Case 1:16-cv-21761-KMM Document 103 Entered on FLSD Docket 09/06/2017 Page 1 of 11
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`UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF FLORIDA
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`Case No. 1:16-cv-21761-KMM
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`PRISUA ENGINEERING CORP.,
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`Plaintiff,
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`v.
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`SAMSUNG ELECTRONICS CO., LTD. et al.,
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`Defendants.
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`/ M
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`ARKMAN ORDER
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`THIS CAUSE came before the Court upon the Markman Hearing held before the Court
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`on July 7, 2017, relative to United States Patent No. 8,650,591 (the “‘591 Patent”). Plaintiff
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`Prisua Engineering Corp. (“Prisua”) filed a claim construction brief (ECF No. 42). Defendants
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`Samsung Electronics Co., Ltd. (“Samsung Korea”), Samsung Electronics America, Inc.
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`(“Samsung America”), and Samsung Electronics Latinoamerica Miami (“Samsung Miami”)
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`(collectively, “Samsung”) responded (ECF No. 50). Prisua replied (ECF No. 53), and Samsung
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`filed a surreply (ECF No. 72). UPON CONSIDERATION of the ‘591 Patent, the prosecution
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`history, the Parties’ briefs, the evidence presented at the Markman Hearing, the arguments of
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`counsel, the pertinent portions of the record, and being otherwise fully advised in the premises,
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`this Court enters the following Order.
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`I.
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`BACKGROUND
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`On May 17, 2016, Prisua, a corporation organized in Florida with a principal place of
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`business in Coral Gables, Florida, filed a Complaint (ECF No. 1) for patent infringement against
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`Samsung pursuant to Title 35 of the United States Code, Section 271. See Pl.’s Compl. ¶¶ 1–5.
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`Samsung v. Prisua
`IPR2017-01188
`Samsung Ex. 1018
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`

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`Prisua owns the ‘591 Patent, entitled “Video Enabled Digital Devices for Embedding
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`User Data in Interactive Applications.” Id. ¶ 9. The ‘591 Patent was filed by the inventor, Dr.
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`Yolanda Prieto, an officer and director of Prisua, on March 8, 2011, and issued by the U.S.
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`Patent Office on February 11, 2014. Id. ¶¶ 10–11. Claim 1 of the ‘591 Patent states in relevant
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`part:
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`An interactive media apparatus for generating a displayable edited video data
`stream from an original video data stream, wherein at least one pixel in a frame
`of said original video data stream is digitally extracted to form a first image, said
`first image then replaced by a second image resulting from a digital extraction of
`at least one pixel in a frame of a user input video data stream, said apparatus
`comprising:
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`an image capture device capturing the user input video data stream;
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`an image display device displaying the original video stream;
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`a data entry device, operably coupled with the image capture device and the
`image display device, operated by a user to select the at least one pixel in the
`frame of the user input video data stream to use as the second image, and further
`operated by the user to select the at least one pixel to use as the first image;
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`wherein said data entry device is selected from a group of devices consisting of: a
`keyboard, a display, a wireless communication capability device, and an external
`memory device;
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`a digital processing unit operably coupled with the data entry device, said digital
`processing unit performing:
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`identifying the selected at least one pixel in the frame of the user input video
`data stream;
`extracting the identified at least one pixel as the second image;
`storing the second image in a memory device operably coupled with the
`interactive media apparatus;
`receiving a selection of the first image from the original video data stream;
`extracting the first image;
`spatially matching an area of the second image to an area of the first image in
`the original video data stream, wherein spatially matching the areas results in
`equal spatial lengths and widths between said two spatially matched areas;
`and
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`2
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`performing a substitution of the spatially matched first image with the
`spatially matched second image to generate the displayable edited video data
`stream from the original video data stream.
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`Id. ¶ 13 (emphasis added). Claims 3 and 4 of the ‘591 patent, which are also the subject
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`of this Markman Order, are dependent upon Claim 1.
