Nantworks, LLC et al v. Bank Of America Corporation et al; Case No. 2:20-cv-07872-GW-(PVCx)
`Tentative Ruling on Claim Construction/Markman Hearing
`
`
`
`Introduction
`I.
`Plaintiffs Nantworks, LLC and Nant Holdings IP, LLC (collectively, “Plaintiffs” or
`
`“Nantworks”) filed suit against Defendants Bank of America Corp. and Bank of America, N.A.
`on August 27, 2020, alleging, inter alia, infringement of U.S. Patent Nos. 7,881,529 (the “’529
`Patent”); 7,899,252 (the “’252 Patent”); 8,326,038 (the “’038 Patent”); 8,463,030 (the “’030
`Patent”); 8,478,036 (the “’036 Patent”); 8,520,897 (the “’897 Patent”); 9,031,278 (the “’278
`Patent”); 9,324,004 (the “’004 Patent”) (collectively, the “Patents-in-Suit”). Docket No. 1; see
`also Docket No. 40 (First Amended Complaint). Now pending are some of the parties’ claim
`construction disputes. The parties have submitted a Joint Claim Construction and Prehearing
`Statement (Docket No. 103) and Joint Claim Construction Chart (Docket No. 120). The parties
`have also filed various claim construction briefs and supporting documents:
` Plaintiffs’ Opening Claim Construction Brief (Docket No. 108);
` Defendants’ Responsive Claim Construction Brief (Docket No. 111)
` Plaintiffs’ Reply Claim Construction Brief (Docket No. 116)
`The Court construes the presented disputed terms as stated herein.
`
`II. Background
`For purposes of the parties’ claim construction disputes, the parties request construction
`of terms in asserted claims of the Patents-in-Suit. The Patents-in-Suit “each claim priority to
`U.S. Provisional Application No. 60/246,295, filed on November 6, 2000, and each of the
`Patents-in-Suit shares a similar specification.” Docket No. 108 at 1. The Patents-in-Suit have
`the same two listed inventors: Wayne C. Boncyk and Ronald H. Cohen. The Patents-in-Suit all
`generally relate to image recognition systems, methods, devices, apparatuses, and products. For
`example, the claimed invention of the ’529 Patent “relates an identification method and process
`for objects from digitally captured images thereof that uses data characteristics to identify an
`object from a plurality of objects in a database.” ’529 Patent at 1:25–28. The specification of
`the ’529 Patent discloses that “the data or object can be identified solely by its visual
`appearance[,]” as opposed to “[t]raditional methods for linking objects to digital information”
`such as “applying a barcode.” Id. at 2:13–19.
`
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`III. Legal Standard
`Claim construction is an interpretive issue “exclusively within the province of the court.”
`Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). It is “a question of law in the
`way that we treat document construction as a question of law,” with subsidiary fact-finding
`reviewed for clear error to Fed. R. Civ. P. 52(a)(6). Teva Pharms. USA, Inc. v. Sandoz, Inc.,
`135 S.Ct. 831, 837-40 (2015). The claim language itself is the best guide to the meaning of a
`claim term. See Vederi, LLC v. Google, Inc., 744 F.3d 1376, 1382 (Fed. Cir. 2014). This is
`because the claims define the scope of the claimed invention. Phillips v. AWH Corp., 415 F.3d
`1303, 1312 (Fed. Cir. 2005). But a “person of ordinary skill in the art is deemed to read the
`claim term not only in the context of the particular claim in which the disputed term appears, but
`in the context of the entire patent.” Id. at 1313. Thus, claims “must be read in view of the
`specification,” which is “always highly relevant to the claim construction analysis.” Phillips,
`415 F.3d at 1315 (internal quotations omitted).
`Although claims are read in light of the specification, limitations from the specification
`must not be imported into the claims. Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed.
`Cir. 2009). “[T]he line between construing terms and importing limitations can be discerned
`with reasonable certainty and predictability if the court’s focus remains on understanding how a
`person of ordinary skill in the art would understand the claim terms.” Phillips, 415 F.3d at 1323.
