Case 5:19-cv-00036-RWS Document 235 Filed 03/18/20 Page 1 of 57 PageID #: 9076
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`MAXELL LTD.,
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`Plaintiff,
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`v.
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`APPLE INC,
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`Defendant.
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`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`CIVIL ACTION NO. 5:19-CV-00036-RWS
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`CLAIM CONSTRUCTION MEMORANDUM AND ORDER
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`On January 8, 2020, the Court held an oral hearing to construe the disputed claim terms of
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`the patents-in-suit. Having considered the parties’ claim-construction briefing and based on the
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`intrinsic and extrinsic evidence, the Court construes the disputed terms in this Memorandum and
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`Order as detailed below. See Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (2015); Phillips
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`v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005).
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`Case 5:19-cv-00036-RWS Document 235 Filed 03/18/20 Page 2 of 57 PageID #: 9077
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`BACKGROUND
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`Plaintiff Maxell brings suit alleging that Apple infringes the following ten patents: U.S.
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`Patent Nos. 6,748,317 (the “ ’317 patent); 6,580,999 (the “ ’999 patent”); 6,430,498 (the “ ’498
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`patent”); 8,339,493 (the “ ’493 patent”); 6,329,794 (the “ ’794 patent”); 6,408,193 (the “ ’193
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`patent”); 6,928,306 (the “ ’306 patent”); 10,084,991 (the “ ’991 patent”); 7,116,438 (the “ ’438
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`patent”); and 10,212,586 (the “ ’586 patent). Eight of the asserted patents contain disputed terms.
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`Maxell previously asserted five of the patents (the ’438 patent, the ’317 patent, the ’493
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`patent, the ’193 patent and the ’794 patent) against other defendants in prior litigation––Maxell
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`Ltd. v. Huawei Device USA, Inc., 297 F. Supp. 3d 668 (E.D. Tex. 2018). However, the Court has
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`not construed any of the presently disputed terms.
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`APPLICABLE LAW
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`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to
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`which the patentee is entitled the right to exclude.’ ” Phillips, 415 F.3d 1303 at 1312 (en banc)
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`(quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed.
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`Cir. 2004)). The Court first examines a patent’s intrinsic evidence to define the patented
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`invention’s scope. Id. at 1313–14; Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group, Inc.,
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`262 F.3d 1258, 1267 (Fed. Cir. 2001). Intrinsic evidence includes the claims themselves, the
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`specification and the prosecution history. Phillips, 415 F.3d at 1312–13; C.R. Bard, Inc. v. U.S.
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`Surgical Corp., 388 F.3d 858, 861 (Fed. Cir. 2004). . The general rule—subject to certain specific
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`exceptions discussed infra—is that each claim term is construed according to its ordinary and
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`accustomed meaning as understood by one of ordinary skill in the art at the time of the invention
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`in the context of the patent. Phillips, 415 F.3d at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342
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`F.3d 1361, 1368 (Fed. Cir. 2003); see also Azure Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347
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`(Fed. Cir. 2014) (“There is a heavy presumption that claim terms carry their accustomed meaning
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`in the relevant community at the relevant time.”).
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`“The claim construction inquiry . . . begins and ends in all cases with the actual words of
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`the claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998).
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`“[I]n all aspects of claim construction, ‘the name of the game is the claim.’ ” Apple Inc. v.
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`Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362,
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`1369 (Fed. Cir. 1998)). First, a term’s context in the asserted claim can be instructive. Phillips,
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`415 F.3d at 1314. Other asserted or unasserted claims can also aid in determining the claim’s
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`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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`“[C]laims ‘must be read in view of the specification, of which they are a part.’ ” Id.
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`(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995)). “[T]he
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`specification ‘is always highly relevant to the claim construction analysis. Usually, it is
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`dispositive; it is the single best guide to the meaning of a disputed term.’ ” Id. (quoting Vitronics
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`Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am.
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`Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). In the specification, a patentee may define his own
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`terms, give a claim term a different meaning than it would otherwise possess, or disclaim or
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`disavow some claim scope. Phillips, 415 F.3d at 1316. Although the Court generally presumes
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`terms possess their ordinary meaning, this presumption can be overcome by statements of clear
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`disclaimer. See SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337,
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`1343–44 (Fed. Cir. 2001). This presumption does not arise when the patentee acts as his own
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`lexicographer. See Irdeto Access, Inc. v. EchoStar Satellite Corp., 383 F.3d 1295, 1301 (Fed. Cir.
