UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`Washington, D.C.
`
`
`In the Matter of
`
`CERTAIN LED LIGHTING DEVICES, LED
`POWER SUPPLIES, COMPONENTS THEREOF,
`AND PRODUCTS CONTAINING SAME
`
`
`
`
`
`
`Inv. No. 337-TA-1379
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`
`
`
`
`
`
`
`ORDER NO. 38:
`
`
`
`
`CONSTRUING CLAIM TERM
`
`(April 16, 2024)
`
`
`I.
`
`
`BACKGROUND
`
`The Commission instituted this investigation to determine whether certain video capable
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`electronic devices, including computers, streaming devices, televisions, cameras, and components
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`and modules thereof infringe certain claims of U.S. Patent No. 7,532,808 and U.S. Patent No.
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`8,204,134. 88 Fed. Reg. 84832 (Dec. 6, 2023). The complainants are Nokia Technologies Oy and
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`Nokia Corporation. The respondents are HP, Inc., Amazon.com, Inc., and Amazon.com Services
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`LLC. The Commission Investigative Staff is a party to the investigation.
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`The private parties and the Staff filed a joint claim construction chart and the parties each
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`filed claim construction briefs, after which a claim construction hearing was held. Joint Chart
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`(EDIS Doc. ID 813868); Nokia Br. (EDIS Doc. ID 814056); Resp. Br. (EDIS Doc. ID 814060);
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`Staff Br. (EDIS Doc. ID 814419); Nokia Reply (EDIS Doc. ID 814875); Resp. Reply (EDIS Doc.
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`ID 814866); Staff Reply (EDIS Doc. ID 815073); and Tr. (EDIS Doc. ID 816142). This order
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`addresses the claim construction issue raised by the parties.
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`II.
`
`
`RELEVANT LAW
`
`It is a bedrock principle of patent law that the claims of a patent define the invention to
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`AMAZON-1022
`7,532,808
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`

`

`which the patentee is entitled the right to exclude. Phillips v. AWH Corp., 415 F.3d 1303, 1312
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`(Fed. Cir. 2005). “[T]here is no magic formula or catechism for conducting claim
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`construction.” Id. at 1324. Instead, weight may be attached to appropriate sources “in light of the
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`statutes and policies that inform patent law.” Id.
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`The terms of a claim are generally given their ordinary and customary meaning which is
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`the meaning that the term would have to one of skill in the art at the time of the invention. Id. at
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`1312–13. The ordinary meaning of a claim term is its meaning to one of skill in the art after reading
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`the entire patent. Id. at 1321. The patent specification “is always highly relevant to the claim
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`construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a
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`disputed term.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
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`A court “should also consider
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`the patent’s prosecution history,
`
`if
`
`it
`
`is
`
`in
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`evidence.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995), aff’d, 517
`
`U.S. 370 (1996). The prosecution history, which is intrinsic evidence, is “the complete record of
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`the proceedings before the PTO and includes the prior art cited during the examination of the
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`patent.” Phillips, 415 F.3d at 1317. “[T]he prosecution history can often inform the meaning of
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`the claim language by demonstrating how the inventor understood the invention and whether the
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`inventor limited the invention in the course of prosecution, making the claim scope narrower than
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`it would otherwise be.” Id. “[B]ecause the prosecution history represents an ongoing negotiation
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`between the PTO and the applicant, rather than the final product of that negotiation, it often lacks
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`the clarity of the specification and thus is less useful for claim construction purposes.” Id.
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`In some situations, a “court will need to look beyond the patent’s intrinsic evidence and to
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`consult extrinsic evidence in order to understand, for example, the background science or the
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`meaning of a term in the relevant art during the relevant time period.” Teva Pharmaceuticals USA,
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`
`
`2
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`

