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Theta IP LLC v. Samsung Electronics Co., Ltd.

United States District Court, E.D. Texas, Marshall Division

June 6, 2017

THETA IP LLC, Plaintiff,
v.
SAMSUNG ELECTRONICS CO., LTD., and SAMSUNG ELECTRONICS AMERICA, INC. Defendants.

          MEMORANDUM AND ORDER ON CLAIM CONSTRUCTION

          ROY S. PAYNE UNITED STATES MAGISTRATE JUDGE.

         On May 23, 2017, the Court held a hearing to determine the proper construction of disputed claim terms in United States Patents No. 7, 010, 330 and 9, 331, 728. Having reviewed the arguments made by the parties at the hearing and in their claim construction briefing [Dkt. # 63, 69 & 71], [1] having considered the intrinsic evidence, and having made subsidiary factual findings about the extrinsic evidence, the Court issues this Claim Construction Memorandum and Order. See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005); Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 841 (2015).

         TABLE OF CONTENTS

         I. BACKGROUND ............................................................................................................ 3

         II. LEGAL PRINCIPLES ................................................................................................. 4

         III. THE PARTIES' STIPULATED TERMS .................................................................. 7

         IV. CONSTRUCTION OF DISPUTED TERMS ............................................................ 7

         A. “dynamically adjust[ed]” ............................................................................................ 7

         B. “impedance” .............................................................................................................. 15

         C. “a component in the receiver signal path” ................................................................ 16

         D. “scaling . . . impedance” ........................................................................................... 18

         E. “interfering signals” .................................................................................................. 24

         F. “interferer signal” ....................................................................................................... 25

         G. “substantially the desired signal with the interferer signal reduced by filtering from the input signal” ............................................................................................... 25

         H. “variably changing . . . impedance” .......................................................................... 32

         I. “at least a component in the receiver path” ................................................................ 36

         V. CONCLUSION ............................................................................................................ 40

         I. BACKGROUND

         Plaintiff Theta IP LLC (“Plaintiff” or “Theta”) has alleged infringement of United States Patents No. 7, 010, 330 (“the '330 Patent”) and 9, 331, 728 (“the '728 Patent”) (collectively, the “patents-in-suit”) by Defendants Samsung Electronics Co., Ltd. and Samsung Electronics America, LLC (“Defendants” or “Samsung”). Plaintiff submits that “[t]he '330 and '728 patents describe and claim systems and methods to achieve reduced power dissipation in wireless transceivers.” [Dkt. # 63] at 2. Plaintiff has asserted Claims 29 and 30 of the '330 Patent and Claims 1, 2, 3, 4, 6, and 7 of the '728 Patent. Id.

         The '330 Patent, titled “Power Dissipation Reduction in Wireless Transceivers, ” issued on March 7, 2006, and bears an earliest priority date of March 1, 2003. The '728 Patent issued on May 3, 2016, and is a continuation of the '330 Patent. The named inventor of both of the patents-in-suit is Yannis Tsividis. The Abstract of the '330 Patent states:

Methods and circuits for reducing power dissipation in wireless transceivers and other electronic circuits and systems. Embodiments of the present invention use bias current reduction, impedance scaling, and gain changes either separately or in combination to reduce power dissipation. For example, bias currents are reduced in response to a need for reduced signal handling capability, impedances are scaled thus reducing required drive and other bias currents in response to a strong received signal, or gain is increased and impedances are scaled in response to a low received signal in the presence of no or weak interfering signals.

         Shortly before the start of the May 23, 2017 hearing, the Court provided the parties with preliminary constructions with the aim of focusing the parties' arguments and facilitating discussion. Those preliminary constructions are set forth below within the discussion for each term.

         II. LEGAL PRINCIPLES

         “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, 415 F.3d at 1312 (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). Claim construction is clearly an issue of law for the court to decide. Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). “In some cases, however, the district court will need to look beyond the patent's intrinsic evidence and to consult extrinsic evidence in order to understand, for example, the background science or the meaning of a term in the relevant art during the relevant time period.” Teva, 135 S.Ct. at 841 (citation omitted). “In cases where those subsidiary facts are in dispute, courts will need to make subsidiary factual findings about that extrinsic evidence. These are the ‘evidentiary underpinnings' of claim construction that we discussed in Markman, and this subsidiary factfinding must be reviewed for clear error on appeal.” Id. (citing 517 U.S. 370).

