United States District Court, E.D. Texas, Marshall Division
CLAIM CONSTRUCTION MEMORANDUM AND ORDER
GILSTRAP, UNITED STATES DISTRICT JUDGE
the Court is the Opening Claim Construction Brief (Dkt. No.
73) filed by Plaintiff Rembrandt Wireless Technologies, LP
(“Plaintiff” or “Rembrandt”). Also
before the Court are the Responsive Claim Construction Brief
(Dkt. No. 79) filed by Defendant Apple Inc.
(“Defendant” or “Apple”) as well as
Plaintiff's reply (Dkt. No. 81).
Court held a hearing on December 2, 2019.
alleges infringement of United States Patents No. (“the
'580 Patent”) and 8, 457, 228 (“the '228
Patent”) (collectively, “the
patents-in-suit”). (Dkt. No. 73, Exs. 1-2).
patents-in-suit are both titled “System and Method of
Communication Using At Least Two Modulation Methods.”
The '580 Patent issued on September 20, 2011, and bears a
filing date of August 19, 2009. The '228 Patent issued on
June 4, 2013, and bears a filing date of August 4, 2011. The
'228 Patent is a continuation of the '580 Patent.
Both patents-in-suit bear an earliest priority date of
December 5, 1997.
submits that the patents-in-suit “cover a device that
communicates using different types of modulation
methods” and relate to the well-known
“Bluetooth” wireless communication standards.
See Dkt. No. 73 at 1. The Abstract of the '580
Patent is representative and states:
A device may be capable of communicating using at least two
type types [sic] of modulation methods. The device
may include a transceiver capable of acting as a master
according to a master/slave relationship in which
communication from a slave to a master occurs in response to
communication from the master to the slave. The master
transceiver may send transmissions discrete transmissions
[sic] structured with a first portion and a payload
portion. Information in the first portion may be modulated
according to a first modulation method and indicate an
impending change to a second modulation method, which is used
for transmitting the payload portion. The discrete
transmissions may be addressed for an intended destination of
the payload portion.
Court previously construed terms in the patents-in-suit in
Rembrandt Wireless Technologies, LP v. Samsung
Electronics Co., Ltd., et al., No. 2:13-CV-213, Dkt. No.
114, 2014 WL 3385125 (E.D. Tex. July 10, 2014)
(“Samsung”). A jury in Samsung
found infringement and no invalidity. The Court denied a
motion for judgment as a matter of law as to obviousness. No.
2:13-CV-213, Dkt. No. 352, at 5-7 (E.D. Tex. Feb. 17, 2016)
(“Samsung JMOL”). The Court
“decline[d] to grant new trial on . . . re-urged issues
of claim construction.” Id. at 8. The Federal
Circuit affirmed as to claim construction and obviousness and
remanded as to issues related to damages. See Rembrandt
Wireless Techs., LP v. Samsung Elecs. Co., 853 F.3d 1370
(Fed. Cir. 2017).
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).
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 Pharm.
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).
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).
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).
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.
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
Phillips, 415 F.3d at 1316. Consequently,
Phillips emphasized the important role the
specification plays in the claim construction process.
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
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.
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.
general, prior claim construction proceedings involving the
same patents-in-suit are “entitled to reasoned
deference under the broad principals of stare
decisis and the goals articulated by the Supreme Court
in Markman, even though stare decisis may
not be applicable per se.” Maurice
Mitchell Innovations, LP v. Intel Corp., No.
2:04-CV-450, 2006 WL 1751779, at *4 (E.D. Tex. June 21, 2006)
(Davis, J.); see TQP Development, LLC v. Intuit
Inc., No. 2:12-CV-180, 2014 WL 2810016, at *6 (E.D. Tex.
June 20, 2014) (Bryson, J.) (“[P]revious claim
constructions in cases involving the same patent are entitled
to substantial weight, and the Court has determined that it
will not depart from those constructions absent a strong
reason for doing so.”); see also Teva, 135
S.Ct. at 839-40 (“prior cases will sometimes be binding
because of issue preclusion and sometimes will serve as
persuasive authority”) (citation omitted); Finisar
Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1329 (Fed.
Cir. 2008) (noting “the importance of uniformity in the
treatment of a given patent”) (quoting Markman v.
Westview Instruments, Inc., 517 U.S. 370, 390 (1996)).
their September 9, 2019 P.R. 4-3 Joint Claim Construction
Statement, the parties submitted: “The Parties have not
agreed on any constructions. However, the Parties agree that
the terms that are not proposed for construction . . . do not
require construction.” (Dkt. No. 70, at 2.)