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Virginia Innovation Sciences, Inc. v. Amazon.Com, Inc.

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

September 9, 2019

VIRGINIA INNOVATION SCIENCES, INC.
v.
AMAZON.COM, INC., et al INNOVATION SCIENCES, LLC
v.
RESIDEO TECHNOLOGIES, INC. INNOVATION SCIENCES, INC.
v.
HTC CORPORATION INNOVATION SCIENCES, INC.
v.
VECTOR SECURITY, INC.

          CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER

          AMOS L. MAZZANT UNITED STATES DISTRICT JUDGE.

         Before the Court is Plaintiff Innovation Sciences, LLC's (“Plaintiff's” or “VIS's” or “Innovation's”)[1] Opening Claim Construction Brief (Dkt. #119), [2] Defendants Amazon.com, Inc., Amazon Digital Services LLC, Amazon Web Services, Inc. (collectively, “Amazon”), HTC Corporation (“HTC”), Resideo Technologies, Inc. (“Resideo”), and Vector Security, Inc.'s (“Vector's”) Responsive Claim Construction Brief (Dkt. #131 & Dkt. #145), Plaintiff's Reply Claim Construction Brief (Dkt. #144), Defendants' Sur-Reply Construction Brief (Dkt. #147-1; see Dkt. #166), Plaintiff's Supplemental Claim Construction Brief (Dkt. #186), Defendant Vector's Supplemental Responsive Claim Construction Brief (Dkt. #197), Plaintiff's Reply in Support of its Supplemental Claim Construction Brief (Dkt. #205), and Defendants' Notice of Supplemental Authority Regarding Defendants' Responsive Claim Construction Brief (Dkt. #199). Also before the Court are the parties' May 6, 2019 Joint Claim Construction Statement Pursuant to P.R. 4-3 (Dkt. #111) and the parties' August 19, 2019 Amended Joint Claim Construction Chart Pursuant to P.R. 4-5(d) (Dkt. #200).

         The Court held a claim construction hearing on August 28, 2019, to determine the proper construction of the disputed claim terms in United States Patents No. 9, 723, 443 (“the '443 Patent”), 9, 729, 918 (“the '918 Patent”), 9, 912, 983 (“the '983 Patent”), and 9, 942, 798 (“the '798 Patent”) (collectively, the “patents-in-suit”).

         The Court issues this Claim Construction Memorandum Opinion and Order and hereby incorporates-by-reference the claim construction hearing and transcript as well as the demonstrative slides presented by the parties during the hearing. For the following reasons, the Court provides the constructions set forth below.

         Table of Contents

         BACKGROUND ........................................................................................................................... 5

         LEGAL STANDARDS ................................................................................................................. 6

         ANALYSIS .................................................................................................................................. 10

         A. “wireless HUB system, ” “wireless hub, ” “centralized HUB system, ” and “centralized hub system” ......................................................................................................................... 10

         A-1. Additional “hub” Terms .................................................................................................. 20

         A-2. Related “system” Terms .................................................................................................. 21

         A-3. Supplemental “hub” Terms ............................................................................................. 22

         B. “central controller” Terms ................................................................................................... 23

         C. “management center system, ” “management system, ” and Related Terms ........................ 28

         D. “wireless signal conversion apparatus, ” “signal conversion unit, ” and “processing unit” . 36

         E. “transmitter” and “wireless transmitter” Terms .................................................................. 48

         F. “memory, ” “program code that includes instructions executable by said processor, ” and “program code executable by the processor” ..................................................................... 52

         G. “updated status [of the item]” and “updated item status” ................................................... 59

         H. “item status signal” ............................................................................................................. 63

         I. “[a/the] short range wireless communication [channel]” ..................................................... 68

         J. “wherein the short range wireless communication is a Zigbee communication” and “wherein the wireless [transmission] channel is a Zigbee channel” ................................... 75

         K. “merchant information” ...................................................................................................... 77

         L. “a requirement of the item” ................................................................................................. 80

         M. “an input interface configured to receive a wireless signal through a wireless communication network” and “a network interface configured to provide a communication through a network communication channel” ............................................ 82

         N. “wherein the mobile terminal is configured to transmit the encoded signal to the destination device through a predetermined communication channel in conjunction with a navigational command for the predetermined communication channel” ........................ 84

         O. Additional Terms ................................................................................................................ 84

         CONCLUSION ........................................................................................................................... 85

         BACKGROUND

         Plaintiff alleges infringement of United States Patents No. 9, 723, 443, 9, 729, 918, 9, 912, 983, and 9, 942, 798.

