Case 2:13-cv-00213-JRG-RSP Document 114 Filed 07/10/14 Page 1 of 57 PageID #: 3869
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
` CASE NO. 2:13-CV-213-JRG-RSP
`
`§§§§§§§
`
`REMBRANDT WIRELESS
`TECHNOLOGIES, LP,
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD.,
`et al.
`
`CLAIM CONSTRUCTION
`MEMORANDUM AND ORDER
`
`On May 30, 2014, the Court held a hearing to determine the proper construction of the
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`disputed claim terms in United States Patents No. 8,023,580 and 8,457,228. After considering
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`the arguments made by the parties at the hearing and in the parties’ claim construction briefing
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`(Dkt. Nos. 97, 102, and 103),1 the Court issues this Claim Construction Memorandum and Order.
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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. Defendants
`are Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung
`Telecommunications America, LLC, Samsung Austin Semiconductor, LLC (collectively referred
`to as “Samsung”), Blackberry Corp., and Blackberry Ltd. (collectively referred to as
`“Blackberry”; formerly known as Research In Motion Corp. and Research In Motion Ltd.,
`respectively) (all collectively referred to as “Defendants”).
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`Apple Exhibit 1111
`Apple Inc. v. Rembrandt Wireless
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`Table of Contents
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`BACKGROUND ........................................................................................................................... 3 
`LEGAL PRINCIPLES ................................................................................................................. 3 
`CONSTRUCTION OF DISPUTED TERMS ............................................................................. 6 
`A. “first modulation method” and “second modulation [method]” ........................................... 6 
`B. “modulation method [] of a different type” and “different types of modulation
`methods” ............................................................................................................................. 22 
`C. “communication[s] device,” “device that transmits,” and “logic configured to transmit” . 29
`D. “training signal” and “trailing signal” ................................................................................. 38 
`E. “signal level compensation” ................................................................................................ 49 
`F. “a first portion of the first communication indicating that the second modulation
`method will be used for modulating the payload data in the payload portion of the first
`communication” .................................................................................................................. 52 
`CONCLUSION ........................................................................................................................... 56 
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`BACKGROUND
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`Plaintiff brings suit alleging infringement of United States Patents No. 8,023,580 (“the
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`‘580 Patent”) and 8,457,228 (“the ‘228 Patent”) (collectively, the “patents-in-suit”).
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`The patents-in-suit are both titled “System and Method of Communication Using At
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`Least Two Modulation Methods.” The ‘580 Patent issued on September 20, 2011, and bears a
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`filing date of August 19, 2009. The ‘228 Patent issued on June 4, 2013, and bears a filing date of
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`August 4, 2011. The ‘228 Patent is a continuation of the ‘580 Patent. Both patents-in-suit bear
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`an earliest priority date of December 5, 1997.
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`In general, the patents-in-suit relate to modulation methods for communications. Plaintiff
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`argues that the patents-in-suit relate to the well-known “Bluetooth” wireless communication
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`standards. See Dkt. No. 97 at 1. The Abstract of the ‘580 Patent is representative and states:
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`A device may be capable of communicating using at least two type types [sic] of
`modulation methods. The device may include a transceiver capable of acting as a
`master according to a master/slave relationship in which communication from a
`slave to a master occurs in response to communication from the master to the
`slave. The master transceiver may send transmissions discrete transmissions [sic]
`structured with a first portion and a payload portion. Information in the first
`portion may be modulated according to a first modulation method and indicate an
`impending change to a second modulation method, which is used for transmitting
`the payload portion. The discrete transmissions may be addressed for an intended
`destination of the payload portion.
`
`LEGAL PRINCIPLES
`
`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention
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`to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303,
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`1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys.,
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`Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start
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`by considering the intrinsic evidence. See id. at 1313; see also C.R. Bard, Inc. v. U.S. Surgical
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`Corp., 388 F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns
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`Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims
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`themselves, the specification, and the prosecution history. See Phillips, 415 F.3d at 1314; C.R.
