Case 2:15-cv-01030-WCB Document 134 Filed 04/21/16 Page 1 of 37 PageID #: 1056
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`
` CIVIL ACTION NO. 2:15-cv-1030
` (CONSOLIDATED LEAD CASE)
`
`
`
`
`
`
`
` JURY TRIAL DEMANDED
`
`
`
`SCRIPT SECURITY SOLUTIONS L.L.C.,
`
`
`Plaintiff,
`
`
`v.
`
`
`AMAZON.COM, INC., ET AL.,
`
`
`Defendants
`
`
`
`SCRIPT SECURITY SOLUTIONS, LLC’S
` OPENING CLAIM CONSTRUCTION BRIEF
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`
`
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`Page 1 of 37
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`SAMSUNG EXHIBIT 1019
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`

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`Case 2:15-cv-01030-WCB Document 134 Filed 04/21/16 Page 2 of 37 PageID #: 1057
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`TABLE OF CONTENTS
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`I. INTRODUCTION .................................................................................................................. 1
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`II. BACKGROUND ..................................................................................................................... 1
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`A. The ‘078 Patent .............................................................................................................. 1
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`B. The ‘909 Patent .............................................................................................................. 4
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`C. The ‘091 Patent .............................................................................................................. 5
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`III. AGREED TERMS .................................................................................................................. 6
`
`IV. CLAIM CONSTRUCTION ................................................................................................... 7
`
`A. ‘078 Patent ........................................................................................................................ 7
`
`1.
`
`2.
`
`3.
`
`“detector adapted to detect movement of said object . . .” ....................................... 7
`
`“information gathering device adapted to . . . ” ..................................................... 13
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`“local computer” .................................................................................................... 15
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`B. The ‘909 Patent .............................................................................................................. 16
`
`1.
`
`2.
`
`3.
`
`“interactive response medium” .............................................................................. 16
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`“communication interface” .................................................................................... 17
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`“provisioned” ......................................................................................................... 20
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`C. The ‘091 Patent .............................................................................................................. 21
`
`1.
`
`“wireless movement detecting and signal transmitting means for transmitting
`security information”.............................................................................................. 21
`
`2.
`
`“a computer host . . . being further programmed to provide information” ............ 23
`
`D. Common Terms ............................................................................................................. 24
`
`1.
`
`2.
`
`3.
`
`“a system for detecting the movement of an object and proving information
`relative to said movement . . . ” .............................................................................. 24
`
`“detecting the movement of an object” .................................................................. 27
`
`“portable security alarm system” ........................................................................... 28
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`V. CONCLUSION ..................................................................................................................... 30
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`i
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`Case 2:15-cv-01030-WCB Document 134 Filed 04/21/16 Page 3 of 37 PageID #: 1058
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`EXHIBIT LIST
`
`Description
`
`U.S. Patent No. 6,542,078
`
`U.S. Patent No. 6,828,909
`
`U.S. Patent No. 7,113,091
`
`Expert Declaration of Dr. Samuel H. Russ, dated April 19, 2016
`
`Excerpt from Webster’s II New College Dictionary (1999)
`Excerpt from Robert L. Barnard, Intrusion Detection Systems, 177 (2nd ed.
`
`1988).