         The '443 Patent, titled “System and Method for Providing Locally Applicable Internet Content with Secure Action Requests and Item Condition Alerts, ” issued on August 1, 2017, and bears an earliest priority date of August 12, 2005. The Abstract of the '443 Patent states:

Optimized delivery of locally applicable Internet content to users. A cache of locally applicable Internet content is maintained in a local content server, based upon a monitoring of locations of users requesting Internet content. Requests for Internet content are received from user equipment through a wireless network base station, and served from the local content server, which is logically proximate to the wireless network base station. The caching of locally applicable Internet content may be maintained on a layered basis. Secure action request receipt and corresponding performance, and item condition alerts are also described.

         The '798 Patent, titled “Method and System for Efficient Communication, ” issued on April 10, 2018, and bears an earliest priority date of August 12, 2005. The Abstract of the '798 Patent states:

Methods and apparatus for efficiently directing communications are disclosed. On [sic] example entails receiving, from a mobile terminal, a communication directed to a cellular communication network, the communication being received in an alternative channel that differs from a channel of the cellular communication network. The communication is then converted for a relayed communication to the cellular communication network on behalf of the mobile terminal, the relayed communication being made through the cellular communication network.

         The '918 Patent and the '983 Patent resulted from continuations of the '798 Patent. Defendants submit that the '798 Patent, the '918 Patent, and the '983 Patent share a common specification. (Dkt. #132 at p. 3).

         Plaintiff submits: “All four patents are being asserted against the Amazon defendants, the ['918, '983, and '798] patents are being asserted against defendant HTC, while only the first patent (‘the '983 patent') is being asserted against defendants Vector Security and Resideo.” (Dkt. #119 at p. 1). Defendants submit: “Plaintiff asserts the '983 patent against all Defendants, the '798 and '918 patent against HTC and Amazon, and the '443 patent only against Amazon.” (Dkt. #131 at p. 3). “For ease of reference, Defendants cite to disclosures in the '983 patent, which Plaintiff asserts against all Defendants.” (Id. at p. 4).

         The '443 Patent resulted from a continuation of United States Patent No. 9, 369, 844 (“the '844 Patent”), and United States District Judge Liam O'Grady of the Eastern District of Virginia construed disputed terms in the '844 Patent in Virginia Innovation Sciences, Inc. v. Amazon.com, Inc., No. 1:16-CV-861, 2017 WL 3599642 (E.D. Va. Aug. 18, 2017) (“VIS I” or “Amazon I”). On appeal, the findings in VIS I were affirmed-in-part and vacated-in-part. Innovation Sciences, LLC v. Amazon.com, Inc., No. 2018-1495, 2019 WL 2762976 (Fed. Cir. July 2, 2019) (“Innovation Sciences”). Additional detail regarding litigation involving related patents in the Eastern District of Virginia is set forth in the Court's July 15, 2019 Memorandum Opinion and Order in the above-captioned case. (See Dkt. #161 at pp. 45-48).

         LEGAL STANDARDS

         Claim construction is a matter of law. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995). The purpose of claim construction is to resolve the meanings and technical scope of claim terms. U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). When the parties dispute the scope of a claim term, “it is the court's duty to resolve it.” O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008).

         “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) (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 1313-14; 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 rest of the specification, and the prosecution history. Phillips, 415 F.3d at 1312-13; Bell Atl. Network Servs., 262 F.3d at 1267. The Court gives claim terms their ordinary and customary meaning as understood by one of ordinary skill in the art at the time of the invention. 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 guides 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 unasserted, can provide additional instruction because “terms are normally used consistently throughout the patent.” Id. 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. at 1315 (quoting Markman, 52 F.3d at 979). “[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). In the specification, a patentee may define his own terms, give a claim term a different meaning than it would otherwise possess, or disclaim or disavow some claim scope. Phillips, 415 F.3d at 1316. Although the Court generally presumes terms possess their ordinary meaning, this presumption can be overcome by statements of clear disclaimer. See SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343-44 (Fed. Cir. 2001). 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 also 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, 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, 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); accord 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). “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, 334 F.3d at 1324. However, 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). Statements will constitute disclaimer of scope only if they are “clear and unmistakable statements of disavowal.” See Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1358 (Fed. Cir. 2003). An “ambiguous disavowal” will not suffice. Schindler Elevator Corp. v. Otis Elevator Co., 593 F.3d 1275, 1285 (Fed. Cir. 2010) (citation omitted).

         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 the 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 terms are 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.

         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., 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).

         ANALYSIS

         Agreed Claim Terms

         In their May 6, 2019 Joint Claim Construction Statement Pursuant to P.R. 4-3, the parties submit that “[t]he parties have not agreed to any constructions, ” but “the parties have met and conferred as required by P.R. 4-2(c) and have reduced the number of terms for which they seek construction in an effort to streamline the claim construction proceedings.” (Dkt. #111 at p. 2).

