Case 2:15-cv-01274-JRG-RSP Document 146 Filed 09/13/16 Page 1 of 67 PageID #: 5209
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`
`
`Case No. 2:15-cv-1274-JRG-RSP
`[Lead Case]
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`BLITZSAFE TEXAS, LLC,
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`
`
` Plaintiff,
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`v.
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`HONDA MOTOR CO., LTD., ET AL.,
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`
`
` Defendants.
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`
`
`
`
`MEMORANDUM OPINION AND ORDER
`
`On July 1, 2016, the Court held a hearing to determine the proper construction of the
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`disputed terms in U.S. Patent No. 7,489,786 (“the ’786 Patent”) and U.S. Patent No. 8,155,342
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`(“the ’342 Patent”) (collectively, the “Asserted Patents”). The Court has considered
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`the
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`arguments made by the parties at the hearing and in their claim construction briefs. (Dkt. Nos.
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`98, 101 & 106.) The Court has also considered the intrinsic evidence and made subsidiary
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`factual findings about the extrinsic evidence. See Phillips v. AWH Corp., 415 F.3d 1303, 1314
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`(Fed. Cir. 2005); Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015). The Court
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`issues this Claim Construction Memorandum and Order in light of these considerations.
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`TABLE OF CONTENTS
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`I.
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`II.
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`III.
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`IV.
`
`BACKGROUND ................................................................................................................ 3
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`APPLICABLE LAW .......................................................................................................... 5
`
`CONSTRUCTION OF AGREED TERMS ...................................................................... 10
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`CONSTRUCTION OF DISPUTED TERMS ................................................................... 11
`
`A.
`B.
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`Collateral Estoppel .............................................................................................. 11
`Disputed Constructions ....................................................................................... 15
`1. “interface” ..................................................................................................... 15
`2. “integration subsystem” ................................................................................ 23
`3. “generated by the portable device over the wireless communication link for
`playing on the car audio/video system” .............................................................. 31
`4. “device presence signal” ............................................................................... 35
`5. “maintaining . . . in a state responsive” / “maintain . . . in a state responsive”
`
`40
`6. “external” ...................................................................................................... 43
`7. “portable” ...................................................................................................... 46
`8. “pre-programmed” ........................................................................................ 48
`9. “car stereo” / “car audio/video system” ........................................................ 51
`10. “format incompatible with the [after-market audio device, MP3 player,
`portable device]” / “format incompatible with the [car stereo / car audio/video
`system]” ............................................................................................................... 56
`11. “video information” .................................................................................... 59
`12. “connector electrically connectable to” / “electrical connector” /
`“connectable” ...................................................................................................... 61
`13. Claims 49 and 73 of the ‘342 Patent do not Claim Two Statutory Categories
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`65
`
`V.
`
`CONCLUSION ................................................................................................................. 67
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`
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`I.
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`BACKGROUND
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`The ’786 Patent is titled “Audio Device Integration System,” and relates “to an audio
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`device integration system for integrating after-market components such as satellite receivers, CD
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`players, CD changers, MP3 players, Digital Audio Broadcast (DAB) receivers, auxiliary audio
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`sources, and the like with factory-installed (OEM) or after-market car stereo systems.” ’786
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`Patent at col. 1, ll. 7–12. The ’786 Patent was filed on December 11, 2002, and issued on
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`February 10, 2009.
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`Claim 1 of the ’786 Patent is an exemplary claim and recites the following elements
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`(disputed term in italics):
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`1. An audio device integration system comprising:
`a first connector electrically connectable to a car stereo;
`a second connector electrically connectable to an after-market
`audio device external to the car stereo;
`a third connector electrically connectable to one or more
`auxiliary input sources external to the car stereo and the
`after-market audio device;
`an interface connected between said first and second electrical
`connectors for channeling audio signals to the car stereo
`interface
`from
`the after-market audio device, said
`including a microcontroller in electrical communication
`with said first and second electrical connectors, said
`microcontroller pre-programmed to execute:
`a first pre-programmed code portion for remotely controlling
`the after-market audio device using the car stereo by
`receiving a control command from the car stereo through
`said first connector in a format incompatible with the
`after-market audio device, processing the received control
`command into a formatted command compatible with the
`after-market audio device, and transmitting the formatted
`command to the after-market audio device through said
`second connector for execution by the after-market audio
`device;
`a second pre-programmed code portion for receiving data from
`the after-market audio device
`through said second
`connector in a format incompatible with the car stereo,
`processing
`the
`received data
`into
`formatted data
`compatible with the car stereo, and transmitting the
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`
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`formatted data to the car stereo through said first
`connector for display by the car stereo; and
`a third pre-programmed code portion for switching to one or
`more auxiliary input sources connected to said third
`electrical connector.
