UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF OHIO
`EASTERN DIVISION
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`CASE NO.4:08CV1184
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`JUDGE CHRISTOPHER A. BOYKO
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`ORDER
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`RESPONSIVE INNOVATIONS, LLC.,
`ET AL.,
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`Plaintiff,
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`vs.
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`HOLTZBRINCK PUBLISHERS, LLC.,
`ET AL.,
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`Defendant.
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`CHRISTOPHER A. BOYKO, J:
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`This matter comes before the Court following the Order and Opinion on Motions for
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`Summary Judgment (Doc. No. 129), which withheld ruling on the issues of infringement pending
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`resolution of further claim construction. Upon consideration of the Briefs, Responses, Exhibits,
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`and applicable law, the Court finds the following claim construction.
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`I. BACKGROUND
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`A. Procedural History
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`This is a patent infringement case brought by Responsive Innovations, LLC
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`(“Responsive”) and Turning Technologies, LLC (“Turning”) (collectively, “Plaintiffs”) against
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`Holtzbrinck Publishers, LLC (“Holtzbrinck”) and MacMillan Publishers, Inc. (“MacMillan”)
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`(collectively, “Defendants”). Both Plaintiffs and Defendants market and sell radio frequency
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`based audience response systems that employ handheld-initiated communications. Plaintiffs
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`brought suit on May 13, 2008, alleging infringement of U.S. Patent No. 7,330,716 (“the ‘716
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`IRONBURG EX2026, Page 1
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`Patent”), entitled “Wireless Communication System.” (Doc. No. 1; Doc. No. 23). Plaintiffs
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`specifically allege that Defendants, through Defendants’ i>Clicker wireless audience response
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`system, infringe claims 1-5, and 8-9 (“the asserted claims”) of the ‘716 Patent. (Doc. No. 23).
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`Defendants deny infringement and further deny that the patent is valid. (Doc. No. 15;
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`Doc. No. 25). Defendants brought declaratory judgment counterclaims of non-infringement and
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`invalidity under 35 U.S.C. §§ 102, 103, and 112 and counterclaims of unfair competition under
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`the Lanham Act § 43(a), common law unfair competition, deceptive trade practice under Ohio
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`Rev. Code § 4165.02, defamation, and tortious interference. (Doc. No. 25). On April 3, 2009,
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`the Court issued its Markman Order. (Doc. No. 38). On June 29, 2009, Defendants moved to
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`amend its affirmative defenses and counterclaims to add new allegations of inequitable conduct
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`and patent misuse. (Doc. No. 39).
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`On June 24, 2010, Defendants filed a Motion for Summary Judgment on their invalidity
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`defenses of anticipation, obviousness, and failure to disclose the best mode. (Doc. No. 72).
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`Plaintiffs filed a Motion for Summary Judgment on: (1) their claim of patent infringement, (2)
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`Defendants’ invalidity defenses of anticipation, obviousness, written description, enablement,
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`and best mode, (3) Defendants’ unenforceability defenses of inequitable conduct, and patent
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`misuse, and (4) Defendants’ counterclaims. (Doc. No. 73 corrected at 76). The Court heard Oral
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`Argument on the parties’ Motions for Summary Judgment on July 7, 2010. (See Doc. No. 125).
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`Pursuant to motion by Plaintiffs, the Court withheld ruling until after the United States Supreme
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`Court addressed the issue of burden of proof in a case pending before it in 2011. The Supreme
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`Court decision did not fundamentally alter the burden of proof implicated in the Motions of the
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`parties and the Court issued a ruling granting in part each party’s Motions for Summary
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`Judgment. The Court, however, withheld ruling on the issues of infringement and anticipation
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`by the Nordic and X-10 references pending the resolution of supplemental claim construction.
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`(Doc. No. 129). Both parties filed supplemental claim construction briefs (Doc. Nos. 135, 141,
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`142, and 144),1 and this ruling follows.
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`B. ‘716 Patent
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`The ‘716 Patent is generally directed to audience response systems, i.e., systems
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`“employed to retrieve (or receive) responses from a group of individuals at a central location.”
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`U.S. Patent No. 7,330,716, Col. 1, Lines 18-20. The audience response system of the ‘716
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`Patent has a plurality of transmitters (handheld devices) and at least one receiver (base unit).
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`U.S. Patent No. 7,330,716, Col. 1, Lines 11-13. Each handheld device includes a wireless data
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`transmitter illustrated as a radio frequency (“RF”) transceiver configured to transmit and receive
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`RF signals. U.S. Patent No. 7,330,716, Col. 4, Lines 4-7.