         Disputed Claim Terms

         A. “wireless HUB system, ” “wireless hub, ” “centralized HUB system, ” and “centralized hub system”

“wireless HUB system”
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
“one or more devices capable of wireless communication for communicating with user devices, sensors, or appliances” Indefinite and lack of written description under 35 U.S.C. § 112
“wireless hub”
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
“a device capable of wireless communication for communicating with user devices, sensors, or appliances” Indefinite and lack of written description under 35 U.S.C. § 112
“centralized HUB system” “centralized hub system”
Plaintiff’s Proposed Construction Defendants’ Proposed Construction
“one or more devices at a central location capable of wireless communication for communicating with user devices, sensors, or appliances” Indefinite and lack of written description under 35 U.S.C. § 112

(Dkt. #111, Ex. 1, at pp. 2-3; Dkt. #119, Ex. 5 at pp. 2-3). Defendants submit that the term “centralized hub system” appears in Claims 1, 2, and 81 of the '798 Patent, the term “centralized HUB system” appears in Claim 139 of the '983 Patent, the term “wireless HUB system” appears in Claims 22, 24, 62, and 117 of the '983 Patent, and the term “wireless hub” appears in Claims 116, 128, and 135 of the '918 Patent. (Dkt. #131 at p. 15; see Dkt. #111, Ex. 1 at pp. 2-3). Larger “hub” and “system” terms presented by the parties are addressed in Sections A-1, A-2, and A-3, below.

         1. The Parties' Positions

         Plaintiff argues that “the term ‘hub' refers to a well-known class of devices.” (Dkt. #119 at p. 12).

         Defendants respond that “[w]hile the terms ‘wireless,' ‘centralized,' and ‘hub' may individually have some meaning to one of ordinary skill in the art, the combination of those terms does not connote a structure and certainly not one sufficient to perform all the various functions claimed.” (Dkt. #131 at p. 16). Defendants also argue that “while the generic computing term ‘hub' may have some meaning in the art, the terms ‘wireless HUB' and ‘centralized HUB' (with ‘HUB' in all caps) are coined terms unique to the asserted patents.” (Id. at pp. 16-17). Further, Defendants argue: “[T]he patent claims the result of converting any received signal in any format from any network existing or to be developed and extracting from it information content of any type encoded in any manner, thus claiming far more than the patentees invented. Section 112, ¶ 6 exists precisely to provide limits on such vacuous and functional claims. See, e.g., Halliburton Energy Servs., Inc.[ v. M-I LLC], 514 F.3d [1244, ] 1255 [(Fed. Cir. 2008)].” (Dkt. #131 at p. 18).

         Plaintiff replies that “[b]ecause Defendants did not raise the issue of definiteness apart from the means-plus-function analysis, Defendants have waived their original contention that these terms were indefinite.” (Dkt. #144 at p. 19).

         In sur-reply, Defendants argue that, to avoid means-plus-function treatment under 35 U.S.C. § 112, ¶ 6, a claim must “recite not just generic structure but structure for performing the recited function entirely.” (Dkt. #147-1 at p. 2).

         2. Analysis

         Claims 22 and 139 of the '983 Patent, for example, recite (emphasis added):

22. A wireless HUB system for managing information communications comprising:
an input interface configured to receive a wireless signal through a wireless communication network;
a decoder; and
a network interface configured to provide a communication through a network communication channel,
wherein the wireless HUB system is configured to perform a conversion of the wireless signal to accommodate production of a corresponding information content, the wireless signal comprising a compressed signal, the conversion comprising decompressing the compressed signal;
wherein the decoder is configured to decompress the compressed signal;
wherein the wireless HUB system is further configured to communicate, through the network communication channel, information for managing an item status of an item in connection with a short range wireless communication regarding an updated status of the item; and
wherein the network communication channel is separate from a wireless channel for the short range wireless communication.
139. A centralized HUB system for managing information communications for a high definition digital display comprising:
a transceiver;
a decoder;
an encoder; and
a high definition digital output interface, wherein the transceiver is configured to communicate a data package comprising an identifier corresponding to a communication of an information content for production on the high definition digital display;
wherein the centralized HUB system is configured to perform a conversion of a multimedia signal corresponding to the information content to accommodate the production of the information content on the high definition digital display, the multimedia signal comprising a compressed signal;
wherein the compressed signal is a compressed high definition digital video signal; wherein the decoder is configured to decompress the compressed signal to a decompressed signal;
wherein the encoder is configured to encode the decompressed signal to an encoded signal, the encoded signal comprising an encoded decompressed high definition digital video signal; and
wherein the high definition digital output interface is configured to transmit the encoded signal to accommodate the production of the information content on the high definition digital display; and
wherein the conversion of the multimedia signal comprises decompressing by the decoder, the compressed signal to the decompressed signal, further followed by encoding, by the encoder, the decompressed signal produced by the decoder to produce the encoded signal for transmission through the high definition digital output interface.

