Case 2:19-cv-00326-JRG Document 113 Filed 10/30/20 Page 1 of 42 PageID #: 5266
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`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`CLEAR IMAGING RESEARCH, LLC,
`
`
`Plaintiff,
`
`
`
`
`
`v.
`
`SAMSUNG ELECTRONICS CO.,
`LTD. and SAMSUNG ELECTRONICS
`AMERICA, INC.,
`
`
`Defendants.
`
`
`
`Case No. 2:19-cv-00326-JRG
`
`CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER
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`Before the Court is the opening claim construction brief of Clear Imaging Research, LLC
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`(“Plaintiff”) (Dkt. No. 82, filed on August 14, 2020),1 the response of Samsung Electronics Co.
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`Ltd. and Samsung Electronics America, Inc. (collectively “Defendants”) (Dkt. No. 91, filed on
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`August 31, 20202), and Plaintiff’s reply (Dkt. No. 95, filed on September 4, 2020). The Court held
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`a hearing on the issues of claim construction and claim definiteness on October 14, 2020. Having
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`considered the arguments and evidence presented by the parties at the hearing and in their briefing,
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`the Court issues this Order.
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`
`
`
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`1 Citations to the parties’ filings are to the filing’s number in the docket (Dkt. No.) and pin cites
`are to the page numbers assigned through ECF.
`2 The brief was originally filed on August 28, 2020 as Dkt. No. 90.
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`Case 2:19-cv-00326-JRG Document 113 Filed 10/30/20 Page 2 of 42 PageID #: 5267
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`Table of Contents
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`I.
`II.
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`BACKGROUND ............................................................................................................... 3
`LEGAL PRINCIPLES ..................................................................................................... 6
`A.
`Claim Construction ................................................................................................. 6
`B.
`Departing from the Ordinary Meaning of a Claim Term ........................................ 9
`C.
`Functional Claiming and 35 U.S.C. § 112, ¶ 6 (pre-AIA) / § 112(f) (AIA) ......... 10
`D.
`Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA) ................. 12
`III. CONSTRUCTION OF DISPUTED TERMS ............................................................... 13
`A.
`“processor … configured to …” ........................................................................... 13
`B.
`“user interface … configured to …” ..................................................................... 18
`C.
`“a display configured to receive user input” ......................................................... 20
`D.
`“a receiver configured to receive, from a subject of the images, a tracking
`signal that is transmitted from the subject and indicates a location of the
`subject” ................................................................................................................. 23
`The Designating and Detecting Terms ................................................................. 25
`E.
`“blurred compared to” and “blurry compared to” ................................................. 34
`F.
`“substantially blur free” ........................................................................................ 37
`G.
`“the display”.......................................................................................................... 40
`H.
`IV. CONCLUSION ............................................................................................................... 41
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`Case 2:19-cv-00326-JRG Document 113 Filed 10/30/20 Page 3 of 42 PageID #: 5268
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`I.
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`BACKGROUND
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`
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`Plaintiff alleges infringement of six U.S. Patents No. 8,630,484 (the “’484 Patent”), No.
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`9,154,699 (the “’699 Patent”), No. 9,392,175 (the “’175 Patent”), No. 9,860,450 (the “’450
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`Patent”), No. 10,171,740 (the “’740 Patent”), and No. 10,389,944 (the “’944 Patent”) (collectively,
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`the “Asserted Patents”). The Asserted Patents are related through continuation applications. Each
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`of the Asserted Patents claims priority to U.S. Application No. 11/089,081, which issued as U.S.
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`Patent No. 8,331,723, and to U.S. Application No. 60/556,230. The earliest claimed priority date
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`is March 25, 2004.
