Case 2:12-cv-00548-MSD-TEM Document 198 Filed 09/25/13 Page 1 of 85 PageID# 5228
`
`UNITED STATES DISTRICT COURT
`
`EASTERN DISTRICT OF VIRGINIA
`
`Norfolk Division
`
`VIRGINIA INNOVATION
`SCIENCES, INC.,
`
`Plaintiff,
`
`SAMSUNG ELECTRONICS CO.,
`LTD., ET AL.,
`
`Defendants.
`
`Case No.: 2:12cv548
`
`OPINION AND ORDER
`
`This
`
`matter
`
`is
`
`before
`
`the
`
`Court
`
`following
`
`a
`
`Markman
`
`hearing, conducted for the purpose of construing nine disputed
`
`claim terms in the patents-in-suit.
`
`After careful consideration
`
`of
`
`the
`
`briefs
`
`submitted
`
`by
`
`the
`
`parties
`
`and
`
`the
`
`arguments
`
`advanced at the Markman hearing, the Court issues the following
`
`Opinion
`
`and Order
`
`detailing
`
`the
`
`claim constructions
`
`in
`
`this
`
`case.
`
`I.
`
`FACTUAL AND PROCEDURAL HISTORY
`
`At issue in this case are six patents:
`
`U.S.
`
`Patent No.
`
`7,899,492 ("the M92 patent"),
`
`U.S. Patent No. 8,050,711 ("the
`
`x711 patent"),
`
`U.S.
`
`Patent No.
`
`8,145,268
`
`("the '268 patent"),
`
`U.S.
`
`Patent No. 8,224,381 ("the
`
`'381 patent"),
`
`U.S.
`
`Patent No.
`
`7,957,733
`
`("the
`
`'733 patent"),
`
`and U.S.
`
`Patent
`
`No.
`
`8,135,398
`
`("the '398 patent").
`
`All of the patents-in-suit claim priority
`
`to the M92 patent, which itself claimed priority to provisional
`
`Page 1 of 85
`
`HTC EXHIBIT 1037
`HTC America, Inc. v. Virginia Innovation Sciences, Inc.
`IPR2017-00870
`
`

`

`Case 2:12-cv-00548-MSD-TEM Document 198 Filed 09/25/13 Page 2 of 85 PageID# 5229
`
`application number 60/588,359,
`
`filed
`
`on
`
`July 16,
`
`2004.
`
`The
`
`'711,
`
`'268,
`
`and
`
`'381
`
`patents
`
`are
`
`continuations
`
`of
`
`the
`
`M92
`
`patent
`
`and
`
`all
`
`four
`
`share
`
`a
`
`substantively
`
`identical
`
`specification
`
`{"the
`
`'492
`
`specification").
`
`The
`
`'733
`
`and
`
`'398
`
`patents are continuations-in-part of the '492 patent; these two
`
`patents
`
`share
`
`a
`
`substantively
`
`identical
`
`specification,
`
`which
`
`includes all of the M92 specification,
`
`along with additional
`
`material
`
`{"the '733 specification").
`
`Each of the patents-in-
`
`suit describes inventions intended to resolve the inconvenience
`
`and impracticability of viewing multimedia content on the small
`
`screens of mobile terminals.
`
`A.
`
`The '492 Patent Family
`
`The M92,
`
`'711,
`
`'268, and '381 patents (collectively, "the
`
`'492
`
`patent
`
`family")
`
`are each
`
`titled
`
`"Methods,
`
`Systems
`
`and
`
`Apparatus
`
`for Displaying Multimedia
`
`Information from Wireless
`
`Communication
`
`Networks."
`
`Their
`
`shared
`
`specification
`
`and
`
`respective
`
`claims
`
`are
`
`directed
`
`toward
`
`methods,
`
`systems,
`
`apparatuses, and computer-readable mediums that can be utilized
`
`to convert multimedia signals appropriate for displaying content
`
`on a mobile terminal so as to render such content appropriate
`
`for display on an alternative display terminal.
`
`The '4 92 specification describes a "mobile terminal signal
`
`conversion module" {"MTSCM").
`
`E.g.,
`
`'492 Patent, 3:52-54.
`
`The
`
`MTSCM
`
`"processes
`
`signals
`
`to
`
`accommodate
`
`reproduction
`
`by
`
`an
`
`Page 2 of 85
`
`

`

`Case 2:12-cv-00548-MSD-TEM Document 198 Filed 09/25/13 Page 3 of 85 PageID# 5230
`
`external device."
`
`Id. at 3:58-59.
`
`To complete this process,
`
`the MTSCM "receives [a] video signal" and "processes the video
`
`signal to provide a converted video signal that has a display
`
`format
`
`and/or signal power level appropriate
`
`for an external
`
`display terminal that
`
`is separate" from the mobile terminal.
`
`Id. at 4:4-20.
`
`Figures 2 and 3 of the '492 specification provide two block
`
`diagrams
`
`of
`
`the
`
`MTSCM.
`
`Figure
`
`2
`
`"illustrates
`
`one
`
`modular
`
`breakdown for the components of the MTSCM."
`
`Id.
`
`at 4:55-56.
`
`"The MTSCM includes a mobile terminal interface module, a signal
`
`conversion module,
`
`and an external device interface."
`
`Id.
`
`at
`
`5:9-11.
`
`"The
`
`mobile
`
`terminal
`
`interface
`
`module
`
`accommodates
`
`receiving the multimedia signal from the mobile terminal."
`
`Id.
`
`at 5:12-13.
`
`"The signal conversion module is in communication
`
`with the mobile terminal interface module and thus accesses the
`
`received
`
`multimedia
`
`signal.
`
`The
`
`signal
`
`conversion
`
`module
`
`recognizes
`
`the
`
`multimedia
`
`signal
`
`format,
`
`and
`
`processes
`
`the
`
`multimedia signal to provide a converted signal."
`
`Id. at 5:22-
`
`27.
`
`Finally,
`
`"[t]he
`
`external
`
`device
`
`interface
`
`is
`
`in
`
`communication
`
`with
`
`the
`
`signal
`
`conversion
`
`module
`
`and
`
`thus
`
`accesses the converted signal.
`
`The external device interface
`
`also allows connection to the external (e.g., display) device .
`
`. . [and] may provide both the feeding of the converted signal
`
`Page 3 of 85
`
`

