`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`UNILOC 2017 LLC,
`
`
`
`
`
`
`
`Plaintiff,
`
`v.
`
`SAMSUNG ELECTRONICS AMERICA,
`INC. and SAMSUNG ELECTRONICS
`CO. LTD.,
`
`
`
`
`
`Defendants.
`
`
`
`
`
`Case No. 2:18-cv-00508-JRG
`
`CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER
`
`Before the Court is the opening claim construction brief of Uniloc 2017 LLC (“Plaintiff”)
`
`(Dkt. No. 42, filed on November 5, 2019),1 the response of Samsung Electronics America, Inc.
`
`and Samsung Electronics Co., Ltd. (collectively “Defendants”) (Dkt. No. 47, filed on November
`
`19, 2019), and Plaintiff’s reply (Dkt. No. 48, filed on November 26, 2019). The Court held a
`
`hearing on the issues of claim construction and claim definiteness on December 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
`are to the page numbers assigned through ECF.
`
`
`1
`
`
`
`
`
`number in the docket (Dkt. No.) and pin cites
`
`Uniloc Ex. 2003
` IPR2020-00701
`p. 1
`
`
`
`
`
`

`

`
`
`Table of Contents
`
`I.
`
`II.
`
`BACKGROUND ............................................................................................................... 3
`
`LEGAL PRINCIPLES ..................................................................................................... 4
`
`A.
`
`B.
`
`C.
`
`D.
`
`Claim Construction ................................................................................................. 4
`
`Departing from the Ordinary Meaning of a Claim Term ........................................ 7
`
`Functional Claiming and 35 U.S.C. § 112, ¶ 6 (pre-AIA) / § 112(f) (AIA) ........... 8
`
`Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA) ................. 10
`
`III. CONSTRUCTION OF DISPUTED TERMS ............................................................... 11
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`J.
`
`K.
`
`“linked user identification module” ...................................................................... 11
`
`“link between the mobile radiotelephony device and the linked user
`identification module” .......................................................................................... 17
`
`“a processing of outgoing calls” and “a processing of all outgoing calls” ........... 19
`
`“deblocking code” ................................................................................................. 21
`
`“protecting a mobile radiotelephony device” ....................................................... 24
`
`“blocking means for preventing a normal operation of the mobile
`radiotelephony device” ......................................................................................... 27
`
`“timing means for activating the blocking means in response to the mobile
`radiotelephony device being inactive during the normal operation of the
`mobile radiotelephony device for a defined period of time subsequent to a
`mounting of a linked user identification module inside the mobile
`radiotelephony device” ......................................................................................... 32
`
`“deblocking means for permitting the normal operation of the mobile
`radiotelephony device in response to a supply of a deblocking code to the
`mobile radiotelephony device subsequent to the mounting of the linked
`user identification module inside the mobile radiotelephony device and
`subsequent to the defined period of time” ............................................................ 36
`
`“locking means for facilitating an activation of the block means by the
`timing means” and “block means” ........................................................................ 41
`
`“connecting means for establishing a link between the mobile
`radiotelephony device and the linked user identification module” ....................... 46
`
`“test means for activating the blocking means when any unlinked user
`identification module is mounted inside the mobile radiotelephony device” ....... 49
`
`IV. CONCLUSION ............................................................................................................... 52
`
`
`
`2
`
`