         Title 35 U.S.C. § 112(f) (formerly § 112, ¶ 6) provides: “An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” “In exchange for using this form of claiming, the patent specification must disclose with sufficient particularity the corresponding structure for performing the claimed function and clearly link that structure to the function.” Triton Tech of Tex., LLC v. Nintendo of Am., Inc., 753 F.3d 1375, 1378 (Fed. Cir. 2014).

         “[T]he failure to use the word ‘means' . . . creates a rebuttable presumption . . . that § 112, para. 6 does not apply.” Williamson v. Citrix Online LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (citations and internal quotation marks omitted). “When a claim term lacks the word ‘means,' the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.” Id. at 1349 (citations and internal quotation marks omitted).

         Williamson, in an en banc portion of the decision, abrogated prior statements that the absence of the word “means” gives rise to a “strong” presumption against means-plus-function treatment. Id. (citation omitted). Williamson also abrogated prior statements that this presumption “is not readily overcome” and that this presumption cannot be overcome “without a showing that the limitation essentially is devoid of anything that can be construed as structure.” Id. (citations omitted). Instead, Williamson found, “[h]enceforth, we will apply the presumption as we have done prior to Lighting World . . . .” Id. (citing Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004)). In a subsequent part of the decision not considered en banc, Williamson affirmed the district court's finding that the term “distributed learning control module” was a means-plus-function term that was indefinite because of lack of corresponding structure, and in doing so Williamson stated that “‘module' is a well-known nonce word.” 792 F.3d at 1350.

         Here, Defendants have not shown that “hub” is a “nonce” term under Williamson, and Defendants submit no persuasive evidence that the term “hub” fails to connote structure in the relevant art. See 792 F.3d at 1350. Nothing in the specification suggests that “hub” lacks structure. See '983 Patent at 14:66-15:8 (“the WHUB 804 [(wireless HUB)] may keep a database of household requirements and inventories”); see also Id. at 24:18-28 (“centralized HUB system”) & 25:17-24.

         Plaintiff submits a technical dictionary definition of “hub, ” thereby demonstrating that the term “hub” refers to a known class of structures in the art of computer networking. (See Dkt. #119, Ex. 6, Microsoft Computer Dictionary 260 (5th ed. 2002) (“In a network, a device joining communication lines at a central location, providing a common connection to all devices on the network. The term is an analogy to the hub of a wheel.”). The opinions of Defendants' expert are not to the contrary. For example, Defendants' expert opines:

This term, although made up of certain words that alone have a meaning to those of skill in the art, does not have a computer science meaning as recited in the claims of the '983 patent. In particular, although a “hub” is, in general, a term familiar to those of skill in computer networking, such a hub is not known to perform the function recited in this claim term; and it is also apparent from the specification's consistent use of “HUB” in all capital letters that some other (undefined) meaning of “HUB” was intended here.

(Dkt. #119, Ex. 13, May 6, 2019 Johnson Decl. at ¶ 43) (emphasis added).

         Defendants fail to support their contention that the known structure must be known to function in the specific manner set forth in the claims. See Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1373 (Fed. Cir. 2003) (finding that “circuit” connoted structure); see also Chrimar Holding Co., LLC v. ALE USA Inc., 732 Fed.Appx. 876, 884-85 (Fed. Cir. June 1, 2018) (as to “central piece of equipment, ” “Ethernet terminal equipment, ” “BaseT Ethernet terminal equipment, ” and “end device, ” stating that “[a] claim term that has an understood meaning in the art as reciting structure is not a nonce word triggering § 112, ¶ 6”); Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1119 (Fed. Cir. 2017) (finding “wireless device means” to not be a means-plus-function term, noting that “it is sufficient if the claim term is used in common parlance or by persons of skill in the pertinent art to designate structure, even if the term covers a broad class of structures and even if the term identifies the structures by their function”) (quoting TecSec, Inc. v. Int'l Bus. Machs. Corp., 731 F.3d 1336, 1347 (Fed. Cir. 2013)); Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1008 (Fed. Cir. 2018) (finding that “user interface code” and “program” were not nonce words; noting that “the mere fact that the disputed limitations incorporate functional language does not automatically convert the words into means for performing such functions”).

         This finding is consistent with principles articulated by the Federal Circuit prior to the abrogated Lighting World decision. See Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (finding that “detent mechanism” was not a means-plus-function term because “‘detent' denotes a type of device with a generally understood meaning in the mechanical arts, even though the definitions are expressed in functional terms”; “It is true that the term ‘detent' does not call to mind a single well-defined structure, but the same could be said of other commonplace structural terms such as ‘clamp' or ‘container.' What is important is not simply that a ‘detent' or ‘detent mechanism' is defined in terms of what it does, but that the term, as the name for structure, has a reasonably well understood meaning in the art.”).

