Case 2:17-cv-00145-JRG-RSP Document 140 Filed 01/31/18 Page 1 of 105 PageID #: 8659
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`THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`FUNDAMENTAL INNOVATION
`SYSTEMS INTERNATIONAL LLC,
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`v.
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`SAMSUNG ELECTRONICS CO., LTD.,
`et al.
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`§
`§
`§
`§
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`§
`§
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`CLAIM CONSTRUCTION
`MEMORANDUM AND ORDER
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` Case No. 2:17-cv-145-JRG-RSP
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`On January 23, 2018, the Court held a hearing to determine the proper construction of
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`disputed claim terms in United States Patents No. 6,936,936, 7,239,111, 7,701,173, 7,791,319,
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`7,834,586, 7,893,655, 7,999,514, 8,232,766, 8,541,983, and 8,624,550. Having reviewed the
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`arguments made by the parties at the hearing and in their claim construction briefing (Dkt.
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`Nos. 102, 106 & 114),1 having considered the intrinsic evidence, and having made subsidiary
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`factual findings about the extrinsic evidence, the Court hereby issues this Claim Construction
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`Memorandum and Order. See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005);
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`Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
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`Also before the Court is Plaintiff’s Motion to Exclude Defendants’ Claim Construction
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`Experts (Dkt. No. 83). As set forth herein, Plaintiff’s motion is DENIED. Additionally,
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`Plaintiff’s Motion to Expedite the Motion to Exclude Defendants’ Claim Construction Experts
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`(Dkt. No. 85) is DENIED AS MOOT.
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`1 Citations to documents (such as the parties’ briefs and exhibits) in this Claim Construction
`Memorandum and Order refer to the page numbers of the original documents rather than the
`page numbers assigned by the Court’s electronic docket unless otherwise indicated.
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`Case 2:17-cv-00145-JRG-RSP Document 140 Filed 01/31/18 Page 39 of 105 PageID #:
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`G. “identification signal”
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`Plaintiff’s Proposed Construction
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`Defendants’ Proposed Construction
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`“electrical signal that provides information
`regarding an adapter power type or a power
`source type”
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`“signal that informs the mobile device that the
`USB adapter is not limited by the power
`limits
`imposed by the USB specification”
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`Dkt. No. 102 at 14; Dkt. No. 106 at 15; Dkt. No. 121 at A1-6. The parties submit that this term
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`appears in all claims of the ’936 Patent, all claims of the ’111 Patent, Claims 8–13 of the ’586
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`Patent, and Claims 17 and 19 of the ’766 Patent. Id.
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`Shortly before the start of the January 23, 2018 hearing, the Court provided the parties
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`with the following preliminary construction: “signal that identifies a power source type.”
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`(1) The Parties’ Positions
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`Plaintiff argues that Defendants’ proposed construction “incorrectly focuses on a single
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`intended use of the identification signal and renders other claim limitations redundant.” Dkt.
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`No. 102 at 14.
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`Defendants respond: “FISI’s overly broad construction must be rejected because it would
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`capture USB enumeration, which contradicts the essence of the ‘identification signal’: to enable
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`power supply without USB enumeration. ’550, 2:1–15, 9:65–10:3; Ex 12 ¶ 136.” Dkt. No. 106
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`at 16.
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`At the January 23, 2018 hearing, the parties presented oral argument regarding this
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`disputed term.
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`(2) Analysis
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`Claim 1 of the ’936 Patent, for example, recites (emphasis added): “wherein the
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`identification signal comprises a voltage level that is applied to at least one of the data lines in
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`Case 2:17-cv-00145-JRG-RSP Document 140 Filed 01/31/18 Page 40 of 105 PageID #:
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`the primary USB connector, and the identification signal comprises a logic high signal on the D+
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`data line and a logic high signal on the D- data line.”
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`As another example, Claims 51, 55, and 70 of the ’936 Patent recite (emphasis added):
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`“providing an identification signal to the mobile device, via the identification subsystem and the
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`USB connector, that is operative to inform the mobile device that the USB adapter is not limited
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`by the power limits imposed by the USB specification.”
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`Admittedly, redundancy in a construction is not prohibited. See 01 Communique Lab.,
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`Inc. v. LogMeIn, Inc., 687 F.3d 1292, 1296 (Fed. Cir. 2012) (“we have not discovered[] any
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`authority for the proposition that construction of a particular claim term may not incorporate
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`claim language circumscribing the meaning of the term”).
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`Nonetheless, because the claims already recite detail regarding the nature of the
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`“identification signal,” and because Defendants’ proposed construction would render above-
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`quoted language in Claims 51, 55, and 70 of the ’936 Patent superfluous, Defendants’ proposed
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`construction is disfavored.
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`Defendants have cited a construction of “identification signal” in Suffolk Technologies
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`LLC v. AOL Inc., wherein the court stated that “it is clear from the specification that the
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`‘identification signal’ conveys specific information.” 942 F. Supp. 2d 600, 609 (E.D. Va. 2013).
