Case 2:18-cv-00546-JRG Document 96 Filed 02/26/20 Page 1 of 16 PageID #: 5286
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`CANON, INC.
`
`vs.
`
`Plaintiff,
`
`TCL ELECTRONICS HOLDINGS LTD., ET
`AL.,
`
`Defendants.
`
`CIVIL ACTION NO. 2:18-cv-00546
`
`JURY TRIAL DEMANDED
`
`PLAINTIFF CANON INC.’S CLAIM CONSTRUCTION REPLY BRIEF
`
`Roku Exhibit 1024
`Roku, Inc. v. Canon Kabushiki Kaisha
`Page 00001
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`Case 2:18-cv-00546-JRG Document 96 Filed 02/26/20 Page 2 of 16 PageID #: 5287
`
`TABLE OF CONTENTS
`
`Page
`INTRODUCTION ...............................................................................................................1
`DISPUTED TERMS FOR CONSTRUCTION – COMMONLY IDENTIFIED ................1
`A.
`“internet broadcasting content” (#1) (Res. at 5) ......................................................1
`B.
`“periodically repeat[ing] accessing” (#2) (Res. at 2-4) ...........................................3
`C.
`“operation device” (#3) / “operation form” (#4) (Res. at 26-27) .............................5
`DISPUTED TERMS FOR CONSTRUCTION – IDENTIFIED ONLY BY TCL ..............6
`A.
`“buffer” terms (#5) (Res. at 1) .................................................................................6
`“control unit” (#6) (Res. at 6 - 10) ; “control unit” (#8) (Id. at 10) .........................6
`B.
`C.
`“television broadcast program” (#7) (Res. at 5) ......................................................8
`D.
`“continue” (#12) / “end” (#13); “stop” terms (#20) / (Res. at 12-13)......................9
`E.
`“logically disconnect” terms (#14) (Res. at 11) .......................................................9
`F.
`“USB [mass storage (#15) / imaging] class (#16)” (Res. at 10-11) .........................9
`G.
`“attribute” (#22) / “evaluating a degree of suitability” (#23) (Res. at 25) ...............9
`H.
`“[connect / detect / communicat]ion unit” (#9, 17-18); “[display] control
`unit” (#10-11, 19, 21); “[acquir / determin / control]ing unit” (#24-26)
`(Res. at 14-23, 28-30). ...........................................................................................10
`CONCLUSION: THE COURT SHOULD REJECT TCL’S CONSTRUCTIONS
`AND ADOPT CANON’S. .................................................................................................10
`
`I.
`II.
`
`III.
`
`
`
`-i-
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`Roku Exhibit 1024
`Roku, Inc. v. Canon Kabushiki Kaisha
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`Case 2:18-cv-00546-JRG Document 96 Filed 02/26/20 Page 3 of 16 PageID #: 5288
`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Agis Software Dev. LLC v. Huawei Device USA Inc.,
`No. 2:17-CV-513-JRG, 2018 U.S. Dist. LEXIS 174041
`(E.D. Tex. Oct. 10, 2018).......................................................................................................7, 8
`
`Apple Inc. v. Andrea Elecs. Corp.,
`Nos. 2018-2382, -2383, 2020 WL 593661 (Fed. Cir. Feb. 7, 2020) .........................................3
`
`Cellular Commc’ns Equip LLC v. HTC Corp.,
`No. 6:13-CV-507, 2015 WL 1048890 (E.D. Tex. Mar. 9, 2015) ..............................................7
`
`Cellular Commc’ns Equip LLC v. HTC Corp.,
`No. 6:16-CV-475-KNM, 2018 U.S. Dist. LEXIS 3759 (E.D. Tex. Jan. 8,
