Case 6:13-cv-00880-JDL Document 99 Filed 01/08/15 Page 1 of 17 PageID #: 2409
`
`CHRIMAR SYSTEMS, INC. d/b/a
`CMS TECHNOLOGIES AND
`CHRIMAR HOLDING COMPANY,
`LLC,
`
`vs.
`
`ALCATEL-LUCENT, INC. et al.,
`
`
`
`
`
`CHRIMAR SYSTEMS, INC. d/b/a
`CMS TECHNOLOGIES AND
`CHRIMAR HOLDING COMPANY,
`LLC,
`
`vs.
`
`AMX, LLC,
`
`CHRIMAR SYSTEMS, INC. d/b/a
`CMS TECHNOLOGIES AND
`CHRIMAR HOLDING COMPANY,
`LLC,
`
`vs.
`
`SAMSUNG ELECTRONICS CO., LTD.,
`et al.
`
`
`
`
`
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
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`MEMORANDUM OPINION AND ORDER
`
`
`Civil No. 6:13-cv-880-JDL
`
`
`Civil No. 6:13-cv-881-JDL
`
`
`Civil No. 6:13-cv-883-JDL
`
`
`
`This claim construction opinion construes the disputed claim terms in U.S. Patent No.
`
`8,115,012 (“the ‘012 Patent”). Plaintiffs ChriMar Systems, Inc. d/b/a CMS Technologies and
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`Chrimar Holding Company LLC allege that Defendants1 infringe the ‘012 Patent. Plaintiffs
`
`
`1Defendants
`Inc., AMX LLC, Samsung
`Inc., Alcatel-Lucent Holdings,
`include Alcatel-Lucent USA,
`Telecommunications America, LLC, and Samsung Electronics Co., Ltd. Defendants Aastra Technologies, Ltd.,
`Aastra USA Inc, and Grandstream Networks, Inc. have since settled. Chrimar Systems, Inc. v. Aastra Technologies
`Limited, No. 6:13-cv-879, Doc. No. 70; Chrimar Systems, Inc. v. Grandstream Networks, Inc., No. 6:13-cv-882,
`Doc. No. 92.
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`Case 6:13-cv-00880-JDL Document 99 Filed 01/08/15 Page 2 of 17 PageID #: 2410
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`presented their claim construction position (Doc. No. 83) (“PLS.’ BR.”).2 Defendants filed a
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`Response (Doc. No. 88) (“RESP.”) and Plaintiff filed a Reply (Doc. No. 91) (“REPLY”). The
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`parties additionally submitted a Joint Claim Construction Chart pursuant to P.R. 4-5(d). Doc.
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`No. 93. On October 30, 2014, the Court held a claim construction hearing. Upon
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`consideration of the parties’ arguments and for the reasons stated herein, the Court adopts the
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`constructions set forth below.
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`OVERVIEW OF THE PATENTS
`
`Plaintiff alleges Defendants infringe independent claims 31 and 67 and dependent claims
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`35, 42, 43, 49, 50, 55, 66, 72, 73, 77, 88, 89, and 106 (“the asserted claims”) of the ‘012 Patent.
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`PL.’S BR. at 1. The ‘012 Patent is titled “System and Method for Adapting a Piece of Terminal
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`Equipment,” and relates to tracking of devices that are connected to a wired network. ‘012
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`Patent. More specifically, the ’012 Patent describes permanently identifying an “asset,” such as
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`a computer, “by attaching an external or internal device to the asset and communicating with that
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`device using existing network wiring or cabling.” ‘012 Patent at 1:67–2:2. The ’012 Patent
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`refers to that device as the “remote module.” Id. at 3:22–26. The asset can then be managed,
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`tracked, or identified by using the remote module to communicate a unique identification
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`number, port ID, or wall jack location to the network monitoring equipment, or “central
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`module.” Id. at 6:7–13 and 8:66–9:4. The ’012 Patent further discloses that “asset identification”
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`may be done in a way “that does not use existing network bandwidth.” Id. at 3:10–12. These
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`concepts are reflected in the patents’ asserted claims, including independent claims 31 and 67 as
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`set forth below:
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`31. An adapted piece of Ethernet data terminal equipment comprising:
`
`an Ethernet connector comprising a plurality of contacts;
`
`
`and
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`2 All citations herein will be to the Docket in No. 6:13-cv-880 unless otherwise indicated.