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`Bard, 388 F.3d at 861. Courts give claim terms their ordinary and accustomed meaning as
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`understood by one of ordinary skill in the art at the time of the invention in the context of the
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`entire patent. Phillips, 415 F.3d at 1312-13; accord Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d
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`1361, 1368 (Fed. Cir. 2003).
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`
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`The claims themselves provide substantial guidance in determining the meaning of
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`particular claim terms. Phillips, 415 F.3d at 1314. First, a term’s context in the asserted claim
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`can be very instructive. Id. Other asserted or unasserted claims can aid in determining the
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`claim’s meaning because claim terms are typically used consistently throughout the patent. Id.
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`Differences among the claim terms can also assist in understanding a term’s meaning. Id. For
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`example, when a dependent claim adds a limitation to an independent claim, it is presumed that
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`the independent claim does not include the limitation. Id. at 1314-15.
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`
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`“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id.
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`at 1315 (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995)
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`(en banc)). “[T]he specification ‘is always highly relevant to the claim construction analysis.
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`Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’” Phillips,
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`415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
`
`1996)); accord Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). This
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`is true because a patentee may define his own terms, give a claim term a different meaning than
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`the term would otherwise possess, or disclaim or disavow claim scope. Phillips, 415 F.3d
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`at 1316. In these situations, the inventor’s lexicography governs. Id. The specification may also
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`resolve the meaning of ambiguous claim terms “where the ordinary and accustomed meaning of
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`the words used in the claims lack sufficient clarity to permit the scope of the claim to be
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`ascertained from the words alone.” Teleflex, 299 F.3d at 1325. But, “[a]lthough the
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`specification may aid the court in interpreting the meaning of disputed claim language, particular
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`embodiments and examples appearing in the specification will not generally be read into the
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`claims.” Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998)
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`(quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988));
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`accord Phillips, 415 F.3d at 1323.
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`
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`The prosecution history is another tool to supply the proper context for claim
`
`construction because a patent applicant may also define a term in prosecuting the patent. Home
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`Diagnostics, Inc., v. Lifescan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the
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`specification, a patent applicant may define a term in prosecuting a patent.”). “[T]he prosecution
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`history (or file wrapper) limits the interpretation of claims so as to exclude any interpretation that
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`may have been disclaimed or disavowed during prosecution in order to obtain claim allowance.”
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`Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985).
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`
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`Although extrinsic evidence can be useful, it is “less significant than the intrinsic record
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`in determining the legally operative meaning of claim language.” Phillips, 415 F.3d at 1317
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`(citations and internal quotation marks omitted). Technical dictionaries and treatises may help a
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`court understand the underlying technology and the manner in which one skilled in the art might
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`use claim terms, but technical dictionaries and treatises may provide definitions that are too
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`broad or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly,
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`expert testimony may aid a court in understanding the underlying technology and determining
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`the particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
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`assertions as to a term’s definition are entirely unhelpful to a court. Id. Generally, extrinsic
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`evidence is “less reliable than the patent and its prosecution history in determining how to read
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`claim terms.” Id.
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`CONSTRUCTION OF DISPUTED TERMS
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`
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`Shortly before the start of the May 30, 2014 hearing, the Court provided the parties with
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`preliminary constructions of the disputed terms with the aim of focusing the parties’ arguments
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`and facilitating discussion. Those preliminary constructions are set forth within the discussion of
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`each term, below.