`

`Inc. v. Sandoz, Inc., 574 U.S. 318, 331 (2015). Extrinsic evidence is “all evidence external to the
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`patent and prosecution history, including expert and inventor testimony, dictionaries, and learned
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`treatises.” Markman, 52 F.3d at 980. While expert testimony can be useful “to ensure that the
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`court’s understanding of the technical aspects of the patent is consistent with that of a person of
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`skill in the art,” such testimony is “generated at the time of and for the purpose of litigation and
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`thus can suffer from bias that is not present in intrinsic evidence.” Phillips, 415 F.3d at 1318–
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`19. Further, while extrinsic evidence may be useful, it is less reliable than intrinsic evidence, and
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`its consideration “is unlikely to result in a reliable interpretation of patent claim scope unless
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`considered in the context of the intrinsic evidence.” Id. Where the intrinsic record unambiguously
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`describes
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`the scope of
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`the patented
`
`invention,
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`reliance on extrinsic evidence
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`is
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`improper. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1308 (Fed. Cir. 1999),
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`citing Vitronics, 90 F.3d at 1583.
`
`III. ANALYSIS
`
`
`A. The ’808 Patent Specification
`
`
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`The ’808 patent is titled “Method for Coding Motion in a Video Sequence” and relates
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`generally to motion compensation in video coding. The patent explains that in a typical video
`
`coding system, motion compensated prediction is performed on a macro-block basis. ’808 patent
`
`at 10:23–25. The patent refers to “Joint Model Number 1” (JM1) of the Joint Video Team (JVT)
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`of ISO/IEC MPEG (Motion Picture Expert Group) and ITU-T VCEG (Video Coding Experts
`
`Group), which assigned a coding mode depending on the characteristics of the macroblock and the
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`motion in a video sequence. Id. at 10:27–50. There were eight such coding modes, with the eighth
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`known as skip mode, which indicated that the macroblock was to be copied from the reference
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`video frame without using motion compensated prediction. Id. at 10:50–67.
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`
`
`3
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`

`

`The ’808 patent recognizes a problem with an assumption made by JM1 of JVT that skip
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`mode is statistically the most likely coding mode for a macroblock because, if the video sequence
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`contains global motion (panning or zooming, etc.) skip mode is not used, causing degradation of
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`compression efficiency. Id. at 12:18–47. Though solutions to this problem were proposed, the
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`specification states that “it should be appreciated that there exists a significant unresolved technical
`
`problem relating to the coding of a digital video sequence in the presence of global motion, such
`
`as translation, panning or zooming of the camera.” Id. at 13:45–49. To address these problems,
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`“the present invention is based on a redefinition of the skip mode concept used in JM1 of the JVT
`
`codec.” Id. at 14:16–18. In particular, “[a]ccording to the invention, the skip mode concept is
`
`redefined in such a way that a macroblock assigned to skip mode is either associated with a zero
`
`(non-active) motion vector, in which case it is treated in the same way as a conventional skip mode
`
`macroblock and copied directly from the reference frame, or it is associated with a non-zero
`
`(active) motion vector.” Id. at 14:23–29.
`
`
`
`B. Level of Ordinary Skill in the Art
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`Nokia argues that one of ordinary skill in the art would “have at least a bachelor’s degree
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`in electrical engineering, computer engineering, or a related field, with about two years of
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`experience in video decoding or encoding technologies. More work or practical experience may
`
`qualify one not having the requisite education as a person with ordinary skill in the art while a
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`higher level of education could offset less experience.” Nokia Br. at 2. Respondents argue that one
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`of ordinary skill in the art “would have had a (1) Bachelor’s degree in electrical engineering,
`
`computer science, or a comparable field of study, and (2) approximately two to three years of
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`practical experience with video and/or image processing or coding. Additional experience can
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`substitute for the level of education, and vice versa.” Resp. Br. at 15–16; see also Havlicek Decl.
`
`
`
`4
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`