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`The ‘716 Patent contains one independent claim (claim 1). Claim 1 is as follows (with
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`the disputed claim terms underlined):
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`1. A wireless communication system comprising:
`a plurality of handheld devices, each handheld device including:
`a transmitter,
`an input selection control, and
`a processor configured to receive a user selection from the input selection control; and
`upon receipt of the user selection, communicate instructions to the transmitter to
`transmit an RF signal encoding an address and the user selection according to a
`defined RF profile,
`wherein the defined RF profile comprises a distinct period of no RF transmission, and
`a first period of RF transmission corresponding to transmission of the RF signal, where
`the first period of RF transmission occurs after the distinct period of no RF
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`1 The Court notes that Defendants exceeded the page limit in their supplemental claim
`construction briefs. While no action is taken at this time, future violations may result in
`sanctions.
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`transmission and is responsive to receipt of the user selection from the input
`selection control; and
`a receiver including a transceiver configured for data communication with a processor.
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`II. LEGAL STANDARDS
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`A. The Claim Construction Process
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`Claim construction is a matter of law for the Court to determine. Markman v. Westview
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`Instruments, 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). The
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`Court’s task in this regard is to “inform the meaning of the claim language.” Phillips v. AWH
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`Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc). Put another way, the Court’s assignment
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`is “the contextual interpretation of language.” Smithkline Beecham Corp. v. Apotex Corp., 403
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`F.3d 1331, 1339 (Fed. Cir. 2005). The three main sources for claim construction are the claims
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`themselves, the written specification of which the claims are a part, and the prosecution history
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`or file wrapper representing the back-and-forth discussion between the inventor and the Patent
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`and Trademark Office (“PTO”). Markman, 52 F.3d at 979-80. These sources are collectively
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`referred to as the intrinsic record of the patent. Chimie v. PPG Indus. Inc., 402 F.3d 1371, 1377
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`(Fed.Cir.2005).
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`The words of a claim “are generally given their ordinary and customary meaning.”
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`Phillips, 415 F.3d at 1312. The ordinary and customary meaning is to be determined from the
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`perspective of one of ordinary skill in the art at the time of the invention. Id. at 1313.
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`“Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in
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`the context of the particular claim in which the disputed term appears, but in the context of the
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`entire patent, including the specification.” Id.
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`Accordingly, the court first looks to the claim language, read in view of the specification.
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`Id. at 1315 (stating that the specification “is always highly relevant to the claim construction
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`analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term”).
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` However, while the court may look to the written description to define a term already in a claim
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`limitation, the court may not read a limitation from the written description into a claim. Id. at
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`1323. In other words, although it is often stated that a patentee may be his own lexicographer, “a
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`claim must explicitly recite a term in need of definition before a definition may enter the claim
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`from the written description.” Renishaw PLC v. Marposs Societaper Azioni, 158 F.3d 1243,
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`1248 (Fed. Cir. 1998).
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`The prosecution history is also relevant to claim construction as part of the intrinsic
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`record. Phillips, 415 F.3d at 1317.2 For example, an inventor may disclaim a particular claim
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`construction during prosecution before the PTO. Hockerson-Halberstadt, Inc. v. Avia Group
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`Intern., Inc., 222 F.3d 951, 956 (Fed. Cir. 2000). However, prosecution history is often
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`ambiguous, Inverness Medical Switzerland v. Warner Lambert Co., 309 F.3d 1373, 1382 (Fed.
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`Cir. 2002), and courts must consider it carefully. Phillips, 415 F.3d at 1317 (“[B]ecause the
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`prosecution history represents an ongoing negotiation between the Patent and Trademark Office
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`(‘PTO’) and the applicant, rather than the final product of that negotiation, it often lacks the
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`clarity of the specification and thus is less useful for claim construction purposes.”). While the
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`prosecution history, including art referenced in the patent, may be used to inform the meaning of
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`the claims, V-Formation, Inc. v. Benetton Group Spa, 401 F.3d 1307, 1311 (Fed. Cir. 2005),
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`2 The ‘716 Patent’s prosecution file wrapper (Dkt. 29, Ex. 4, RI000909 to RI001054) was
`admitted into evidence at the Markman hearing. Markman Tr. 29:16-24.
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`using a prior art reference to infer what the Examiner or the applicant thought about the meaning
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`of a term, based on whether a particular claim interpretation would read on the reference, is not
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`an appropriate use of the prosecution history. At claim construction, the court is “not concerned
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`with the state or scope of the prior art.” Sky Technologies, LLC v. Ariba, Inc., 491 F.Supp. 2d,
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`154, 157 (D.Mass. 2007) (citations omitted). The court “is also not concerned with how far the
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`patent or claims as a whole may extend in terms of breadth of subject matter. A court is
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`concerned only with the interpretation of a disputed term.” Id.