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`2004).
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`“Although the specification may aid the court in interpreting the meaning of disputed claim
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`language, particular embodiments and examples appearing in the specification will not generally
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`be read into the claims.” Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir.
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`1998) (quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988));
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`see also Phillips, 415 F.3d at 1323. “[I]t is improper to read limitations from a preferred
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`embodiment described in the specification—even if it is the only embodiment—into the claims
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`absent a clear indication in the intrinsic record that the patentee intended the claims to be so
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`limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).
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`The prosecution history is another tool to supply the proper context for claim construction
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`because, like the specification, the prosecution history provides evidence of how the U.S. Patent
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`and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415 F.3d at 1317.
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`However, “because the prosecution history represents an ongoing negotiation between the PTO
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`and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the
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`specification and thus is less useful for claim construction purposes.” Id. at 1318; see also Athletic
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`Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996) (ambiguous prosecution
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`history may be “unhelpful as an interpretive resource”).
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`Although extrinsic evidence is useful, it is “less significant than the intrinsic record in
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`determining the legally operative meaning of claim language.” Phillips, 415 F.3d at 1317 (quoting
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`C.R. Bard, Inc., 388 F.3d at 862) (internal quotation marks omitted). Technical dictionaries and
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`treatises may help a court understand the underlying technology and the manner in which one
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`skilled in the art might use claim terms, but technical dictionaries and treatises may provide
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`Case 5:19-cv-00036-RWS Document 235 Filed 03/18/20 Page 5 of 57 PageID #: 9080
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`definitions that are too broad or may not be indicative of how the term is used in the patent. Id. at
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`1318. Similarly, expert testimony may aid a court in understanding the underlying technology and
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`determining the particular meaning of a term in the pertinent field, but an expert’s conclusory,
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`unsupported assertions as to a term’s definition are not useful. Id. Generally, extrinsic evidence
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`is “less reliable than the patent and its prosecution history in determining how to read claim terms.”
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`Id.
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`A. Functional Claiming and 35 U.S.C. § 112, ¶ 6(pre-AIA)/ § 112(f) (AIA)
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`A patent claim may be expressed using functional language. See 35 U.S.C. § 112 ¶ 6;
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`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347–49 & n.3 (Fed. Cir. 2015) (en banc in
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`relevant portion). Section 112, Paragraph 6, provides that a structure may be claimed as a “means
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`. . . for performing a specified function” and that an act may be claimed as a “step for performing
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`a specified function.” Masco Corp. v. United States, 303 F.3d 1316, 1326 (Fed. Cir. 2002).
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`But § 112 ¶ 6 does not apply to all functional claim language. There is a rebuttable
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`presumption that § 112 ¶ 6 applies when the claim language includes “means” or “step for” terms
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`and that it does not apply in the absence of those terms. Masco Corp., 303 F.3d at 1326;
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`Williamson, 792 F.3d at 1348. The presumption stands or falls according to whether one of
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`ordinary skill in the art would understand the claim with the functional language, in the context of
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`the entire specification, to denote sufficiently definite structure or acts for performing the function.
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`See Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1372 (Fed. Cir. 2015)
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`(Section 112, ¶ 6 does not apply when “the claim language, read in light of the specification, recites
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`sufficiently definite structure” (internal quotation marks omitted) (citing Williamson, 792 F.3d at
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`1349; Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1099 (Fed. Cir. 2014))); Personalized
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`Media Communications, L.L.C. v. Int’l Trade Commission, 161 F.3d 696, 704 (Fed. Cir. 1998)
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`Case 5:19-cv-00036-RWS Document 235 Filed 03/18/20 Page 6 of 57 PageID #: 9081
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`(“ ‘[W]here a claim recites a function, but then goes on to elaborate sufficient structure, material,
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`or acts within the claim itself to perform entirely the recited function, the claim is not in means-
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`plus-function format’ even if the claim uses the term ‘means’ ”).