`2018) ..........................................................................................................................................7
`
`Cellular Commc’ns Equip LLC v. Samsung Elecs. Co.,
`No. 6-14-cv-00759, 2016 WL 1237429 (E.D. Tex. Mar. 26, 2016) ........................................10
`
`Diebold Nixdorf, Inc. v. ITC,
`899 F.3d 1291 (Fed. Cir. 2018)..................................................................................................7
`
`IPS Grp., Inc. v. CivicSmart, Inc.,
`No. 3-17-cv-00632-CAB-(MBB), 2018 WL 6567843 (S.D. Cal. Dec. 13,
`2018) ..........................................................................................................................................8
`
`Optis Wireless Tech LLC v. Huawei Device Co.,
`No. 2:17-CV-123-JRG-RSP, 2018 WL 476054 (E.D. Tex. Jan. 18, 2018) ...............................8
`
`Optis Wireless v. ZTE Corp.,
`No. 2:15-cv-300-JRG-RSP, 2016 U.S. Dist. LEXIS 52657 (E.D. Tex. Apr. 19,
`2018) ..........................................................................................................................................7
`
`Saint Lawrence Commc’ns LLC v. ZTE Corp.,
`No. 2:15-CV-349, 2016 WL 6275390 (E.D. Tex. Oct. 25, 2016) .............................................8
`
`Samsung Elecs. Am., Inc. v. Prisua Eng'g Corp.,
`No. 2019-1169, 2020 WL 543427 (Fed. Cir. Feb. 4, 2020) ...................................................10
`
`Uniloc 2017 LLC v. Samsung Elecs. Co.,
`Case No. 2:18-cv-00506-JRG, 2020 WL 24880 (E.D. Tex. Jan. 16, 2020) ............................10
`
`-ii-
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`Roku Exhibit 1024
`Roku, Inc. v. Canon Kabushiki Kaisha
`Page 00003
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`Case 2:18-cv-00546-JRG Document 96 Filed 02/26/20 Page 4 of 16 PageID #: 5289
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`
`EXHIBIT LIST
`
`Exhibit A U.S. Pat. No. 7,810,130 (“’130 Patent”)
`
`Exhibit B U.S. Pat. No. 7,746,413 (“’413 Patent”)
`
`Exhibit C U.S. Pat. No. 8,078,767 (“’767 Patent”)
`
`Exhibit D U.S. Pat. No. 8,346,986 (“’986 Patent”)
`
`Exhibit E U.S. Pat. No. 8,713,206 (“’206 Patent”)
`
`Exhibit F Declaration of Dr. Michael Shamos dated January 6, 2020 (“Shamos Decl.”)
`
`Exhibit G
`
`File History for U.S. App. No. 10/671,741 (“’130 File History”)
`
`Exhibit H CANONTCL00009269 - CANONTCL00009271, Microsoft Computer Dictionary,
`Fifth Edition, 2002 – control unit (“Microsoft Computer Dictionary – control unit”)
`
`Exhibit I
`
`IPR 2020-00355, Petition
`
`Exhibit J
`
`IPR 2020-00355, Ex. 1004 (Porter Decl.)
`
`Exhibit K
`
`IPR 2020-00357, Petition
`
`Exhibit L
`
`IPR 2020-00357, Ex. 1004 (Porter Decl.)
`
`Exhibit M CANONTCL00009266 - CANONTCL00009268, The American Heritage
`Dictionary, 4th Ed. 2001 – periodic (“American Heritage Dictionary - periodic”)
`
`Exhibit N
`
`IPR2020-00341 Petition for Inter Partes Review of US 8,078,767
`
`Exhibit O
`
`IPR2020-00342 Petition for Inter Partes Review of US 8,346,986
`
`Exhibit P
`
`IPR2020-00343 Petition for Inter Partes Review of US 8,713,206
`
`Exhibit Q
`
`IPR2020-00358 Petition for Inter Partes Review of US 7,810,130
`
`Exhibit R
`
`IPR2020-00359 Petition for Inter Partes Review of US 7,810,130
`
`Exhibit S U.S. Patent No. 7,234,111
`
`Exhibit T U.S. Publication No. 2002/0174430
`
`
`-iii-
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`
`I.
