IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TENNESSEE
`KNOXVILLE DIVISION
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`3:19-cv-00201
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`PROCON ANALYTICS, LLC,
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`Plaintiff,
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`vs.
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`SPIREON, INC.,
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`Defendant.
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`______________________________________________________________________________
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`CLAIM CONSTRUCTION ORDER
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`The case is before the Court for claim construction pursuant to Markman v. Westview
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`Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995), aff'd, 517 U.S. 370, (1996). A Markman
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`hearing was held on November 9, 2020. (ECF No. 54.) Present were Seth Ogden and Ed Lanquist,
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`Jr., counsel for Plaintiff, and Matthew Google and Taylor Williams, counsel for Defendant.
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`I.
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`BACKGROUND
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`A. Procedural Background
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`On April 2, 2019, Plaintiff Procon Analytics, LLC (“Procon”) was served with a letter from
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`Defendant Spireon, Inc. (“Spireon”), accusing it of infringement of U.S. Patent No. 10,089,598
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`(the “’598 Patent”). (ECF No. 1-1.) On April 25, 2019, Spireon followed up its first letter with a
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`cease and desist demand with respect to any products that allegedly infringe the ’598 Patent. On
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`June 3, 2019, Procon brought this claim for declaratory judgement of noninfringement and
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`invalidity of the ’598 Patent, and filed an Amended Complaint on August 6, 2019. (ECF No. 9.)
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`Spireon filed an Answer and Counterclaims on August 26, 2019. (ECF No. 10.)
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`Procon is a Tennessee limited liability company with a principal place of business in Irvine,
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`California (ECF No. 9 ¶ 1), and Defendant Spireon is a Tennessee corporation with offices in
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`Irvine, California and Knoxville, Tennessee (ECF No. 9 ¶ 2). Both parties are competitors in the
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`connected car and vehicle management fields. Procon “offers a suite of connected-car products
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`and services, including vehicle inventory management and service retention products, fleet-
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`management tools, and other aftermarket solutions packaged for automotive retailers.” These
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`products include both hardware and software solutions. (ECF No. 9 ¶¶ 22–26.) One such product
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`is a software that helps new car automotive dealerships manage their inventory. (Id. ¶ 23.) Another
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`product that Procon sells is a device that connects to the “on-board diagnostics (OBDII) port (or a
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`panel attached thereto) of a vehicle.” (Id. ¶ 25.) This device is enabled to “transmit information
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`to the cloud over a wireless network.” (Id.) Similarly, Spireon purports to be an “industry leader
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`in Mobile Resource Management, offering lot management solutions to [the] automotive dealer
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`industry.” (ECF No.1-1 at PageID 9.) Spireon asserts that it is a “leader in the field of connected
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`vehicle intelligence” and sells products that “facilitate[] the tracking, management, and protection
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`of vehicles in various commercial applications and industries.” (ECF No. 10 at PageID 197.) It
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`is Spireon’s contention that Procon continues “making, selling, and offering for sale products and
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`services for managing vehicle inventory for dealerships that infringe on certain claims of the ’598
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`Patent[.]” (ECF No. 10 at PageID 198.)
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`B. Post-Grant Proceeding
`Procon filed a Petition requesting Post-Grant Review of Claims 1–14 of the ’598 Patent on
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`May 30, 2019. (ECF No. 12 ¶ 5). On November 22, 2019, the Patent Trial and Appeal Board
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`(“PTAB”) declined to institute proceedings against the challenged claims. (ECF No. 17-1.) The
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`parties did not dispute the meaning of any claim terms of the ’598 Patent in front of the PTAB and
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`did not propose specific constructions for any of the claim terms. (ECF No. 17-1 at PageID 239.)
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`The PTAB gave “the claim terms of the ’598 patent their ordinary and customary meaning, as
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`understood by one of ordinary skill in the art, and in view of the prosecution history of the ’598
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`patent.” (Id.) One of the key points in the PTAB’s decision was that the prior art failed to disclose
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`location devices “owned by the auto dealer,” and thus this is a key point of contention in the current
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`claim construction briefing. (ECF No. 38-6 at PageID 471.)
