`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`UNILOC USA, INC. ET AL.,
`Plaintiffs,
`
`
`
`v.
`SAMSUNG ELECTRONICS AMERICA,
`INC. ET AL.,
`
`
`
`UNILOC USA, INC. ET AL.,
`Plaintiffs,
`
`
`
`v.
`HUAWEI DEVICE USA INC. ET AL.,
`
`
`Defendants.
`
`Defendants.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`
`Case No. 2:18-cv-00040-JRG-RSP
`
`Case No. 2:18-cv-00074-JRG-RSP
`
`CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER
`
`Case No. 2:18-cv-00040 (the “’040 Case”) and Case No. 2:18-cv-00074 (the “’074 Case”)
`
`have been consolidated for Claim Construction Proceedings. ’040 Case, Dkt. No. 56; ’074 Case,
`
`Dkt. No. 41. Before the Court are the briefs of Uniloc USA, Inc., Uniloc Luxembourg, S.A., and
`
`Uniloc 2017 LLC (collectively “Plaintiffs”) (’040 Case, Dkt Nos. 64 and 69; ’074 Case, Dkt Nos.
`
`42 and 45)1 and the briefs of Samsung Electronics America, Inc., Samsung Electronics Co. Ltd,
`
`Huawei Device USA, Inc., and Huawei Device Co. Ltd., (collectively “Defendants”) (’040 Case,
`
`Dkt No. 68; ’074 Case, Dkt No. 44). The Court held a hearing on the issues of claim construction
`
`and claim definiteness on March 19, 2019. Having considered the arguments and evidence
`
`presented by the parties at the hearing and in their briefing, the Court issues this Order.
`
`
`
`
`
`
`1 Citations to the parties’ filings are to the filing’s number in the docket (Dkt. No.) and pin cites
`are to the page numbers assigned through ECF.
`
`
`
`1
`
`Uniloc Ex. 2004
`Apple v. Uniloc
`IPR2019-00251
`
`

`

`
`
`Table of Contents
`
`I. 
`II. 
`
`G. 
`
`H. 
`
`BACKGROUND ............................................................................................................... 3 
`LEGAL PRINCIPLES ..................................................................................................... 4 
`A. 
`Claim Construction ................................................................................................. 4 
`B. 
`Departing from the Ordinary Meaning of a Claim Term ........................................ 7 
`C. 
`Functional Claiming and 35 U.S.C. § 112, ¶ 6 (pre-AIA) / § 112(f) (AIA) ........... 8 
`D. 
`Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA) ................. 10 
`III.  CONSTRUCTION OF DISPUTED TERMS ............................................................... 11 
`A. 
`“primary station” and “secondary station” ........................................................... 11 
`B. 
`“inquiry message” ................................................................................................. 15 
`C. 
`“predetermined data fields” and “additional data field for polling” ..................... 17 
`D. 
`“determining when” .............................................................................................. 21 
`E. 
`“poll,” “been polled,” “polled secondary station,” and “polling” ......................... 23 
`F. 
`“means [are provided] for broadcasting a series of inquiry messages” and
`“means are provided for receiving an inquiry message” ...................................... 26 
`“means for adding to an inquiry message,” “means … for adding to each
`inquiry message,” and “means … for adding the additional data field at the
`end of a respective inquiry message” .................................................................... 29 
`“means [...] for determining when an additional data field has been added
`to the plurality of data fields” ............................................................................... 34 
`“means … for determining whether [the secondary station] has been
`polled from the additional data field” ................................................................... 37 
`“means … for responding to a poll when it has data for transmission to the
`primary station” .................................................................................................... 39 
`“means are provided for including an indication in one of the
`predetermined data fields” .................................................................................... 40 
`IV.  CONCLUSION ............................................................................................................... 42 
`
`I. 
`
`J. 
`
`K. 
`
`
`
`2
`
`

