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Lites Out, LLC v. Outdoorlink, Inc.

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

October 30, 2017

LITES OUT, LLC, Plaintiff,
v.
OUTDOORLINK, INC.; OUTDOORLINK SERVICES, INC. Defendant.

          CLAIM CONSTRUCTION MEMORANDUM AND ORDER

          AMOS L. MAZZANT, UNITED STATES DISTRICT JUDGE.

         On October 4, 2017, the Court held an oral hearing to determine the proper construction of the disputed claim terms in United States Patent No. 7, 501, 941 (the “'941 Patent”), United States Patent No. 8, 497, 773 (the “'773 Patent”), and United States Patent No. 8, 912, 898 (the “'898 Patent”) (collectively the “Asserted Patents”). The Court has considered the parties' claim construction briefing and arguments. (Dkt. #30, 40, and 41). Based on the intrinsic and extrinsic evidence, the Court construes the disputed terms in this Memorandum and Order. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831 (2015).

         BACKGROUND

         Lites Out, LLC (“Lites Out”) asserts the Asserted Patents against Outdoorlink, Inc. and Outdoorlink Services, Inc. (collectively “Outdoorlink”). The '898 Patent and '773 Patent are based on continuation applications of the '941 Patent. The specifications of the three Asserted Patents are substantially similar.[1] The asserted claims include: (1) claims 1, 4, 9, 11, 13, 15, 17, 19, 22, and 24 of the '941 Patent; (2) claims 1, 4, 7-10, 17-19, and 37 of the '773 Patent; and (3) claims 1, 3, 7, 8, 9, 16-18, 20, and 22 of the '898 Patent.

         The Asserted Patents generally relate to monitoring and managing advertising devices (e.g., billboards or electronic displays). The prior art techniques for monitoring and managing advertising devices are described as requiring periodic physical inspections of the operating conditions of the advertising devices. Such operating conditions may include, for example, the conditions of billboard lights. '941 Patent 1:5-25, 2:37-40. The Abstract of the '941 Patent provides:

In one general aspect, a request to determine a status of a first of a plurality of advertising devices is received. The advertising devices are spatially separated. Operating conditions of the first advertising device are identified. The status of the first advertising device is determined based, at least in part, on the operating conditions. A presentation including information indicating the status of the first advertising device is transmitted.

'941 Patent Abstract.

         More specifically, a system is disclosed in which a plurality of advertising devices 102 are connected through a network 108 to a server 104 and a client 106. Id. at 1:65-2:34, Figure 1. Via electronic communication, the advertising devices can be monitored and managed remotely. Id. at 2:4-25. The operating conditions and status of the advertising device may be collected by the server 104 and provided from the server 104 to the client 106 through a presentation that includes information indicating the status of the advertising device. Id. at 1:34-35, 3:51-59, 6:36-37, 7:43-53, Figure 1, Figure 3.

         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 v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start by considering the intrinsic evidence. Id. at 1313; 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. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at 861. The general rule-subject to certain specific exceptions discussed infra-is that each claim term is construed according to its 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 patent. Phillips, 415 F.3d at 1312-13; Alloc, Inc. v. Int'l Trade Comm'n, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (“There is a heavy presumption that claim terms carry their accustomed meaning in the relevant community at the relevant time.”) (vacated on other grounds).

         “The claim construction inquiry. . . begins and ends in all cases with the actual words of the claim.” Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998). “[I]n all aspects of claim construction, ‘the name of the game is the claim.'” Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998)). A term's context in the asserted claim can be instructive. Phillips, 415 F.3d at 1314. Other asserted or unasserted claims can also 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. (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (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.'” 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). 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)); see also Phillips, 415 F.3d at 1323. “[I]t is improper to read limitations from a preferred embodiment described in the specification-even if it is the only embodiment-into the claims absent a clear indication in the intrinsic record that the patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).

         The prosecution history is another tool to supply the proper context for claim construction because, like the specification, the prosecution history provides evidence of how the U.S. Patent and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415 F.3d at 1317. However, “because the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes.” Id. at 1318; see also Athletic Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996) (ambiguous prosecution history may be “unhelpful as an interpretive resource”).

         Although extrinsic evidence can also 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 (quoting C.R. Bard, Inc., 388 F.3d at 862). 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. The Supreme Court recently explained the role of extrinsic evidence in claim construction:

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. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546 (1871) (a patent may be “so interspersed with technical terms and terms of art that the testimony of scientific witnesses is indispensable to a correct understanding of its meaning”). 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 fact finding must be reviewed for clear error on appeal.

Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 841 (2015).

         A. Departing from the Ordinary Meaning of a Claim Term

         There are “only two exceptions to [the] general rule” that claim terms are construed according to their plain and ordinary meaning: “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 in the specification or during prosecution.”[2] Golden Bridge Tech., Inc. v. Apple Inc., 758 F.3d 1362, 1365 (Fed. Cir. 2014) (quoting Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)); see also GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“[T]he specification and prosecution history only compel departure from the plain meaning in two instances: lexicography and disavowal.”). The standards for finding lexicography or disavowal are “exacting.” GE Lighting Solutions, 750 F.3d at 1309.

         To act as his own lexicographer, the patentee must “clearly set forth a definition of the disputed claim term, ” and “clearly express an intent to define the term.” Id. (quoting Thorner, 669 F.3d at 1365); see also Renishaw, 158 F.3d at 1249. The patentee's lexicography must appear “with reasonable clarity, deliberateness, and precision.” Renishaw, 158 F.3d at 1249.

         To disavow or disclaim the full scope of a claim term, the patentee's statements in the specification or prosecution history must amount to a “clear and unmistakable” surrender. Cordis Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner, 669 F.3d at 1366 (“The patentee may demonstrate intent to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.”). “Where an applicant's statements are amenable to multiple reasonable interpretations, they cannot be deemed clear and unmistakable.” 3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013).

         B. Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA)[3]

         Patent claims must particularly point out and distinctly claim the subject matter regarded as the invention. 35 U.S.C. § 112, ¶ 2. A claim, when viewed in light of the intrinsic evidence, must “inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2129 (2014). If it does not, the claim fails § 112, ¶ 2 and is therefore invalid as indefinite. Id. at 2124. Whether a claim is indefinite is determined from the perspective of one of ordinary skill in the art as of the time the application for the patent was filed. Id. at 2130. As it is a challenge to the validity of a patent, the failure of any claim in suit to comply with § 112 must be shown by clear and convincing evidence. Id. at 2130 n.10. “[I]ndefiniteness is a question of law and in effect part of claim construction.” ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012).

         When a term of degree is used in a claim, “the court must determine whether the patent provides some standard for measuring that degree.” Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374, 1378 (Fed. Cir. 2015) (quotation marks omitted). Likewise, when a subjective term is used in a claim, “the court must determine whether the patent's specification supplies some standard for measuring the scope of the [term].” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1351 (Fed. Cir. 2005); accord Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014) (citing Datamize, 417 F.3d at 1351).

         AGREED TERMS

         The parties agreed to the following terms:

Term

Agreed Construction

“data processing apparatus”

('941 Patent: Claim 13)

“a data processing apparatus”

“configuration file”

('773 Patent: Claims 1, 18)

“file including parameters, variables, policies, algorithms, instructions, settings, directives, or other technical information used for managing the advertising device”

(Dkt. #54-1 at p. 3; Dkt. #63 at p. 1.)

         DISPUTED TERMS

         1. “operating conditions/operating parameters” ('941 Patent: Claims 1, 4, 11, 13, 15, 17, 19; '773 Patent: Claims 1, 4, 7, 8, 9, 17, 18; '898 Patent: Claims 1, 3, 8, 16, 17, 18)

Lites Out's Construction

Outdoorlink's Construction

No construction necessary. Plain and ordinary meaning.

In the alternative: information or instruction concerning the operation of a device

Information provided by the advertising device/billboard describing whether the device is working as expected

         The primary disputes are whether it is proper to limit the term to “describing whether the device is working as expected” and limit the term to “information provided by the advertising device.”

         Positions of the Parties

         Lites Out objects to Outdoorlink's inclusion of “describing whether the device is working as expected.” Lites Out contends this conflicts with '941 Patent dependent claim 10 which claims that the “operating conditions comprise a schedule for activating and deactivating the advertising device.” Lites Out contends that an operating condition that comprises a “schedule” directly conflicts with Outdoorlink's construction. Lites Out contends that a schedule does not expressly describe whether the device is working as expected, yet operating conditions can include a schedule. (Dkt. #30 at pp. 3-4.) Lites Out contends that a schedule of when lights are supposed to turn on and turn off does not indicate if they actually did, and thus does not show whether the device is working as expected. (Dkt. #41 at p. 1.)