`

`Case 2:12-cv-00548-MSD-TEM Document 198 Filed 09/25/13 Page 4 of 85 PageID# 5231
`
`to the external device, and driving the external device."
`
`Id.
`
`at 5:34-40.
`
`Figure 3 is another block diagram illustrating an example
`
`of
`
`the MTSCM
`
`that
`
`"includes
`
`additional
`
`detail
`
`regarding the
`
`signal conversion aspect, and illustrates examples of differing
`
`types
`
`of
`
`external
`
`devices
`
`to
`
`which
`
`the
`
`MTSCM
`
`may
`
`provide
`
`converted
`
`signals."
`
`Id.
`
`at
`
`5:44-4 8.
`
`The
`
`MTSCM
`
`depicted
`
`"includes an interface/buffer module that is analogous to the
`
`previously described mobile terminal interface module" and in
`
`which
`
`"[t]he
`
`buffer
`
`and
`
`interfacing
`
`are
`
`configured
`
`to
`
`accommodate signal processing by the remaining elements."
`
`Id.
`
`at 5:57-60.
`
`The MTSCM also includes a video compress decoder
`
`that
`
`"receives
`
`the
`
`multimedia
`
`signal"
`
`and
`
`"accommodates
`
`decompression
`
`of
`
`the
`
`received
`
`multimedia
`
`signal"
`
`through
`
`a
`
`"compression/decompression
`
`(CO-DEC)
`
`module."
`
`Id.
`
`at
`
`6:6-14.
`
`The
`
`video
`
`compress
`
`decoder
`
`"outputs
`
`a
`
`decompressed
`
`digital
`
`multimedia signal that
`
`is passed to the
`
`Digital Analog Video
`
`Encoder (DAVE) and/or the Digital/Digital Video Encoder (DDVE).
`
`The DAVE is configured to prepare signals for analog external
`
`display terminals, and the DDVE is configured to prepare signals
`
`for digital external display terminals."
`
`Id. at 6:26-32.
`
`Both
`
`the DAVE and DDVE "receive the decompressed multimedia signal
`
`and
`
`convert
`
`the
`
`signals
`
`to
`
`the
`
`format(s)
`
`and
`
`signal
`
`power
`
`Page 4 of 85
`
`

`

`Case 2:12-cv-00548-MSD-TEM Document 198 Filed 09/25/13 Page 5 of 85 PageID# 5232
`
`level (s)
`
`required for the terminals to which they interface."
`
`Id. 6:32-36.
`
`Although described as a "module," the MTSCM "may [also] be
`
`provided as
`
`software,
`
`firmware,
`
`hardware,
`
`or any combination
`
`thereof."
`
`Id. at 4:45-47.
`
`And,
`
`"the described functionality
`
`may alternatively be provided by an MTSCM having fewer, greater,
`
`or
`
`differently
`
`named
`
`modules
`
`from
`
`those
`
`illustrated
`
`in
`
`the
`
`figures."
`
`Id. at 4:57-60.
`
`Furthermore, although all components
`
`are shown to reside in a common location, they "may be separated
`
`such that portions of the overall functionality are respectively
`
`provided by the mobile terminal, separate intermediate housing,
`
`and/or the external display device."
`
`Id. at 4:61-67 & 5:1-3.
`
`Finally, "the MTSCM may be independently housed separately from
`
`both the mobile terminal and external display terminal,
`
`with
`
`respective
`
`connections
`
`to
`
`other devices
`
`to
`
`provide
`
`a
`
`system
`
`configuration that includes the three pieces of hardware {mobile
`
`terminal,
`
`conversion box, external display terminal)," id. at
`
`6:62-67, or it "may be located in either the mobile terminal or
`
`the external display," id. at 7:7-8.
`
`B.
`
`The '733 Patent Family
`
`The
`
`'733 and
`
`'398 patents
`
`(collectively "the
`
`'733 patent
`
`family") are both entitled "Methods and Apparatus for Multimedia
`
`Communications
`
`with
`
`Different
`
`User Terminals."
`
`Their shared
`
`specification and respective claims are directed toward methods,
`
`Page 5 of 85
`
`