`
`
`The ’342 Patent is titled “Multimedia Device Integration System,” and relates “to a
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`multimedia device integration system for integrating after-market components such as satellite
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`receivers, CD players, CD changers, digital media devices (e.g., MP3 players, MP4 players,
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`WMV players, Apple iPod devices, portable media centers, and other devices), Digital Audio
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`Broadcast (DAB) receivers, auxiliary audio sources, video devices (e.g., DVD players), cellular
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`telephones, and other devices for use with factory-installed (OEM) or after-market car stereo and
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`video systems.” ’342 Patent at col. 1, ll. 20–28. The ’342 Patent is a continuation-in-part of the
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`’786 Patent. The ’342 Patent was filed on June 27, 2006, and issued on April 10, 2012.
`
`Claim 1 of the ’342 Patent is an exemplary claim and recites the following elements
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`(disputed term in italics):
`
`1. A multimedia device integration system, comprising:
`an integration subsystem in communication with a portable
`device, the portable device external to a car audio/video
`system; and
`a first wireless interface in communication with said integration
`subsystem, said first wireless interface establishing a
`wireless communication link with a second wireless
`interface in communication with the car audio/video
`system,
`wherein said integration subsystem obtains information about an
`audio file stored on the portable device, transmits the
`information over said wireless communication link to the
`car audio/video system for subsequent display of the
`information on a display of the car audio/video system,
`instructs the portable device to play the audio file in
`response to a user selecting the audio file using controls of
`the car audio/video system, and transmits audio generated
`by the portable device over said wireless communication
`link to the car audio/video system for playing on the car
`audio/video system.
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`II.
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`APPLICABLE LAW
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`
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`A. Claim Construction
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`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention
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`to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303,
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`1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys.,
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`Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start
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`by considering the intrinsic evidence. Id. at 1313; C.R. Bard, Inc. v. U.S. Surgical Corp., 388
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`F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group, Inc.,
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`262 F.3d 1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the
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`specification, and the prosecution history. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at
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`861. The general rule—subject to certain specific exceptions discussed infra—is that each claim
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`term is construed according to its ordinary and accustomed meaning as understood by one of
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`ordinary skill in the art at the time of the invention in the context of the patent. Phillips, 415 F.3d
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`at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure
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`Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (“There is a heavy
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`presumption that claim terms carry their accustomed meaning in the relevant community at the
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`relevant time.”) (vacated on other grounds).
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` “The claim construction inquiry . . . begins and ends in all cases with the actual words of
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`the claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998).
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`“[I]n all aspects of claim construction, ‘the name of the game is the claim.’” Apple Inc. v.
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`Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362,
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`1369 (Fed. Cir. 1998)). First, a term’s context in the asserted claim can be instructive. Phillips,
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`415 F.3d at 1314. Other asserted or unasserted claims can also aid in determining the claim’s
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`meaning, because claim terms are typically used consistently throughout the patent. Id.
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`Differences among the claim terms can also assist in understanding a term’s meaning. Id. For
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`example, when a dependent claim adds a limitation to an independent claim, it is presumed that
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`the independent claim does not include the limitation. Id. at 1314–15.
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`“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id.
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`(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)).
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`“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is
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`dispositive; it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics
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`Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am.
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`Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). But, “‘[a]lthough the specification may aid the
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`court in interpreting the meaning of disputed claim language, particular embodiments and
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`examples appearing in the specification will not generally be read into the claims.’” Comark
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`Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v.
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`Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); see also Phillips, 415
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`F.3d at 1323. “[I]t is improper to read limitations from a preferred embodiment described in the
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`specification—even if it is the only embodiment—into the claims absent a clear indication in the
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`intrinsic record that the patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v.
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`Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).
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`The prosecution history is another tool to supply the proper context for claim
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`construction because, like the specification, the prosecution history provides evidence of how the
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`U.S. Patent and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415
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`F.3d at 1317. However, “because 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. at
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`1318; see also Athletic Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996)
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`(ambiguous prosecution history may be “unhelpful as an interpretive resource”).