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`A. “first modulation method” and “second modulation [method]”
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`
`
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`Plaintiff’s Proposed Construction
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`“first modulation method”
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`Defendants’ Proposed Construction
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`“a method of encoding data that is understood
`by a first type of receiver, but not by a second
`type of receiver”
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`“a first method for varying one or more
`characteristics of a carrier in accordance with
`information to be communicated”2
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`
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`“second modulation [method]”
`
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`Plaintiff’s Proposed Construction
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`Defendants’ Proposed Construction
`
`“a second method for varying one or more
`characteristics of a carrier in accordance with
`information to be communicated”3
`
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`Dkt. No. 97 at 6; Dkt. No. 102 at 2-3. The parties submit that the first of these terms appears in
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`“a method of encoding data that is understood
`by the second type of receiver, but not by the
`first type of receiver”
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`Claims 1, 2, 13, 19, 21, 22, 23, 32, 40, 41, 49, 54, 58, 59, 70, 76, 78, and 79 of the ‘580 Patent
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`and Claims 1, 5, 15, 17, 18, 22, 25, 26, 37, 38, 39, 41, 47, 48, 49, and 52 of the ‘228 Patent. Dkt.
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`2 Plaintiff previously proposed: “No construction necessary; plain and ordinary meaning applies.
`Alternatively, ‘a first method for encoding data onto a carrier.’” Dkt. No. 81, Ex. A at 7.
`3 Plaintiff previously proposed: “No construction necessary; plain and ordinary meaning applies.
`Alternatively, ‘a second method for encoding data onto a carrier.’” Dkt. No. 81, Ex. A at 9.
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`No. 82, Ex. A at 7. The parties submit that the second of these terms appears in Claims 1, 13, 20,
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`22, 23, 32, 40, 49, 54, 58, 70, 77, and 79 of the ‘580 Patent and Claims 1, 10, 17, 18, 22, 23, 26,
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`37, 38, 41, 43, 47, and 49 of the ‘228 Patent. Id. at 9.
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`
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`Shortly before the start of the May 30, 2014 hearing, the Court provided the parties with
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`the following preliminary constructions for these disputed terms: “first modulation method”
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`means “a first method for varying one or more characteristics of a carrier signal in accordance
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`with information to be communicated”; and “second modulation [method]” means “a second
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`method for varying one or more characteristics of a carrier signal in accordance with information
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`to be communicated.” Plaintiff had no opposition to these preliminary constructions.
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`Defendants were opposed.
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`(1) The Parties’ Positions
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`Plaintiff argues that “Defendants’ constructions . . . confuse ‘modulation’ with
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`‘encoding’” and import limitations from a preferred embodiment. Dkt. No. 97 at 6. Plaintiff
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`also submits that examples of the characteristics of a carrier than can be modulated are
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`amplitude, frequency, and phase. Id. In this regard, Plaintiff cites extrinsic dictionary
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`definitions (quoted below) as well as statements by Defendant Samsung in an inter partes review
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`(“IPR”) filing. Id. at 7; see id., Ex. 7, 3/20/2014 Petition for Inter Partes Review of U.S. Patent
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`No. 8,023,580 at 9 (citing The IEEE Standard Dictionary of Electrical and Electronics Terms
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`662 (6th ed. 1996)). Plaintiff also argues that the constituent terms “first” and “second” refer to
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`repeated instances rather than to any distinction or incompatibility. Id. at 8. Plaintiff explains
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`that this is a patent law convention and that this interpretation is consistent with usage of “first”
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`and “second” in various claims as well as in the Summary section of the ‘580 Patent. Id. at 8-10.
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`As to Defendants’ proposed constructions, Plaintiff argues that the patents-in-suit “never
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`use the term ‘encode’ at all,” and Plaintiff cites the provisional patent application to which the
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`patents-in-suit claim priority as distinguishing between “modulation” and “encoding.” Id.
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`at 11-12. Plaintiff also argues that Defendants’ proposal of incompatibility between the first and
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`second modulation methods is found in a preferred embodiment but not in the claims. Id. at 12.