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`Prisua alleges that Samsung manufactures and sells mobile phones, tablets, and cameras
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`that have a camera functionality that violates the ‘591 Patent. Id. ¶ 14. Prisua alleges that these
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`infringing products include, but are not limited to: Galaxy S4, S4 mini, S5, SIII, and Samsung
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`Mega products, the Samsung Galaxy Note 10.1, Galaxy Note Pro, and Galaxy Tab Pro tablets,
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`and NX300M, NX2000, WB800F, WB350 and WB250 cameras. Id.
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`Prisua alleges that these products include “an image capture device in the form of a front
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`and back digital camera, a display device in the form of an LCD screen, and a data entry device
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`in the form of a touchscreen keyboard.” Id. ¶ 15. The products also include a digital processing
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`unit. Samsung’s products have a “Best Face” application that uses the product’s image capture
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`device to capture images. Users of the product are then able to select a portion of the captured
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`images along with a portion of the original video data stream. The product’s digital processing
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`unit then uses its memory and processing components to “spatially match[] the second image
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`(from the user input video data stream) to the first image (from the original video stream).” Id.
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`This process substitutes the first image with the second image—i.e., the “user-selected ‘Best
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`Face.’” Id. Prisua alleges that the above violates Prisua’s ‘591 Patent.
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`On August 29, 2014, Prisua sent Samsung America a letter including a detailed claim
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`chart alleging Samsung’s patent infringement. Id. ¶ 16. This letter prompted discussions
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`between Prisua and Samsung Korea; Prisua proposed a license agreement, which Samsung
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`rejected. Id. ¶ 18.
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`In its Complaint, Prisua alleges direct infringement of the ‘591 Patent against the three
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`Defendants. Id. Counts 1–3. For relief, Prisua requests that the Court: (1) find Samsung liable
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`for infringement of the ‘591 Patent; (2) enjoin and restrain Samsung from importing, selling,
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`and/or offering to sell any products that infringe the ‘591 Patent; (3) award Prisua damages and
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`treble such amount pursuant to 35 U.S.C. § 284; (4) find this case exceptional under 35 U.S.C. §
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`285 and therefore award Prisua reasonable attorneys’ fees and expenses, taxable costs and
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`disbursements, and prejudgment and post-judgment interest; and (5) award Prisua such other and
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`further relief as the Court deems just and proper.
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`On March 9, 2017, the Court denied Samsung’s Motion to Dismiss (ECF No. 56). The
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`Parties have since completed claim construction briefing. On June 16, 2017, following a
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`hearing, the Court denied without prejudice Samsung’s Motion to Stay the case pending inter
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`partes review (ECF No. 62).
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`The Court held its Markman Hearing on July 7, 2017. The terms at issue span three of
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`the ‘591 Patent’s asserted claims: independent Claim 1 and dependent Claims 3 and 4. In
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`support of their constructions, the Parties provide both intrinsic and extrinsic evidence, including
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`deposition testimony from Dr. Prieto, the inventor, as well as two experts.
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`II.
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`STANDARD OF REVIEW
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`A patent must “conclude with one or more claims particularly pointing out and distinctly
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`claiming the subject matter” of the invention. 35 U.S.C. § 112(b). A patent’s claims are invalid
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`as indefinite under § 112 if the “claims, viewed in light of the specification and prosecution
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`history,” fail to “inform those skilled in the art about the scope of the invention with reasonable
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`certainty.” Nautilus, Inc. v. Boisig Instr., Inc., 134 S. Ct. 2130, 2129–30 (2014). This is so that
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`the patent “afford[s] clear notice of what is claimed.” Id. Whether a claim is invalid for
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`indefiniteness is a question of law for the Court. See Teva Pharm. USA, Inc. v. Sandoz, Inc., 789
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`1335, 1341 (Fed. Cir. 2015).1
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`It is the Court’s role to construe the claims of the disputed patent. Markman v. Westview
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`Instruments, Inc., 517 U.S. 370, 388–90 (1996). The Court principally looks to the claims made
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`in the patent, specification, and prosecution history. Alza Corp. v. Mylan Labortories, Inc., 391
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`F.3d 1365, 1370 (Fed. Cir. 2004); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
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`(Fed. Cir. 1996). These sources are considered intrinsic evidence. Vitronics Corp., 90 F.3d at
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`1582.