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`at ¶ 14.1 The Staff contends that one of ordinary skill in the art “would have a bachelor’s degree
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`in electrical engineering, computer engineering, computer science, or a comparable field of study,
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`with about two years of experience with video coding or related technologies. More experience
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`can substitute for less education, and vice versa.” Staff Br. at 5. There does not appear to be a
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`meaningful difference between the parties’ proposals and no party argued that there was.
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`The Staff agrees that the parties’ different proposals on the level of skill in the art do not
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`impact claim construction, Tr. at 174:7–23, as does Nokia, Tr. at 184:15–20, and Respondents, Tr.
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`at 192:11–17. See also Resp. Reply at 3, n.3. To the extent a finding is required at this stage, I
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`adopt the Staff’s proposed level of ordinary skill in the art for purposes of this Order. Cf. Genzyme
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`Therapeutic Prods. Ltd. P’ship v. Biomarin Pharm. Inc., 825 F.3d 1360, 1371–72 (Fed. Cir.
`
`2016) (failure to make a specific finding about the required level of skill in the art is not reversible
`
`error where the record did not show any meaningful differences in proposed definitions or that the
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`outcome of the case would have been different based on which definition was selected). If a dispute
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`arises that depends on the level of ordinary skill in the art, the parties should be prepared to address
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`this issue later in the investigation.
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`
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`C. The Disputed Claim Term
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`The parties raised a single claim construction dispute regarding the meaning of “skip
`
`coding mode” in various claims of the ’808 patent. The parties propose:
`
`Claim Term and
`Asserted Claims
`skip coding mode
`
`
`Nokia and the Staff’s
`Construction
`a coding mode in
`which a zero (non-active)
`motion vector or a non-
`
`Respondents’ Construction
`
`a coding mode in which a
`zero (non-active) motion
`vector or a nonzero (active)
`
`
`1 Respondents provided two declarations from Dr. Havlicek. The first, provided with their opening
`claim construction brief, is referenced as “Havlicek Decl.” and the second, provided with their
`responsive claim construction brief, is referenced as “Havlicek Suppl. Decl.”
`
`
`
`5
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`

`

`Claim Term and
`Asserted Claims
`claims 1, 6, 7, 9, 10,
`15, 16, 20, 23–25, 32,
`34, 43, 44, 51–54, 62,
`and 63
`
`Nokia and the Staff’s
`Construction
`zero (active) motion
`vector is associated with
`each skip mode
`macroblock, depending
`on the characteristics of
`the motion in image
`segments surrounding the
`macroblock in question.
`
`Respondents’ Construction
`
`motion vector is associated
`with each skip mode
`macroblock, depending on
`the characteristics of the
`motion in image segments
`surrounding the macroblock
`in question, and residual
`information can be provided
`for each skip mode
`macroblock.
`
`Joint Chart at 1. Nokia and the Staff agree on the proposed construction. Respondents agree in part
`
`with Nokia and the Staff’s proposal but add that “residual information can be added in each skip
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`mode macroblock.” The basis for Respondents’ addition is dependent claims 30, 41, 49, and 60,
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`which respectively depend from claims 1, 7, 10, and 16, and recite “wherein no residual
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`information is provided for the first segment in the encoded bitstream.” Respondents contend that
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`adopting the proposed construction of Nokia and the Staff would “require the ALJ to invalidate
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`four dependent claims (claims 30, 41, 49, and 60), disregard embodiments, and import a limitation
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`from the specification into the claims.” Resp. Br. at 17. Nokia and the Staff contend that their
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`proposal is based on lexicography in the patent and that adopting their proposal is not inconsistent
`
`with dependent claims 30, 41, 49, and 61. Nokia Br. at 15–18; and Staff Br. at 7–11. For the reasons
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`explained below, I agree with Nokia and the Staff.
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`
`
`1.
`
` The ’808 Patent Expressly Defines “Skip Coding Mode”
`
`The specification states that “the present invention is based on a redefinition of the skip
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`mode concept used in JM1 of the JVT codec.” ’808 patent at 14:16–18. According to the
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`specification, as a result, the “method according to the invention not only provides an improvement
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`in coding efficiency in the presence of global motion (i.e. motion affecting the entire area of video
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`frame), but also enables regional motion to be represented in an efficient manner.” Id. at 14:18–
`
`
`
`6
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`

