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Motiva Patents, LLC v. Sony Corp.

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

August 20, 2019

MOTIVA PATENTS, LLC,
v.
SONY CORPORATION, et al.

          MEMORANDUM OPINION AND ORDER CONSTRUING CLAIM TERMS OF UNITED STATES PATENTS NO. 7, 292, 151, 7, 952, 483, 8, 159, 354, 8, 427, 325, AND 9, 427, 659

          KEITH F. GIBLIN, UNITED STATES MAGISTRATE JUDGE.

         Before the Court is the Opening Markman Brief (Doc. # 100) filed by Plaintiff Motiva Patents, LLC (“Plaintiff” or “Motiva”). Also before the Court are the Responsive Claim Construction Brief (Doc. # 101) filed by Defendants Sony Corporation, Sony Interactive Entertainment Inc. (collectively, “Sony”), HTC Corporation (“HTC”), and Facebook Technologies, LLC f/k/a Oculus VR, LLC (“Facebook” or “Oculus”) (all, collectively, “Defendants”)[1] as well as Plaintiff's reply (Doc. # 103).

         The Court held a claim construction hearing on July 23, 2019.[2]

         Table of Contents

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

         II. LEGAL PRINCIPLES ........................................................................................................... 3

         III. AGREED TERMS ................................................................................................................. 8

         IV. DISPUTED TERMS .............................................................................................................. 8

         A. “signals” ................................................................................................................................ 8

         B. “remote” ................................................................................................................................ 8

         C. “in electrical communication” and “electrically communicate with” ................................. 14

         D. “the output device provides sensory stimuli, ” “sensory stimuli delivered through the output device, ” “sensory stimuli . . . delivered through the output device, ” and “output device for providing feedback stimuli” .............................................................................. 18

         E. “calculate a displacement vector from said movement information” ................................. 22

         F. “reference vector position” .................................................................................................. 25

         G. “movement information” and “motion information” .......................................................... 28

         H. “[receive the signals transmitted by the transmitter of the first hand-held communication device, ] to determine [movement/position/acceleration] information for each of the respective communication devices” .................................................................................... 29

         I. “one or more software routines executing on the processing system to . . . output control data for communication to the remote processing system” ................................................ 32

         J. “one or more software routines executing on the processing system to . . . output data for communication to the remote processing system for controlling motion of a [first/second] virtual object . . . where the motion of the [first/second] virtual object is in proportion with the motion of the [first/second] hand-held game controller” .................... 32

         K. “user input device” .............................................................................................................. 33

         V. CONCLUSION ...................................................................................................................... 39

         I. BACKGROUND

         Plaintiff brings suit alleging infringement of United States Patents No. 7, 292, 151 (“the '151 Patent”), 7, 952, 483 (“the '483 Patent”), 8, 159, 354 (“the '354 Patent”), 8, 427, 325 (“the '325 Patent”), and 9, 427, 659 (“the '659 Patent”) (collectively, “the patents-in-suit”). (See Doc. # 100, Exs. 1‒5.) Plaintiff submits that the patents-in-suit relate to “technology that allows the position and orientation of a user's hands to be tracked and modeled in a virtual display, enabling . . . realistic hand presence [in the virtual world].” Doc. # 100 at 1. The '151 Patent, titled “Human Movement Measurement System, ” issued on November 6, 2007, and bears an earliest priority date of July 9, 2004. The Abstract of the '151 Patent states:

A system for measuring the position of transponders for testing and training a user to manipulate the position of the transponders while being guided by interactive and sensory feedback through a bidirectional communication link to a processing system for the purpose of functional movement assessment for exercise and physical rehabilitation.

         Plaintiff states that the patents-in-suit are related and “share a common specification.” Doc. # 100 at 1. Defendants submit that the '151 Patent, the '483 Patent, and related United States Patent No. 7, 492, 268 (“the '268 Patent”) have been the subject of inter partes reexamination proceedings at the United States Patent and Trademark Office (“PTO”). Doc. # 101 at 1.

         II. LEGAL PRINCIPLES

         It is understood that “[a] claim in a patent provides the metes and bounds of the right which the patent confers on the patentee to exclude others from making, using or selling the protected invention.” Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed. Cir. 1999). 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 Pharms. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 841 (2015) (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 ascertain the meaning of claims, courts look to three primary sources: the claims, the specification, and the prosecution history. Markman, 52 F.3d at 979. The specification must contain a written description of the invention that enables one of ordinary skill in the art to make and use the invention. Id. A patent's claims must be read in view of the specification, of which they are a part. Id. For claim construction purposes, the description may act as a sort of dictionary, which explains the invention and may define terms used in the claims. Id. “One purpose for examining the specification is to determine if the patentee has limited the scope of the claims.” Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000).

