Case 2:20-cv-07872-GW-PVC Document 145 Filed 10/18/21 Page 1 of 22 Page ID #:2279
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`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`Date October 18, 2021
`Case No. CV 20-7872-GW-PVCx
`Title
`Nantworks, LLC, et al. v. Bank of America Corporation, et al.
`
`Present: The Honorable GEORGE H. WU, UNITED STATES DISTRICT JUDGE
`Javier Gonzalez
`None Present
`Tape No.
`Deputy Clerk
`Court Reporter / Recorder
`Attorneys Present for Plaintiffs:
`Attorneys Present for Defendants:
`None Present
`None Present
`PROCEEDINGS:
`IN CHAMBERS - RULING ON MARKMAN HEARING
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`Attached hereto is the Court’s Final Ruling on Claim Construction/Markman Hearing.
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`CV-90 (06/04)
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`CIVIL MINUTES - GENERAL
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`Page 1 of 1
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`Initials of Preparer
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`JG
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`:
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`Nantworks, LLC et al v. Bank Of America Corporation et al; Case No. 2:20-cv-07872-GW-(PVCx)
`Final Ruling on Claim Construction/Markman Hearing
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`
`
`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), a Joint Claim Construction Chart (Docket No. 120), and a Joint
`Submission Regarding the Court’s Claim Constructions (Docket No. 142). 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)
` Defendants’ Supplemental Claim Construction Brief (Docket No. 140)
` Plaintiffs’ Supplemental Claim Construction Brief (Docket No. 141)
` Defendants’ Responsive Supplemental Claim Construction Brief (Docket No. 143)
` Plaintiffs’ Responsive Supplemental Claim Construction Brief (Docket No. 144)
`The Court held a hearing regarding the parties’ disputed terms on September 23, 2021.
`Docket No. 134. 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
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`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.
`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
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`presenting the displayed image proximate to an optical sensor; and
`enabling, via the interactive system, identification of features from the
`displayed image, recognition of a target based on the features,
`association of the target with target information pertinent to the
`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.
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`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
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`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
`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, or
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`other image capturing device[.]” ’897 Patent, Abstract (emphasis added); see also ’038 Patent,
`Abstract. As the Background section discloses, “[s]everal 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 proximate to an optical sensor” when it is
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`rewriting the claim language. Id. at 16–17.
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`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
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`“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 also id., Figs. 5, 6.
`As Plaintiffs cite, the specification discloses that “the object recognition 107 [of Figure 4]
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`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.”
`A POSA reading 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
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`Plain and ordinary meaning
`
`Plain and ordinary meaning
`
`“identify the object as a target
`object by matching the acquired
`data to object image data of
`objects stored in a database”
`“[identify / identification of] a
`target by matching the features
`to features of targets stored in a
`database”
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`1)
`“recognize the object as a
`target object based on the
`acquired data” (’030 Patent,
`Claim 1)
`“recognize a target based on
`the features” (’038 Patent,
`Claim 1) & “recognition of
`a target based on the
`features” (’897 Patent,
`Claim 25)
`“distinguish an object present in
`“distinguish an object
`the image from others by
`present in the image from
`matching data characteristics of
`others using a database that
`the object to data characteristics
`stores data characteristics of
`of target objects stored in a
`target objects” (’529 Patent,
`database”
`Claim 1)
`Many of Defendants’ arguments for the “recognize” terms overlap, and the Court considers
`
`these terms together.
`a. “recognizes the target as a known target from the target database based on
`comparing parameters derived from the digital representation to
`recognition parameters associated with the known targets” (’036 Patent,
`Claim 1)
`Plaintiffs argue that Defendants’ proposed construction is a “wholesale rewrite of this
`
`claim ‘term’,” which “is unsupported and should be rejected.” Docket No. 108 at 5. Specifically,
`Plaintiffs argue that the specification uses the words “identify” and “recognize” separately. Id. at
`6 (citing ’036 Patent at Abstract, 15:40–42). Plaintiffs also argue that even if the terms are
`synonymous, the Court should not replace the word “recognize” with “identify.” Id. at 6–7.