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`Plaintiff submits that such a limitation appears only in dependent claims, namely Claims 18
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`and 75 of the ‘580 Patent. Id. at 13. Further, Plaintiff argues, Defendants’ proposals would
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`improperly exclude embodiments in which “modems may be capable of using several different
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`modulation methods.” Id. (quoting ‘580 Patent at 1:36-37; citing id. at 5:51-54). Plaintiff
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`likewise argues that “the USPTO examiner recognized that the claimed ‘first’ and ‘second’
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`modulation methods could be understood by a common receiver—contrary to Defendants’
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`constructions.” Dkt. No. 97 at 14. Finally, Plaintiff urges that Defendants’ proposals “would
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`render claim limitations that explicitly require ‘the first modulation method is different than the
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`second modulation method’ superfluous.” Id. at 16 (citing ‘580 Patent at Claims 23, 32 & 40).
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`
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`Defendants respond that “the sole disclosed embodiment of the invention has a ‘Trib 1’4
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`modem that understands ‘type A’ modulation but not ‘[t]ype B,’ and a ‘Trib 2’ modem that
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`understands ‘type B’ modulation but not ‘type A.’” Dkt. No. 102 at 3; see id. at 6-9. Defendants
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`note that the specification asserts (in Defendants’ words) that “in the prior art, because all
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`modems connected to a common circuit needed to use compatible modulation methods, tribs that
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`supported only a low-performance modulation method (e.g. type B) would not work in systems
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`4 The patents-in-suit disclose that in a “multipoint architecture,” the term “trib” is a shortened
`form of the word “tributary” and refers to one of several modems that communicates with a
`single “master” modem. See ‘580 Patent at 1:56-58 & 3:40-44. The term “trib” appears to be
`synonymous with the term “slave” as used in the patents-in-suit. See Dkt. No. 97, Ex. 7,
`3/20/2014 Petition for Inter Partes Review of U.S. Patent No. 8,023,580 at 11.
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`that require a high-performance modulation (e.g. type A) for any tasks.” Id. at 4. Defendants
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`explain that “[i]f the tribs speak each other’s language, the alleged invention would be
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`unnecessary.” Id. at 3; see id. at 5 (“If the type B trib could understand type A modulation,
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`type A modulation would simply be used by both devices, as in the prior art.”).
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`
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`As to the prosecution history, Defendants highlight that the patentee deleted from the
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`specification all disclosures of what Defendants refer to as a “bilingual” trib, i.e., a trib with the
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`ability to use two types of modulation. Id. at 9-10. Defendants also submit that the examiner
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`statement cited by Plaintiff in its opening brief was made before the patentee deleted the
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`disclosures of a bilingual trib. Id. at 10. Further, Defendants cite the prosecution history of
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`ancestor United States Patent No. 6,616,838, during which the patentee stated: “The present
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`invention is directed to the use of differing transceivers responsive to different modulation
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`methods to the exclusion of other modulation methods . . . .” Id. at 11 (quoting Ex. 8, 9/27/2001
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`First Amendment and Response at p. 6 of 10).
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`
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`As to their proposed constructions, Defendants note that “encoding” appeared in the
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`constructions that Plaintiff had proposed prior to filing its opening claim construction brief. Dkt.
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`No. 102 at 3 & 14. Defendants also argue: “First, contrary to [Plaintiff’s] arguments,
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`‘modulation’ is ‘encoding,’ as [Plaintiff’s] own dictionary confirms. Second, [Plaintiff’s]
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`construction injects the complex concept of carrier waves into the definition. That concept
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`would not assist a jury.” Id. at 14 (citations omitted). Finally, Defendants argue that the claim
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`limitations requiring “different” modulation methods are “already superfluous.” Id. at 15.
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`
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`Plaintiff replies to Defendants’ arguments as follows: (1) whether the claims adequately
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`distinguish prior art is a matter of validity, not claim construction, and the patentee did not
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`anywhere state that the point of novelty was that receivers understand only one modulation
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`method; (2) the claims should not be limited to a particular embodiment and, moreover, the
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`patents-in-suit incorporate related patent applications that disclose bilingual tribs (see Dkt.