         Nonetheless, it is the function of the claims, not the specification, to set forth the limits of the patentee's invention. Otherwise, there would be no need for claims. SRI Int'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). The patentee is free to be his own lexicographer, but any special definition given to a word must be clearly set forth in the specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992). Although the specification may indicate that certain embodiments are preferred, particular embodiments appearing in the specification will not be read into the claims when the claim language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994).

         This Court's claim construction analysis is substantially guided by the Federal Circuit's decision in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips, the court set forth several guideposts that courts should follow when construing claims. In particular, the court reiterated that “the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Id. at 1312 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To that end, the words used in a claim are generally given their ordinary and customary meaning. Id. The ordinary and customary meaning of a claim term “is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Id. at 1313. This principle of patent law flows naturally from the recognition that inventors are usually persons who are skilled in the field of the invention and that patents are addressed to, and intended to be read by, others skilled in the particular art. Id.

         Despite the importance of claim terms, Phillips made clear that “the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id. Although the claims themselves may provide guidance as to the meaning of particular terms, those terms are part of “a fully integrated written instrument.” Id. at 1315 (quoting Markman, 52 F.3d at 978). Thus, the Phillips court emphasized the specification as being the primary basis for construing the claims. Id. at 1314-17. As the Supreme Court stated long ago, “in case of doubt or ambiguity it is proper in all cases to refer back to the descriptive portions of the specification to aid in solving the doubt or in ascertaining the true intent and meaning of the language employed in the claims.” Bates v. Coe, 98 U.S. 31, 38 (1878). In addressing the role of the specification, the Phillips court quoted with approval its earlier observations from Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998):

Ultimately, the interpretation to be given a term can only be determined and confirmed with a full understanding of what the inventors actually invented and intended to envelop with the claim. The construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction.

Phillips, 415 F.3d at 1316. Consequently, Phillips emphasized the important role the specification plays in the claim construction process.

         The prosecution history also continues to play an important role in claim interpretation. Like the specification, the prosecution history helps to demonstrate how the inventor and the United States Patent and Trademark Office (“PTO”) understood the patent. Id. at 1317. Because the file history, however, “represents an ongoing negotiation between the PTO and the applicant, ” it may lack the clarity of the specification and thus be less useful in claim construction proceedings. Id. Nevertheless, the prosecution history is intrinsic evidence that is relevant to the determination of how the inventor understood the invention and whether the inventor limited the invention during prosecution by narrowing the scope of the claims. Id.; see Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (noting that “a patentee's statements during prosecution, whether relied on by the examiner or not, are relevant to claim interpretation”).

         Phillips rejected any claim construction approach that sacrificed the intrinsic record in favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc court condemned the suggestion made by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002), that a court should discern the ordinary meaning of the claim terms (through dictionaries or otherwise) before resorting to the specification for certain limited purposes. Phillips, 415 F.3d at 1319-24. According to Phillips, reliance on dictionary definitions at the expense of the specification had the effect of “focus[ing] the inquiry on the abstract meaning of words rather than on the meaning of claim terms within the context of the patent.” Id. at 1321. Phillips emphasized that the patent system is based on the proposition that the claims cover only the invented subject matter. Id.

         Phillips does not preclude all uses of dictionaries in claim construction proceedings. Instead, the court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the court emphasized that claim construction issues are not resolved by any magic formula. The court did not impose any particular sequence of steps for a court to follow when it considers disputed claim language. Id. at 1323-25. Rather, Phillips held that a court must attach the appropriate weight to the intrinsic sources offered in support of a proposed claim construction, bearing in mind the general rule that the claims measure the scope of the patent grant.

         The Supreme Court of the United States has “read [35 U.S.C.] § 112, ¶ 2 to require that a patent's claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910, 134 S.Ct. 2120, 2129 (2014). “A determination of claim indefiniteness is a legal conclusion that is drawn from the court's performance of its duty as the construer of patent claims.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005) (citations and internal quotation marks omitted), abrogated on other grounds by Nautilus, 134 S.Ct. 2120. “Indefiniteness must be proven by clear and convincing evidence.” Sonix Tech. Co. v. Publ'ns Int'l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017).

         III. AGREED TERMS

         The parties submitted in their May 1, 2019 Joint Claim Construction and Prehearing Statement that they had not agreed on any constructions. Doc. # 89 at 1. Agreements reached during the course of claim construction proceedings are set forth below as part of the discussion of the terms presented by the parties for construction.

         IV. DISPUTED TERMS

         A. “signals”

Plaintiff's Proposed Construction

Defendants' Proposed Construction

No construction necessary.

