Case 2:19-cv-06301-AB-KS Document 100 Filed 08/27/20 Page 1 of 5 Page ID #:3451
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`JEAN-PAUL CIARDULLO, CA Bar No. 284170
` jciardullo@foley.com
`FOLEY & LARDNER LLP
`555 South Flower Street, Suite 3300
`Los Angeles, CA 90071
`Telephone: 213-972-4500
`Facsimile: 213-486-0065
`
`ELEY O. THOMPSON (pro hac vice)
` ethompson@foley.com
`FOLEY & LARDNER LLP
`321 N. Clark Street, Suite 2800
`Chicago, IL 60654-5313
`Telephone: 312-832-4359
`Facsimile: 312-83204700
`
`RUBEN J. RODRIGUES (pro hac vice)
`rrodrigues@foley.com
`LUCAS I. SILVA (pro hac vice)
`lsilva@foley.com
`JOHN W. CUSTER (pro hac vice)
`jcuster@foley.com
`FOLEY & LARDNER LLP
`111 Huntington Avenue, Suite 2500
`Boston, MA 02199-7610
`Telephone: (617) 342-4000
`Facsimile: (617) 342-4001
`
`Attorneys for Plaintiff
`Philips North America LLC
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`WESTERN DIVISION
` Case No. 2:19-cv-06301-AB-KS
`PHILIPS NORTH AMERICA LLC’s
`AGREED RESPONSE TO
`DEFENDANTS’ REQUEST TO
`SUPPLEMENT CLAIM
`CONSTRUCTION (DKT. 97)
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`Philips North America LLC,
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`Plaintiff,
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`vs.
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`Garmin International, Inc. and
`Garmin Ltd.,
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`Defendants.
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`Hon. André Birotte Jr.
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`Case 2:19-cv-06301-AB-KS Document 100 Filed 08/27/20 Page 2 of 5 Page ID #:3452
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`Plaintiff Philips North America, LLC (“Philips”) agreed to not oppose Defendants’
`Request for Leave to File Supplemental Claim Construction Evidence (Dkt. 97) on the
`condition that Philips be allowed a short response, which Defendants agreed to.
`Defendants’ submission consists of excerpts of the deposition transcript of Frank van
`Hoorn, one of two inventors (along with Gary Root) of Philips’s U.S. Patent No. 6,013,007
`(Dkt. 45-1, “’007 Patent”). Defendants contend that Mr. van Hoorn’s testimony supports
`their position that the language “means for presenting the athletic performance feedback
`data” in ’007 Patent Claims 1 and 21 mandates audio presentation of the feedback data in
`all circumstances, and can never consist of visual means alone. (Dkt. 97, p. 2.)
`Defendants’ arguments should be disregarded because (1) Mr. van Hoorn’ testimony
`amounts to his merely saying that non-audio feedback is “not the best option” (Tr. 47:20-
`21), not that it fell outside the scope of the patent, and (2) the law is clear that the testimony
`of a lay inventor – un-versed in patent claim drafting – cannot be used to change the legal
`scope of a patent claim.
`A. Mr. van Hoorn’s Testimony Amounts To Saying Non-Audio Feedback
`Is Not A Preferred Embodiment, Which Should Not Affect Claim Scope
`Mr. van Hoorn was pressed repeatedly in his deposition to state that the claimed
`invention requires audio feedback in all circumstances, and was given this suggestion
`enough times that his answers may not always have been clear if considered in isolation.
`However, over the course of his deposition, the point Mr. van Hoorn conveyed was that
`non-audio feedback was simply not a preferred embodiment, which does not mean it is
`outside the scope of the claim, but rather just that the inventor deemed it to be a less favored
`manifestation of the inventive concept. See, e.g., Gillette Co. v. Energizer Holdings, Inc.,
`405 F.3d 1367, 1371 (Fed. Cir. 2005) (“It may be that a four-bladed safety razor is a less
`preferred embodiment. A four-bladed razor costs more to build, requires more parts, and
`adds more frictional drag compared to the three-bladed version. Nevertheless, a patentee
`typically claims broadly enough to cover less preferred embodiments as well as more
`preferred embodiments, precisely to block competitors from marketing less than optimal
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` PHILIPS RESPONSE
`CASE NO. 2:19-cv-06301-AB-KS
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`Case 2:19-cv-06301-AB-KS Document 100 Filed 08/27/20 Page 3 of 5 Page ID #:3453
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`versions of the claimed invention.”).
`For example, at the portion of the testimony cited at pages 2-3 of Defendants’ brief,
`Mr. van Hoorn merely states that a visual-only embodiment was “not the best option” (Tr.