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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,
`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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`
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`
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`67. A method for adapting a piece of terminal equipment, the piece of terminal
`equipment having an Ethernet connector, the method comprising:
`
`coupling at least one path across specific contacts of the Ethernet
`
`
`connector, the at least one path permits use of the specific contacts
`
`
`for Ethernet communication, the Ethernet connector comprising
`
`
`the contact 1 through the contact 8, the specific contacts of the
`
`
`Ethernet connector comprising at least one of the contacts of the
`
`
`Ethernet connector and at least another one of the contacts of the
`
`
`Ethernet connector; and
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`arranging impedance within the at least one path to distinguish the piece of
`
`
`terminal equipment.
`
`’012 Patent, claims 31 and 67.
`
`There are six disputed terms or phrases in the asserted claims. One term has been
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`construed by the Court following early claim construction briefing and oral argument on
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`September 3, 2014. Doc. No. 92 (“EARLY CLAIM CONSTRUCTION OPINION”). In its Order, the
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`Court denied Defendants’ summary judgment motion and construed the “distinguishing” term as
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`follows:
`
`Term
`“distinguishing information about the piece of
`Ethernet terminal equipment” (Claim 31)
`
`“to distinguish the piece of terminal
`equipment” (Claim 67)
`
`Construction
`“information to distinguish the piece of
`Ethernet data terminal equipment from at least
`one other piece of Ethernet data terminal
`equipment”
`“to distinguish the piece of terminal equipment
`having an Ethernet connector from at least one
`other piece of terminal equipment having an
`Ethernet connector”
`
`EARLY CLAIM CONSTRUCTION OPINION at 15. Trial is scheduled for September 8, 2015.
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`CLAIM CONSTRUCTION PRINCIPLES
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`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention
`
`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
`
`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
`
`Corp.v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex. Inc. v. Ficosa N.
`
`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
`
`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
`
`Corp., 383 F.3d 1295, 1301 (Fed. Cir. 2004).
`
`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.’”)
`
`(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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`DISCUSSION
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`“distinguishing information about the piece of Ethernet terminal equipment” and
`I.
`“to distinguish the piece of terminal equipment”
`
`As discussed above, the Court construed these terms in its Early Claim Construction
`
`Opinion. Doc. No. 92. Defendants’ renewed summary judgment arguments (Doc. No. 87) will
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`be addressed in a separate Opinion.
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`“impedance” (claims 31, 35, 50, 67, 73, 77, and 72)
`II.
`Plaintiffs’ Proposal
`Defendants’ Proposal
`
`Plain and ordinary meaning. No construction
`“the resistance to the flow of alternating
`necessary.
`current in a circuit”
`
`Alternatively:
`“the opposition to the flow of alternating
`current”
`
`PLS.’ BR. at 6; RESP. at 3.
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`
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`
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`A.
`
`The Parties’ Contentions
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`Plaintiffs argue this term requires no construction because the intrinsic evidence allows
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`the impedance to operate as opposition to the flow of current, whether that current is AC or DC.
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`PLS.’ BR. at 7. In support, Plaintiffs’ and their expert, Les Baxter, proffer that impedance
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`consists of resistance plus reactance that applies in both AC and DC circuits. Doc. No. 83-2, Ex.
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`B ¶ 23, Decl. of Les Baxter (“Baxter Decl.”). Id. When calculating impedance in DC circuits,
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`the reactance is zero and therefore impedance equals the resistance alone. Id. Plaintiff further
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`points to several portions of the ‘012 Patent specification that reference DC current as well as
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`several extrinsic dictionary definitions and Alcatel-Lucent’s own patent. Id. ¶ 24; PLS.’ BR. at 9.