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`No. 103, Ex. 30 at RIP9770); (3) the patentee removed, from the specification, references to
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`measuring transmission line characteristics, but the patentee did not disclaim all embodiments in
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`which multiple modulation methods could be understood by a single trib; (4) Defendants’
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`technology tutorial submitted to this Court (Dkt. No. 103, Ex. 28) confirms that “modulation” is
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`different than “encoding”; (5) the doctrine of claim differentiation is not overcome by any
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`disclosures in the specification; and (6) Defendants’ proposals would render superfluous the
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`claim limitations requiring that the “first” and “second” modulation methods be “different.” Dkt.
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`No. 103 at 2-5.
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`
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`At the May 30, 2014 hearing, Defendants emphasized that the only disclosed
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`embodiment uses monolingual tribs and that during prosecution the patentee deleted disclosure
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`of bilingual tribs. The Court inquired where, if anywhere, the patentee stated that a trib can
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`understand only one modulation method. Defendants responded that the patentee made that
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`statement “by implication” by removing the disclosure of bilingual tribs. In this regard,
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`Defendants cited the case of Abbott Laboratories v. Sandoz, Inc., 566 F.3d 1282 (Fed. Cir.
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`2009). As to Plaintiff’s claim differentiation arguments, Defendants urged that the dependent
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`claim “tail” cannot wag the specification “dog.” See N. Am. Vaccine, Inc. v. Am. Cyanamid Co.,
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`7 F.3d 1571, 1577 (Fed. Cir. 1993) (“The dependent claim tail cannot wag the independent claim
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`dog.”).
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`
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`Plaintiff responded that the deletions were merely “housekeeping” and related primarily
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`to test signals and to measuring transmission line characteristic rather than to the use of
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`multilingual tribs. Plaintiff also reiterated that the patents-in-suit incorporate-by-reference
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`related applications that disclose multilingual tribs. Finally, Plaintiff cited 01 Communique
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`Laboratory, Inc. v. LogMeIn, Inc., 687 F.3d 1292 (Fed. Cir. 2012), for the proposition that if the
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`prosecution history is subject to a reasonable, non-limiting interpretation, then there is no
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`disclaimer.
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`(2) Analysis
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`Claim 1 of the ‘580 Patent is representative and recites (emphasis added):
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`1. A communication device capable of communicating according to a
`master/slave relationship in which a slave communication from a slave to a master
`occurs in response to a master communication from the master to the slave, the
`device comprising:
`
`a transceiver, in the role of the master according to the master/slave
`relationship, for sending at least transmissions modulated using at least two types
`of modulation methods, wherein the at least two types of modulation methods
`comprise a first modulation method and a second modulation method, wherein the
`second modulation method is of a different type than the first modulation method,
`wherein each transmission comprises a group of transmission sequences, wherein
`each group of transmission sequences is structured with at least a first portion and
`a payload portion wherein first information in the first portion indicates at least
`which of the first modulation method and the second modulation method is used
`for modulating second information in the payload portion, wherein at least one
`group of transmission sequences is addressed for an intended destination of the
`payload portion, and wherein for the at least one group of transmission sequences:
`
`the first information for said at least one group of transmission sequences
`comprises a first sequence, in the first portion and modulated according to the first
`modulation method, wherein the first sequence indicates an impending change
`from the first modulation method to the second modulation method, and
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`the second information for said at least one group of transmission
`sequences comprises a second sequence that is modulated according to the second
`modulation method, wherein the second sequence is transmitted after the first
`sequence.
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`As an initial matter, Defendants’ proposed constructions appear to render redundant the
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`recital of “wherein the second modulation method is of a different type than the first modulation
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`method.” Defendants have countered that “[t]he limitations of these claims requiring ‘different’
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`modulation methods are . . . already superfluous” because “[Plaintiff] admits that the terms ‘first’
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`and ‘second’ . . . are used to distinguish two items that (while similarly named) are, in fact,
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`different.” Dkt. No. 102 at 15. Nonetheless, such redundancy is disfavored when construing
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`claims. See Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A
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`claim construction that gives meaning to all the terms of the claim is preferred over one that does
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`not do so.”); see also Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1562 (Fed. Cir. 1991)
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`(noting that “[a]ll the limitations of a claim must be considered meaningful”).