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`C. The ’598 Patent
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`The ’598 patent is entitled “Methods and Apparatus for Monitoring and Control of
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`Electronic Devices” and it primarily discloses a method for machine to machine telemetry. The
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`patent defines “telemetry” as “a technology that allows the remote measurement and reporting of
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`information of interest to the system designer or operator.” (’598 patent, col. 1 l. 19–21.)
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`At its heart, the ’598 Patent discloses an “inventory management system” that “may be
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`configured to provide machine-to-machine network connectivity” and “may be used in conjunction
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`with a location device configured to transmit a vehicle identification number (VIN) and a device
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`identifier of the location device.” ’598 Patent at Abstract. The technology in the ’598 Patent boils
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`down to methods of communicating and gathering information from vehicles. As described in the
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`abstract of the patent, “the inventory management system may be configured to: (1) track whether
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`the location device is located within a predetermined perimeter; (2) provide current inventory and
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`ownership status associated [with] the location device; and/or (3) place the location device in a
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`sleep and/or passive state with periodic check-ins.” ’598 Patent at Abstract. The disclosure and
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`claims also provide additional capabilities, such as receiving signals if the car’s battery is depleted
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`or storing additional information about the vehicle in the database. (See generally, ’598 patent at
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`15:28–32, 16:43–48.)
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`In this case, all of the independent claims begin with “[a] method for managing a vehicle
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`inventory.” (’598 patent, col. 27–28.) Claim 1 is the basis for most discussion on claim terms and
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`provides as follows:
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`1. A method for managing a vehicle inventory for a dealer implemented by a computer
`having a processor and a memory, the method comprising:
`while a location device is not communicatively coupled with a vehicle, associating
`the location device with a dealer’s group of available location devices in the
`memory, wherein the dealer’s group of available location devices comprises
`location devices owned by the dealer that are not coupled with any vehicle;
`communicatively coupling the location device with a vehicle;
`in response to the location device becoming communicatively coupled with the
`vehicle, the location device transmitting a connection notice over a network, the
`connection notice comprising a vehicle identifier and a location device identifier;
`receiving, by the computer, the connection notice from the location device over the
`network;
`in response to the connection notice received by the computer, the processor:
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`associating the location device identifier with the vehicle identifier in the
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`memory; and
`disassociating the location device from the dealer’s group of available
`location devices in the memory; and
`receiving, by the computer, current location information from the location device.
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`APPLICABLE LEGAL STANDARD
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`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to
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`II.
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`which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312
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`(Fed. Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381
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`F.3d 1111, 1115 (Fed. Cir. 2004)). Courts, as a matter of law, must construe the claims of a patent
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`in order to ascertain precisely what it is that is patented. See id.; see also Markman v. Westview
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`Instruments, Inc., 517 U.S. 370, 387 (1996).
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`In engaging in that exercise, the words in the claims are “generally given their ordinary
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`and customary meaning,” that is, “the meaning that the term would have to a person of ordinary
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`skill in the art in question at the time of the invention.” Phillips, 415 F.3d at 1312-13 (internal
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`citations and quotation marks omitted). This ordinary and customary meaning “may be readily
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`apparent even to lay judges,” and where that is the case, claim construction involves “little more
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`than
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`the application of
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`the widely accepted meaning of commonly understood
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`words.” Id. at 1314 (citing Brown v. 3M, 265 F.3d 1349, 1352 (Fed. Cir. 2001)).
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`However, as the ordinary and customary meaning is often not immediately apparent, courts
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`must look to other sources of evidence—“the words of the claims themselves, the remainder of the
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`specification, the prosecution history, and extrinsic evidence concerning relevant scientific
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`principles, the meaning of technical terms, and the state of the art.” Id. (citing Innova, 381 F.3d at
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`1116). In Phillips, the United States Court of Appeals for the Federal Circuit provided guidance
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`on the relative weight given to evidence from these various sources. Id.
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`First, “the claims themselves provide substantial guidance as to the meaning of particular
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`claim terms,” particularly the “context in which a term is used in the asserted claim.” Id. at 1314.