`

`Case 2:12-cv-00548-MSD-TEM Document 198 Filed 09/25/13 Page 6 of 85 PageID# 5233
`
`systems,
`
`apparatuses,
`
`computer programs,
`
`and computer-readable
`
`mediums for providing "multimedia content to and from various
`
`different devices" through the conversion and sending or routing
`
`of such content.
`
`E.g.,
`
`'733 patent 1:47-49.
`
`The '733 specification describes several different systems
`
`including
`
`an
`
`Internet
`
`content
`
`delivery
`
`system
`
`where
`
`the
`
`"[p]rovision
`
`of
`
`Internet
`
`content
`
`is
`
`customized
`
`according
`
`to
`
`location", id. at 5:39-9:13, a "systematical solution for mobile
`
`payment," id. at 9:14-11:27, a system for "wireless management
`
`of tasks and corresponding alerts" for tasks such as "diaper
`
`management" or "home security monitoring," id. at 11:28-14:42,
`
`and a "system with mobile terminal signal conversion," id.
`
`at
`
`14:43-19:57.
`
`For
`
`the
`
`"mobile
`
`terminal
`
`signal
`
`conversion"
`
`embodiments,
`
`the
`
`'733
`
`family
`
`specification
`
`repeats
`
`the
`
`description
`
`and
`
`figures
`
`of
`
`the
`
`MTSCM
`
`from
`
`the
`
`'492
`
`family
`
`specification.
`
`The '733 specification also describes a "control system for
`
`multimedia communications between different terminals" designed
`
`to implement the '733 patent family's various applications.
`
`Id.
`
`at 19:58-60.
`
`The control system "receives,
`
`selects,
`
`converts,
`
`compresses,
`
`decompresses,
`
`and
`
`rout[e]s
`
`data"
`
`from
`
`one
`
`user
`
`terminal
`
`to
`
`another.
`
`Id.
`
`20:17-19.
`
`The
`
`control
`
`system
`
`described provides both "a routing function and a connecting
`
`function, and functions bi-directionally," in that it "provides
`
`Page 6 of 85
`
`

`

`Case 2:12-cv-00548-MSD-TEM Document 198 Filed 09/25/13 Page 7 of 85 PageID# 5234
`
`for the transmission and receipt of content and converts such
`
`content in both directions depending upon the connected devices
`
`and
`
`corresponding
`
`protocols
`
`used by
`
`such
`
`devices."
`
`Id.
`
`at
`
`19:61-67.
`
`This "Management Center (MC) System" is depicted in
`
`Figure 16 of the '733 specification.1
`
`Content received by the MC System is routed to various user
`
`terminals using a "data package that identifies the destination
`
`device."
`
`Id.
`
`at
`
`21:15-17.
`
`The
`
`destination
`
`device
`
`can
`
`be
`
`identified by a "unique device identifier" in the data package,
`
`or
`
`"by
`
`referencing
`
`portions
`
`of
`
`the
`
`received
`
`data
`
`package
`
`according to
`
`a predefined protocol."
`
`Id.
`
`at
`
`21:18-27.
`
`For
`
`example, "if the data package contains the identifier DIi it is
`
`determined
`
`that
`
`the
`
`communication
`
`is
`
`intended
`
`for
`
`the
`
`main
`
`television
`
`in
`
`the
`
`household."
`
`Id.
`
`at
`
`21:41-43.
`
`"The data
`
`transmission between an MC System and user terminals can be one
`
`way
`
`or
`
`two-way,"
`
`but
`
`"the
`
`data
`
`transmitted
`
`is
`
`preferably
`
`bidirectional."
`
`Id^ at 25:30-39.
`
`In
`
`addition
`
`to
`
`the
`
`MC
`
`System,
`
`Figure
`
`16
`
`depicts
`
`a
`
`Centralized HUB System {"CHS")
`
`that "communicates with the MC
`
`System and/or Internet and/or other networks."
`
`Id. at 23:2-4.
`
`1 The MC System "includes a converter module with routines for
`selecting, extracting, compressing, decompressing, adjusting data, and
`converting the data format and/or power level and/or data package
`size/format."
`Id.
`at 20:42-46.
`It "also includes a mapping table
`as
`and
`routing
`module,"
`as
`well
`data
`storage,
`and
`"may
`include
`software and/or hardware for filtering and treating viruses."
`Id. at
`20:47-21:4.
`
`Page 7 of 85
`
`

`

`Case 2:12-cv-00548-MSD-TEM Document 198 Filed 09/25/13 Page 8 of 85 PageID# 5235
`
`The CHS can "be built into a cable modem, TV set,
`
`top box, or
`
`other device" and "may perform the functions described for the
`
`MC
`
`system."
`
`Id.
`
`at
`
`23:4-8.
`
`Additionally,
`
`"[a]s
`
`shown in
`
`F[igure] 16, the CHS communicates with the Internet through ADSL
`
`or cable and cellular base stations through wireless connection.
`
`The consumer electronics items communicate with the CHS through
`
`wireless
`
`channels
`
`such as
`
`Bluetooth,
`
`UWB,
`
`NFC or wire
`
`line
`
`connection.
`
`[The]
`
`CHS
`
`is
`
`the
`
`center
`
`of
`
`this
`
`wireless
`
`communication system."
`
`Id. at 23:23-28.
`
`Thus, the MC System
`
`receives and converts multimedia content
`
`for
`
`transmission to
`
`various user terminals and the CHS operates as the center of the
`
`wireless
`
`communication system for such
`
`terminals.
`
`Further,
`
`because the specification makes clear the CHS may also perform
`
`the tasks described for the MC System,
`
`it appears
`
`that the
`
`embodiments of the claimed invention include systems utilizing
`
`an MC System only, a CHS only, or both an MC System and CHS.
`
`See, e.g.,
`
`id. at 21:24-26
`
`(describing the process to "obtain
`
`formatting,
`
`address,
`
`or other information" as one that can be
`
`performed by "the MC System (and/or CHS)").
`
`The
`
`'733
`
`specification
`
`also
`
`describes
`
`"a
`
`process
`
`for
`
`directing a television to display content using signals received
`
`from
`
`a
`
`remote
`
`location
`
`through
`
`a
`
`cellular
`
`communications
`
`network."
`
`Id. at 25:63-65.
`
`In this process, the MC System, the
`
`destination
`
`television,
`
`or
`
`a
`
`set-top
`
`box
`
`connected
`
`to
`
`the
`
`8
`
`Page 8 of 85
`
`