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`Defendants, on the other hand, argue that the intrinsic evidence points to use of an AC
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`circuit through the disclosure of a transformer in the specification because “a transformer only
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`permits AC signal to propagate.” RESP. at 6-9. Defendants additionally point to the IEEE
`
`Dictionary as extrinsic evidence that impedance in the ‘012 Patent refers to an AC circuit. Id. at
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`5. During the October 30, 2014 hearing, Defendant proposed that the term “impedance” applies
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`only to current that has a frequency component, and suggested “the opposition to the flow of
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`current, wherein the current has a frequency component” as a second alternative construction.
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`
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`B.
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`Claim Construction Analysis
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`Importantly, independent claim 67 refers to impedance without reference to AC or DC as
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`recited below:
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`67. A method for adapting a piece of terminal equipment, the piece of terminal
`equipment having an Ethernet connector, the method comprising:
`
`coupling at least one path across specific contacts of the Ethernet
`
`
`connector, the at least one path permits use of the specific contacts
`
`
`for Ethernet communication, the Ethernet connector comprising
`
`
`the contact 1 through the contact 8, the specific contacts of the
`
`
`Ethernet connector comprising at least one of the contacts of the
`
`
`Ethernet connector and at least another one of the contacts of the
`
`
`Ethernet connector; and
`
`arranging impedance within the at least one path to distinguish the piece of
`
`
`terminal equipment.
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`’012 Patent, claim 67. Plaintiffs cite dependent claims 76, 82, 85, and 86 for the proposition that
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`impedance opposes the flow of current, whether AC or DC. PLS.’ BR. at 8. These dependent
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`claims recite as follows:
`
`76. The method according to claim 67 wherein the arranging impedance within
`the at least one path comprises arranging the impedance within the at least one
`path to draw DC current.
`
`82. The method according to claim 67 wherein the arranging impedance within
`the at least one path comprises arranging impedance within the at least one path to
`have a first impedance for a first condition applied to the specific contacts
`followed by a second impedance for a second condition applied to the specific
`contacts.
`
`85. The method according to claim 82 wherein the first and second conditions
`applied to the specific contacts are current conditions.
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`86. The method according to claim 85 wherein the current conditions are DC
`current conditions.
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`’012 Patent, claims 76, 82, 85 and 86. Because these dependent claims, particularly claim 86,
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`specifically require DC while the independent claims do not, claim differentiation applies.
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`“[T]he presence of a dependent claim that adds a particular limitation gives rise to a presumption
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`that the limitation in question [DC only] is not present in the independent claim.” Phillips, 415
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`F.3d at 1315. “It is axiomatic that a dependent claim cannot be broader than the claim from
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`which it depends . . . A dependent claim narrows the claim from which it depends.” Alcon
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`Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1367 (Fed. Cir. 2012) (citing 35 U.S.C. § 112 ¶ 4);
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`Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1334 (Fed. Cir. 2010) (“A person of
`
`ordinary skill would presume that a structure recited in a dependent claim will perform a
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`function required of that structure in an independent claim.”) Here, if the impedance referred to
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`in independent claim 67 applied only to AC, the DC limitation recited in these dependent claims
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`would be inconsistent with the claim from which they depend. The reference to DC in the
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`dependent claims therefore weighs against limiting “impedance” to AC in the independent claim
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`because this would result in a dependent claim broadening the independent claim from which it
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`depends.
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`
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`Additionally, claim differentiation weighs against Defendants contention that disclosures
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`relating to transformers restrict impedance to AC. Claims 53 and 97, which depend from
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`independent claims 31 and 67, recite as follows:
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`
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`53. The piece of Ethernet data terminal equipment according to claim 31 wherein
`the at least one path includes the center tap of at least one isolation transformer.
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`97. The method according to claim 67 wherein the at least one path includes the
`center tap of at least one isolation transformer.
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`‘012 Patent, claims 53 and 97. Here, because claims 53 and 97 depend from independent claims
`
`31 and 67, these dependent claims cannot broaden the independent claims to require such a
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`transformer in every embodiment. N. Am. Vaccine, Inc. v. Am. Cyanamid Co., 7 F.3d 1571,
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`1577 (Fed. Cir. 1993) (“The dependent claim tail cannot wag the independent claim dog.”) In
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`fact, one embodiment replaces the isolation transformer with an interface amplifier. ‘012 Patent
`
`at 10:33-35 (“The fourth embodiment differs from the earlier described embodiments by
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`employing an interface amplifier for the signal receiver 6c in place of an isolation
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`transformer…”). Thus, Defendants’ arguments regarding the use of transformers equating to an
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`AC requirement is unpersuasive.