         Defendants' argument resembles an argument as to whether the patents disclose sufficient corresponding structure, but this is a distinct inquiry that arises only if 35 U.S.C. § 112, ¶ 6 is found to apply. Defendants' Notice of Supplemental Authority Regarding Defendants' Responsive Claim Construction Brief (Dkt. #199) cites MTD Products Inc. v. Iancu, No. 2017-2292, __F.3d__, 2019 WL 3770828 (Fed. Cir. Aug. 12, 2019). In MTD, the Federal Circuit found “mechanical control assembly . . . configured to . . .” to be “similar to other generic, black-box words that this court has held to be nonce terms similar to ‘means' and subject to § 112, ¶ 6, ” and the court vacated a finding that 35 U.S.C. § 112, ¶ 6 did not apply. Id., at *5. In the present case, by contrast, Defendants' expert acknowledges that a “hub” is a known structure. (Dkt. #119, Ex. 13, May 6, 2019 Johnson Decl. at ¶ 43) (quoted above). Moreover, the analysis in MTD further undercuts Defendants' argument that the structure must be known to function in the specific manner claimed:

Interpretation of an asserted means-plus-function limitation involves two steps. First, we determine if the claim limitation is drafted in means-plus-function format. As part of this step, we consider whether the claim limitation connotes “sufficiently definite structure” to a person of ordinary skill in the art. If we conclude that the limitation is in means-plus-function format, the second step requires us to review the specification to identify the structure that performs the claimed function(s) and thus “corresponds to” the claimed means. While related, these two inquiries are distinct.

MTD, 2019 WL 3770828, at *6 (emphasis added).

         At the August 28, 2019 hearing, Defendants emphasized the statement in MTD that “[i]n assessing whether the claim limitation is in means-plus-function format, we do not merely consider the introductory phrase (e.g., ‘mechanical control assembly') in isolation, but look to the entire passage including functions performed by the introductory phrase.” Id., at *4. Immediately following this sentence, MTD cited Apex generally (without a pin cite). 325 F.3d 1364. At the August 28, 2019 hearing, Defendants cited the statement in Apex that: “The threshold issue for all the limitations involving the term ‘circuit' is whether the term itself connotes sufficient structure to one of ordinary skill in the art to perform the functions identified by each limitation.” Id. at 1373. Ironically, Apex held that “first interface circuit” and “second interface circuit” were not means-plus-function terms, finding that “it is clear that the term ‘circuit,' by itself connotes some structure” and, as to “interface circuit, ” “the ordinary meaning of this term connotes specific structures to one of ordinary skill in the art.” Id. at 1373-74; see Id. at 1375 (noting that, on remand, challenger must “prove by a preponderance of the evidence that the limitations, as a whole, do not connote sufficiently definite structure to one of ordinary skill in the art”). Again, in the present case, Defendants fail to show that the “hub” structures known in the art must be known as performing all of the specific functions set forth in the claims at issue. MTD, Apex, and other similar authorities cited by Defendants do not compel otherwise.

         Further, Defendants have not shown that instances of capitalization of “HUB” demonstrate that the inventor coined a new term. See, e.g., CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (“the claim term will not receive its ordinary meaning if 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”) (emphasis added).

         The term “hub” is not analogous to the term “cheque standby unit” that failed to connote sufficiently definite structure in Diebold Nixdorf, Inc. v. International Trade Commission, 899 F.3d 1291, 1298 (Fed. Cir. 2018), cited by Defendants. In particular, Diebold found that “the claims do not recite any structure, much less ‘sufficiently definite structure,' for the ‘cheque standby unit.'” Id. In the present case, by contrast, Defendants' expert acknowledges that a “hub” is a known structure. (Dkt. #119, Ex. 13, May 6, 2019 Johnson Decl. at ¶ 43) (quoted above). Defendants' reliance on Advanced Ground Information Systems, Inc. v. Life360, Inc. is similarly unavailing. 830 F.3d 1341, 1348 (Fed. Cir. 2016) (as to “symbol generator, ” stating that “[i]rrespective of whether the terms ‘symbol' and ‘generator' are terms of art in computer science, the combination of the terms as used in the context of the relevant claim language suggests that it is simply an abstraction that describes the function being performed (i.e., the generation of symbols)”).