`

`I.
`
`BACKGROUND
`
`
`
`Plaintiff alleges infringement of U.S. Patent No. 6,836,654 (the “’654 Patent”). The patent is
`
`entitled Anti-Theft Protection for a Radiotelephony Device. The application includes a priority
`
`claim to a foreign application filed on December 21, 1999, and the patent issued on December 28,
`
`2004.
`
`In general, the ’654 Patent is directed to technology for protecting a mobile radiotelephony
`
`device from unauthorized use.
`
`The abstract provides:
`
`A mobile radiotelephony device intended for accommodating a linked user
`identification module offers protection against theft. The device prevents a normal
`operation of the device with an unlinked identification module, and permits the
`normal operation of the device with the linked identification module until such time
`the device has been inactive for a defined period of time. A debugging code can be
`supplied to the device subsequent to a detection of the defined period of time to
`again permit the normal operation of the device with linked identification module.
`
`Claim 1, an exemplary device claim, and Claim 10, an exemplary method claim, recite as
`
`follows:
`
`1. A mobile radiotelephony device, comprising:
`the mobile
`blocking means for preventing a normal operation of
`radiotelephony device, wherein the normal operation includes a processing
`of outgoing calls;
`timing means for activating the blocking means in response to the mobile
`radiotelephony device being inactive during the normal operation of the
`mobile radiotelephony device for a defined period of time subsequent to a
`mounting of a linked user identification module inside the mobile
`radiotelephony device; and
`deblocking means for permitting the normal operation of the mobile
`radiotelephony device in response to a supply of a deblocking code to the
`mobile radiotelephony device subsequent to the mounting of the linked user
`identification module
`inside
`the mobile radiotelephony device and
`subsequent to the defined period of time.
`
`10. A method of protecting a mobile radiotelephony device, the method
`comprising:
`the mobile
`inside
`identification module mounted
`verfying a user
`radiotelephony device is linked to the mobile radiotelephony device;
`
`
`
`3
`
`

`

`
`
`detecting a period of inactivity of the mobile radiotelephony device during a
`normal operation of the mobile radiotelephony device, wherein the normal
`operation includes a processing of all outgoing calls;
`preventing the normal operation of the mobile radiotelephony device in
`response to the verification of the linked user identification module and in
`response to the detection of the period of inactivity of the mobile
`radiotelephony device.
`
`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,
`
`
`
`4
`
`

`

`
`
`Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362, 1369 (Fed.
`
`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
`
`
`
`5
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`

`

`
`
`and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415 F.3d at 1317.
`
`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
`
`Alts., 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
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`

`

`
`
`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 Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed.
`
`Cir. 2012)); see also GE Lighting Sols., 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 Sols., 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)
`
`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. Masco Corp., 303 F.3d 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, ¶ 6 does not apply when the claim includes an “act” corresponding
`
`to “how the function is performed”); Personalized Media Commc'ns, L.L.C. v. Int’l Trade
`
`Comm’n, 161 F.3d 696, 704 (Fed. Cir. 1998) (§ 112, ¶ 6 does not apply when the claim includes
`
`
`
`8
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`

`

`
`
`“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
`
`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
`
`
`
`9
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`

`

`
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`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)
`
`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., 572 U.S. 898, 910 (2014). If it does not, the claim fails § 112, ¶ 2
`
`and is therefore invalid as indefinite. Id. at 901. 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 911. 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. BASF Corp. v. Johnson
`
`Matthey Inc., 875 F.3d 1360, 1365 (Fed. Cir. 2017). “[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
`
`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, ¶ 6, the claim is invalid as indefinite
`
`if the claim fails to disclose adequate corresponding structure to perform the claimed function.
`
`Williamson, 792 F.3d at 1351–52. The disclosure is inadequate when one of ordinary skill in the
`
`
`
`10
`
`

`

`art “would be unable to recognize the structure in the specification and associate it with the
`
`
`
`corresponding function in the claim.” Id. at 1352.
`
`III. CONSTRUCTION OF DISPUTED TERMS
`
`A.
`
`“linked user identification module”
`
`Disputed Term3
`
`“linked user identification
`module”
`
`Plaintiff’s Proposed
`Construction
`ordinary meaning
`
`•
`
`’654 Patent Claims 1, 10,
`17
`
`alternatively:
`• user identification module
`linked to the device
`
`Defendants’ Proposed
`Construction
`a user identification module
`that is only one that permits
`normal operation of the
`device4
`
`The Parties’ Positions
`
`Plaintiff submits: Given Defendants’ use of “user identification module” in its proposed
`
`construction, Defendants are proposing that “linked” be rewritten to include at least four
`
`limitations that are not found in the plain and ordinary meaning of the term:
`
`(1) the user identification module has data; (2) that data has been read by the mobile
`radio telephony device; (3) that data has been stored on the mobile radio telephony
`device; and (4) the user identification module must be the only one that permits
`normal operation of the device.
`
`But these limitations are not supported by any special definition of ‘linked” found in the ’654
`
`Patent or in its prosecution history. Indeed, the patent teaches an embodiment in which calls may
`
`be made with non-linked user identification modules (citing ’654 Patent col.4 ll.23–30), which
`
`contradicts Defendants’ proposal. Further, the patent teaches that some of Defendants’ proposed
`
`
`3 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 dependency chain is listed; and (2) only claims
`identified in the Parties’ Amended Joint Claim Construction Chart (Dkt. No. 52) are listed.
`4 Defendants originally proposed and argued “a user identification module whose data has been
`read by, and stored on, the mobile radio telephony device, and that is only one that permits normal
`operation of the device.” (Dkt. No. 47 at 4; see also Parties’ Joint Claim Construction Chart, Dkt.
`No. 51-2 at 2.)
`
`
`
`11
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`

