Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

T-Rex Property AB v. Regal Entertainment

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

February 20, 2018

T-REX PROPERTY AB
v.
REGAL ENTERTAINMENT, et al.,

          MEMORANDUM OPINION AND ORDER

          K. NICOLE MITCHELL, UNITED STATES MAGISTRATE JUDGE.

         This Memorandum Opinion construes the disputed claim terms[1] in United States Patent Nos. RE39, 470 (“the ‘470 Patent”), 7, 382, 334 (“the ‘334 Patent”), and 6, 430, 603 (“the ‘603 Patent”) (collectively, “the patents-in-suit”) asserted in this suit by T-Rex Property AB (“Plaintiff”) against Defendants.[2]

         On December 7, 2017, the parties presented oral arguments on the disputed claim terms at a Markman hearing. For the reasons stated herein, the court ADOPTS the constructions set forth below.

         BACKGROUND

         Plaintiff alleges that Defendants infringe three asserted patents: the ‘470 Patent, the ‘334 Patent, and the ‘603 Patent. The patents-in-suit relate to systems that allow “external information mediators [to] dynamically control in real time the transmission of display instruction.” Doc. No. 1 at 3. The ‘334 Patent and the ‘470 Patent are expired.

         APPLICABLE LAW

         “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)). The Court examines a patent's intrinsic evidence to define the patented invention's scope. Id. at 1313-1314; Bell Atl. Network Servs., Inc. v. Covad Commc'ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). Intrinsic evidence includes the claims, the specification, and the prosecution history. Phillips, 415 F.3d at 1312-13; Bell Atl. Network Servs., 262 F.3d at 1267. Courts give claim terms their ordinary and customary meaning as understood by one of ordinary skill in the art at the time of the invention in the context of the patent as a whole. Phillips, 415 F.3d at 1312-13; Alloc, Inc. v. Int'l Trade Comm'n, 342 F.3d 1361, 1368 (Fed. Cir. 2003).

         Claim language provides substantial guidance in the Court's construction of claim terms. Phillips, 415 F.3d at 1314. “[T]he context in which a term is used in the asserted claim can be highly instructive.” Id. Other claims, asserted and un-asserted, can provide additional instruction because “terms are normally used consistently throughout the patent.” Id. The differences among claims, such as additional limitations in dependent claims, can provide further guidance. Id.

         “[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), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996)). “[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)); see also Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). In the specification, a patentee may define his own terms, give a claim term a different meaning than the ordinary meaning of the term, or disclaim or disavow the claim scope. Phillips, 415 F.3d at 1316. While the Court generally presumes terms possess their ordinary meaning, statements of clear disclaimer can overcome this presumption. See SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343-44 (Fed. Cir. 2001). Further, this presumption does not arise when the patentee acts as his own lexicographer. See Irdeto Access, Inc. v. EchoStar Satellite Corp., 383 F.3d 1295, 1301 (Fed. Cir. 2004).

         The specification may resolve 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, Inc., 299 F.3d at 1325. For example, “[a] claim interpretation that excludes a preferred embodiment from the scope of the claim ‘is rarely, if ever, correct.” Globetrotter Software, Inc. v. Elan Computer Group Inc., 362 F.3d 1367, 1381 (Fed. Cir. 2004) (quoting Vitronics Corp., 90 F.3d at 1583). But, “[a]lthough the specification may aid the court in interpreting the meaning of disputed language in the claims, particular embodiments and examples appearing in the specification will not generally be read into the claims.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988); see also Phillips, 415 F.3d at 1323.

         The prosecution history is another tool to supply the proper context for claim construction because a patentee may define a term during prosecution of 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”). The well-established doctrine of prosecution disclaimer “preclud[es] patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution.” Omega Eng'g Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). The prosecution history must show that the patentee clearly and unambiguously disclaimed or disavowed the proposed interpretation during prosecution to obtain claim allowance. Middleton Inc. v. 3M Co., 311 F.3d 1384, 1388 (Fed. Cir. 2002); see also Springs Window Fashions LP v. Novo Indus., L.P., 323 F.3d 989, 994 (Fed. Cir. 2003) (“The disclaimer . . . must be effected with ‘reasonable clarity and deliberateness.'”) (citations omitted). “Indeed, by distinguishing the claimed invention over the prior art, an 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 interpretation, prosecution disclaimer promotes the public notice function of the intrinsic evidence and protects the public's reliance on definitive statements made during prosecution.” Omega Eng'g, Inc., 334 F.3d at 1324.

         Although “less significant than the intrinsic record in determining the legally operative meaning of claim language, ” the Court may rely on extrinsic evidence to “shed useful light on the relevant art.” Phillips, 415 F.3d at 1317 (quotation 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 such sources may also provide overly broad definitions or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert testimony may aid the Court in determining the particular meaning of a term in the pertinent field, but “conclusory, unsupported assertions by experts as to the definition of a claim term are not useful.” Id. Generally, extrinsic evidence is “less reliable than the patent and its prosecution history in determining how to read claim terms.” Id.

         ANALYSIS

         I. Disputed Terms in the '470 Patent[3]

         The ‘470 Patent is a reissue of United States Patent No. 6, 005, 534, which was filed on July 2, 1996. The ‘470 Patent is titled “Digital Information System, ” and was reissued on January 16, 2007. The ‘470 Patent is expired. The Abstract of the ‘470 Patent states:

The invention relates to a digital information system (10) for displaying information on at least one display means with the aid of at least one projector (22). The exposures are presented at places accessible to and frequented by a general public. The information system (10) includes external information mediators (24) and information is controlled dynamically through the medium of a communication interface (26) and through the medium of an exposure handler in a central computer (28). The inventive system also include a communication interface (14) against an elective number of station computers (34) having connected projector computers (38) which control projectors (22) for displaying pictures or exposures. The station computers (34) and peripheral equipment are situated at mutually distanced placed. According to one particular field of use, the places mentioned are subway stations (16, 18, 20) and projectors (22) project exposures or pictures onto display means positioned at selected places in the stations (16, 18, 20).
a. “permitting said exposure list to be dynamically updated” (Claim 25)


Plaintiffs Proposed Construction

Defendants' Proposed Construction

"providing the functionality to update the exposure list when and as needed"

"automatically sorting in real time control instructions received from the external information mediator into an existing exposure list"

         The underlying dispute is whether “dynamically updated” is required to be “in real time.” The parties also dispute whether “dynamic updating” is limited to “automatically sorting” control instructions “into an existing exposure list.”

         Plaintiff argues that “dynamically update” means “update when and as needed.” Plaintiff cites to the fourth edition of the Microsoft Computer Dictionary (1999), which defines “dynamic, ” in part, as “describ[ing] some action or event that occurs when and as needed.” Doc. No. 87-8 at 5. Plaintiff also argues that the Court should adopt Plaintiff's proposed construction because the PTAB adopted it in prior IPR proceedings. Doc. No. 87 at 9-10.

         Defendants argue that the ‘470 Patent discloses dynamic updating as occurring automatically in “real time.” Doc. No. 89 at 8-9. (citing ‘470 Patent at 7:19-36, 8:27-34, 2:39-43, 7:11-17).

         First, Plaintiff's selective use of the Microsoft Computer Dictionary is unpersuasive. The first line of the Microsoft Computer Dictionary defines “dynamic” as “occurring immediately and concurrently.” Doc. No. 87-8 at 5. This portion of the definition is consistent with the intrinsic evidence, unlike the portion of the definition cited by Plaintiff, which does not accurately capture the distinction between the prior art “static” systems and the disclosed “dynamic” system.

         For example, the specification states that the prior art “static information display systems” were “beset with a number of problems.” ‘470 Patent at 1:60-61 (emphasis added). The specification indicates that these static systems did not “enable information to be updated dynamically for display in real time.” Id. at 1:53-54 (emphasis added). The specification adds that “it should be possible to update and change the information quickly, ” and “when the information displayed on said station is not effectively coordinated, the displays on which information is presented will often become static . . .Id. at 2:28-30 (emphasis added). Like the '470 Patent, the '334 Patent similarly states that “the advertisement sent at cinemas during the projection of a film is static, i.e. not instantly changeable.” ‘334 Patent at 2:42-43 (emphasis added). Thus, the specification characterizes the prior art systems as “static” because they do not have the ability to instantaneously change information.

         Specifically, the specification contrasts a two-week wait required by the prior art to the instantaneous inclusion of the disclosed system:

At present a mediator which wishes to display information in public places is normally forced to wait about two weeks, perhaps longer, before his order can be implemented and the information publicly displayed. With the inventive digital information system 10, the information can be displayed principly in real time, i.e. at the time of making the order, possibly with a short delay due to processing, fully-booked exposure lists and other quickly passing causes. Furthermore, an external information mediator 24 is able to put through information to the system 12 twenty-four hours a day, whereupon the information can be included instantaneously in an exposure list, as illustrated in more detail below.

‘470 Patent at 5:22-35 (emphasis added). The specification further states that:

“[an] object of the invention is to enable a picture, image or other information to be changed in practice as often as is desired, in real time, therewith providing direct and immediate communication, and to enable similar or specific information to be displayed in places that are mutually far apart and to enable message information to be alternated with advertising spots, for instance.”

Id. at 2:49-56. (emphasis added)

         The specification further provides an example of an advertising subscriber that “may buy spots individually or in a special package, and the digital information system is able to insert a change at short notice or to operate a completely new spot.” Id. at 9:22-25 (emphasis added). The specification adds that “[t]he system is thus highly flexible and enables quick changes to be made with regard to what shall be exposed on the exposure means, where it shall be exposed and when.” Id. at 9:25-28 (emphasis added). Thus, the specification indicates that “dynamically updated” relates to the speed or time it takes to update the information. In contrast to a “static” systems that cannot make instant changes, the disclosed “dynamic” systems can instantaneously change the exposure list or change the exposure list after a short delay due to processing or other quickly passing cause. See, e.g., ‘470 Patent at 5:26-31 (“With the inventive digital information system 10, the information can be displayed principly in real time, i.e. at the time of making the order, possibly with a short delay due to processing, fully-booked exposure lists and other quickly passing causes.”).

         Turning to Plaintiff's construction, there is no direct support for “when and as needed” in the intrinsic evidence. Instead, the portions of the specification cited by Plaintiff refers to updating and changing information “quickly, ” “instantaneously, ” “direct and immediate, ” or “at short notice.” Doc. No. 87 at 14 (citing ‘470 Patent at 2:26-27, 2:49-53, 5:30-35, 9:23-28). Further, “as needed” creates more ambiguity than clarity.

         Moreover, Plaintiff's argument that the Court should follow the construction adopted in the IPR proceedings is unpersuasive. First, the petitioners to the IPRs did not provide an explicit construction for “dynamically updated.” Doc. No. 87-5 at 13, 87-6 at 13. Second, the construction adopted by the PTAB was based on the extrinsic dictionary definition provided by the patentee. Doc. Nos. 87-5 at 14, 87-6 at 14. As discussed above, the portion of the definition that is consistent with the intrinsic evidence is the part that defines “dynamic” as “occurring immediately and concurrently, ” and not as “when and as needed.” Phillips, 415 F.3d at 1319 (“[E]xtrinsic evidence may be useful to the court, but it is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence.”).

         Turning to Defendants' construction, it is unclear what the parties understand “real time” to mean because Defendants do not offer a meaning for the term. Plaintiff argues that Defendants' construction would render the claim language redundant because the ‘470 Patent includes claims that specify that “dynamically updating” occurs “in real time.” Doc. No. 92 at 4. Plaintiff also argues that “although ‘real time' updating is an objective of some embodiments of the invention, this does not mean that it must be imported into the claims.” Doc. No. 92 at 4.

         As discussed above, a person of ordinary skill in the art would understand that “dynamic updating” occurs instantaneously or after a short delay. The embodiment referred to by Plaintiff is “an alternative to the dynamic updating of the exposure list.” ‘470 Patent at 8:10-11 (emphasis added). Accordingly, Plaintiff's argument that “dynamically updated” does not require an instantaneous change or change after a short delay fails. Defendants' in “real time” argument similarly fails because it does not add clarity.

         Defendants' “automatically sorting” proposal is also unpersuasive. The disputed term is “permitting said exposure list to be dynamically updated.” The “permitting” language indicates that the exposure list has to be capable of being dynamically updated and Defendants' proposal replaces this capability with a required “sorting.”

         Furthermore, the intrinsic evidence does not indicate that “updating” requires “sorting.” The language of claim 1 explicitly distinguishes “dynamically updating an exposure list” from “generating or organizing an exposure list.” ‘470 Patent at 14:32-33 (“generating, organizing, and dynamically updating an exposure list in real time”). Likewise, claims 25 and 26 expressly recite that the control instructions are used to “generate” an exposure list, not that the control instructions must be “automatically sorted.” At best, the portion of the specification cited by Defendants may be a requirement for generating or organizing the exposure list, but it is not a requirement for the term “updating.” Doc. No. 89 at 8; ‘470 Patent at 7:19-36. The specification also indicates that this is only “one embodiment of the invention.” ‘470 Patent at 7:19.

         The remainder of Defendants' proposed language is redundant and unnecessary. Claim 25 recites “receiving control instructions from at least one external information mediator” and “using said control instructions to generate an exposure list.” Defendants have not provided a persuasive reason to repeat this language in this phrase.

         Defendants' “existing exposure list” proposal is also rejected. Claim 25 generally recites the steps of: (1) receiving control instructions from at least one external information mediator; (2) using the control instructions to generate an exposure list; (3) displaying images in accordance with said exposure list; and (4) permitting the exposure list to be dynamically updated. The exposure list in step 2 provides antecedent basis for “said exposure list” in step 4. Thus, the claim language indicates that the exposure list generated in step 2 is the exposure list updated in step 4. Thus, there is no need to add “existing” to the construction.

         Accordingly, the Court construes the disputed term “permitting said exposure list to be dynamically updated” to mean “providing the functionality to instantaneously change the exposure list or change the exposure list after a short delay due to processing or other quickly passing cause.”

b. “means for generating and dynamically updating an exposure list from said control instructions” (Claim 26)


Plaintiffs Proposed Construction

Defendants' Proposed Construction

Function: "generating and updating when and as needed an exposure list from control instructions"

Structure: a "central computer" (central computer 28 of Fig. 1 of '470 Pat.) and associated exposure handler (exposure handler 3 of Fig. 1 of'470 Pat.) configured to allocate information relating to projector control instructions according to the following algorithm: 1) mediator information is sorted into the exposure list in accordance with the wishes of the mediator or its instructions when available space is found in the exposure list or in alternative places in the exposure list given by the mediator; 2) if the exposure list is completely filled with instructions, the mediator instructions to the control centre remain in the queue list in the server in readiness for later inclusion in the exposure list ('470 Pat. At 7:25-35) and equivalents thereof.

Function: "generating and dynamically updating an exposure list from said control instructions"

Structure: software running on a computer server that creates an exposure list and automatically sorts the control instructions, in real time into an existing exposure list, according to the algorithms described in the '470 Patent, col. 7 11. 18-36 or equivalents thereof.

         The parties agree that this is a means-plus-function term governed by 35 U.S.C. § 112, ¶ 6. The parties also agree that the disputes for this term encompass the same issues as to the phrase “permitting said exposure list to be dynamically updated, ” which was discussed above.

         The Court agrees with the parties that the disputed term is subject to 35 U.S.C. § 112, ¶ 6. Because this term encompasses the same issues as to the phrase “permitting said exposure list to be dynamically updated, ” the recited function is “generating and instantaneously changing the exposure list or changing the exposure list after a short delay due to processing or other quickly passing causes using the control instructions.” Having determined the limitation's function, “the next step is to determine the corresponding structure disclosed in the specification and equivalents thereof.” Medtronic, Inc. v. Advanced Cardiovascular Sys., 248 F.3d 1303, 1311 (Fed. Cir. 2001). The parties both point to the same portions of the disclosure for the algorithm, which states the following:

The server 3 of the central computer 28 functions partly as an exposure handler. The exposure handler 3 carries out the important object of the invention with regard to the possibility of an external mediator 24 to organize the information delivered to the station 16, 18, 20 via an exposure list, this organizing of information being effected in real time via the modem 26 and the server 1 that receives projector control information from the external mediator.
In one [invention] embodiment of the invention, a queue, or line, is created from the information material received by the server 1, in accordance with some known line or queuing method, such as FIFO (First In First Out), LIFO (Last In First Out) or Round Robin, etc., wherein the server 3 or exposure handler 3 has set-up or created an exposure list which covers a twenty-four hour period for information exposure or display via projectors 22. The exposure handler 3 collects and processes, i.e. allocates, information relating to projector control instructions, wherein mediator information is sorted into the exposure list in accordance with the wishes of the mediator 24 or its instructions, when available space is found in the exposure list or in alternative places in the exposure list given by the mediator. If the exposure list is completely filled with instructions, the mediator instructions to the control centre remain in the queue list in the servo 1 in readiness for later inclusion in the exposure list, in accordance with a preferred embodiment.

‘470 Patent at 7:10-36.

         The Court agrees with the parties that the above-recited portion of the specification is the corresponding algorithm. As indicated, this portion identifies the corresponding structure as Server 3 of the central computer 28 configured to perform the steps of: (1) setting-up or creating an exposure list for a specified time period; (2) sorting mediator information into the exposure list in accordance with the wishes of the mediator or its instructions, when available space is found in the exposure list or in alternative places in the exposure list given by the mediator; and (3) if the exposure list is completely filled with instructions, the mediator instructions to the control centre remain in the queue list in the server in readiness for later inclusion in the exposure list and equivalents thereof.

         Thus, the disputed term “means for generating and dynamically updating an exposure list from said control instructions” is subject to 35 U.S.C. § 112, ¶ 6, and is construed to mean:

         Function: “generating and instantaneously changing the exposure list or changing the exposure list after a short delay due to processing or other quickly ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.