`
`
`
`
`Turning to the specification, the term “impedance” appears in the ‘012 Patent as follows:
`
`Although the encoded signal in the present embodiment transmits the encoded
`signal from the remote module 16a, it is within the scope of the invention to
`source current from the central module and alter the flow of current from within
`the remote module 16a by changing the impedance of a circuit connected across
`the data communication link 2A. Examples of such circuits include an RC
`network connected directly to the data link 2A and reflecting an impedance
`change across an isolation transformer.
`
`‘012 Patent at 8:49-57.
`
`
`The current splits between the windings with the reflected primary impedance
`controlling the magnitude of the current that flows in each winding. The primary
`impedance is controlled by processor 122, the exclusive OR gates 120 and 121,
`and the two 10 k resistors 126 and 127.
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`‘012 Patent at 9:65-10:3.
`
`
`The signal receiver 230 provides a balanced impedance on the serial bus for
`receiving the serial stream from the sender tag 202.
`
`‘012 Patent at 14:62-64 (emphasis added).
`
`
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`None of the above references to impedance mention AC or DC. Rather than specifying
`
`AC or DC, they all refer to “current” generically. Thus, one of skill in the art would not limit
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`impedance to AC as Defendants contend.
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`
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`Limiting impedance to AC also lacks support in the extrinsic evidence submitted by the
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`parties. While Defendants cite The Authoritative Dictionary of IEEE Standards Terms 535 (7th
`
`ed. 2000) defining “impedance” in the context of “broadband local area networks” as meaning
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`“[a] measure of the complex resistive and reactive attributes of a component in an alternating-
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`current circuit” (RESP. at 5), Plaintiff’s expert defines impedance with a formula where
`
`impedance consists of resistance plus reactance, or Z=R+jX. PLS.’ BR. at 7 (citing Baxter Decl. ¶
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`23). In DC circuits, the reactance is zero and therefore impedance equals the resistance alone.
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`Id. Plaintiffs additionally rely on the Oxford Concise Scientific Dictionary to define impedance
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`as “[t]he quantity that measures the opposition of a circuit to the passage of a current”3 and cite
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`an Alcatel-Lucent patent for the proposition that “[w]hen DC power systems are first activated,
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`high levels of transient current may be generated as a result of capacitor impedance.” PLS.’ BR.
`
`at 9 (citing U.S. Patent No. 7,821,753 at 1:53-55, Ex. E). Thus, impedance fits within the DC
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`context in the extrinsic evidence since reactance can be zero.
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`
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`“Claim terms are generally given their plain and ordinary meanings to one of skill in the
`
`art when read in the context of the specification and prosecution history.” Hill-Rom Servs., Inc.
`
`v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014) (citing Phillips, 415 F.3d at 1313). “There
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`are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as
`
`his own lexicographer, or 2) when the patentee disavows the full scope of the claim term either
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`in the specification or during prosecution.” Id. (citing Thorner v. Sony Computer Entm't Am.
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`LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)).
`
`
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`There is no such disclaimer or lexicography here. Nothing in the claims, specification or
`
`prosecution history discloses that impedance is limited to AC. Plaintiff proposes that the
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`ordinary meaning of impedance “allows the impedance to be for opposition to the flow of
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`3 PLS.’ BR. at 9 (citing Oxford Concise Scientific Dictionary 362-63 (3d ed. 1996), Ex. F).
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`current, whether AC or DC current, in a path.” PLS.’ BR. at 7. Defendants propose impedance
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`be construed as “the resistance to the flow of alternating current in a circuit” or alternatively,
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`“the opposition to the flow of alternating current.” RESP. at 3. Hence the parties essentially
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`agree that impedance is opposition to the flow of current, but disagree whether that current is
`
`limited to AC. As discussed above, nothing in the intrinsic or extrinsic evidence shows that
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`impedance in the ‘012 Patent is limited to AC. Therefore, the Court rejects Defendants’ proposal
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`and construes “impedance” to mean “opposition to the flow of current.”