`

`Case 2:12-cv-00548-MSD-TEM Document 198 Filed 09/25/13 Page 9 of 85 PageID# 5236
`
`television is "equipped with processing capability for carrying
`
`out the signal conversion requirements, as described in detail .
`
`. . regarding the MTSCM" disclosed in the '492 specification and
`
`again in the '733 specification.
`
`Id. at 26:6-9.
`
`The television
`
`or the set-top box is also "equipped to
`
`receive the signals
`
`wirelessly
`
`from
`
`a
`
`cellular
`
`base
`
`station
`
`and
`
`provide
`
`the
`
`corresponding conversion and direction to display the content on
`
`a given channel."
`
`Id. at 25:67-26:3.
`
`"The process initiates
`
`upon receipt of video content through a cellular communications
`
`channel."
`
`IcL at 26:22-23.
`
`"[T]he content as sent . . . [is]
`
`formatted as required.
`
`. . .
`
`The MTSCM functionality converts
`
`such signals from the cellular network and related format to the
`
`format used by the television (e.g., SD or HD standards)."
`
`Id.
`
`at 26:28-32.
`
`"Finally, the television is directed to display
`
`the converted content on a predetermined channel," such as "a
`
`tunable channel
`
`that
`
`is otherwise unused for other forms of
`
`content."
`
`IcL at 26:41-44.
`
`C.
`
`Procedural History
`
`In
`
`the
`
`instant
`
`patent
`
`infringement
`
`action,
`
`plaintiff
`
`Virginia
`
`Innovation
`
`Sciences,
`
`Inc.
`
`("VIS")
`
`alleges
`
`that
`
`defendants
`
`Samsung
`
`Electronics
`
`Co.,
`
`LTD,
`
`Samsung
`
`Electronics
`
`America,
`
`Inc.,
`
`and
`
`Samsung
`
`Telecommunications
`
`America,
`
`LLC
`
`(collectively
`
`"Samsung")
`
`have
`
`directly,
`
`indirectly,
`
`and
`
`willfully
`
`infringed
`
`the
`
`patents-in-suit
`
`by
`
`making,
`
`using,
`
`Page 9 of 85
`
`

`

`Case 2:12-cv-00548-MSD-TEM Document 198 Filed 09/25/13 Page 10 of 85 PageID# 5237
`
`offering for sale,
`
`selling,
`
`and/or importing a wide range of
`
`accused
`
`products,
`
`including
`
`smartphones,
`
`tablets,
`
`Blue-ray
`
`players,
`
`and hubs.
`
`Samsung denies
`
`any infringement,
`
`either
`
`literal
`
`or
`
`under
`
`the
`
`doctrine
`
`of
`
`equivalents,
`
`and
`
`asserts
`
`several
`
`affirmative
`
`defenses,
`
`including
`
`invalidity
`
`of
`
`all
`
`patents-in-suit,
`
`prosecution
`
`history
`
`estoppel,
`
`and
`
`other
`
`equitable
`
`doctrines.
`
`Additionally,
`
`Samsung
`
`alleges
`
`counterclaims
`
`seeking
`
`declarations
`
`of
`
`non-infringement
`
`and
`
`invalidity for each of the patents-in-suit.
`
`The Court held its Markman hearing in this matter on June
`
`11,
`
`2013 at which it heard argument
`
`concerning the disputed
`
`claim terms reviewed below.
`
`Since this hearing, there have been
`
`numerous
`
`filings
`
`in
`
`this
`
`matter and several
`
`motions
`
`remain
`
`pending before the Court, in various stages of briefing.
`
`The
`
`Court does not address such matters here, but instead discusses
`
`only the proper construction of the disputed claim terms argued
`
`at the June 11, 2013 Markman hearing.
`
`II.
`
`CLAIM CONSTRUCTION PROCEDURE
`
`In
`
`Markman
`
`v.
`
`Westview
`
`Instruments,
`
`the
`
`United
`
`States
`
`Supreme Court succinctly explained the basis for, and importance
`
`of, claim construction:
`
`The Constitution empowers Congress "[t]o promote
`the Progress of Science and useful Arts, by securing
`for
`limited
`Times
`to
`Authors
`and
`Inventors
`the
`exclusive
`Right
`to
`their
`respective
`Writings
`and
`Discoveries."
`Art.
`I,
`§ 8,
`cl.
`8.
`Congress first
`
`10
`
`Page 10 of 85
`
`