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`In approaching claim construction, the words of the claim are to be given their ordinary
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`and customary meaning as understood by one with ordinary skill in the art at the time of the
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`invention. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005); see also Elekta
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`Instrument S.A. v. O.U.R. Scientific Intern., Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000)
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`(“[a]bsent an express intent to impart a novel meaning, claim terms take on their ordinary
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`meaning.”). “[C]laims are interpreted with an eye toward giving effect to all terms in the
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`claim.” Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006). Otherwise,
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`characteristics described in a claim would be considered superfluous, rendering the scope of
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`the patent ambiguous and leaving examiners to guess about which claim language is deemed
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`necessary and which is non-limiting elaboration. Id. Additionally, courts must pay particular
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`attention to the patentees’ own definition of the claim terms, which control. Oakley, Inc. v.
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`Sunglass Hut Intern., 316 F.3d 1331, 1341 (Fed. Cir. 2003) (“a patentee may be his or her
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`own lexicographer by defining the claim terms.”).
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`1 As discussed further below, Samsung raises indefiniteness challenges to multiple terms at issue
`in this case.
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`With respect to the relationship between the specification and the claims, the Federal
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`Circuit has explained that claims must be read in view of the specification and that the
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`specification may act as a sort of dictionary, which explains the invention and may define terms
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`used in the claims. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995),
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`aff’d 517 U.S. 370 (1996). The Federal Circuit has cautioned, however,
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`that “there is
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`sometimes a fine line between reading a claim in light of the specification, and reading a
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`limitation into the claim from the specification.” Comark Communications, Inc. v. Harris
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`Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998).
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`In addition to intrinsic evidence, courts may rely on extrinsic evidence, which includes
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`expert and inventor testimony as well as dictionaries and technical treatises. Markman, 52
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`F.3d at 980. Extrinsic evidence, however, is viewed as less reliable than the patent and its
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`prosecution history in determining how to read claim terms. Phillips, 415 F.3d at 1318.
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`III.
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`ANALYSIS
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`As addressed at the Markman Hearing and in their filings, the Parties have stipulated to
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`the following: (1) the term “extracting” shall be defined as “select and separate out”; and (2)
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`“performing a substitution” shall be assigned its plain meaning. See ECF No. 40; see also
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`Markman Hearing Transcript at 25:18–26:1.
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`For the remaining terms in dispute, the Court construes them as follows:
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`A. “User input video data stream” and “original video data stream”
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`During the Markman Hearing and in their briefs, the Parties addressed the terms “user
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`input video data stream” and “original video data stream.” together due to the overlap in the
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`arguments for each construction. The Court likewise addresses these terms together. Both terms
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`are found in Claim 1 of the ‘591 Patent.
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`Prisua defines “user input video data stream” as “a sequence of images digitally recorded
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`by a user separate from the original video data stream.” Samsung defines this term as “a
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`digitally recorded sequence of frames contained in a format for displaying the frames as a motion
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`picture (e.g., ASF, MPEG-2, AVI) that is provided by the user.” In similar fashion, Prisua
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`defines “original video data stream” as “a digitally recorded sequence of images that is to be
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`modified,” while Samsung defines it as “a digitally recorded sequence of frames contained in a
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`format for displaying the frames as a motion picture (e.g., ASF, MPEG-2, AVI) that is to be
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`modified.” During the Markman Hearing, Prisua indicated that it would consent to compromise
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`by substituting the phrase “image frames” in place of “images” in each of Prisua’s constructions;
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`however, Samsung did not indicate that it agreed to this alteration. See Reply at 4 (Prisua
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`describing that it believes “video data stream” can be properly defined as either “a sequence of
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`images” of a “sequence of image frames” because there is no material distinction between the
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`two phrases).
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`Central to the construction of these two terms is the meaning of “video data stream.”