         Lites Out further contends that in the specification, “operating conditions” is not limited to describing whether the device is working as expected: “status of the first advertising device is determined based, at least in part, on the operating conditions” ('941 Patent 1:32-34) and an interface presents “device information associated with advertising devices, including operating conditions.” ('941 Patent 4:16-18.) Lites Out contends that thus operating conditions are broader and can provide other information about the advertising device, even neutral information such as schedule information. (Dkt. #30 at p. 4.)

         Lites Out also objects to Outdoorlink's requirement that the information is “provided by the advertising device.” Lites Out contends that the specification is clear that operating conditions can also be sent to the advertising device. Lites Out contends that the “schedule” of claim 10 is an example where operating conditions, including a schedule for activating and deactivating the device, are transmitted to the device. (Dkt. #30 at p. 5.) Lites Out also contends that limiting operating conditions to information provided by the advertising device conflicts with '941 Patent dependent claim 8. Lites Out contends that claim 8 has the extra step of receiving a request to update the operating conditions of the first device and then transmitting a command, while claim 10 recites that the operating conditions comprise a schedule. Lites Out states that if the operating conditions are updated, and the update includes a schedule, then the operating conditions can be sent to the device. (Dkt. #41 at p. 2.)

         Outdoorlink contends that its construction provides context for the otherwise ambiguous term “operating conditions/operating parameters.” Outdoorlink contends that the specification passage at 4:16-18 cited by Lites Out is not referring to “operating conditions” but rather to “information” provided from a graphical user interface. Outdoorlink contends that this passage does not indicate that “operating conditions” are broader:

In some embodiments, GUI 116 presents device information associated with advertising devices 102, including operating conditions, and associated buttons and receives commands from the user of client 106 via one of the input devices. This information may be presented in tabular, graphical, and any other suitable format.

'941 Patent 4:13-21.

         As to claim 10 and its use of “schedule, ” Outdoorlink contends that its construction does not exclude scheduling information from “operating conditions.” Outdoorlink contends that, rather, when a schedule has been set for activating and deactivating the device, determining whether the device is working as expected naturally includes determining whether the activation/deactivation schedule is being followed. (Dkt. #40 at pp. 5-6.)

         Outdoorlink contends that Lites Out's position that “operating conditions/operating parameters” must include information “sent to” the advertising device conflicts with the claims as none of the claims of the patents-in-suit are directed to an embodiment in which such information is sent to the device. Outdoorlink contends that '941 Patent claim 1 references “receiving operating conditions from a plurality of advertising devices.” '941 Patent claim 1. Outdoorlink notes that Lites Out contends that the “schedule” of '941 Patent claim 10 is an example of an operating condition that can be sent to an advertising device. However, Outdoorlink points out that claim 10 depends from claim 1 which explicitly includes the requirement of “receiving operating conditions from a plurality of advertising devices.” Outdoorlink contends that the claims of the other patents are in conformance with the '941 Patent claims, pointing to '773 Patent claim 36. Outdoorlink contends that this claim is “[a] method for controlling the operation of a billboard, ” and as in the claims of the '941 Patent, “commands” are received at a transceiver of a billboard which are in turn operable to control the operating conditions of the billboard. Outdoorlink contends that it is “commands” that can be sent to the billboard, not “operating conditions.” (Dkt. #40 at pp. 6-7.) Outdoorlink also contends that the '898 Patent claims recite a billboard including a wireless transceiver “to wirelessly transmit … information representative of the current operating conditions.” '898 patent, claim 1.

         Outdoorlink contends that there is no mention anywhere, in the claims or the specification of any of the Asserted Patents of operating conditions being sent to, or received by the billboard or advertising device.

         Analysis

         “whether a device is working as expected”

         Outdoorlink seeks to limit “operating conditions” to information which indicates whether a device is working as expected. However, Outdoorlink has not pointed to evidence in the intrinsic record that would exclude merely the conditions of the operating device, whether such conditions were expected or not. Specifically, Outdoorlink has not pointed to clear language in the intrinsic record of lexicography, disavowal, or disclaimer mandating that the operating conditions must describe whether the device is working as expected. See GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“[T]he specification and prosecution history only compel departure from the plain meaning in two instances: lexicography and disavowal.”); Cordis Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner, 669 F.3d at 1366 (“The patentee may demonstrate intent to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.”).