`
`Excerpt from CALIFORNIA ENERGY COMMISSION STAFF, Advanced Lighting
`Guidelines, 1 (2nd ed. 1993)
`Excerpt from Popular Science, 2nd Annual Best of What’s New (Dec. 1989)
`
`Excerpt from File Wrapper of U.S. Patent Application No. 08/865,886
`
`ADT LLC and FrontPoint Security Solutions, LLC v. Script Security Solutions
`
`LLC¸ IPR2016-00740, Paper 1 (PTAB March 11, 2016)
`
`ADT LLC and FrontPoint Security Solutions, LLC v. Script Security Solutions
`
`LLC¸ IPR2016-00742, Paper 1 (PTAB March 11, 2016)
`
`ADT LLC and FrontPoint Security Solutions, LLC v. Script Security Solutions
`
`LLC, Case IPR2016-00741, Paper 1 (PTAB March 11, 2016)
`
`Excerpt from U.S. Patent No. 4,217,624
`
`Excerpt from U.S. Patent No. 4,907,079
`
`Excerpt from U.S. Patent No. 5,617,515
`
`Excerpt from U.S. Patent No. 6,771,173
`
`Excerpt from U.S. Patent No. 5,818,617
`
`Excerpt from U.S. Patent No. 5,732,136
`Excerpt from IBM Dictionary of Computing (10th ed. 1994)
`
`Excerpt from The New IEEE Standard Dictionary of Electrical and Electronics
`Terms (5th ed. 1993)
`Excerpt from McGraw-Hill Dictionary of Scientific and Technical Terms (5th ed.
`
`1994)
`
`
`
`
`
`ii
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`Exhibit No.
`1
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`2
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`3
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`4
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`5
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`6
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`7
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`8
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`9
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`10
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`11
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`12
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`13
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`14
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`15
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`18
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`19
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`20
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`21
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`Case 2:15-cv-01030-WCB Document 134 Filed 04/21/16 Page 4 of 37 PageID #: 1059
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`TABLE OF AUTHORITIES
`
`Cases
`
`Advanced Aero. Techs., Inc. v. U.S., 122 Fed. Cl. 445 (Fed. Cir. 2015) ........................................ 8
`
`Allen Eng’g Corp. v. Bartell Indus., 299 F.3d 1336 (Fed. Cir. 2002) .......................................... 26
`
`Anascape, Ltd. v. Microsoft Corp., Case No. 9:06-CV-158, 2008 U.S. Dist. LEXIS 98821 (E.D.
`
`Tex. Feb. 2, 2007) ...................................................................................................................... 27
`
`Apple Inc. v .Motorola, Inc., 757 F.3d 1286 (Fed. Cir. 2014) ....................................................... 8
`
`Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012) ............................. 30
`
`Catalina Mktg. Int'l v. Coolsavings.com, Inc., 289 F.3d 801 (Fed. Cir. 2002) ............................. 25
`
`E2E Processing, Inc. v. Cabela’s Inc., Case No. 2:14-CV-36-JRG-RSP, 2015 U.S. Dist. LEXIS
`
`86060 (E.D. Tex. July 2, 2015) ................................................................................................... 7
`
`Endo Pharms. Inc v. Watson Labs, Inc., Case No. 2:13-CV-192-JRG, 2014 U.S. Dist. LEXIS
`
`84804 (E.D. Tex. June 23, 2014) ......................................................................................... 25, 26
`
`Eon Corp. IP Holdings, LLC v. Sensus USA Inc., 741 F. Supp. 2d 783 (E.D. Tex. 2010) .......... 29
`
`Foundry Networks v. Lucent Techs., Inc., Civil Action No. 2-04-CV-40, 2005 U.S. Dist. LEXIS
`
`46840 (E.D. Tex. May 24, 2005) ............................................................................................... 19
`
`Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354 (Fed. Cir. 2004) ....................... 8
`
`Marrin v. Griffin, 599 F.3d 1290 (Fed. Cir. 2010) ....................................................................... 26
`
`Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366 (Fed. Cir. 2015) ........... 7, 17
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351 (Fed. Cir. 2008) ................ 17
`
`Orica Explosives Tech., Pty., Ltd. v. Austin Powder Co., No. CV-07-03337, 2008 U.S. Dist.