`

`
`
`limitations are provided by a “connecting means” that is separately claimed in dependent Claim 5,
`
`which indicates that these limitations are not present in the “linked user identification module.”
`
`Further, as disclosed in the prior-art U.S. Patent No. 5,913,175 (“Pinault”) and as recognized by
`
`the examiner during prosecution, “linked user identification module” has a broader meaning than
`
`Defendants propose. (Dkt. No. 42 at 3–6.)
`
`In addition to the claims themselves, Plaintiff cites the following intrinsic evidence to support
`
`its position: ’654 Patent col.1 ll.21–27, col.1 l.66 – col.2 l.3, col.4 ll.23–30; ’654 Patent File
`
`Wrapper August 27, 2003 Office Action at 4 (Plaintiff’s Ex. C, Dkt. No. 42-4 at 6), December 2,
`
`2003 Response (Plaintiff’s Ex. D, Dkt. No. 42-5), May 20, 2004 Response (Plaintiff’s Ex. E, Dkt.
`
`No. 42-6), August 24, 2004 Notice of Allowability at 3 (Plaintiff’s Ex. F, Dkt. No. 42-7 at 4);
`
`Pinault at col.1 ll.32–44 (Plaintiff’s Ex. B, Dkt. No. 42-3).
`
`Defendants respond: As provided in each of the claims of the ’654 Patent, the “linked user
`
`identification module” is mounted in the mobile telephony device to enable normal operation of
`
`the device. Absent a linked user identification module, the device cannot make outgoing calls.
`
`Thus, a device with an unlinked user identification module cannot make outgoing calls. Contrary
`
`to Plaintiff’s assertion, the patent does not teach that a device with an unlinked user identification
`
`module may make outgoing calls but rather teaches only that such a configuration may allow
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`incoming calls (citing ’654 Patent fig.3, col.3 ll.44–48, col.4 ll.23–30). The “linked” aspect of the
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`user identification module requires more than just placing a user identification module in the
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`device, else “linked” would be superfluous. A user identification module becomes linked “when
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`its data is read by, and stored on, the mobile device.” Further, the prior-art Pinault patent that
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`Plaintiff posits supports a broad plain-and-ordinary meaning instead teaches a user identification
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`module that is linked by reading and storing data from the module and that is necessary to enable
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`normal operation of the device. (Dkt. No. 47 at 4–8.)
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`In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
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`evidence to support their position: Intrinsic evidence: ’654 Patent, at [57] Abstract, figs.2–3, col.1
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`ll.6–11, col.1 ll.24–29, col.1 ll.40–51, col.1 l.60 – col.2 l.10, col.2 ll.48–60, col.2 l.67 – col.3 l.6,
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`col.3 ll.14–31, col.3 ll.44–48, col.4 ll.7–30; Pinault at col.3 l.49 – col.4 l.5 (Plaintiff’s Ex. B, Dkt.
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`No. 42-3). Extrinsic evidence: Medvidovic Decl.5 ¶¶ 35–36, 38–41 (Defendants’ Ex. 1, Dkt. No.
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`47-2).
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`Plaintiff replies: “Linked” is a commonplace term and it was not redefined in the patent or
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`during prosecution and therefore should be given its plain and ordinary meaning. (Dkt. No. 48 at
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`1–2.)
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`Analysis
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`The issue in dispute distills to whether a “linked” user identification module is any user
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`identification module somehow connected to the mobile device or is a specific user identification
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`module that uniquely enables normal operation of the device. A user identification module is
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`“linked” to the device when it is the only user identification module that enables normal operation
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`of the device.
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`The “linked” user identification module is the only user identification module that enables
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`normal operation of the mobile device. Indeed, the point of linking the module and the mobile
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`device is to prevent unauthorized use of the mobile device. For example, the ’654 Patent explains:
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`intended for
`to a mobile radiotelephony device
`invention relates
`The
`accommodating a user identification module, where the device has an established
`link to an identification module to thereby prevent a normal operation of the device
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`5 Declaration of Nenad Medvidovic, Ph.D. in Support of Defendants’ Proposed Claim
`Constructions
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`when an identification module other than the linked identification module is
