Case 6:15-cv-00163-JDL Document 123 Filed 03/28/16 Page 1 of 22 PageID #: 3578
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`CHRIMAR SYSTEMS, INC. d/b/a
`CMS TECHNOLOGIES AND
`CHRIMAR HOLDING COMPANY,
`LLC,
`
`vs.
`
`ALCATEL-LUCENT USA, INC. et al.,
`
`CHRIMAR SYSTEMS, INC. d/b/a
`CMS TECHNOLOGIES AND
`CHRIMAR HOLDING COMPANY,
`LLC,
`
`vs.
`
`AMX, LLC,
`
`
`
`
`
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`§
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`Civil No. 6:15-cv-163-JDL
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`
`Civil No. 6:15-cv-164-JDL
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`MEMORANDUM OPINION AND ORDER
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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. 97), to which Defendants filed a responsive brief (Doc. No.
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`100), to which Plaintiffs filed a reply (Doc. No. 108), and Defendants filed a sur-reply (Doc.
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`No. 113). The parties additionally submitted a Joint Claim Construction Chart pursuant to P.R.
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`1Defendants include Alcatel-Lucent USA, Inc., Alcatel-Lucent Holdings, Inc., Alcatel-Lucent Enterprise USA Inc.,
`and AMX LLC.
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`1
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`Case 6:15-cv-00163-JDL Document 123 Filed 03/28/16 Page 2 of 22 PageID #: 3579
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`4-5(d). (Doc. No. 106.) On March 10, 2016, the Court held a claim construction hearing.
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`Upon consideration of the parties’ arguments, and for the reasons stated herein, the Court adopts
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`the constructions set forth below.
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`OVERVIEW OF THE PATENTS
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`Plaintiffs allege Defendants infringe claims 31, 35, 36, 43, 56, and 60 of the ’012 Patent,
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`claims 1, 5, 43, 72, 83, 103, 104, 111, and 125 of the ’107 Patent, claims 1, 31, 59, 69, 72, 73,
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`106, 142, and 145 of the ’760 Patent, and claims 1, 7, 26, 40, and 69 of the ’838 Patent. (Doc.
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`No. 99, at 2.) Plaintiffs contend that “[a]ll four patents share, in substance, a common
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`specification and disclose inventions related to managing devices that connect to a wired
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`network.” (Doc. No. 97, at 1.) Specifically, the ’107 Patent is a continuation of the ’012 Patent,
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`and the ’760 Patent and 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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`2
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`Case 6:15-cv-00163-JDL Document 123 Filed 03/28/16 Page 3 of 22 PageID #: 3580
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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 six 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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`(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”). For purposes of these actions, the Court has ruled that
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`those constructions and rulings are the Court’s constructions and rulings in the present cases.
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`(Doc. No. 117.)
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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
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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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`3
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`Case 6:15-cv-00163-JDL Document 123 Filed 03/28/16 Page 4 of 22 PageID #: 3581
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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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`4
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`Case 6:15-cv-00163-JDL Document 123 Filed 03/28/16 Page 5 of 22 PageID #: 3582
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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
`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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`5
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`Case 6:15-cv-00163-JDL Document 123 Filed 03/28/16 Page 6 of 22 PageID #: 3583
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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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`DISCUSSION
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` The parties dispute the meaning of the following claim terms, which are set forth herein:
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`6
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`Case 6:15-cv-00163-JDL Document 123 Filed 03/28/16 Page 7 of 22 PageID #: 3584
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`“To …” (’107 Patent, Claims 1, 43, 104, 111; ’760 Patent, Claims 1, 69, 73, 142; ’838
`I.
`Patent, Claims 1, 7, 26, 40, 69)
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`Plaintiffs’ Proposal
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`Defendants’ Proposal
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`No construction is
`necessary as the term
`should be afforded its
`plain and ordinary
`meaning.
`
`To the extent that the
`Court finds that
`construction is required,
`Plaintiffs contend that the
`plain and ordinary
`meaning of “to ____”
`in the context of these
`claims is “configured,
`made, or designed to
`_____”
`
`These phrases are not
`means-plus-function
`limitations per 35 U.S.C.
`§ 112, ¶ 6.
`
`
`The action claimed must occur to meet the limitation.