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`Suffolk involved a patent that is not related to the patents here in suit, and the construction of the
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`term “identification signal” in that unrelated patent is not persuasive here. See e.Digital Corp. v.
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`Futurewei Techs., Inc., 772 F.3d 723, 727 (Fed. Cir. 2014) (“a claim of an unrelated patent
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`‘sheds no light on’ the claims of the patent in suit) (citations omitted).
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`Further, Plaintiff has cited disclosure in the written description that is consistent with
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`Plaintiff’s proposed interpretation. In particular, although the written description discloses, for
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`Case 2:17-cv-00145-JRG-RSP Document 140 Filed 01/31/18 Page 41 of 105 PageID #:
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`example, that “[t]he identification subsystem 108 provides an identification signal to the mobile
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`device 10 that the power source is not a USB limited source,” the written description also
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`discloses an embodiment in which signals from identification subsystem 108 “identify the
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`attached device as a USB adapter.” ’936 Patent at 8:13–15 & 9:21–29; see id. at 3:5–9 & 9:50–
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`55. The usage of “identification signal” thus appears to contemplate, not surprisingly,
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`identification.
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`Finally, Defendants argue that Plaintiff’s proposal improperly encompasses the
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`“enumeration” process that the written description refers to foregoing. See, e.g., ’936 Patent at
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`1:55–63, 9:2–4 & 9:50–55. Defendants have not demonstrated, however, that Plaintiff’s
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`proposed construction is coextensive with “enumeration.” Instead, the written description
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`explains that enumeration is a process specified in the USB specification. Id. at 8:3–6.
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`For all of these reasons, the Court rejects Defendants’ proposal of explicitly “inform[ing]
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`the mobile device that the USB adapter is not limited by the power limits imposed by the USB
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`specification.”
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`The Court therefore hereby construes “identification signal” to mean “signal that
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`identifies a power source type.”
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`H. “A mobile device”
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`Plaintiff’s Proposed Construction
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`Defendants’ Proposed Construction
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`Not a limit for ’766 claims 1, 9, 24 and
`dependent claims.
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`“mobile device” is limiting as part of
`preamble.
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`No additional construction necessary.
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`See Dkt. No. 102 at 15; Dkt. No. 121 at A1-6. The parties submit that this term appears in all
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`claims of the ’111 Patent, the ’936 Patent, the ’586 Patent, and the ’766 Patent. Id.
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`Case 2:17-cv-00145-JRG-RSP Document 140 Filed 01/31/18 Page 42 of 105 PageID #:
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`Shortly before the start of the January 23, 2018 hearing, the Court provided the parties
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`with the following preliminary construction: “A mobile device” (’936 Patent, Claims 1, 13, 25,
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`37, 51, 55, 59, 63, 65, 70, 74, 78, 84, 95, 99, 101, 103): Not limiting; “A mobile device” (’111
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`Patent, Claims 1, 17, 18): Not limiting; “A mobile device” (’586 Patent, Claims 1, 11): Limiting;
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`“A mobile device” (’766 Patent, Claims 1, 9, 24): Not limiting; “a mobile device” (’766 Patent,
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`Claim 17): Limiting.
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`(1) The Parties’ Positions
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`Plaintiff argues that this preamble term is not limiting because “the inventors did not rely
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`on ‘mobile device’ during prosecution and the term provides no antecedent basis for any term in
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`the claim body.” Dkt. No. 102 at 15.
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`Defendants respond that “mobile device” is limiting because it recites essential structure.
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`Dkt. No. 106 at 13.
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`(2) Analysis
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`Claim 1 of the ’766 Patent, for example, recites (emphasis added):
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`1. A mobile device, comprising:
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`a USB communication path; and
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`a charging subsystem enabled to draw current unrestricted by at least one
`predetermined USB Specification limit, said enablement being responsive to an
`abnormal USB data condition detected at said USB communication path.
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`The term “mobile device” does not appear in the body of the claim, so the preamble does
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`not provide any antecedent basis. Instead, the preamble “merely gives a name” to the claimed
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`structure. See Deere, 703 F.3d at 1358; see also IMS Tech., 206 F.3d at 1434. Claims 9 and 24
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`of the ’766 Patent are similar in this regard.
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`Claim 1 of the ’111 Patent, as another example, recites (emphasis added):
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`1. A Universal Serial Bus (“USB”) adapter for providing power to a mobile
`device through a USB port, comprising:
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`a plug unit configured to receive energy from a power socket;
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`a power converter coupled to the plug unit, the power converter being
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`configured to regulate the received energy from the power socket to generate a
`power output;
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`an identification subsystem configured to generate an identification signal,
`wherein the identification signal is configured to indicate to the mobile device that
`the power socket is not a USB host or hub; and
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`a USB connector coupled to the power converter and the identification
`subsystem, the USB connector being configured to couple the power output and
`the identification signal to the mobile device.