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`When it applies, § 112 ¶ 6 limits the scope of the functional term “to only the structure,
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`materials, or acts described in the specification as corresponding to the claimed function and
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`equivalents thereof.” Williamson, 792 F.3d at 1347. Construing a means-plus-function limitation
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`involves multiple steps. “The first step . . . is a determination of the function of the means-plus-
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`function limitation.” Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311
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`(Fed. Cir. 2001). “[T]he next step is to determine the corresponding structure disclosed in the
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`specification and equivalents thereof.” Id. A “structure disclosed in the specification is
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`‘corresponding’ structure only if the specification or prosecution history clearly links or associates
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`that structure to the function recited in the claim.” Id. The focus of the “corresponding structure”
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`inquiry is not merely whether a structure is capable of performing the recited function, but rather
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`whether the corresponding structure is “clearly linked or associated with the [recited] function.”
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`Id. The corresponding structure “must include all structure that actually performs the recited
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`function.” Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed.
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`Cir. 2005). However, § 112 does not permit “incorporation of structure from the written
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`description beyond that necessary to perform the claimed function.” Micro Chem., Inc. v. Great
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`Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999).
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`AGREED TERMS
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`Before the Markman hearing, the parties agreed to construction for the following terms:
`
`
`TERM
`“function devices”
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`(‘794 patent, claims 1, 3, 6)
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`AGREED CONSTRUCTION
`Function: equipped with independent functions
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`“component devices”
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`(‘794 patent, claims 9, 14)
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`“a time zone which is set up in
`advance”
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`(‘306 patent, claim 14)
`for
`“an authentication process
`allowance
`to use said display
`apparatus”
`
`(‘438 patent, claim 1)
`for
`“an authentication process
`allowance to use said information-
`processing terminal”
`
`(‘438 patent, claim 4)
`“A cellular telephone adapted to be
`used in a CDMA system”
`
`(‘193 patent, claims 1, 7)
`“variable amplitude amplifier”
`
`(‘193 patent, claims 1, 6, 7)
`relation
`“function
`defining
`a
`between bias data and gain data
`stored in said memory”
`
`(‘193 patent, claim 7)
`“voice signal code” and
`“voice code signal”
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`(‘193 patent, claims 1, 7)
`“an image-instability detector”
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`(‘493 patent, claims 4, 6)
`“an image-instability of the electric
`camera”
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`(‘493 patent, claims 4, 6)
`“a device for getting a direction
`information denoting an orientation
`of said portable terminal”
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`Structure: modem devices, audio communication devices
`and videophone devices; or equivalents thereof
`Function: performing different functions
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`Structure: modem devices, audio communication devices
`and videophone devices; or equivalents thereof
`“a duration of time or a range of hours set up in advance”
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`“a process that authorizes the user to use the display
`apparatus”
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`“a process that authorizes the user to use the information-
`processing terminal”
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`The preamble is limiting.
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`“an amplifier whose output amplitude may be varied and
`that provides a variable gain in response to a control
`signal”
`“a relationship between bias data and gain data stored in
`memory such
`that each gain data value has a
`corresponding bias data value”
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`The two terms have the same meaning.
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`“a detector, such as a gyroscopic sensor or the like,
`capable of detecting an image instability of the electric
`camera”
`“instability caused by vertical and/or horizontal
`movement of the electric camera”
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`Function: getting direction information denoting an
`orientation of said portable terminal
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`Case 5:19-cv-00036-RWS Document 235 Filed 03/18/20 Page 8 of 57 PageID #: 9083
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`(‘317 patent, claims 1, 10;
` ‘498 patent, claims 1, 10;
` ‘999 patent, claim 1)
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`Structure: a compass, gyroscope, and/or sensor such as a
`clinometer in conjunction with a CPU, or equivalents
`thereof
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`The Court adopts the constructions agreed to by the parties as listed above.