`

`22.
`
`The specification states:
`
`According to the invention, the skip mode concept is redefined in such a way that
`a macroblock assigned to skip mode is either associated with a zero (non-active)
`motion vector, in which case it is treated in the same way as a conventional skip
`mode macroblock and copied directly from the reference frame, or it is associated
`with a non-zero (active) motion vector.
`
`Id. at 14:23–29.
`
`In addition, the specification states:
`
`According to the invention, the coding modes used by encoder 600 correspond to
`those provided by JM1 of the JVT codec (shown in Table 3), with the exception
`that the SKIP mode is redefined to allow representation of global and regional
`motion. More specifically, the SKIP mode is modified in such a way that a zero
`(non-active) motion vector or a non-zero (active) motion vector is associated with
`each skip mode macroblock, depending on the characteristics of the motion in
`image segments surrounding the macroblock in question. In the following this type
`of motion vector will be referred to as a “skip mode motion vector”.
`
`Id. at 17:43–53.
`
`The specification thus makes clear that JM1 is the starting point and that the skip coding
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`mode of the invention is a redefinition of the skip coding mode of JM1. In stating (twice) that skip
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`mode is being “redefined,” the specification explicitly provides a definition of skip coding mode
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`according to the invention. The ’808 patent is clear and unequivocal on this point. Baxalta Inc. v.
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`Genentech, Inc., 972 F.3d 1341, 1349 (Fed. Cir. 2020) (noting the “exacting” standard for patentee
`
`lexicography). The specification demonstrates that the patentee defined the term “skip coding
`
`mode” by “clearly set[ting] forth a definition of the disputed claim term” and “clearly express[ing]
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`an intent to redefine the term.” See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362,
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`1365 (Fed. Cir. 2012) (cleaned up). The Federal Circuit has stated that “a claim term may be
`
`clearly redefined without an explicit statement of redefinition.” Bell Atl. Network Servs., Inc. v.
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`Covad Comm’s Group, Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001). Here, however, there is an
`
`
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`7
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`

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`explicit statement of redefinition—the word “redefined” is used. The specification thus supports
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`that the patentee defined the term “skip coding mode” for purposes of the invention. See
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`AstraZeneca AB v. Mutual Pharm. Co., Inc., 384 F.3d 1333, 1339–40 (Fed. Cir. 2004) (the
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`“specification’s statement that ‘the solubilizers suitable according to the invention are defined
`
`below’ provides a strong signal of lexicography”) (cleaned up).2
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`At the hearing, Respondents agreed that the specification provides a “partial redefinition
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`of skip mode,” which “is specific to motion language” but which does not “answer[] the question
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`the Court needs to about residual information.” Tr. at 150:8–151:6. Respondents contend that the
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`specification’s silence on residual information with respect to “skip coding mode” is “fatal” to
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`Nokia’s lexicography argument. Resp. Reply at 5–6. According to Respondents, the portions of
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`the specification that redefine “skip coding mode” “do not mention whether residual information
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`is sent or not and certainly do not say the invention can never send residual information.” Id. at 6.
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`Respondents are correct that the redefinition of “skip coding mode” in the specification is
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`silent with respect to residual information. That silence, however, does not mean that “skip coding
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`mode” should be construed differently from the express definition provided in the patent. Instead,
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`the fact that the specification is silent as to residual information in re-defining “skip coding mode”
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`supports that residual information is not part of the definition. Whether residual information is
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`provided or not is simply irrelevant to how the patentee expressly defined the term.
`
`Respondents’ reliance on Littelfuse, Inc. v. Mersen USA EP Corp. is misplaced. Resp.
`
`
`2 Respondents assert that if I “allow[] Complainants to tie their construction to the JM1
`‘redefinition’ based on [the disclosure at column 17, lines 43–53], the Construction should also
`include the other mentioned JM1 coding modes in Table 3, not just the redefinition part
`Complainants find favorable.” Resp. Reply at 6, n.6. This does not make sense. The specification
`redefines “skip coding mode,” which is the claim term. Table 3 includes other modes beyond “skip
`coding mode.” There is no reason to incorporate non-skip coding modes into the construction of
`“skip coding mode.”
`
`
`
`8
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`