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`Although extrinsic evidence can also be useful, it is “‘less significant than the intrinsic
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`record in determining the legally operative meaning of claim language.’” Phillips, 415 F.3d at
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`1317 (quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a
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`court understand the underlying technology and the manner in which one skilled in the art might
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`use claim terms, but technical dictionaries and treatises may provide definitions that are too
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`broad or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly,
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`expert testimony may aid a court in understanding the underlying technology and determining
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`the particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
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`assertions as to a term’s definition are entirely unhelpful to a court. Id. Generally, extrinsic
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`evidence is “less reliable than the patent and its prosecution history in determining how to read
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`claim terms.” Id. The Supreme Court recently explained the role of extrinsic evidence in claim
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`construction:
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`In some cases, however, the district court will need to look beyond the patent’s
`intrinsic evidence and to consult extrinsic evidence in order to understand, for
`example, the background science or the meaning of a term in the relevant art
`during the relevant time period. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546
`(1871) (a patent may be “so interspersed with technical terms and terms of art that
`the testimony of scientific witnesses is indispensable to a correct understanding of
`its meaning”). In cases where those subsidiary facts are in dispute, courts will
`need to make subsidiary factual findings about that extrinsic evidence. These are
`the “evidentiary underpinnings” of claim construction that we discussed in
`Markman, and this subsidiary factfinding must be reviewed for clear error on
`appeal.
`
`Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
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`B. Departing from the Ordinary Meaning of a Claim Term
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`There are “only two exceptions to [the] general rule” that claim terms are construed
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`according to their plain and ordinary meaning: “1) when a patentee sets out a definition and acts
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`as his own lexicographer, or 2) when the patentee disavows the full scope of the claim term
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`either in the specification or during prosecution.”1 Golden Bridge Tech., Inc. v. Apple Inc., 758
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`F.3d 1362, 1365 (Fed. Cir. 2014) (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d
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`1362, 1365 (Fed. Cir. 2012)); see also GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d
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`1304, 1309 (Fed. Cir. 2014) (“[T]he specification and prosecution history only compel departure
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`from the plain meaning in two instances: lexicography and disavowal.”). The standards for
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`finding lexicography or disavowal are “exacting.” GE Lighting Solutions, 750 F.3d at 1309.
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`To act as his own lexicographer, the patentee must “clearly set forth a definition of the
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`disputed claim term,” and “clearly express an intent to define the term.” Id. (quoting Thorner,
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`669 F.3d at 1365); see also Renishaw, 158 F.3d at 1249. The patentee’s lexicography must
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`appear “with reasonable clarity, deliberateness, and precision.” Renishaw, 158 F.3d at 1249.
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`To disavow or disclaim the full scope of a claim term, the patentee’s statements in the
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`specification or prosecution history must amount to a “clear and unmistakable” surrender. Cordis
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`Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner, 669 F.3d at
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`1366 (“The patentee may demonstrate intent to deviate from the ordinary and accustomed
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`meaning of a claim term by including in the specification expressions of manifest exclusion or
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`restriction, representing a clear disavowal of claim scope.”) “Where an applicant’s statements are
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`amenable to multiple reasonable interpretations, they cannot be deemed clear and unmistakable.”
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`1 Some cases have characterized other principles of claim construction as “exceptions” to the
`general rule, such as the statutory requirement that a means-plus-function term is construed to
`cover the corresponding structure disclosed in the specification. See, e.g., CCS Fitness, Inc. v.
`Brunswick Corp., 288 F.3d 1359, 1367 (Fed. Cir. 2002).
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`3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013); see also
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`Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040, 1045 (Fed. Cir. 2016) (“When the prosecution
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`history is used solely to support a conclusion of patentee disclaimer, the standard for justifying
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`the conclusion is a high one.”).
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`Although a statement of lexicography or disavowal must be exacting and clear, it need
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`not be “explicit.” See Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1364 (Fed. Cir.
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`2016) (“a patent applicant need not expressly state ‘my invention does not include X’ to indicate
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`his exclusion of X from the scope of his patent”). Lexicography or disavowal can be implied
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`where, e.g., the patentee makes clear statements characterizing the scope and purpose of the
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`invention. See On Demand Mach. Corp. v. Ingram Indus., Inc., 442 F.3d 1331, 1340 (Fed. Cir.
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`2006) (“[W]hen the scope of the invention is clearly stated in the specification, and is described
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`as the advantage and distinction of the invention, it is not necessary to disavow explicitly a
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`different scope.”). Nonetheless, the plain meaning governs “[a]bsent implied or explicit
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`lexicography or disavowal.” Trs. of Columbia Univ., 811 F.3d at 1364 n.2.
