IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
`
`§
`
`§§
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`§§
`
`§ CIVIL ACTION NO. H-18-2108
`§
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`§§
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`§
`
`ALARM.COM INC. and
`ICN ACQUISITION, LLC,
`
`v.
`
`IPDATATEL, LLC,
`
`Plaintiffs,
`
`Defendant.
`
`MEMORANDUM AND OPINION
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`This patent-infringement case involves home-security technology for “smart” devices, such
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`as cellular phones and tablets. Before home-security systems incorporated cellular and smartphone
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`technologies, they relied on telephone lines to relay data. Applications, or “apps,” now allow users
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`to activate and receive alarms, open doors, unlock windows, and receive alerts on various devices,
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`wirelessly. This case arises out of the development of that technology.
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` Alarm.com Inc. and a wholly owned subsidiary, ICN Acquisition, LLC, sued ipDataTel,
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`LLC in August 2017, alleging that it infringed U.S. Patent Nos. 7,113,090; 7,633,385; 7,956,736;
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`8,478,871; and 9,141,276. (Docket Entry No. 1 at ¶ 11). Alarm.com seeks injunctive relief and
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`damages. (Id. at ¶ 82). ipDataTel denies infringement and alleges that the patents are invalid.
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`(Docket Entry No. 98 at 2).
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`The parties have asked the court to construe eight terms in the ’385, ’736, and ’276 patents.
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`Alarm.com filed a claim-construction brief, ipDataTel responded, and Alarm.com replied. (Docket
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`Entries Nos. 93, 100, 105). The court held a Markman hearing in September 2018, at which counsel
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`argued their competing constructions. (Docket Entry No. 117). Based on the parties’ claim-
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`1
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`construction briefs, counsels’ arguments, the record, and the applicable law, the court construes the
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`eight disputed terms. The constructions and the reasons for them are set out in detail below.
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`I.
`
`Background
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`Alarm.com was incorporated in Delaware in 2000. It introduced its first wireless home-
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`security system in 2003. (Docket Entry No. 46 at ¶ 15). Alarm.com describes itself as “a leading
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`technology provider for connected home services,” including “interactive security” and “remote
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`video monitoring,” “energy management,” and “home automation.” (Id. at ¶ 13). Alarm.com’s
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`technology connects smart devices into one system, controlled by a smart-phone app, using a cloud-
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`based platform that integrates the alarm system with different types of devices. Current examples
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`of these devices include an iPad, a cell phone, a smart watch, Apple TV, and Amazon Echo. The
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`platform is sold and supported by “a nationwide network of licensed and authorized Security and
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`Smart Home service providers.” (Id. at ¶ 14). Alarm.com operates in North and South America and
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`Australia. (Id. at ¶ 16). Coplaintiff ICN owns many of the patents-in-suit. (Id. at ¶ 17).
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`ipDataTel was incorporated in Texas in 2007. (Id. at ¶ 18). ipDataTel manufactures devices
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`for home security and operates data centers for internet operations and applications, offering
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`“interactive security capabilities” similar to Alarm.com. (Id. at ¶¶ 19–20). ipDataTel markets its
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`products throughout the United States. (Id. at ¶ 22).
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`Alarm.com alleges that it and ipDataTel are direct competitors in the “home security or home
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`automation market. The[] patents-in-suit . . . give Alarm.com a competitive edge.” (Docket Entry
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`No. 102 at 9:11–15). Alarm.com alleges that ipDataTel infringes five patents related to
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`Alarm.com’s home-security technology. (Docket Entry No. 46 at ¶ 12).
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`2
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`A.
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`The Patents
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`i.