`
`INTRODUCTION
`Roku, in privy with TCL, filed related IPR petitions. 1 The petitions take claim
`construction positions that are not only inconsistent with those TCL takes in its brief, it largely
`adopts Canon’s (e.g., plain and ordinary for most of the terms).2 This fact alone provides the
`Court with sufficient basis to reject TCL’s constructions. Additional bases are explained below.
`DISPUTED TERMS FOR CONSTRUCTION – COMMONLY IDENTIFIED
`II.
`
`A.
`
`“internet broadcasting content” (#1) (Res. at 5)
`
`TCL argues that its construction “gives meaning to all words of this term and comports
`with the intrinsic evidence.” (Res. at 5). That’s not the case. First, TCL fails to give meaning
`to all words (“internet broadcasting content”), instead focusing exclusively on a single word
`(“broadcasting”). Id. (“As confirmed by numerous contemporaneous dictionaries, the plain and
`ordinary meaning of ‘broadcast’…is to simultaneously transmit to a plurality of recipients.”).
`Second, TCL’s construction not only fails to comport with, but contradicts the intrinsic evidence.
`Here, the patent expressly distinguishes two different types of broadcasting: (A) conventional
`television broadcast of a push type; and (2) internet content broadcasting. The specification
`explains that “streaming broadcast,” – which relates to the internet broadcasting of streaming
`content3 and “requires a user to access and obtain desired streaming contents (which is called a
`
`
`1 IPR 2020-00341, Petition at 3 (listing TCL as privies); see also IPR 2020-00342, -343, -355, -357, -358, -359.
`2 The IPR arguments largely apply the terms’ plain and ordinary meaning, including for terms that TCL alleges are
`MPFs, For example, Roku adopted Canon’s construction (plain and ordinary and not MPF) for “control unit.” See,
`e.g., IPR 2020-00359, Petition at 15. In fact, the petition admitted that “control unit” is a “controller” that is used
`“to perform the claimed functions.” See, e.g., id. at 21. As briefed to this Court, TCL argues that the claimed
`control units are MPFs, while Roku (in privy with TCL) argued in IPR that the same control units are claimed
`“controller[s]” performing the claimed, requisite acts. Roku’s position aligns with Canon’s.
`Roku also took similar positions (plain and ordinary) for many non-MPF-alleged terms, including:
`“internet broadcasting content,” “periodically repeat[ing] accessing,” “operation device,” “operation form,” “buffer”
`terms, “television broadcast program,” “[continue/end/stop],” “logically disconnect,” “USB [mass storage/imaging]
`class.” See, e.g., IPR 2020-00341, Petition at 14-17; IPR 2020-00342, Petition at 15-19; IPR 2020-00343, Petition
`at 15-20; IPR 2020-00355, Petition at 13-20; IPR 2020-00357, Petition at 19-34; IPR 2020-00358, Petition at 16;
`IPR 2020-00359, Petition at 14-21 (Roku not construing the claim terms above). As Canon already made clear,
`these are terms that TCL is unilaterally raising for construction before this Court. (See, e.g., Op. at 1.) Yet, Roku, in
`asserting its IPR invalidity arguments, didn’t apply the narrower constructions that TCL is advocating to this Court.
`TCL and Roku are selectively construing terms in different forums only when doing so suit their needs. Such
`maneuvering is improper.
`3 See, e.g., ’130 patent at 1:28-32 (“As a result, it is becoming widespread to use the Internet to provide . . .
`distribution of streaming contents (hereafter, referred to as ‘streaming broadcast)”)
`
`-1-
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`pull type)” – “includes the term ‘broadcast’, but is largely different in arrangement from the
`conventional television broadcast (of a push type)[.]” ’130 Patent at 1:33-35; (Op. at 1-2.)4 No
`dispute exists that TCL’s construction is based on this “conventional television broadcast.”
`TCL’s reliance on dictionary definitions for conventional television broadcast, in direct conflict
`with the specification’s express teachings, is improper.