         Defendants' reliance on the Danco case is also unpersuasive. See Danco Inc. v. Fluidmaster, Inc., No. 5:16-CV-73, 2017 WL 4225217, at *7 (E.D. Tex. Sept. 22, 2017). In particular, Defendants cite Danco as purported support for Defendants' argument that “even if these terms did connote some generic structure, they do not connote sufficient structure to ‘perform entirely' the recited functions, which they must to avoid the requirements of § 112, ¶ 6.” (Dkt. #131 at p. 17). Yet, Danco quoted the “perform entirely” language from authority regarding when a term that expressly uses the word “means” is not governed by 35 U.S.C. § 112, ¶ 6. See Personalized Media Commc'ns, LLC v. Int'l Trade Comm'n, 161 F.3d 696, 704 (Fed. Cir. 1998) (“‘[W]here a claim recites a function, but then goes on to elaborate sufficient structure, material, or acts within the claim itself to perform entirely the recited function, the claim is not in means-plus-function format' even if the claim uses the term ‘means.'”) (quoting Sage Prods. v. Devon Indus., Inc., 126 F.3d 1420, 1427-28 (Fed. Cir. 1997)). Danco is therefore not analogous to the present case, in which the terms at issue do not use the word “means.”

         The Court concludes that Defendants fail to rebut the presumption against means-plus-function treatment. Defendants present no alternative proposed constructions. No. further construction is necessary.

         Defendants have also presented an indefiniteness argument under Nautilus:

Moreover, because the patents define these terms solely by reference to their function, but provide no limiting solution for performing the claimed functions, they are also indefinite under § 112, ¶ 2. Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014) (claims that do not “inform those skilled in the art about the scope of the invention with reasonable certainty” are indefinite under § 112); (Johnson Decl. ¶ 617).

(Dkt. #131 at p. 22). Defendants have not adequately supported their argument or otherwise persuasively shown that the claim terms at issue lack reasonable certainty under Nautilus. (See id.; see also Dkt. #119, Ex. 13, May 6, 2019 Johnson Decl. at ¶ 617).

         The Court therefore hereby construes “wireless HUB system, ” “wireless hub, ”centralized HUB system, ” and “centralized hub system” to have their plain meaning.

         A-1. Additional “hub” Terms

         Additional “hub” terms identified by the parties are subject to the same analysis as set forth above regarding the terms “wireless HUB system, ” “wireless hub, ” “centralized HUB system, ” and “centralized hub system.” These terms include (see Dkt. #119 at pp. 21-22 & 39-40; see also Dkt. #200, Ex. E at pp. 2-9; id., Ex. F at pp. 1-5; id., Ex. G at pp. 1-2)[3]:

D55. “wherein the wireless hub is configured to send a data package to the management center system through a wireless communication network based on the request for the particular information content, the data package including information for the unique hub identifier” ('918 Patent, Claims 33, 116, 128, 135);
D81. “wherein the wireless hub is configured to receive the particular information content through the wireless communication network in connection with identification of the wireless hub” ('918 Patent, Claims 116, 128, 135);
D82. “wherein the wireless hub is configured to perform a conversion of a corresponding signal of the particular information content to accommodate production of the particular information content” ('918 Patent, Claims 33, 116, 128, 135);
D84. “wherein the wireless hub is configured to receive the particular information content through the wireless communication network in connection with identification, by the management center system, of the wireless hub” ('918 Patent, Claim 33);
D86. “centralized hub system configured to: receive, through a wireless communication network, an information content requested by a user in connection with identification of the centralized hub system based on recognition of the unique hub identifier, the information content carried by a compressed digital video signal” ('798 Patent, Claim 1);
D87. “wherein the centralized hub system is further configured to communicate the information through the WLAN for said managing the household item status” ('798 Patent, Claim 2);
D20. “wherein the wireless HUB system is configured to perform a conversion of the wireless signal to accommodate production of a corresponding information content” ('983 Patent, Claims 22, 62);
D21. “wherein the wireless HUB system is further configured to communicate, through the network communication channel, information for managing an item status of an item in connection with a short range wireless communication regarding an updated status of the item” ('983 Patent, Claim 22);
D25. “wherein the wireless HUB system is configured to notify a user about the updated status according to a configuration setting” ('983 Patent, Claim 24);
D42. “wherein the wireless HUB system is configured to receive a signal from the item status sensing device” ('983 Patent, Claim 117); D43. “wherein the wireless HUB system is further configured to identify the item in connection with recognition of the information corresponding to the unique identifier” ('983 Patent, Claim 117);
D44. “wherein the wireless HUB system is further configured to communicate, through the network communication channel, information about the updated status to a user device associated with the item” ('983 Patent, Claim 117);
D45. “wherein the wireless HUB system is configured to notify a user of the updated status according to a configuration setting” ('983 Patent, Claim 117); and
D50. “wherein the centralized HUB system is configured to perform a conversion of a multimedia signal corresponding to the information content to accommodate the production of the information content on the high definition digital display, the multimedia signal comprising a compressed signal” ('983 Patent, Claim 139).[4]

         The Court therefore likewise hereby construes these terms to have their plain meaning.