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`The ’090 Patent
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`This patent for a “System and Method for Connecting Security Systems to a Wireless
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`Device” issued in September 2006. (Id. at ¶ 24 (citing U.S. Patent No. 7,113,090)). Before this
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`patent, security systems consisted of a panel and sensors installed in a home. The panel had a
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`keypad to control the system through a central monitor, which would detect “state changes” from
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`sensors. (Id. at ¶ 26). Alarm.com recognized that this system could not relay other changes, such
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`as opening or closing a door or window, and could not relay intrusions, when the system was not
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`armed. (Id. at ¶ 27). The ability to detect and relay this information turns a home-security system
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`into a kind of “nanny cam,” enabling a homeowner to monitor, for example, when his adolescent
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`children return from a night out, or what time a housekeeper arrives and leaves. The patented
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`technology allows both an unarmed and armed system to transmit these kinds of events or intrusions
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`to a database through a modem. (Id. at ¶ 28). Alarm.com alleges that this type of information
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`transmission was a dramatic shift from prior systems, which recognized only “alarm events” and did
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`so only when the system was armed. (Id. at ¶ 30). This added capability increased the amount of
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`data, which the system processed and stored. (Id. at ¶ 33).
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`The patented technology also allows users to create notification preferences. (Id. at ¶ 34).
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`Prior systems would call the homeowner’s landline telephone and, if no one answered, alert the local
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`police. (Id. at ¶ 36). Under the ’090 patented technology, the user can choose which notifications
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`are sent and how—for example, by email, text message, or telephone call. (Id. at ¶ 41). The user
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`can also select multiple people to receive notifications before the system contacts the police. (Id.
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`at ¶ 43).
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`ii.
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`The ’385 and ’736 Patents
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`These patents, both entitled “Method and System for Communicating With and Controlling
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`an Alarm System From a Remote Server,” (U.S. Patent Nos. 7,633,385 and 7,956,736), issued in
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`December 2009 and June 2011. (Docket Entry No. 46 at ¶¶ 47–48). The ’736 patent is a
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`continuation of the ’385 patent. Both “provide an upgrade unit that allows a user to keep an existing
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`legacy alarm system rather than replacing that system.” (Id. at ¶ 49).
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`Before the ’385 and ’736 patents issued, a user had to remove and replace a system to modify
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`or upgrade it. (Id. at ¶ 50). A “legacy alarm system” usually had a controller connected to sensors
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`throughout the house. The controller was connected to a central monitoring system, usually by a
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`phone line. (Id. at ¶ 55). The user controlled the system through a keypad, which connected to the
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`alarm controller through a “keypad bus.” (Id. at ¶ 58). This system communicated with the external
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`monitoring service only through the phone line, which was vulnerable to being cut. Alarm.com
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`refers to this vulnerability as a “single point of failure.” (Id. at ¶ 17). Another drawback of legacy
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`systems was that they could send information only out to the monitoring system and could not
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`receive information. (Id. at ¶ 63). The integrated communication system allowed for two-way
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`cellular communication using a security panel, but installing the integrated system required
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`removing the entire “legacy alarm system.” (Id. at ¶ 65).
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`These patents address those shortcomings. Users can upgrade a legacy system without
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`replacing it, by connecting a new communications unit with the keypad bus. (Id. at ¶ 69). The
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`communications unit transmits and receives information through the existing security panel, without
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`replacing the whole system. The communications unit also connects with a remote server to allow
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`the user to control the system from outside the house. (Id. at ¶ 72).
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`iii.
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`The ’871 Patent
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`This patent, “Gateway Registry Methods and Systems,” issued in July 2013. (U.S. Patent
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`No. 8,478,871). The ’871 patent uses a “gateway” in conjunction with a “gateway registry” by
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`assigning a unique serial number to the gateway for the gateway registry to identify. This method
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`“improves the operation and efficiency of the gateway server.” (Docket Entry No. 46 at ¶ 80). A
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`“gateway” is a “device that acts as a ‘gate’ between two networks. It may be a router, firewall,
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`server, or other device that enables traffic to flow in and out of the network.” Gateway, THE TECH
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`TERMS COMPUTER DICTIONARY (Oct. 8, 2018), https://techterms.com/definition/gateway.
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`iv.
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`The ’276 Patent
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`The ’276 patent, “Integrated Interface for a Mobile Device,” issued in September 2015.
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`(U.S. Patent No. 9,141,276). It concerns the mobile app a consumer uses to control a home-security
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`system remotely. (Docket Entry No. 46 at ¶ 84). The app software allows any smartphone or
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`similar device to synchronize the device to the security system. (Id. at ¶ 86).
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`B.