`Other attacks are conclusory, lacking intrinsic support. First, no intrinsic evidence
`supports TCL’s contention
`that
`internet “broadcasting”
`is
`limited
`to “simultaneous
`transmission.” (Op. at 2) This remains unrebutted. Second, TCL alleges without support that
`“Canon’s improper conflation contradicts the claim language, which makes clear that ‘internet
`broadcasting content’ is a specific type of internet streaming content; they are not coextensive.” 5
`TCL’s argument that Canon’s construction reads out “broadcasting” is also demonstrably
`incorrect. (Id. at 5) Canon’s construction comports with the specification’s teaching of what
`internet broadcasting is. (Op. at 1-3.)
`Nor does Canon’s construction make “internet broadcasting content” redundant within
`the claimed phrase “moving image-streaming content being internet broadcasting content”, as
`TCL argues. (Res. at 5). “[M]oving image-streaming content” does not necessarily have to
`come through the Internet or other network, whereas the “internet broadcasting content” would
`as the word “internet” in it suggests. This interpretation finds clear support: “As a result, it is
`becoming widespread to use the Internet to provide distribution of moving images comparable
`in quality to that of the television broadcast, that is a distribution of streaming contents
`(hereafter, referred to as ‘streaming broadcast’).” ’130 Patent at 1:28-32. The passage clarifies
`that: (1) the “distribution of moving images comparable in quality to that of television broadcast”
`is “distribution of streaming contents”; and (2) the “distribution of streaming contents” through
`
`
`4 TCL argues that “Canon’s ‘push/pull’ argument is a red herring as it has nothing to do with the meaning of
`‘broadcast’[.]” (Res. at 6.) The preceding specification citation proves otherwise, tying one broadcasting to push
`type transmission (i.e., conventional broadcasting) and another broadcasting to pull type transmission (i.e.,
`broadcasting, including within the context of internet broadcasting).
`5 (Res. at 6.). Although it’s unclear what TCL means by “they are not coextensive,” if TCL is trying to say that
`“moving image-streaming content” and “internet broadcasting content” are “not coextensive,” Canon agrees. How
`that statement supports the notion that “internet broadcasting content” is limited to what TCL argues is unclear and
`doesn’t comport with the claims and specification.
`
`-2-
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`the Internet or other network is called “streaming broadcast.” Moreover, the claim language
`“being” clarifies that “moving image-streaming content” at least partly overlaps with “internet
`broadcasting content.” And, the claim language “internet” also clarifies that the latter comes
`through the Internet or other network. The term, as construed by Canon, is not redundant.
`“periodically repeat[ing] accessing” (#2) (Res. at 2-4)
`B.
`
`TCL argues that its “construction of ‘periodically’ ... as ‘at regular intervals’ does not
`import a limitation into the claims” and “gives the term its plain and ordinary meaning consistent
`with its usage in the ’130 patent, as confirmed by contemporaneous definitions.” (Res. at 2-4).
`TCL’s is wrong. First, TCL relies on cherry-picked dictionary (extrinsic) definitions. Second,
`implementing TCL’s position would require indeterminate buffering capacity, whereas the
`specification teaches managing periodic buffering using limited, allocated buffering capacity.
`To justify “regular intervals,” TCL relies on two generic dictionary definitions. (Id. at 3).
`Other definitions for “periodic” not requiring “regular intervals, such as occasionally or
`intermittently, 6 would be equally acceptable. (Op. at 6.) This point remains unrebutted.
`Dictionary definitions, therefore, fail to provide credible basis for reading in “regular intervals.”
`TCL cites a decision construing “periodically” to require “regular intervals.” (Res. at 3).
`The case is distinguished because context in that particular case warranted such narrowing.7
`Here, no comparable, narrowing description is available in the intrinsic evidence. Rather, the
`intrinsic evidence actually counsels against requiring “regular intervals,” as explained next.
