UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`CHRIMAR SYSTEMS, INC., et al,
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`v.
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`ADTRAN, INC., et al. (LEAD CASE)
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`§
`§
`§
`§
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`§
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`MEMORANDUM OPINION AND ORDER
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`Civil Action No. 6:15-cv-618-JRG-JDL
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`This claim construction opinion construes the disputed claim terms in U.S. Patent
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`Nos. 8,115,012 (“the ’012 Patent”), 8,902,760 (“the ’760 Patent”), 8,942,107 (“the ’107
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`Patent”), and 9,019,838 (“the ’838 Patent”) (“patents-in-suit”). Plaintiffs Chrimar Systems, Inc.
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`d/b/a CMS Technologies and Chrimar Holding Company LLC (“Chrimar”) allege that
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`Defendants1 infringe the ’012, ’76 0, ’ 107, an d ’838 Patents. Plaintiffs filed an opening
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`claim construction brief (Doc. No. 403), to which Defendants filed a responsive brief (Doc. No.
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`432), and Plaintiffs filed a reply (Doc. No. 440). The parties additionally submitted a Joint
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`Claim Construction Chart pursuant to P.R. 4-5(d). (Doc. No. 442.) On June 9, 2016, the Court
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`held a claim construction hearing. Upon consideration of the parties’ arguments, and for the
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`reasons stated herein, the Court adopts the constructions set forth below.
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`OVERVIEW OF THE PATENTS
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`Plaintiffs allege Defendants infringe certain asserted claims of the patents-in-suit.
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`Plaintiffs contend that “[t]he four patents-in-suit share, in substance, a common specification and
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`disclose inventions related to managing devices that connect to a wired network.” (Doc. No. 403
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`1Defendants include ADTRAN, Inc., Accton Technology Corporation, Advantech Corporation, Aerohive Networks,
`Inc., Allworx Corporation, Belden, Inc., Costar Technologies, Inc., Costar Video Systems, LLC, D-Link Systems,
`Incorporated, Dell Inc., Edgecore USA Corporation, EnGenius Technologies, Inc., Garrettcom, Inc., Hirschmann,
`Inc., Huawei Enterprise USA Inc., Huawei Technologies USA, Inc., TP-Link USA Corporation, TRENDnet
`International Inc., WatchGuard Technologies, Inc.
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`1
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`at 1.) Specifically, the ’107 Patent is a continuation of the ’012 Patent, and the ’760 Patent and
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`the ’838 Patent are continuations of the ’107 Patent.
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`For reference, background on the ’012 Patent is provided. The ’012 Patent is titled
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`“System and Method for Adapting a Piece of Terminal Equipment,” and relates to tracking of
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`devices that are connected to a wired network. See generally ’012 Patent. More specifically, the
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`’012 Patent describes permanently identifying an “asset,” such as a computer, “by attaching an
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`external or internal device to the asset and communicating with that device using existing
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`network wiring or cabling.” ’012 Patent at 1:67–2:2. The ’012 Patent refers to that device as the
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`“remote module.” Id. at 3:22–26. The asset can then be managed, tracked, or identified by using
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`the remote module to communicate a unique identification number, port ID, or wall jack location
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`to the network monitoring equipment, or “central module.” Id. at 6:7–13, 8:66–9:4. The ’012
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`Patent further discloses that “asset identification” may be done in a way “that does not use
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`existing network bandwidth.” Id. at 3:10–12. These concepts are reflected in the patents’
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`asserted claims, and independent claim 31 is set forth below for reference:
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`31. An adapted piece of Ethernet data terminal equipment comprising:
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`an Ethernet connector comprising a plurality of contacts;
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`and
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`at least one path coupled across selected contacts, the selected contacts
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`comprising at least one of the plurality of contacts of the Ethernet
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`connector and at least another one of the plurality of contacts of the
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`Ethernet connector,
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`wherein distinguishing information about the piece of Ethernet data
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`terminal equipment is associated to impedance within the at least
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`one path.
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`’012 Patent at 18:62–19:5 (Claim 31).
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`There are ten disputed terms or phrases in the asserted claims. This Court previously
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`construed disputed terms in the ’012 Patent in Chrimar Systems, Inc., et al. v. Alcatel-Lucent,
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`Inc., et al., No. 6:13-cv-880, (Doc. Nos. 92 (E.D. Tex. Oct. 22, 2014), 99 (Jan. 7, 2015) & 102
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`2
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`(Jan. 16, 2015)), together with the related case of Chrimar Systems, Inc., et al. v. AMX, LLC, No.