`

`Reply at 6, citing 29 F.4th 1376, 1379–82 (Fed. Cir. 2022). There, the Federal Circuit considered
`
`a patent directed to a fuse end cap where the specification disclosed both single-piece and multi-
`
`piece embodiments. 29 F.4th at 1377–78. The specification discussed a “fastening stem” only in
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`the context of a multi-piece embodiment, leading the district court to construe the independent
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`claims, which recited a fastening stem, as directed to multi-piece construction even though certain
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`dependent claims recited single-piece construction. Id. at 1378–79. The Federal Circuit disagreed
`
`with the district court’s construction, stating that “[n]othing in the specification states that a
`
`fastening stem cannot be present in a single-piece apparatus.” Id. at 1381. As a result, the correct
`
`construction of the independent claims was one that “allows for the independent claims to cover
`
`both single-piece and multi-piece embodiments.” Id.
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`That analysis is applicable here. Nothing in the ’808 patent specification indicates that
`
`residual information must be or must not be present in skip coding mode and the specification
`
`discloses an embodiment in which it is not. The correct interpretation of the independent claims is
`
`therefore one that embraces both possibilities. The construction proposed by Nokia and the Staff
`
`allows for both the presence and absence of residual information, consistent with the definition in
`
`the specification.
`
`Respondents’ expert opines that one of skill in the art “would understand that a macroblock
`
`coding mode defines whether the macroblock can have residual information or not.” Havlicek
`
`Suppl. Decl. at ¶ 35.3 Dr. Havlicek’s opinion, however, as to how one of skill would define a
`
`coding mode is inconsistent with how the patentee expressly defined “skip coding mode” in the
`
`specification. As noted, the patentee’s definition is silent with respect to residual information.
`
`
`3 Respondents’ citations to Dr. Havlicek’s declaration in their reply claim construction brief are
`understood to be from his supplemental declaration.
`
`
`
`9
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`

`

`Dr. Havlicek also states that a definition of whether the macroblock can have residual
`
`information “is necessary so the decoder knows whether to look for residual information in the
`
`bitstream for that macroblock or not to look.” Id. Dr. Havlicek goes on to explain that certain
`
`macroblocks indicate to decoders that residual information will not be sent while others indicate
`
`to decoders that residual information may be sent. Id. Thus, according to Dr. Havlicek, those of
`
`skill in the art would understand how to tell a decoder whether to look for residual information.
`
`Based on Dr. Havlicek’s explanation and the patent itself, I disagree that the patentee’s express
`
`definition must be supplemented with information regarding residual information.
`
`Dr. Havlicek also states that under Respondents’ proposed construction, skip coding mode
`
`does not necessarily include residual information. Id. at ¶ 37. But Respondents’ proposed
`
`construction requires the capability of providing residual information, which, as Nokia explained,
`
`would require that the decoder check for the presence of residual information, whether or not it is
`
`actually provided. Tr. at 114:20–115:19. Further, Respondents’ proposed construction, in which
`
`the “skip coding mode” has the capability of providing residual information, would exclude a skip
`
`coding mode without that capability. In its silence, the definition in the ’808 patent allows for both
`
`possibilities.
`
`I conclude that the specification provides an express definition of “skip coding mode,”
`
`supporting the construction proposed by Nokia and the Staff.
`
`2.
`
`The Embodiments of Figures 6 and 7
`
`Respondents contend that Nokia and the Staff’s construction is wrong because it is
`
`inconsistent with the embodiments in Figs. 6 and 7 in which an encoder and decoder, respectively,
`
`use residual information. Resp. Br. at 2, 12–14 and 19–22. Figs. 6 and 7 are respectively described
`
`as schematic block diagrams of a video encoder and a video decoder according to an embodiment
`
`
`
`10
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`