`The prosecution history may lack the clarity of the specification, but it is “another
`established source of intrinsic evidence.” Vederi, 744 F.3d at 1382. “Like the specification, the
`prosecution history provides evidence of how the PTO and the inventor understood the patent.”
`Phillips, 415 F.3d at 1317 (citations omitted). “Furthermore, like the specification, the
`prosecution history was created by the patentee in attempting to explain and obtain the patent.”
`Id. “Yet 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.
`Claim construction usually involves resolving disputes about the “ordinary and
`customary meaning” that the words of the claim would have had “to a person of ordinary skill in
`the art in question at the time of the invention.” Phillips, 415 F.3d at 1312-13 (internal
`quotations and citations omitted). But in some cases, claim terms will not be given their ordinary
`meaning because the specification defines the term to mean something else. “[A] claim term
`
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`maybe clearly redefined without an explicit statement of redefinition,” so long as a person of
`
`skill in the art can ascertain the definition by a reading of the patent documents. Jd. at 1320; see
`
`also Trustees of Columbia Univ. in City of New York v. Symantec Corp., 811 F.3d 1359, 1364
`
`(Fed. Cir. 2016).
`
`Wherethe patent itself does not make clear the meaning of a claim term, courts may look
`
`to “those sources available to the public that show what a person ofskill in the art would have
`
`understood disputed claim language to mean,” including the prosecution history and “extrinsic
`
`evidence concerning relevant scientific principles, the meaning of technical terms, and the state
`
`of the art.” Phillips, 415 F.3d at 1314 (internal quotations omitted). Sometimes, the use of
`
`“technical words or phrases not commonly understood” may give rise to a factual dispute, the
`
`determination of which will precede the ultimate legal question of the significance of the facts to
`
`the construction “in the context of the specific patent claim under review.” Teva, 135 S. Ct. at
`
`841, 849. “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.” Phillips, 415 F.3d at 1314.
`
`“In such circumstances, general purpose
`
`dictionaries may be helpful.” Jd.
`
`IV.
`
`Discussion
`
`A. Agreed Claim Terms
`
`The parties have agreed to constructions for the following claim terms (see Docket
`
`No. 120 at 9-11):
`
`
`
`Parties’ Agreed Claim Construction
`Asserted Claim(s
`“distal server” °252 Patent, Claims|“one or more servers coupled together
`18, 31, 32, 33
`that have no hardwiredlink to the
`mobile device”
`
`“the acquired data comprises a
`user identity”
`
`25
`
`“the acquired data comprises the
`identity of the user using the mobile
`device”
`
`information”
`
`30
`
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`B. Disputed Claim Terms
`
`1. “identify features from the image informationrelating to the displayed image”
`(038 Patent, Claim 1) & “identification of features from the displayed image”
`(897 Patent, Claim 25)
`
`the device.
`
`Plain and ordinary meaning
`
`“from the image information”is from the image
`information referenced earlier in the claim — 1.e.,
`“the umage information from a displayed image
`on a portable display screen.” [The features from
`the image information cannotbe identified unless
`the optical sensor captures the image information
`from the displayed image on the portable device
`display screen.|
`
`“from the displayed image”is from the displayed
`imagereferenced earlier in the claim — 1.e., “a
`displayed image on the display of the device.”
`[The features from the displayed image cannot be
`identified unless the optical sensor captures an
`imageof the displayed image on the display of
`
`Claim 1 of the ’038 Patent recites:
`
`1. An interactive system comprising:
`an optical sensor capable of capturing image information from a displayed
`image on a portable device display screen; and
`an image processing platform coupled with the optical sensor and
`configured to:
`identify features from the image information relating to the displayed
`image;
`recognize a target based on the features;
`associate the target with target information pertinentto the target; and
`enable a transaction with an account based on the target information.
`
`°038 Patent, Claim 1 (emphasis added).
`
`Claim 25 of the ’897 Patentrecites:
`
`25. A method of conducting a transaction with an interactive system, the
`method comprising
`providing access to a device having a display;
`displaying a displayed image onthe display of the device;
`presenting the displayed image proximate to an optical sensor; and
`enabling, via the interactive system, identification offeatures from the
`displayed image, recognition of a target based on the features,
`association of the target with target information pertinent to the
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`target, and performance of a transaction based on the target
`information.