`Similarly, Plaintiffs argue that the specification uses the terms “comparing” and “matching”
`distinctly. Id. at 7–8 (citing ’036 Patent at 8:45, 11:15–34, 24:13–15). Finally, Plaintiffs argue
`that “there is no justification to replace the requirement that image parameters be compared to
`‘recognition parameters associated with the known targets’ with the narrower requirement that
`they be matched with ‘recognition parameters of the known targets stored in the target
`database.’” Id. at 8 (emphasis in original).
`
`Defendants argue that the specification emphasizes that the present invention includes
`“identifying a target by matching its parameters to those of known targets stored in a database.”
`Docket No. 111 at 10 (citing ’036 Patent at 1:21–24, 5:8–11, 11:15–17, 23:31–34). Defendants
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`Plain and ordinary meaning
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`also argue that every embodiment in the specification includes this feature. Id. at 11 (citing ’036
`Patent at 6:4–10, 11:15–32). Further, Defendants argue that “comparing parameters” must
`“match” parameters in the database for the system to recognize a target. Id. at 12–13.
`
`The Court agrees with Plaintiffs that Defendants’ construction rewrites the clear language
`without support. First, the Court sees no reason to replace the word “recognizes” with “identifies,”
`particularly given that Defendants does not explain the difference in scope between these two
`terms. Second, the Court will not replace the term “comparing parameters” with the term
`“matching parameters,” as the specification does not require matching parameters; instead, it
`requires matching a target to an object in the database. In other words, not every parameter needs
`a “1:1 ‘exact match[]” as Plaintiffs emphasize. See Docket No. 116 at 5. Third, the Court finds it
`unnecessary to replace the term “associated with the known targets” with the phrase “of the known
`targets stored in the target base.”
`
`At the hearing and in their supplemental briefing, Defendants proposed that instead of
`replacing the term “comparing parameters” with the term “matching parameters,” the Court should
`add the language “to find the best match” to the end of the “recognizing” term. See Docket No.
`138 at 41:21–43:13; Docket No. 140 at 3. In other words, Defendants’ modified proposed
`construction would read “recognizes the target as a known target from the target database based
`on comparing parameters derived from the digital representation to recognition parameters
`associated with the known targets to find the best match.” See Docket No. 138 at 41:21–43:13;
`Docket No. 140 at 3. Defendants argue that the intrinsic evidence supports this construction as
`U.S. Patent No. 7,016,532 (the “’532 Patent”), incorporated by reference into each of the
`Patents-in-Suit, consistently discloses that “matching” is part of the “present invention.” See
`Docket No. 140 at 3–5 (citing ’532 Patent at 1:11–14, 1:63–2:13, 3:11–12, 3:36–48, 4:37–48,
`10:6–25, 11:3–4, Figs. 1, 3A, 3B). Plaintiffs respond that other related patents explicitly recite
`“producing a best match from the at least one database to identify the object; and returning the best
`match from an identification server having access to the at least one database.” Docket No. 144
`at 4 (citing U.S. Patent No. 7,477,780, Claim 1; U.S. Patent Nos. 9,336,453; 9,330,328; 9,311,554;
`9,269,015; 9,182,828; 9,110,925). Thus, Plaintiffs argue that the claims that do not explicitly
`recite this limitation should not be so limited.
`
`The Court agrees with Defendants that the claimed invention requires making a “match”
`“based on comparing parameters” in order to “recognize[] the target as a known target from the
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`target database.” The intrinsic evidence consistently emphasizes that the system compares
`parameters in order to match a target object with an object in a database in order to “recognize”
`the target. See ’532 Patent at 1:49–62 (disclosing that as part of the “present invention,” images
`may be decomposed to determine “unique characteristics,” which are “used to provide the best
`match or matches in the data base, the ‘best’ determination being assisted by the partial symbolic
`information, if that is available”), 3:11–12, 3:36–48 (“At the heart of the present invention is a
`high-speed image matching engine that returns unambiguous matches to target objects contained
`in a wide variety of potential input images.”), 4:37–48, 10:6–25 (“The unique database search
`methodology and subsequent object match scoring criteria are novel aspects of the present
`invention that deserve special attention.”), 11:3–4, Figs. 1, 3A, 3B.1 That some claims explicitly
`recite “matching” does not overcome the clear statements defining the scope of the invention in
`the specification. Further, at the hearing, Plaintiffs were unable to articulate how the system would
`“recognize” a target object by “comparing parameters” without making some “match.” See Docket
`No. 138 at 47:14–48:14. Nevertheless, the Court finds that the language “best” match is
`unwarranted as the intrinsic evidence does not require a “best” match given that multiple “best”
`matches may be obtained, and adding this language would only lead to confusion regarding what
`is required for a match to be the “best.”