`
`LEXIS 87873 (C.D. Cal. Aug. 21, 2008) .................................................................................. 29
`
`Orion IP, LLC v. Staples, Inc., 406 F.Supp.2d 717 (E.D. Tex. 2005) .......................................... 27
`
`
`
`iii
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`Page 4 of 37
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`Case 2:15-cv-01030-WCB Document 134 Filed 04/21/16 Page 5 of 37 PageID #: 1060
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`Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348 (Fed. Cir. 2013) 8,
`
`10
`
`Rembrandt Data Techs., LP v. AOL, LLC, 641 F.3d 1331 (Fed. Cir. 2011) .................................. 7
`
`Renishaw PLC v. Societa’ per Azioni, 158 F.3d 1243 (Fed. Cir. 1998) ......................................... 1
`
`RMail Ltd. v. Amazon.com, Inc., Case No. 2:10-CV-258-JRG, 2013 U.S. Dist. LEXIS 34912
`
`(E.D. Tex. March 11, 2013) ....................................................................................................... 25
`
`Rosen's Inc. v. Van Diest Supply Co., No. 03-3206, 2004 U.S. Dist. LEXIS 5435 (D. Minn. Mar.
`
`30, 2004) .................................................................................................................................... 30
`
`See Personalized Media Communs., L.L.C. v. ITC, 161 F.3d 696 (Fed. Cir. 1998) ....................... 8
`
`Sipco, LLC v. Amazon.com, Inc., Case No. 2:08-CV-359-JRG, 2012 U.S. Dist. LEXIS 150940
`
`(E.D. Tex. Oct. 19, 2012) .......................................................................................................... 26
`
`Typhoon Touch Techs., Inc. v. Dell, Inc., 2009 U.S. Dist. LEXIS 64013 (E.D. Tex. July 23,
`
`2009) .......................................................................................................................................... 29
`
`Wenger Mfg., Inc. v. Coating Mach. Sys., Inc., 239 F.3d 1225 (Fed. Cir. 2001) ................... 11, 13
`
`Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) ........................................... 7, 8
`
`Statutes
`
`37 C.F.R. § 42.100(b) ................................................................................................................... 10
`
`
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`iv
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`Case 2:15-cv-01030-WCB Document 134 Filed 04/21/16 Page 6 of 37 PageID #: 1061
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`I. INTRODUCTION
`
`
`
`Script has accused Defendants of infringing U.S. Patent Nos. 6,542,078 (“the ‘078 patent”),
`
`6,828,909 (“the ‘909 patent”) and 7,113,091 (“the ‘091 patent) (collectively “the patents-in-suit”).
`
`The patents-in-suit relate to wireless security systems capable of detecting the movement of an
`
`object and providing alerts to indicate said movement. The basic operation of the patents-in-suit is
`
`easy to understand, as are most of the disputed claim phrases. For example, one of the parties’
`
`disputes centers on the meaning of the simple phrase “detecting the movement of an object.” For
`
`these and other disputed phrases, Script has proposed constructions that stay true to the claim
`
`language, naturally align with the specification, and which are entirely consistent with their
`
`commonly understood meanings. For that reason, Script’s proposed constructions should be
`
`adopted. See Renishaw PLC v. Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998) (“The
`
`construction that stays true to the claim language and most naturally aligns with the patent’s
`
`description of the invention will be, in the end, the correct construction.”).
`
`II. BACKGROUND
`
`
`
`While the patents-in-suit relate to the same technological field, the invention claimed by
`
`each patent is unique, as explained below.
`
`A. The ‘078 Patent
`
`The ‘078 patent, entitled “Portable Motion Detector and Alarm System and Method,” is
`
`based on a provisional application filed in 1996. At that time, security systems had a number of
`
`disadvantages. For example, some security systems required hard wiring throughout the premises,
`
`making them difficult to install and easy for intruders to disable. Ex. 1 [‘078 patent] at 1:49–59.
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`Additionally, security systems at the time were difficult to transport and large in size. Id. at 2:14–
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`
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`1
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`Case 2:15-cv-01030-WCB Document 134 Filed 04/21/16 Page 7 of 37 PageID #: 1062
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`17. They also lacked the ability to gather additional information about the security breach, such as
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`an image of the intruder, and forward that information to a remote location. Id. at 2:17–20.