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`Although “a mobile device” in the preamble of Claim 1 of the ’111 Patent provides
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`antecedent basis for “the mobile device” recited in the body of the claim, Defendants have not
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`shown that the preamble recites any additional relevant detail regarding the “mobile device.”
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`See Proveris, 739 F.3d at 1373. Claims 17 and 18 of the ’111 Patent are similar in this regard, as
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`are Claims 1, 13, 25, 37, 51, 55, 59, 63, 65, 70, 74, 78, 84, 95, 99, 101, and 103 of the ’936
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`Patent.
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`Defendants have emphasized the statement in the Abstracts of these patents that “[a]n
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`adapter for providing a source of power to a mobile device through an industry standard port is
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`provided.” This statement about “for providing,” however, merely underscores that the term
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`“mobile device,” as used in these preambles, is a statement of purpose rather than a limitation.
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`See Catalina Mktg., 289 F.3d at 808; see also Pitney Bowes, 182 F.3d at 1305; Marrin, 599 F.3d
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`at 1294–95; Allen Eng’g, 299 F.3d at 1346. Statements in the Background section of the written
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`description are similar. See, e.g., ’936 Patent at 1:24–25.
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`Defendants also submit that “[t]he specification . . . is replete with references to [‘mobile
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`device,’] underscoring the importance of the feature to the claimed invention.” Dkt. No. 106
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`at 14 (quoting Rotatable Techs. LLC v. Motorola Mobility LLC, 567 F. App’x 941, 943 (Fed. Cir.
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`June 27, 2014); citing ’550 Patent at 1:46–3:25). The disclosures cited by Defendants relate to
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`the “purpose or intended use for the invention” and do not warrant finding that the preambles are
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`Case 2:17-cv-00145-JRG-RSP Document 140 Filed 01/31/18 Page 44 of 105 PageID #:
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`necessarily limiting in all instances. Catalina, 289 F.3d at 808 (quoting Pitney Bowes, 182 F.3d
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`at 1305).
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`Claims 1 and 11 of the ’586 Patent, however, rely upon the preambles to provide
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`antecedent basis for “the mobile device” recited in the bodies of the claims, and the preambles
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`provide additional detail regarding the “mobile device.” For example, the preamble of Claim 1
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`of the ’586 Patent recites: “A mobile device, the mobile device configurable for use in a wireless
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`telecommunications network . . . .” The preambles of these claims are therefore limiting. See
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`Proveris, 739 F.3d at 1373 (“The phrase ‘the image data’ clearly derives antecedent basis from
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`the ‘image data’ that is defined in greater detail in the preamble as being ‘representative of at
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`least one sequential set of images of a spray plume.’”) (emphasis added). Claim 17 of the ’766
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`Patent is similar in this regard. See id.
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`The Court therefore hereby construes this disputed term as set forth in the following
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`Construction
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`chart:
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`Term
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`“A mobile device”
`(’936 Patent, Claims 1, 13, 25, 37, 51, 55, 59,
`63, 65, 70, 74, 78, 84, 95, 99, 101, 103)
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`“A mobile device”
`(’111 Patent, Claims 1, 17, 18)
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`“A mobile device”
`(’586 Patent, Claims 1, 11)
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`“A mobile device”
`(’766 Patent, Claims 1, 9, 24)
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`“a mobile device”
`(’766 Patent, Claim 17)
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`Not limiting
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`Not limiting
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`Limiting
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`Not limiting
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`Limiting
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`Case 2:17-cv-00145-JRG-RSP Document 140 Filed 01/31/18 Page 105 of 105 PageID #:
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`As set forth above, the Court finds that “the voltage sensing circuit” and “[the controller]
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`is configured to control the switch in response to the voltage drop to provide sufficient power for
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`operation of the device” lack antecedent basis and, as a result, the Court finds that Claims 7, 8,
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`10, 15–17, and 19 of the ’983 Patent are indefinite.
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`As also set forth above, the Court finds that “wherein the supply current passes through
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`the external driving semiconductor rather than through the battery charge controller,” “whereby
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`load current passes through the external driving semiconductor instead of the battery charge
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`controller,” and “whereby load current passes through the external driving semiconductor in lieu
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`of the controller” render Claim 2 of the ’319 Patent, Claim 2 of the ’514 Patent, and Claims 6
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`and 14 of the ’983 Patent indefinite.
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`The parties are ordered to not refer to each other’s claim construction positions in the
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`presence of the jury. Likewise, in the presence of the jury, the parties are ordered to refrain from
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`mentioning any portion of this opinion, other than the actual definitions adopted by the Court.
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`The Court’s reasoning in this order binds the testimony of any witnesses, and any reference to
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`the claim construction proceedings is limited to informing the jury of the definitions adopted by
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`the Court.
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`Finally, as discussed above, Plaintiff’s Motion to Exclude Defendants’ Claim
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`Construction Experts (Dkt. No. 83) is hereby DENIED. In addition, Plaintiff’s Motion to
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`Expedite (Dkt. No. 85) is DENIED AS MOOT.
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