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`The disputed terms are construed as set forth in this Order.
`I. TECHNOLOGICAL SUMMARY
`The Asserted Patents generally relate to monitoring a subject’s activity or health
`condition.
`The ’007 Patent, titled “Athlete’s GPS-Based Performance Monitor,” issued on
`January 11, 2000 and generally describes a “Global Positioning System (GPS) based
`personal athletic performance monitor.” ’007 Patent at Abstract.
`The ’233 Patent, titled “Personal Medical Device Communication System and
`Method,” issued on August 8, 2006 and generally describes “[a] personal and/or
`institutional health and wellness communications system, which may be used for a
`variety of emergency and non-emergency situations using two-way communications
`devices and a bi-directional communication network.” ’233 Patent at Abstract.
`The ’958 Patent, titled “Method and Apparatus for Health and Disease
`Management Combining Patient Data Monitoring with Wireless Internet Connectivity,”
`issued on December 20, 2005 and generally describes “a method and apparatus for a
`wireless health monitoring system for interactively monitoring a disease or health
`condition of a patient by connecting an internet-enabled wireless web device (‘WWD’) to
`a digital camera or other health monitoring device.” ’958 Patent at Abstract.
`The ’377 Patent, titled “Method and Apparatus for Monitoring Exercise with
`Wireless Internet Connectivity,” issued on October 2, 2012 and generally describes a
`method and apparatus for providing “wireless monitoring of exercise, fitness, or nutrition
`by connecting a web-enabled wireless phone to a device which provides exercise-related
`information, including physiological data and data indicating an amount of exercise
`performed.” ’377 Patent at Abstract.
`The ’192 Patent, titled “Detection and Compensation Method for Monitoring the
`Place of Activity on the Body,” issued on April 19, 2016 and generally describes “[a]
`measuring system compris[ing] a sensor arranged to be attached to a subject for obtaining
`a measured value representing a physical or a physiological quantity of the subject.” ’192
`Patent at Abstract.
`The ’542 Patent, titled “Health Monitoring Appliance,” issued on October 31, 2017
`and generally describes a “heart monitoring system for a person [that] includes one or
`more wireless nodes; and wearable appliance in communication with the one or more
`wireless nodes, the appliance monitoring vital signs.” ’542 Patent at Abstract.
`Relevant disclosures from each of the Asserted Patents will be discussed in greater
`detail in relation to each of the parties’ specific claim construction disputes.
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`II. LEGAL STANDARD
`A. General Claim Construction Principles
`
`As established in Markman v. Westview Instruments, 517 U.S. 370 (1996), claim
`construction is a matter wholly within the jurisdiction of the court. Markman v. Westview
`Instruments, 517 U.S. 370, 372 (1996) (“[T]he construction of a patent . . . is exclusively
`within the province of the court.”). The purpose of claim construction is to “determin[e]
`the meaning and scope” of a patented invention in order to define the patent owner’s
`rights. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). Claim
`construction is a legal issue that may require subsidiary findings of fact. Teva Pharm.
`USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 332 (2015).
`
`Generally, a claim term is given its “ordinary and customary meaning.” Phillips,
`415 F.3d at 1312 (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
`Cir. 1996)). In patent cases, “the ordinary and customary meaning . . . is the meaning that
`the term would have to a person of ordinary skill in the art in question at the time of
`invention.” Philips, 415 F.3d at 1313. “In some cases, the ordinary meaning . . . may be
`readily apparent,” requiring only common sense application of a widely accepted
`meaning. Id. at 1314. However, when claim meaning is not so readily apparent, a court
`must determine what a skilled person in the appropriate field of art would understand a
`claim term to mean. Id.