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`DISPUTED TERMS
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`A. The ’371, ’498 and ’999 Patents
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`The ’317 patent, the ’498 patent and the ’999 patent share a specification. The ’317 patent
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`is a continuation of the ’999 patent, which is a continuation of the ’498 patent. The patents have
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`the same title: “Portable Terminal with the Function of Walking Navigation.” The ’317 patent’s
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`abstract is reproduced below:
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`A portable terminal has a function of walking navigation. The direction of a
`destination is displayed by an indicating arrow that always points in the direction
`of the destination. In the navigation processing, the user enters data to select a
`menu and/or set retrieving conditions on the setup screen. At first, the user gets the
`location information of the portable terminal, represented by a latitude/longitude or
`coordinates and an altitude, for example. Then, the user gets the direction
`information of the portable terminal, which is the direction of the tip of the portable
`terminal as determined by a compass, a gyro, or a clinometer. The location
`information and the direction information are set as terminal information for the
`retrieving conditions. The system controls retrieving of the database and retrieves
`the information corresponding to the selected menu, such as route guidance.
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`More particularly, the patents disclose a portable terminal which includes devices for
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`obtaining a location and direction of the user’s present place so that the user does not have to input
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`such information. ’317 patent at 2:51–3:26. A block diagram of a portable terminal is illustrated
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`in Figure 10 in the ’317 patent. In the figure, the portable terminal has various devices (input
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`device, display device, etc.) coupled to a CPU that provides for the walking navigation functions
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`described in the patent.
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`Claim 1 of the ’317 patent is an asserted claim and is reproduced below:
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`1. A portable terminal, comprising:
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`a device for getting location information denoting a present place of said
`portable terminal;
`a device for getting a direction information denoting an orientation of said
`portable terminal;
`an input device for inputting a destination; and
`a display,
`wherein said display displays positions of said destination and said
`present place, and a relation of said direction and a direction from said
`present place to said destination, and
`said display changes according to a change of said direction of said
`portable terminal orientation for walking navigation.
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`The Court construed various terms in the ’317 in the prior litigation, but none of them are
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`currently disputed.
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`The parties dispute four terms in the ’317, ’498 and ’999 patents. All are agreed to be
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`means-plus-function limitations. Three of the disputed terms have the same dispute as to the
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`corresponding structure and are thus grouped together for similar analysis.
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`1. “a device for getting location information denoting a present place”
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`Maxell’s
`Proposed Construction
`function: getting
`location
`Agreed
`information denoting a present place of
`said portable terminal
`
`Structure: a wireless or cellular antenna,
`a GPS, a PHS, or the like; such a data
`receiver as an infrared ray sensor, or the
`like; and a CPU for analyzing received
`data; or equivalents thereof.
`
`Apple’s
`Proposed Construction
`Agreed function: getting location information
`denoting a present place of said portable terminal
`
`Structure: a wireless or cellular antenna, or a GPS,
`or a Personal Handyphone System (PHS); and an
`infrared ray sensor; and a control unit for analyzing
`received data, with the control unit calculating
`location information as disclosed in ’498 at 5:48-56
`and Fig. 2; or equivalents thereof
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`The term “a device for getting location information denoting a present place” appears in
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`claims 1 and 10 of the ’317 patent, claims 1 and 10 of the ’498 patent and claim 1 of the ’999
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`patent.
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`(1) The Parties’ Positions
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`The parties agree that the term is a means-plus-function term and agree on the recited
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`function. The parties dispute whether the corresponding structure must include an “infrared ray
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`sensor” or whether it may include other “data receivers.”
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`The parties first dispute whether statements made in a prior IPR proceeding mandate the
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`inclusion of an “infrared ray sensor” as opposed to a general “data receiver.” See, e.g., Docket
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`No. 161 at 26. Apple asserts that Maxell disclaimed claim scope to defeat an Inter Partes review
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`(“IPR”) petition filed by ASUStek Computer Inc. (“ASUS”). Id. Specifically, Maxell
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`distinguished each prior art reference in the petition as lacking an infrared ray sensor. Id. To
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`Apple, “by distinguishing the claimed invention over prior art, [Maxell has] indicat[ed] what the
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`claims do not cover.” Id. at 26 (quoting Bd. of Regents of the Univ. of Texas Sys. v. BENQ Am.
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`Corp., 533 F.3d 1362, 1373 (Fed. Cir. 2008)). Apple argues this is a “clear disclaimer of claim
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`scope.” Id.