         To determine the meaning of the claims, courts start by considering the intrinsic evidence. See Phillips, 415 F.3d at 1313; see also C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc'ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the specification, and the prosecution history. See Phillips, 415 F.3d at 1314; C.R. Bard, 388 F.3d at 861. Courts give claim terms their ordinary and accustomed meaning as understood by one of ordinary skill in the art at the time of the invention in the context of the entire patent. Phillips, 415 F.3d at 1312-13; accord Alloc, Inc. v. Int'l Trade Comm'n, 342 F.3d 1361, 1368 (Fed. Cir. 2003).

         The claims themselves provide substantial guidance in determining the meaning of particular claim terms. Phillips, 415 F.3d at 1314. First, a term's context in the asserted claim can be very instructive. Id. Other asserted or unasserted claims can aid in determining the claim's meaning because claim terms are typically used consistently throughout the patent. Id. Differences among the claim terms can also assist in understanding a term's meaning. Id. For example, when a dependent claim adds a limitation to an independent claim, it is presumed that the independent claim does not include the limitation. Id. at 1314- 15.

         “[C]laims ‘must be read in view of the specification, of which they are a part.'” Id. at 1315 (quoting Markman, 52 F.3d at 979 (en banc)). “[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.'” Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); accord Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). This is true because a patentee may define his own terms, give a claim term a different meaning than the term would otherwise possess, or disclaim or disavow the claim scope. Phillips, 415 F.3d at 1316. In these situations, the inventor's lexicography governs. Id. The specification may also resolve the meaning of ambiguous claim terms “where the ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of the claim to be ascertained from the words alone.” Teleflex, 299 F.3d at 1325. But, “[a]lthough the specification may aid the court in interpreting the meaning of disputed claim language, particular embodiments and examples appearing in the specification will not generally be read into the claims.” Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); accord Phillips, 415 F.3d at 1323.

         The prosecution history is another tool to supply the proper context for claim construction because a patent applicant may also define a term in prosecuting the patent. Home Diagnostics, Inc., v. Lifescan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the specification, a patent applicant may define a term in prosecuting a patent.”). “[T]he prosecution history (or file wrapper) limits the interpretation of claims so as to exclude any interpretation that may have been disclaimed or disavowed during prosecution in order to obtain claim allowance.” Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985).

         Although extrinsic evidence can be useful, it is “less significant than the intrinsic record in determining the legally operative meaning of claim language.” Phillips, 415 F.3d at 1317 (citations and internal quotation marks omitted). Technical dictionaries and treatises may help a court understand the underlying technology and the manner in which one skilled in the art might use claim terms, but technical dictionaries and treatises may provide definitions that are too broad or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert testimony may aid a court in understanding the underlying technology and determining the particular meaning of a term in the pertinent field, but an expert's conclusory, unsupported assertions as to a term's definition are entirely unhelpful to a court. Id. Generally, extrinsic evidence is “less reliable than the patent and its prosecution history in determining how to read claim terms.” Id.

         III. THE PARTIES' STIPULATED TERMS

         The parties did not reached agreement on any constructions in their February 28, 2017 Joint Claim Construction and Pre-Hearing Statement. [Dkt. # 50] at 1. Plaintiff's opening brief, however, states that the parties have agreed that “the terms ‘a first signal strength indicator circuit' and ‘an output-level-sensing circuit' from the '330 patent should be given their plain and ordinary meanings.” [Dkt. # 63] at 2. This agreement is also set forth in the parties' May 9, 2017 Joint Claim Construction Chart. [Dkt. # 73] at A1-A2.

         IV. CONSTRUCTION OF DISPUTED TERMS

         A. “dynamically adjust[ed]”

Plaintiff's Proposed Construction

Defendants' Proposed Construction

Plain and ordinary meaning. Alternatively, “changing during operation”

“adjust[ed] in a continuous manner, as opposed to discrete steps”

[Dkt. # 50-1] at 1, 17; [Dkt. # 63] at 5; [Dkt. # 69] at 1; [Dkt. # 71] at 1; [Dkt. # 73] at A-1. The parties submit that this term appears in Claims 23, 26, 29, and 30 of the '330 Patent. Id.