`47:20-21) – not that it was not an option at all. Elsewhere, Mr. van Hoorn also stated that
`a visual-only embodiment was within the contemplation of the patent:
`Q. Okay. The means for presenting here, is all I'm asking you, if you
`read this claim – not what you built -- if you read this claim, what is the
`means for presenting the athletic performance feedback data to the
`athlete claimed in your patent?
`A. It’s either on the screen or the audio feedback.
`Q. Either the screen or the audio feedback could satisfy that
`limitation?…
`THE WITNESS: I believe it does, yes.
`(Tr. 19:18-20:4.)
`While Mr. van Hoorn may have deemed non-audio embodiments to be less safe –
`the way a four-bladed razor was a less preferred embodiment than a three-bladed razor in
`Gillette – that does not mean that a skilled patent attorney would not have included them
`within the scope of the invention in drafting the patent claims.
`B. As A Matter Of Law, Inventor Testimony Is Given Little If Any Weight
`In Claim Construction
`The cases that Defendants cite at pages 1-2 of their brief stand merely for the
`proposition that inventors, being technically skilled in the relevant field of technology, are
`useful witnesses to explain that technology. For example, an inventor can testify to what
`a particular technical term might usually be understood to mean by other experts. Here,
`Mr. van Hoorn was retained by Philips as an expert for his knowledge of the technology
`underlying the ’007 Patent – not his interpretation of the claims that were drafted by a
`patent attorney. Indeed, while inventors may have knowledge from the field or academia,
`the patent attorneys (and agents) who draft patent claims employ a language and legal
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`Case 2:19-cv-06301-AB-KS Document 100 Filed 08/27/20 Page 4 of 5 Page ID #:3454
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`reasoning of their own that is often foreign to inventors. Patent drafters may even do things
`as a matter of course that inventors would not think to do … such as draft a patent claim to
`cover a less preferred embodiment in order to secure broader claim scope.
`Here, the patent attorney who drafted the Claims of the ’007 Patent clearly
`differentiated between audio-only embodiments (e.g., Dependent Claims 2-5), and a
`broader case (Independent Claim 1) that did not mandate audio feedback. (’007 Patent,
`Dkt. 45-1.) Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1380 (Fed.
`Cir. 2006) (“In the most specific sense, claim differentiation refers to the presumption that
`an independent claim should not be construed as requiring a limitation added by a
`dependent claim.”).
`Because lay inventors lack requisite patent drafting expertise – and for other prudent
`reasons – the law is clear that the use of inventor testimony is strictly limited in the context
`of claim construction:
`The testimony of an inventor cannot be relied on to change the meaning
`of the claims. [] In particular, we have explained that the subjective
`intent of the inventor when he used a particular term is of little or no
`probative weight in determining the scope of a claim. [] We hold that
`inventor testimony as to the inventor’s subjective intent is irrelevant to
`the issue of claim construction.
`Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 540 F.3d 1337, 1346-47 (Fed. Cir.
`2008); see also POWERbahn, LLC v. Zwift, Inc., No. 2:17-cv-01393-H (MRWx), 2018
`U.S. Dist. LEXIS 99375, at *23-24 (C.D. Cal. June 8, 2018) (same.)
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`Case 2:19-cv-06301-AB-KS Document 100 Filed 08/27/20 Page 5 of 5 Page ID #:3455
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`Respectfully submitted,
`
`FOLEY & LARDNER LLP
`
`
`/s/ Jean-Paul Ciardullo
`Jean-Paul Ciardullo, CA Bar No. 284170
` jciardullo@foley.com
`555 South Flower Street, Suite 3300
`Los Angeles, CA 90071
`Telephone: 213-972-4500
`Facsimile: 213-486-0065
`
`
`Eley O. Thompson (pro hac vice)
` ethompson@foley.com
`321 N. Clark Street, Suite 2800
`Chicago, IL 60654-5313
`Telephone: 312-832-4359
`Facsimile: 312-83204700
`
`
`Ruben J. Rodrigues (pro hac vice)
` rrodrigues@foley.com
`Lucas I. Silva (pro hac vice)
` lsilva@foley.com
`John W. Custer (pro hac vice)
` jcuster@foley.com
`111 Huntington Avenue, Suite 2500
`Boston, MA 02199-7610
`Telephone: (617) 342-4000
`Facsimile: (617) 342-4001
`
`Attorneys for Plaintiff
`Philips North America LLC
`
`4
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`PHILIPS RESPONSE
`CASE NO. 2:19-cv-06301-AB-KS
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` DATED: August 27, 2020
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