`
`Courts first consider the intrinsic evidence, which includes the patent claims,
`patent specification, and prosecution history. Vitronics, 90 F.3d at 1582. “Attending this
`principle, a claim construction analysis must begin and remain centered on the claim
`language itself, for that is the language the patentee has chosen to ‘particularly point out
`and distinctly claim the [patented] subject matter.’” Innova/Pure Water, Inc. v. Safari
`Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004) (quoting Interactive Gift
`Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001)). A term’s use in
`context may help to distinguish or clarify its meaning from other potential definitions.
`See, e.g., Phillips, 415 F.3d at 1314 (illustrating that “steel baffles” implies that “baffles”
`are not intrinsically made of steel). Claim terms are commonly used consistently
`throughout a patent, and thus “the usage of a term in one claim can often illuminate the
`meaning of the same term in other claims.” Id.
`
`The claim terms must be read in light of the specification. Id. at 1315 (citing
`Vitronics, 90 F.3d at 1582 (“[T]he specification ‘is always highly relevant . . . . Usually,
`it is dispositive; it is the single best guide to the meaning of a disputed term.’”)). The
`specification may provide insight into an inventor’s understanding of her invention at the
`time of patenting, as it might contain an intentional disclaimer of claim scope that reveals
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`limits on an inventor’s intended invention. Phillips, 415 F.3d at 1316. The Federal Circuit
`has also recognized that an inventor may invoke a particular definition of a term in her
`specification or otherwise use a term in the specification in a manner that differs from the
`term’s ordinary usage. Id. “In such cases, the inventor’s lexicography governs.” Id.
`
`In addition to the patent itself, the Court “should also consider the patent’s
`prosecution history, if it is in evidence.” Id. at 1317. The prosecution history consists of
`“all the proceedings before the Patent and Trademark Office, including any express
`representations made by the applicant regarding the scope of the claims.” Vitronics, 90
`F.3d at 1582. However, because the prosecution history, also called the “file history” or
`“file wrapper,” is a product of negotiations between the inventor and the United States
`Patent and Trademark Office (“USPTO”), “it often lacks the clarity of the specification
`and thus is less useful for claim construction purposes.” Phillips, 415 F.3d at 1317.
`Nevertheless, like the specification, the prosecution history may still be useful in
`understanding the inventor’s understanding of her own invention. Id. (citing Vitronics, 90
`F.3d at 1582-83). Moreover, during prosecution history, a patent applicant may disclaim
`claim scope by making a clear and unequivocal disavowal of the plain meaning of
`ordinary claim language. Id. at 1319 (citing Texas Digital Sys., Inc. v. Telegenix, Inc.,
`308 F.3d 1193, 1204 (Fed. Cir. 2002)).
`
`After looking at the intrinsic evidence, courts may consider extrinsic evidence,
`including inventor and expert testimony, dictionaries, and treatises. Phillips, 415 F.3d at
`1317. However, extrinsic evidence is “less significant than the intrinsic record” because it
`is generally “less reliable.” Id. at 1317-18. Additionally, extrinsic evidence cannot be
`used to change the meaning of a term as used in the specification. Merck & Co. v. Teva
`Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005). Thus, the extrinsic evidence
`should always be considered in context of the intrinsic evidence. Phillips, 415 F.3d at
`1319.
`
`Technical dictionaries are a particular type of extrinsic evidence that may provide
`information about the ways a term is used in a particular field of art. Id. at 1318. Expert
`testimony may also be useful in several ways, “such as to provide background on the
`technology at issue, to explain how an invention works, to ensure that the court’s
`understanding . . . is consistent with that of a person of skill in the art, or to establish that
`a particular term . . . has a particular meaning in the pertinent field.” Id. However, as with
`all extrinsic evidence, courts will “discount any expert testimony ‘that is clearly at odds
`with [the intrinsic evidence] of the patent,’” as well as expert testimony that is conclusory
`or unsupported. Id. (quoting Key Pharm. v. Hercon Labs. Corp., 161 F.3d 709, 716 (Fed.
`Cir. 1998)).