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`In general, the Asserted Patents are directed to technology for addressing image blur. The
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`patents disclose various ways of addressing blur. For example, the patents describe modeling the
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`detected image signal (including any blur) (r) as a convolution of the real image signal (s) with a
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`transfer function (h):
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`𝑟𝑟(𝑛𝑛,𝑚𝑚)=𝑠𝑠(𝑛𝑛,𝑚𝑚)∗∗ℎ(𝑛𝑛,𝑚𝑚)
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`’484 Patent col.4 ll.12–24. Here “n” and “m” represent the coordinates in a 2-dimensional space
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`and “h(n,m) describes the way the image ‘travels’ on the recording medium while it is captured.”
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`Id. The blur is due to light from a point on the subject traveling across multiple points on the
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`recording medium during image capture, thus spreading the image beyond the accurate extent of
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`the subject. Id. at col.3 l.66 – col.4 l.3. The patents teach correcting for blur by using an inverse
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`transfer function (h-1) to extract the real image (s) from the recorded image (r). Id. at col.4 l.39 –
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`col.5 l.6. In one embodiment, the transfer function (h) is determined using motion sensors to
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`measure the motion of the imager relative to the image subject during the image capture. The
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`inverse transfer function (h-1) can be derived from the transfer function (h). Id. at col.5 l.29 – col.7
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`Case 2:19-cv-00326-JRG Document 113 Filed 10/30/20 Page 4 of 42 PageID #: 5269
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`l.65. In another embodiment, an estimated (or “blind”) transfer function is used. Id. at col.7 l.66 –
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`col.8 l.14.
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`The patents also teach preventing blur at acquisition by acquiring multiple images using a
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`“shutter speed [that] is sufficiently fast compared to the motion of the imager” relative to the
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`subject and then combining the images into a single image to increase the signal-to-noise ratio
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`(SNR). Id. at col.9 l.28 – col.10 l.13. In one embodiment, the multiple images are aligned to correct
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`for the relative motion of the camera and subject using data acquired with motion sensors on the
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`imager. Id. at col.10 ll.14–30. In another embodiment, the multiple images are aligned using
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`subject pattern recognition, a subject tracking signal, or user input to determine the position of the
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`subject in the images. Id. at col.10 ll.31–48.
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`The patents also teach repositioning the image sensor during capture according to the inverse
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`transfer function in order to compensate for the relative motion of the imager and subject. Id. at
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`col.10 l.49 – col.11 l.6. This approach “makes use of motion sensors, and detects the movement
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`of the camera and/or the subject while the image is being captured.” Id. at col.10 ll.57–60.
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`Finally, the patents teach that “where appropriate, the different embodiments of the invention
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`can be combined. For example, the superposition embodiment can be used to avoid most blur, and
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`the correcting filter using blind estimation embodiment can then be applied to correct the combined
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`image for any remaining blur.” Id. at col.11 ll.22–27.
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`The abstract of the ’484 Patent provides:
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`Signal processing techniques are applied to digital image data to remove the
`distortion caused by motion of the camera, or the movement of the subject being
`photographed, or defective optics, or optical distortion from other sources. When
`the image is captured, the effect of relative motion between the camera and the
`subject is that it transforms the true image into a blurred image according to a 2-
`dimensional transfer function. The 2-dimensional transfer function representing the
`motion is derived using blind estimation techniques or by using information from
`sensors that detect the motion. The transfer function is inverted and used to define
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`Case 2:19-cv-00326-JRG Document 113 Filed 10/30/20 Page 5 of 42 PageID #: 5270
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`a corrective filter. The filter is applied to the image and the blur due to the motion
`is removed, restoring the correct image. Another embodiment uses the transfer
`function to avoid blur by combining multiple consecutive images taken at a fast
`shutter speed.
`
`The abstracts of the ’699, ’175, and ’740 Patents provide:
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`A method and apparatus for use in a digital imaging device for correcting image
`blur in digital images by combining plurality of images. The plurality of images
`that are combined include a main subject that can be selected by user input or
`automatically by the digital imaging device. Blur correction can be performed to
`make the main subject blur-free while the rest of the image is blurred. All of the
`image may be made blur-free or the main subject can be made blur-free at the
`expense of the rest of the image. Result is a blur corrected image that is recorded in
`a memory.