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`C. Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA) 2
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`Patent claims must particularly point out and distinctly claim the subject matter regarded
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`as the invention. 35 U.S.C. § 112, ¶ 2. A claim, when viewed in light of the intrinsic evidence,
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`must “inform those skilled in the art about the scope of the invention with reasonable certainty.”
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`Nautilus Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). If it does not, the claim
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`fails § 112, ¶ 2 and is therefore invalid as indefinite. Id. at 2124. Whether a claim is indefinite is
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`determined from the perspective of one of ordinary skill in the art as of the time the application
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`2 Because the Asserted Patents have an effective filing date before September 16, 2012, the
`effective date of the America Invents Act (“AIA”), the Court refers to the pre-AIA version of
`§ 112.
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`for the patent was filed. Id. at 2130. As it is a challenge to the validity of a patent, the failure of
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`any claim in suit to comply with § 112 must be shown by clear and convincing evidence. Id. at
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`2130 n.10. “[I]ndefiniteness is a question of law and in effect part of claim construction.” ePlus,
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`Inc. v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012).
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`
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`III. CONSTRUCTION OF AGREED TERMS
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`The parties agreed to the constructions of the following terms/phrases:
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`Claim Term/Phrase
`“integration” / “integrating”
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`(’786 Patent, claims 1, 5, 44, 57)
`
`
`“auxiliary input source”
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`(’786 Patent, claims 1, 14)
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`“channeling audio signals” / “audio
`signals … are selectively channeled”
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`(’786 Patent, claims 1, 14)
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`“maintain … in an operational state”
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`(’786 Patent, claim 57)
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`“integration” / “integrating”
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`(’342 Patent claims 49, 73)
`
`
`Agreed Construction
`“Connecting one or more external devices or
`inputs to an existing car radio or stereo via an
`interface, processing and handling signals and
`audio channels, allowing a user to control the
`devices via the car stereo, and displaying data
`from the devices on the radio.”
`
`“a device that outputs audio by headphone jack or
`other connector”
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`“receiving and transmitting audio”
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`“maintain in a state responsive to processed data
`and audio signals from the external device”
`
`“Connecting one or more external devices or
`inputs to an existing car stereo or video system
`via an interface, processing and handling signals,
`audio, and/or video information, allowing a user
`to control the devices via the car stereo or video
`system, and displaying data from the devices on
`the car stereo or video system.”
`
`
`(Dkt. No. 111 at 9, 13, 15, 34, 41). In view of the parties’ agreement on the proper construction
`
`of the identified terms, the Court hereby ADOPTS the parties’ agreed constructions.
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`IV. CONSTRUCTION OF DISPUTED TERMS
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`The parties’ dispute focuses on the meaning and scope of ten terms/phrases in the
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`Asserted Patents.
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`A. Collateral Estoppel
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`Defendants argue Plaintiff is bound to prior constructions by collateral estoppel. (Dkt.
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`No. 101 at 10-14). In March 2010, Marlowe Patent Holdings LLC (“MPH”) brought suit in the
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`District of New Jersey asserting infringement of the ’786 Patent. Marlowe Pat. Holdings LLC v.
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`Dice Elecs. LLC et al., No. 3:10-cv-01199-PGS-DEA (D.N.J.) (the “Dice case”); Marlowe Pat.
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`Holdings LLC v. Ford Motor Co., No. 3:11-cv-07044-PGS-DEA (D.N.J.) (the “Ford case”).3 On
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`January 16, 2015, the New Jersey court issued a 41-page claim construction opinion and 3-page
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`claim construction order. (Dkt. Nos. 101-4 and 101-5). Both the Dice and Ford cases ended by
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`June 2015. (Dkt. No. 244 in the Dice case; Dkt. No. 130 in the Ford case).
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`Defendants contend that Ira Marlowe, the named inventor on the ’786 Patent and ’342
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`Patent then assigned the Asserted Patents to Blitzsafe Texas, LLC (Plaintiff). (Dkt. No. 101 at
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`11) (citing Dkt. Nos. 101-6 and 101-7). On July 16, 2015, Plaintiff filed the first case against
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`Defendant Honda. The Court consolidated all cases related to the Honda case for pretrial
`
`purposes on October 30, 2015. (Dkt. No. 25). Defendants contend Plaintiff challenges five
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`constructions provided by the New Jersey court (“the Ford terms”) and a sixth construction (“car
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`stereo”) the parties agreed on in the Ford case. (Dkt. No. 101 at 11). Defendants argue collateral
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`estoppel applies to the constructions issued in the Ford case. (Id.) For the following reasons, the
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`Court finds that collateral estoppel does not apply.