`TCL argues that the timer is used to require repeated accessing to occur at regular
`intervals. (Id. at 3 - 4). TCL continues: “if a timer is set for one minute, every minute the timer
`will output a signal to access the streaming content.” Id. Accessing streaming content every
`minute, TCL states that “internet content is received (S121) and buffered (S122), and then the
`
`
`6 CANONTCL00009266 – CANONTCL00009268, The American Heritage Dictionary, 4th Ed. 2001 at 627,
`Definition 3: (“pe∙ri∙od∙ic (pîr′ē-ŏd′ĭk) ►adj 3. Occasional; intermittent”)
`7 See Apple Inc. v. Andrea Elecs. Corp., Nos. 2018-2382, -2383, 2020 WL 593661 at *8 (Fed. Cir. Feb. 7, 2020)
`(construing “periodically” as “at regular intervals of time” because “[t]he written description’s only use of the term
`“periodically” … recites: ‘The future and current minimum values are calculated continuously and initiated
`periodically, for example, every 5 seconds as determined[.]”) (emphases in the original).
`
`-3-
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`timer is checked again (S123)[.]” Id. TCL further states that, “[e]very time the ‘time set at
`timer’ (the ‘period’) is reached (S123, ‘YES’), that loop ‘repeats accessing a URL.’” Id.
`TCL’s interpretation would cause repeated accessing at every minute until and unless
`POWER ON is detected at S124 because FIG. 4 makes clear that the timer is set only at S118
`and nowhere else. And, nothing causes the S123-S121 loop to end except when POWER ON is
`detected at S124.8 Thus, if the power remains off, the S123-S121 loop ends up repeating every
`minute and the system will keep buffering additional data until and unless POWER ON is
`detected at S124. That is, without knowing when/whether the power will be turned on, the
`system won’t know how much buffering capacity needs to be allocated. The patent, however,
`contemplates allocating and using limited buffering capacity.9
`Canon’s construction wouldn’t mandate
`such indeterminate buffering capacity. Referring
`to FIG. 4, the timer sets a “period of time” at
`S118. (Op. at 3 – 4.) Using TCL’s “one minute”
`example, the set period here is a one-minute time
`period. Under this interpretation, buffering occurs
`during this one-minute time period. Specifically,
`S123 determines whether the time is within the set
`period of time (i.e., is it still within the one-
`minute time period?). If “YES,” S123-S121 loop kicks into effect and buffering occurs; if “NO”
`(i.e., the one-minute time period elapsed), the system exits the S123-S121 loop at S123 and
`proceeds to S124 – no further buffering takes place after the set period of time elapses.10 Id. In
`
`
`8 At S123, one of two determinations occur if the power remains off to prevent exiting to “B” at S124: (1) if a
`minute mark is reached, go back and repeat accessing; or (2) if a minute has not yet reached (say 58 seconds), go
`through the SS124-S123 loop (doing nothing) and stay in the loop until a minute mark is reached.
`9 See, e.g., ’130 Patent at 12:11-14 (“Note that, the data buffer 106 in this embodiment has a capacity sufficient
`enough to accumulate data for a predetermined time period of all data related to contents displayed on a list on the
`contents guide screen.”). Here, the disclosure is in connection with Embodiment 2, but the same “data buffer 106”
`is used in other embodiments, including Embodiment 1. See, e.g., id. at FIG. 1A (identifying data buffer 106).
`10 After exiting the S123-S121 loop and proceeding to S124, the system will remain in a different loop (loop S124 –
`S123 loop, doing nothing) until POWER ON is detected at S124. No additional buffering occurs from this point
`forward while the power remains off.
`
`-4-
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`other words, while the power is off, data is buffered during and only during the one minute time-
`period, and this accumulated data is used to start playing streaming content when power is later
`turned back on (S124 through S126). Thus, under Canon’s interpretation (unlike TCL’s),
`buffering capacity can be allocated sufficiently even without knowing when/whether the power
`will be turned back on. It comports with the intrinsic evidence.
`Canon’s interpretation is also consistent with a purpose of the claimed invention:
`providing users with a smoother viewing experience when restarting streaming content by
`buffering certain length of content in advance so as to reduce buffering delays upon restart.