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`Maxell asserts that the Court is not bound by the PTAB’s claim interpretation because, at
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`the time of the IPR in question, the PTAB had a different claim construction standard.1 Docket
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`No. 136 at 28. Maxell further contends that it did not clearly disclaim claim scope. Docket No.
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`165 at 10. Instead, Maxell asserts that it used ASUS’s proposed construction to argue that ASUS
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`failed to meet the PTAB’s requirements, but did not adopt its construction, reserving its right to
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`contest that construction later. Id.
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`Apple then asserts that, even if the IPR proceedings are not binding, the corresponding
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`structure is limited to an “infrared ray sensor.” Docket No. 161 at 28. Apple notes that the
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`specification depicts a “device for getting location information” in Figure 10 and describes the
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`1 The PTAB has since abandoned the broadest reasonable interpretation standard and adopted the Phillips standard
`for claim construction. See 37 C.F.R. 41.100(b).
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`Case 5:19-cv-00036-RWS Document 235 Filed 03/18/20 Page 11 of 57 PageID #: 9086
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`structure of this device as containing three components: (1) a wireless antenna, GPS or PHS; (2)
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`an infrared ray sensor; and (3) a control unit. Id. Apple asserts that “because an ‘infrared ray
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`sensor’ is part of the only disclosed embodiment for performing the recited function,” the claim
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`construction must include an “infrared ray sensor.” Id. at 28 (citing Mettler-Toledo, Inc. v. B-Tek
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`Scales, LLC, 671 F.3d 1291, 1296 (Fed. Cir. 2012)). Apple asserts that the phrase “such a receiver
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`as an infrared ray sensor” does not disclose any structure beyond an infrared ray sensor because
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`“data receiver” itself is not sufficiently definite structure. Id.; Docket No. 187 at 17:10–11.
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`Maxell asserts that Apple’s construction is overly narrow because it “rewrites the non-
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`limiting phrase of ‘such a data receiver as an infrared ray sensor or the like’ to ‘and an infrared ray
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`sensor.’ ” Docket No. 136 at 27.2 Maxell also contends that in the context of the patent––portable
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`telephones––and the rest of the corresponding structure, “data receiver” recites sufficient structure.
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`Docket No. 187 at 26:21–27:4.
`
`(2) Analysis
`
`The parties agree that the term is a means plus function term and that the recited function
`
`is “getting location information denoting a present place of said portable terminal.” “[T]he next
`
`step is to determine the corresponding structure disclosed in the specification and equivalents
`
`thereof.” Id. Under § 112 ¶ 6, means-plus-function terms are limited “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. Consistent with the claims, the specification
`
`discloses that the portable terminal has a “device for getting location information 77,” depicted in
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`2 Maxell also asserted in briefing that the patents disclose “data receiver” as an alternative to a GPS or PHS. Docket
`No. 136 at 27. However, during the Markman hearing, Maxell agreed that “data receiver” was a separate requirement
`from the GPS or PHS. Docket No. 187 at 28:4–6.
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`Case 5:19-cv-00036-RWS Document 235 Filed 03/18/20 Page 12 of 57 PageID #: 9087
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`Figure 10 of the ’498 patent. Both parties agree that device 77 is corresponding structure for the
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`recited function. The specification describes device 77 as follows:
`
`The device for getting location information 77 is provided with such a wireless
`antenna, a GPS or PHS, or the like; such a data receiver as an infrared ray sensor,
`or the like; and a control unit for analyzing received data, thereby calculating
`location information.
`
`
`
`’498 patent at 9:40–44. The parties dispute whether the “infrared ray sensor” is an
`
`exemplary “data receiver,” which is itself disclosed structure, or whether the corresponding
`
`structure requires an “infrared ray sensor.” For the reasons detailed below, the Court finds that the
`
`corresponding structure is not limited to an infrared ray sensor.
`
`Maxell’s statements during the IPR proceedings are not a clear disavowal of claim scope.
`
`In its IPR petition, ASUS proposed a construction for the corresponding structure of the currently
`
`disputed limitation: “a wireless or cellular antenna, OR a GPS, OR a Personal Handyphone
`
`System, AND an infrared ray sensor; AND a control unit for analyzing received data, with the
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`control unit calculating information as disclosed in 5:48–56, and Fig. 2.” Docket No. 165-4 at 18–
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`19. ASUS then applied this limitation to the prior art. Id.