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`ipDataTel’s Knowledge of the Patents
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`Alarm.com alleges that ipDataTel knew of the patents no later than the date the complaint
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`was served. Alarm.com alleges that ipDataTel either actually knew of, or was willfully blind to, the
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`patents even before the lawsuit, noting that Alarm.com’s website “prominently displays” the patents
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`and that the two companies directly compete. (Docket Entry No. 46 at ¶ 96). Alarm.com alleges
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`that ipDataTel researched iControl Networks, Inc., which previously owned four of the
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`patents—’385, ’736, ’871, and ’276—and that ipDataTel and iControl are both members of the Z-
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`Wave Alliance and had directly competed for customers. (Id. at ¶98). Alarm.com alleges that
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`ipDataTel “affirmatively investigated” iControl’s patent portfolio. (Id.). Alarm.com alleges that
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`ipDataTel gained knowledge of the patents through several earlier lawsuits, including: a 2013
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`lawsuit Alarm.com brought against Telular Corporation for infringement of the ’090 patent; a 2004
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`lawsuit against Zonoff, Inc. related to the ’871 patent; a second suit against Zonoff in 2015 for
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`infringement of the ’385, ’736, and ’276 patents; and a 2017 suit against SecureNet Technologies
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`LLC and Protect America, Inc. related to the ’090, ’385, and ’276 patents. (Id. at ¶¶ 100–102).
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`Alarm.com also alleges that ipDataTel knew of the patents through a publication called “Security
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`Industry Monitor,” which contained information about them starting in March 2014. (Id. at ¶ 103).
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`C.
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`The Disputed Terms
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`The parties initially disputed 25 terms across the 5 patents. (Docket Entry No. 59-1). The
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`parties now disagree on only 8 terms, in the ’385, ’736, and ’276 patents. The disputed terms the
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`court is asked to construe are:
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`1.
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`2.
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`3.
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`4.
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`5.
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`select a communication mode [of the plurality of communication modes]
`(’385 Patent, Claim 1);
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`means for performing a first pre-determined response (’736 Patent, Claim 12);
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`means for receiving a first set of data over a network from an alarm system
`communication unit, wherein the first set of data comprises keypad bus
`information, the keypad bus information corresponds to a signal on a keypad
`bus of an alarm system controller, and the keypad bus of the alarm system
`controller provides communication between an alarm processor of the alarm
`system controller, a keypad processor, and the alarm system communication
`unit (’736 Patent, Claim 12);
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`means for storing a set of responses to keypad bus information, wherein the
`keypad bus information comprises one of a plurality of events and conditions
`reported on the alarm system controller keypad bus, and each response of the
`set of responses corresponds to an event or condition of the plurality of events
`and conditions (’736 Patent, Claim 15);
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`means for selecting the pre-determined response to the keypad bus
`information in the first set of data from the set of responses (’736 Patent,
`Claim 15);
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`6.
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`7.
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`8.
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`custom-built for the mobile device (’276 Patent, Claims 2 and 14);
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`performing . . . a synchronization to associate the mobile device with the
`monitoring system (’276 Patent, Claims 1 and 13); and
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`synchronization (’276 Patent, all asserted claims).
`
`II.
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`The Legal Standards
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`A.
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`Claim Construction
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`The “claims of a patent define the invention to which the patentee is entitled the right to
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`exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting
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`Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)).
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`“[T]he construction of a patent, including terms of art within its claim, is exclusively within the
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`province of the court.” Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). Claim
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`terms are “generally given their ordinary and customary meaning,” defined as “the meaning that the
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`term would have to a person of ordinary skill in the art in question at the time of the invention.”
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`Phillips, 415 F.3d at 1312–13 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
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`(Fed. Cir. 1996)). That is, a person who will “read the words used in the patent documents with an
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`understanding of their meaning in the field, and [has] knowledge of any special meaning and usage
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`in the field.” Id. at 1313 (quoting Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477
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`(Fed. Cir. 1998)); see also Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005)
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`(cautioning courts not to interpret claim terms “in a vacuum” (quotation omitted)).
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`Claim construction begins with the claim language. Aptalis Pharmatech, Inc. v. Apotex Inc.,
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`718 F. App’x 965, 968 (Fed. Cir. 2018). The court looks first “to the words of the claims
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`themselves, both asserted and nonasserted, to define the scope of the patented invention,” Vitronics,
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`90 F.3d at 1582, and construes the claim terms in the context of the surrounding claim language.