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`
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`In 1996, Henry Script (now deceased) and his son, Michael Script, conceived of the method
`
`and apparatus of the ‘078 patent, which overcame a number of disadvantages associated with then-
`
`conventional security systems. A depiction of one embodiment of the invention is shown below.
`
`
`
`As shown, a window (25) and door (24) are equipped with movement detecting and transmitting
`
`means (20) (“motion detectors”). Id. at 4:37–41. The motion detectors (20) are connected to wires
`
`(22) and wire affixing means (28), which are attached to the window (25) and door (24). Id. at
`
`4:49–56. When the door (24) opens, the wire (22) is pulled, which causes magnets within the
`
`motion detectors (20) to move. See id. at 7:54–61. A magnetic field sensor in the motion detectors
`
`(20) sense a change in the magnetic field of the magnets caused by their movement, which
`
`indicates movement of the door. Id. at 7:61–8:4. A transmitter in the motion detectors (20) then
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`wirelessly transmits an alarm signal to another device. Id. at 8:16–18.
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`
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`2
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`Case 2:15-cv-01030-WCB Document 134 Filed 04/21/16 Page 8 of 37 PageID #: 1063
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`
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`While in the embodiment shown above the alarm signal is
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`transmitted to a receiver means (30), in another embodiment the alarm
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`signal is transmitted to an information gathering means (90), as shown
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`right. Id. at 12:24–29. The information gathering means (90) may
`
`comprise a transmitter and camera. Id. at 10:31–34. The camera can be
`
`aimed at the door so that when the alarm is triggered an image of the
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`intruder is captured. Id. at 12:29–34. The information gathering device
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`(90) then transmits the image to a remote notification device (92), which in turn forwards the
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`information on so that the owner of the premises can be notified of the alert. Id. at 12:33–65.
`
`
`
`Script has asserted independent claim 1 and dependent claims 2–10 of the ‘078 patent.
`
`Independent claim 1 has been reproduced below for the convenience of the Court. The disputed
`
`terms have been underlined.
`
`1. [Preamble] A system for detecting the movement of an object and providing
`information relative to said movement to a remote location comprising
`
`[A] an object whose movement is to be detected,
`
`[B] a detector adapted to detect movement of said object and provide an
`indication of said movement,
`
`[C] a first transmitter associated with said detector and adapted to wirelessly
`transmit a predetermined signal in response to said indication,
`
`[D] an information gathering device adapted to receive said predetermined
`signal, to gather information relating to said movement, and to transmit said
`information, and
`
`[E] a remote notification device adapted to receive said information from said
`information gathering device, to establish data communication with a remote host,
`and to provide said information to said remote host.
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`
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`3
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`Case 2:15-cv-01030-WCB Document 134 Filed 04/21/16 Page 9 of 37 PageID #: 1064
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`B. The ‘909 Patent
`
`The ‘909 patent, entitled “Portable Motion Detector and Alarm System and Method,” was
`
`filed in 2002 and is a continuation-in-part of the ‘078 patent, which again is based on the
`
`provisional application filed in 1996. While similar to the ’078 patent, the invention of the ‘909
`
`patent encompasses the ability to provide the identity of the
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`particular detector that triggered the motion detector alarm (e.g.,
`
`“front door detector” or “back door detector”). The ‘909 patent
`
`accomplishes this by associating a unique identifier with each
`
`detector (20). Ex. 2 [‘909 patent] at 14:1–8. For example, as shown
`
`in Figure 18 (reproduced right), one detector may be associated with
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`unique identifier “xxyyzz00” and another detector may be associated with unique identifier
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`“xxyyzz01.” Id. at 15:22–29.