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`But because claims are also part of a “fully integrated written instrument,” they must “be read in
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`view of the specification, of which they are a part.” Markman, 52 F.3d at 978, 979 (citations
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`omitted). As the Federal Circuit has stressed, “[a] patent’s specification provides necessary
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`context for understanding the claims, and ‘is always highly relevant to the claim construction
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`analysis.’” Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir. 2009) (en banc in part)
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`(quoting Phillips, 415 F.3d at 1315). Further, “sometimes the specification offers practically
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`incontrovertible directions about claim meaning,” as when inventors “act as their own
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`lexicographers and give a specialized definition of claim terms,” or “intentionally disclaim, or
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`disavow, subject matter that would otherwise fall within the scope of the claim.” Id. (internal
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`citations and quotation marks omitted). But the Court must take care neither “to import limitations
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`into the claims from the specification,” nor to allow “the claims to enlarge what is patented beyond
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`what the inventor has described as the invention.” Id. at 1288 (internal citations and quotation
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`marks omitted). In addition, “a particular embodiment appearing in the written description may
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`not be read into a claim when the claim language is broader than the embodiment.” Resonate Inc.
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`v. Alteon Websystems, Inc., 338 F.3d 1360, 1364-65 (Fed. Cir. 2003).
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`The prosecution history of the patent is the other type of “intrinsic evidence,” along with
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`the specification, courts consider when determining the meaning of disputed terms. Phillips, 415
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`F.3d at 1317.
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`Finally, courts may consider extrinsic evidence—that is, “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.” Id. (quoting Markman, 52 F.3d at 980). Such evidence, however, is “less significant
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`than
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`the
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`intrinsic
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`record
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`in determining
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`the
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`legally operative meaning of claim
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`language.” Phillips, 415 F.3d at 1317 (internal quotations and citations omitted).
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`In engaging in a Markman analysis, a court is not required to “repeat or restate every claim
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`term in order to comply with the ruling that claim construction is for the court.” U.S. Surgical
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`Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). Rather, “[c]laim construction is a
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`matter of resolution of disputed meanings and technical scope, to clarify and when necessary to
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`explain what the patentee covered by the claims, for use in the determination of infringement.” Id.
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`During this Markman hearing, the Defendants advanced arguments that approximately 29
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`terms used in the patents are indefinite under Nautilus. Nautilus, Inc. v. Biosig Instruments, Inc.,
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`572 U.S. 898, 910 (2014). In Nautilus, the Supreme Court announced that 35 U.S.C. §112, ¶2
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`“require[s] that a patent’s claims, viewed in light of the specification and
`prosecution history, inform those skilled in the art about the scope of the invention
`with reasonable certainty. The definiteness requirement, so understood, mandates
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`clarity, while recognizing that absolute precision is unattainable. The standard we
`adopt accords with opinions of this Court stating that the certainty which the law
`requires in patents is not greater than is reasonable, having regard to their subject-
`matter.”
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`Id. at 910 (internal quotations omitted).
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`The Court follows Federal Circuit precedent and considers indefiniteness to the extent that
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`“[i]ndefiniteness is a matter of claim construction, and the same principles that generally govern
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`claim construction are applicable to determining whether allegedly indefinite claim language is
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`subject to construction.” Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008) (citing
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`Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1348 (Fed. Cir. 2005)).
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`“[U]nder controlling precedent, the ultimate question of indefiniteness is one of law.” Dow
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`Chem. Co. v. NOVA Chems. Corp. (Can.), 809 F.3d 1223, 1224-25 (Fed. Cir. 2015). Under Teva,
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`the Supreme Court acknowledged that subsidiary factual determinations are made in the course of
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`claim construction. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 832 (2015). To the
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`extent that a definiteness analysis relies on factual issues as to the knowledge of the person having
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`ordinary skill in the art, it is an inquiry that “is amenable to resolution by the jury.… ” BJ Servs.
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`Co. v. Halliburton Energy Servs., Inc., 338 F.3d 1368, 1372 (Fed. Cir. 2003) (“[D]efiniteness …
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`is amenable to resolution by the jury where the issues are factual in nature.). Furthermore, the
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`analysis of indefiniteness can be assessed both at the claim term level during Markman briefing,
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`as well as at a claim level during summary judgment briefing. See, e.g., Cox Comm’s, Inc. v.