`

`I.
`
`BACKGROUND
`
`
`
`Plaintiffs allege infringement of U.S. Patent No. 6,993,049 (the “’049 Patent”). The ’049
`
`Patent is entitled “Communication System.” The application leading to the ’049 Patent was filed
`
`on June 7, 2001, and the patent issued on January 31, 2006. The ’049 Patent includes a foreign
`
`priority claim to an application filed June 26, 2000.
`
`In general, the ’049 Patent is directed to improving the responsiveness of a communication
`
`system by polling devices using a broadcast channel as part of the system’s inquiry procedure.
`
`The abstract of the ’049 Patent provides:
`
`A communications system comprises a primary station (100) and at least one
`secondary station (101). The primary station (100) is arranged to broadcast a series
`of inquiry messages, each in the form of a plurality of predetermined data fields
`arranged according to a first communications protocol such as Bluetooth. In
`addition the primary station (100) adds to some or all of the inquiry messages an
`additional data field for polling one or more secondary stations, which can respond
`to the poll if they have data for transmission. This system provides secondary
`stations (101) with a rapid response time without the need for a permanently active
`communication link.
`
`Claims 1 and 11 of the ’049 Patent, exemplary system and method claims respectively, recite
`
`as follows:
`
`1. A communications system comprising a primary station and at least one
`secondary station, wherein the primary station has means for broadcasting a
`series of inquiry messages, each in the form of a plurality of predetermined data
`fields arranged according to a first communications protocol, and means for
`adding to an inquiry message prior to transmission an additional data field for
`polling at least one secondary station, and wherein the at least one polled
`secondary station has means for determining when an additional data field has
`been added to the plurality of data fields, for determining whether it has been
`polled from the additional data field and for responding to a poll when it has data
`for transmission to the primary station.
`
`11. A method of operating a communication system comprising a primary
`station and at least one secondary station, the method comprising the primary
`station broadcasting a series of inquiry messages, each in the form of a plurality
`of predetermined data fields arranged according to a first communications
`protocol, and adding to an inquiry message prior to transmission an additional
`data field for polling at least one secondary station, and further comprising the
`
`
`
`3
`
`

`

`
`
`at least one polled secondary station determining when an additional data field
`has been added to the plurality of data fields, determining whether it has been
`polled from the additional data field and responding to a poll when it has data
`for transmission to the primary station.
`
`II.
`
`LEGAL PRINCIPLES
`
`A.
`
`Claim Construction
`
`“It 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 Sys., Inc.,
`
`381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start by
`
`considering the intrinsic evidence. Id. at 1313; C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d
`
`858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group, Inc., 262 F.3d
`
`1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the
`
`specification, and the prosecution history. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at
`
`861. The general rule—subject to certain specific exceptions discussed infra—is that each claim
`
`term is construed according to its ordinary and accustomed meaning as understood by one of
`
`ordinary skill in the art at the time of the invention in the context of the patent. Phillips, 415 F.3d
`
`at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure
`
`Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (“There is a heavy presumption
`
`that claim terms carry their accustomed meaning in the relevant community at the relevant time.”)
`
`(vacated on other grounds).
`
` “The claim construction inquiry . . . begins and ends in all cases with the actual words of the
`
`claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998). “[I]n
`
`all aspects of claim construction, ‘the name of the game is the claim.’” Apple Inc. v. Motorola,
`
`Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362, 1369 (Fed.
`
`
`
`4
`
`

`

`
`
`Cir. 1998)). First, a term’s context in the asserted claim can be instructive. Phillips, 415 F.3d at
`
`1314. Other asserted or unasserted claims can also aid in determining the claim’s meaning because
`
`claim terms are typically used consistently throughout the patent. Id. Differences among the claim
`
`terms can also assist in understanding a term’s meaning. Id. For example, when a dependent claim
`
`adds a limitation to an independent claim, it is presumed that the independent claim does not
`
`include the limitation. Id. at 1314–15.
`
`“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id. (quoting
`
`Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)). “[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.’” Id. (quoting Vitronics Corp. v.
`
`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am. Corp.,
`
`299 F.3d 1313, 1325 (Fed. Cir. 2002). But, “‘[a]lthough the specification may aid the court in
`
`interpreting the meaning of disputed claim language, particular embodiments and examples
`
`appearing in the specification will not generally be read into the claims.’” Comark Commc’ns, Inc.
`
`v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced Micro-
`
`Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323. “[I]t is
`
`improper to read limitations from a preferred embodiment described in the specification—even if
`
`it is the only embodiment—into the claims absent a clear indication in the intrinsic record that the
`
`patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
`
`898, 913 (Fed. Cir. 2004).
`
`The prosecution history is another tool to supply the proper context for claim construction
`
`because, like the specification, the prosecution history provides evidence of how the U.S. Patent
`
`and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415 F.3d at 1317.
`
`
`
`5
`
`