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`When the alarm for the detector associated with unique identifier “xxyyzz00” is triggered,
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`the detector transmits the unique identifier to a local receiver (e.g., receiver means 30 or
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`information gathering device 90). Id. at 14:56–60. The receiver contains a table showing the
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`association between the unique identifier “xxyyzz00” and the descriptive word “Front Door.” Id.
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`at 15:22–27. Thus, the receiver knows that the front door detector triggered the alarm and may
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`output that information locally (e.g., visually or audibly) so that the premises owner is able to
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`quickly identify where the security breach occurred. Id. at 15:37–40. Alternatively, the receiver
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`my forward the unique identifier information (e.g., “xxxyyzz00”) to a remote location (e.g., a
`
`remote security administration system) where that information may be used to lookup the
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`descriptive word or phrase “Front Door.” Id. at 15:45–50.
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`4
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`Case 2:15-cv-01030-WCB Document 134 Filed 04/21/16 Page 10 of 37 PageID #: 1065
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`Script has asserted independent claims 1 and 19 and dependent claims 2, 4, 9, 12, 13, and
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`20, 21 and 23 of the ‘909 patent. Independent claim 1 has been reproduced below for the
`
`convenience of the Court. The disputed terms have been underlined.
`
`1. [Preamble] A portable security alarm system for detecting the movement
`of an object and providing information relative to said movement, said system
`comprising
`
`[A] a motion sensor adapted to detect movement of an object and provide an
`indication of said movement including a unique identifier associated with said
`sensor,
`
`[B] a transmitter associated with said sensor and adapted to wirelessly transmit a
`predetermined signal containing said indication, and
`
`[C] a local receiver at or near the site of the object adapted to receive said
`predetermined signal, to process said unique identifier for local or remote
`conversion to associated object identification information that identifies said
`object, and to visually or audibly output said object identification information.
`
`
`
`C. The ‘091 Patent
`
`The ‘091 patent, entitled “Portable Motion Detector and Alarm System and Method,” was
`
`filed in 2004 and is not part of the ‘078 or ‘909 patent family. The invention of the ‘909 patent
`
`relates to a security network, including a portable security alarm system similar to those disclosed
`
`in the ‘078 or ‘909 patents and a security administration system that (i) responds to security alerts
`
`from the portable security alarm system and (ii) provides additional information to the portable
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`security alarm system, such as alerts from a governmental agency (e.g., homeland security) or
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`commercial information (e.g., advertisements).
`
`As explained in the ‘091 patent, when a portable security alarm system transmits an alarm
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`notification to a computer host of a remote security administration system, the security
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`administration system may forward the alert to a subscriber-designated contact location, such as a
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`telephone number or e-mail address of the subscriber. Ex. 3 [‘091 patent] at 16:66–17:12.
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`5
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`Case 2:15-cv-01030-WCB Document 134 Filed 04/21/16 Page 11 of 37 PageID #: 1066
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`Additionally, the security administration system can provide additional information to the portable
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`security system, including governmental security alerts (e.g., a Homeland Security terrorist alert)
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`or commercial/advertising information. Id. at 38:16–34.
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`Script has asserted independent claim 2 of the ‘091 patent. That claim has been reproduced
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`below for the convenience of the Court, with the disputed terms underlined.
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`2. [Preamble] A security network comprising
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`[A] a security administration system and
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`[B] at least one portable security alarm system having a wireless receiver means
`and one or more wireless movement detecting and signal transmitting means
`for transmitting security information to said receiver means,
`
`[C] said security administration system comprising a computer host programmed
`to respond to security alerts from said at least one portable security alarm system,
`and being further programmed to provide information to said at least one
`portable security alarm system,
`
`[D] said information including one of security alert notifications from a
`governmental agency, advertising or other commercial information.