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`In the alternative, the infinitive language of each asserted claim
`should be construed in accordance with 35 U.S.C. § 112, ¶ 6 to
`require the following structure to perform the claimed function(s) as
`follows:
`
`’107 patent, claims 1, 43, 104, 111:
`an isolation power supply, signal transmitter, Manchester
`encoder, and firmware kernel
`
`’760 patent, claims 1, 69, 73 & 142:
`For the recited BaseT Ethernet terminal equipment functions:
`an isolation power supply, signal transmitter, Manchester encoder,
`and firmware kernel
`For the recited central BaseT Ethernet equipment/central
`network equipment functions: isolation power supply; signal
`modulator, Manchester decoder, signal receiver, and firmware kernel
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`’838 patent, claims 1, 7, 26, 40, 69:
`isolation power supply, signal modulator, Manchester decoder,
`signal receiver, and firmware kernel
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`In the briefing, Plaintiffs argued that the “to” phrases should have their plain and ordinary
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`
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`meaning and argued that Defendants’ proposal that the action must occur for the limitation to be
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`met is “nonsensical.” (Doc. No. 97, at 4.) Defendants argued that “[t]he prosecution history
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`unambiguously demonstrates that it was not merely the prior art structure, a path coupled across
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`the contacts of an Ethernet connector, but rather ‘using’ the path to draw current that comprises
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`identifying information that was asserted as the basis for overcoming the prior art.” (Doc. No.
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`100, at 12–13.) In the alternative, Defendants requested that the Court “construe the infinitives
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`as means-plus-function elements in accordance with 35 U.S.C. § 112, ¶ 6.” Id. at 14; see id. at
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`15–21. Plaintiffs argued that “(1) infinitives serve as nouns, not as action verbs, and they can be
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`7
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`Case 6:15-cv-00163-JDL Document 123 Filed 03/28/16 Page 8 of 22 PageID #: 3585
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`used to indicate purpose; (2) apparatus claims cover what a device is, not what it does; (3)
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`functional language in apparatus claims rarely introduces method steps; and (4) Defendants’
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`proposed construction violates the principle of claim differentiation.” (Doc. No. 108, at 1.)
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`Alternatively, Plaintiffs argued that Defendants cannot overcome the presumption against
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`means-plus-function treatment for the terms at issue because “the claimed structures are
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`sufficient for performing the claimed functions.” Id. at 3. At the hearing, it was apparent that
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`the parties’ main dispute is whether the “to” phrases should be construed as means-plus-function
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`terms pursuant to 35 U.S.C. § 112, ¶ 6.
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`A patent claim may be expressed using functional language. See 35 U.S.C. § 112, ¶ 6;
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`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347–49 & n.3 (Fed. Cir. 2015) (en banc in
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`relevant portion). Section 112, Paragraph 6, provides that a structure may be claimed as a “means
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`. . . for performing a specified function” and that an act may be claimed as a “step for performing
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`a specified function.” Masco Corp. v. United States, 303 F.3d 1316, 1326 (Fed. Cir. 2002).
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`But § 112, ¶ 6 does not apply to all functional claim language. There is a rebuttable
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`presumption that § 112, ¶ 6 applies when the claim language includes “means” or “step for”
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`terms, and that it does not apply in the absence of those terms. Masco Corp., 303 F.3d at 1326;
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`Williamson, 792 F.3d at 1348. The presumption stands or falls according to whether one of
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`ordinary skill in the art would understand the claim with the functional language, in the context
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`of the entire specification, to denote sufficiently definite structure or acts for performing the
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`function. See Media Rights Techs., Inc. v. Capital One Fin. Corp., No. 2014-1218, 2015 U.S.
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`App. LEXIS 15767, at *10 (Fed. Cir. Sept. 4, 2015) (§ 112, ¶ 6 does not apply when “the claim
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`language, read in light of the specification, recites sufficiently definite structure” (quotation
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`marks omitted) (citing Williamson, 792 F.3d at 1349; Robert Bosch, LLC v. Snap-On Inc., 769
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`8
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`Case 6:15-cv-00163-JDL Document 123 Filed 03/28/16 Page 9 of 22 PageID #: 3586
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`F.3d 1094, 1099 (Fed. Cir. 2014))); Williamson, 792 F.3d at 1349 (§ 112, ¶ 6 does not apply
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`when “the words of the claim are understood by persons of ordinary skill in the art to have
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`sufficiently definite meaning as the name for structure”); Masco Corp., 303 F.3d at 1326 (§ 112,
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`¶ 6 does not apply when the claim includes an “act” corresponding to “how the function is
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`performed”); Personalized Media Commc’ns, L.L.C. v. International Trade Comm’n, 161 F.3d
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`696, 704 (Fed. Cir. 1998) (§ 112, ¶ 6 does not apply when the claim includes “sufficient
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`structure, material, or acts within the claim itself to perform entirely the recited function . . . even
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`if the claim uses the term ‘means.’” (quotation marks and citation omitted)).