`’897 Patent, Claim 25 (emphasis added).
`
`The parties dispute whether the claimed “interactive system” and “optical sensor” must
`capture and identify features from the “displayed image” directly from a display screen.
`
`Plaintiffs argue that as an initial matter, Defendants’ construction is not a construction but
`instead improperly seeks a finding of “what embodiments may or may not meet the claim
`language.” Docket No. 108 at 19–20. Plaintiffs next argue that the claim language is clear on its
`face. Id. at 20. For Claim 25 of the ’897 Patent, Plaintiffs argue that the “display screen” is
`“proximate to” the “optical sensor” when “the screen is on one side of the device and the camera
`is proximate to the screen on the opposite side of the device.” Id. at 20. As Plaintiffs emphasize,
`“There is nothing in the claim that requires the optical sensor to be involved in the identification
`of features from the displayed image.” Id. Similarly, for Claim 1 of the ’038 Patent, Plaintiffs
`stress that “the optical sensor must only be ‘capable of capturing image information from a
`displayed image on a portable device display screen,” not that it has to capture the image. Id. at
`21 (emphasis in original). For both Claims, Plaintiffs assert that Defendants seek to import
`limitations disclosed in the specifications into the claims, which is contrary to well-established
`principles of claim construction. Id. at 21–22.
`
`In response, Defendants explain, “Unlike the six other asserted patents, which use an
`optical sensor on a mobile phone camera, for example, to take a picture of a physical object, the
`’897 and ’038 patents use an optical sensor to take a picture of an image displayed on a screen,
`like a TV screen.” Docket No. 111 at 3. Defendants argue that for both claims, the term “a
`display image” on the display screen is the antecedent basis for the term “the display image.” Id.
`at 4. Because the terms refer to the same thing, Defendants argue that those terms “require that
`the ‘features’ are ‘identified’ from an image displayed on a device screen.” Id. Defendants
`assert that Plaintiffs’ infringement contentions contradict this construction because Plaintiffs
`allege that Defendants’ “mobile check deposit satisfies these claims by identifying features from
`‘the captured image’ of a physical check, rather than directly from the display screen of a
`phone.” Id. at 5.
`Specifically for Claim 25 of the ’897 Patent, Defendants argue that the claim language
`requires “presenting the displayed image proximate to an optical sensor,” which contradicts
`Plaintiffs’ assertion that “the claim does not even require that the optical sensor be used in any
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`way beyond it being proximate to the displayed image on the display.” Id. at 5–6 (emphasis in
`original) (quoting Docket No. 108 at 20). Defendants also argue that “every example in the
`specification requires an optical sensor to capture an image.” Id. at 6 (citing ’897 Patent at Fig.
`2, Figs. 4–7, 1:36–2:3, 2:56–64, 3:32–36, 4:36–5:6, 10:56–61, 12:55–67, 16:9–17:37).
`Defendants make the same argument for Claim 1 of the ’038 Patent. Id. at 6–7 (citing ’038
`Patent at Fig. 2, Figs. 4–7, 1:29–2:6, 2:49–57, 3:25–30, 4:30–67, 10:52–57, 12:53–64, 16:7–
`17:35). Finally, for Claim 1 of the ’038 Patent, Defendants argue that Plaintiffs’ construction
`renders the “optical sensor” superfluous if the “optical sensor” was not required to capture the
`images. Id. at 7–8.
`Plaintiffs reply that neither the ’897 Patent nor the ’038 Patent require using an optical
`sensor to take a picture of an image displayed on a screen. Docket No. 116 at 11. Plaintiffs
`argues that it does not dispute that “a display image” is the antecedent basis for “the display
`image,” but that Defendants’ argument is a red-herring given the remainder of the claim
`language. Id. at 11–12. For Claim 1 of the ’038 Patent, Plaintiffs reemphasize that the claim
`language only requires that optical sensor only needs to be capable of capturing image
`information from the displayed image and that “the image processing platform” is only
`“configured to identify features from the image information relating to the displayed image.” Id.