`

`
`
`However, “because the prosecution history represents an ongoing negotiation between the PTO
`
`and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the
`
`specification and thus is less useful for claim construction purposes.” Id. at 1318; see also Athletic
`
`Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996) (ambiguous prosecution
`
`history may be “unhelpful as an interpretive resource”).
`
`Although extrinsic evidence can also be useful, it is “‘less significant than the intrinsic record
`
`in determining the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317
`
`(quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a court
`
`understand the underlying technology and the manner in which one skilled in the art might use
`
`claim terms, but technical dictionaries and treatises may provide definitions that are too broad or
`
`may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert testimony
`
`may aid a court in understanding the underlying technology and determining the particular
`
`meaning of a term in the pertinent field, but an expert’s conclusory, unsupported assertions as to a
`
`term’s definition are not helpful to a court. Id. Extrinsic evidence is “less reliable than the patent
`
`and its prosecution history in determining how to read claim terms.” Id. The Supreme Court has
`
`explained the role of extrinsic evidence in claim construction:
`
`In some cases, however, the district court will need to look beyond the patent’s
`intrinsic evidence and to consult extrinsic evidence in order to understand, for
`example, the background science or the meaning of a term in the relevant art during
`the relevant time period. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546 (1871)
`(a patent may be “so interspersed with technical terms and terms of art that the
`testimony of scientific witnesses is indispensable to a correct understanding of its
`meaning”). In cases where those subsidiary facts are in dispute, courts will need to
`make subsidiary factual findings about that extrinsic evidence. These are the
`“evidentiary underpinnings” of claim construction that we discussed in Markman,
`and this subsidiary factfinding must be reviewed for clear error on appeal.
`
`Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
`
`
`
`6
`
`

`

`
`
`B.
`
`Departing from the Ordinary Meaning of a Claim Term
`
`There are “only two exceptions to [the] general rule” that claim terms are construed according
`
`to their plain and ordinary meaning: “1) when a patentee sets out a definition and acts as his own
`
`lexicographer, or 2) when the patentee disavows the full scope of the claim term either in the
`
`specification or during prosecution.”2 Golden Bridge Tech., Inc. v. Apple Inc., 758 F.3d 1362, 1365
`
`(Fed. Cir. 2014) (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed.
`
`Cir. 2012)); see also GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir.
`
`2014) (“[T]he specification and prosecution history only compel departure from the plain meaning
`
`in two instances: lexicography and disavowal.”). The standards for finding lexicography or
`
`disavowal are “exacting.” GE Lighting Solutions, 750 F.3d at 1309.
`
`To act as his own lexicographer, the patentee must “clearly set forth a definition of the
`
`disputed claim term,” and “clearly express an intent to define the term.” Id. (quoting Thorner, 669
`
`F.3d at 1365); see also Renishaw, 158 F.3d at 1249. The patentee’s lexicography must appear
`
`“with reasonable clarity, deliberateness, and precision.” Renishaw, 158 F.3d at 1249.
`
`To disavow or disclaim the full scope of a claim term, the patentee’s statements in the
`
`specification or prosecution history must amount to a “clear and unmistakable” surrender. Cordis
`
`Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner, 669 F.3d at
`
`1366 (“The patentee may demonstrate intent to deviate from the ordinary and accustomed meaning
`
`of a claim term by including in the specification expressions of manifest exclusion or restriction,
`
`representing a clear disavowal of claim scope.”). “Where an applicant’s statements are amenable
`
`
`2 Some cases have characterized other principles of claim construction as “exceptions” to the
`general rule, such as the statutory requirement that a means-plus-function term is construed to
`cover the corresponding structure disclosed in the specification. See, e.g., CCS Fitness, Inc. v.
`Brunswick Corp., 288 F.3d 1359, 1367 (Fed. Cir. 2002).
`7
`
`
`
`

