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Applied Capital, Inc. v. The ADT Corp.

United States District Court, D. New Mexico

August 12, 2019




         This matter is before the Court for resolution of issues of claim construction after a hearing on June 14, 2019, pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). Also pending is an emergency motion to preclude expert testimony and to strike untimely claim construction positions. Doc. 137. Expert testimony was not received at the hearing, nor was the construction of “superimposed visual indicators” argued or addressed at the hearing. Consequently, the motion is moot.

          I. BACKGROUND

         Applied Capital, Inc. (“Applied”) filed this action for patent infringement against defendants The ADT Corporation and ADT, LLC (collectively, “ADT”). At issue are U.S. Patent Nos. 8, 378, 817 (“'817 patent”) and 9, 728, 082 (“'082 patent”), entitled “Premises Monitoring System, ” which relate generally to computer systems, and more specifically, to an improved premise monitoring system in connection with home security systems and alarms. Plaintiff Applied is the assignee of the '817 patent and the '082 patents. It alleges defendants ADT Corporation and ADT, LLC (“ADT”) infringe the '817 patent and the '082 patent. The '082 patent is a continuation of the '817 patent and both patents share the same title, inventor, and disclosure (the “Common Specification”). The patents differ only in their particular implementation and claims. The '817 patent is a method patent for methods and systems of interfacing with a home security system, accessible not only from hardware contemplated by the invention, but from remote locations. The '082 patent describes a “non-volatile and non-transient computer-readable medium comprising machine-executable code” performing steps identical to those of claim 1 of the '817 patent. The '082 patent claims the computerized embodiments of the invention described in the '817 patent.

         Claim 1, the only independent claim of the '817 patent, is representative of the asserted claims. It provides:[1]

         1. A method comprising:

receiving one or more signals containing a device identifier and a device condition from one or more remote alarm monitoring systems; retrieving enhanced information based on the device identifier and the device condition; determining one or more communication methods and communication destinations based on the device identifier and the device condition; and dispatching the enhanced information to the one or more communication destinations using the one or more communication methods; and wherein the retrieving enhanced information based on the device identifier and the device condition comprises retrieving images based on the device identifier and the device condition, the images comprising all of the members selected from the group consisting of superimposed visual indicators, hierarchically organized graphical images, and vector-based graphical images.

Doc. 102-2, Ex. 1 at 18:45-63; see also Ex. 1, FIG. 1.

         Applied generally contends that the claims of the patent in question define the invention in clear and simple terms that a jury can understand. Defendants disagree and contend that this Court should construe a number of the terms and phrases. The Court held oral argument on the motions on June 14, 2019. The Court has carefully reviewed all submissions and pleadings by the parties, and in particular those submissions relating to the claim constructions and reviewed the relevant caselaw. The court makes the following findings.


         A. Law

         The claims of a patent define the scope of the patent. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). The claims of a patent are of primary importance in determining what is patentable and the function and purpose of a claim is to “delimit the right to exclude.” Id. at 1312. The purpose of claim construction is to “determin[e] the meaning and scope of the patent claims asserted to be infringed.” Markman, 52 F.3d at 976. The construction of the terms in a patent is a matter of law reserved entirely for the court. Markman, 517 U.S. at 372. A claim construction order will dictate how the court will instruct the jury regarding a claim's scope. O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1359 (Fed. Cir. 2008). “A district court is not obligated to construe terms with ordinary meanings, lest trial courts be inundated with requests to parse the meaning of every word in the asserted claims.” Id. However, when the parties raise an actual dispute regarding the proper scope of these claims, the Court, not the jury, must resolve that dispute. Id. at 1360.

         The words of a claim are generally given their ordinary and customary meaning, which is the meaning a term would have to a person of ordinary skill in the art in question at the time of the invention. Phillips, 415 F.3d at 1313. The inquiry into how a person of ordinary skill in the art understands a term provides an objective baseline for which to begin claim interpretation. Id. Importantly, a 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 claim appears, but in the context of the entire patent, including the specification. Id. (noting that a court does not look to the ordinary meaning of the term in a vacuum; it must look at the ordinary meaning in the context of the written description and the prosecution history).

         Absent contravening evidence from the specification or prosecution history, plain and unambiguous claim language controls the construction analysis. DSW, Inc. v. Shoe Pavilion, Inc., 537 F.3d 1342, 1347 (Fed. Cir. 2008). “In some cases, the ordinary meaning of claim language . . . may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words.” Phillips, 415 F.3d at 1314. However, in many cases, the meaning of a claim term as understood by persons of skill in the art is not readily apparent. Id. In cases that involve “little more than the application of the widely accepted meanings of commonly understood words, ” general purpose dictionaries may be helpful, but in many cases, determining the ordinary and customary meaning of the claim requires examination of terms that have a particular meaning in a field of art and the court “must look to those sources that are available to the public that show what a person of skill in the art would have understood the disputed claim language to mean.” Id. at 1314. “Those sources include ‘the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.'” Id. (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)).