`

`Case 2:12-cv-00548-MSD-TEM Document 198 Filed 09/25/13 Page 11 of 85 PageID# 5238
`
`exercised this authority in 1790, when it provided for
`the
`issuance of
`"letters patent,"
`Act
`of
`Apr.
`10,
`like their
`1790,
`ch.
`7,
`§
`1,
`1 Stat.
`109,
`which,
`modern counterparts,
`granted inventors "the right to
`exclude others from making, using, offering for sale,
`selling,
`or
`importing
`the
`patented
`invention,"
`in
`exchange
`for
`full
`disclosure
`of
`an
`invention,
`H.
`Schwartz, Patent Law and Practice 1, 33 {2d ed. 1995) .
`It
`has
`long
`been
`understood
`that
`a
`patent
`must
`describe
`the
`exact
`scope
`of
`an
`invention and
`its
`manufacture to "secure to [the patentee] all to which
`he is entitled,
`[and] to apprise the public of what is
`still open to them."
`McClain v. Ortmayer,
`141 U.S.
`419,
`424
`(1891).
`Under the modern American system,
`these objectives are served by two distinct elements
`of
`a
`patent
`document.
`First,
`it
`contains
`a
`specification describing the invention "in such full,
`clear,
`concise,
`and
`exact
`terms
`as
`to enable
`any
`person skilled in the art ... to make and use the
`same."
`35 U.S.C.
`§ 112;
`see also 3 E.
`Lipscomb,
`Walker on Patents
`§10:1,
`pp.
`183-184
`(3d
`ed.
`1985)
`(Lipscomb)
`(listing
`the
`requirements
`for
`a
`Second, a patent includes one or more
`specification).
`"claims,"
`which
`"particularly
`poin[t]
`out
`and
`distinctly
`clai[m]
`the
`subject
`matter
`which
`the
`applicant regards as his invention."
`35 U.S.C. § 112.
`"A claim covers and secures a process,
`a machine,
`a
`manufacture, a composition of matter, or a design, but
`never
`the
`function
`or
`result
`of
`either,
`nor
`the
`scientific
`explanation
`of
`their
`operation."
`6
`Lipscomb § 21.17, at 315-316.
`The claim "define[s]
`the scope of a patent grant," 3 id. § 11:1, at 280,
`and functions to forbid not only exact copies of an
`invention, but products that go to "the heart of an
`invention but avoids the literal language of the claim
`by making a noncritical change," Schwartz, supra, at
`82. . . .
`charge what
`lawsuits
`patent
`Characteristically,
`is known as infringement, Schwartz, supra, at 75, and
`rest
`on
`allegations
`that
`the
`defendant
`"without
`authority
`ma[de],
`use[d]
`or
`[sold
`the]
`patented
`invention, within the United States during the term of
`the patent therefor
`. . . ."
`35 U.S.C.
`§ 271(a).
`Victory in an infringement suit requires a finding
`that the patent claim "covers the alleged infringer's
`product
`or process,"
`which
`in
`turn
`necessitates
`a
`determination of "what the words in the claim mean."
`
`11
`
`Page 11 of 85
`
`

`

`Case 2:12-cv-00548-MSD-TEM Document 198 Filed 09/25/13 Page 12 of 85 PageID# 5239
`
`Schwartz, supra, at 80; see also 3 Lipscomb § 11:2, at
`288-290.
`
`Markman v. Westview Instruments, 517 U.S. 370, 373-74 (1996).
`
`It
`
`is well-settled that
`
`a determination of
`
`infringement
`
`requires a two-step analysis:
`
`"First, the court determines the
`
`scope and meaning of
`
`the patent claims asserted" and second,
`
`"the properly construed claims are compared to the allegedly
`
`infringing device."
`
`Cybor Corp. v. FAS Techs., Inc., 138 F.3d
`
`1448, 1454 (Fed. Cir. 1998) (en banc) (citing Markman, 517 U.S.
`
`at 371-73).
`
`In conducting this analysis, it must be remembered
`
`that
`
`"[i]t is a
`
`'bedrock principle'
`
`of patent law that
`
`'the
`
`claims of a patent define the invention to which the patentee is
`
`entitled the right to exclude.'"
`
`Phillips v. AWH Corp., 415
`
`F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure
`
`Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d
`
`1111,
`
`1115
`
`{Fed.
`
`Cir.
`
`2004));
`
`see
`
`Vitronics
`
`Corp.
`
`v.
`
`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) ("First,
`
`we look to the words of the claims themselves, both asserted and
`
`nonasserted, to define the scope of the patented invention.").
`
`A.
`
`Claim Construction Principles
`
`Focusing on the first step of the infringement analysis,
`
`the Federal Circuit has repeatedly stated that "the words of a
`
`claim
`
`'are
`
`generally
`
`given
`
`their
`
`ordinary
`
`and
`
`customary
`
`meaning,'" and that "the ordinary and customary meaning of a
`
`12
`
`Page 12 of 85
`
`