`

`
`
`to multiple reasonable interpretations, they cannot be deemed clear and unmistakable.” 3M
`
`Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013).
`
`C.
`
`Functional Claiming and 35 U.S.C. § 112, ¶ 6 (pre-AIA) / § 112(f) (AIA)3
`
`A patent claim may be expressed using functional language. See 35 U.S.C. § 112, ¶ 6;
`
`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347–49 & n.3 (Fed. Cir. 2015) (en banc in
`
`relevant portion). Section 112, Paragraph 6, provides that a structure may be claimed as a
`
`“means . . . for performing a specified function” and that an act may be claimed as a “step for
`
`performing a specified function.” Masco Corp. v. United States, 303 F.3d 1316, 1326 (Fed. Cir.
`
`2002).
`
`But § 112, ¶ 6 does not apply to all functional claim language. There is a rebuttable
`
`presumption that § 112, ¶ 6 applies when the claim language includes “means” or “step for” terms
`
`and that it does not apply in the absence of those terms. Id. at 1326; Williamson, 792 F.3d at 1348.
`
`The presumption stands or falls according to whether one of ordinary skill in the art would
`
`understand the claim with the functional language, in the context of the entire specification, to
`
`denote sufficiently definite structure or acts for performing the function. See Media Rights Techs.,
`
`Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1372 (Fed. Cir. 2015) (§ 112, ¶ 6 does not apply
`
`when “the claim language, read in light of the specification, recites sufficiently definite structure”
`
`(quotation marks omitted) (citing Williamson, 792 F.3d at 1349; Robert Bosch, LLC v. Snap-On
`
`Inc., 769 F.3d 1094, 1099 (Fed. Cir. 2014))); Williamson, 792 F.3d at 1349 (§ 112, ¶ 6 does not
`
`apply when “the words of the claim are understood by persons of ordinary skill in the art to have
`
`sufficiently definite meaning as the name for structure”); Masco Corp., 303 F.3d at 1326 (§ 112,
`
`
`3 The Court refers to the pre-AIA version of § 112 but understands that there is no substantial
`difference between functional claiming under the pre-AIA version and under the AIA version of
`the statute.
`
`
`
`8
`
`

`

`
`
`¶ 6 does not apply when the claim includes an “act” corresponding to “how the function is
`
`performed”); Personalized Media Communications, L.L.C. v. International Trade Commission,
`
`161 F.3d 696, 704 (Fed. Cir. 1998) (§ 112, ¶ 6 does not apply when the claim includes “sufficient
`
`structure, material, or acts within the claim itself to perform entirely the recited function . . . even
`
`if the claim uses the term ‘means.’” (quotation marks and citation omitted)).
`
`When it applies, § 112, ¶ 6 limits the scope of the functional term “to only the structure,
`
`materials, or acts described in the specification as corresponding to the claimed function and
`
`equivalents thereof.” Williamson, 792 F.3d at 1347. Construing a means-plus-function limitation
`
`involves multiple steps. “The first step . . . is a determination of the function of the means-plus-
`
`function limitation.” Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311
`
`(Fed. Cir. 2001). “[T]he next step is to determine the corresponding structure disclosed in the
`
`specification and equivalents thereof.” Id. A “structure disclosed in the specification is
`
`‘corresponding’ structure only if the specification or prosecution history clearly links or associates
`
`that structure to the function recited in the claim.” Id. The focus of the “corresponding structure”
`
`inquiry is not merely whether a structure is capable of performing the recited function, but rather
`
`whether the corresponding structure is “clearly linked or associated with the [recited] function.”
`
`Id. The corresponding structure “must include all structure that actually performs the recited
`
`function.” Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed.
`
`Cir. 2005). However, § 112 does not permit “incorporation of structure from the written
`
`description beyond that necessary to perform the claimed function.” Micro Chem., Inc. v. Great
`
`Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999).
`
`For § 112, ¶ 6 limitations implemented by a programmed general purpose computer or
`
`microprocessor, the corresponding structure described in the patent specification must include an
`
`
`
`9
`
`