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`Spring Comm’n Co., 838 F.3d 1224, 1228 (“[T]he district court decided, among other things, that
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`the term ‘processing system’ was not indefinite, but did not warrant a construction.…[T]he district
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`court granted Cox’s motion [for partial summary judgment], finding that the claims were
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`indefinite.”). The Cox Court also shed light on the ultimate question of indefiniteness under 35
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`U.S.C. § 112, ¶ 2:
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` “To be sure, we have generally acknowledged that an indefiniteness analysis under
`35 U.S.C. § 112, ¶ 3 is ‘inextricably intertwined with claim construction.’” Atmel
`Corp v. Info. Storage Devices, Inc., 198 F.3d 1374, 1379 (Fed. Cir. 1999.)
`Accordingly, the common practice of training questions of indefiniteness on
`individual claim terms is a helpful tool. Indeed, if a person of ordinary skill in the
`art cannot discern the scope of a claim with reasonable certainty, it may be because
`one of several claim terms cannot be reasonably construed. See, e.g., Interval
`Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1374 (Fed. Cir. 2014) (finding the
`phrase ‘unobtrusive manner’ rendered claims indefinite because, even after
`consulting the claims, specification, and prosecution history, a skilled artisan would
`be left ‘to consult the unpredictable vagaries of any one person’s opinion”)
`(citations and internal quotation marks omitted).
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`Nevertheless, indefiniteness under § 112, ¶ 2 must ultimately turn on the question
`set forth by Nautilus: whether the ‘claims, read in light of the specification
`delineating the patent, and the prosecution history, fail to inform, with reasonable
`certainty, those skilled in the art about the scope of the invention.” Id. at 2129
`(emphasis added).”
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`Cox Comm’s, Inc. v. Sprint Comm’n Co., 838 F.3d 1224, 1231–32 (Fed. Cir. 2016).
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`Per the guidance from the Cox Court, this Court will address indefiniteness at this phase to
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`the extent a specific claim term needs be construed to inform a person having ordinary skill in the
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`art as to the scope of the claims at issue.
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`III. TERMS AT ISSUE
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`A. Summary of Party’s Positions
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`Procon relies on the testimony of its expert, Dr. Wilhelm and proposes constructions for
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`most of the disputed claim terms. Furthermore, Procon argues that Spireon’s constructions are
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`logically inconsistent, noting that “[w]herever Spireon proposes plain and ordinary meaning, it
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`claims that Procon’s proposed constructions are unduly limiting by importing limitations. Yet,
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`wherever Spireon proposes that construction is necessary, it seeks to limit the claims by importing
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`limitations that are not recited in the disputed terms.” (ECF No. 44 at PageID 1686.) Procon’s
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`theory is that Spireon “seeks to narrow certain claim terms to avoid the prior art,” specifically the
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`prior art that was raised by Procon in its Petition for Post Grant Review. (Id.) The gist of Procon’s
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`argument to the Court is that it should construe the disputed terms now in order to reduce ambiguity
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`and not leave it up to the fact-finder to deliberate as to what a person having ordinary skill in the
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`art (“PHOSITA”) may think the terms mean. (ECF No. 47.) A further rationale for Procon’s
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`request for construction of many of these terms is that they may be dispositive of infringement,
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`particularly the “in response to” term. (ECF No. 47 at PageID 2536.)
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`Conversely, Spireon argues that Procon is attempting to use claim construction as a vehicle
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`to track its own litigation arguments, particularly after its failure in instituting a Post-Grant Review
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`at the PTAB. (ECF No. 48 at PageID 2550.) Furthermore, the crux of Spireon’s argument is that
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`Procon’s constructions attempt to import limitations into the claims in order to avoid infringement
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`or read prior art into the claims. (Id.) Spireon asks the Court to take a cautious approach with
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`respect to claim construction, so as not to resolve infringement questions now. (Id. at PageID
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`2551.) Furthermore, Spireon rebuts many of Procon’s assertions by arguing that they over-rely on
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`expert testimony as opposed to intrinsic evidence, such as the specification, prosecution history,
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`and claims. (Id.)