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`6:13-cv-881 (collectively, “Chrimar I”). The Court also previously construed certain claim
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`terms of the ’012, ’107, ’760, and ’838 Patents in related cases Chrimar Systems, Inc., et al. v.
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`Alcatel-Lucent, Inc., et al., No. 6:15-cv-163, (Doc. No. 123 (Mar. 28, 2016)), and Chrimar
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`Systems, Inc., et al. v. AMX, LLC, No. 6:15-cv-164 (collectively “Chrimar II”). Further, the
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`Court ruled on a motion for summary judgment of indefiniteness. (6:15-cv-163 (Doc. No. 122
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`(Mar. 28, 2016).) The parties presently dispute many of the same terms already construed by this
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`Court in Chrimar I and Chrimar II.
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`I. Principles of Claim Construction
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`LEGAL STANDARD
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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) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381
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`F.3d 1111, 1115 (Fed. Cir. 2004)). The Court examines a patent’s intrinsic evidence to define
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`the patented invention’s scope. Id. at 1313-1314; Bell Atl. Network Servs., Inc. v. Covad
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`Commc’ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). Intrinsic evidence includes
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`the claims, the rest of the specification and the prosecution history. Phillips, 415 F.3d at
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`1312-13; Bell Atl. Network Servs., 262 F.3d at 1267. The Court gives claim terms their
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`ordinary and customary meaning as understood by one of ordinary skill in the art at the time of
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`the invention. Phillips, 415 F.3d at 1312-13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361,
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`1368 (Fed. Cir. 2003). Claim language guides the Court’s construction of claim terms.
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`Phillips, 415 F.3d at 1314. “[T]he context in which a term is used in the asserted claim can be
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`highly instructive.” Id. Other claims, asserted and unasserted, can provide additional
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`instruction because “terms are normally used consistently throughout the patent.” Id.
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`Differences among claims, such as additional limitations in dependent claims, can provide
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`further guidance. Id.
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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)). “[T]he
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`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.
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`Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). In the specification, a patentee may define his
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`own terms, give a claim term a different meaning than it would otherwise possess, or
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`disclaim or disavow some claim scope. Phillips, 415 F.3d at 1316. Although the Court
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`generally presumes terms possess their ordinary meaning, this presumption can be overcome
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`by statements of clear disclaimer. See SciMed Life Sys., Inc. v. Advanced Cardiovascular
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`Sys., Inc., 242 F.3d 1337, 1343-44 (Fed. Cir. 2001). This presumption does not arise when
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`the patentee acts as his own lexicographer. See Irdeto Access, Inc. v. EchoStar Satellite
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`Corp., 383 F.3d 1295, 1301 (Fed. Cir. 2004).
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`The specification may also resolve ambiguous claim terms “where the ordinary and
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`accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of
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`the claim to be ascertained from the words alone.” Teleflex, Inc., 299 F.3d at 1325. For
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`example, “[a] claim interpretation that excludes a preferred embodiment from the scope of the
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`claim ‘is rarely, if ever, correct.” Globetrotter Software, Inc. v. Elam Computer Group Inc., 362
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`F.3d 1367, 1381 (Fed. Cir. 2004) (quoting Vitronics Corp., 90 F.3d at 1583). But, “[a]lthough
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`the specification may aid the court in interpreting the meaning of disputed language in the
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`claims, particular embodiments and examples appearing in the specification will not generally be
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`read into the claims.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir.
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`1988); see also Phillips, 415 F.3d at 1323.
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`The prosecution history is another tool to supply the proper context for claim
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`construction because a patentee may define a term during prosecution of the patent. Home
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`Diagnostics Inc. v. LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the
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`specification, a patent applicant may define a term in prosecuting a patent.”). The well-
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`established doctrine of prosecution disclaimer “preclud[es] patentees from recapturing through
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`claim interpretation specific meanings disclaimed during prosecution.” Omega Eng’g Inc. v.
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`Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). The prosecution history must show that the
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`patentee clearly and unambiguously disclaimed or disavowed the proposed interpretation during
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`prosecution to obtain claim allowance. Middleton Inc. v. 3M Co., 311 F.3d 1384, 1388 (Fed. Cir.