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`Accord ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003) (“[T]he context of the
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`surrounding words of the claim also must be considered in determining the ordinary and customary
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`meaning of those terms.”); Lexion Med., LLC v. Northgate Techs., Inc., 641 F.3d 1352, 1356–57
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`(Fed. Cir. 2011). When the words in the context of the surrounding claim language make the
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`ordinary meaning readily apparent, claim construction “involves little more than the application of
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`the widely accepted meaning of commonly understood words.” Phillips, 415 F.3d at 1314.
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`Patent-ese is notoriously clumsy and awkward, which makes construction more challenging.
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`If the “ordinary and customary” meaning is unclear, the court moves from the words in the claims,
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`viewed in context of the patent, to “the intrinsic evidence of record, i.e., the patent itself, including
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`the claims, the specification and, if in evidence, the prosecution history.” Vitronics, 90 F.3d at 1582.
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`Courts review the “specification to determine whether the inventor has used any terms in a manner
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`inconsistent with their ordinary meaning.” Id. The Federal Circuit has repeatedly stated that
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`“claims ‘must be read in view of the specification, of which they are a part.’” Phillips, 415 F.3d at
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`1315 (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995), aff’d, 517
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`U.S. 370 (1996)). The specification, a “‘concordance for the claims,’” id. (quoting Autogiro Co. of
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`Am. v. United States, 384 F.2d 391, 397–98 (Ct. Cl. 1967)), is the “best source for understanding
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`a technical term.” Id. (quoting Multiform Desiccants, 133 F.3d at 1478).1 “[T]he specification may
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`reveal an intentional disclaimer, or disavowal, of claim scope by the inventor.” Id. (citing SciMed
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`1 See also Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1360 (Fed. Cir. 2004)
`(“In most cases, the best source for discerning the proper context of claim terms is the patent specification
`wherein the patent applicant describes the invention.”). When the specification “reveal[s] a special definition
`given to a claim term by the patentee that differs from the meaning it would otherwise possess . . . the
`inventor’s lexicography governs.” Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359, 1366 (Fed. Cir. 2002)).
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`Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343–44 (Fed. Cir. 2001)); see
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`also Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (claim
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`construction may deviate from the ordinary meaning of a disputed term only if: (1) “a patentee sets
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`out a definition and acts as his own lexicographer”; or (2) “the patentee disavows the full scope of
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`a claim term, either in the specification or during prosecution”).
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`“The construction that stays true to the claim language and most naturally aligns with the
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`patent’s description of the invention will be[] the correct construction.” Phillips, 415 F.3d at 1316
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`(quoting Renishaw PLC v. Marposs Società per Azioni, 158 F.3d, 1243, 1250 (Fed. Cir. 1998)).
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`“There is a fine line between construing the claims in light of the specification and improperly
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`importing a limitation from the specification into the claims.” Retractable Techs., Inc. v. Becton,
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`Dickinson & Co., 653 F.3d 1296, 1305 (Fed. Cir. 2011). Courts must “capture the scope of the
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`actual invention, rather than strictly limit the scope of claims to disclosed embodiments or allow the
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`claim language to become divorced from what the specification conveys is the invention.” Id.
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`“[A] court ‘should also consider the patent’s prosecution history, if it is in evidence.’”
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`Phillips, 415 F.3d at 1317 (quoting Markman, 52 F.3d at 980); see also Typhoon Touch Techs., Inc.