`
`Accordingly, the Court construes the term “recognizes the target as a known target from
`the target database based on comparing parameters derived from the digital representation to
`recognition parameters associated with the known targets” to mean “recognizes the target as a
`known target from the target database based on comparing parameters derived from the digital
`representation to recognition parameters associated with the known targets to find a match.” .
`b. “recognizing the at least one object in the scene as a target object based at
`least in part on the at least one characteristic of the video stream” (’004
`Patent, Claim 1)
`Much of Defendants’ construction for the term “recognizing the at least one object in the
`scene as a target object based at least in part on the at least one characteristic of the video stream”
`matches their construction for the term “recognizes the target as a known target from the target
`database based on comparing parameters derived from the digital representation to recognition
`parameters associated with the known targets” discussed above. For the reasons discussed above,
`
` 
`Plaintiffs do not dispute that the ’532 Patent is part of the intrinsic evidence for the Patents-in-Suit.
`17 
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`1
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`Patent Owner's Ex. 2015, Page 18 of 22
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`Case 2:20-cv-07872-GW-PVC Document 145 Filed 10/18/21 Page 19 of 22 Page ID #:2297
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`the Court finds Defendants’ arguments unpersuasive with the exception that Claim 1 requires
`matching. Defendants also argues that this term requires use of a database in the identification
`process, citing the specification’s disclosure that this is part of the “present invention.” Docket
`No. 111 at 14 (citing ’004 Patent at Abstract, 1:30–34, 3:25–38, 4:8–32, 5:21–24, 6:19–29, 8:43–
`13:6, 11:31–33). Plaintiffs respond that the claims do not include this limitation, unlike other
`claims, and “there is no ‘clearly express[ed]’ lexicography or ‘clear and unmistakable’ disclaimer
`in the specification and, therefore, no basis to deviate from the plain and ordinary meaning of this
`term.” Docket No. 108 at 12 (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362,
`1365–67 (Fed. Cir. 2012)).
`The Court agrees with Defendants that the “recognizing” step requires querying a database.
`As stated above, “an inventor may disavow claims lacking a particular feature when the
`specification describes ‘the present invention’ as having that feature.” Poly-America, L.P., 839
`F.3d at 1136. The specification emphasizes throughout that comparing characteristics of a target
`object with characteristics of objects in a database to recognize the target object is part of the
`“present invention” and is included in the Abstract. See ’004 Patent at Abstract, 1:30–34, 3:25–38,
`4:8–32, 11:31–33. Further, every embodiment in the specification requires comparing
`characteristics with those in a database. See, e.g., id. at 5:21–24, 6:19–29, Figs. 1, 3A, 3B, 4, 5, 6.
`That some claims explicitly recite a “database” does not overcome the clear statements defining
`the scope of the invention in the specification. Further, Plaintiffs sole hypothetical of how
`recognition could occur without a “database” does not overcome the clear import of the
`specification and Plaintiffs even concede that this information may qualify as a “database.” See
`Docket No. 141 at 6–7. Given that neither party asked the Court to construe the term “database,”
`the Court declines to do so.
`Accordingly, the Court construes the term “recognizing the at least one object in the scene
`as a target object based at least in part on the at least one characteristic of the video stream” to
`mean “recognizing the at least one object in the scene as a target object based at least in part on
`the at least one characteristic of the video stream by comparing the at least one character