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`According to Samsung, Prisua’s construction is an attempt “to broaden ‘video’” (and by
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`extension the ‘591 Patent) to “include still images and a sequence of still images.” See Response
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`at 7, n.1. Samsung cites to the English Oxford Dictionary for its definition of video as “[t]he
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`recording, reproducing, or broadcasting of moving visual images” or “a recording of moving
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`visual images made digitally or on videotape.” Id. (Ex. K). Samsung claims that one of ordinary
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`skill in the art would understand a “video data stream” to be “a digitally recorded sequence of
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`frames contained in a format for displaying the frames as a motion picture.” See Delp
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`Declaration ¶ 28 (Ex. I). Samsung cites to the testimony of its expert, Dr. Edward J. Delp, for
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`the principle that a video portrays motion, while a still image2 does not necessarily do so. Id. ¶
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`29. Dr. Delp testified that “not all digitally recorded sequences of images are video” and that “a
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`still image or a sequence of still images that cannot be played back to the viewer as a motion
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`picture [is not a] video data stream.” Id.
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`Prisua, alternatively, argues that the term “image” is necessary to accurately define
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`“video,” which is a series of images in succession that creates the illusion of movement. This
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`interpretation of “video” is supported by the language of the ‘591 Patent and reflects how a
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`person of ordinary skill in the art would understand the term. The word “image” is used
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`seventeen times in Claim 1 of the ‘591 Patent—for example, to describe “receiving a selection of
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`the . . . image from the . . . video data stream” and “extracting the . . . image” from the video data
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`stream. See ‘591 Patent at 7:43–45. Prisua argues that its use of the term “images” in its
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`construction of “video data stream” is intended “to provide clarity and dispel the notion that
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`blank frames are ever present in any of the ‘591 patent’s video data streams.” See Reply at 4.
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`The Court agrees with Prisua that the inclusion of “images” in the definition of these
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`terms is consistent with the plain meaning of the claim language and will aid the jury in
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`understanding the terminology. As Prisua consents to the addition of the term “frames,” that
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`word will be added to Prisua’s constructions to provide greater specificity. The terms “user
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`input video data stream” and “original video data stream” are hereby construed as “a sequence
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`of image frames digitally recorded by a user separate from the original video data stream” and “a
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`digitally recorded sequence of image frames that is to be modified,” respectively.
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`B. “Spatially matching”
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`Prisua defines “spatially matching” as “aligning a set of pixels in the spatial domain.”
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`2 As Prisua notes in its Reply Brief, those of skill in the art use the terms “still image” and
`“image” interchangeably. See Deposition of Edward J. Delp, Ph.D. at 118–119s (ECF No. 53-1).
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`Samsung argues that this term is indefinite under 36 U.S.C. § 112(b). In the alternative,
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`Samsung defines the term as: “partitioning images into a set of course to fine scale sub-blocks
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`and concatenating the histograms extracted from all blocks into a long vector representation.”
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`Prisua acknowledges that neither the ‘591 Patent’s specification nor its prosecution
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`history provides an express definition of “spatially matching.” See Claim Construction Brief at
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`13. As stated above, under the Nautilus standard a patent claim is indefinite if, when “read in
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`light of the specification delineating the patent, and the prosecution history,” the claim “fail[s] to
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`inform, with reasonable certainty, those skilled in the art about the scope of the invention.”
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`Nautilus, 134 S. Ct. at 2124. Samsung argues that the absence of intrinsic evidence available to
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`help define “spatially matching” means that the ‘591 Patent does not adequately inform the
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`public of this term’s scope, and therefore does not meet Nautilus standard. See Response at 12–
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`13.
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`However, the Federal Circuit has clarified that extrinsic evidence may “play a significant
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`role in the indefiniteness analysis.” Dow Chem. Co. v. Nova Chems. Corp. (Canada), 809 F.3d
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`1223, 1225 (Fed. Cir. 2015) (per curiam). The Federal Circuit has also stated that “if a skilled
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`person would choose an established method of measurement, that may be sufficient to defeat a
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`claim of indefinitness, even if that method is not set forth . . . in the patent itself.” Id. at 1225
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`(Prost, J., concurring). The accused infringer—in this case, Samsung—bears the burden of
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`proving indefiniteness by clear and convincing evidence. Id.