`’130 Patent at 2:45-51 (“The above problem is caused by the time period for buffering described
`above, which equals to a total length of a time period required for buffering desired streaming
`contents in a distribution side server and a time period required for buffering a predetermined
`amount of the streaming contents on a receiving terminal side.”) By buffering for a “period of
`time,” the claimed invention achieves this intended purpose using a limited buffering capacity.
`Under Canon’s construction, the specific way in which “repeated accessing” occurs is
`immaterial so long as such accessing occurs during a period of time. (Op. at 3-6.) Namely,
`implementation of periodically repeated accessing could occur at regular intervals, occasionally,
`intermittently, or other ways so long as this repeated accessing occurs during a period of time.
` “operation device” (#3) / “operation form” (#4) (Res. at 26-27)
`C.
`
`“operation device” (#3): TCL makes a conclusory statement that “operation device,”
`under Canon’s construction, covers any conceivable mechanism “including the smallest circuitry
`that may have a role in generating an instruction to the TV.” (Res. at 26). If the user uses this
`“smallest circuitry” on a remote control device to specify an operation, such circuitry is rightly
`covered by “operation device.” TCL provides no evidence to the contrary.
`“operation form” (#4): First, TCL argues that the claim language compels “operation
`form” to require “preset” form because they are “previously stored.” (Res. at 27). No support is
`provided, other than stating that a “layout must be set before it can be stored,” followed by a
`conclusory statement that “Defendants’ construction is correct and compelled by the intrinsic
`
`-5-
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`record.” (Id.). Yet; no intrinsic evidence requires a layout “be set before it can be stored.” See
`generally, ’413 Patent. Second, as TCL concedes, the term “preset” appears only once in the
`specification. (Op. at 6.) TCL cites this passage but omits the preceding language (5:32-35)
`framing the discussion to an embodiment. See ’413 Patent at 5:32-37. TCL’s is thus wrong.
`DISPUTED TERMS FOR CONSTRUCTION – IDENTIFIED ONLY BY TCL
`III.
`
`A.
`
`“buffer” terms (#5) (Res. at 1)
`
`First, TCL argues that “intrinsic-based understanding” mandates “temporarily stor[ing].”
`(Res. at 1). Not so: While buffering contemplated here could be temporarily storing information,
`no intrinsic evidence compels the narrowing. (Op. at 7.) TCL conceded this point when it failed
`to cite intrinsic support. Second, TCL argues that the term must be for the “purpose of flow
`control” and takes issue with Canon’s explanation of buffering as storing with the expectation of
`reusing the storage at a later time. (Res. at 2). How TCL can interpret Canon’s “explanation” as
`an “intent requirement” (but not its “for purpose of flow control” as such) is a contradiction and
`is conclusory at best. (Id.). Regardless, TCL cites no compelling evidence to disturb an
`otherwise readily understood plain and ordinary meaning here. Third, TCL argues that Canon
`equates “buffer” with “store,” even though the claims use both terms. (Id.) TCL misses the
`point: While “buffer” and “store” may very well be similar in operation, the key difference is
`that “buffer” is associated with storing using the “buffering unit,” while “store” is associated
`with “memory unit.” Thus, the purpose for distinctly using “buffer” and “store” is apparent,
`even under Canon’s construction. TCL creates an issue where none exists.
` “control unit” (#6) (Res. at 6 - 10) ; “control unit” (#8) (Id. at 10)
`B.
`Not MPF: 11 TCL fails to overcome the presumption that each term is not MPF. First,
`TCL argues that “unit” is a nonce word. (Res. at 7). It’s a red herring because the term at issue
`here is “control unit.” And TCL points to no categorical rule construing terms with “unit” as
`MPF elements. Second, TCL argues that “control unit” doesn’t connote sufficient structure and
`criticizes Canon for not citing intrinsic support. (Id. at 7-8). But the specification recites
`
`11 If deemed MPF elements, the Court should adopt Canon’s identifications, which are more complete and are
`clearly linked to the corresponding functions. (Op. at 8-12.)