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`Other evidence of claim meaning, such as inventor testimony, expert testimony, and lay
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`or technical dictionary definitions, is referred to as extrinsic evidence. Phillips, 415 F.3d at
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`1317. However, extrinsic evidence is less important than the intrinsic evidence and cannot
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`contradict a claim definition from the intrinsic record. Id. at 1318-19; see also C.R. Bard, Inc. v.
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`U.S. Surgical Corp., 388 F.3d 858, 861 (Fed. Cir. 2004) (explaining “that the intrinsic record is
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`the primary source for determining claim meaning”). The only extrinsic evidence offered by the
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`parties in this case is from general purpose and technical dictionaries.
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`A. Introduction
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`III. ANALYSIS
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`The following analysis addresses only the present issues regarding claim construction of
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`the ‘716 Patent. Although both parties argue the issues surrounding summary judgment, the
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`Court should withhold judgment until after receiving supplemental briefs based on the following
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`claim construction. The Court should also note that there is no need for an additional Markman
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`hearing, as there is already expert testimony regarding the terms and phrases to be construed.
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`B. “A plurality of handheld devices”
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`1. Construction
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`Plaintiffs’ proposed construction: Two or more devices, like in kind, that are usable or
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`operable while held in the hand without the need for external support. Doc. No. 141, at 3.
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`Defendants’ proposed construction: Two or more devices that are usable or operable in
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`the hand. Doc. No. 135, at 4 and 18.
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`Court’s construction: Two or more devices that are usable or operable while held in the
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`hand without the need for external support.
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`2. Discussion
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`Regarding the term “plurality,” both parties agree that it means “two or more.” Plaintiffs,
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`however, further contend that the term should include the limitation “like in kind.” The addition
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`of such a limitation would be redundant because the term “plurality” is not used in a vacuum.
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`Although plurality is inherently limited to a certain group, that group is defined by a subsequent
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`prepositional phrase. For example, “a plurality of bicycles” is limited to the narrow category of
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`bicycles; on the other hand, “a plurality of vehicles” is limited to the much broader category of
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`all vehicles, including bicycles. Here, the plurality is of “handheld devices.” Therefore, the
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`plurality at issue need not to be limited by the additional phrase “like in kind.” Instead, the
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`meaning of handheld devices as determined below and by its claimed limitations (transmitter,
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`input selection, processor, etc) properly limits the plurality.
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`Regarding the term “handheld device,” Defendants seek a broad construction to any
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`device that is usable or operable while in the hand. In contrast, Plaintiffs seek a narrower
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`construction to any device usable or operable while held in the hand, without the need for
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`external support. Without an express definition of “handheld device” in the ‘716 Specification,
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`the Court must first look to the intrinsic evidence and ordinary meaning of the term.
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`Defendants argue that neither the intrinsic evidence, nor the extrinsic evidence, support
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`Plaintiffs’ addition of the “without the need for external support” limitation. The ‘716
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`Specification only discusses general sizes of the device (‘716 Specification, col. 3, ll. 8-21), and
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`although it teaches that the device “may be larger or smaller,” it is clear that the intent of the
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`drafter was to disclose a device that could fit within a person’s hand. The weight and other
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`external needs of the device, however, are never discussed; therefore, it is difficult to determine
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`from the intrinsic evidence alone whether external support would be necessary for one holding
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`the handheld device. Defendants’ broad interpretation, however, is inconsistent with the
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`ordinary meaning and use of “handheld.” Handheld devices are those that can be used when
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`held only in the hand; in other words, usable or operable without the need for external support.
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`To suggest otherwise, as Defendants do, indicates a desktop or similar device, not a handheld
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`device.
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`Defendants also quote their expert from the Markman hearing, Mr. McIntyre; however,
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`this extrinsic evidence fails to shed anymore sufficient light on the issue. Rather than answering
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`in the affirmative to support Defendants’ proposed construction, Mr. McIntyre merely restated
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`facts and possibilities. When asked whether a keyboard held in the hand is a handheld device,
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`Mr. McIntyre stated only “[w]ell, you just held it in your hand.” (Ma Dec., Exh. 8) (McIntyre
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`Dep., at 84:13-20). Later, when asked whether a laptop computer is a handheld device because it
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`is held in your hand, Mr. McIntyre again failed to answer affirmatively, stating only it could be a
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`handheld device. (Ma Dec., Exh. 8) (McIntyre Dep., at 86:17-25) (emphasis added). These
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`statements suggest that there is more to the interpretation of a handheld device than simply the
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`capability to hold it in a hand.
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`In light of the above, the Court construes “a plurality of handheld devices” to mean “two
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`or more devices that are usable or operable while held in the hand without the need for external
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`support.”