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`III.
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`“terminal equipment” and “Ethernet data terminal equipment”
`
`Plaintiffs’ Proposal
`Plain and ordinary meaning. No construction
`necessary.
`
`
`“terminal equipment”
`Defendants’ Proposal
`“device at which data transmission originates
`or terminates”
`
`Plaintiffs’ Proposal
`Plain and ordinary meaning. No construction
`necessary.
`
`Alternatively:
`“Ethernet terminal equipment that is
`capable of transmitting or receiving data”
`
`“Ethernet data terminal equipment”
`Defendants’ Proposal
`“device at which data transmission originates
`or terminates and that is capable of Ethernet
`communication”
`
`
`PLS.’ BR. at 13; RESP. at 17; REPLY at 7. The “terminal equipment” term appears in claims 67,
`
`72, and 106 and “Ethernet data terminal equipment” appears in claims 31, 35, 42, 43, 49, 50, and
`
`55. Id.
`
`
`
`Plaintiffs argue that “[t]hese terms mean just what they say, are readily comprehensible,
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`and do not require construction.” PLS.’ BR. at 14. Defendants submit technical dictionary
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`definitions of “data terminal equipment” as meaning: “Device at which data transmission
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`originates or terminates. May be a keyboard/display terminal, a printer, a computer, a
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`communication controller, or any similar device.” RESP., Ex. 2, McGraw-Hill Data
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`Communications Dictionary 24 (1993). Additionally, Defendants reference “[t]he equipment
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`comprising the data source, the data sink, or both.” Id., Ex. 3, IEEE Standard Dictionary of
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`Electrical and Electronics Terms 226 (3rd. ed. 1984) (defining “data source” and “data sink”).
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`Finally, Defendants refer to “[a] circuit, such as a terminal, that acts as a data source, a data sink,
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`or both.” Id., Ex. 4, McGraw-Hill Electronics Dictionary 110 (6th ed. 1997) (defining “data
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`source”).
`
`
`
`The Court finds Defendants have adequately demonstrated that the constituent term
`
`“terminal” distinguishes the disputed terms from intermediate network elements. Furthermore,
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`Plaintiffs essentially agree that “terminal equipment” is capable of being the beginning or end of
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`data transmission over a network. REPLY at 7. Therefore, the Court construes these terms as
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`follows:
`
`Term
`“terminal equipment”
`
`(Claims 67, 72 & 106)
`“Ethernet data terminal equipment”
`
`(Claims 31, 35, 42, 43, 49, 50 & 55)
`
`Construction
`“device at which data transmission can
`originate or terminate”
`
`“device at which data transmission can
`originate or terminate and that is capable of
`Ethernet communication”
`
`“a method for adapting a piece of terminal equipment” and “an adapted piece of
`IV.
`Ethernet data terminal equipment”
`
`Plaintiffs’ Proposal
`These preambles are not limiting and have
`their plain and ordinary meaning.
`
`PLS.’ BR. at 17; RESP. at 21.
`
`Defendants’ Proposal
`These preambles are limiting and have their
`plain and ordinary meaning.
`
`Defendants propose that “terminal equipment”
`and “Ethernet data terminal equipment,” as
`used in these phrases have the same meanings
`as in their individually proposed constructions.
`
`
`
`
`
`A.
`
`The Parties’ Contentions
`
`Plaintiffs argue that the preambles are not limiting because “if the preambles were
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`deleted, the body of claim 31 would still describe an adapted piece of Ethernet data terminal
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`equipment, and the body of claim 67 would still recite steps for a method for adapting a piece of
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`terminal equipment.” PLS.’ BR. at 18.