Sony:

No construction necessary

Facebook:

“data packaged for transmission”

Doc. # 89, Ex. A at 1; Doc. # 100 at 6. The parties submit that this term appears in Claim 1 of the '151 Patent, Claims 44 and 48 of the '483 Patent, Claims 32, 49, 50, 63, and 72 of the '354 Patent, Claims 1, 2, 32, 49, 50, 63, 72, 85, 89, 94, and 95 of the '325 Patent, and Claim 45 of the '659 Patent. Doc. # 89, Ex. A at 1; see Doc. # 109, Ex. A at 1.

         “Facebook Tech withdraws its previous construction and agrees with Plaintiff and the other Defendants that no construction is needed for this term.” Doc. # 101 at 2. At the July 23, 2019 hearing, the parties agreed that this term should be construed to have its plain meaning.

         The Court therefore hereby construes “signals” to have its plain meaning.

         B. “remote”

Plaintiff's Proposed Construction

Defendants' Proposed Construction

No construction necessary.

Facebook:

“located some distance away from the user”

Doc. # 89, Ex. A at 1; Doc. # 100 at 8; Doc. # 101 at 3; see Doc. # 109, Ex. A at 1. The parties submit that this term appears in Claim 1 of the '151 Patent, Claims 44 and 48 of the '483 Patent, Claims 32, 49, 50, 63, and 72 of the '354 Patent, Claims 1, 32, 49, 50, 63, 72, 85, 89, and 94 of the '325 Patent, and Claims 45 and 46 of the '659 Patent. Doc. # 89, Ex. A at 1; see Doc. # 109, Ex. A at 1.

         (1) The Parties' Positions

         Plaintiff argues that “[b]ecause each claim that requires a ‘remote' processing system further specifies what it is remote from, because only a single claim further specifies that it must be remote from a user, and because every other claim specifies that it must be remote from the first communication device, ‘remote' should not be construed to mean remote from a user.” Doc. # 100 at 8.

         Defendants respond that Plaintiff is attempting to recapture claim scope that Plaintiff disclaimed during reexamination. Doc. # 101 at 3. In particular, Defendants submit that the patentee expressly defined the term “remote” during reexamination. Id. at 5-6. Defendants argue that this express definition cannot be overridden here by claim differentiation. Id. at 7.

         Plaintiff replies that “[t]he arguments relied on by defendants were made in the context of only a single claim of a single patent, a claim that was cancelled by the Patent Office and that is not at issue in this action.” Doc. # 103 at 1.

         (2) Analysis

         During a reexamination of the '151 Patent, the patentee argued that “Hinckley does not disclose a first hand-held communication device and a processing system remote from the first communication device (limitations recited in independent claims 1, 50).” Doc. # 101, Ex. C, June 15, 2011 Respondent's Brief at 7. After a Decision on Appeal by the Patent Trial and Appeal Board, the patentee again later reiterated that “Hinckley . . . does not anticipate claim 1 as the system of Hinckley does not teach the claimed limitations of a processor that determines the movement information of a controller that is remote from it. See 1.132 Declaration of Ferguson, paragraph 21.” Doc. # 100, Ex. 8, Respondent's Submission of New Evidence to Reopen Prosecution at 15.

         In that proceeding, Kevin Ferguson, one of the named inventors, declared that “[o]ne of ordinary skill in the art would understand that the term ‘remote' as the term is used in claim 27 [of the '151 Patent] means that the claimed processing system is some distance away from the user who is holding both of the hand-held controllers.” Doc. # 100, Ex. 7, Sept. 28, 2012 Ferguson Decl. Under 37 C.F.R § 1.132 at ¶ 38. The word “remote” appears in Claim 1, from which Claim 27 depended.

         The examiner subsequently found the claim invalid without discussing the patentee's declared interpretation regarding “remote.” Doc. # 100, Ex. 9, Oct. 9, 2013 Determination Under 37 C.F.R. 41.77(d) at 6. In a New Decision, the Patent Trial and Appeal Board upheld the examiner's determination. See id., Ex. 10, New Decision at 10-13.

         Plaintiff emphasizes that the examiner did not express any reliance on the declared interpretation regarding “remote.” See Doc. # 103 at 6-7. Yet, the examiner did not expressly state any disagreement with the patentee's interpretation of “remote, ” and “the interested public has the right to rely on the inventor's statements made during prosecution, without attempting to decipher whether the examiner relied on them, or how much weight they were given.” Fenner Invs., Ltd. v. Cellco P'ship, 778 F.3d 1320, 1325 (Fed. Cir. 2015).