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`2002); see also Springs Window Fashions LP v. Novo Indus., L.P., 323 F.3d 989, 994 (Fed. Cir.
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`2003) (“The disclaimer . . . must be effected with ‘reasonable clarity and deliberateness.’”)
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`(citations omitted)). “Indeed, by distinguishing the claimed invention over the prior art, an
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`applicant is indicating what the claims do not cover.” Spectrum Int’l v. Sterilite Corp., 164 F.3d
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`1372, 1378-79 (Fed. Cir. 1988) (quotation omitted). “As a basic principle of claim
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`interpretation, prosecution disclaimer promotes the public notice function of the intrinsic
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`evidence and protects the public’s reliance on definitive statements made during prosecution.”
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`Omega Eng’g, Inc., 334 F.3d at 1324.
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`Although “less significant than the intrinsic record in determining the legally operative
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`meaning of claim language,” the Court may rely on extrinsic evidence to “shed useful light on
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`the relevant art.” Phillips, 415 F.3d at 1317 (quotation omitted). Technical dictionaries and
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`treatises may help the Court understand the underlying technology and the manner in which one
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`skilled in the art might use claim terms, but such sources may also provide overly broad
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`definitions or may not be indicative of how terms are used in the patent. Id. at 1318. Similarly,
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`expert testimony may aid the Court in determining the particular meaning of a term in the
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`pertinent field, but “conclusory, unsupported assertions by experts as to the definition of a claim
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`term are not useful.” Id. Generally, extrinsic evidence is “less reliable than the patent and its
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`prosecution history in determining how to read claim terms.” Id.
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`In patent construction, “subsidiary fact finding is sometimes necessary” and the court
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`“may have to make ‘credibility judgments’ about witnesses.” Teva v. Sandoz, 135 S.Ct. 831, 838
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`(2015). In some cases, “the district court will need to look beyond the patent’s intrinsic evidence
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`and to consult extrinsic evidence in order to understand, for example, the background science or
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`the meaning of a term in the relevant art during the relevant time period.” Id. at 841. “If a
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`district court resolves a dispute between experts and makes a factual finding that, in general, a
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`certain term of art had a particular meaning to a person of ordinary skill in the art at the time of
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`the invention, the district court must then conduct a legal analysis: whether a skilled artisan
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`would ascribe that same meaning to that term in the context of the specific patent claim under
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`review.” Id. (emphasis in original). When the court makes subsidiary factual findings about the
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`extrinsic evidence in consideration of the “evidentiary underpinnings” of claim construction,
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`those findings are reviewed for clear error on appeal. Id.
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`II.
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`Indefiniteness
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`Indefiniteness is a question of law. Teva Pharms. USA, Inc. v. Sandoz, Inc., 723 F.3d
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`1363, 1368 (Fed. Cir. 2013). “[D]etermination of claim indefiniteness is a legal conclusion that
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`is drawn from the court’s performance of its duty as the construer of patent claims.” Exxon
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`Research & Eng’g Co. v. United States, 265 F.3d 1371, 1376 (Fed. Cir. 2001) abrogated on
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`other grounds by Nautilus v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2130 (2014).
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`Indefiniteness is a challenge to the validity of the patent that must be established by clear and
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`convincing evidence. Nautilus, 134 S.Ct. at 2130, n. 10 (citing Microsoft Corp. v. i4i Ltd.
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`Partnership, 131 S.Ct. 2238, 2242 (2011) for the clear-and-convincing standard applicable to
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`challenges to invalidity and declining to alter this standard). Indefiniteness is “evaluated from the
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`perspective of someone skilled in the relevant art at the time the patent was filed.” Nautilus, 134
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`S.Ct. at 2128. Claims must “be read in light of the patent’s specification and prosecution
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`history.” Id. at 2128.
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`Under 35 U.S.C. § 112 ¶ 2, “[t]he specification shall conclude with one or more claims
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`particularly pointing out and distinctly claiming the subject matter which the applicant regards as
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`his invention.” “A lack of definiteness renders invalid ‘the patent or any claim in suit.’”
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`Nautilus, 134 S.Ct. at 2125 (citing 35 U.S.C. § 282, ¶ 2(3)). “[A] patent is invalid for
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`indefiniteness if its claims, read in light of the specification ..., and the prosecution history, fail to
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`inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Id.
