IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`UNILOC 2017 LLC
`
`Plaintiff,
`
`V.
`
`MOTOROLA MOBILITY, LLC,
`
`Defendant.
`
`Civil Action No. 18-cv-01841-RGA
`
`CONSOLIDATED
`
`MEMORANDUM OPINION
`
`Sean T. O'Kelly, Thomas H. Kramer, O'KELL Y ERNST, LLC, Wilmington, DE; Paul J. Hayes,
`Kevin Gannon, James J. Foster, Aaron Jacobs (argued), PRINCE LOBEL TYE LLP, Boston,
`MA·
`'
`
`Attorneys for Plaintiff UNILOC 2017 LLC
`
`Philip A. Rovner, Jonathan A. Choa, POTTER ANDERSON & CORROON LLP, Wilmington,
`DE; Martin Bader (argued), Nam Kim, Michael Heins, SHEPPARD, MULLIN, RICHTER &
`HAMPTON LLP, San Diego, CA; Lai L. Yip (argued), Yasamin Parsafar, SHEPPARD,
`MULLIN, RICHTER & HAMPTON LLP, San Francisco, CA; Trevor J. Quist (argued),
`SHEPPARD, MULLIN, RICHTER & HAMPTON LLP, Palo Alto, CA;
`
`Attorneys for Defendant MOTOROLA MOBILITY, LLC
`
`January a, 2020
`
` Uniloc Ex. 2007
`IPR2020-00701
`p. 0
`
`
`
`

`

`AN~~~
`
`Before the Court is the issue of claim construction of multiple terms in U.S. Patent No.
`
`6,836,654 ("the ' 654 patent"). The Court has considered the Parties' Joint Claim Construction
`
`Brief. (D.I. 67). The Court issued proposed constructions (D.I. 70) prior to hearing oral
`
`argument (D.I. 71).
`
`I.
`
`BACKGROUND
`
`PlaintiffUniloc filed the instant action on November 20, 20 18, alleging infringement of
`
`the '654 patent by Defendant Motorola. (D.I. 1). The '654 patent claims a mobile
`
`radiotelephony device that offers anti-theft protection. (D.I. 67 at 1).
`
`II.
`
`LEGAL ST AND ARD
`
`"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 bane) (internal quotation marks omitted). '"[T]here is no magic formula or
`
`catechism for conducting claim construction.' Instead, the court is free to attach the appropriate
`
`weight to appropriate sources 'in light of the statutes and policies that inform patent law."'
`
`SoftView LLC v. Apple Inc., 2013 WL 4758195, at *1 (D. Del. Sept. 4, 2013) (quoting Phillips,
`
`415 F.3d at 1324) (alteration in original). When construing patent claims, a court considers the
`
`literal language of the claim, the patent specification, and the prosecution history. Markman v.
`
`Westview Instruments, Inc. , 52 F.3d 967, 977-80 (Fed. Cir. 1995) (en bane), aff'd, 517 U.S. 370
`
`(1996). Of these sources, "the 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."
`
`Phillips, 415 F.3d at 1315 (internal quotation marks omitted).
`
`1
`
`

`

`"[T]he words of a claim are generally given their ordinary and customary meaning ....
`
`[Which is] the meaning that the term would have to a person of ordinary skill in the art in
`
`question at the time of the invention, i.e., as of the effective filing date of the patent application."
`
`Id. at 1312-13 ( citations and internal quotation marks omitted). " [T]he ordinary meaning of a
`
`claim term is its meaning to [an] ordinary artisan after reading the entire patent." Id. at 1321
`
`(internal quotation marks omitted). "In some cases, the ordinary meaning of claim language as
`
`understood by a person of skill in the art may be readily apparent even to lay judges, and claim
`
`construction in such cases involves little more than the application of the widely accepted
`
`meaning of commonly understood words." Id. at 1314.
`
`When a court relies solely upon the intrinsic evidence-the patent claims, the
`
`specification, and the prosecution history-the court' s construction is a determination of law.
`
`See Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 , 841 (2015). The court may also
`
`make factual findings based upon consideration of extrinsic evidence, which "consists of all
`
`evidence external to the patent and prosecution history, including expert and inventor testimony,
`
`dictionaries, and learned treatises." Phillips, 415 F.3d at 1317-19 (internal quotation marks
`
`omitted). Extrinsic evidence may assist the court in understanding the underlying technology,
`
`the meaning of terms to one skilled in the art, and how the invention works. Id. Extrinsic
`
`evidence, however, is less reliable and less useful in claim construction than the patent and its
`
`prosecution history. Id.
`
`"A claim construction is persuasive, not because it follows a certain rule, but because it
`
`defines terms in.the context of the whole patent." Renishaw PLC v. Marposs Societa ' per
`
`Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows that "a claim interpretation that would
`
`2
`
`