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`The abstract of the ’450 Patent provides:
`
`The effect of camera shake in digital video is corrected using signal processing
`techniques. The digital video is a sequence of digital images. When the sequence
`of digital images are being captured, movement of the imaging device causes the
`images to shift on the image sensor of the imaging device and affects the quality of
`the eventual video. Movement of the imaging device is detected while the video is
`being captured, and a motion information representing the motion is recorded. A
`processor determines a correcting filter based on the motion information and user
`input. The processor modifies the sequence of images captured according to the
`correcting filter and obtains a final corrected video. Corrected video is displayed in
`a viewfinder.
`
`The abstract of the ’944 Patent provides:
`
`The effect of blur in digital images of an imaging device is corrected by displaying
`a preview image of a scene to be captured in a user interface of a device. A user
`input designates a first subject in the preview image and a plurality of images that
`include the first subject and a second subject are captured. The plurality of images
`are processed to obtain a combined image, taking into account at least one of a focal
`length of a lens of the imaging device and a zoom level of a lens of the imaging
`device, and the combined image includes the first subject and the second subject,
`the first subject in the combined image is substantially blur free, and the second
`subject in the combined image is blurred com- pared to the first image. The
`combined image is stored in a memory of the device.
`
`Claim 1 of the ’484 Patent and Claim 14 of the ’450 Patent, exemplary method and device
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`claims respectively, recite as follows (with terms in dispute emphasized):
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`Case 2:19-cv-00326-JRG Document 113 Filed 10/30/20 Page 6 of 42 PageID #: 5271
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`’484 Patent Claim 1. A method, comprising:
`capturing, at a recording medium, a plurality of sequential images, wherein the
`images are two-dimensional photographic images;
`detecting, by a processor, a main subject in each of the images in the plurality
`of images, wherein the main subject is the same in each of the images;
`shifting, by the processor, each of the images vertically and horizontally such
`that the main subject is aligned at a same location in each of the shifted
`images; and
`combining, by the processor, the shifted images to obtain a corrected image,
`wherein the corrected image is a two-dimensional photographic image,
`and
`wherein the combining includes determining, for each image point in the
`corrected image, a pixel value for the image point based on pixel values
`in the shifted images at the image point.
`
`’450 Patent Claim 14. An imaging device, comprising:
`an image sensor configured to capture a sequence of images, wherein the
`sequence of images comprise a video, and store the images in a memory;
`one or more motion sensors configured to detect motion information for one
`or more images of the sequence of images, wherein the motion information
`represents motion of the imaging device during capturing of the one or more
`images of the sequence of images, and store the motion information in the
`memory synchronously with the storing of the one or more images; and
`a processor configured to:
`determine a vertical shift value and a horizontal shift value for one or more
`images of the sequence of images based at least in part on the motion
`information;
`modify one or more images of the sequence of images based at least in
`part on the vertical and the horizontal shift values; and
`combine the modified images to obtain a final video; and
`wherein the memory is further configured to store the final video.
`
`II.
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`LEGAL PRINCIPLES
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`A.
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`Claim Construction
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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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`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) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc.,
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`381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start by
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`considering the intrinsic evidence. Id. at 1313; C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d
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`858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group, Inc., 262 F.3d
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`Case 2:19-cv-00326-JRG Document 113 Filed 10/30/20 Page 7 of 42 PageID #: 5272
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`1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the
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`specification, and the prosecution history. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at
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`861. The general rule—subject to certain specific exceptions discussed infra—is that each claim
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`term is construed according to its ordinary and accustomed meaning as understood by one of
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`ordinary skill in the art at the time of the invention in the context of the patent. Phillips, 415 F.3d
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`at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure
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`Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (“There is a heavy presumption
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`that claim terms carry their accustomed meaning in the relevant community at the relevant time.”)
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`(vacated on other grounds).