`mounted inside the device.
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`’654 Patent col.1 ll.6–11 (emphasis added). The purported advance over the Pinault prior-art
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`patent was not that the invention of the ’654 Patent allows normal operation with an unlinked user
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`identification module, but rather that it could prevent normal operation even with a linked module:
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`U.S. Pat. No. 5,913,175 [Pinault], published Jun. 15, 1999 describes a method of
`protecting a radiotelephone which permits to avoid that the lost or stolen telephone
`can be used by a third party with another user identification module. This method
`comprises establishing a link between the device and a specific user identification
`module and blocking the normal operation of the device when the user
`identification module that is placed inside the device is not the one that is linked
`to the device.
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`When the device is lost or stolen with the identification module to which it is linked,
`the user is to warn the operator so that the use of his identification module is blocked
`at network level.
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`This means that the device can be freely used until the identification module to
`which it is linked is blocked via the network. This may take a certain period of time.
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`. . .
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`It is notably an object of the invention to resolve this problem. For this purpose, a
`device in accordance with the invention (1) verifies a user identification module
`mounted inside the mobile radiotelephony device is linked to the mobile
`radiotelephony device, (2) detects a period of inactivity of the mobile
`radiotelephony device during a normal operation of the mobile radiotelep[h]ony
`device, wherein the normal operation includes a processing of all outgoing calls,
`and (3) prevents the normal operation of the mobile radiotelephony device in
`response to the verification of the user identification module and in response to
`the detection of the period of inactivity of the mobile radiotelephony device.
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`Id. at col.1 ll.21–50 (emphasis added).
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`Neither the Pinault prior-art patent nor the ’654 Patent provide any example in which a mobile
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`device linked to a linked user identification module may operate normally without the linked user
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`identification module. Plaintiff’s reliance on the ’654 Patent’s disclosure at column 4, lines 23–30
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`is misplaced. The patent there provides:
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`In another embodiment the same blocking means are used as the identification
`module which is placed inside the device either or not linked to the device, for
`example, the second blocking means. In that case it is possible for receiving
`incoming calls intended for the identification module that is inside the device, even
`when this identification module placed inside the device is not linked to the device.
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`This does not teach that an unlinked module can enable normal operation of the mobile device.
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`Rather, it provides that a mobile device with an unlinked module may operate according to the
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`second blocking means. As described in more detail below in the section on the “blocking means”
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`term, the second blocking means corresponds to a state in which the mobile device processes
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`incoming calls only (and, alternatively, also outgoing calls to emergency numbers) after a certain
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`period of inactivity following mounting of the linked user identification module in the device. Id.
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`at col.3 ll.31–48. This second blocking state is not the normal mode of operation. And the patent
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`describes a first blocking state in which the mobile device is disconnected from the network if the
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`linked user identification module is not mounted in the device. Id. at col.3 ll.14–30. Thus, the
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`disclosure at column 4, lines 23–30 simply teaches an alternative blocking state to the first blocking
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`state for the case that an unlinked user identification module rather than the linked user
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`identification module is mounted in the device. Pinault likewise does not teach normal operation
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`without the linked user identification card. Instead, Pinault provides:
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`a terminal of a cellular mobile radio system . . . being able to ope