`
`-6-
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`“controller 121” and “CPU” as a control unit performing recited actions.12 Third, TCL takes
`issue with the proffered dictionary definition for control unit, arguing that “this definition
`(‘device or circuit that performs an arbitrating or regulating functions’) itself uses purely
`functional language[.]” (Id. at 8). TCL’s argument itself highlights that “control unit” was
`generally accepted as connoting a definite structure (“device or circuit”).
`TCL’s application of case law, moreover, is flawed. TCL relies on Diebold13, holding
`“cheque standby unit” was MPF. (Res. at 7). It’s distinguished.14 Cellular v. HTC (2015)15 is
`also distinguished: the term there was “the designating unit,” not “control unit.” (Res. at 7).
`TCL argues that Canon’s reliance on Cellular v. HTC (2018)16 and Optis v. ZTE17 is
`misguided, arguing that Canon “ignore[d] the relevant inquiry – whether the claim describes how
`the control unit ‘interacts with other components . . . in a way that might inform the structural
`character of the [control unit] or otherwise impart structure to the [control unit] as recited in the
`claim.’” (Res. at 8). This conclusory argument ignores Canon’s arguments. (Op. at 11 - 12.)18
`TCL also attacks Canon’s reliance on Agis19, but its argument is conclusory and misses
`Canon’s point. (Res. at 8 - 9). TCL seems to argue that “control unit” doesn’t use the exact
`claim language from Agis, i.e., “device programmed to perform operations.” (Res. at 8). Canon
`doesn’t argue that the words are the same. But Agis still applies because this Court in Agis ruled
`that if a claimed term contemplates both a hardware (“a first device programmed to perform
`operations”) and a software component (algorithm) and the claim itself discloses both, “[t]he
`claim itself thus recites structure.” Agis at *53-54. Here, “control unit” corresponds to Agis’s
`
`
`12 See, e.g., ’130 Patent at FIG. 1A and accompanying disclosures (identifying controller 121), FIG. 3 (same), 15:66-
`17:67 (identifying CPU throughput).
`13 Diebold Nixdorf, Inc. v. ITC, 899 F.3d 1291 (Fed. Cir. 2018).
`14 First, unlike in Diebold, the intrinsic evidence here expressly provides examples of the terms’ hardware
`component (e.g., controller 121 and CPU) and the algorithm with which to program such hardware. Second, unlike
`“cheque standby unit,” “control unit” has a well-understood meaning in the industry. Third, unlike in Diebold,
`Canon has identified specific structures, such as controller 121 and CPU programmed with algorithm.
`15 Cellular Commc’ns v. HTC Corp., No. 6:13-CV-507, 2015 WL 1048890 (E.D. Tex. Mar. 9, 2015).
`16 Cellular Commc’ns v. HTC Corp., No. 6:16-CV-475-KNM, 2018 U.S. Dist. LEXIS 3759 (E.D. Tex. Jan. 8, 2018)
`17 Optis Wireless v. ZTE Corp., No. 2:15-cv-300-JRG-RSP, 2016 U.S. Dist. LEXIS 52657 (E.D. Tex. Apr. 19, 2018)
`18 The opening made clear that the claimed “control unit” interacts with other definite structures (e.g., receiving
`and buffering units) so as to achieve the terms’ objectives; with comparable showing, this Court in Cellular v. HTC
`(2018) and Optis v. ZTE found terms reciting sufficient structure. (Op. at 11-12.) This point is unrebutted.
`19 Agis Software v. Huawei, No. 2:17-CV-513-JRG, 2018 U.S. Dist. LEXIS 174041 (E.D. Tex. Oct. 10, 2018).
`
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`“first device” and the claim language following “control unit” (the three “controlling” elements)
`correspond to the programmed algorithms in Agis. Agis therefore supports Canon’s position.