`Additionally, for Claim 25 of the ’897 Patent, Plaintiffs argue that Defendants’ construction
`reads out the “proximate” requirement. Id. at 12–13. Finally, Plaintiffs argue that their
`construction does not render the “optical sensor” superfluous as “there is no legal requirement
`that all claim terms must have a ‘functional role.’” Id. at 13.
`The Court agrees with Defendants that both claims require capturing an image from the
`display screen. “When a patent … describes the features of the ‘present invention’ as a whole,
`this description limits the scope of the invention.” Verizon Servs. Corp. v. Vonage Holdings
`Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007). Thus, “an inventor may disavow claims lacking a
`particular feature when the specification describes ‘the present invention’ as having that feature.”
`Poly-America, L.P. v. API Indus., Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016); see also Luminara
`Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016) (noting that courts
`have found disavowal or disclaimer based on statements such as “the present invention includes”
`or “the present invention is”). The Abstract of both the ’897 and ’038 Patent states that “[s]earch
`terms are derived automatically from images captured by a camera equipped cell phone, PDA,
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`or other image capturing device[.]” ’897 Patent, Abstract (emphasis added); see also ’038 Patent,
`Abstract. As the Background section discloses, “Several years ago the present inventors
`pioneered the concept of using digital captured images to identify objects within the images, and
`then using such identifications to retrieve information from various databases.” ’897 Patent at
`1:36–39 (emphasis added); see also ’038 Patent at 1:29–32. Similarly, in the Summary of the
`Invention section, the specification states that “[t]he present invention provides apparatus,
`systems and methods in which: (a) a digital photograph, video, MPEG, AVI, or other image is
`captured using a camera equipped cell phone, PDA, or other image capturing device…” ’897
`Patent at 2:56–59 (emphasis added); see also ’038 Patent at 2:49–52. Thus, the specifications
`consistently describe the invention as a whole as requiring capturing an image.
`The specifications also define what “capture” and “optically capture” mean. For
`instance, the specification states that the term “optically captures” means “some sort of light
`sensitive array, the output of which can be processed to comprise a visually perceptible image,”
`and “is not satisfied by a device that … is merely capable of downloading images from the
`Internet or other sources.” Id. at 4:54–67. The specification also suggests that image capturing
`requires “convert[ing] a physical object into a digital representation.” Id. at 12:53–64.
`Finally, the claim language of both claims supports that the optical sensor must capture
`an image of the displayed image on the display screen before identifying features in the
`displayed image. As both parties agree, the term “a displayed image” is the antecedent basis for
`the term “the displayed image,” and the same is true for the term “image information.” A plain
`reading of the claim language of Claim 1 of the ’038 Patent therefore suggests that the “image
`processing platform coupled with the optical sensor” is “configured to[] identify features from
`the image information relating to the displayed image” only after the “optical sensor” captures
`the “image information from a displayed image on a portable device display screen.” ’038
`Patent, Claim 1. As Defendants emphasize, the specification also supports this interpretation.
`See, e.g., ’038 Patent at Fig. 2, Figs. 4–7, 2:49–57, 4:30–35, 10:52–57, 16:7–48. For Claim 25 of
`the ’897 Patent, the claim recites, inter alia, “presenting the displayed image proximate to an
`optical sensor” and “enabling, via the interactive system, identification of features from the
`displayed image.” ’897 Patent, Claim 25. Although not explicitly recited, a person of ordinary
`skill in the art (“POSA”) would understand from reading the claim that the “optical sensor”
`would need to capture an image, as defined in the specification, of the “displayed image
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`proximate to an optical sensor” when it
`
`is “present[ed]” to the “optical sensor” for the
`
`“«nteractive system”to identify the “features from the displayed image[.]”
`
`Accordingly, the Court finds that “a displayed image” and “image information” are the
`
`antecedent bases for the terms “the displayed image” and “the image information.” The Court
`
`also finds that “the features from the [displayed image and] image information cannot be
`
`identified unless the optical sensor captures [an image of the displayed image on the display of
`
`the device] and the image information from the displayed image on the portable device display
`
`screen.”
