United States District Court, D. New Mexico
MEMORANDUM AND ORDER ON CLAIM CONSTRUCTION
F. BATAILLON SENIOR UNITED STATES DISTRICT JUDGE
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.
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.
1, the only independent claim of the '817 patent, is
representative of the asserted claims. It
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.
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.
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.
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
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)).
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
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”).
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).
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.
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 ...