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` “The claim construction inquiry … begins and ends in all cases with the actual words of the
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`claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998). “[I]n
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`all aspects of claim construction, ‘the name of the game is the claim.’” Apple Inc. v. Motorola,
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`Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362, 1369 (Fed.
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`Cir. 1998)). First, a term’s context in the asserted claim can be instructive. Phillips, 415 F.3d at
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`1314. Other asserted or unasserted claims can also aid in determining the claim’s meaning, because
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`claim terms are typically used consistently throughout the patent. Id. Differences among the claim
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`terms can also assist in understanding a term’s meaning. Id. For example, when a dependent claim
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`adds a limitation to an independent claim, it is presumed that the independent claim does not
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`include the limitation. Id. at 1314–15.
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`“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id. (quoting
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`Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)). “[T]he
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`specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive;
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`it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics Corp. v.
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`Case 2:19-cv-00326-JRG Document 113 Filed 10/30/20 Page 8 of 42 PageID #: 5273
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`
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`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am. Corp.,
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`299 F.3d 1313, 1325 (Fed. Cir. 2002). But, “‘[a]lthough the specification may aid the court in
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`interpreting the meaning of disputed claim language, particular embodiments and examples
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`appearing in the specification will not generally be read into the claims.’” Comark Commc’ns, Inc.
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`v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced Micro-
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`Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323. “[I]t is
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`improper to read limitations from a preferred embodiment described in the specification—even if
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`it is the only embodiment—into the claims absent a clear indication in the intrinsic record that the
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`patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
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`898, 913 (Fed. Cir. 2004).
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`The prosecution history is another tool to supply the proper context for claim construction
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`because, like the specification, the prosecution history provides evidence of how the U.S. Patent
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`and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415 F.3d at 1317.
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`However, “because the prosecution history represents an ongoing negotiation between the PTO
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`and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the
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`specification and thus is less useful for claim construction purposes.” Id. at 1318; see also Athletic
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`Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996) (ambiguous prosecution
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`history may be “unhelpful as an interpretive resource”).
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`Although extrinsic evidence can also be useful, it is “‘less significant than the intrinsic record
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`in determining the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317
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`(quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a court
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`understand the underlying technology and the manner in which one skilled in the art might use
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`claim terms, but technical dictionaries and treatises may provide definitions that are too broad or
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`may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert testimony
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`may aid a court in understanding the underlying technology and determining the particular
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`meaning of a term in the pertinent field, but an expert’s conclusory, unsupported assertions as to a
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`term’s definition are not helpful to a court. Id. Extrinsic evidence is “less reliable than the patent
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`and its prosecution history in determining how to read claim terms.” Id. The Supreme Court has
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`explained the role of extrinsic evidence in claim construction:
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`In some cases, however, the district court will need to look beyond the patent’s
`intrinsic evidence and to consult extrinsic evidence in order to understand, for
`example, the background science or the meaning of a term in the relevant art during
`the relevant time period. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546 (1871)
`(a patent may be “so interspersed with technical terms and terms of art that the
`testimony of scientific witnesses is indispensable to a correct understanding of its
`meaning”). In cases where those subsidiary facts are in dispute, courts will need to
`make subsidiary factual findings about that extrinsic evidence. These are the
`“evidentiary underpinnings” of claim construction that we discussed in Markman,
`and this subsidiary factfinding must be reviewed for clear error on appeal.
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`Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 331–32 (2015).
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`B.
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`Departing from the Ordinary Meaning of a Claim Term
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`There are “only two exceptions to [the] general rule” that claim terms are construed according
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`to their plain and ordinary meaning: “1) when a patentee sets out a definition and acts as his own
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`lexicographer, or 2) when the patentee disavows the full scope of the claim term either in the
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`specification or during prosecution.”3 Golden Bridge Tech., Inc. v. Apple Inc., 758 F.3d 1362, 1365
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`(Fed. Cir. 2014) (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed.
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`Cir. 2012)); see also GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir.