`
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`III. AGREED TERMS
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`In addition to the agreed terms set forth in the parties P.R. 4-3 Joint Claim Construction
`
`Statement, Script further agrees with Defendants’ proposed constructions for the following terms:
`
`Disputed Term
`“remote host”
`(all claims)
`“remote network host”
`(claim 6)
`
`Agreed Construction
`“a server at a remote location”
`
`“a server at a remote location”
`
`“commercial information”
`(claim 2)
`
`“advertising, promotional offers, or other
`information about the sale of goods or services”
`
`Patent
`‘078
`
`‘078
`
`‘091
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`6
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`Case 2:15-cv-01030-WCB Document 134 Filed 04/21/16 Page 12 of 37 PageID #: 1067
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`IV. CLAIM CONSTRUCTION
`
`A. ‘078 Patent
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`1. “detector adapted to detect movement of said object and provide an indication of
`said movement”
`
`
`
`Disputed Term
`“detector adapted to
`detect movement of said
`object and provide an
`indication of said
`movement”
`(Claim 1)
`
`Script’s Construction
`No construction necessary and not
`subject to § 112(6)
`
`Alternatively, should the court find §
`112(6) applies:
`
`Function: detecting movement of said
`object and to provide an indication of
`said movement
`
`Structure: a circuit that can sense
`shifts in magnetic fields.
`
`Defendants’ Construction
`Function: to detect
`movement of said object
`and provide an indication
`of said movement
`
`Structure: retractable wire,
`movable magnets, and a
`magnetic field sensor
`
`Contrary to Defendants’ urging, § 112(6) does not apply here and this phrase needs no
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`construction. The disputed phrase does not use the term “means,” so there is a presumption that §
`
`112(6) does not apply. See Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366,
`
`1371 (Fed. Cir. 2015). While the absence of “means” no longer gives rise to a “strong”
`
`presumption against means-plus-function treatment,1 overcoming the presumption is difficult
`
`nonetheless. For instance, courts in this district have held that § 112(6) does not apply to terms
`
`such as “selector component.” See E2E Processing, Inc. v. Cabela’s Inc., Case No. 2:14-CV-36-
`
`JRG-RSP, 2015 U.S. Dist. LEXIS 86060, at *19–20 (E.D. Tex. July 2, 2015) (Gilstrap, J.). In
`
`fact, even where “means” has been used the Federal Circuit has found that § 112(6) does not
`
`necessarily apply. See Rembrandt Data Techs., LP v. AOL, LLC, 641 F.3d 1331, 1340 (Fed. Cir.
`
`2011) (holding § 112(6) does not apply to “trellis encoding means” and “fractional rate encoding
`
`
`1 See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (lowering the
`standard against §112(6) from a “strong presumption” to merely a “presumption”).
`
`
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`7
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`Case 2:15-cv-01030-WCB Document 134 Filed 04/21/16 Page 13 of 37 PageID #: 1068
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`means,” as they are self-descriptive and recited sufficient structure). The only way Defendants can
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`overcome the presumption against § 112(6) is by showing that the disputed phrase “fails to recite
`
`sufficiently definite structure, or else recites function without reciting sufficient structure for
`
`performing that function” as understood by those of skill in the art. Williamson, 792 F.3d at 1349.
`
`Defendants cannot make this showing.
`
`First, the Federal Circuit has repeatedly determined that the term “detector,” standing
`
`alone, is not subject to § 112(6). See Personalized Media Communs., L.L.C. v. ITC, 161 F.3d 696,
`
`704–705 (Fed. Cir. 1998) (“the term ‘detector’ . . . does convey to one knowledgeable in the art a
`
`variety of structures known as ‘detectors.’”); see also Apple Inc. v .Motorola, Inc., 757 F.3d 1286,
`
`1299 (Fed. Cir. 2014) (“In Personalized Media, we found that the claim term ‘detector,’ by itself,
`
`connoted sufficient structure to a person of ordinary skill in the art.”).2 Similarly, the Federal
`
`Circuit has held that § 112(6) does not apply to the very similar term “sensor,” because it “has a
`
`reasonably well-understood meaning that connotes a structure.” Advanced Aero. Techs., Inc. v.