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`Case 2:19-cv-06301-AB-KS Document 102 Filed 08/28/20 Page 5 of 45 Page ID #:3461
`B. Claim Term Indefiniteness
`
`“[A] patent is invalid for indefiniteness if its claims, read in light of the
`specification delineating the patent, and the prosecution history, fail to inform, with
`reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus,
`Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014); see also 35 U.S.C. § 112 ¶ 2.
`This standard “mandates clarity, while recognizing that absolute precession is
`unattainable.” Id. at 910. “General principles of claim construction apply to
`indefiniteness allegations.” HZNP Medicines LLC v. Actavis Labs. UT, Inc., 940 F.3d
`680, 688 (Fed. Cir. 2019) (citing Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d
`1374, 1377-78 (Fed. Cir. 2015)). To the extent subsidiary facts are presented to support
`that a claim term is indefinite, they must be proven by clear and convincing
`evidence. Microsoft Corp. v. I4I Ltd. P’ship, 564 U.S. 91, 95 (2011).
`C. Means-Plus-Function Claim Construction Principles
`
`Under Section 112, Paragraph 61 of the Patent Act,
`
`An element in a claim for a combination may be expressed as a means or step
`for performing a specified function without the recital of structure, material,
`or acts in support thereof, and such claim shall be construed to cover the
`corresponding structure, material, or acts described in the specification and
`equivalents thereof.
`
`35 U.S.C. § 112 ¶ 6. “[U]se of the word ‘means’ creates a presumption that § 112, ¶ 6
`applies.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015)
`(quoting Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703
`(Fed. Cir. 1998)); but see Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1019 (Fed. Cir.
`2017) (claim term “wireless device means” does not invoke § 112, ¶ 6 because it denotes
`a class of structures).
`
`Conversely, when a claim term lacks the word “means,” there is a presumption
`against “means-plus-function” claiming. Id. “[T]he presumption can be overcome and
`§ 112, para. 6 will apply if the challenger demonstrates that the claim term fails to ‘recite
`sufficiently definite structure’ or else recites ‘function without reciting sufficient structure
`for performing that function.’” Id. (citing Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed.
`
`1 The America Invents Act (“AIA”) amended the labeling convention of sub-sections of
`§ 112 of the Patent Act, so that the sub-sections correspond to letters instead of numbers.
`Thus, 35 U.S.C. § 112 ¶ 6 was relabeled to 35 U.S.C. § 112(f). Because the Asserted
`Patents in this case were filed before the AIA took effect, the Court refers to the prior
`labeling convention in this Order.
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`“elapsed distance of an athlete; current or average speed of an athlete; [or] current or
`average pace of an athlete.” (See Dkt. No. 77 at 5.) Plaintiff asserts that the ’007 Patent
`describes certain types of athletic performance feedback data that are not computed from
`time-stamped GPS waypoints but instead through other means, such as through a
`barometric pressure sensor. (Id.) Plaintiff further asserts that the ’007 Patent “describes
`the types of data that can be calculated from GPS position and time information.” (Id.
`(emphasis in original).)
`
`In its Opening Brief, Plaintiff cites a portion of the specification to support its
`assertion about data types that “can be” calculated from time-stamped waypoints. (Id.) In
`particular, the specification refers to “elapsed distance, current and average speeds and
`paces, calories burned, miles remaining, and time remaining.” ’007 Patent at 7:40-50. In
`their briefs, Defendants emphasize “calories burned” from this list. Defendants question
`Plaintiff’s omission of “calories burned” from Plaintiff’s proposed construction and use
`“calories burned” as one example of a circumstance where Plaintiff has not shown a
`corresponding algorithm for how calories burned could be computed “from the series of
`time-stamped waypoints.” In its Responsive Brief, Plaintiff appears to walk back from its
`previously-quoted portion of the specification. It asserts that the specification refers to
`calories burned in the context of “athletic performance data,” but not in the context of
`“athletic performance feedback data.” (Dkt. No. 80 at 2 (emphasis in original).) It
`otherwise asserts that the specification’s references to “calories burned” are “ambiguous”
`and states, without support, that a person of skill in the art would not have understood
`“athletic performance feedback data” to include calories burned. (Id.)