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`at 2124 (emphasis added). Reasonable certainty is something more precise than insolubly
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`ambiguous, but short of absolute precision. Id. at 2129–30. “The definiteness standard ‘must
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`allow for a modicum of uncertainty’ to provide incentives for innovation, but must also require
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`‘clear notice of what is claimed, thereby appris[ing] the public of what is still open to them.’”
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`Interval Licensing LLC v. AOL, 766 F.3d 1364, 1370 (Fed. Cir. 2014) (emphasis added) (quoting
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`Nautilus, 134 S.Ct. at 2128–29). “Although absolute precision or mathematical precision is not
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`required, it is not enough as some of the language in ... prior cases may have suggested, to
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`identify ‘some standard for measuring the scope of the phrase.’” Id. at 1370–71 (quoting
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`Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1351 (Fed. Cir. 2005)). “The claims,
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`when read in light of the specification and the prosecution history, must provide objective
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`boundaries for those of skill in the art.” Id at 1371 (emphasis added) (relying on Nautilus, 134
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`S.Ct. at 2130 & n. 8).
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`DISCUSSION
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` The parties dispute the meaning of the following claim terms, which are set forth herein:
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`I.
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`“convey information” (’107 Patent, Claims 1, 104)
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`Plaintiffs’ Proposal
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`Defendants’ Proposal
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`“encode information through modulation of DC current”
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`No construction
`necessary, as the term
`should be afforded its
`plain-and-ordinary
`meaning.
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`Plaintiffs argue that “convey information” should have its plain and ordinary meaning
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`and that Defendants’ proposed construction should be rejected because it “improperly reads an
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`express limitation out of the claims [convey] and imports two limitations into them [encoding
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`and modulation].” (Doc. No. 403, at 6.) Specifically, Plaintiffs argue that the claim requires that
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`the at least one of the magnitudes of DC current flow must be configured to “convey”
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`information, not “encode” it. Id. Plaintiffs emphasize that the claims do not say anything about
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`encoding information, and that the specification explains that information may be encoded, but
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`that encoding is not necessary. Id. at 6–7 (citing ’012 Patent at 5:61–67). Further, Plaintiffs cite
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`to the doctrine of claim differentiation to argue that because dependent claim 38 recites “the
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`information is encoded,” “convey information” in independent claim 1 cannot mean “encoding.”
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`Id. at 7. Finally, Plaintiffs also argue that the term “modulation” is an improper addition to the
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`claim language. Id. at 8.
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`Defendants argue that the specification “consistently and exclusively discloses encoding
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`and modulating the information onto the current flow.” (Doc. No. 432, at 14–15.) In support,
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`Defendants cite to the portion of the specification that describes the central module “can slightly
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`alter the voltage supplied by isolation power supply 8 based upon status data provided by the
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`status data encoder.” Id. at 14 (citing ’012 Patent at 5:53–61.) In addition, Defendants cite to
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`three other embodiments that Defendants contend all entail encoding and modulating a DC
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`current flow to convey information. Id. at 14–15 (citing ’012 Patent at 6:48–51; 9:24–30, 47–50;
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`10:31–32, 40–42.) Defendants further argue that “Defendants’ construction does not ‘read out’
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`the ‘convey’ limitation . . . because encoding and modulating a signal with information causes
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`the signal to convey that information.” Id. at 15.
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`Here, the relevant portion of the claim language recites: “wherein at least one of the
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`magnitudes of the DC current flow to convey information about the piece of Ethernet terminal
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`equipment.” ’107 Patent at 17:22–25. As it pertains to “encoding,” the specification does refer to
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`encoding information. See ’012 Patent at 5:53–61 (“slightly alter the voltage supplied by
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`isolation power supply 8 based upon status data provided by the status data encoder 9”); 6:7–14
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`(“passes this encoded number to signal transmitter 12 which sends the encoded number across
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`the data communication link 2A by altering the total current draw of the remote module 16”); see
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`also id. at 6:48–51, 9:24–30, 9:47–50, 10:31–32 & 10:40–42; id. at Figs. 5, 7, 10 & 18.
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`However, the specification, in discussing the transmission of status information, does not
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`limit transmission to encoding. Indeed, the specification states: “The scope of the invention
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`includes transmitting status information as a single bit or as a pulse train. Types of transmitted
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`status information include whether the protection circuit is active, date, time, and port location.