`
`U.S., 122 Fed. Cl. 445, 477 (Fed. Cir. 2015). Indeed, the standard dictionary definition recognizes
`
`a “detector” as a particular class of structures: “one that detects, esp. a mechanical, electrical, or
`
`chemical device that automatically identifies and records a stimulus, as an environmental change
`
`in pressure or temperature, an electric signal, or radiation from a radioactive material.” Ex. 5
`
`[Webster’s Dict.].
`
`Second, even if “detector” alone did not connote sufficient structure, the test for
`
`determining whether the presumption against § 112(6) has been overcome requires consideration
`
`of the entire claim element and specification. See Power Integrations, Inc. v. Fairchild
`
`
`2 The holding of Personalized Media came before the “strong presumption” against § 112(6) was
`adopted by the Federal Circuit in Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354,
`1358 (Fed. Cir. 2004).
`
`
`
`8
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`Case 2:15-cv-01030-WCB Document 134 Filed 04/21/16 Page 14 of 37 PageID #: 1069
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`Semiconductor Int’l, Inc., 711 F.3d 1348, 1365 (Fed. Cir. 2013) (“The proper inquiry is whether
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`the claim limitation itself, when read in light of the specification, connotes to the ordinary skilled
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`artisan sufficiently definite structure for performing the identified functions.”). The “detector” is
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`claimed in the context of “portable security alarm systems” (see claim preamble) and must be
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`adapted to (i) “detect motion” and (ii) “provide information relative to said motion.” When viewed
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`in light of the full claim element, the term “detector” would easily be understood by those having
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`ordinary skill at the time of the invention to connote a definite class of structures known as “motion
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`detectors.” Ex. 4 [Russ Decl.], ¶ 26. Indeed, even those having no skill in the art would understand
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`that a “detector” that “detects motion” is a “motion detector.”
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`Countless contemporary prior art references demonstrate that “motion detectors”
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`represented a well-known class of structural devices at the time of the invention:3
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`
`“Active motion detectors, such as ultrasonic, sonic, and microwave detectors generate
`their own energy patterns and recognize a disturbance in that pattern to detect an intruder,
`while passive motion detectors detect the energy generated by the intruder.” Ex. 6
`[Instrusion Detection Systems] at 177.4
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` 
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`“The system consists of a motion detector . . . . The motion detector senses motion
`and sends the appropriate signal to the control unit. . . . The typical ceiling-mounted system
`consists of a motion detector/controller . . . .” Ex. 7 [Advanced Lighting Guidelines] at 1.
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` 
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`“The Black & Decker Home Protector comes with a Controller, Motion Detector,
`Yard Sign, and Window/Door Decals.” Ex. 8 [Popular Science].
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`Those of ordinary skill would have understood that a motion detector would have included
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`structures such as infrared motion detectors, ultrasonic motion detectors, microwave motion
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`3 Notably, Defendants do not contend that the phrase “motion sensor adapted to detect movement
`of an object and provide an indication of said movement” from claim 1 of the ‘909 patent is a
`means-plus-function element. This suggests that Defendants understand “motion sensor” to
`convey sufficient structure, just as “motion detector” does here.
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` Unless otherwise indicated, all emphasis has been added.
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`9
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` 4
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`Page 14 of 37
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`Case 2:15-cv-01030-WCB Document 134 Filed 04/21/16 Page 15 of 37 PageID #: 1070
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`detectors, and the like, each of which were common in the security alarm industry. Ex. 4 [Russ
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`Decl.], ¶¶ 27–29.