`
`Plaintiff’s arguments for limiting the scope of what constitutes “athletic
`performance feedback data” are not persuasive. As both parties noted, the specification
`states:
`
`During the exercise session, the GPS receiver module 604 continuously
`determines the athlete’s geographical position and stores it in the memory 608
`along with other information such as the date and time that each position was
`acquired. From these positions and times, performance data such as elapsed
`distance, current and average speeds and paces, calories burned, miles
`remaining, and time remaining are calculated. Based on this data,
`recommendations to increase or decrease level of effort to meet pre-set
`performance targets are then determined.
`
`’007 Patent at 7:41-50 (emphasis added). Although Plaintiff discounts this language in its
`Responsive Brief, this passage supports Defendants’ position regarding the meaning of
`the term “athletic performance feedback data.” It specifically states that “performance
`data” like “calories burned” can be calculated based on positions and times collected by a
`GPS receiver during a session. Plaintiff does not otherwise show that the patent applicant
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`intended to limit the meaning of the claim phrase in the manner it urges in its proposed
`construction, and the Court finds Plaintiff’s interpretation of the intrinsic record in this
`regard unpersuasive. Calories burned is reasonably interpreted as a type of “athletic
`performance feedback data,” given this disclosure, and Plaintiff does not identify
`passages showing that the patent applicant intended to exclude “calories burned” from a
`construction of the term.
`
`Second, Defendants dispute whether the patent specification adequately discloses
`
`corresponding structure for this claim limitation. Plaintiff asserts that the claim language
`itself supplies the algorithm because the claims “require that athletic performance
`feedback data be calculated from a series of time-stamped waypoints obtained from a
`GPS receiver.” (See Dkt. No. 80 at 2.) Plaintiff suggests that this computation would
`require only “high school level math” and “involves determining the distance between
`two points” or “dividing the distance by time or time by distances.” (Dkt. No. 77 at 9.)
`Defendants note that Plaintiff’s arguments are based on limiting the types of data that
`constitute “athletic performance feedback data.” Defendants also assert that at the time of
`the invention, computing athletic performance feedback data would not be as simple as
`Plaintiff’s expert suggests because the computation would need to account for errors in
`the received GPS data. (See Dkt. No. 79 at 5-6.)
`
`As Plaintiff effectively concedes, the specification at most refers to a GPS module,
`
`memory, and CPU as corresponding structure for this means-plus-function term. (Dkt.
`No. 77 at 8.) Further, Plaintiff’s expert does not dispute that a CPU would require special
`programming in order to satisfy the claimed function of “computing athletic performance
`feedback data from [a] series of time-stamped waypoints.” (Dkt. No. 79 at 1 (citing Dkt.
`79-4 (Deposition of Thomas Martin (June 18, 2020) in Philips North America LLC v.
`Fitbit, Inc., Case No. 1:19-cv-11586-IT (D. Mass.)) at 48:6-50:14).) In these
`circumstances, legal authority requires the asserted patent to disclose an algorithm
`representing the corresponding structure for this specially-programmed function:
`
`[T]he algorithm requirement is necessary ‘[b]ecause general purpose
`computers can be programmed to perform very different tasks in very
`different ways . . . .” [Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech.,
`521 F.3d 1328, 1333 (Fed. Cir. 2008).] Without disclosing any corresponding
`structure, “one of skill simply cannot perceive the bounds of the invention.”
`[Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1341 (Fed. Cir. 2008).]
`
`Noah, 675 F.3d at 1318.