         A-2. Related “system” Terms

         Certain “system” terms identified by the parties refer back to terms such as “wireless HUB system, ” “centralized HUB system, ” and “centralized hub system” and are subject to the same analysis as set forth above. These terms include (see Dkt. #119 at pp. 45-46; see also Dkt. #200, Ex. F at pp. 16-17) (emphasis added):

D56. “wherein, in connection with recognition, by the system, of information for the unique identifier for the household item associated with the short range wireless communication, the system is configured to update the household item status information for the household item corresponding to the updated status of the household item” ('918 Patent, Claim 33); and
D66. “wherein the system further comprises a signal conversion unit configured to receive the multimedia information content and convert a corresponding signal of the multimedia information content to accommodate the production of the multimedia information content by the digital television” ('918 Patent, Claim 128).

         The Court therefore likewise hereby construes these terms to have their plain meaning.

         A-3. Supplemental “hub” Terms

         In supplemental briefing, the parties addressed certain supplemental “hub” terms. The parties present the same arguments for these supplemental “hub” terms as set forth above regarding the terms “wireless HUB system, ” “wireless hub, ” “centralized HUB system, ” and “centralized hub system.” (See Dkt. #186 at pp. 2-7; see also Dkt. #197 at pp. 3-4; Dkt. #205 at pp. 1-2).[5] The same analysis thus applies. These terms are (Dkt. #186 at p. 1; see Dkt. #111, Ex. 1 at pp. 9- 10 & 11-12; see also Dkt. #200, Ex. E at pp. 13-15):

D24. “wherein the wireless HUB system is further configured to communicate a video from a video camera to a user's terminal at least in part through a cellular network” ('983 Patent, Claim 25); and
D26. “wherein the wireless HUB system is configured to communicate information designated for a user of the wireless HUB system through a cellular network” ('983 Patent, Claim 45).

         The Court therefore likewise hereby construes these terms to have their plain meaning.

         B. “central controller” Terms

Plaintiff's Proposed Construction

Defendants' Proposed Construction

Not governed by 35 U.S.C. § 112, ¶ 6

Governed by 35 U.S.C. § 112, ¶ 6

(See Dkt. #119, Ex. 5 at pp. 28-31). The parties have submitted the following “central controller” terms (see Dkt. #119 at p. 32; see also Dkt. #200, Ex. H at pp. 2-7):

D114. “wherein the central controller is configured to receive information regarding the item status signal and identify the item in connection with a successful transmission of the item status signal from the wireless transmitter” ('443 Patent, Claim 1);
D115. “wherein the central controller is further configured to identify the item is based on recognition of the unique identifier of the item stored in the memory” ('443 Patent, Claim 1);
D116. “wherein the central controller is further configured to perform a processing of a purchase request for the item to increase the household inventory of the item in connection with identification of the item” ('443 Patent, Claim 1);
D117. “wherein the central controller is further configured to communicate information for the processing of the purchase request through a network communication channel to complete the processing of the purchase request, the network communication channel being separate from the wireless transmission channel established for the transmission of the item status signal” ('443 Patent, Claim 1); and
D118. “wherein the central controller is configured to send confirmation information regarding the processing of the purchase request” ('443 Patent, Claim 1).

         1. The Parties' Positions

         Plaintiff argues that “[t]he claimed ‘controller' and the related term ‘microcontroller' are part of a well-known class of structures, ” and “[t]he claims themselves recite additional structural interconnectivity with other elements of the claims.” (Dkt. #119 at pp. 32 & 33). Further, Plaintiff argues that “[t]he specification also describes the structural interconnection that examples of the central controller may have in the disclosed embodiments.” (Id. at p. 33).

         Defendants respond that “[w]hile the terms ‘central' and ‘controller' may individually have some meaning, the combination of those terms does not connote a structure sufficient to perform the claimed functions.” (Dkt. #131 at p. 23).

         Plaintiff replies that technical dictionaries confirm that “those of skill in the art understand that the term ‘controller' refers to known structures.” (Dkt. #144 at p. 11; see Id. at pp. 10-11).