         Shortly before the start of the May 23, 2017 hearing, the Court provided the parties with the following preliminary construction: “adjust[ed] during operation without being limited to whether a threshold has been crossed.”

         (1) The Parties' Positions

         Plaintiff argues: “A person of ordinary skill in the art would understand that a first parameter, such as signal strength, is identified during operation of the system and would thus further understand that an adjustment/change of a second parameter based on or in response to the identification of the first parameter, such as a change in impedance based on or in response to the identified signal strength, likewise occurs during operation of the system.” [Dkt. # 63] at 6. Plaintiff further argues that Defendants' proposal of “continuous manner, as opposed to discrete steps” is unsupported and is contrary to examples disclosed in the specification, such as in Figure 13. Id. at 6-7.

         Defendants respond that during prosecution, “[i]n the process of making [a] disclaimer, the patentee clearly defined the term ‘dynamically' to mean continuous as opposed to discrete.” [Dkt. # 69] at 1. Defendants also argue that Plaintiff is misinterpreting the description of Figure 13 because “Figure 13 merely shows a resulting power dissipation rather than any type of adjustment of a parameter (impedance or gain) to a discrete set of levels.” Id. at 5.

         Plaintiff replies that “dynamically” as used in the prosecution history “refers to making adjustments without reliance on a threshold. Theta's comments note that ‘continuous behavior' is commonly characterized as dynamic; but this does not necessitate an understanding that ‘dynamic' must mean ‘continuous.'” [Dkt. # 71] at 1. Plaintiff also argues that the patentee “pointed out that the distinction between the claim and [the] Clark [reference] is not based on ‘dynamically' changing-but simply on making any change (i.e., based on the claimed term ‘changing' rather than the combined claimed terms ‘dynamically changing'[).]” Id. at 2.

         At the May 23, 2017 hearing, Defendants argued that the prosecution history repeatedly described “dynamically” in terms of levels rather than in terms of time. Defendants reiterated that the patentee referred to “dynamically” as being “continuous, ” which Defendants argue means being able to select any value within an operable range of values. Defendants concluded that the ultimate question of whether the adjustability is “continuous” is a factual question for expert witnesses to opine upon. Plaintiff responded that the patentee used “dynamically” to refer to making changes in response to changing conditions. Plaintiff had no objection to the Court's preliminary construction.

         (2) Analysis

         Claim 29 of the '330 Patent, for example, recites (emphasis added):

29. A wireless transceiver integrated circuit comprising:
a receiver comprising a signal path, the signal path comprising:
a first circuit; and a second circuit having an input coupled to an output of the first circuit; and
a first signal strength indicator circuit coupled to the signal path, and
configured to determine a first signal strength;
wherein a gain of the first circuit is configured to be dynamically adjusted in response to the first signal strength, and
wherein an impedance in the second circuit is configured to be dynamically adjusted in response to the first signal strength.

         Surrounding claim language thus provides context suggesting that “dynamically” refers to adjustment being responsive to the “first signal strength” that is determined by an indicator circuit coupled to the signal path. See Phillips, 415 F.3d at 1314 (“the context in which a term is used in the asserted claim can be highly instructive”).

         Also, the specification contrasts “dynamic” with “fix[ed]” when describing Figure 13:

FIG. 13 is an example shown [sic] how power may be saved as a function of time by employing one or more of these methods consistent with embodiments of the present invention. Power is plotted along a Y-axis 1304 as a function of time along X-axis 1302. Conventional worst case design would fix power dissipation at line 1310. As can be seen, dynamic power dissipation 1320 under the control of variable gains, impedances, biasing, or combination thereof, allows for a lower average power 1330 as compared to the power dissipated 1310 by the conventional design.

'330 Patent at 11:30-39 (emphasis added).

         Defendants have relied extensively upon the prosecution history of the '728 Patent, asserting that the patentee defined “dynamically” or otherwise disclaimed claim scope.