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`Particularly when the phrase “athletic performance feedback data” is not limited to
`Plaintiff’s proposed data types, there is insufficient disclosure supporting how to compute
`various types of “athletic performance feedback data.” As Defendants note as just one
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`Case 2:19-cv-06301-AB-KS Document 102 Filed 08/28/20 Page 11 of 45 Page ID #:3467
`Indefinite
`“a processor (and
`“means for suspending and
`equivalents thereof) that
`resuming operation of said
`suspends said computing
`means for computing when
`when a speed of the athlete
`a speed of the athlete falls
`is below a predetermined
`below a predetermined
`threshold and resumes said
`threshold” (’007 Patent,
`computing when a speed of
`Claim 7)
`the athlete is not below said
`predetermined threshold”
`
`35 U.S.C. § 112, ¶ 6
`
`Structure:
`Not disclosed
`
`Function:
`suspending and resuming
`operation of said means for
`computing when a speed of
`the athlete falls below a
`predetermined threshold
`
`Indefinite
`
`35 U.S.C. § 112, ¶ 6.
`
`Structure:
`Not disclosed
`
`Function:
`exchanging GPS route
`waypoints via
`said Internet web site
`
`“means for exchanging GPS
`route waypoints via said
`Internet web site” (’007
`Patent, Claim 25)
`
`35 U.S.C. § 112, ¶ 6
`
`Structure:
`a processor and equivalents
`thereof
`
`Function:
`suspending and resuming
`operation of said means for
`computing when a speed of
`the athlete falls below a
`predetermined threshold (as
`construed above)
`No construction necessary
`
`Alternatively, “an Internet
`web site (and equivalents
`thereof) that exchanges
`GPS route waypoints”
`
`35 U.S.C. § 112, ¶ 6.
`
`Structure:
`an Internet web site and
`equivalents thereof (See,
`e.g., original claim, col. 9
`ll. 52-62)
`
`Function:
`exchanging GPS route
`waypoints
`
`
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`(c) a security mechanism governing information transmitted between
`the first personal device and the second device.
`’233 Patent at Claim 1 (emphasis added).
`Both parties refer to Figure 5 of the ’233 Patent as a relevant example in
`understanding this claim term. Figure 5 shows a personal medical device 100 belonging
`to “Victim V.” It further shows connections between personal medical device 100 and a
`“Bystander B,” “Responding Personnel R,” and “Dispatcher or Medial Caregiver D.” The
`specification explains how each of these other parties can use devices of their own to
`communicate with and/or collect relevant information from personal medical device 100,
`in the event of an emergency. Both parties appear to agree at a high level that the purpose
`of Claim 1’s requirement for “a security mechanism governing information transmitted
`between the first personal device and the second device” is to ensure that only
`appropriate information is available to the appropriate second party.
`The parties differ, however, in their additional characterization of the claim
`language. Defendants refer to the security mechanism’s function as requiring
`“continuous” control that allows for “multiple levels of access” to relevant information.
`Although not necessarily reflected in its proposed construction, Plaintiff appears to focus
`specifically on the issue of the ability of the security mechanism to make a determination
`about whether information can actually be transmitted between the claimed devices or
`not. It is worth noting that the parties initially supported these competing positions with
`competing general-purpose dictionaries and broad statements about the specification’s
`goals in governing or “controlling” information transmission.
`In presenting these arguments, the parties also initially gloss over what, exactly,
`the specification considers to be a “security mechanism” itself. The specification states
`that “the ability of various entities spread around a network to receive and/or transmit to
`and control the personal device 100 requires some measure of security.” ’233 Patent at
`13:27-29. The specification goes on to list several “possible embodiments of security.”
`Id. at 13:41-42. Specifically, the specification identifies “standard encryption
`algorithms,” “voice and visual channels of transmission [that] may be controlled for
`activation,” “security keys . . . held by a central agency,” and a security key held by the
`user of the personal device. Id. at 13:43-54. The specification further describes strategies
`for authorization and authentication, such as biometrics, a public/private key system, a
`request for access by a user, and pre-authorized authority for certain users. Id. at 13:55-
`14:10.
