonstrate examples of “recreation equipment items” relative to
`
`Smallworks’ Markman Brief
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`
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`Page 17
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`

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`Case 3:15-cv-00823-VLB Document 35 Filed 03/25/16 Page 18 of 27
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`the asserted patents:
`
`
`Fig. 6C shows a golf club that is made by connecting building elements to the end of a Wii
`
`
`
`
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`controller. Fig. 7C above shows a baseball bat that is also created by connecting building elements
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`to the end of a Wii controller. The specification describes these recreation equipment items with
`
`the following text (emphasis added):
`
`FIGS. 6A, 6B, 6C, and 6D show a customized controller built in the form of a golf
`club 190 around a remote controller in the form of a Wii™ remote controller.
`Golf club 190 includes an exoskeleton 192 that has a surface portion 170, which is
`described above with reference to FIG. 4. As best shown in FIG. 6D, golf club 190
`includes five building elements, of which adjacent ones mate with each other
`and all of which collectively mate with exoskeleton 192. A mounting element 194
`includes two side sections 196 and 198 having recesses 84 that mate with
`corresponding bosses 80 on respective sides 200 and 202 of exoskeleton 192. Golf
`club shaft components 204, 206, 208, and 210 mate in series connection to form
`an assembled golf club 190.
`
`See Exhibit 1, 5:42-54.
`
`FIGS. 7A, 7B, 7C, and 7D show a customized controller built in the form of a
`baseball bat 220 around a remote controller in the form of a Wii™ remote
`controller. Baseball bat 220 includes an exoskeleton 222 that has a surface portion
`170, which is described above with reference to FIG. 4. As best shown in FIG. 7D,
`baseball bat 220 includes five building elements (two of which are partly or
`completely removed to illustrate mating bosses 80 of exoskeleton 222) mated to
`exoskeleton 222 to form a bat handle 224 and eleven building elements (several
`of which partly cut away to show mating bosses 80 on adjacent building elements)
`
`Smallworks’ Markman Brief
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`
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`Page 18
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`

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`Case 3:15-cv-00823-VLB Document 35 Filed 03/25/16 Page 19 of 27
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`mated in series connection to form a bat barrel 226. A building element 228
`mates to the rear end of exoskeleton 222 to provide a bat heel, and a building
`element 230 mates with the front end of exoskeleton 222 to interconnect it with bat
`barrel 226.
`
`See Exhibit 1, 5:55-6:2. The specification also describes two other “baseball bat” configurations,
`
`but they are essentially redundant with the bat shown in Figs. 7A, 7B, 7C and 7D and described
`
`above. See Exhibit 1, Figs. 8A-D, 9A-C, 6:3-35.
`
`
`
`Based on the figures and the specification, Smallworks proposes the following claim
`
`construction:
`
`Claim Phrase
`
`
`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
`
`
`‘085 Patent Claim 1
`
`Smallworks’ Construction
`
`
`Attaching building elements to a controller so
`that adjacent building elements mate to one
`another to form an exact copy or a very close
`copy of at least a portion of a piece of sports
`equipment (i.e., a bat or a golf club) for use with
`a video game.
`
`
`
`Smallworks’ proposed claim construction is consistent with the claim language itself, the
`
`specification, and the figures. Smallworks’ proposed claim construction describes that the
`
`“recreation equipment item” is created by “attaching building elements to a controller so that
`
`adjacent building elements mate to one another.” This is exactly what is stated in the claim itself
`
`(“including multiple components of which adjacent ones mate with each other”), shown in the
`
`figures above, and described in the specification.
`
`Additionally, Smallworks’ proposed claim construction gives meaning to the term
`
`“replica” from the claim phrase. A “replica” is defined