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`Here, Defendants generally identify the following phrases in the asserted claims of the
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`patents-in-suit that use the infinitive “to ___”: “to draw different magnitudes of DC current
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`flow”; “to detect at least two different magnitudes of the current flow”; “to detect current flow”;
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`“to detect different magnitudes of DC current flow”; “to detect distinguishing information within
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`the DC current”; “to distinguish one end device from at least one other end device”; “to
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`distinguish one network object from at least one other network object”; “to distinguish the piece
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`of Ethernet terminal equipment from at least one other piece of Ethernet terminal equipment”;
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`“to distinguish the powered-off end device from at least one other end device”; “to distinguish
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`the piece of BaseT Ethernet terminal equipment from at least one other piece of BaseT Ethernet
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`terminal equipment”; “to control application of at least one electrical condition”; “to control
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`application of the at least one DC power signal”; “to convey information about the piece of
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`Ethernet terminal equipment”; “to convey information about the powered-off end device”; “to
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`provide at least one DC current”; and “to result from at least one condition applied to.” (Doc. No.
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`100, at 11 n.10).
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`9
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`Case 6:15-cv-00163-JDL Document 123 Filed 03/28/16 Page 10 of 22 PageID #: 3587
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`
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`With respect to the ’107 Patent, Defendants claim the “to” infinitives attribute the
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`functions “to draw…”, “to result…”, and “to convey…” to the word “end device.” (Doc. No.
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`100, at 15.) Defendants contend that this is a nonce word that is equivalent to the use of means.
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`Id. In this case, the parties do not dispute that the “end device” claimed in the ’107 Patent was
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`known in the art. What is claimed in the ’107 Patent is not an inventive “end device,” but a
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`known “end device” configured in an inventive way. See ’107 Patent at 22:17–29 (Claim 104).
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`Similarly, with respect to the ’838 and ’760 Patents, Defendants identify “central piece of
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`equipment” and “terminal equipment” as nonce words to carry out the functions of “to detect…”
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`and “to control…”, and “to distinguish…” (Doc. No. 100, at 18–20.) Yet again, Defendants do
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`not dispute that these claim terms were known structures in the art, and indeed previously
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`proposed a construction for “terminal equipment” they contended would be understood by a
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`person of ordinary skill in the art when reading the claims. (Case No. 6:13-cv-880 (“device at
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`which data
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`transmission originates or
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`terminates and
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`that
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`is capable of Ethernet
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`communication”).)2
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`Where a claim term has an understood meaning in the art, it recites sufficient structure.
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`Williamson, 792 F.3d at 1349; CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed.
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`Cir. 2002). In this regard, the instant cases are distinguishable from Williamson. In Williamson,
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`the presumption against means-plus-function claiming was overcome where the patent claimed a
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`structural-sounding word (“distributed learning control module”) that had no settled meaning in
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`2 Defendants’ expert repeatedly discusses the “Ethernet terminal equipment” and “end device” interchangeably and
`without any question as to the understanding of these terms in the art. See, e.g., Seifert Decl. at ¶¶ 24, 131, 132 (“In
`the real-world environment for Ethernet data terminal equipment (e.g., the end devices claimed in the Patents-in-
`Suit), any DC current drawn by the device will always correlate to a draw of power by the device, related to that
`current.” … “Claim 103 of the ’107 patent and claims 72 and 145 of the ’760 patent address the claimed Ethernet
`terminal equipment. Claim 104 calls for an “end device.” Both are claimed to draw DC current as supported by the
`specification.” … “The claims are unambiguous with respect to the meaning of ‘powered-off Ethernet terminal
`equipment’ and ‘powered off end device.’”)
`
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`10
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`Case 6:15-cv-00163-JDL Document 123 Filed 03/28/16 Page 11 of 22 PageID #: 3588
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`the art. Williamson, 792 F.3d at 1351. Here, the claimed “end device” or “terminal equipment”
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`indisputably had known meaning in the art and in the context of the patents-in-suit. See ’107
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`Patent Abstract, ’838 Patent Abstract, ’760 Patent Abstract. Moreover, Williamson did not do
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`away with the rebuttable presumption that terms without means are not subject to § 112, ¶ 6, but
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`merely found that presumption should not be characterized as “strong.” Id. at 1349. Here,
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`Defendants have failed to overcome the presumption against means-plus-function claiming
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`because they have failed to show that the terms in question do not recite sufficient structure.
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`Therefore, the Court finds these terms are not governed by 35 U.S.C. § 112, ¶ 6.