`

`exclude the inventor's device is rarely the correct interpretation." Osram GMBH v. Int 'l Trade
`
`Comm 'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007) (citation and internal quotation marks omitted).
`
`III. CONSTRUCTION OF DISPUTED TERMS
`
`1.
`
`"linked user identification module" ( all claims)
`
`a.
`
`b.
`
`c.
`
`Plaintiff's proposed construction: ordinary meaning. Alternatively, "a user
`identification module linked to the device"
`
`Defendant's proposed construction: "a user identification module whose data has
`been read by, and stored on, the mobile radio telephony device for the purpose of
`blocking the normal operation of the device with another user identification
`module"
`
`Court's construction: "an authorized user identification module that permits the
`normal operation of the device"
`
`My proposed constructions included the construction of "linked user identification
`
`module" to mean "an authorized user identification module that permits the normal operation of
`
`the device." (D.I. 70 at 1). At oral argument, Plaintiff agreed to this construction. (D.I. 71 at
`
`7:4-7). Defendant argued that the construction should include language stating that the linked
`
`user identification module is the "only one" that will permit the normal operation of the device.
`
`(Id. at 12:14-18). Plaintiff countered that not all embodiments require that the linked user
`
`identification module is the only one able to permit the normal operation of the device. (Id. at
`
`22: 12-19). I agree with Plaintiff. There is nothing in the patent that requires that only one linked
`
`user identification module will permit the normal operation of the device for all embodiments.
`
`Thus, the patent is not limited to only one linked user identification module for all embodiments.
`
`I therefore construe "linked user identification module" to mean "an authorized user
`
`identification module that permits the normal operation of the device."
`
`3
`
`

`

`2.
`
`"blocking means for preventing a normal operation of the mobile radiotelephony device"
`( claims 1-9)
`
`a.
`
`b.
`
`c.
`
`Plaintiff's proposed construction:
`Function: "preventing a normal operation of the mobile radiotelephony device"
`Structure: "a microprocessor assembly capable of entering any of the three
`disclosed blocking states to prevent a normal operation of the device, and
`equivalents thereof'
`
`Defendant 's proposed construction:
`Function: "preventing a normal operation of the mobile radiotelephony device"
`Structure: Indefinite under 35 U.S.C. § 112. Or, in the alternative: "a
`microprocessor (e.g., µP 22) programmed to execute the algorithm corresponding
`to the second blocking state indicated in box Kl 1, which prevents normal
`operation of the radiotelephony device by preventing one or more calling
`functions of the mobile radiotelephony device."
`
`Court's construction :
`Function: "preventing a normal operation of the mobile radiotelephony device"
`Structure: "the hardware programmed to (i) disconnect from the network if an
`identification module that is not linked to the device is placed inside the device
`(col. 3:14-20); (ii) prevent all outgoing calls, except possibly emergency calls, if
`the device has remained in a state of availability longer than a predetermined
`threshold of time (col. 3:33-46); and (iii) prevent all calls ifan incorrect
`deblocking code is entered above a threshold amount (col. 3:52-60)" 1
`
`In the Joint Claim Construction Brief, the parties agreed to the function of this term,
`
`which is "preventing a normal operation of the mobile radiotelephony device." (D.I. 67 at 31 ).
`
`At oral argument, the parties agreed to my proposed structure. (D.I. 71 at 28:21-22, 29:24-30:1).
`
`Thus, the structure is "the hardware programmed to (i) disconnect from the network if an
`
`identification module that is not linked to the device is placed inside the device ( col. 3: 14-20);
`
`(ii) prevent all outgoing calls, except possibly emergency calls, if the device has remained in a
`
`state of availability longer than a predetermined threshold oftime ( col. 3 :33-46); and (iii) prevent
`
`all calls if an incorrect deblocking code is entered above a threshold amount (col. 3:52-60)."
`
`1 Under 35 U.S.C. § 112 16, means-plus-function claims are "construed to cover the corresponding structure . . .
`described in the specification and equivalents thereof." My constructions will not recite "and equivalents thereof'
`but the jury will be instructed to consider equivalents pursuant to § 112 16.
`
`4
`
`