         Likewise, Plaintiff has failed to identify any portion of the New Decision in which the Patent Trial and Appeal Board purportedly rejected the interpretation set forth in the above- discussed inventor declaration, and the Court finds none. See Doc. # 100, Ex. 10, New Decision at 10-13. Further, “an applicant's argument that a prior art reference is distinguishable on a particular ground can serve as a disclaimer of claim scope even if the applicant distinguishes the reference on other grounds as well.” Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1374 (Fed. Cir. 2007). Finally, the patentee's statements during reexamination are part of the prosecution history, and as a general matter a disclaimer can be found in reexamination proceedings. See Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1360 (Fed. Cir. 2017) (noting that a “patentee's statements during reexamination can be considered during claim construction, in keeping with the doctrine of prosecution disclaimer”) (quoting Krippelz v. Ford Motor Co., 667 F.3d 1261, 1266 (Fed. Cir. 2012)).

         The statements regarding “remote” set forth during reexamination should therefore be considered in the present claim construction proceedings. See Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995) (“Claims may not be construed one way in order to obtain their allowance and in a different way against accused infringers.”); see also Phillips, 415 F.3d at 1316 (“[O]ur cases recognize that the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor's lexicography governs.”); Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003) (“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.”); Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1329 (Fed. Cir. 2009) (“[W]e will adopt a definition that is different from the ordinary meaning when the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history.”) (citation and internal quotation marks omitted).

         Plaintiff properly notes, however, that the prosecution history cited by Defendants addressed the meaning of “remote” in a specific context for distinguishing the “Hinckley” reference.[3] Named inventor Kevin Ferguson declared:

36. One of ordinary skill in the art would understand that because the first and second hand-held controllers of claim 27 [of the '151 Patent] are “electrically” connected, the claimed processing system that is remote from the first hand-held controller is also remote from the second hand-held controller.
37. One of ordinary skill in the art would understand that the '151 patent clearly describes a remote processing system that is remote from both the first and second controllers and where the remote processor determines movement information of both.
38. One of ordinary skill in the art would understand that the term “remote” as the term is used in claim 27 [of the '151 Patent] means that the claimed processing system is some distance away from the user who is holding both of the hand-held controllers.
39. One of ordinary skill in the art would understand that claim 27 requires that the processing system be “remote” from both the first and second hand-held controllers.
40. One of ordinary skill in the art would understand that the processing system of the server tablet in Hinckley is not remote from itself.

Doc. # 100, Ex. 7, Sept. 28, 2012 Ferguson Decl. Under 37 C.F.R § 1.132 at ¶¶ 36-40. Here, Claim 1 of the '151 Patent, for example, recites (emphasis added):

         1. A system for tracking movement of a user, comprising:

a first communication device comprising a transmitter for transmitting signals, a receiver for receiving signals and an output device, said first communication device adapted to be hand-held;
a processing system, remote from the first communication device, for wirelessly receiving said transmitted signals from said first communication device, said processing system adapted to determine movement information for said first communication device and sending data signals to said first communication device for providing feedback or control data; and
wherein said first communication device receives and processes said data signals from said processing system and wherein the output device provides sensory stimuli according to the received data signals.

         Although the first communication device is “adapted to be hand-held, ” the claim uses the term “remote” with reference to the first communication device rather than with reference to a user. Also, Claim 27 of the '151 Patent (the claim addressed in the prosecution history relied upon by Defendants) recited:

         27. A system according to claim 1, further comprising:

a second communication device, adapted to be hand held, in electrical communication with the first communication device, with the processing system adapted to determine movement information of the second communication device relative to the first communication device.

         Thus, the patentee's arguments addressed remoteness with reference to both the first and second handheld devices, not with reference to a user that might perhaps be holding them. Cf. Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 991-92 (Fed. Cir. 1999) (finding that prosecution statements were limited to context of particular claims). Despite Defendants' arguments at the July 23, 2019 hearing, the Court finds no inconsistency between the patentee's position as to Claim 27 and the context in which “remote” appears in Claim 1.[4] The term “remote” should therefore be interpreted simply as “located some distance away.”

         Also of note, Claim 45 of the '659 Patent recites in relevant part (emphasis added):

45. A wireless video game system for detecting motion, comprising:
a remote processing system for placement at a distance from a user;
. . . .

         This explicit recital of “remote” with reference to “a distance from a user” provides additional support for not limiting the term “remote” to referring to a distance “from the user.” Cf. Phillips, 415 F.3d at 1314 (“To take a simple example, the claim in this case refers to ‘steel baffles,' which strongly implies that the term ‘baffles' does not inherently mean objects made of steel.”).

         The Court therefore hereby construes “remote” to mean “l ...


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