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`B. Procedural Background
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`Procon filed its Opening Claim Construction Brief on September 11, 2020. (ECF No. 44.)
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`Defendant filed its Responsive Claim Construction Brief on October 9, 2020. (ECF No. 48.) The
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`parties jointly filed a claim construction and prehearing statement on September 16, 2020. (ECF
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`No. 49.) A hearing to discuss the parties’ positions took place on November 9, 2020. (ECF No.
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`54.)
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`At the hearing, both parties provided alternative constructions for some of the terms in
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`dispute. The Court has adopted or utilized the parties’ suggested constructions where possible.
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`C. Agreed-Upon Terms
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`Term
`“partial vehicle identifier”
`“location device identifier”
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`
`Agreed Construction
`Plain and ordinary meaning
`Data that permits the computer to
`uniquely identify a location device
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`D. Overview of Disputed Claim Terms
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`Disputed Term
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`“location device
`owned by the
`dealer”
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`“in response to
`the location
`device being
`communicatively
`coupled with the
`vehicle”
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`“connection
`notice”
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`“in response to
`the connection
`notice received by
`the computer”
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`Procon’s Proposed
`Construction
`
`A device that can
`determine and transmit
`location information
`and that is held as an
`asset by a vehicle
`dealer
`
`Spireon’s Proposed
`Construction
`Location devices
`owned and belonging
`to the dealer and
`available for
`installation on a
`vehicle in the dealer’s
`vehicle inventory
`
`Court’s
`Construction
`
`A device owned by
`the dealer that can
`determine and
`transmit location
`information
`
`As a direct result of
`initial communication
`between the location
`device and the vehicle
`
`A transmission that
`the computer
`interprets as indicating
`an initial
`communication
`between the location
`device and the vehicle.
`As a direct result of
`receiving the
`connection notice
`without requiring any
`additional
`communications being
`received by the
`computer.
`
`No construction
`necessary; plain and
`ordinary meaning.
`
`No construction
`necessary; plain and
`ordinary meaning.
`
`No construction
`necessary; plain and
`ordinary meaning.
`
`Alternatively,
`As a result of
`receiving the
`connection notice
`
`As a result of the
`location device
`becoming connected
`with the vehicle.
`
`A transmission or
`series of
`transmissions
`indicating that the
`location device is
`connected to the
`vehicle.
`
`As a result of
`receiving the
`connection notice.
`
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`[associating/
`disassociating]
`the location
`device
`[with/from] a
`dealer’s group of
`available location
`devices in the
`memory
`
`“disconnect
`notice”
`
`“ownership
`information”
`
`[associating/
`disassociating] the
`location device
`[with/from] a group of
`location devices that
`are not presently
`associated with a
`vehicle in the memory
`A transmission that
`the computer
`interprets as indicating
`that the location
`device is no longer
`communicating with
`the vehicle.
`Information that
`indicates a party has
`an ownership interest
`in the vehicle or holds
`the vehicle as an asset.
`
`Adding/removing the
`location device
`to/from the dealer’s
`group of location
`devices owned by the
`dealer and available
`for installation in a
`vehicle in the dealer’s
`vehicle inventory.
`
`No construction
`necessary; plain and
`ordinary meaning.
`
`[associating/
`disassociating] the
`location device
`[with/from] a dealer’s
`group of location
`devices present for
`use in the memory.
`
`A transmission or
`series of
`transmissions
`indicating that the
`location device is no
`longer connected to
`the vehicle.
`
`No construction
`necessary; plain and
`ordinary meaning.
`
`Plain and ordinary
`meaning.
`
`“user interface”
`
`An input/output
`mechanism.
`
`No construction
`necessary; plain and
`ordinary meaning.
`
`
`
`1) “location device owned by the dealer”
`
`Software, hardware,
`firmware, or a
`combination thereof
`that allows for input
`and output of
`information.