`It is not until Plaintiff’s Responsive Brief that the issue critical to the parties’
`
`dispute (which is allegedly relevant to an issue of patent invalidity) takes center stage.
`Plaintiff initially argued that “[w]hile the specification may describe other forms of
`security that do not control the transmission of information (such as, for example,
`encryption), that is not what was intended by the language actually used in the claim.”
`(Dkt. No. 77 at 13.) Through this assertion and as further elaborated in its Responsive
`Brief, Plaintiff appears to take the position that the claims require the security mechanism
`to be capable of fully preventing transmission of information for there to be “control.”
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`Plaintiff supports its position by citing to its expert, Dr. Martin. Dr. Martin opines
`that “encryption is a technique that may protect information, but it does not govern or
`control its transmission.” (Dkt. No. 77-6 at ¶ 33.) However, Dr. Martin does not provide
`any further explanation or cite to any evidence for this aspect of his opinion. (Id.)
`Moreover, the specification expressly discloses “standard encryption algorithms” as a
`“possible embodiment of security.” ’233 Patent at 13:41-44. Based on the disclosure in
`the specification, the Court finds Dr. Martin’s conclusory opinion should not be afforded
`any weight. See SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1209 (Fed. Cir. 2013)
`(finding expert’s opinion “deserves no weight” where opinions were “conclusory and
`incomplete; they lack any substantive explanation tied to the intrinsic record; and they
`appear to conflict with the plan language of the written description”); see also Phillips,
`415 F.3d at 1318-19. Similarly, Plaintiff’s citations to non-technical dictionaries
`published at least 14 years after the date the application was filed carry little weight.2
`Plaintiff’s position is otherwise not necessarily supported by the plain meanings of
`the terms “govern” and “control,” in the context of the claimed technology. Plaintiff does
`not cite sufficient evidence to show that either word relates to an “all or nothing”
`approach to overseeing the transmission of data between the claimed first and second
`devices. Ultimately, Plaintiff has not presented a sufficient basis to conclude that
`“governing information transmitted between the first personal device and the second
`device” means “control whether information can be transmitted between the first personal
`device and the second device at all.” The Court declines to limit the scope of the claims
`in such circumstances, particularly given the disclosed embodiments for types of security
`in the specification.
`Defendants’ arguments and late-proposed construction are not entirely satisfactory,
`either. Claim 1 is focused on a “first personal device” and a “second device.” Unlike the
`embodiment shown in Figure 5 of the specification, there is no requirement on the face of
`the claims for a collection of multiple devices that can be swapped out to serve as the
`“second device.” Introducing the concept of “multiple levels of access” is somewhat
`confusing given this context. Claim 1, on its face, already requires that the security
`mechanism govern information transmission. In addition to creating confusion, adding in
`the requirement that such “governance” requires a collection of “levels of access” also
`effectively narrows the scope of the claims in requiring different “levels,” where no such
`requirement for levels is claimed or discussed in the specification.
`Defendants’ reliance on a general-purpose dictionary definition to import the
`concept of “continuous” is also questionable. As Plaintiff notes, Defendants’ proposed
`definition relates to a king governing his subjects, not technology like that at issue here.
`Defendants do not refer to the specification to support this requirement. Construing as
`“continuous” could also create confusion about the meaning of this claim phrase.
`Although the Court generally agrees with both parties that, considered in the context of
`the patent specification, “governing information transmitted” must ultimately serve the
`purpose of preventing the wrong user from being able to review (unencrypted)
`
`2 The application for the ’233 Patent was filed in 2002. ’233 Patent at Cover. Plaintiff’s
`cited dictionaries published in 2016 (Dkt. No. 77-11 at 2) and 2020 (Dkt. No. 77-8 at 4).
`
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`Case 2:19-cv-06301-AB-KS Document 102 Filed 08/28/20 Page 19 of 45 Page ID #:3475
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`IPR2020-00783
`Philips North America LLC EX2023
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`Case 2:19-cv-06301-AB-KS Document 102 Filed 08/28/20 Page 20 of 45 Page ID #:3476
`The term “location determination module” appears in Claim 24 of the ’233 Patent.