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`Having found the infinitive phrases not subject to § 112, ¶ 6, the Court turns to the
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`parties’ dispute regarding whether the action claimed must be performed to meet the limitation.
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`Here, Defendants contend that because the claims do not recite terms such as “configured, made,
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`or designed to,” they must actually carry out the action claimed to be met. (Doc. No. 100, at 12.)
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`Yet, the absence of such language in the claim does not unambiguously mean the claims require
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`actual performance. Indeed, it is often the case that claims recite functional language and
`
`describe what apparatuses do without claiming use of the apparatus. See, e.g., Microprocessor
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`Enhancement Corp. v. Tex. Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008) (noting that
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`“functional language” is permissible in claims); Yodlee, Inc. v. CashEdge, Inc., No. C 05-01550
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`SI, 2006 WL 3456610 (N.D. Cal. Nov. 29, 2006) (Illston, J.) (“[The claims at issue] describe
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`what the apparatuses do, when used a certain way. They do not claim use of the apparatuses”).
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`In addition, although Defendants cite Typhoon Touch to argue that “functional limitations
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`are requirements that cannot be written out of the claims by construing them as mere
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`capabilities,” that case is distinguishable here. In Typhoon Touch, the issue was related to the
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`distinction between capability and configuration, whereas here, the distinction between
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`11
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`Case 6:15-cv-00163-JDL Document 123 Filed 03/28/16 Page 12 of 22 PageID #: 3589
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`configuration and actual performance is at issue. See Typhoon Touch Techs., Inc. v. Dell, Inc.,
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`No. 6:07-CV-546, Doc. No. 437, at 12 (E.D. Tex. July 23, 2009), aff’d Typhoon Touch Techs.,
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`Inc. v. Dell, Inc., 659 F.3d 1376, 1381-82 (Fed. Cir. 2011) (“We discern no error in the district
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`court’s view that this term requires that the device is programmed or configured to perform the
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`stated function.”)
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`Defendants primarily rely on the prosecution history to argue that the patentee
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`distinguished “using the at least one path…” and “to draw current via the at least one path…” to
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`overcome the prior art, and therefore that the claims require actual use. (Doc. No. 100, at 12–13.)
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`In the prosecution history, the patentee made the following statements: “although Davis et al.
`
`note usage of an Ethernet network, Davis et al. are completely silent with respect to the at least
`
`one path coupled across contacts used to carry Ethernet communication signals,” and “Blair et al.
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`are unable to cure the deficiencies of Davis et al. and are completely silent with regard to using
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`the recited contacts…” (Doc. No. 100-10, Jan. 15, 2014 Amendment at 26-27 (CMS050950-51).)
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`While it is clear that the patentee distinguished the claims in view of the prior art with these
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`remarks, in the full context of the statements made, it is also clear that the patentee indisputably
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`distinguished the claims in light of the claimed structure: “path coupled across contacts…” Id.
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`Indeed, there is no apparent significance imparted to the patentee’s use of the word “using” other
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`than that the prior art Davis clearly noted “usage of an Ethernet network.” Given that the concept
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`of “usage” was also discussed in the prior art, it is not clear the patentee was distinguishing the
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`prior art based on usage. What is more likely is that the significance of these statements lies in
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`the distinguished structure identified in the patentee’s remarks. Moreover, the prosecution
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`history contains no definitive statements requiring actual performance. Accordingly, the Court
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`finds the prosecution history unpersuasive in this regard.
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`Case 6:15-cv-00163-JDL Document 123 Filed 03/28/16 Page 13 of 22 PageID #: 3590
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`Moreover, the Court finds the intrinsic record counsels against a construction requiring
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`actual performance. For example, claim 1 of the ’107 Patent recites “to draw different
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`magnitudes of DC current flow…” ’107 Patent at 17:10–25 (Claim 1). Claim 12 of the ’107
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`Patent, which depends from Claim 1, recites that “the piece of Ethernet terminal equipment is
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`actually drawing the DC current via the at least one path.” ’107 Patent at 17:60–62 (Claim 12)
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`(emphasis added). Here, where the dependent claim recites the further limitation of actually
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`drawing the current, the doctrine of claim differentiation weighs in favor of finding that the
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`independent claim which uses the infinitive to phrase—“to draw different magnitudes of DC
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`current flow…”—does not require the action recited be actually performed. See Phillips, 415
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`F.3d at 1315 (“[T]he presence of a dependent claim that adds a particular limitation gives rise to
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`a presumption that the limitation in question is not present in the independent claim.”); 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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`(“It is axiomatic that a dependent claim cannot be broader than the claim from which it depends .