`

`3.
`
`"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" ( claims 1-9)
`
`a.
`
`b.
`
`c.
`
`Plaintiff's proposed construction:
`Function: "activating the blocking means in response to the mobile
`radiotelephony device being inactive during the normal operation of the mobile
`radiotelephony device for a predefined period of time subsequent to the mounting
`of a linked user identification module inside the mobile radiotelephony device"
`Structure: "the microprocessor assembly 20, which controls the device and is
`connected to all other components (and therefore measures inactivity). Since
`timing is a well-known function of a microprocessor, and the microprocessor is
`the component performing the function of the blocking means, it can activate
`itself, and no algorithm is necessary."
`
`Defendant 's proposed construction:
`Function: "activating the blocking means in response to the mobile
`radiotelephony device being inactive during the normal operation of the mobile
`radiotelephony device for a predefined period of time subsequent to the mounting
`of a linked user identification module inside the mobile radiotelephony device"
`Structure: Indefinite under 35 U.S.C. § 112. Or, in the alternative: "a
`microprocessor ( e.g., µP 22) programmed to execute an algorithm involving: if
`the identification module that is placed inside the device is linked to the device
`(arrow Y4), determining whether the device has remained in the state of
`availability for a certain period of time T of the order of several minutes, for
`example (box KIO), then, if this is the case (arrow YlO), the device passes on to a
`second blocking state indicated in box Kl 1."
`
`Court 's construction:
`Function: "activating the blocking means in response to the mobile
`radiotelephony device being inactive during the normal operation of the mobile
`radiotelephony device for a predefined period oftime subsequent to the mounting
`of a linked user identification module inside the mobile radiotelephony device"
`Structure: "the hardware programmed to determine whether the device has
`remained in the state of availability for a designated period of time, and if so, to
`block the device and require a de blocking code to restore normal functioning ( col.
`3:31-43)"
`
`Both parties agree this term should be governed by 35 U.S .C. § 112 ,r 6. (D.I. 67 at 46).
`
`The parties also agree that the function is "activating the blocking means in response to the
`
`mobile radiotelephony device being inactive during the normal operation of the mobile
`
`5
`
`

`

`radiotelephony device for a predefined period of time subsequent to the mounting of a linked
`
`user identification module inside the mobile radiotelephony device." (Id.).
`
`At oral argument, Plaintiff agreed to my proposed construction that the structure is "the
`
`hardware programmed to determine whether the device has remained in the state of availability
`
`for a designated period of time, and if so, to block the device and require a de blocking code to
`
`restore normal functioning (col. 3:31-43)." (D.I. 71 at 30: 14-17).
`
`Defendant argues that the claim is indefinite because the claim requires that the device be
`
`"inactive during the normal operation" of the device and there is no corresponding algorithm in
`
`the patent. (D.I. 67 at 48). Defendant asserts that it is impossible for the device to be "inactive
`
`during the normal operation" as it would require "inactivity during activity." (Id. at 49).
`
`Further, Defendant contends that the identified structure centers on a "state of availability,"
`
`which cannot be the same as "inactive during the normal operation." (Id. at 53-54).
`
`I disagree with Defendant's reasoning. The phrase "state of availability" implies that the
`
`device is able to be used but is not in use at that time. Similarly, "inactive during the normal
`
`operation" implies that the device is not in use at that time but is operating normally and thus is
`
`able to be used. The algorithm at column 3, lines 31 to 4 3 of the ' 654 patent therefore
`
`corresponds to the claim term. Accordingly, I construe the structure to be "the hardware
`
`programmed to determine whether the device has remained in the state of availability for a
`
`designated period of time, and if so, to block the device and require a de blocking code to restore
`
`normal functioning (col. 3:31-43)."
`
`4.
`
`"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" ( claims 1-9)
`
`6
`
`