         The claims themselves provide substantial guidance as to the meaning of particular claim terms, quite apart from the written description and the prosecution history. Phillips, 415 F.3d at 1314. The context in which a term is used is highly instructive-other claims of the patent in question can also be “valuable sources of enlightenment as to the meaning of a claim term, ” as can differences among claims. Id. (also noting that the usage of term in one claim can often illuminate the meaning of the same term in other claims). Generally, courts reject construing entire sentences. See, e.g., Oplus Techs., Ltd. v. Vizio, Inc., No. 12-05707, 2012 WL 5519198, *1 (C.D. Cal. Oct. 31, 2012) (“Indeed, construing 50-word phrases heighten the risk of a Court rewriting claims”).

         Because the claims do not stand alone, but are part of a fully integrated written instrument, the specification is usually the best guide to the meaning of a disputed term. Id. 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. Id. Departing from a term's plain meaning is appropriate when the patentee acted as its own lexicographer. See Honeywell Int'l, Inc. v. Universal Avionics Sys. Corp., 493 F.3d 1358, 1361 (Fed. Cir. 2007) (“When a patentee defines a claim term, the patentee's definition governs, even if it is contrary to the conventional meaning of the term”).

         The patent's prosecution history, if it is in evidence, should be considered, second in importance to the patent's specification. Id. at 1317 (noting, however, that because it represents an ongoing negotiation, the prosecution history “often lacks the clarity of the specification and is thus less useful for claim construction purposes”). When looking at a specification in the patent, the court adheres to two axioms: (1) claims ‘must be read in view of the specification, of which they are a part, and (2) a court may not read a limitation from the specification into the claims. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 904 (Fed. Cir. 2004); Innovad Inc. v. Microsoft Corp., 260 F.3d 1326, 1332 (Fed. Cir. 2001). The distinction between using the specification to interpret the meaning of a claim and importing limitations from the specification into the claim can be difficult to apply in practice. Phillips, 415 F.3d 1323. The purposes of the specification are to teach and enable those of skill in the art to make and use the invention and to provide a best mode for doing so, and “[o]ne of the best ways to teach a person of ordinary skill in the art how to make and use the invention is to provide an example of how to practice the invention in a particular case.” Id. On reading the specification in that context, it will often become clear whether the patentee is setting out specific examples of the invention to accomplish those goals, or whether the patentee instead intends for the claims and the embodiments in the specification to be strictly coextensive. Id. (noting also that “there will still remain some cases in which it will be hard to determine whether a person of skill in the art would understand the embodiments to define the outer limits of the claim term or merely to be exemplary in nature”). A construction that excludes the preferred embodiment of a patent is “rarely, if ever, correct.” Adams Respiratory Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283, 1290 (Fed. Cir. 2010).

         Although intrinsic evidence is preferred, courts are also authorized to rely on extrinsic evidence “which consists of all evidence external to the patent and prosecution history including expert and inventor testimony, dictionaries and learned treatises.” Phillips, 415 F.3d 1323 (noting that “extrinsic evidence is less significant than the intrinsic record in determining the ‘legally operative meaning of claim language'”). Id. The court is guided in its endeavor by several “canons of construction” or guideposts. Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1376 (Fed. Cir. 2001). Under the doctrine of claim differentiation, a dependent claim has a narrower scope than the claim from which it depends and an independent claim has a broader scope than the claim that depends from it. Free Motion Fitness, Inc. v. Cybex Int'l, Inc., 423 F.3d 1343, 1351 (Fed. Cir. 2005). Also, ordinarily, claims are not limited to the preferred embodiments disclosed in the specification. Phillips, 415 F.3d at 1323. Different words in a patent have different meanings and the same words have the same meaning. Innova/Pure Water, Inc., 381 F.3d at 1119-20. Use of the open-ended term of art, “comprising, ” allows the addition of other elements so long as the named elements, which are essential, are included. See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1271 (Fed. Cir. 1986) (noting that “comprising” opens a method claim to the inclusion of additional steps, but does not affect the scope of the structure recited within the steps). If possible, claims should be construed so as to preserve the claim's validity, but that maxim is limited “to cases in which ‘the court concludes, after applying all the available tools of claim construction, that the claim is still ambiguous.'” Phillips, 415 F.3d at 1327 (quoting Liebel-Flarsheim, 358 F.3d at 911). When a document is “incorporated by reference” into a host document, such as a patent, the referenced document becomes effectively part of the host document as if it were explicitly contained therein. Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1329 (Fed. Cir. 2001).

         B. Claim Construction

         The Court has carefully reviewed the patent at issue and the intrinsic evidence. The court's claim construction is generally guided by the language of the claims, in the context of the other claims of the patent and the specifications. The intrinsic evidence of record provided a sufficient foundation for the court's claim construction. No expert testimony was adduced at the ...

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