         As a threshold matter, Defendants have not shown that any purported disclaimer in the prosecution history of the '728 Patent can be applied to the recitals of “dynamically” in the parent '330 Patent, which issued several years prior to the '728 Patent prosecution history cited by Defendants. The authorities cited by Defendants involved disclaimers applied from a parent patent to a child patent, or between sibling patents, not from a child patent to a parent patent. See Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003) (finding disclaimer applicable to child patent because “we presume, unless otherwise compelled, that the same claim term in the same patent or related patents carries the same construed meaning”); see also Alloc, 342 F.3d at 1372 (similar); Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 980 (Fed. Cir. 1999) (“When multiple patents derive from the same initial application, the prosecution history regarding a claim limitation in any patent that has issued applies with equal force to subsequently issued patents that contain the same claim limitation.”) (emphasis added).

         Defendants rely primarily upon Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1349-50 (Fed. Cir. 2004), but although Microsoft applied a disclaimer to a related patent that issued prior to the prosecution history that included the disclaimer, that related patent was a sibling (or, arguably, a cousin), not a parent. Defendants presumably are asserting that this is a distinction without a difference, but it is noteworthy that whereas precedent supports applying a disclaimer to a child patent, such as cited above, Defendants have cited no binding or persuasive precedent that applied a disclaimer to a parent patent, and the Court finds none.

         One of the authorities cited by Defendants nonetheless states that later prosecution history can be “relevant” to earlier claims. Absolute Software, Inc. v. World Computer Sec. Corp., No. A-09-CV-142-LY, 2014 WL 496879, at *8 (W.D. Tex. Feb. 6, 2014). Also, Microsoft noted:

We rejected the argument that the patentee was bound, or estopped, by a statement made in connection with a later application on which the examiner of the first application could not have relied. We did not suggest, however, that such a statement of the patentee as to the scope of the disclosed invention would be irrelevant. Any statement of the patentee in the prosecution of a related application as to the scope of the invention would be relevant to claim construction, and the relevance of the statement made in this instance is enhanced by the fact that it was made in an official proceeding in which the patentee had every incentive to exercise care in characterizing the scope of its invention.

Microsoft, 357 F.3d at 1350 (discussing Georgia-Pacific Corp. v. United States Gypsum Co., 195 F.3d 1322 (Fed. Cir. 1999)).

         Even when the prosecution history of the '728 Patent is considered, however, the patentee distinguished the “Clark” reference on the basis that “dynamic” adjustment “uses no threshold” and occurs “as SNR [(signal-to-noise ratio)] varies”:

Clark in U.S. patent 5, 001, 776 (hereinafter “Clark”) is teaching a system with a “High current mode” and a “Low current mode”. This is shown in his Fig. 2. Also, Column 2, line 7 discusses a “threshold” which is always necessary in any so called “two-level” system. This is also discussed in the Abstract, stating that when the quality of the desired signal is low and the strength of all received signals is also low, or when the quality of the desired signal is above a threshold, the receiver operates in a lower current mode to conserve power and maximize battery lifetime. By contrast, Tsividis uses no threshold; rather, the control adjusts dynamically the power dissipation as the received external signal's SNR varies as set forth in all independent claims in the case as now amended.

Aug. 27, 2014 Amendment [Dkt. # 69-10] at 8 (emphasis modified). The patentee thus used “dynamically” with reference to a varying signal-to-noise ratio as contrasted with merely evaluating whether the quality of the desired signal exceeded a threshold. A review of Clark itself further reinforces that the patentee was distinguishing Clark as disclosing a signal quality threshold rather than dynamic adjustments based on signal strength ratios. See, e.g., U.S. Patent 5, 001, 776 [Dkt. # 7] at 2:6-8. Likewise, the patentee further stated:

For that purpose, consider for example the 1st row of Clark's Table 1 that teaches that when the desired signal is low and the received signal is low, the Clark system operates in a low bias. By contrast, as Tsividis teaches, the relation between the desired signal and the interference is checked and when the desired signal is larger than the interference signal (even if both are low) then the power dissipation decreases, however, if the desired signal is smaller than the interference signal (even if both are low) then the power dissipation increases. The same is possible in the case described in the 4th row of Clark when both the desired signal and the interference are high, it is still possible that the desired signal is higher than the interference or vice versa, leading to different operation of the circuit, and therefore not teaching the same case.

Aug. 27, 2014 Amendment [Dkt. # 69-10] at 9 (emphasis added).

         Defendants have emphasized statements by the patentee referring to “continuous behavior” as the basis for ...


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