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`It is also within the scope of the invention to encode the status data using methods such as single
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`bit on/off, Manchester, 4B/5B, and Frequency Shift Keying (FSK).” ’012 Patent at 5:61–67
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`(emphasis added). This passage suggests that while encoding may be within the scope of the
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`invention, it is not necessary, as implied by the disclosure that a single bit may be used rather
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`than necessarily the disclosed encoding techniques. Moreover, dependent claims 38 and 39 of the
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`’107 Patent both recite “wherein the information is [] encoded.” ’107 Patent at 19:7–11. These
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`dependent claims further suggest that the patentee did not intend to limit “convey information” to
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`“encoding.” See Phillips, 415 F.3d at 1315 (“[T]he presence of a dependent claim that adds a
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`particular limitation gives rise to a presumption that the limitation in question is not present in
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`the independent claim.”); Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1367 (Fed. Cir.
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`2012) (citing 35 U.S.C. § 112 ¶ 4) (“It is axiomatic that a dependent claim cannot be broader
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`than the claim from which it depends . . . A dependent claim narrows the claim from which it
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`depends.”); Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1334 (Fed. Cir. 2010) (“A
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`person of ordinary skill would presume that a structure recited in a dependent claim will perform
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`a function required of that structure in an independent claim.”).
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`While the Court agrees the specification discusses encoding, the claim does not require it,
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`the specification does not clearly limit to encoding, and the doctrine of claim differentiation
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`supports a broader construction. As such, the Court cannot limit the term “convey information”
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`to require encoding. Defendants’ proposal to include “encode” in their definition of “convey
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`information” connotes a degree of transformation that is not required by the claims, and
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`Defendants’ proposal relies upon use of magnitudes of DC current flow, which is recited by
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`other claim language. Defendants’ proposal of “encode” would thus tend to confuse rather than
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`clarify the scope of the claims. Therefore, the Court declines to construe the term “convey
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`information” to include the requirement that the information be “encoded.”
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`As to modulation, Defendants contend that claims 1 and 104 of the ’107 Patent require
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`different magnitudes of DC current, thereby requiring modulation. (Doc. No. 432, at 15–16.)
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`Claim 1 of the ’107 Patent recites, in relevant part: “the piece of Ethernet terminal equipment to
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`draw different magnitudes of DC current flow via the at least one path, . . . wherein at least one
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`of the magnitudes of the DC current flow to convey information about the piece of Ethernet
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`terminal equipment.” ’107 Patent at 20–25 (emphasis added). Here, the claim language plainly
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`requires only “one of the magnitudes of the DC current flow” to “convey information.” This
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`recital in the claims is also consistent with disclosure in the specification that, for example,
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`information can be conveyed by “alter[ing] the flow of current from within the remote module
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`16a by changing the impedance of a circuit connected across the data communication link 2A.”
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`’012 Patent at 8:52–55. Although this passage appears in the context of “encoded signals” (see
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`id. at 8:45–59), this disclosure suggests that information could be conveyed by a single
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`impedance level (and, thus, a single associated flow of current).
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`Defendants’ proposal of “modulation” would require that information is conveyed by
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`modulating between at least two levels. That is, requiring “modulation” would run the risk that
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`the claim would be interpreted by a finder of fact as requiring use of multiple magnitudes of DC
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`current flow in order to convey a single piece of information. The Court declines to add such a
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`requirement to the meaning of “convey information” when the surrounding claim language is
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`clear. Therefore, the Court declines to construe the term “convey information” to include
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`“modulation” of the DC current.
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`Having resolved these disputes, the Court finds that “convey information” needs no
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`further construction.
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`II.
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`“connector” (’012 Patent, Claim 31; ’107 Patent, Claims 1, 104; ’838 Patent, Claim
`1)
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`Plaintiffs’ Proposal
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`Defendants’ Proposal
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`“a network cable plug configured to be received by a receptacle”
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`No construction
`necessary, as the term
`should be afforded its
`plain-and-ordinary
`meaning.
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`
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`Plaintiffs argue that a person of ordinary skill in the art would understand that both plugs
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`and receptacles are “connectors.” (Doc. No. 403, at 9.) Plaintiffs point to claim 31 of the ’012
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`Patent that broadly recites an “Ethernet connector” and does not specify plug or jack. Id. Further,
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`Plaintiffs cite to the dependent claims in support which recite “the Ethernet connector is an RJ45
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`jack.” Id. Finally, Plaintiffs cite to the prosecution history where the patentee cited to the IEEE
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`802.3i Ethernet standard referring to and showing a “connector” as both a receptacle and a plug.