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`v. Dell, Inc., 659 F.3d 1376, 1381 (Fed. Cir. 2011) (“[T]he specification is the primary source for
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`determining what was invented and what is covered by the claims, elucidated if needed by the
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`prosecution history.”). “[T]he prosecution history can often inform the meaning of the claim
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`language by demonstrating how the inventor understood the invention and whether the inventor
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`limited the invention in the course of prosecution, making the claim scope narrower than it would
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`otherwise be.” Phillips, 415 F.3d at 1317 (citing Vitronics, 90 F.3d at 1582–83). The prosecution
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`history includes “all express representations made by or on behalf of the applicant to the examiner
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`to induce a patent grant, or . . . to reissue a patent . . . includ[ing] amendments to the claims and
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`arguments made to convince the examiner that the claimed invention meets the statutory
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`requirements of novelty, utility, and nonobviousness.” Standard Oil Co. v. Am. Cyanamid Co., 774
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`F.2d 448, 452 (Fed. Cir. 1985); see also Sanofi-Aventis Deutschland GmbH v. Genentech, Inc., 473
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`F. App’x 885, 888 (Fed. Cir. 2012) (“We have held that an otherwise broadly defined term can be
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`narrowed during prosecution through arguments made to distinguish prior art.”) (citing Phillips, 415
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`F.3d at 1317).
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`“The doctrine of prosecution disclaimer is well established in Supreme Court precedent,
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`precluding patentees from recapturing through claim interpretation specific meanings disclaimed
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`during prosecution.” Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003); see
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`also SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1286 (Fed. Cir. 2005). The doctrine
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`applies even if the disclaimers were not necessary to make the invention patentable. See Uship
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`Intellectual Props., LLC v. United States, 714 F.3d 1311, 1315 (Fed. Cir. 2013) (“We find no
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`support for [the] proposition that prosecution disclaimer applies only when applicants attempt to
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`overcome a claim rejection. Our cases broadly state that an applicant’s statements to the [United
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`States Patent and Trademark Office] characterizing its invention may give rise to a prosecution
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`disclaimer.”); cf. Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1583 (Fed. Cir. 1995)
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`(“Estoppel extends beyond the basis of patentability. . . . Clear assertions made during prosecution
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`in support of patentability, whether or not actually required to secure allowance of the claim, may
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`also create an estoppel.”) (citing Tex. Instruments, Inc. v. United States Int’l Trade Comm’n, 988
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`F.2d 1165, 1173 (Fed. Cir. 1993)).2 Prosecution disclaimer does not apply “where the alleged
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`2 “There is a clear line of distinction between using the contents of the prosecution history to reach
`an understanding about disputed claim language and the doctrine of prosecution history estoppel which
`‘estops’ or limits later expansion of the protection accorded by the claim to the patent owner under the
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`disavowal of claim scope is ambiguous.” Omega Eng’g, 334 F.3d at 1324; see also id. at 1325
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`(“[W]e have required the alleged disavowing statements to be both so clear as to show reasonable
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`clarity and deliberateness and so unmistakable as to be unambiguous evidence of disclaimer.”
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`(citations omitted)). Only when “the patentee has unequivocally disavowed a certain meaning to
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`obtain his patent [does] the doctrine of prosecution disclaimer attach[ ] and narrow[ ] the ordinary
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`meaning of the claim congruent with the scope of the surrender.” Id. at 1324.
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`Courts may also “rely on extrinsic evidence, which ‘consists of all evidence external to the
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`patent and prosecution history, including expert and inventor testimony, dictionaries, and learned
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`treatises.’” Phillips, 415 F.3d at 1317 (quoting Markman, 52 F.3d at 980). Although extrinsic
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`evidence “can shed useful light on the relevant art, it is less significant than the intrinsic record in
`
`determining the legally operative meaning of claim language.” Zircon Corp. v. Stanley Black &
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`Decker, Inc., 452 F. App’x 966, 972–73 (Fed. Cir. 2011) (quotations omitted). Extrinsic evidence
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`is generally “less reliable than the patent and its prosecution history” because it is “not part of the
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`patent” and was not created in patent prosecution: “extrinsic publications may not be written by or
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`for skilled artisans”; and expert reports and testimony created later, for litigation, may “suffer from
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`doctrine of equivalents when the claims have been purposefully amended or distinguished over relevant prior
`art to give up scope. . . . [T]he two uses of the prosecution history must not be confused.” Biodex Corp. v.
`Loredan Biomedical, Inc., 946 F.2d 850, 862 (Fed. Cir. 1991) (quotations omitted); see also Ballard Med.