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`Here, Prisua’s expert has testified that a person of ordinary skill in the art would be able
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`to choose among the different types of spatially matching techniques. See Negahdaripour Dec.
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`¶¶ 9–25 (ECF No. 53-10). Prisua’s expert cites to numerous publications in the field as extrinsic
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`evidence in support of defining spatially matching as “aligning a set of pixels in the spatial
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`domain.” Id. Furthermore, Samsung’s own expert testified that he would be able to choose
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`among spatially matching techniques if required to do so. Counsel for Prisua asked Dr. Delp,
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`“[Y]ou could choose among the [spatially matching techniques] you know and love, right?” Dr.
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`Delp responded that “[he] could probably choose those, yes.” Delp Depo. at 218:18–20.
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`Samsung has therefore failed to meet its burden of demonstrating by clear and convincing
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`evidence that one of ordinary skill in the art would be unable to choose among different
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`definitions of “spatially matching.” The Court rejects Samsung’s argument that “spatially
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`matching” is indefinite and adopts Prisua’s construction of the term as “aligning a set of pixels in
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`the spatial domain.”
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`C. Antecedent Claim Terms
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`Samsung argues that Claims 3 and 4—which are dependent claims—are indefinite
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`because they contain terms with no antecedent basis in Claim 1. For the reasons below, the
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`Court rejects this argument.
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`1. “Extracting the at least one pixel from the user entering data in the data
`entry display device” (“Claim 3 term”)
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`Prisua defines the Claim 3 term as “selecting and separating out the at least one pixel
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`chosen by a user on a display, when said display is acting as a data entry device and receives a
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`selection of at least one pixel by said user.”
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`Samsung argues that the Claim 3 term is indefinite because there is no antecedent basis
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`for the terms “the user entering data” or “the data entry display device” in Claim 3. However, as
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`Prisua notes, an antecedent basis can be present by implication. Slimfold Mfg. Co. v. Kinkead
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`Indus., Inc., 810 F.2d 1113, 1117 (Fed. Cir. 1987); see also Cross Med. Prods. V. Medtronic
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`Sofamor Danek, 424 F.3d 1293, 1319 (Fed. Cir. 2005). While Claim 1 may not explicitly use the
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`terms “the user entering data” or “the data entry display device,” Claim 1 uses several terms that
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`would illuminate the meaning of Claim 3 for one of ordinary skill in the art. For example, Claim
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`one describes “a data entry device” that is “operated by a user” in order “to select the at least one
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`pixel.” See ‘591 Patent, 7:25–30. In addition, the specification addresses “user input data” that
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`“can be captured directly” by a “stand alone device” that includes “data entry devices such as a .
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`. . displaying device.” Id. 4:57–63.
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`Samsung has not provided sufficient evidence to meet its burden of demonstrating by
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`clear and convincing evidence that Claim 3 is indefinite. Therefore, the Court adopts Prisua’s
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`construction of the Claim 3 term.
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`2. “Extracting the at least one pixel from the user pointing to a special location
`in a displayed video frame” (“Claim 4 term”)
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`Prisua defines the Claim 4 term as “performing spatial analysis on a video frame based
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`on a user input, then selecting and separating out the at least one pixel chosen by said user.”
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`Samsung argues this term is indefinite because it depends upon Claim 3. As the Court has not
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`found the Claim 3 term to be indefinite, the Court rejects this argument. The Claim 4 term is
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`therefore defined using Prisua’s construction.
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`IV.
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`CONCLUSION
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`For the foregoing reasons, it is hereby ORDERED AND ADJUDGED that United States
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`Patent Number 8,650,591 shall be construed in a manner consistent with this Order.
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`6th
`DONE AND ORDERED in Chambers at Miami, Florida, this _____ day of September,
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`2017.
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`cc: All counsel of record
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`Kevin Michael Moore
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`Digitally signed by Kevin Michael Moore
`DN: o=Administrative Office of the US Courts,
`email=k_michael_moore@flsd.uscourts.gov, cn=Kevin
`Michael Moore
`Date: 2017.09.06 16:35:34 -04'00'
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`K. MICHAEL MOORE
`UNITED STATES DISTRICT JUDGE
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`11
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