`

`Case 2:12-cv-00548-MSD-TEM Document 198 Filed 09/25/13 Page 13 of 85 PageID# 5240
`
`claim term is the meaning that the term would have to a person
`
`of ordinary skill in the art in question at
`
`the time of the
`
`invention."
`
`Phillips,
`
`415 F.3d at 1312-13 (quoting Vitronics,
`
`90 F.3d at
`
`1582).
`
`This provides "an objective baseline from
`
`which to begin claim interpretation"
`
`and is based upon "the
`
`well-settled understanding that inventors are typically persons
`
`skilled in
`
`the
`
`field of
`
`the
`
`invention and that patents are
`
`addressed to and intended to be read by others of skill in the
`
`pertinent art."
`
`Id. at 1313.
`
`As noted by the Federal Circuit:
`
`It is the person of ordinary skill in the field of the
`invention through whose eyes the claims are construed.
`Such person is deemed to read the words used in the
`patent
`documents
`with
`an
`understanding
`of
`their
`meaning in the field, and to have knowledge of any
`special
`meaning
`and
`usage
`in
`the
`field.
`The
`inventor's
`words
`that
`are
`used
`to
`describe
`the
`invention-the
`inventor's
`lexicography-must
`be
`understood and interpreted by the court as they would
`be
`understood and interpreted by a person in
`that
`field
`of
`technology.
`Thus
`the
`court
`starts
`the
`decisionmaking process by reviewing the same resources
`as would that person,
`viz.,
`the patent specification
`and the prosecution history.
`
`Id.
`
`(quoting Multiform Desiccants,
`
`Inc. v. Medzam,
`
`Ltd.,
`
`133
`
`F.3d 1473, 1477 (Fed. Cir. 1998)).
`
`However, "'[i]n some cases,
`
`the ordinary meaning of claim language as understood by a person
`
`of skill in the art may be readily apparent even to lay judges,
`
`and claim construction in such cases involves little more than
`
`the application of
`
`the widely
`
`accepted meaning of commonly
`
`understood words.'"
`
`Acumed LLC v. Stryker Corp., 483 F.3d 800,
`
`13
`
`Page 13 of 85
`
`

`

`Case 2:12-cv-00548-MSD-TEM Document 198 Filed 09/25/13 Page 14 of 85 PageID# 5241
`
`805
`
`(Fed.
`
`Cir.
`
`2007)
`
`(quoting
`
`Phillips,
`
`415 F.3d at
`
`1314).
`
`Finally,
`
`when construing claim terms and phrases,
`
`the Court
`
`cannot add or
`
`subtract words
`
`from
`
`the
`
`claims
`
`or
`
`appeal
`
`to
`
`"abstract policy
`
`considerations"
`
`to
`
`broaden or narrow their
`
`scope.
`
`SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331,
`
`1339-40 (Fed. Cir. 2005); see Quantum Corp. v. Rodime, PLC, 65
`
`F.3d 1577, 1584 (Fed. Cir. 1995)
`
`("[I]t is well settled that no
`
`matter how great the temptations of fairness or policy making,
`
`courts do not redraft claims.").
`
`B.
`
`Types of Evidence to Be Considered
`
`In determining the meaning of disputed terms or phrases,
`
`the
`
`Court
`
`must
`
`first
`
`examine
`
`the
`
`claims
`
`themselves.
`
`See
`
`Phillips, 415 F.3d at 1312 (quoting Innova/Pure Water, 381 F.3d
`
`at 1115); see also Vitronics, 90 F.3d at 1582 ("[W]e look to the
`
`words of the claims themselves ... to define the scope of the
`
`patented invention.").
`
`Indeed the Federal Circuit has stated
`
`that "the claims themselves," both asserted and unasserted, can
`
`be "valuable sources of enlightenment as to the meaning of a
`
`claim term," in part because "claim terms are normally used
`
`consistently throughout the patent."
`
`Phillips,
`
`415 F.3d at
`
`1314.
`
`Furthermore,
`
`differences
`
`in
`
`claims
`
`can
`
`also
`
`be
`
`enlightening, "[f]or example, the presence of a dependent claim
`
`that adds a particular limitation gives rise to a presumption
`
`14
`
`Page 14 of 85
`
`

`

`Case 2:12-cv-00548-MSD-TEM Document 198 Filed 09/25/13 Page 15 of 85 PageID# 5242
`
`that
`
`the
`
`limitation
`
`in
`
`question
`
`is
`
`not
`
`present
`
`in
`
`the
`
`independent claim."
`
`Id. at 1314-15.
`
`The claims,
`
`however,
`
`"do not stand alone" and "'must be
`
`read in view of the specification, of which they are a part.'"
`
`Id. at 1315 (quoting Markman v. Westview Instruments, Inc.,
`
`52
`
`F.3d 967,
`
`979 (Fed. Cir.
`
`1995)
`
`(en banc)); see also Vitronics,
`
`90 F.3d at 1582 {"[T]he specification is always highly relevant
`
`to the claim construction analysis.
`
`Usually, it is dispositive;
`
`it is the single
`
`best
`
`guide
`
`to the meaning of a disputed
`
`term.");
`
`Multiform Desiccants,
`
`133
`
`F.3d
`
`at
`
`1478
`
`("The best
`
`source for understanding a technical term is the specification
`
`from which it arose, informed, as needed, by the prosecution
`
`history.").
`
`The
`
`specification,
`
`as
`
`required
`
`by
`
`statute,
`
`describes
`
`the manner and process of making
`
`and using
`
`the
`
`patented invention, and "[t]hus claims must be construed so as
`
`to be consistent with the specification . . . ."
`
`Merck & Co. v.
`
`Teva Pharms. USA, Inc., 347 F.3d 1367, 1371
`
`(Fed. Cir. 2003);
`
`see
`
`35
`
`U.S.
`
`§
`
`112
`
`(establishing
`
`the
`
`requirement
`
`that
`
`the
`
`specification describe the invention in "full, clear, concise,
`
`and exact terms . . . ").
`
`The Federal Circuit and Supreme Court
`
`have thus long emphasized the specification's important role in
`
`claim construction, noting that, usually, the specification "is
`
`dispositive," as it is "the single best guide to the meaning of
`
`the disputed
`
`term."
`
`Phillips,
`
`415
`
`F.3d
`
`at
`
`1315
`
`(quoting
`
`15
`
`Page 15 of 85
`
`