`

`
`
`algorithm for performing the function. WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339,
`
`1349 (Fed. Cir. 1999). The corresponding structure is not a general purpose computer but rather
`
`the special purpose computer programmed to perform the disclosed algorithm. Aristocrat Techs.
`
`Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).
`
`D.
`
`Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA)4
`
`Patent claims must particularly point out and distinctly claim the subject matter regarded as
`
`the invention. 35 U.S.C. § 112, ¶ 2. A claim, when viewed in light of the intrinsic evidence, must
`
`“inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus
`
`Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). If it does not, the claim fails § 112,
`
`¶ 2 and is therefore invalid as indefinite. Id. at 2124. Whether a claim is indefinite is determined
`
`from the perspective of one of ordinary skill in the art as of the time the application for the patent
`
`was filed. Id. at 2130. As it is a challenge to the validity of a patent, the failure of any claim in suit
`
`to comply with § 112 must be shown by clear and convincing evidence. Id. at 2130 n.10.
`
`“[I]ndefiniteness is a question of law and in effect part of claim construction.” ePlus, Inc. v.
`
`Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012).
`
`When a term of degree is used in a claim, “the court must determine whether the patent
`
`provides some standard for measuring that degree.” Biosig Instruments, Inc. v. Nautilus, Inc., 783
`
`F.3d 1374, 1378 (Fed. Cir. 2015) (quotation marks omitted). Likewise, when a subjective term is
`
`used in a claim, “the court must determine whether the patent’s specification supplies some
`
`standard for measuring the scope of the [term].” Datamize, LLC v. Plumtree Software, Inc., 417
`
`
`4 The Court refers to the pre-AIA version of § 112 but understands that there is no substantial
`difference between definiteness under the pre-AIA version and under the AIA version of the
`statute.
`
`
`
`10
`
`

`

`F.3d 1342, 1351 (Fed. Cir. 2005). The standard “must provide objective boundaries for those of
`
`skill in the art.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014).
`
`In the context of a claim governed by 35 U.S.C. § 112, 4 6, the claim is invalid as indefinite
`
`if the claim fails to disclose adequate corresponding structure to perform the claimed functions.
`
`Williamson, 792 F.3d at 1351-52. The disclosure is inadequate when one of ordinary skill in the
`
`art “would be unable to recognize the structure in the specification and associate it with the
`
`corresponding function in the claim.” /d. at 1352.
`
`Ill.
`
`CONSTRUCTION OF DISPUTED TERMS
`
`A.
`“primarystation” and “secondarystation”
`
`Disputed Term*®
`Plaintiffs’ Proposed
`Defendants’ Proposed
`Construction Construction
`
`ordinary meaning
`“primary station”
`master station
`
`
`e °049 Patent Claims1, 2, 8, 11
`“secondary station”
`ordinary meaning
`slave station
`
`
`
`
`
`
`
`e
`
`’°049 Patent Claims1, 2, 8, 11
`
`Because the parties’ arguments and proposed constructions with respect to these terms are
`
`related, the Court addresses the terms together.
`
`The Parties’ Positions
`
`Plaintiffs submit: The “primary station” and “secondary station” of the claims are defined in
`
`the claims themselves and therefore the terms do not need to be construed. Further, the stations of
`
`the claims are defined without reference to a master-slave relationship, and such a relationship
`
`should not be read into the claims. ’040 Case, Dkt. No. 64 at 4; °074 Case, Dkt. No. 42 at 4.
`
`> For all term charts in this order, the claims in which the term is found are listed with the term
`but: (1) only the highest-level claim in each dependencychainis listed, and (2) only asserted claims
`identified in the parties’ Joint Claim Construction Chart (’040 Case, Dkt. No. 72; ’074 Case, Dkt.
`No. 48)are listed.
`
`LM
`
`