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`C. “Address” as used in the limitation “an RF signal encoding an address and the user
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`selection”
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`1. Construction
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`Plaintiffs’ proposed construction: Address of the handheld device. Doc. No. 141, at 11.
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`Defendants’ proposed construction: One or more network accessible addresses, device
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`identifiers, electronic identification numbers (such as EINs), IP addresses, url and ftp locations,
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`e-mail addresses, names, a distribution list including one or more addresses, network drive
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`locations, account numbers or other types of addresses that can identify a desired destination or
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`device. Doc. No. 135, at 28.
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`Court’s construction: An identifier of a desired destination or device, where the address is
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`one or more network accessible addresses, device identifiers, electronic identification numbers
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`(such as EINs), IP addresses, URL and FTP locations, e-mail addresses, names, a distribution list
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`including one or more addresses, network drive locations, or account numbers.
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`2. Discussion
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`Defendants argue that because the term “address” is explicitly defined in the
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`specification, Plaintiffs must be held to this definition. As explained by the Federal Circuit, “the
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`specification is the single best guide to the meaning of a disputed term, and . . . the specification
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`acts as a dictionary when it expressly defines terms used in the claims or when it defines terms
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`by implication.” Phillips, 415 F.3d at 1321. This is precisely the case with the ‘716 Patent,
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`which expressly defines the term “address” in the specification:
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`“Address”, as used herein, includes but is not limited to one or more network
`accessible addresses, device identifiers, electronic identification numbers (such as
`EINs), IP addresses, url and ftp locations, e-mail addresses, names, a distribution list
`including one or more addresses, network drive locations, account numbers or other
`types of addresses that can identify a desired destination or device.
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`‘716 Specification, col. 2, ll. 14-20. As such, the term “address” as used in the limitation of
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`Claim 1, “an RF signal encoding an address and the user selection,” should follow the above
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`definition.
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`Plaintiffs attempt to limit the term “address” to only that of the handheld device by
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`showing that “address” is only used in the specification when discussing the address of a
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`handheld device. First, Plaintiffs rely on the Abstract, which provides, in pertinent part, “[i]n
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`one embodiment, each transmitter has an address.” ‘716 Abstract. However, this statement only
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`represents a single embodiment, not the invention as a whole or Claim 1. Moreover, even if each
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`transmitter has an address, there is no indication that each receiver does not also have an address,
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`as is possible in accordance with the specification’s definition. Defendants next rely on Figure
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`3, along with three other embodiments of ‘716, which illustrate a handheld device 305
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`containing an address 335, ultimately connected to an RF transceiver 315. These embodiments,
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`however, present the same issues as the Abstract. Additionally, it is not clear whether address
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`335 is even the address of the handheld device, as it is only referred to as a “stored address.”
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`‘716 Specification, col. 4, line 42.
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`Plaintiffs next attack Defendants’ reference to an embodiment teaching that “the receiver
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`may have an ID” and the “processing logic may be configured to only accept signals that contain
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`the receiver ID.” ‘716 Specification, col. 77, ll. 23-25. Plaintiffs contend that the term “ID” is
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`used, rather than “address,” indicating that “ID” is used with respect to receivers” and “address”
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`is used with respect to handheld devices. Again, referring to the ‘716 definition, the terms “ID”
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`and “identifiers” are used as express examples of an “address.” Plaintiffs’ argument is therefore
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`illogical unless the Court expressly ignores the definition of an address set forth by Plaintiffs,
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`which it cannot do.
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`Therefore, the Court construes the term “address” as used in the limitation of Claim 1,
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`“an RF signal encoding an address and the user selection,” to mean “an identifier of a desired
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`destination or device, where the address is one or more network accessible addresses, device
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`identifiers, electronic identification numbers (such as EINs), IP addresses, URL and FTP
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`locations, e-mail addresses, names, a distribution list including one or more addresses, network
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`drive locations, or account numbers” as is consistent with the ‘716 Specification.
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`IV. CONCLUSION
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`For the foregoing reasons, the Court construes the term “a plurality of handheld devices”
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`to mean “two or more devices that are usable or operable while held in the hand without the need
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`for external support”; and the term “address” as used in the limitation “an RF signal encoding an
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`address and the user selection” to mean “an identifier of a desired destination or device, where
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`the address is one or more network accessible addresses, device identifiers, electronic
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`identification numbers (such as EINs), IP addresses, URL and FTP locations, e-mail addresses,
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`names, a distribution list including one or more addresses, network drive locations, or account
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`numbers.”
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`IT IS SO ORDERED.
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`Dated: April 9, 2013
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`s/ Christopher A. Boyko
`CHRISTOPHER A. BOYKO
`United States District Judge
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