`

`Case 2:12-cv-00548-MSD-TEM Document 198 Filed 09/25/13 Page 16 of 85 PageID# 5243
`
`Vitronics,
`
`90
`
`F.3d at
`
`1582);
`
`see Markman,
`
`517
`
`U.S.
`
`at
`
`389
`
`(referencing the "standard construction rule that a term can be
`
`defined only in a way that comports with the instrument as a
`
`whole"); Multiform Desiccants, 133 F.3d at 1478.
`
`In addition
`
`to
`
`the claims
`
`and specification,
`
`the Court
`
`should consider the prosecution history, which consists of the
`
`complete record of
`
`the proceedings before
`
`the United States
`
`Patent and Trademark Office
`
`("PTO"),
`
`including the prior art
`
`cited during the examination of the patent and any subsequent
`
`reexaminations.
`
`Phillips, 415 F.3d at 1317.
`
`The prosecution
`
`history
`
`"provides
`
`evidence of
`
`how the
`
`PTO and the
`
`inventor
`
`understood the patent" and "can often inform the meaning of the
`
`claim language by demonstrating how the inventor understood the
`
`invention and whether the inventor limited the invention in the
`
`course of prosecution, making the claim scope narrower than it
`
`would otherwise be."
`
`Id.
`
`(citing Vitronics,
`
`90 F.3d at 1582-
`
`83); see Chimie v. PPG Indus., Inc.,
`
`402 F.3d 1371,
`
`1384 (Fed.
`
`Cir.
`
`2005)
`
`(indicating
`
`that
`
`the
`
`purpose
`
`of
`
`consulting
`
`the
`
`prosecution history as part of claim construction is to exclude
`
`any disclaimed interpretation).
`
`"At
`
`the
`
`same
`
`time,
`
`because
`
`prosecution history represents an ongoing negotiation between
`
`the PTO and the inventor,
`
`'it often lacks the clarity of the
`
`specification and thus
`
`is
`
`less useful
`
`for claim construction
`
`purposes.'" Trading Technologies Int'l,
`
`Inc.
`
`v.
`
`eSpeed,
`
`Inc.,
`
`16
`
`Page 16 of 85
`
`

`

`Case 2:12-cv-00548-MSD-TEM Document 198 Filed 09/25/13 Page 17 of 85 PageID# 5244
`
`595 F.3d 1340, 1352 (Fed. Cir. 2010)
`
`(quoting Netcraft Corp. v.
`
`eBay, Inc., 549 F.3d 1394, 1401 (Fed. Cir. 2008)).
`
`The
`
`Court
`
`may
`
`also
`
`examine
`
`extrinsic
`
`evidence,
`
`which
`
`includes "all evidence external to the patent and prosecution
`
`history, including expert and inventor testimony, dictionaries,
`
`and learned
`
`treatises."
`
`Markman,
`
`52
`
`F.3d at
`
`980.
`
`Expert
`
`testimony can be useful:
`
`to
`to provide background on the technology at issue,
`explain how an invention works,
`to ensure that the
`court's understanding of the technical aspects of the
`patent is consistent with that of a person of skill in
`the art, or to establish that a particular term in the
`patent or the prior art has a particular meaning in
`the pertinent field.
`
`Phillips,
`
`415 F.3d at
`
`1318;
`
`see also Pitney Bowes,
`
`Inc.
`
`v.
`
`Hewlett-Packard Co.,
`
`182 F.3d 1298,
`
`1308-09
`
`(Fed.
`
`Cir.
`
`1999).
`
`Technical dictionaries may also provide the Court with a better
`
`understanding of the underlying technology and the way in which
`
`one of skill in the art might use the claim terms.
`
`Phillips,
`
`415 F.3d at 1318;
`
`see also Vitronics,
`
`90 F.3d at
`
`1584 n.6.
`
`General usage dictionaries may also be consulted, as they are at
`
`times "useful to assist in understanding the commonly understood
`
`meaning of words."
`
`Phillips, 415 F.3d at 1322.
`
`Specifically,
`
`"[a] dictionary definition has the value of being an unbiased
`
`source
`
`'accessible to
`
`the public in advance of
`
`litigation.'"
`
`17
`
`Page 17 of 85
`
`