`
`2. “determine object information associated with the target object” (°030 Patent,
`Claim 1)
`
`Plaintiffs’ Proposed Construction
`
`Defendants’ Proposed Construction Plain and ordinary meaning
`
`“search a database to find information pertaining
`to the target object”
`
`Claim 1 of the ’030 Patent recites:
`
`1. A transaction system comprising:
`a mobile device configured to acquire data related to an object:
`an object identification platform configured to obtain the acquired data,
`recognize the object as a target object based on the acquired data,
`and determine object
`information associated with the target
`object; and
`a content platform configured to obtain the object information, andinitiate
`a transaction associated with the target object with a selected
`account over a network based on the object information.
`
`°030 Patent, Claim 1 (emphasis added).
`
`The parties dispute whether the claimed “object identification platform” must“determine
`
`object information associated with the target object” by “search[ing] a database” and whether the
`
`“object information” must“pertain”to the “target object.”
`
`Plaintiffs argue that the claim language is clear on its face and Defendants’ proposed
`
`construction seeks to import limitations from the specification. Docket No. 118 at 15. Plaintiffs
`
`also assert
`
`that Defendants’ construction would exclude embodiments disclosed in the
`
`specification “in which object information associated with the target object can be determined
`
`without reference to a database search,” such as by recognizing an object by “detect[ing]
`
`identifying marks on the target object” such as “‘an identifying number or a barcode.” Jd. at 16
`
`(emphasis in original) (citing ’030 Patent at 16:3—-9). Additionally, Plaintiffs argue that the
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`single reference to information “pertaining to the target object” in the specification does not
`support rewriting the claim language. Id. at 16–17.
`
`Defendants respond that “[t]he only mechanism the ’030 patent discloses for determining
`object information is searching a database[.]” Docket No. 111 at 17–18 (citing ’030 Patent at
`20:15–37). Defendants argue that the embodiment Plaintiffs reference “relates to assistance with
`‘recogniz[ing] the object,’ not ‘determin[ing] object information[.]” Id. at 18 (citing ’030 Patent
`at 16:3–14). Finally, Defendants argue that the specification only uses either “pertaining to” or
`“corresponding to” when describing the “target object information,” the two terms are synonyms,
`and that Plaintiffs have not argued that there is a materially difference between these terms. Id.
`at 19.
`Plaintiffs reply that target object information can still be determined directly from
`
`“acquired data” related to an object rather than a database. Docket No. 116 at 8–9. Plaintiffs
`also argue that its Defendants job to justify revising the plain and ordinary meaning of the term
`“associated with,” and Defendants have not done so. Id. at 9.
`
`The Court agrees with Defendants that determining the object information associated
`with the target object requires searching a database. As Defendants assert and the Court agrees,
`the “[t]he only mechanism the ’030 patent discloses for determining object information is
`searching a database[.]” Docket No. 111 at 17–18. As seen in Figure 4 (reproduced below),
`once an object is recognized, the object identification platform (labeled as Identification Server
`106) determines the target objection information 109 and sends that information to content
`platform:
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`°030 Patent, Fig. 4; see alsoid., Figs. 5, 6.
`
`AsPlaintiffs cite, the specification discloses that “the object recognition 107 [of Figure 4]
`
`can also detect identifying marks on the target object 100,” such as “an identifying numberor a
`
`barcode.” Jd. at 16:3—6. The specification further discloses that “[t]his information” can be used
`
`to identify the object or “can be passed onaspart of the target object information 109[.]” Jd. at
`
`16:6—-9. However, the specification discloses that if this information is passed on as part of the
`
`object information “then it can be used by the terminal 102 or content server 111 to identify the
`
`specific target object 100, out of many such objects that have similar appearancesanddiffer only
`
`in the identifying marks.” /d. at 16:10—15. Thus, the specification discloses that this information
`
`is used in conjunction with the target object information obtained from the database,not thatit
`
`mayreplace the information obtained from the database. Additionally, this information is
`
`arguably not even “determined”as usedin the specification, but rather “passed on.” A POSA
`
`would therefore understandthat the intrinsic evidence equates determining the object
`
`information with searching a database for the object information.