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`. . A dependent claim narrows the claim from which it depends.”); Enzo Biochem, Inc. v. Applera
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`Corp., 599 F.3d 1325, 1334 (Fed. Cir. 2010) (“A person of ordinary skill would presume that a
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`structure recited in a dependent claim will perform a function required of that structure in an
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`independent claim.”).
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`For these reasons, the Court rejects Defendants’ proposal and finds that the “to” phrases
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`do not require that the action claimed must occur to meet the limitation. Because the Court has
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`expressly rejected the Defendants’ proposal that the action claimed must occur to meet the
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`limitation and thereby resolved the parties’ claim scope dispute, the Court finds the term “to…”
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`needs no further construction other than its plain and ordinary meaning.
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`Case 6:15-cv-00163-JDL Document 123 Filed 03/28/16 Page 14 of 22 PageID #: 3591
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`II.
`“current” / “current flow” (’107 Patent, Claims 1, 72, 104; ’760 Patent, Claims 1, 59,
`73; ’838 Patent, Claims 1, 7, 26, 69)
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`Plaintiffs’ Proposal
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`Defendants’ Proposal
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`No construction necessary, as the terms should
`be afforded their plain and ordinary meaning.
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`To the extent that the Court finds that
`construction is required, Plaintiffs contend that
`“current” and “current flow” mean the same
`thing and the plain and ordinary meaning of
`“current” and “current flow” is “a flow of
`electric charge”
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`
`
`“current” means flow of electrons.
`
`“current” and “current flow” have different
`meanings; “[f]or the purpose of drawing DC
`current” describes the features of the path and
`“different magnitudes of DC current flow”
`requires that actual current must be present.
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`Dependent claim 72 of the ’107 patent is
`indefinite for lack of antecedent basis.
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`The primary dispute between the parties is whether the terms “current” and “current
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`flow” have different meanings in the patents-in-suit. Plaintiffs argue that “[i]n this case, the
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`patents use the terms ‘current’ and ‘current flow’ interchangeably.” (Doc. No. 97, at 8.)
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`Defendants respond that “[t]he claims use ‘current’ to define structure while ‘current flow’
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`accompanies functional operations that the claimed invention is to perform.” (Doc. No. 100, at
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`8.)
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`As an initial matter, the parties do not dispute the meaning of the term “current” as the
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`“flow of electrons/electric charge.” (Doc. No. 100, at 7.) The only dispute is whether the terms
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`“current” and “current flow” have different meanings. Defendants’ argument is similar to their
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`position regarding the infinitive “to…”, only here, Defendants argue that the term “current flow”
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`is functional and therefore must be construed to include the further limitation of its operational
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`use. (Doc. No. 100, at 9.) Thus, Defendants’ propose that the term “current flow,” “requires the
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`actual presence of current flowing.” (Doc. No. 100, at 8.)
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`Here, the claims and the specification demonstrate that any distinction between “DC
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`current” and “DC current flow” is a distinction without a difference. For example, claim 1 of the
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`14
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`Case 6:15-cv-00163-JDL Document 123 Filed 03/28/16 Page 15 of 22 PageID #: 3592
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`’107 Patent, recites “at least one path for the purpose of drawing DC current” as well as a “piece
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`of Ethernet terminal equipment to draw different magnitudes of DC current flow via the at least
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`one path.” ’107 Patent at 17:11–25 (Claim 1); see also ’012 Patent at 7:17–21 (“High pass filters
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`60 and 62 block DC current flow…”), 7:40–42 (“High pass filter 86 blocks DC current…”),
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`7:48–50 (“High pass filter 100 blocks the DC current that flows from central module…”), 8:7–8
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`(“An interruption in the flow of current is detected…”), 8:52–53 (“it is within the scope of the
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`invention to source current from the central module and alter the flow of current from within the
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`remote module…”), 12:32–38 (“By way of a specific example, the high frequency information in
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`the embodiment of FIGS. 4-8 operates in the range of about 10 Mb/s while the encoded signal
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`sent from remote module l6a to central module 15a operates in the range of about 1200 bits per
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`second. In other words, the altered current flow has changes and each change is at least 833
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`microseconds in duration…”). Tellingly, both parties agree that “current” includes by definition
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`the concept of “flow.”
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`Defendants again try to make a distinction between these terms based on operational use
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`through the prosecution history. (Doc. No. 100, at 9.) Here, Defendants cite to the fact that
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`“flow” was added during prosecution to the phrase “different magnitudes of current flow,” but
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`not for “at least one path for the purpose of drawing DC current.” (Doc. No. 100, at 9, citing
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`Doc. No. 100-