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`Id. at 11–12.
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`Defendants argue that the term “connector” is used in the patents only to describe a plug.
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`(Doc. No. 432, at 17.) Defendants cite to several disclosures in the ’012 Patent, including Figures
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`11, 14, and 15 that show and describe a “connector” as a plug. Defendants further contend that
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`the prosecution history actually supports their construction because the patentee explained the
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`plug depicted in the prior art was “synonymous to the normal network wire connector 38,” and
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`the receptacle was “synonymous to the normal input receptacle 48.” (Doc. No. 432, at 18.)
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`Turning first to the claims, claim 31 of the ’012 Patent is representative and recites: “the
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`selected contacts comprising at least one of the plurality of contacts of the Ethernet connector
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`and at least another one of the plurality of contacts of the Ethernet connector.” ’012 Patent at
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`18:66–19:2. Dependent Claims 34, 39, 44, 45, and 47 of the ’012 Patent recite “the Ethernet
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`connector is an RJ45 jack.” ’012 Patent (Claims 34, 39, 44, 45, & 47.) The specification does
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`refer to a “connector” as a plug and a jack as a “receptacle.” In Figure 14 of the ’012 Patent, for
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`example, numeral 38 identifies a plug whereas numeral 48 identifies a jack:
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`(’012 Patent, Fig. 14; 10:67 (“connector 38”), 11:2 (same) & 11:14 (“network wire connector
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`38”); see also id. at 11:16 (“normal input receptacle 48”).) During prosecution of the ’012 Patent,
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`the patentee referred to an illustration of a jack as a “connector.” (Doc. No. 403, Ex. G, Dec. 6,
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`2011 Amendment at 26–28.) The patentee also referred to “connector 38” and “receptacle 48.”
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`Id. at 27–28.
`
`
`
`Here, independent claim 31 broadly recites an “Ethernet connector” and does not specify
`
`a plug or jack. ’012 Patent at 18:66–19:2. Thus, the claims do not require that the “Ethernet
`
`connector” be only a plug. Defendants’ primary arguments in support of their contention that a
`
`“connector” refers only to a plug are based upon the specification and the prosecution history.
`
`However, while the specification does show embodiments where the connector is a plug and the
`
`patentee referred to a plug as a “connector,” during prosecution the patentee also referenced the
`
`IEEE standard which illustrates a jack as a “connector”:
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`(Doc. No. 403, Ex. G, Dec. 6, 2011 Amendment at 27.)
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`
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`In this regard, the prosecution history does not amount to a clear disavowal by the
`
`patentee, and a “receptacle” may simply be a type of connector, just as a plug may be a type of
`
`connector. See Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1332 (Fed. Cir. 2004)
`
`(“Because the statements in the prosecution history are subject to multiple reasonable
`
`interpretations, they do not constitute a clear and unmistakable departure from the ordinary
`
`meaning of the term . . . .”). Moreover, because the dependent claims recite “the Ethernet
`
`connector is an RJ45 jack,” construing the independent claim to exclude a jack would be
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`disfavored. See Tr. of Columbia Univ. in City of N.Y. v. Symantec Corp., 811 F.3d 1359, 1370
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`(Fed. Cir. 2016) (“[C]onstruing the independent claim to exclude material covered by the
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`dependent claim would be inconsistent.”). Therefore, the Court declines to limit the term
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`“connector” to only a plug.
`
`
`
`Having resolved the parties’ dispute, the Court finds that the term “connector” needs no
`
`further construction.
`
`III.
`
`“Ethernet terminal equipment” and “end device” (’012 Patent, Claims 31, 36; ’107
`Patent, Claims 1, 5, 43, 72, 83, 103, 104, 111, 123, 125; ’760 Patent, Claims 1, 31, 69,
`72, 73, 106, 142, 145)
`
`Plaintiffs’ Proposal
`
`Defendants’ Proposal
`
`“device at which data transmission can originate or terminate and
`that is capable of Ethernet communications, as opposed to
`intermediate network elements”
`
`“Ethernet terminal
`equipment”:
`“device at which data
`transmission can
`originate or terminate and
`that is capable of
`Ethernet communication”
`
`“end device”:
`This term needs no
`further construction and
`should be afforded its
`plain-and-ordinary
`meaning.