`Other cases are misapplied. TCL cites IPS20 for the proposition that “control unit” in that
`case was found to be an MPF element. (Res. at 9). The case is distinguished.21 TCL cites Optis
`v. Huawei, 22 where “processing unit” was deemed an MPF element. (Res. at 9). It’s
`distinguished.23 TCL cites Saint Lawrence24 for the proposition that “spectral shaping unit” was
`found to be an MPF element. (Res. at 9). Also distinguished.25
`TCL further argues that Applicant failed to “document in the prosecution history” its
`intent to avoid MPF claiming because Applicant didn’t provide a “statement” explaining why it
`replaced “means” (in the original claims) with “unit” (in the amended, new claims),. (Res. at 9).
`The analysis is flawed. Canon’s act manifested its clear intent to avoid MPF claiming: Canon
`affirmatively chose to use the word “unit” over the word “means” by categorically cancelling all
`claims (which totaled many in count) using “means” and introducing new claims using “units.”
`(Op. at 11.) And this categorical amendment was made pre-Williamson when strong
`presumption against MPF treatment still existed for terms lacking “means.” This is clear
`documentation in the prosecution history of Applicant’s intent.
` “television broadcast program” (#7) (Res. at 5)
`C.
`
`TCL cites dictionary definitions to require “simultaneous[] transmit[ssion],” but its brief
`is silent on what TCL means by “simultaneous transmission.” (Res. at 5). It’s unclear whether
`
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`20 IPS Grp., Inc. v. CivicSmart, Inc., No. 3-17-cv-00632-CAB-(MBB), 2018 WL 6567843 (S.D. Cal. Dec. 13, 2018).
`21 First, the patentee there argued that the control unit was “circuitry and optionally software” and pointed to a
`hardware (low dropout regulator) but failed to identify any software in the specification. IPS at *2 – 3. Here, Canon
`identified both hardware and algorithm. Second, the IPS court found that “plaintiff provide[d] no reference to the
`specification to support its assertion that a person of ordinary skill in the art would also understand the control unit
`[would] include software” and therefore found the control unit to be an MPF element limited to the expressly
`discussed hardware only. Id. at *1-3. Here, in contrast, Canon has expressly pointed not just to the specification but
`the claim language itself to make clear that the terms contemplate hardware plus algorithm.
`22 Optis Wireless v. Huawei, No. 2:17-CV-123-JRG-RSP, 2018 WL 476054 (E.D. Tex. Jan. 18, 2018)
`23 In Optis v. Huawei, the relevant claim provided “very little detail” as to what the “processing unit” was, leaving
`unclear the processing unit’s inputs and outputs. Optis v. Huawei at *31. Here, as explained above, the claims
`provide significant details, including how the claimed “control units” interacts with other definite structures.
`24 Saint Lawrence v. ZTE Corp., No. 2:15-CV-349, 2016 WL 6275390 (E.D. Tex. Oct. 25, 2016)
`25 In Saint Lawrence, the plaintiff did not, even at the Markman hearing, attempt to argue against MPF treatment.
`Saint Lawrence at *19. Here, Canon affirmatively counters TCL’s MPF allegations.
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`TCL’s construction captures the term’s full scope as the patent contemplates (i.e., conventional
`television broadcast); anything less is unsupported by intrinsic evidence. (Op. at 13.) TCL’s
`construction adds ambiguity to an otherwise readily understood term and should be rejected.
`“continue” (#12) / “end” (#13); “stop” terms (#20) / (Res. at 12-13)
`D.
`
`“continue” (#12): TCL imports “maintain[ing]” without any evidentiary support, either
`intrinsic or otherwise. (Res. at 13; Op. at 20.) What is “continue[d]” need not necessary be
`maintained. The plain and ordinary meaning (unrebutted by TCL) shouldn’t be disturbed.
`“end” (#13); “stop” terms (#20): TCL’s construction requires “clear or overwrite.”
`(Res. at 12). If this construction covers all instances of not “continu[ing],” the parties are in
`agreement. But that’s not the case: TCL narrows the term by improperly importing limitations
`from embodiments. (Op. at 21.)