`Claim 24 depends from Claim 1, which is recited in full in Section III.B.3. Claim 24
`recites “[t]he system of claim 1, wherein the first personal device further comprises a
`location determination module that determines the geographical location of the first
`personal device.” ’233 Patent at Claim 24 (emphasis added). Dependent Claim 25 further
`recites “[t]he system of claim 24, wherein the location determination module further
`comprises a GPS receiver.” Id. at Claim 25 (emphasis added).
`The parties appear to agree that a GPS system is not a terrestrial system. (Dkt. No.
`77 at 15; Dkt. No. 79 at 13.) The parties effectively disagree about whether the term
`“location determination module” must necessarily include a “terrestrial location system,”
`or whether it could include just a satellite navigation system (such as a GPS receiver).
`The parties frame this dispute by focusing on the relationship between dependent Claims
`24 and 25 and the law regarding dependent claims using the signal “further comprising.”
`Plaintiff argues that “[w]hile the use of ‘further comprising’ may imply an additional
`limitation, it does not require the addition of a new, distinct element.” (Dkt. No. 80 at 13.)
`Thus, Plaintiff argues Claim 24 “can more broadly be directed to a system directed to
`either terrestrial or satellite navigation, while claim 25 more narrowly, and specifically,
`requires a GPS receiver.” (Id. (emphasis added).) Defendants argue that Claim 25’s
`recitation of “further comprises a GPS receiver” is in addition to what is claimed in
`Claim 24. (Dkt. No. 79 at 13.) Thus, in Defendants’ view, the “location determination
`module” of Claim 24 must itself already require something different from solely a GPS
`receiver.
`The term “location determination module” appears to be used in the patent
`specification as a “coined term,” rather than a technical term that would be commonly
`understood by a person of skill in the art. In particular, the specification describes an
`embodiment where “[Location Determination Module (‘LDS’)] 145 uses a terrestrial
`location system. There are several varieties of terrestrial solutions . . . .” ’233 Patent at
`13:17-19 (emphasis added). The specification further describes “[i]n one described
`embodiment, LDS 145 uses a combination of terrestrial and satellite navigation
`systems.” Id. at 13:21-23 (emphasis added). This language in the specification supports
`the conclusion that the term must include a terrestrial location system at a minimum, and
`in some embodiments may further include a satellite navigation system.
`The claim language, including the use of the phrase “further comprising” in Claim
`25, supports this conclusion. Claim 25 recites a location determination module of Claim
`24 “further compris[ing] a GPS receiver.” The claim language thus supports that “GPS
`receiver” is an additional component relative to the “location determination module”
`recited by Claim 24. See Celgene Corp. v. Hetero Labs Ltd., No. 17-3387, 2020 WL
`3249117, at *12 (D.N.J. June 16, 2020) (citing David Netzer Consulting Eng’r LLC v.
`Shell Oil Co., 824 F.3d 989, 996 (Fed. Cir. 2016)).
`The intrinsic record accordingly supports Defendants’ proposed construction. The
`Court construes “location determination module” as “a terrestrial location system.”
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`IPR2020-00783
`Philips North America LLC EX2023
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`Case 2:19-cv-06301-AB-KS Document 102 Filed 08/28/20 Page 21 of 45 Page ID #:3477
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`IPR2020-00783
`Philips North America LLC EX2023
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`Case 2:19-cv-06301-AB-KS Document 102 Filed 08/28/20 Page 22 of 45 Page ID #:3478
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`IPR2020-00783
`Philips North America LLC EX2023
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`Case 2:19-cv-06301-AB-KS Document 102 Filed 08/28/20 Page 23 of 45 Page ID #:3479
`consistent with the entirety of [the disclosure].” (Dkt. No. 80 at 14