`
`The Court declines to rewrite the claim language to replace “associated with” with
`
`“pertaining to,” however. The Court agrees with Plaintiffs that the phrase “associated with”is
`
`clear on its face. Defendants do not necessarily disagree; rather, they simply argue that the
`
`specification uses the phrases “pertaining to” and “corresponding with” instead.
`
`The
`
`specification’s use of alternative phrases does not justify rewriting the plain language of the
`
`claims though.
`
`Accordingly, the Court construes the term “determine object information associated with
`
`the target object” to mean “search a database to find information associated with the target
`
`object.”
`
`3. “first target object information associated with the first target object” (’278
`Patent, Claim 1)
`
`Plaintiffs’ Proposed Construction
`Plain and ordinary meaning
`
`object information”
`
`Defendants’ Proposed Construction
`“«nformation pertaining to the first target object
`obtained by searching the database storing target
`
`Claim 1 of the ’278 Patentrecites:
`
`1. A computer-assisted method, comprising:
`receiving, via a mobile device, an image comprising a representation ofat
`least a portion of a document;
`
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`determining that symbolic content is on the at least the portion of the
`document based on the image;
`extracting symbol information based on the symbolic content according to
`symbol type;
`determining a validity of the document based at least in part on the image
`and the symbol information; and
`recognizing the document as a first target object based at least in part on
`the image, the symbol information, and a query of a database
`storing target object information associated with a plurality of
`target objects including the first target object;
`receiving, via an address, first target object information associated with
`the first target object, wherein the first target object information
`comprises a response regarding the validity of the document.
`’278 Patent, Claim 1 (emphasis added).
`
`The parties dispute whether the phrase “‘target object information associated with a
`plurality of target objects including the first target object’ provides an antecedent basis for ‘first
`target object information associated with the first target object.’” Docket No. 116 at 9–10.
`Plaintiffs provide the following argument for why the last two steps should be construed to refer
`to different things:
`The final three limitations require (1) “determining a validity of the
`document,” (2) recognizing a document as a “first target object” based at
`least in part on “a query of a database storing target object information
`associated with a plurality of target objects” and (3) receiving “first target
`object information associated with the first target object” that “comprises a
`response regarding the validity of the document.” Thus, the “recognizing a
`document” step is distinct from the surrounding “determining a validity” and
`“receiving a response regarding the validity” steps. This means the “first target
`object information associated with the first target object” used in the “receiving
`a response regarding the validity” step does not need to be coextensive with
`any target object information related to the “recognizing a document” step.
`Docket No. 108 at 17–18 (emphasize in original). Plaintiffs argue that accepting
`Defendants’ construction would eliminate the distinction between these steps. Id.
`Specifically, Plaintiffs argue that the “recognizing” step does not always return “target
`object information,” such as when “a target object does not match certain target object
`information,” and therefore the “target object information” of the “receiving” step must
`be different. Id. at 18–19 (emphasis in original).
`
`The Court finds that the limitation “target object information associated with a
`plurality of target objects including the first target object” provides the antecedent basis
`for the limitation “first target object information associated with the first target object.”
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`A POSAreading Claim 1 of the ’278 Patent would understand that the “target object
`
`information” of the “receiving” step is obtained during the “recognizing” step once the
`
`document,
`
`i.e.
`
`the “first target object,” is recognized. Plaintiffs assertion that the
`
`“recognizing” step includes querying the database without a match ignores that the
`
`claimed database must include object information associated with the first target object.
`
`Thus, when the database is queried for information associated with the first target
`
`object, it would return the first object information as part of the “recognizing” step,
`
`which is then “received” in the next step. The Court also finds unpersuasive Plaintiffs’
`
`argument that “the claims contemplate querying a database for both recognition of a
`
`document and validating a document.”
`
`See Docket No. 116 at 10 (emphasis in
`
`original).