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`2014) (“[T]he specification and prosecution history only compel departure from the plain meaning
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`3 Some cases have characterized other principles of claim construction as “exceptions” to the
`general rule, such as the statutory requirement that a means-plus-function term is construed to
`cover the corresponding structure disclosed in the specification. See, e.g., CCS Fitness, Inc. v.
`Brunswick Corp., 288 F.3d 1359, 1367 (Fed. Cir. 2002).
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`in two instances: lexicography and disavowal.”). The standards for finding lexicography or
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`disavowal are “exacting.” GE Lighting Solutions, 750 F.3d at 1309.
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`To act as his own lexicographer, the patentee must “clearly set forth a definition of the
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`disputed claim term,” and “clearly express an intent to define the term.” Id. (quoting Thorner, 669
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`F.3d at 1365); see also Renishaw, 158 F.3d at 1249. The patentee’s lexicography must appear
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`“with reasonable clarity, deliberateness, and precision.” Renishaw, 158 F.3d at 1249.
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`To disavow or disclaim the full scope of a claim term, the patentee’s statements in the
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`specification or prosecution history must amount to a “clear and unmistakable” surrender. Cordis
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`Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner, 669 F.3d at
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`1366 (“The patentee may demonstrate intent to deviate from the ordinary and accustomed meaning
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`of a claim term by including in the specification expressions of manifest exclusion or restriction,
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`representing a clear disavowal of claim scope.”). “Where an applicant’s statements are amenable
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`to multiple reasonable interpretations, they cannot be deemed clear and unmistakable.” 3M
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`Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013).
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`C.
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`Functional Claiming and 35 U.S.C. § 112, ¶ 6 (pre-AIA) / § 112(f) (AIA)
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`A patent claim may be expressed using functional language. See 35 U.S.C. § 112, ¶ 6;
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`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347–49 & n.3 (Fed. Cir. 2015) (en banc in
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`relevant portion). Section 112, Paragraph 6, provides that a structure may be claimed as a “means
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`… for performing a specified function” and that an act may be claimed as a “step for performing
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`a specified function.” Masco Corp. v. United States, 303 F.3d 1316, 1326 (Fed. Cir. 2002).
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`But § 112, ¶ 6 does not apply to all functional claim language. There is a rebuttable
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`presumption that § 112, ¶ 6 applies when the claim language includes “means” or “step for” terms,
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`and that it does not apply in the absence of those terms. Masco Corp., 303 F.3d at 1326;
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`Williamson, 792 F.3d at 1348. The presumption stands or falls according to whether one of
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`ordinary skill in the art would understand the claim with the functional language, in the context of
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`the entire specification, to denote sufficiently definite structure or acts for performing the function.
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`See Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1372 (Fed. Cir. 2015)
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`(§ 112, ¶ 6 does not apply when “the claim language, read in light of the specification, recites
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`sufficiently definite structure” (quotation marks omitted) (citing Williamson, 792 F.3d at 1349;
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`Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1099 (Fed. Cir. 2014))); Williamson, 792 F.3d
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`at 1349 (§ 112, ¶ 6 does not apply when “the words of the claim are understood by persons of
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`ordinary skill in the art to have sufficiently definite meaning as the name for structure”); Masco
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`Corp., 303 F.3d at 1326 (§ 112, ¶ 6 does not apply when the claim includes an “act” corresponding
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`to “how the function is performed”); Personalized Media Communications, L.L.C. v. International
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`Trade Commission, 161 F.3d 696, 704 (Fed. Cir. 1998) (§ 112, ¶ 6 does not apply when the claim
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`includes “sufficient structure, material, or acts within the claim itself to perform entirely the recited
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`function … even if the claim uses the term ‘means.’” (quotation marks and citation omitted)).