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`
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`As for the specification, the Background section of the ‘580 Patent states that prior art
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`systems required all modems to use a single, common modulation method:
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`In existing data communications systems, a transmitter and receiver modem pair
`can successfully communicate only when the modems are compatible at the
`physical layer. That is, the modems must use compatible modulation methods.
`This requirement is generally true regardless of the network topology. For
`example, point-to-point, dial-up modems operate in either the industry standard
`V.34 mode or the industry standard V.22 mode. Similarly, in a multipoint
`architecture, all modems operate, for example, in the industry standard V.27bis
`mode. While the modems may be capable of using several different modulation
`methods, a single common modulation is negotiated at the beginning of a data
`session to be used throughout the duration of the session.
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`‘580 Patent at 1:26-39 (emphasis added). The specification then discloses using different
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`modulation methods:
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`For example, some applications (e.g., internet access) require high performance
`modulation, such as quadrature amplitude modulation (QAM), carrier amplitude
`and phase (CAP) modulation, or discrete multitone (DMT) modulation, while
`other applications (e.g., power monitoring and control) require only modest data
`rates and therefore a low performance modulation method.
`
` *
`
` * *
`
`
`While it is possible to use high performance tribs running state of the art
`modulation methods such as QAM, CAP, or DMT to implement both the high and
`low data rate applications, significant cost savings can be achieved if lower cost
`tribs using low performance modulation methods are used to implement the lower
`data rate applications.
`
`Id. at 2:1-8 & 5:17-22 (emphasis added).
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`A block diagram of a master transceiver 64 in communication with a trib 66 in
`accordance with the principles of the present invention is shown in FIG. 3. * * *
`
`Trib 66 comprises CPU 82 in communication with modulator 84, demodulator 86,
`and memory 88. Memory 88, likewise holds software control program 92 and
`any data necessary for the operation of trib 66. Control programs 78 and 92, are
`executed by CPUs 68 and 82 and provide the control logic for the processes to be
`discussed herein. Control program 92 includes logic for implementing a
`particular modulation method, which, for purposes of illustration, is called
`type X[.] Inasmuch as master transceiver 64 is capable of running either a type A
`or a type B modulation method, type X refers to one of those two modulation
`methods.
`
`Id. at 5:23-25 & 5:42-44 (emphasis added).
`
`[A]s shown in FIG. 5, master transceiver 64 establishes type A as the primary
`modulation in sequence 104. Note that because trib 66b responds only to type B
`modulation transmissions, only the type A tribs 66a-66a are receptive to
`transmission sequence 104.
`
` *
`
` * *
`
`
`Note that the trailing sequence 114 is ineffective in establishing the termination of
`a communication session between master transceiver 64 and a type B trib 66b
`because the trailing sequence is transmitted using type A modulation.
`
`Id. at 5:65-6:2 & 6:25-29.
`
`
`
`The specification does not, however, warrant Defendants’ proposed finding that the
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`invention is framed exclusively in the realm of monolingual tribs. Instead, the specification
`
`discloses that the advantage of using multiple modulation methods is applicable to multi-lingual
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`tribs:
`
`
`
`The present invention has many advantages, a few of which are delineated
`hereafter as merely examples.
`
`
`One advantage of the present invention is that it provides to the use of a plurality
`of modem modulation methods on the same communication medium.
`
`Another advantage of the present invention is that a master transceiver can
`communicate seamlessly with tributary transceivers or modems using
`incompatible modulation methods.