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`In a patent infringement case, Fifth Circuit law provides the standard for issue preclusion
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`and Federal Circuit law provides the standard on substantive issues of patent law. See Soverain
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`3 The ’342 Patent was not part of the Dice or Ford Cases.
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`Software LLC v. Victoria Secret Direct Brand Mgmt., 778 F.3d 1311, 1314 (Fed. Cir. 2015). The
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`Fifth Circuit has held that collateral estoppel applies if: “(1) the issue under consideration is
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`identical to that litigated in the prior action; (2) the issue was fully and vigorously litigated in the
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`prior action; (3) the issue was necessary to support the judgment in the prior case; and (4) there
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`is no special circumstance that would make it unfair to apply the doctrine.” Winters v. Diamond
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`Shamrock Chemical Co., 149 F.3d 387, 391 (5th Cir. 1998); see Rabo Agrifinance, Inc. v. Terra
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`XXI, Ltd., 583 F.3d 348, 353 (5th Cir. 2009) (listing three elements of collateral estoppel).
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`Defendants argue each element of collateral estoppel is met as to Plaintiff’s claim
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`construction arguments in this case. First, Defendants contend the claim construction issues in
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`this case are identical to those in the Ford case. (Dkt. No. 101 at 11) (citing e-Digital Corp. v.
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`Futurewei Techs., Inc., 772 F.3d 723, 726 (Fed. Cir. 2014); Mobile Telcoms. Techs., LLC v. ZTE
`
`(USA) Inc., 2016 U.S. Dist. LEXIS 48766 (E.D. Tex. Apr. 12, 2016)). Defendants acknowledge
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`that three of the terms in the case were not in the Ford case. (Dkt. No. 101 at 11-12). However,
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`Defendants say the consistent usage of the terms across related patents requires consistent
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`constructions in “claims of common ancestry.” (Id. at 12) (citing Epcon Gas Sys. Inc. v. Bauer
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`Compressors, Inc., 279 F.3d 1022, 1030 (Fed. Cir. 2002)). Second, Defendants argue the Ford
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`constructions were fully and vigorously litigated. (Dkt. No. 101 at 12). Third, Defendants argue
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`the timing of the ultimate resolution of the prior cases shows the construction of the terms in the
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`Ford case was necessary to support the judgment. (Id. at 12-13). Finally, Defendants contend
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`that applying collateral estoppel is fair because Plaintiff is a successor in privity with MPH. (Id.
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`at 13-14) (citing Meza v. General Battery Corp., 908 F.2d 1262, 1266 (5th Cir. 1990)).
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`Defendants specifically say that the Court should reach the same outcome the Federal Circuit
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`reached in e-Digital because it would ensure the uniform treatment of patents across jurisdictions
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`and would discourage forum shopping by litigants unhappy with prior rulings. (Dkt. No. 101 at
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`Page 12 of 67
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`

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`Case 2:15-cv-01274-JRG-RSP Document 146 Filed 09/13/16 Page 13 of 67 PageID #: 5221
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`13).
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`The Court finds Defendants have not shown that Plaintiff’s claim construction arguments
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`are barred by collateral estoppel. “[A] party asserting preclusion bears the burden of showing
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`‘with clarity and certainty what was determined by the prior judgment.’” United Access Techs.,
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`LLC v. Centurytel Broadband Servs. LLC, 778 F.3d 1327, 1331 (Fed. Cir. 2015) (quoting Jones
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`v. City of Alton, Ill., 757 F.2d 878, 885 (7th Cir. 1985)). When assessing whether a prior claim
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`construction ruling has collateral estoppel effect, a court must determine if the party asserting
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`estoppel has shown that a prior ruling on a claim term was a “critical and necessary part of the
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`judgment.” Rabo, 583 F.3d at 353.