`Prods. v. Allegiance Healthcare Corp., 268 F.3d 1352, 1358–59 (Fed. Cir. 2001) (distinguishing the two);
`Spectrum Int’l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1378 n.2 (Fed. Cir. 1998) (same). “Just as prosecution
`history estoppel may act to estop an equivalence argument under the doctrine of equivalents, positions taken
`before the [Patent and Trademark Office] may bar an inconsistent position on claim construction.” Ballard
`Med. Prods., 268 F.3d at 1359 (quoting Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1457 (Fed. Cir.
`1998)) (alteration omitted). When the accused infringer argues that the prosecution history results in a
`narrowing of a claim’s scope, there is no difference, and the Federal Circuit has refused to reverse based on
`references to estoppel. See id. at 1359 (“Because the substance of the district court’s analysis was sound, we
`disregard the fact that the court used the term ‘prosecution history estoppel’ in an unconventional manner.”);
`Biodex Corp., 946 F.2d at 862–63 (observing that “Biodex is technically correct in asserting that the doctrine
`of prosecution history estoppel is ‘irrelevant’ to determination of literal claim scope,” but upholding the
`district court because prosecution history is relevant to claim interpretation).
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`bias not present in intrinsic evidence.” Phillips, 415 F.3d at 1318. A court must use “sound
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`discretion” in admitting and using extrinsic evidence. Id. at 1319; see also Seattle Box Co., Inc. v.
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`Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984) (“A trial judge has sole
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`discretion to decide whether or not [s]he needs, or even just desires, an expert’s assistance to
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`understand a patent. We will not disturb that discretionary decision except in the clearest case.”).
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`“[E]xtrinsic evidence may be useful to the court, but it is unlikely to result in a reliable
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`interpretation of patent claim scope unless considered in the context of the intrinsic evidence.”
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`Phillips, 415 F.3d at 1319. Although a court may consider extrinsic evidence, it must not relegate
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`the intrinsic evidence to a mere “check on the dictionary meaning of a claim term.” Id. at 1320–21
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`(noting that relying on dictionaries “too often” causes “the adoption of a dictionary definition . . .
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`divorced from the context of the written description”). “The sequence of steps used by the judge
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`in consulting various sources is not important; what matters is for the court to attach the appropriate
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`weight to be assigned to those sources in light of the statutes and policies that inform patent law.”
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`Id. at 1324 (citing Vitronics, 90 F.3d at 1582).
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`These claim-construction rules must be applied to the record in this case, including the
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`tutorial counsel jointly provided the court, the arguments counsel presented during the Markman
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`hearing, and the documents.
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`B.
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`Indefiniteness
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`Under 35 U.S.C. § 112(2), a patent “specification shall conclude with one or more claims
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`particularly pointing out and distinctly claiming the subject matter which the inventor . . . regards
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`as the invention.” The Federal Circuit has explained:
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`The primary purpose of the definiteness requirement is to ensure that the claims are
`written in such a way that they give notice to the public of the extent of the legal
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`protection afforded by the patent, so that interested members of the public, e.g.,
`competitors of the patent owner, can determine whether or not they infringe. That
`determination requires a construction of the claims according to the familiar canons
`of claim construction.
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`Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1340 (Fed. Cir. 2003) (citing All Dental Prodx,
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`LLC v. Advantage Dental Prods., 309 F.3d 774, 779–80 (Fed. Cir. 2002) (citations omitted)). “One
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`of those canons is that claims are construed as one skilled in the art would understand them in light
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`of the specification of which they are a part.” Id. at 1340–41 (citing Orthokinetics, Inc. v. Safety
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`Travel Chairs, Inc., 806 F.2d 1565, 1575 (Fed. Cir. 1986)).
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`A determination of claim indefiniteness is a legal conclusion reached by the court performing
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`its duty as the “construer of patent claims.” Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316,
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`1338 (Fed. Cir. 2008) (citing Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d
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`696, 705 (Fed. Cir. 1998)). “To the extent there are any factual findings upon which a trial court’s
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`indefiniteness conclusion depends, they must be proven by the challenger by clear and convincing
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`evidence.” Id. (citing Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366 (Fed. Cir. 2003)).
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`C.