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`When it applies, § 112, ¶ 6 limits the scope of the functional term “to only the structure,
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`materials, or acts described in the specification as corresponding to the claimed function and
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`equivalents thereof.” Williamson, 792 F.3d at 1347. Construing a means-plus-function limitation
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`involves multiple steps. “The first step … is a determination of the function of the means-plus-
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`function limitation.” Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311
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`(Fed. Cir. 2001). “[T]he next step is to determine the corresponding structure disclosed in the
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`specification and equivalents thereof.” Id. A “structure disclosed in the specification is
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`‘corresponding’ structure only if the specification or prosecution history clearly links or associates
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`that structure to the function recited in the claim.” Id. The focus of the “corresponding structure”
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`inquiry is not merely whether a structure is capable of performing the recited function, but rather
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`whether the corresponding structure is “clearly linked or associated with the [recited] function.”
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`Id. The corresponding structure “must include all structure that actually performs the recited
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`function.” Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed.
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`Cir. 2005). However, § 112 does not permit “incorporation of structure from the written
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`description beyond that necessary to perform the claimed function.” Micro Chem., Inc. v. Great
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`Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999).
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`For § 112, ¶ 6 limitations implemented by a programmed general purpose computer or
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`microprocessor, the corresponding structure described in the patent specification must include an
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`algorithm for performing the function. WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339,
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`1349 (Fed. Cir. 1999). The corresponding structure is not a general purpose computer but rather
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`the special purpose computer programmed to perform the disclosed algorithm. Aristocrat Techs.
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`Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).
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`D.
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`Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA)
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`Patent claims must particularly point out and distinctly claim the subject matter regarded as
`
`the invention. 35 U.S.C. § 112, ¶ 2. A claim, when viewed in light of the intrinsic evidence, must
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`“inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus
`
`Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014). If it does not, the claim fails § 112, ¶ 2
`
`and is therefore invalid as indefinite. Id. at 901. Whether a claim is indefinite is determined from
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`the perspective of one of ordinary skill in the art as of the time the application for the patent was
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`filed. Id. at 911. As it is a challenge to the validity of a patent, the failure of any claim in suit to
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`comply with § 112 must be shown by clear and convincing evidence. BASF Corp. v. Johnson
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`Matthey Inc., 875 F.3d 1360, 1365 (Fed. Cir. 2017). “[I]ndefiniteness is a question of law and in
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`effect part of claim construction.” ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed.
`
`Cir. 2012).
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`Case 2:19-cv-00326-JRG Document 113 Filed 10/30/20 Page 13 of 42 PageID #: 5278
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`When a term of degree is used in a claim, “the court must determine whether the patent
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`provides some standard for measuring that degree.” Biosig Instruments, Inc. v. Nautilus, Inc., 783
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`F.3d 1374, 1378 (Fed. Cir. 2015) (quotation marks omitted). Likewise, when a subjective term is
`
`used in a claim, “the court must determine whether the patent’s specification supplies some
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`standard for measuring the scope of the [term].” Datamize, LLC v. Plumtree Software, Inc., 417
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`F.3d 1342, 1351 (Fed. Cir. 2005). The standard “must provide objective boundaries for those of
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`skill in the art.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014).
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`In the context of a claim governed by 35 U.S.C. § 112, ¶ 6, the claim is invalid as indefinite
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`if the claim fails to disclose adequate corresponding structure to perform the claimed function.
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`Williamson, 792 F.3d at 1351–52. The disclosure is inadequate when one of ordinary skill in the
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`art “would be unable to recognize the structure in the specification and associate it with the
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`corresponding function in the claim.” Id. at 1352.
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`III. CONSTRUCTION OF DISPUTED TERMS
`
`A.
`
`“processor … configured to …”
`
`Disputed Term4
`
`“processor [is] [further] configured to …”5
`
`•
`
`•
`•
`•
`•
`
`•
`
`’484 Patent Claims 8, 12, 13, 15, 19, 20,
`23, 24, 28, 30
`’175 Patent Claim 15, 17, 18, 23, 25, 26
`’450 Patent Claims 14, 25, 29, 31
`’699 Patent Claims 9, 24
`’740 Patent Claims 10, 12, 14, 16, 17, 20,
`21, 22, 24, 26, 27
`’944 Patent Claims 6, 7, 9, 10, 16, 17, 19,
`20
`
`Plaintiff’s Proposed
`Construction
`This claim term does
`not invoke 35 U.S.C.