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`Defendants have not shown that any ruling by the New Jersey court on any claim term
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`was “critical and necessary” to the resolution of the Dice and Ford cases. At best, Defendants
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`have shown that the New Jersey court construed an unknown one, or several, terms in a way that
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`caused the parties in the Dice and Ford cases to settle. Since Defendants have not pointed to a
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`specific claim term that was “critical and necessary” to those settlements, Defendants have not
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`shown that collateral estoppel bars Plaintiff from arguing a claim term in this case. Cf. e.Digital,
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`772 F.3d at 726 (“On appeal, the parties only dispute whether construction of the sole memory
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`limitation presents an identical issue.”); e.Digital Corp. v. Canon USA, Inc., Civil Action No.:
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`09-cv-02578-MSK-MJW, Dkt. No. 398, at *2 (D. Colo. July 28, 2011) (“e.Digital contends that
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`the Order construes certain aspects of the ‘sole memory’ limitation of the ’774 Patent, and
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`although e.Digital disputes the Court’s construction, it is prepared to stipulate to non-
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`infringement of the asserted claims of the ’774 Patent . . . .”).
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`A long line of Fifth Circuit precedent supports this conclusion. For decades the Fifth
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`Circuit has held that when an earlier decision rests on alternative grounds for relief, none of the
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`grounds for relief can serve as a basis for invoking collateral estoppel. See Hicks v. Quaker Oats
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`
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`Page 13 of 67
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`Case 2:15-cv-01274-JRG-RSP Document 146 Filed 09/13/16 Page 14 of 67 PageID #: 5222
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`Co., 662 F.2d 1158, 1168–69 (5th Cir. 1981). This rule rests on the idea that when “alternative
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`grounds” for relief exist, none of the grounds are strictly “necessary to the judgment.” See id.;
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`Society of Separationists, Inc. v. Herman, 939 F.2d 1207, 1214 n.25 (5th Cir. 1991) (citing
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`Hicks, 662 F.2d 1168–73).
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`Here, even if the Court assumes the New Jersey court’s claim construction order was the
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`basis for the settlement in the Dice and Ford cases, the New Jersey court’s construction of each
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`claim term should be seen as an alternative basis for relief. As long-standing Federal Circuit
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`precedent makes clear, any single construction can have a dispositive, or near-dispositive, effect
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`on central issues such as the validity and infringement of a patent. Thus any construction by the
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`New Jersey court could have served as the basis for the parties in the Dice and Ford cases to
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`settle. See Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1310 (Fed.
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`Cir. 2005) (“Literal infringement requires that each and every limitation set forth in a claim
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`appears in the accused product.”). In sum, the Court finds that Defendants have not shown that
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`any specific claim construction ruling by the New Jersey court was “critical and necessary” to
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`the settlement. Collateral estoppel does not bar Plaintiff from making its claim construction
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`arguments in this case.4
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`
`
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`4 The Court does not address the issue of whether a settlement can even serve as the basis for
`invoking collateral estoppel in the first place.
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`Page 14 of 67
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`Case 2:15-cv-01274-JRG-RSP Document 146 Filed 09/13/16 Page 15 of 67 PageID #: 5223
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`
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`Disputed Term
`“interface”
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`B. Disputed Constructions
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`1. “interface”
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`Plaintiff’s Proposal
`“a device configured to
`integrate an external device
`with a car stereo”
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`Defendants’ Proposal5
`“a microcontroller that is a
`functionally and structurally
`separate component from the
`car stereo, which integrates an
`aftermarket device with a car
`stereo”
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`a) The Parties’ Positions
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`The parties agree that the recited “interface” is configured to integrate an external device
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`with a car stereo. The parties dispute whether the recited “interface” must be separate from the
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`recited “car stereo,” as Defendants propose. Plaintiff argues that Defendants’ construction should
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`be rejected because it includes limitations which are inconsistent with and unsupported by the
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`claim language and specification. (Dkt. No. 98 at 10). Plaintiff contends that Defendants’
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`position—that the interface should be construed to be a microcontroller—is incorrect because the
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`claims and specification do not limit the interface to a microcontroller alone. (Id.). Plaintiff
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`argues that the claims state the interface includes a microcontroller, but does not limit the
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`interface to only a microcontroller. (Id.). According to Plaintiff, the specification describes the
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`interface as including additional components such as ports, circuits, resistors, diodes, capacitors,
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`and oscillators. (Id.) (citing ’786 Patent at col. 9, ll. 9–20).
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`Plaintiff further argues that the intrinsic record does not require the interface be
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`“functionally and structurally separate” from the car stereo. (Id.). Plaintiff contends Defendants
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`seek to import a limitation into the claims that was adopted by the court in the Ford case based
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`
`5 The defendants in this case have indicated that unless otherwise noted, “Defendants” include
`Honda, Hyundai, Kia, Nissan, and Toyota. (Dkt. No. 111 at 9 n.1). Defendant Volkswagen has
`indicated that it joins Defendants’ constructions of “inte