`
`Accordingly, the Court finds that that the limitation “target object information
`
`associated with a plurality of target objects including the first target object” provides the
`
`antecedent basis for the limitation “first target object information associated with the
`
`first target object.”
`
`4. “atime varying image” (’038 Patent, Claim 3; ’897 Patent, Claim 30)
`
`Plaintiffs’ Proposed Construction
`
`“video stream”
`
`Defendants’ Proposed Construction “an imagethatis not a still image or a
`
`single frame”
`
`Claim 3 of the ’038 Patent depends from Claim 1. Claim 3 recites “The system of claim
`
`1, wherein the displayed image comprises a time varying image.” °038 Patent, Claim 3.
`
`Similarly, Claim 30 of the 897 Patent depends from Claim 25, and recites, “The method
`
`of claim 25, wherein the step of displaying the displayed image includes displaying a time
`
`varying image.” Theparties dispute whether the term “time varying image”is limited to video.
`
`Plaintiffs argue that a “time varying image” is broader than just a video stream as
`
`evidenced by the specification. See Docket No. 108 at 22—24 (citing ’038 Patent at 2:49-57,
`
`5:32-45, 9:41-57, 12:52-60). Defendants respond that these same citations to the specification
`
`show that the “time-varying image” must be video. See Docket No. 111 at 21-23. Defendants
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`argue that because the claims use the word “image” as opposed to the plural “imagery” or
`
`“mages,” the term mustbe limited to video. See id. at 23. Defendants also argue that Plaintiffs’
`
`construction imposes a negative limitation, which “must find support either in ‘the words of the
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`12
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`Patent Owner's Ex. 2014, Page 12 of 20
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`Patent Owner's Ex. 2014, Page 12 of 20
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`claim’ or through an ‘express disclaimer or independent lexicography in the written description
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`that would justify adding that negative limitation.” Jd. at 22 (quoting Ethicon LLC v. Intuitive
`
`Surgical, Inc., 847 Fed. Appx. 901, 907 (Fed. Cir. Mar. 15, 2021)).
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`The Court agrees with Plaintiffs that the term “a time varying image”is not limited to
`
`“video stream.” The specification discloses that “imagery” includes “single images, multiple
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`images, motion imagery, and/or video.” ’038 Patent at 9:41—57; see also id. at 12:55—60 (“The
`
`imagery can be a single image, a series of images, or a continuous video stream”). A “time-
`
`varying image” necessarily would require multiple frames or images to vary in time,andlikely is
`
`synonymous with “motion imagery.” Defendants’ argument that the use of the singular “image”
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`requires limiting the term to a “video stream” is unpersuasive as a “video stream” would have
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`multiple frames as well. Further, the Court will rewrite Plaintiffs’ construction to avoid a
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`negative limitation, i.e., “an image depicted in multiple frames.”
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`Accordingly, the Court construes the term “time-varying image” to mean “an image
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`depicted in multiple frames.”
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`5. “a computer remote to the network-enabled device” (’529 Patent, Claim 7);
`“remote server” (’030 Patent, Claims 3, 4, 6); & “remote computer” (’036
`Patent, Claim 15)
`
`Defendants’ Proposed Construction
`Plaintiffs’ Proposed Construction
`“a computerthat is physically separate from the
`“a computerthat is not on a Local Area
`
`Network (LAN) with the network-enabled__|network-enabled device”
`device”
`
`
`
`“a server that is not on a Local Area
`Network
`(LAN)
`with the device”
`“a computerthat is not on a Local Area
`Network
`(LAN)
`with the device”
`
`mobile device”
`
`mobile device”
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`The parties dispute whether the term “remote” means “not on a Local Area Network
`
`(LAN)”or “physically separate.”
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`Plaintiffs argue that “the technical definition of ‘remote’ in the context of computer
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`connections that would be understood by a person of ordinary skill in the art, which refers to
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`connections other than those on a Local Area Network (‘LAN’).” Docket No. 108 at 24-25
`
`(citing Docket Nos. 108-2 (IBM Dictionary), 108-3 (Newton’s Telecom Dictionary)). P