`

`Case 2:12-cv-00548-MSD-TEM Document 198 Filed 09/25/13 Page 18 of 85 PageID# 5245
`
`Id. (quoting Vitronics, 90 F.3d at 1585).2
`
`However, the Federal
`
`Circuit
`
`cautions
`
`that
`
`"'a
`
`general-usage
`
`dictionary
`
`cannot
`
`overcome art-specific evidence of the meaning' of a claim term,"
`
`that
`
`"the use of
`
`the dictionary may extend patent protection
`
`beyond
`
`what
`
`should
`
`properly
`
`be
`
`afforded
`
`by
`
`the
`
`inventor's
`
`patent," and that "[t]here is no guarantee that a term is used
`
`in the same way in a treatise as it would be by the patentee."
`
`Phillips, 415 F.3d at 1322 {quoting Vanderlande Indus. Nderland
`
`BV
`
`v.
`
`I.T.C.,
`
`366
`
`F.3d
`
`1311,
`
`1321
`
`(2004)).
`
`Additionally,
`
`"different dictionaries may contain somewhat different sets of
`
`definitions for the same words.
`
`A claim should not rise or fall
`
`based upon the preferences of a particular dictionary editor, or
`
`the
`
`court's
`
`independent
`
`decision,
`
`uninformed
`
`by
`
`the
`
`specification, to rely on one dictionary rather than another."
`
`Id-
`
`Thus, "while extrinsic evidence 'can shed useful light on
`
`the relevant art,' ... it is 'less significant than the
`
`the Federal Circuit expressly discounted the
`2 In Phillips,
`approach taken in Texas Digital Systems, Inc. v. Telegenix, Inc., 308
`F.3d 1193 (Fed. Cir. 2002), in which the court placed greater emphasis
`on dictionary definitions of claim terms.
`Phillips, 415 F.3d at 1319-
`24 ("Although the concern expressed by the court in Texas Digital was
`valid,
`the methodology
`it
`adopted
`placed
`too
`much
`reliance
`on
`extrinsic sources such as dictionaries, treatises, and encyclopedias
`and too little on intrinsic sources, in particular the specification
`and prosecution history.").
`The
`Phillips
`opinion reaffirmed the
`approach used in Vitronics, Markman, and Innova as the proper approach
`for claim construction, but acknowledged that there was "no magic
`formula," and that a district court is not "barred from considering
`any particular sources ... as long as those sources are not used to
`contradict claim meaning that is unambiguous in light of the intrinsic
`evidence."
`Id. at 1324.
`
`18
`
`Page 18 of 85
`
`

`

`Case 2:12-cv-00548-MSD-TEM Document 198 Filed 09/25/13 Page 19 of 85 PageID# 5246
`
`intrinsic record in determining "the legally operative meaning
`
`of claim language."'"
`
`Phillips, 415 F.3d at 1317 (quoting C.R.
`
`Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir.
`
`2004)).
`
`With the foregoing principles in mind,
`
`the Court will now
`
`examine the patents and the disputed claim terms.
`
`III. ANALYSIS OF THE DISPUTED CLAIM TERMS
`
`In advance of the Markman hearing conducted by this Court,
`
`the parties submitted a joint claim construction and prehearing
`
`statement that included three (3) agreed upon claim terms and
`
`nine (9) disputed claim terms.
`
`The Court adopts the parties'
`
`stipulated constructions of the agreed upon terms3 and addresses
`
`each of the disputed claim terms herein.
`
`Accordingly, the Court adopts the following constructions:
`
`1) M[comprises ... ] a power level appropriate for driving the
`alternative display terminal" is construed to mean "[comprises
`...] a signal power level appropriate for driving the alternative
`display terminal."
`
`2) wa power level required by the alternative display terminal0
`is construed to mean "a signal power level required by the
`alternative display terminal."
`
`3) "housing interface" is construed to mean "interface of
`housing."
`
`the
`
`19
`
`Page 19 of 85
`
`

`

`Case 2:12-cv-00548-MSD-TEM Document 198 Filed 09/25/13 Page 20 of 85 PageID# 5247
`
`1.
`
`"jnoJbile terminal"
`
`a. Proposed Constructions
`
`VIS: hand-held mobile device such as a cellular phone or
`personal
`digital
`assistant,
`not
`a
`desktop
`or
`laptop
`computer
`
`Samsung: a portable cellular-equipped device
`
`b. Discussion
`
`VIS's construction of this term is derived from a portion of
`
`the '492 specification, repeated in the '733 specification, that
`
`attempts to define the disputed term.
`
`Samsung proposes a more
`
`limited construction,
`
`based on the embodiments listed in the
`
`specifications,
`
`that
`
`requires
`
`that
`
`all
`
`"mobile terminals" be
`
`"cellular-equipped," or capable of receiving communications from
`
`a cellular communications network.
`
`At the Markman hearing, the
`
`parties agreed that a proper construction of this disputed term
`
`would include the descriptors "device" and "portable."
`
`They
`
`disagreed
`
`as
`
`to
`
`what
`
`further
`
`limitations,
`
`if
`
`any,
`
`were
`
`appropriate
`
`based
`
`on
`
`the
`
`intrinsic
`
`and
`
`extrinsic
`
`evidence.
`
`Before considering this question, the Court first addresses the
`
`argument that the patentee's attempted definition of this term
`
`should control.
`
`Patent law allows a patentee to be a lexicographer, meaning
`
`that he may "use terms in a manner other than their ordinary
`
`meaning."
`
`Vitronics,
`
`90 F.3d at 1582.
`
`However,
`
`"[t]o act as
`
`its own lexicographer,
`
`a patentee must
`
`'clearly set
`
`forth a
`
`20
`
`Page 20 of 85
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`

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`Case 2:12-cv-00548-MSD-TEM Document 198 Filed