`

`of the invention. ’808 patent at 15:39–43. The specification explains that encoder 600 performs
`
`motion-compensation prediction by assigning a coding mode to each INTER-coded macroblock
`
`depending on the characteristics of the macroblock and the motion in the video sequence being
`
`coded. Id. at 17:14–21. When determining which coding mode to assign to a macroblock, motion
`
`estimation block 630 performs a motion estimation operation for each coding mode in turn. Id. at
`
`17:21–24. It then selects each of the possible coding modes one after the other, in turn, and
`
`performs motion estimation to identify a best match for the macroblock in the reference frame, on
`
`the basis of the selected coding mode and the pixel values of the macroblock to be coded. Id. at
`
`17:27–30. Once a best match has been obtained for each coding mode, motion estimation
`
`block 630 selects the coding mode yielding “the smallest overall cost value as the coding mode for
`
`the current macroblock.” Id. at 17:39–42. This “cost” “typically combines the prediction error with
`
`number of estimated bits needed to code the macroblock and thus measures the relative efficiency
`
`of each coding mode.” Id. at 11:15–18.
`
`The patent explains that “the coding modes used by encoder 600 correspond to those
`
`provided by JM1 of the JVT codec (shown in Table 3), with the exception that the SKIP mode is
`
`redefined to allow representation of global and regional motion.” Id. at 17:43–47. The patent is
`
`thus clear that coding modes in addition to the skip coding mode can be used with encoder 600.
`
`See Tr. at 119:13–25 and 123:16–124:17.
`
`The patent also describes decoder 700, shown in Fig. 7, which corresponds to the encoder
`
`in Fig. 6 and is “therefore capable of receiving and decoding bit-stream 635 transmitted by encoder
`
`600.” Id. at 20:35–39. The patent explains that:
`
`INTER-coded frames are decoded macroblock by macroblock, each INTER-coded
`macroblock being decoded substantially as soon as encoded information relating to
`it is received in the bit-stream 635. Depending on the coding mode, the compressed
`video data included in the bit-stream for an INTER-coded macroblock may
`
`
`
`11
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`

`

`comprise a combination of VLC encoded prediction error information for each
`block, motion vector information for the macroblock (or sub-blocks) and encoded
`control information including an indication of the coding mode used to encode the
`macroblock in question. If a macroblock is encoded in skip mode, no prediction
`error or motion vector information relating to the macroblock is included in the bit-
`stream.
`
`Id. at 20:43–55.
`
`The patent thus makes clear that the encoder in Fig. 6 and decoder in Fig. 7 can operate on
`
`bitstreams including prediction error information, which the parties agree is the same as residual
`
`information. Resp. Br. at 20 (addressing prediction error information as residual information);
`
`Havlicek Decl. at ¶ 31; Havlicek Suppl. Decl. at ¶ 32; Orchard Decl. at ¶ 18; and Tr. at 53:3–5 and
`
`54:22–55:2 (Nokia agreeing that prediction error information is synonymous with residual
`
`information). That is not inconsistent with the construction advocated by Nokia and the Staff,
`
`which relates only to how skip coding mode is defined, not whether other coding modes can be
`
`used and what information is conveyed in the bitstream when those other modes are used.
`
`Contrary to Respondents’ argument, construing “skip coding mode” per the express
`
`definition in the specification does not exclude a disclosed embodiment. Resp. Br. at 19–20. The
`
`claims of the ’808 patent can still cover encoders/decoders that use residual information without
`
`adding residual information into the definition of “skip coding mode.” The cases Respondents rely
`
`on do not suggest otherwise. Resp. Br. at 21.
`
`Respondents contend that in Littelfuse, the Federal Circuit cautioned against limiting the
`
`claimed invention to preferred embodiments or specific examples in the specification. Resp. Br. at
`
`21. There, the court noted that “[n]othing in the specification states that a fastening stem cannot
`
`be present in a single-piece apparatus.” 29 F.4th at 1381. Respondents contend that by analogy,
`
`“nothing in the ’808 patent states that ‘skip mode’ cannot have residual information.” Resp. Br. at
`
`22. The problem is that Respondents’ construction requires “skip coding mode” to have the
`
`
`
`12
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`