`

`
`
`Defendants respond: The “primary station” is defined in the ’049 Patent as a master station
`
`and the “secondary station” is defined in the patent as a slave station. For example, item 100 in the
`
`figures is identified in the patent equivalently as a “primary” station and a “master.” Likewise,
`
`item 101 in the figures is identified as a “secondary” station and a “slave.” Further, the functions
`
`performed by the “primary” and “secondary” station of the claims are those described in the patent
`
`as performed by the master and slave, respectively. ’040 Case, Dkt. No. 68 at 10–14; ’074 Case,
`
`Dkt. No. 44 at 10–14.
`
`In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
`
`evidence to support their position: Intrinsic evidence: ’049 Patent, at [57] Abstract, fig.1, col.1
`
`ll.6–8, col.1 ll.47–49, col.1 ll.52–54, col.2 ll.6–8, col.3 ll.30–31, col.3 ll.36–38, col.3 ll.44–49,
`
`col.4 ll.11–13, col.4 ll.15–17, col.4 ll.21–25, col.4 ll.48–58, col.4 ll.60–63. Extrinsic evidence:
`
`Wells Decl.6 ¶¶ 36–47 (’040 Case, Dkt. No. 68-1 at 13–16; ’074 Case, Dkt. No. 44-1 at 13–16).
`
`Plaintiffs reply: The master/slave embodiment used in the ’049 Patent to describe the
`
`invention is not limiting. This embodiment is a Bluetooth embodiment, and is described using
`
`Bluetooth terminology, which then included “master” and “slave.” The invention, however, is
`
`expressly not limited to Bluetooth but rather is applicable to other communications systems.
`
`Ultimately, the claims use “primary station” and “secondary station” rather than the Bluetooth
`
`language of “master” and “slave” and should not be limited to master and slave. ’040 Case, Dkt.
`
`No. 69 at 6–7; ’074 Case, Dkt. No. 45 at 6–7.
`
`
`6 Declaration of Jonathan Wells, Ph.D. In Support of Defendants’ Claim Constructions. Plaintiffs
`contend that Dr. Wells’ opinion was not properly disclosed and asks the Court to disregard the
`declaration. ’040 Case, Dkt. No. 69 at 5; ’074 Case, Dkt. No. 45 at 5. The Court has considered
`Dr. Wells’ opinion but is not swayed by his opinion on any of the terms at issue. Thus, Plaintiffs’
`request is moot.
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`Plaintiffs cite the following intrinsic evidence to support their position: ’049 Patent col.1 ll.6–
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`8, col.2 l.18 – col.3 l.4, col.3 ll.24–28.
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`Analysis
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`The issues in dispute are whether a “primary station” is necessarily a master and whether a
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`“secondary station” is necessarily a slave. The Court understands that while a Bluetooth master is
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`an exemplary primary station and a Bluetooth slave is an exemplary secondary station, master and
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`primary are not necessarily coextensive and slave and secondary are not necessarily coextensive.
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`To begin, the Court understands that a Bluetooth system is an exemplary communication
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`system in which the claimed invention may be implemented but that the invention is not limited
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`to a Bluetooth system. For example, in the paragraph immediately preceding a detailed description
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`of a Bluetooth system implementing the invention, the ’049 Patent provides:
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`In the following description we consider particularly a system which utilizes [sic]
`Bluetooth protocols for communication of messages between stations. As will be
`recognized [sic], the general invention concept of polling HIDs via a broadcast
`channel used as part of the inquiry procedure is not restricted to Bluetooth
`devices and is applicable to other communications arrangements, in particular
`frequency hopping systems.
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`’049 Patent col.3 ll.22–29 (emphasis added). That the Bluetooth system is an exemplary system is
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`further suggested by the claims themselves, which specifically recite—in dependent claims—that
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`the communication protocol governing the arrangement of the predetermined fields of the inquiry
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`message “comprises Bluetooth messaging.” Id. at col.8 ll.5–6 (Claim 5), col.8 ll.28–29 (Claim 9).
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`This suggests that the communication protocol may be something other than Bluetooth. In this
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`context, the Court understands that the Bluetooth terminology used to describe the Bluetooth
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`embodiment is not necessarily limiting of the invention generally or of specific claim terms.
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` The Court is not persuaded that reference to item 100 in the Bluetooth embodiment depicted
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`in Figure 1 as both a “master” and a “primary station” rises to lexicography of “primary station”
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`as “master.” “The standards for finding lexicography . . . are exacting.” GE Lighting Sols., LLC v.
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`AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014). “To act as its own lexicographer, a patentee
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`must clearly set forth a definition of the disputed claim term, and clearly express an intent to define
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`the term.” Id. (quotation marks omitted). Here, the Court does not find a clearly expressed intent