`
`
`At the June 9, 2016 claim construction hearing, the parties reached agreement that
`
`“Ethernet terminal equipment” should be construed to mean “device at which Ethernet data
`
`transmission can originate or terminate.” The Court, having reviewed the patents-in-suit, agrees
`
`with the parties’ proposed construction and therefore construes the term “Ethernet terminal
`
`equipment” to mean “device at which Ethernet data transmission can originate or terminate.”
`
`As to “end device,” Plaintiff addressed concerns regarding construing “end device” as a
`
`“device at which Ethernet data transmission can originate or terminate” because of the
`
`implications it may have on other cases or claims. However, as it applies to the present case, the
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`Court sees no conflict or dispute to resolve at this time. Therefore, the Court construes the term
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`“end device” to mean a “device at which Ethernet data transmission can originate or terminate”
`
`for purposes of this action.
`
`IV.
`
`“To …” (’107 Patent, Claims 1, 43, 104, 111; ’760 Patent, Claims 1, 69, 73, 142; ’838
`Patent, Claims 1, 7, 26, 40, 69)
`
`
`Plaintiffs’ Proposal
`
`Plain and ordinary
`meaning; not subject to
`35 U.S.C. § 112(6)
`
`Defendants’ Proposal
`
`Terms are statements of intended use not entitled to patentable
`weight. In the alternative, terms are means-plus-function limitations
`subject to 35 U.S.C. § 112(6).
`
`Corresponding Structure (’107 Patent): “isolation power supply 13,
`signal transmitter 12, Manchester encoder 11, and firmware kernel
`10”
`
`Corresponding Structure (’838 Patent): “isolation power supply 8,
`Manchester decoder 5, firmware kernel 4, signal modulator 7, and
`signal receiver 6”
`
`Corresponding Structure (’760 Patent):
`For “draw” function: “isolation power supply 8, Manchester
`decoder 5, firmware kernel 4, signal modulator 7, and signal
`receiver 6”
`For “detect” and “control” functions: “isolation power supply 13,
`signal transmitter 12, Manchester encoder 11, and firmware
`kernel 10”
`For “distinguishing” function: “signal receiver 6, Manchester
`decoder 5, and firmware kernel 4”
`
`
`
`In the briefing, Plaintiffs argued that the “to” phrases should have their plain and ordinary
`
`
`
`meaning. (Doc. No. 432, at 4.) Defendants argue that “the purported ‘inventive configuration’ is
`
`simply missing from the actual language of the claims.” (Doc. No. 432, at 5.) Alternatively,
`
`Defendants argue these are means-plus-function terms because “the claim language fails to
`
`connect the performance of the functional limitations to the structure set forth in the claim.” Id.
`
`at 7. As to Claim 43 of the ’107 Patent, for example, Defendants argue that “[t]he claim does not
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`indicate how the path is configured to ‘distinguish’ one piece of Ethernet terminal equipment
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`from another.” Id. Plaintiffs reply that “the terms ‘end device,’ ‘central piece of equipment,[’]
`
`and ‘terminal equipment’ are all known structures in the art,” and the claimed subject matter is
`
`an inventive configuration not subject to 35 U.S.C. § 112(6). (Doc. No. 440, at 2.) Plaintiffs
`
`further urge the disputed terms “are limitations that the claimed structures must be capable of
`
`performing.” Id. at 4–5.
`
`A patent claim may be expressed using functional language. See 35 U.S.C. § 112, ¶ 6;
`
`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347–49 & n.3 (Fed. Cir. 2015) (en banc in
`
`relevant portion). Section 112, Paragraph 6, provides that a structure may be claimed as a “means
`
`. . . for performing a specified function” and that an act may be claimed as a “step for performing
`
`a specified function.” Masco Corp. v. United States, 303 F.3d 1316, 1326 (Fed. Cir. 2002).
`
`But § 112, ¶ 6 does not apply to all functional claim language. There is a rebuttable
`
`presumption that § 112, ¶ 6 applies when the claim language includes “means” or “step for”
`
`terms, and that it does not apply in the absence of those terms. Masco Corp., 303 F.3d at 1326;
`
`Williamson, 792 F.3d at 1348. The presumption stands or falls according to whether one of
`
`ordinary skill in the art would understand the claim with the functional language, in the context
`
`of the entire specification, to denote sufficiently definite structure or acts for performing the
`
`function. See Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1372 (Fed.
`
`Cir. 2015) (§ 112, ¶ 6 does not apply when “the claim language, read