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`Defendants improperly focus on the term “detector” in isolation––completely ignoring the
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`other 14 words in this phrase that help connote additional structure. However, in determining
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`whether the presumption against § 112(6) has been overcome, the disputed term or phrase must be
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`viewed in light of the remaining claim language and specification. See Power Integrations, 711
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`F.3d at 1365. As explained above, one of skill in the art would easily understand the “detector
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`adapted to detect movement . . . .” to be referring to a “motion detector,” which connotes a well-
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`defined class of structures to those of skill in the art.
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`Defendants’ position is also contradicted by arguments they made in a petition for inter
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`partes review of the ‘078 patent, where in apparent effort to making invalidating the patent easier
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`they do not contend that the “detector” limitation is a means-plus-function limitation. Ex. 10 [‘078
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`IPR Pet.] at 8–12 (omitting “detector” as a means-plus-function limitation). Now, in order to avoid
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`infringement, Defendants completely reverse course and argue that the “detector” is indeed a
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`means-plus-function limitation.5
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`Even assuming, arguendo, that § 112(6) is found to apply, the only component in the
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`specification corresponding to the “detector” and its function of “detecting movement” and
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`5 While the claim construction standard before the PTAB (i.e., broadest reasonable interpretation)
`and in district court (i.e., under Phillips) may be different, there is no reason that difference would
`affect means-plus-function limitations. Indeed, whether a term is a means-plus-function term is
`based on whether those of ordinary skill would understand it to have sufficiently definite structure,
`which has nothing to do with the pertinent claim construction standard. Moreover, the claim
`construction standard between the IPR and this litigation are not different, because the ‘078 and
`‘909 patents will expire within 18 months of the accorded filing date of the IPR petitions, which
`is March 11, 2016. See 37 C.F.R. § 42.100(b) (“A party may request a district court-type claim
`construction approach to be applied if a party certifies that the involved patent will expire within
`18 months from the entry of the Notice of Filing Date Accorded to Petition.”). Thus, Defendants
`have no justification for taking competing views on whether § 112(6) applies to “detector.”
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`Case 2:15-cv-01030-WCB Document 134 Filed 04/21/16 Page 16 of 37 PageID #: 1071
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`“providing an indication of said movement” is the magnetic field sensor (56). The claim first
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`recites an “object whose movement is to be detected” (e.g., a magnet) and second “a detector
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`adapted to . . . detect movement.” As taught by the specification, the magnetic field sensor (56)
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`detects the shifts in the magnetic fields of magnets (54) caused by their movement. See Ex. 1 [‘078
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`patent] at 8:2–7. When the object moves, the shift in magnetic fields is sensed by the sensor, and
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`it generates a signal indicating movement. Id. As such, the only structure necessary for “detecting
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`movement” is the circuitry of the magnetic field sensor (54), such as the circuitry shown in Figure
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`9. Ex. 4 [Russ Decl.], ¶¶ 31–33. Indeed, neither the magnets nor the retractable wire “detect”
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`anything, rather they create the movement which is “detected” by the sensor (56).
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`Defendants’ proposed structure should be rejected because it attempts to tie structures to
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`the “detector” that are unnecessary to perform the recited function. See Wenger Mfg., Inc. v.
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`Coating Mach. Sys., Inc., 239 F.3d 1225, 1233 (Fed. Cir. 2001) (“[A] court may not import . . .
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`structural limitations from the written description that are unnecessary to perform the claimed
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`function.”). Defendants first contend that the retractable wire (22) is part of the structure
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`corresponding to the “detector.” However, as discussed in the preceding paragraph, the only
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`component actually capable of “detecting” anything is the magnetic field sensor (56). Indeed, the
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`specification actually refers to the sensor (56) as a “means for detecting movement,” while the
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`retractable wire is referred to as a distinct structure called “retractable wire means” (22). Ex. 1
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`[‘078 patent] at 7:45–53; 8:50–52. Thus, the sensor and retractable wire are described as entirely
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`distinct structures performing entirely distinct functions. Ex. 4 [Russ Decl.], ¶ 33. In fact, during
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`prosecution of a parent application the dra