`

`a.
`
`b.
`
`c.
`
`Plaintiff's proposed construction:
`Function: "permitting the normal operation of the mobile radiotelephony device"
`Structure: "a microprocessor assembly, optionally coupled with a screen and
`man-machine interface, capable of leaving either the first or second disclosed
`blocking states to permit a normal operation of the device, and equivalents
`thereof'
`
`Defendant 's proposed construction:
`Function: "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 a mounting of a linked user identification module inside the mobile
`radiotelephony device"
`Structure: Indefinite under 35 U.S.C. § 112. Or, in the alternative: "a
`microprocessor ( e.g., µP 22) programmed to execute an algorithm involving:
`upon the deblocking code being supplied, returning the device to the normal
`operating mode ( e.g., if the deblocking code taken by the user is recognized
`( arrow Yl 1 ), the device goes back to the state of availability indicated in box
`Kl)."
`
`Court 's construction:
`Function: "permitting the normal operation of the mobile radiotelephony device
`in response to a supply of a de blocking code to the mobile radiotelephony device
`subsequent to a mounting of a linked user identification module inside the mobile
`radiotelephony device and subsequent to the defined period of time"
`Structure: "the hardware programmed to invite the user to supply a deblocking
`code and allow the device to return to the state of availability if the code entered
`is recognized ( col. 3 :48-52)"
`
`Plaintiff argues that, logically, the function of "de blocking means" should be the inverse
`
`of "blocking means," and thus should be construed as "permitting the normal operation of the
`
`mobile radiotelephony device." (D.I. 67 at 55). I disagree. Plaintiff's proposal is only a portion
`
`of the claim language and the proposal omits relevant claim limitations. "The function of a
`
`' means plus function' claim must be construed to include the limitations contained in the claim
`
`language" and may not be "improperly broadened by ignoring the clear limitations contained in
`
`the claim language." Lockheed Martin Corp. v. Space Sys./Loral, Inc. , 249 F.3d 1314, 1324
`
`(Fed. Cir. 2001). Plaintiff's proposed function thus invalidly omits relevant limitations in the
`
`claim language.
`
`7
`
`

`

`Defendant agreed to my proposed function (D.I. 71 at 50:3-11) but asked that I include
`
`the remainder of the language from the claim that it had inadvertently left out of its proposal (Id.
`
`at 48:5-7). I have. The function is "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 a mounting of a linked user identification module inside the mobile
`
`radiotelephony device and subsequent to the defined period of time."
`
`At oral argument, Plaintiff stated that if I were to construe the function to contain the
`
`claim limitations it omitted, then it would agree to my proposed structure. (Id. at 47:24-48:2).
`
`Defendant agreed to my proposed structure as well, emphasizing that this term is limited to the
`
`second blocking state. (Id. at 50:12-19). It is. The structure is thus "the hardware programmed
`
`to invite the user to supply a deblocking code and allow the device to return to the state of
`
`availability if the code entered is recognized (col. 3:48-52)."
`
`5.
`
`"locking means for facilitating an activation of the block means by the timing means"
`(claim 4)
`
`a.
`
`b.
`
`c.
`
`Plaintiff's proposed construction:
`Function: "facilitating an activation of the blocking means"
`Structure: "the microprocessor assembly 20, the screen 8 with keypad 9, via the
`man-machine interface 30, and the card reader 39, which reads the identification
`module"
`
`Defendant's proposed construction:
`Function: "facilitating an activation of the blocking means by the timing means"
`Structure: indefinite under 35 U.S.C. § 112
`
`Court's construction: indefinite
`Function: "facilitating an activation of the blocking means by the timing means"
`Structure: indefinite under 35 U.S.C. § 11216
`
`At oral argument, Plaintiff agreed to Defendant' s proposed function: "facilitating an
`
`activation of the blocking means by the timing means." (D.I. 71 at 51 :21-23). Plaintiff's
`
`proposed mechanical structure, however, is insufficient because the claimed function requires an
`
`8
`
`