`

`capability of providing residual information. As noted, this would require that the decoder check
`
`for the presence of residual information, whether or not it is actually provided. Tr. at 114:20–
`
`115:19. Nothing in the ’808 patent specification indicates that residual information must or must
`
`not be present in skip coding mode and the specification discloses an embodiment in which it is
`
`not. The correct interpretation of the independent claims is therefore one that embraces both
`
`possibilities. Doing so is consistent with Figs. 6 and 7.
`
`3.
`
`The Dependent Claims Do Not Change the Construction of “Skip
`Coding Mode”
`
`Respondents contend that because dependent claims 30, 41, 49, and 60 specify that no
`
`
`
`residual information is provided, the independent claims must be capable of providing residual
`
`information. Resp. Br. at 18; and Resp. Reply at 3. If not, according to Respondents, those claims
`
`“would be meaningless and not comply with 35 U.S.C. § 112 ¶ 4,” which states that dependent
`
`claims shall “specify a further limitation of the subject matter claimed.” Resp. Br. at 18–19. I
`
`disagree.
`
`First, the express redefinition of “skip coding mode” in the ’808 patent is silent as to
`
`residual information. The remainder of the independent claims reciting “skip coding mode” is also
`
`silent as to whether residual information is included in “skip coding mode.” That silence supports
`
`that residual information may or may not be included. See Tr. at 146:8–14. It does not, as
`
`Respondents argue, support adding the ability to provide residual information to the definition of
`
`skip coding mode.
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`Respondents argued at the hearing that “you can’t negate nothing. So there has to be
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`something in the independent claim. You can’t take away and further narrow without there being
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`something in the independent claim.” Tr. at 157:2–7. But the question is not whether something is
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`negated. The question is whether the dependent claims further narrow the independent claims. In
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`their silence on residual information, the independent claims cover providing or not providing
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`residual information. Dependent claims 30, 41, 49, and 60 further narrow their respective
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`independent claims by specifically reciting one of those options—residual information is not
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`provided.
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`Further, dependent claims include the limitations of the claims from which they depend.
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`35 U.S.C. § 112(d) (“A claim in dependent form shall be construed to incorporate by reference all
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`the limitations of the claim to which it refers.”). Under Respondents’ proposed construction, the
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`independent claims require the capability of providing residual information. To the extent
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`dependent claims 30, 41, 49, and 60 negate that capability, as Respondents argued, Tr. at 157:2–
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`7, the dependent claims would create a contradiction by both allowing and not allowing residual
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`information. As the Federal Circuit recently noted, “a dependent claim that contradicts, rather than
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`narrows, the claim from which it depends is invalid.” Maxell, Ltd. v. Amperex Tech. Ltd., 94 F.4th
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`1369, 1374 (Fed. Cir. 2024), quoting Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics
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`Corp., 831 F.3d 1350, 1362 (Fed. Cir. 2016) (emphasis omitted).4 The construction proposed by
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`Nokia and the Staff does not create such a contradiction.
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`Respondents also rely on Baxalta, pointing to the Federal Circuit’s statement that the
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`language of dependent claims “weigh[ed] heavily in favor of adopting” the patentee’s broader
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`construction and rejecting a construction that would render dependent claims invalid. Tr. at 165:5–
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`23; see Baxalta, 972 F.3d at 1346. That is the case here, too. The broader construction, which is
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`consistent with the express definition in the patent and which also covers the dependent claims, is
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`4 Respondents rely on Pfizer, Inc. v. Ranbaxy Laboratories Ltd. for the proposition that a dependent
`claim failing to specify a further limitation is invalid under 35 U.S.C. § 112(d). Resp. Reply at 7,
`citing 457 F.3d 1284, 1292 (Fed. Cir. 2006). In Pfizer, the dependent claim did not further limit
`the claim from which it depended because “the two claims deal[t] with non-overlapping subject
`matter.” Id. at 1291. That is not the situation here.
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`that proposed by Nokia and the Staff. See also Littelfuse, 29 F.4th at 1380 (if a dependent claim
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`reads on a particular embodiment of the claimed invention, the corresponding independent claim
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`must cover that embodiment as well).
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`Based on the parties’ briefs and their arguments at the hearing, “skip coding mode” is
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`construed as: a coding mode in which a zero (non-active) motion vector or a non-zero (active)
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`motion vector is associated with each skip mode macroblock, depending on the characteristics of
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`the motion in image segments surrounding the macroblock in question.
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`SO ORDERED.
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`15
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