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`Means-Plus-Function Claims
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`Section 112(6) provides that “[a]n element in a claim for a combination may be expressed
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`as a means or step for performing a specified function without the recital of structure, material, or
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`acts in support thereof, and such claim shall be construed to cover the corresponding structure,
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`material, or acts described in the specification and equivalents thereof.” 35 U.S.C. § 112(6). A
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`means-plus-function claim format allows a patentee to “describe an element of his invention by the
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`result accomplished or the function served, rather than describing the item or element to be used.”
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`Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 27 (1997). A patentee’s use
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`of the word “means” in a claim element that recites a function creates a presumption that the element
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`is drafted in means-plus-function format. Id.; TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259
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`(Fed. Cir. 2008). This presumption can be rebutted if the claim recites sufficient structure to
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`accomplish the functions identified in the claim. Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090,
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`1096 (Fed. Cir. 2008).
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`“Sufficient structure exists when the claim language specifies the exact structure that
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`performs the functions in question without need to resort to other portions of the specification or
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`extrinsic evidence for an adequate understanding of the structure.” TriMed, 514 F.3d at 1259–60.
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`A claim recites sufficiently definite structure if it has “an understood meaning in the art” that
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`connotes enough structure to fall outside § 112(6) or if it is “used in common parlance or by persons
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`of skill in the pertinent art to designate structure, even if the term covers a broad class of structures.”
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`Aspex Eyewear, Inc. v. Altair Eyewear, Inc., 288 F. App’x 697, 703 (Fed. Cir. 2008) (quotation
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`omitted). If a claim includes a means-plus-function limitation, failure to disclose adequate structure
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`corresponding to the claimed function results in invalidity for indefiniteness. In re Dossell, 115 F.3d
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`942, 946 (Fed. Cir. 1997); see also Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1376 (Fed. Cir.
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`2001) (“For a court to hold that a claim containing a means-plus-function limitation lacks a
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`disclosure of structure in the patent specification that performs the claimed function, necessarily
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`means that the court finds the claim in question indefinite, and thus invalid.”); Cardiac Pacemakers,
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`Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1114 (Fed. Cir. 2002); Aristocrat Techs. Austl. PTY Ltd.
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`v. Int’l Game Tech., 521 F.3d 1328, 1331 (Fed. Cir. 2008).
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`If means-plus-function analysis applies, a court first determines what the claimed function
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`is and then determines the corresponding structures disclosed in the specification that perform that
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`function. Welker Bearing, 550 F.3d at 1097; Minks v. Polaris Indus., Inc., 546 F.3d 1364, 1377
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`(Fed. Cir. 2008); Tex. Dig. Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1208 (Fed. Cir. 2002).
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`“Structure disclosed in the specification qualifies as corresponding structure if the intrinsic evidence
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`clearly links or associates that structure to the function recited in the claim.” Williamson v. Citrix
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`Online, LLC, 792 F.3d 1339, 1352 (Fed. Cir. 2015). Whether the written description adequately sets
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`forth structure corresponding to the claimed function must be considered from the perspective of a
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`person skilled in the art. Intel Corp., 319 F.3d at 1365–66 (citing Budde, 250 F.3d at 1376). The
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`question is not whether one skilled in the art would be capable of implementing a structure to
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`perform the function, but whether that person would understand the written description itself to
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`disclose such a structure. Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 953 (Fed. Cir.
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`2007) (citing Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1212 (Fed.
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`Cir. 2003)).
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`The Federal Circuit has made clear that disclosing a general-purpose computer capable of
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`running specialized software, without more, does not supply sufficient structure for means-plus-
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`function claims involving a computer that must be specially programmed to perform a specific set
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`of functions. See WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999).
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`The structure that the specification must disclose is “not the general purpose computer, but rather
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`the special purpose computer programmed to perform the disclosed algorithm.” Id.; see also Harris
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`Corp. v. Ericsson, Inc., 417 F.3d 1241, 1253 (Fed. Cir. 2005) (“A computer-implemented means-
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`plus-function term is limited to the corresponding structure disclosed in the specification and
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`equivalents thereof, and the corresponding structure is the algorithm.”); Gobeli Research Ltd. v.
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`Apple Comput., Inc., 384 F. Supp. 2d 1016, 1022 (E.D. Tex. 2005) (“The Federal Circuit has made
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`clear that when software is linked to the disclosed function, the structure for performing the function
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`is limited to the algorithm disclose