`§ 112 ¶ 6. No
`construction is
`necessary, the term
`is not subject to §
`112 ¶ 6, and is not
`indefinite.
`
`Defendants’ Proposed
`Construction
`This is a means-plus-
`function term under 35
`U.S.C. 112 ¶ 6.
`
`Indefinite for lack of
`structure.
`
`
`4 The term charts in this order list claims identified in the parties’ Joint Claim Construction Chart
`Pursuant to P.R. 4-5(d) (Dkt. No. 96).
`5 Functions are recited in the Joint Claim Construction Chart Pursuant to P.R. 4-5(d) (Dkt. No. 96).
`13 / 42
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`Case 2:19-cv-00326-JRG Document 113 Filed 10/30/20 Page 14 of 42 PageID #: 5279
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`Because the parties’ arguments and proposed constructions with respect to these terms are
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`related, the Court addresses the terms together.
`
`The Parties’ Positions
`
`Plaintiff submits: The term “processor” plainly denotes structure and therefore claim
`
`recitation of a “processor … configured to” perform a function does not invoke 35 U.S.C. § 112,
`
`¶ 6. The presumption against application of § 112, ¶ 6 is further supported by other structural
`
`indicia in the claims. Specifically, the claims recite other structural components and how they
`
`interact with the processor, providing the objectives and operation of the processor terms. And
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`“processor” is consistently used in the Asserted Patents to denote structure. If the Court determines
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`that the presumption against § 112, ¶ 6 is overcome for any of these terms, Plaintiff “respectfully
`
`requests that the Court order supplemental briefing so Clear Imaging can identify where the
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`structure is disclosed in the specifications for any relevant term(s).” Dkt. No. 82 at 9–17.
`
`In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
`
`evidence to support its position: Intrinsic evidence: ’484 Patent col.11 ll.43–46; ’484 Patent File
`
`Wrapper June 8, 2011 Office Action at 2–3 (Plaintiff’s Ex. M, Dkt. No. 82-15 at 4–5); U.S. Patent
`
`No. 8,331,723 Patent File Wrapper Claims6 at claims 9–10 (Plaintiff’s Ex. L, Dkt. No. 82-14 at
`
`3). Extrinsic evidence: Jones Decl.7 ¶¶ 22–23, 25, 27–35 (Dkt. No. 82-1); U.S. Patent No.
`
`10,719,927 at col.13 ll.13–15, claim 1 (Plaintiff’s Ex. K, Dkt. No. 82-13).
`
`Defendants respond: A general-purpose processor is not sufficient structure for the functions
`
`recited in the claims and the claims do not recite the interaction between the processor and
`
`structural claim elements, so the claims do not provide the structural indicia that Plaintiff contends.
`
`
`6 Plaintiff represents this document as presenting the “original claims” of the patent. The Court is
`not able to determine this from the document itself.
`7 Declaration of Dr. Mark Jones in Support of Clear Imaging’s Opening Claim Construction Brief
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`Case 2:19-cv-00326-JRG Document 113 Filed 10/30/20 Page 15 of 42 PageID #: 5280
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`
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`Therefore, the “processor … configured to …” terms are governed by § 112, ¶ 6. Because the
`
`terms are governed by § 112, ¶ 6, the patents must disclose structure (algorithms) for performing
`
`the functions. The patents fail to disclose such structure and Plaintiff has admitted as much by
`
`failing to identify any structure in the patents for these terms. As such, the “processor … configured
`
`to …” terms render claims indefinite. Dkt. No. 91 at 27–31.
`
`In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
`
`evidence to support their position: Intrinsic evidence: ’484 Patent col.4 ll.40–41. Extrinsic
`
`evidence: Villasenor Decl. ¶¶ 24–30 (Defendants’ Ex. 91-1).
`
`Plaintiff replies: