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Uniloc USA, Inc. v. Samsung Electronics America, Inc.

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

April 15, 2019

UNILOC USA, INC., UNILOC LUXEMBOURG, S.A., and UNILOC 2017 LLC Plaintiff,
v.
SAMSUNG ELECTRONICS AMERICA, INC. and SAMSUNG ELECTRONICS CO. LTD., Defendants.

          CLAIM CONSTRUCTION MEMORANDUM AND ORDER

          ROY S. PAYNE, UNITED STATES MAGISTRATE JUDGE.

         On March 20, 2019, the Court held an oral hearing to determine the proper construction of the disputed claim terms in the U.S. Patent No. 7, 020, 106 (the “'106 Patent”). The Court has considered the parties' claim construction briefing (Dkt. Nos. 71, 77, and 81) and arguments. 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

         Uniloc USA, Inc., Uniloc Luxembourg S.A. and Uniloc 2017 LLC (collectively “Uniloc”) have asserted the '106 Patent in two actions against (1) Samsung Electronics America, Inc. and Samsung Electronics Co. Ltd. (collectively “Samsung”) and (2) Huawei Device USA, Inc. and Huawei Device Co., Ltd. (collectively “Huawei”) (all defendants collectively “Defendants”).[1] The claims at issue include independent claim 15 and dependent claims 16 and 17. After the briefing and oral hearing, a Stipulation of Dismissal Without Prejudice was issued in the Uniloc v Huawei action, No. 2:18-cv-00073-JRG-RSP, Dkt. No. 58.

         The '106 Patent relates generally to a radio communication system that provides communications between a base station and a mobile station. The Abstract of the '106 Patent recites:

A radio communication system a primary station and a secondary station operating according to two (or more) two-way communication modes. An uplink and/or a downlink communication channel is present for the first mode, but only one of an uplink and a downlink channel is present for the second mode. Modifications to the protocols of the first and second modes enable the traffic for an absent communication channel of one mode to be carried by the corresponding channel of the other mode.

         (Image Omitted)

Id. at Abstract. The ‘106 Patent illustrates an embodiment of communication between a base station 100 and a mobile station 110 in Figure 1.

         '106 Patent Figure 1. The base station 100 includes a transceiver 104, and the mobile station 110 includes a transceiver 114. The two transceivers communicate according to a first mode via a first mode downlink channel 122 and a first mode uplink channel 124. Id. at 3:33-64. Additional communications between the base station 100 and mobile station 110 may occur in a second mode by use of transmitter 106 in the base station 100 and receiver 116 in the mobile station 110. The second mode communications occur via the downlink channel 126. Id. at 3:64-4:2. The specification describes that by providing one-way communications only in the second mode, significant costs, weight and power savings may be achieved. Id. at 4:20-28. In the example given, high-speed communication may be achieved with the second mode (one-way communication) while not providing the corresponding high-speed hardware for the second mode for communication in the opposite direction. Id. at 4:20-49.

Claim is the only independent claim asserted. Claim 15 recites
15. A communication station for communication with a further station, said communication station comprising:
a first transceiver configured to at least one of transmit first information over a first communication link in a first mode, and receive second information over a second communication link in said first mode;
at least one of a transmitter and receiver configured to at least one of transmit and
receive third information over a third communication link in a second mode; wherein when at least one of said first communication link and said second
communication link is not available, then at least one of said first information and said second information is communicated to said communication station via said third communication link in said second mode, wherein at least one of said first transceiver and said transmitter is configured for transmitting specification information about a radio interface specification defining said second mode, said specification information being transmitted to said further station via at least one of said first communication link and said second communication link.

         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).

         In the context of a claim governed by 35 U.S.C. § 112, ¶ 6, the claim is invalid as indefinite if the claim fails to disclose adequate corresponding structure to perform the claimed functions. Williamson, 792 F.3d at 1351-52. The disclosure is inadequate when one of ordinary skill in the art “would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim.” Id. at 1352.

         AGREED TERMS

         In the briefing, the parties agreed to the following construction:

Term

Agreed Construction

“a converter configured to convert mode one data” (claim 16)

Plain meaning

Dkt. No. 71 at 4; Dkt. No. 77 at 15, n.9.

         DISPUTED TERMS

         1. “at least one of a transmitter and receiver configured to at least one of transmit and receive” (claim 15)

Uniloc's Proposal

Defendants' Proposal

ordinary meaning

at least one transmitter configured to transmit or at least one receiver configured to receive (but not both)

         The parties dispute whether the claims are limited to a station that has at least one transmitter or at least one receiver, but not both a transmitter and a receiver.

         Positions of the Parties

         Uniloc contends that “at least one of a transmitter and receiver” would be broad enough to include an embodiment that encompassed both a transmitter and a receiver. Uniloc contends that if the inventors had desired to limit the claim, they would have written “either a transmitter or a receiver.” Uniloc contends that nothing in the record limits the ordinary meaning. (Dkt. No. 71 at 2).

         Defendants contend that the dispute is whether this phrase should be construed to cover (i) at least one transmitter or at least one receiver (but not both), as Defendants contend, or (ii) at least one transmitter or at least one receiver or both a transmitter and a receiver. Defendants contend that the specification, including both the stated objects of the invention and statements of what the inventors described as “the present invention, ” expressly requires that this phrase be construed as proposed by Defendants. (Dkt. No. 77 at 5-6).

         Defendants contend that Figure 1 depicts two communication stations of the purported invention:

         (Image Omitted)

(Id. at 6 (depicting Figure 1 with color added)). Defendants contend that each station has a transceiver (114, 104 - shown in orange) for communicating in a first mode and either a receiver (116 - shown in pink) or a transmitter (106 - also shown in pink) for communicating in a second mode. (Id. (citing '106 Patent at 3:33-59)). Defendants contend that neither station has both a receiver and a transmitter (in addition to a transceiver (114 and 104)), which is consistent with the “object of the present invention [which] is to provide a more economical multi-mode system.” (Id. (citing '106 Patent 2:11-12)). Defendants point to the specification statements: “[t]he provision of at least two complete transceiver architectures [i.e., a transceiver and both a receiver and a transmitter] in a wireless terminal makes such terminals relatively expensive” (‘106 Patent 1:65-67) and “[h]ence, the first mode operates over a bi-directional connection while the second mode operates over a downlink-only connection.” (Id. (citing '106 Patent 3:67-4:2)). Defendants contend that each of the embodiments disclosed in the specification includes stations with a transceiver and either a transmitter or a receiver, but not both. Defendants point to the passage:

[i]n a first embodiment of the present invention the first mode is UMTS TDD while the second mode is HIPERLAN/2. This embodiment provides a high speed data link between BS 100 and MS 110 while avoiding the need for a HIPERLAN/2 transmitter in the MS 110. Since such a transmitter is required to be highly linear it is inherently inefficient, and therefore potentially expensive and power-hungry. Its omission from the MS 110 therefore results in a significant cost, weight and power savings.

(Id. at 7 (quoting '106 Patent 4:20-28 (emphasis added))). Defendants point to other passages. (Id. (quoting '106 Patent 7:46-50 (“This [second] embodiment, in common with the first embodiment, provides a high-speed data link between BS 100 and MS 110 while avoiding the need for a HIPERLAN/2 transmitter in the MS 110.”); 8:11-16 (“In a third embodiment of the present invention the first mode is Bluetooth while the second mode is HIPERLAN/2. This embodiment, in common with the first and second embodiments, provides a high-speed data link between BS 100 and MS 110 while avoiding the need for a HIPERLAN/2 transmitter in the MS 110.”); 9:5-10 (“In [the fourth] embodiment there are two, or more, distinct frequency bands available. Within one band, TDD mode is deployed, capable of operating in both uplink and downlink. Within the other bands, FDD mode is deployed, in the downlink only. All uplink transmission takes place within the TDD band.”))).

         Defendants further point to the following passage: “[t]he present invention is based upon the recognition, not present in the prior art, that in a multi-mode terminal where each mode would be bi-directional if operated in a single mode terminal, it is not necessary for all the modes to have a bi-directional link.” (Id. (quoting '106 Patent 2:66-3:3) (emphasis added)). Defendants further note that the Abstract also states that “only one of an uplink and a downlink channel is present for the second mode.” (Id. (quoting '106 Patent Abstract)).

         Defendants contend that Uniloc's construction, which encompasses both a transmitter and a receiver, directly contradicts this intrinsic evidence, including the stated object of the invention and what the inventor described as “the present invention.” Further, Uniloc contends that the object of the invention is expressly stated in the specification as reducing the cost of the communication station by providing only one transceiver along with either a transmitter or receiver (but not both). (Id. at 8 (citing ('106 Patent at 1:65-67, Abstract))). Defendants contend that if the term is construed as proposed by Uniloc such that the communication station can have a transceiver and both a transmitter and receiver, the entire goal of the invention would be eviscerated. (Id.)

         Furthermore, Defendants contend that any embodiment having both a transmitter and a receiver would be inoperable because a communication station sending and receiving information with a further station requires at least two communication links (e.g., an uplink and a downlink) instead of one communication link. (Id. at 8-9). Defendants allege that if the inventors had intended the claim to cover “both a transmitter and a receiver, ” they would have written “at least one of a transmitter and receiver configured to at least one of transmit and receive third information over at least one of a third communication link and fourth communication link in a second mode.” Instead, they only provided one communication link and, in doing, so limited the scope of the claim to “at least one transmitter configured to transmit or at least one receiver configured to receive (but not both), ” consistent with the stated object of the invention.

         In reply, Uniloc contends that “at least one of A and B” uses language that explicitly includes an embodiment with both A and B. As to Defendants' argument that the specification does not explicitly describe an “A and B” embodiment, Uniloc contends that Defendants are reading limitations from an embodiment into the claims. (Dkt. No. 81 at 4-5).

         Uniloc contends that Defendants argue that because the embodiment with both a transmitter and receiver would be more expensive to assemble than one with just one of those, the “stated objective” of the invention would not be realized. Uniloc contends that reducing expense was not the only stated objective as another objective of the invention is being able to “handle the required asymmetric traffic without consuming excessive resources.” (Id. at 5 (quoting '160 Patent 9:56-59)). Uniloc states that a communication station with a receiver for the second mode might also include a transmitter to be alternatively used for that mode if “a requirement emerges for predominantly high rate uplink asymmetry.” (Id. (citing '106 Patent 9:48-50)). Uniloc states that even as to reducing expense, there can be situations where having a choice between a transmitter and receiver produces power savings. (Id. (citing '106 Patent 4:11-17)).

         As to Defendants' argument that a station with both a transmitter and a receiver would require a fourth link as well as a third, Uniloc states that even if the third link is unidirectional, and thus not capable of being used by both a transmitter and receiver simultaneously, the station can still contain a transmitter (configured to ...


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