`
`
`
`Defendants respond that “as set forth throughout the patent specification, the inventors
`
`address the Total Cost of Ownership (TCO) problem by taking existing network assets that are
`
`otherwise indistinguishable and adapting those assets to make them distinguishable from each
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`other.” RESP. at 21 (citing ’012 Patent at 4:41-47). Defendants conclude that Plaintiffs’ position
`
`is “an improper attempt to read out the ‘adapting’ requirement and would undermine the entire
`
`purpose of the invention and shift away from the particular problem the inventors were seeking
`
`to address.” Id. at 22 (citing ‘012 Patent at 1:23-3:14). Further, Defendants argue “the ’012
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`Patent is the only one of its family to focus the issued claims on ‘adapting.’” Id. at 23.
`
`
`
`
`
`B.
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`Claim Construction Analysis
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`Generally, “a preamble limits the invention if it recites essential structure or steps, or if it
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`is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int'l, Inc. v.
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`Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v.
`
`Hewlett–Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). “[D]ependence on a particular
`
`disputed preamble phrase for antecedent basis may limit claim scope because it indicates a
`
`reliance on both the preamble and claim body to define the claimed invention. Likewise, when
`
`the preamble is essential to understand limitations or terms in the claim body, the preamble limits
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`claim scope.” Id. (citations omitted). The issue of preamble language acting as a limitation is
`
`determined on a case-by-case basis in light of “the overall form of the claim, and the invention as
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`described in the specification and illuminated in the prosecution history.” Allen Eng’g Corp. v.
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`Bartell Indus. Inc., 299 F.3d 1336 (Fed. Cir. 2002).
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`
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`Here, both the Abstract and the Summary of the Invention use the word “adapted” as
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`follows:
`
`This invention is particularly adapted to be used with an existing Ethernet
`communications link or equivalents thereof.
`
`‘012 Patent at 3:35-37 (emphasis added). The specification further discloses:
`
`
`The communication system 15 and 16 described herein is particularly adapted to
`be easily implemented in conjunction with an existing computer network 17 while
`realizing minimal interference to the computer network.
`
`Id. at 4:56-60 (emphasis added).
`
`As enumerated above, claims 31 and 67 recite:
`
`
`
`31. An adapted piece of Ethernet data terminal equipment comprising:
`
`an Ethernet connector comprising a plurality of contacts; and
`
`at least one path coupled across selected contacts, the selected contacts
`comprising at least one of the plurality of contacts of the Ethernet connector and
`at least another one of the plurality of contacts of the Ethernet connector,
`wherein distinguishing information about the piece of Ethernet data
`
`terminal equipment is associated to impedance within the at least one path.
`
`‘012 Patent, claim 31 (emphasis added).
`
`
`67. A method for adapting a piece of terminal equipment, the piece of terminal
`equipment having an Ethernet connector, the method comprising:
`
`coupling at least one path across specific contacts of the Ethernet
`connector, the at least one path permits use of the specific contacts for Ethernet
`communication, the Ethernet connector comprising the contact 1 through the
`contact 8, the specific contacts of the Ethernet connector comprising at least one
`of the contacts of the Ethernet connector and at least another one of the contacts
`of the Ethernet connector; and
`arranging impedance within the at least one path to distinguish the piece of
`
`terminal equipment.
`
`‘012 Patent, claim 67 (emphasis added). The claim body in both claims refers back to the
`
`preamble which indicates a limitation based on an antecedent basis. Preamble language that
`
`describes an antecedent in greater detail can be limiting. Proveris Scientific Corp. v.
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`Case 6:13-cv-00880-JDL Document 99 Filed 01/08/15 Page 16 of 17 PageID #: 2424
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`Innovasystems, Inc., 739 F.3d 1367, 1373 (Fed. Cir. 2014) (“The phrase ‘the image data’ clearly
`
`derives antecedent basis from the ‘image data’ that is defined in greater detail in the preamble as
`
`being ‘representative of at least one sequential set of images of a spray plume.’”) (emphasis
`
`added). Here, in claim 31, “the piece of Ethernet data terminal equipment” refers back to the
`
`“adapted piece of Ethernet data terminal equipment” in the preamble while “the piece of terminal
`
`equipment” in claim 67 refers back to the method for “adapting a piece of terminal equipment.”
`
`See id.; see also Eaton Corp. v.