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`to equate “primary station” with the Bluetooth master. Rather, just as the (modified) Bluetooth
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`system described in the patent is an exemplary system according to the invention, the Bluetooth
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`master is an exemplary “primary station.” Item 100 may be both a primary station and a Bluetooth
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`master without “primary station” and “master” being coextensive.
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`Similarly, reference to items 101 in Figure 1 as both a “slave” and a “secondary station” does
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`not rise to lexicography defining “secondary station” as “slave.” Item 101 may be both a secondary
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`station and a Bluetooth slave without “secondary station” and “slave” being coextensive.
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`Furthermore, it is not clear that “master” and “slave” are meaningful constructions of “primary
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`station” and “secondary station” respectively. For example, the ’049 Patent describes that a
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`Bluetooth master can act as a slave and vice versa:
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`Communication between the piconets 102a, 102b is enabled by the master A in the
`first piconet 102a also acting as a slave in the second piconet 102b and vice versa.
`It is not necessary for the link between the piconets 102a, 102b to be between
`masters: it would be equally possible for the link to be between stations A3 and Bl
`or between A and Bl, for example.
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`’049 Patent col.3 ll.49–56 (emphasis added). This suggests that a particular station may be both a
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`master and a slave, and its label depends on its role in the communication (how it is “acting”).
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`From the description of the Bluetooth embodiment, the Court understands the distinction between
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`the “master” and the “slave” is that the “master” manages the “inquiry procedure”—it sends the
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`“inquiry message”—and the “slave” listens for and, as appropriate, reacts to the inquiry message.
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`See, e.g., id. at col.4 ll.21–58. But these are the same characteristics of the “primary” and
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`“secondary” stations that are recited in the claims. For example, Claim 11 states the “primary
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`station broadcast[s] a series of inquiry messages... and add[s] to an inquiry message prior to
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`transmission an additional data field for polling.” Jd. at col.8 I1.37-41. The secondary station
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`determines “when an additional data field has been added”to the inquiry message and “whetherit
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`has been polled,” and, as appropriate, responds. /d. at col.8 I1.42—47. Similarly, Claim 2 recites
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`that the “primary station” includes a “means. .
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`. for broadcasting a series of inquiry messages,”
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`and Claim 8 recites that the “secondary station” includes a “means... for receiving an inquiry
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`message.”/d. at col.7 11.4344, col.8 Il.17-18.
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`Accordingly, the Court rejects Defendants’ proposed constructions and further finds that
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`“primary station” and “secondary station” havetheir plain and ordinary meanings without the need
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`for further construction.
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`B.
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`“inquiry message”
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`Disputed Term
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`“inquiry message”
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`e
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`’049 Patent Claims 1, 2, 8, 11
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`
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`The Parties’ Positions
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`Plaintiffs’ Proposed
`Construction
`ordinary meaning
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`
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`Defendants’ Proposed
`Construction
`message sent by a primary
`[master] station that allows a
`would-be secondary [slave]
`station to find a primary
`[master] station and issue a
`request to join a piconet
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`
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`Plaintiffs submit: The ordinary meaning of “inquiry” is broader than the construction
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`Defendants propose, and Defendants have not provided a reason to narrow the meaning in the
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`claims. 040 Case, Dkt. No. 64 at 4-5; ’074 Case, Dkt. No. 42 at 4-5.
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`Defendants respond: Claim 1 states that the inquiry message is broadcast by the primary
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`station, thu