`
`Maxell responded:
`
`While Patent Owner does not contend that such a construction is proper, for
`purposes of the IPR, it is Petitioner’s burden to propose a construction and then
`explain how the construed claim is unpatentable. See 37 C.F.R. § 42.104(b)(4).
`The Petition fails to do so. Thus, the Petition does not comply with the
`requirements set forth in 37 C.F.R. § 42.104, and for this reason alone, the Petition
`should not be instituted.
`
`Id. at 14 n.4 (emphasis added). Maxell then argued that ASUS had failed to meet its burden of
`
`demonstrating that institution of the IPR was warranted because it had not shown that the cited
`
`prior art included an infrared ray sensor, part of ASUS’s own proposed construction. Id. at 14–
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`15. Maxell never agreed that the corresponding structure is limited to an “infrared ray sensor” and
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`Case 5:19-cv-00036-RWS Document 235 Filed 03/18/20 Page 13 of 57 PageID #: 9088
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`instead expressly reserved its right to contest the construction. Id. at 10–11, n. 3. Maxell had no
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`reason to contest the propriety of ASUS’s construction because Maxell successfully used ASUS’s
`
`own proposed construction to defeat the IPR petition. These statements are far from clear and
`
`unmistakable surrender of claim scope.
`
`Turning to the traditional claim construction analysis, then, Apple’s proposed structure
`
`improperly limits the corresponding structure. Section 112 ¶ 6 requires that a means-plus-function
`
`term be given the full scope of the structure described in the specification. IP Innovation LLC v.
`
`Red Hart, Inc., No. 2:07-cv-447, 2009 WL 2460982, at *6 (E.D. Tex. Aug. 10, 2009); see also
`
`Home Diagnostics, Inc v. LifeScan, Inc., 381 F.3d 1352, 1357 (Fed. Cir. 2004). The description
`
`for the “device for getting location information 77” recites “such a data receiver as an infrared ray
`
`sensor.” ’498 patent at 9:40–44. “Data receiver” is clearly associated with the agreed function.
`
`See Williamson, 792 F.3d at 1352 (Corresponding structure is adequate if “a person of ordinary
`
`skill in the art would be able to recognize the structure in the specification and associate it with the
`
`corresponding function of the claim.”).
`
`Just as a non means-plus-function term may cover a broad class of structures, the
`
`corresponding structure in a means-plus-function term can include a broad class of structures if
`
`the class of structures is identifiable by a person of ordinary skill in the art. See Linear Tech. Corp.
`
`v. Impala Linear Corp., 379 F.3d 1311, 1322 (Fed. Cir. 2004) (holding that corresponding structure
`
`is not limited to a single structure); Network Appliance Inc. v. Sun Microsystems, Inc., No. C-07-
`
`06053 EDL, 2008 WL 4193049, at *20 n.7 (N.D. Cal. 2008) (confirming that Linear Tech’s
`
`holding applies to corresponding structure of MPF terms).
`
`Courts routinely conclude that “receiver” connotes sufficiently definite structure. See, e.g.,
`
`EnOcean GmbH v. Face Intern. Corp., 742 F.3d 955, 959 (Fed. Cir. 2014) (“The term receiver
`
`IPR2020-00203
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`

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`Case 5:19-cv-00036-RWS Document 235 Filed 03/18/20 Page 14 of 57 PageID #: 9089
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`presumptively connotes sufficiently definite structure to those of skill in the art.”); Ambato Media,
`
`LLC v. Clarion Co., Ltd., No. 2:09-cv-242-TJW, 2011 WL 2912764, at *8–9 (E.D. Tex. July 18,
`
`2011) (declining to limit corresponding structure for means-plus-function term to a subset of
`
`exemplary receivers “such as television receivers, VCRs, cable interface boxes and the like”
`
`because broader “receiver” was structure clearly linked to the function); see also Mobile
`
`Telecommunications Tech. LLC v. LG Elec. Mobilecomm USA, Inc., No. 2:13-cv-947-JRG-RSP,
`
`2015 WL 2250418, at *18 (E.D. Tex. May 13, 2015) (construing a “receiver” as corresponding
`
`structure for a means-plus-function term). Apple’s expert does not opine that “data receiver” is
`
`not structural. Instead, Apple’s expert stated that not all data receivers were capable of determining
`
`location information in the same way as infrared ray sensors and that “infrared ray sensor” was the
`
`only example of a data receiver disclosed. See Docket No. 161-5 at ¶ 34. This does not render
`
`data receiver not structural.