`

`algorithm that is not a general function of a microprocessor. See In re Katz, 639 F.3d 1303, 1316
`
`(Fed. Cir. 2011 ). Plaintiff argued that the specification has algorithmic structure from column 2,
`
`line 63 to column 3, line 13 of the ' 654 patent. (D.I. 71 at 53:14-15). I do not think this
`
`structure is valid because the "locking" referred to in that section has to do with triggering the
`
`link between the device and the user identification module, not "facilitating an activation of the
`
`blocking means by the timing means." Therefore, it is not sufficient structure for this function.
`
`The '654 patent fails to disclose any corresponding structure to "facilitating an activation
`
`of the blocking means by the timing means." The term "locking means for facilitating an
`
`activation of the block means by the timing means" is thus indefinite under 35 U.S.C § 112 ,r 6.
`
`6.
`
`"connecting means for establishing a link between the mobile radiotelephony device and
`the linked user identification module" ( claim 5)
`
`a.
`
`b.
`
`Plaintiff's proposed construction:
`Function: "establishing a link between the mobile radiotelephony device and the
`linked user identification module"
`Structure: "a microprocessor coupled to a card reader"
`
`Defendant 's proposed construction:
`Function: "establishing a link between the mobile radiotelephony device and the
`linked user identification module"
`Structure: "the combination of hardware and algorithms involved in the reading
`of data from the identification module, and storage of such data in memory of the
`radiotelephony device. Such hardware components include a microprocessor ( e.g.,
`µP 22) for reading data on the identification module, and memory for storing the
`data that gets read ( e.g., RAM 24 and/or ROM 26), and the related algorithm for
`causing the microprocessor to read data on a mounted identification module, and
`to cause the storage of such data in the memory.
`
`c.
`
`Court 's construction:
`Function: "establishing a link between the mobile radiotelephony device and the
`linked user identification module"
`Structure: "the hardware involved in the reading of data from the identification
`module, and storage of such data in the memory of the radiotelephony device"
`The parties agree that this term is governed by 35 U.S.C. § 112 ,r 6 and that the function
`
`is "establishing a link between the mobile radiotelephony device and the linked user
`
`9
`
`

`

`identification module." (D.I. 67 at 66). At oral argument, Plaintiff accepted my proposed
`
`construction. (D.I. 71 at 59:23-24). For clarification, Plaintiff suggested that I specify that the
`
`hardware involved is identified in column 1, line 66 through column 2, line 10 and in column 2,
`
`line 66 through column 3, line 6 of the '654 patent. (Id. at 61:5-11). These lines do describe
`
`hardware contemplated by the patent to be involved in the "reading of data from the
`
`identification module, and storage of such data in the memory of the radiotelephony device." The
`
`proposed construction, however, provides sufficient structure on its own. Therefore, it is not
`
`necessary to add these patent citations to the structure.
`
`Similarly, for clarification, Defendant asked me to include language in the structure to
`
`specify that it is the hardware that is "used to establish the link" between the device and the user
`
`identification module. (Id. at 63 :9-12). Defendant contends that otherwise my proposed
`
`construction could refer to any hardware that reads and stores any data. (Id. at 63:12-15). I
`
`disagree. My proposed construction limits the hardware to that which reads data from the user
`
`identification module and stores that data on the device for the purpose of establishing a link
`
`between the mobile radiotelephony device and the linked user identification module. (See D.I.
`
`70 at 2). The structure as proposed therefore limits the hardware to that used to link the user
`
`identification module to the device.
`
`It is also not necessary to include algorithmic structure in the construction as the reading
`
`and storage of information in this circumstance does not require an algorithm. I thus construe
`
`the structure to be "the hardware involved in the reading of data from the identification module,
`
`and storage of such data in the memory of the radiotelephony device."
`
`7.
`
`"inactivity of the mobile radiotelephony device during a normal operation of the mobile
`radiotelephony device" ( claims 10-14, 17, 18)
`
`"inactive during the normal operation of the mobile radiotelephony device" (claim 1)
`
`10
`
`

`

`"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" ( claims 10-
`14, 17, 18)
`
`"in response to the verification of the linked user identification module and in response to
`a supply of deblocking code to the mobile radiotelephony device subsequent to the
`detection of the period of inactivity of the mobile radiotelephony device" ( claims 11 , 18)
`
`a.
`
`b.
`
`c.
`
`Plaintiff's proposed construction: ordinary meaning
`
`Defendant 's proposed construction: indefinite under 35 U.S.C. § 112 ,r 2
`
`Court's construction: ordinary meaning
`
`Defendant' s argument for these terms is essentially the same as its argument for the
`
`"timing means" term above. Defendant argues that these limitations are indefinite because they
`
`use the terms "inactivity," "inactive," "inactivity ... during a normal operation," and/or "inactive
`
`during the normal operation." (D.I. 67 at 70, 72). Defendant asserts that these "inactivity"
`
`terms are not defined in the patent and do not inform those skilled in the art of the scope of the
`
`invention. (Id.). As discussed above, I disagree with Defendant' s reasoning on the "inactivity"
`
`terms and understand the meaning of these terms to be clear. Thus, these terms have their
`
`ordinary meaning.
`
`IV. CONCLUSION
`
`Within five days the parties shall submit a proposed order consistent with this
`
`Memorandum Opinion suitable for submission to the jury.
`
`11
`
`