`
`
`
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`IPR2020-00034 Page 00013
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`

`

`Case 2:13-cv-00213-JRG-RSP Document 114 Filed 07/10/14 Page 14 of 57 PageID #: 3882
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`‘580 Patent at 2:50-57 (emphasis added).
`
`
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`As to the prosecution history, Defendants have focused on: (1) a statement regarding the
`
`“present invention” during prosecution of an ancestor patent; and (2) the patentee’s deletion of
`
`certain paragraphs from the specification of the patents-in-suit.
`
`
`
`First, Defendants have cited the prosecution history of ancestor United States Patent No.
`
`6,616,838, during which the patentee stated: “The present invention is directed to the use of
`
`differing transceivers responsive to different modulation methods to the exclusion of other
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`modulation methods . . . .” Dkt. No. 97, Ex. 17, 9/27/2001 First Amendment and Response at 6.
`
`Yet, the ‘580 Patent is a continuation of a continuation of a continuation-in-part of the ‘838
`
`Patent. The multiple intervening applications render the cited prosecution statement too
`
`attenuated to be deemed definitive as to the patents-in-suit, particularly given that the patentee
`
`was adding the “exclusion” language to a claim and was referring to “[t]he present invention” in
`
`the context of that claim. See id. at 6 & A-1; see also Invitrogen Corp. v. Clontech Labs., Inc.,
`
`429 F.3d 1052, 1078 (Fed. Cir. 2005) (“[T]he prosecution of one claim term in a parent
`
`application will generally not limit different claim language in a continuation application.”); cf.
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`Regents of the Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 943 (Fed. Cir. 2013) (“When
`
`the purported disclaimers made during prosecution are directed to specific claim terms that have
`
`been omitted or materially altered in subsequent applications (rather than to the invention itself),
`
`those disclaimers do not apply.”) (quoting Saunders Grp., Inc. v. Comfortrac, Inc., 492 F.3d
`
`1326, 1333 (Fed. Cir. 2007)).
`
`
`
`Second, Defendants have cited the patentee’s deletion of matter from the specification of
`
`the patents-in-suit. In the case of Abbott Laboratories v. Sandoz, Inc., cited by Defendants
`
`
`
`
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`IPR2020-00034 Page 00014
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`

`

`Case 2:13-cv-00213-JRG-RSP Document 114 Filed 07/10/14 Page 15 of 57 PageID #: 3883
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`during the May 30, 2014 hearing, the court relied at least in part upon the patentee’s omission of
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`matter contained in a parent application:
`
`[T]he specification refers several times to “Crystal A of the compound (I) of the
`present invention” and offers no suggestion that the recited processes could
`produce non-Crystal A compounds, even though other types of cefdinir crystals,
`namely Crystal B, were known in the art. As noted earlier, the Crystal B
`formulation actually appears in the parent JP ‘199 application. Thus, Abbott
`knew exactly how to describe and claim Crystal B compounds. Knowing of
`Crystal B, however, Abbott chose to claim only the A form in the ‘507 patent.
`Thus, the trial court properly limited the term “crystalline” to “Crystal A.”
`
` *
`
` * *
`
`
`In limiting “crystalline” to “Crystal A” in claims 1-5, the Eastern District of
`Virginia did not improperly import the preferred embodiment into the claims.
`Initially, Crystal A is the only embodiment described in the specification. As
`discussed above, the specification’s recitation of Crystal A as its sole embodiment
`does not alone justify the trial court’s limitation of claim scope to that single
`disclosed embodiment. See Liebel-Flarsheim [Co. v. Medrad, Inc.], 358 F.3d
`[898,] 906 [(Fed. Cir. 2004)] (“[T]his court has expressly rejected the contention
`that if a patent describes only a single embodiment, the claims of the patent must
`be construed as being limited to that embodiment.”). In this case, however, the
`rest of the intrinsic evidence, including the prosecution history and the priority JP
`‘199 application, evince a clear intention to limit the ‘507 patent to Crystal A