`
`Because “data receiver” is structure that is clearly linked to the recited function, data
`
`receiver is disclosed structure. See Ambato Media, 2011 WL 2912764, at *8–9 (construing means-
`
`plus-function term to have corresponding structure of “receiver” because receiver was structure
`
`linked to the recited function for the disputed term). Limiting the corresponding structure to
`
`require more specifically an “infrared ray sensor” would be improper. Id.
`
`It would also be improper for the construction to include “infrared ray sensor” as an
`
`exemplary data receiver. The phrase “such a data receiver as an infrared ray sensor” is properly
`
`read as disclosing a “data receiver” and providing “infrared ray sensor” as an example. Such
`
`exemplary language could be interpreted as limiting. See Hitachi Consumer Elecs. Co. Ltd. v. Top
`
`Victory Elecs. (Taiwan) Co. Ltd., No. 2:10-cv-260-JRG, 2012 WL 5494087, at *13 (E.D. Tex.
`
`Nov. 13, 2012) (omitting exemplary language from the construction because examples were
`
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`Case 5:19-cv-00036-RWS Document 235 Filed 03/18/20 Page 15 of 57 PageID #: 9090
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`“unnecessary and might be read as limiting”). That would be improper for the reasons discussed
`
`above.
`
`Accordingly, the Court construes “a device for getting location information denoting a
`
`present place” to mean:
`
`Function: getting a location information denoting a present place of said portable terminal
`
`Structure: a wireless or cellular antenna, a GPS, a PHS, or the like; a data receiver; and a
`
`CPU for analyzing received data; or equivalents thereof.
`
`2. “device for getting a location information . . .” / “device for retrieving”
`
`Term
`
`“a device for getting a
`location information of
`another
`portable
`terminal
`from
`said
`another
`portable
`terminal via connected
`network”
`(‘317 patent, claim 10)
`
`Maxell’s
`Proposed Construction
`Agreed function: getting a
`location
`information
`of
`another portable
`terminal
`from said another portable
`terminal
`via
`connected
`network
`
`Structure: CPU and device for
`data communication 76 of a
`portable
`terminal;
`or
`equivalents thereof
`
`“a device for getting a
`location information of
`another
`portable
`terminal”;
`(‘999 patent, claim 1)
`
`Agreed function: getting a
`location
`information
`of
`another portable terminal
`
`Structure: [same as above]
`
`“a device for retrieving
`a
`route
`from
`said
`present place to said
`destination”
`(‘317 patent, claim 15)
`
`Agreed function: retrieving a
`route from said present place
`to said destination
`
`Structure: [same as above]
`
`Apple’s
`Proposed Construction
`Agreed function: getting a location
`information of another portable
`terminal from said another portable
`terminal via connected network
`
`Structure: CPU 71 and device for
`data communication 76 of a
`portable telephone and a Personal
`Handyphone
`System
`(PHS)
`terminal (Figure 10, ’317 Patent at
`9:40–50); or equivalents thereof
`
`Agreed function: getting a location
`information of another portable
`terminal
`
`Structure: [same as above]
`
`Agreed function: retrieving a route
`from said present place to said
`destination
`
`Structure: [same as above]
`
`
`The disputed term “a device for getting a location information of another portable terminal
`
`from said another portable terminal via connected network” appears in claim 10 of the ’317 patent.
`
`IPR2020-00203
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`Case 5:19-cv-00036-RWS Document 235 Filed 03/18/20 Page 16 of 57 PageID #: 9091
`
`The disputed term “a device for getting a location information of another portable terminal”
`
`appears in claim 1 of the ’999 patent. The disputed term “a device for retrieving a route from said
`
`present place to said destination” appears in claim 15 of the ’317 p