         2. Analysis

         Claim 1 of the '443 Patent recites (emphasis added):

         1. A system for facilitating electronic communications, the system comprising:

a central controller;
a memory; and
a wireless transmitter configured to transmit, through a wireless transmission channel, an item status signal in connection with an initiation of an increase of a household inventory of an item, the wireless transmission channel being established for transmission of the item status signal in a local wireless communication network in response to an indication of an updated status of the item;
wherein the memory is configured to store a unique identifier for the item and information related with the household inventory of the item, the information related with the household inventory of the item including a purchase requirement of the item;
wherein the wireless transmitter is designated to transmit the item status signal;
wherein the central controller is configured to receive information regarding the item status signal and identify the item in connection with a successful transmission of the item status signal from the wireless transmitter;
wherein the wireless transmitter is associated with the item; wherein the information regarding the item status signal comprises information for the unique identifier for the item; wherein the central controller is further configured to identify the item is based on recognition of the unique identifier of the item stored in the memory;
wherein the central controller is further configured to perform a processing of a purchase request for the item to increase the household inventory of the item in connection with identification of the item;
wherein the central controller is further configured to communicate information for the processing of the purchase request through a network communication channel to complete the processing of the purchase request, the network communication channel being separate from the wireless transmission channel established for the transmission of the item status signal;
wherein the information for the processing of the purchase request comprises a shipping payment information for the purchase request address for the item; and
wherein the central controller is configured to send confirmation information regarding the processing of the purchase request.

         Legal principles regarding 35 U.S.C. § 112, ¶ 6 are set forth above as to the “hub” terms. Here, Defendants have not shown that “controller” (or “central controller”) is a “nonce” term under Williamson, and Defendants submit no persuasive evidence that the term “central controller” fails to connote structure in the relevant art. See 792 F.3d at 1350. Nothing in the specification suggests that “central controller” lacks structure. See '443 Patent at 4:43-51 (describing “Radio Network Controller” as a “conventional element[] of a cellular network”).

         Plaintiff submits technical dictionary definitions of “controller, ” thereby reinforcing that the term “controller” refers to a known class of structures in the art. (See Dkt. #144, Ex. 18, The IEEE Standard Dictionary of Electrical and Electronics Terms 217 (6th ed. 1996) (“The component of a system that functions as the system controller. A controller typically sends program messages to and receives response messages from devices.”); see also id., Ex. 19, IBM Dictionary of Computing 145 (10th ed. 1993) (“A device that coordinates and controls the operation of one or more input/output devices, such as workstations, and synchronizes the operation of such devices with the operation of the system as a whole.”)).[6]

         Defendants' expert opines: “This term, although made up of certain words that alone have a meaning to those of skill in the art, does not have a computer science meaning as recited in the claims of the '443 patent.” (Dkt. #119, Ex. 13, May 6, 2019 Johnson Decl. at ¶ 524).

         Defendants fail to show, however, how the modifier “central” purportedly renders the well-known meaning of controller inapplicable. The opinion of Defendants' expert is therefore unpersuasive. Defendants' reliance on Advanced Ground Information Systems, Inc. v. Life360, Inc. is similarly unavailing. See 830 F.3d at 1348 (as to “symbol generator, ” stating that “[i]rrespective of whether the terms ‘symbol' and ‘generator' are terms of art in computer science, the combination of the terms as used in the context of the relevant claim language suggests that it is simply an abstraction that describes the function being performed (i.e., the generation of symbols)”). These findings are consistent with principles articulated by the Federal Circuit prior to the abrogated Lighting World decision. See Greenberg, 91 F.3d at 1583 (quoted above).

         The Court therefore concludes that Defendants fail to rebut the presumption against means-plus-function treatment. Defendants present no alternative proposed constructions. No. further construction is necessary.

         Defendants cite St. Isidore Research, LLC v. Comerica Inc., et al., in which the Court found that “how the ‘processor configured to . . .' terms operate with the other claimed components is not sufficiently recited or described.” No. 2:15-CV-1390, 2016 WL 4988246, at *14 (E.D. Tex. Feb. 9, 2017). In the present case, the claim language describes how the controller “interact[s] . . .with other limitations in the claim to achieve [its] objectives.” Id. In particular, “the central controller is configured to receive information regarding the item status signal and identify the item in connection with a successful transmission of the item status signal from the wireless transmitter, ” “identify the item . . . based on recognition of the unique identifier of the item stored in the memory, ” “perform a processing of a purchase request for the item to increase the household inventory of the item in connection with identification of the item, ” “communicate information for the processing of the purchase request through a network communication channel to complete the processing of the purchase request, ” and “send confirmation information regarding the processing of the purchase request.” On balance, St. Isidore is not persuasive here. Also, Defendants' reliance on Danco is unpersuasive for the same reasons set forth regarding the above-discussed “hub” terms. See Danco, 2017 WL 4225217, at *7.

         Defendants further argue that the claim fails to set forth sufficient structure because “[t]he central controller must be given information about the format and meaning of the unique identifier of the item, and would need direction as to where the unique identifier is stored in memory.” In light of the above-discussed evidence that “controller” has a well-known structural meaning, Defendants' argument might perhaps be relevant to consideration of ...


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