         Further, claim 10 explicitly includes “wherein the operating conditions comprise a schedule for activating and deactivating the advertising device.” The schedule for activation and deactivation does not necessarily also include information as to whether the device is working as expected. Outdoorlink's construction would require the “operating conditions” to further include such information. However, Outdoorlink has not identified intrinsic evidence of a disclaimer or disavowal. The use of a schedule to control the advertising device (such as ON/OFF times for lights) is described at various portions of the specification, including but not limited to, '941 Patent 5:41-58, Figure 2A, Figure 2D.

         “information provided by the advertising device/billboard”

         Outdoorlink also seeks to limit “operating conditions to “information provided by the advertising device/billboard.” Again, Outdoorlink does not point to language of lexicography, disavowal, or disclaimer. Outdoorlink generally relies on other elements of the claims, which reference the operating conditions being received from the advertising devices. However, those limitations do not generally redefine “operating conditions, ” but only establish when operating conditions are received from or transmitted from the advertising device. Thus, for example, in claim 1, the claim already defines where the operating conditions are received from (“receiving operating conditions from a plurality of advertising devices… wherein each of the plurality of advertising devices include cellular technology to wirelessly transmit operating condition to and receive commands to update operating conditions from a cellular network.” (‘941 Patent claim 1). It is this language that provides for transmitting the operating conditions, not the term “operating conditions” itself.

         Thus, Lites Out's position does not change that certain other elements of the claims may require “receiving operating conditions from a plurality of advertising devices, ” ('941 Patent claim 1) or “the plurality of billboards each includes a wireless transceiver to wirelessly transmit the alert over the wireless network, the alert including information representative of the current operating conditions of the one of the plurality of the billboards.” ('898 Patent claim 1). It is those particular limitations which require transmission from the billboard, not the nature of the term “operating conditions” itself.

         Further, as discussed above, the claims reference the operating conditions being a schedule. Outdoorlink has not pointed to any reason why a schedule cannot be provided to an advertising device or evidence that would limit schedules to only being something provided by the advertising device. In fact, the specification contemplates the schedule being provided to the billboard. '941 Patent 5:41-58, Figure 2A, Figure 2D.

         Further, the claims and specification also reference “specified operation conditions.” For example, '941 Patent recites: “determining the status of the first advertising device comprises determining whether the components are operating within specified operating conditions” ('941 Patent claim 3) and “[i]n response to at least one component violating specified operating conditions, a notification indicating the violation is generated.” ('941 Patent 1:38-40). The ranges and values that define the “specified operating conditions” are described in the specification as being provided from the server 104 through use of the configuration file 135 and monitoring engine 140. '941 Patent 6:5-14, 6:65-7:14. This is further indication that “operating conditions” generically do not have to be only provided by the advertising device. Outdoorlink has not pointed to evidence that would limit “specified operation conditions” to only being provided from an advertising device, as opposed to the specified operation condition being provided elsewhere as described in the specification.

         Having resolved the claim construction disputes, the Court finds no further construction of the terms is needed. See O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) (“district courts are not (and should not be) required to construe every limitation present in a patent's asserted claims.”); Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1207 (Fed. Cir. 2010) (“Unlike O2 Micro, where the court failed to resolve the parties' quarrel, the district court rejected Defendants' construction.”).

         The Court construes “operating conditions” and “operating parameters” to have their plain and ordinary meaning.

         2. Network Terms

         “cellular technology/cellular network” ('941 Patent: Claims 1, 13, 19)

Lites Out's Construction

Outdoorlink's Construction

No construction necessary. Plain and ordinary meaning.

Wireless network using bandwidth provided by a cellular carrier that is not an IP network or a digital packet network

         “Internet Protocol (IP) network” ('941 Patent Claims 1, 13)

Lites Out's Construction

Outdoorlink's Construction

No construction necessary. Plain and ordinary meaning.

In the alternative: “network which comprises an IP address”

Network in which each connected device is assigned a unique IP address that is not a cellular network or a digital packet network

         “digital packet network” ('773 Patent: Claims 1, 17, 18)

Lites Out's Construction

Outdoorlink's Construction

No construction necessary. Plain and ordinary meaning.

In the alternative: “network which can transmit information in digital packets”

Packet-switched network that is not a cellular network or an IP network

         “wireless network” ('898 Patent: Claims 1, 17, 18, 22)

Lites Out's Construction

Outdoorlink's Construction

No construction necessary. Plain and ordinary meaning.

Over-the-air network that is not a cellular network, an IP network, or a digital packet network


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