`
`Disputed Term
`
`Procon’s Proposed
`Construction
`
`“location device
`owned by the
`dealer”
`
`A device that can
`determine and transmit
`location information and
`that is held as an asset
`by a vehicle dealer
`
`
`
`Spireon’s Proposed
`Construction
`Location devices
`owned and belonging
`to the dealer and
`available for
`installation on a
`vehicle in the dealer’s
`vehicle inventory
`
`Court’s
`Construction
`
`A device owned by
`the dealer that can
`determine and
`transmit location
`information.
`
`
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`The key disputed portion of this claim term is “owned by the dealer.” Procon argues for a
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`two-part construction of this term—first construing “location device” and then construing “owned
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`by the dealer.” (ECF No. 44 at PageID 1687.) Procon argues that “location device” means “a
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`device that can determine and transmit location information,” citing to both the testimony of its
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`expert Dr. Wilhelm, as well as the testimony of Defendant’s expert, Mr. Nranian. (Id.) The second
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`half of Procon’s construction posits that “owned by the dealer” means “held as an asset by a vehicle
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`dealer.” (Id. at PageID 1688.) In particular, Procon asserts that Spireon is attempting to avoid
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`invalidity arguments at play due to a prior art reference (ECF No. 44-1, “Boling Reference”),
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`which discusses ownership by banks or lenders. Furthermore, Procon says that the critical inquiry
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`here is what constitutes being “owned by” and purports to put forward a construction that answers
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`this question—a PHOSITA would understand “owned by” to mean being held as an asset without
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`any specific numerical ownership interest. (ECF No. 44 at PageID 1688, ECF No. 44-3, ¶¶ 55–
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`57.) Procon’s expert, Dr. Wilhelm, also explains that “regarding vehicle ownership, a POSITA
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`would have understood that all the vehicles are held as assets by the dealers.…This understanding
`
`would have applied equally to location device ownership.” (ECF Nos. 44-3, ¶¶ 55–56; 44-4, ¶¶
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`58–60.)
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`To support this proposition, Procon also points to the dictionary definitions provided by
`
`Spireon; specifically, the transitive form of “own” is to “own or hold as property: POSSESS” or
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`“to have power or mastery over.” (ECF No. 44 at PageID 1689.) Procon utilizes this to argue that
`
`the “owned by dealer” portion of the term can entail having multiple parties holding the location
`
`devices as an interest.
`
`For its arguments, Spireon points to the intrinsic evidence in the ’598 patent, citing to the
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`preamble of Claim: “A method for managing a vehicle inventory for a dealer.” (ECF No. 38 at
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`PageID 352.) Furthermore, Spireon argues that the claims should be construed in the context of a
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`“dealer’s group of available location devices.” Spireon also points to figures 10, 11, and 12
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`showing vehicles that are in the dealer’s vehicle inventory, as well as a portion of the specification
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`that notes “[t]he inventory management system 100 may be configured to automatically associate
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`and/or disassociate a vehicle and/or device with the dealer’s vehicle inventory.” (ECF No. 38 at
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`PageID 353.) Furthermore, Spireon rejects any arguments made by Procon regarding the
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`prosecution history of the ’598 patent, noting that “location devices owned by the dealer” was only
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`added to Claim 1 in the Amendment and Response to the Office Action dated May 16, 2018 to
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`clarify the term, not to avoid the prior art. (Id. at PageID 354.) Spireon also points to the PTAB’s
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`decision not to institute Post-Grant Review, in which it found that the “ownership” requirement
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`was not found in the prior art, or that this requirement would have been obvious. (Id.) Notably,
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`the PTAB found that, with respect to the Boling prior art reference, Procon did not provide an
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`“explanation of why it would matter in managing the inventories whether the location devices are
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`owned by a third party and leased to the bank or auto dealer, and [] no evidence concerning
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`ownership of location devices by the auto dealer.” (ECF No. 38-6 at PageID 473–474.) Procon
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`asks the Court to not give weight to the PTAB, while Spireon argues that the Court should defer
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`to the PTAB’s express findings. Procon also takes issue with Spireon’s construction for
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`improperly importing “available for installation on a vehicle in the dealer’s vehicle inventory” into
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`“owned by the dealer.” (ECF No. 44 at PageID 1689.)
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`With this term, the Court finds it necessary to at least construe “location device.” As
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`iterated by Procon, “it is not readily apparent what a location device is unless that’s read in the
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`context of the specification and claim language.” (Hearing Tr. at 18:21–19:1). The ’598 Patent
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`provides that a “location device may comprise any suitable system for determining a physical
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`location of the location device and communicating the position to the inventory management
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`system.” ’598 Patent, 6:55–58. While Spireon asserts that this definition would be merely
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`“rewriting this term”, Spireon did not otherwise take issue with defining location device as a device
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`that can determine and transmit location information. (Hearing Tr. at 27:12–30:24.) Regarding
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`the second portion of the term —“owned by the dealer”— the Court finds that any additional
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`construction beyond the plain and ordinary meaning would be unnecessarily confusing to the jury.
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`2) “in response to the location device being communicatively coupled with the
`vehicle”
`
`Disputed Term
`
`“in response to
`the location
`device being
`communicatively
`coupled with the
`vehicle”
`
`Procon’s Proposed
`Construction
`
`Spireon’s Proposed
`Construction
`
`Court’s
`Construction
`
`As a direct result of
`initial communication
`between the location
`device and the vehicle
`
`No construction
`necessary; plain and
`ordinary meaning.
`
`As a result of the
`location device
`becoming connected
`with the vehicle.
`
`Procon seeks to construe this term in order to establish a “cause-and-effect relationship” as
`
`part of the coupling process. (ECF No. 44 at PageID 1691.) For example, Procon points to the
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`language of Claim 1, which recites an ordered set of steps requiring functions performed by the
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`location device and computer. (ECF No. 44 at PageID 1691.) For effect, Procon adds “first”,
`
`“next”, and “in response” to the language of Claim 1 below:
`
`First: communicatively coupling the location device with a vehicle. In response:
`the location device transmitting a connection notice over a network. Next:
`receiving, by the computer the connection notice from the location device over the
`network. In response, the processor: associating the location device identifier with
`the vehicle identifier in the memory; and disassociation the location device from
`the dealer’s group of available location devices in the memory.
`
`
`(Id. (emphasis in original).)
`
`
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`Spireon’s expert, Mr. Nranian addresses the amendments made in prosecution (i.e., the
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`addition of “in response to”) by arguing this language was only added to clarify the order of steps.
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`(ECF No. 44-1, ¶ 48.) He further points to the specification’s use of “may” in order to show a
`
`broad construction of any claim term, asserting that a POSITA “would understand that Procon’s
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`and Dr. Wilhelm’s proposed construction that include the terms ‘direct’ and ‘initial’ are wrong,
`
`because the specification does not specifically limit the response as occurring as a direct and initial
`
`result contradicts governing claim construction principles.” (ECF No. 44-5, ¶ 35.) However, the
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`plain language “in response to” is not readily explained away. Procon correctly notes that
`
`specifications do not provide the bounds of claims, the claims do. (ECF No. 44 at PageID 1693.)
`
`The crux of Spireon’s argument here is that “[p]ortions of this term are used throughout the
`
`specification of the ’598 Patent in a diverse manner” and thus “the specification refers to the phrase
`
`‘communicative coupling’ as an act that could be distinct from actually communicating data or an
`
`act that occurs along with communicating data.” (ECF No. 38 at PageID 357.) Spireon admits
`
`that the term “in response to” was added to Claim 1 in an amendment to overcome § 112 and
`
`indefiniteness, but states this was “solely for the purpose of clarifying the order of steps listed in
`
`Claim 1.” (Id. at PageID 357.) Spireon also argues that the “specification of the ’598 Patent
`
`describes numerous actions, steps, or procedures that may occur immediately, concurrently with
`
`other steps, after other steps, or that may not occur at all.” (Id. at PageID 358.)
`
`The parties also dispute whether there was a disclaimer in the prosecution history. Procon
`
`asserts that the Applicants amended the claims to move the limitation from the preamble to the
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`body to overcome Shaytovich prior art reference. (ECF No. 44 at PageID 1694.) Spireon argued
`
`that the Shaytovich reference did not disclose that Shaytovich’s RFID device transmits a
`
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