Case: 20-1191 Document: 26 Page: 1 Filed: 02/21/2020
`
`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`IRONWORKS PATENTS LLC,
`Plaintiff-Appellant
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
`ELECTRONICS AMERICA, INC.,
`Defendants-Appellees
`______________________
`
`2020-1191
`______________________
`
`Appeal from the United States District Court for the
`Northern District of California in No. 4:17-cv-01958-HSG,
`Judge Haywood S. Gilliam, Jr.
`______________________
`
`Decided: February 21, 2020
`______________________
`
`ALISON AUBREY RICHARDS, Global IP Law Group, Chi-
`cago, IL, argued for plaintiff-appellant. Also represented
`by DAVID P. BERTEN, C. GRAHAM GERST, HANNAH L.
`SADLER.
`
` ALLAN SOOBERT, Paul Hastings LLP, Washington, DC,
`argued for defendants-appellees. Also represented by
`STEPHEN BLAKE KINNAIRD; ELIZABETH BRANN, San Diego,
`CA.
`
`

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`Case: 20-1191 Document: 26 Page: 2 Filed: 02/21/2020
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`2
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`IRONWORKS PATENTS LLC v. SAMSUNG ELECS. CO., LTD.
`
` ______________________
`
`Before LOURIE, DYK, and MOORE, Circuit Judges.
`MOORE, Circuit Judge.
`MobileMedia Ideas, LLC sued Samsung Electronics
`Co., Ltd. and Samsung Electronics America, Inc. (collec-
`tively, Samsung), alleging infringement of the claims of
`U.S. Patent No. 6,427,078 and U.S. Patent No. 5,915,239.1
`In March 2017, MobileMedia assigned the patents-in-suit
`to Ironworks, which was then substituted as plaintiff in
`July 2017. In October 2018, the district court issued a
`claim construction order, construing claim terms of both
`the ’078 patent and ’239 patent. Following the claim con-
`struction order, the parties stipulated to noninfringement
`of the claims of the ’078 patent and to noninfringement and
`invalidity of the claims of the ’239 patent. The district
`court entered judgment based on its claim construction or-
`der and the parties’ stipulation. Ironworks appeals the
`
`1 MobileMedia also asserted infringement of the
`claims of U.S. Patent No. 5,553,125. Samsung filed coun-
`terclaims alleging noninfringement and invalidity of the
`asserted claims of the ’125 patent. The district court dis-
`missed with prejudice the claim of infringement of the as-
`serted claims of the ’125 patent. Order Granting Motion to
`Dismiss Claim Regarding ’125 Patent, Ironworks Patents
`LLC v. Samsung Electronics Co., Ltd., et al., No. 4:17-cv-
`01958-HSG (N.D. Cal. Nov. 16, 2017), ECF No. 140. It
`later dismissed without prejudice Samsung’s counter-
`claims of noninfringement and invalidity of the asserted
`claims of the ’125 patent. Order of Final Decision, Iron-
`works Patents LLC v. Samsung Electronics Co., Ltd., et al.,
`No. 4:17-cv-01958-HSG (N.D. Cal. Nov. 22, 2019), ECF No.
`178. The district court also dismissed without prejudice
`Samsung’s counterclaim for invalidity of the asserted
`claims of the ’078 patent. Id.
`
`

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`Case: 20-1191 Document: 26 Page: 3 Filed: 02/21/2020
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`IRONWORKS PATENTS LLC v. SAMSUNG ELECS. CO., LTD.
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`3
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`district court’s judgment, arguing that the district court’s
`claim constructions were erroneous. We have jurisdiction
`under 28 U.S.C. § 1295(a)(1).
`For the reasons discussed below, we vacate and remand
`the district court’s judgment of noninfringement of the as-
`serted claims of the ’078 patent because the district court
`erred in its construction of the term “camera unit.” We also
`vacate and remand the judgment of invalidity of the as-
`serted claims of the ’239 patent because the district court
`erred in its construction of the term “means for interpret-
`ing the received voice commands.” Finally, we affirm the
`judgment of noninfringement of the asserted claims of the
`’239 patent because the district court did not err in its con-
`struction of the term “means for storing the sub-identifi-
`ers.”
`
`I. THE ’078 PATENT
`Ironworks asserted infringement of claims 1–3, 6, 18,
`36, 38, 42, 46, 73, and 77 of the ’078 patent. All three as-
`serted independent claims—claims 1, 36, and 73— require
`a “camera unit.” The district court construed “camera unit”
`as “camera arrangement comprising a camera, optics, mi-
`croprocessor and memory, battery, and interface to exter-
`nal systems constituting an individual component of a
`whole personal communication device or whole portable
`mobile cellular phone.” J.A. 40. Based on the district
`court’s construction of “camera unit,” the parties stipulated
`to noninfringement of the asserted claims of the ’078 pa-
`tent. The district court entered final judgment of nonin-
`fringement of those claims. Ironworks appeals from that
`decision, arguing that the district court erroneously con-
`strued the term “camera unit.”
`We review a district court’s claim construction de novo
`except for underlying fact findings related to extrinsic evi-
`dence, which we review for clear error. Teva Pharm. USA,
`Inc. v. Sandoz, Inc., 135 S. Ct. 831, 835 (2015). “The words
`of a claim are generally given their ordinary and customary
`
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`IRONWORKS PATENTS LLC v. SAMSUNG ELECS. CO., LTD.
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`meaning as understood by a person of ordinary skill in the
`art when read in the context of the specification and pros-
`ecution history.” Thorner v. Sony Comput. Entm’t Am.
`LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). We hold that
`the district court erred in its construction of “camera unit.”
`The ’078 patent is directed to a device for personal com-
`munication, data collection and data processing. ’078 pa-
`tent at 1:10–12. The device is a “small-sized, portable and
`hand-held work station,” such as a notebook computer, that
`includes a data processing unit, a display, a user interface,
`at least one memory unit, a power source, and application
`software. ’078 patent at Abstract; see also id. at 1:12–17.
`In some embodiments, the device also includes a camera
`unit, which may be placed into the housing of the device or
`fitted on a PCMCIA card, e.g., an insertable camera card.
`Id.
`The three independent claims in which the term “cam-
`era unit” appears differ in the elements the “camera unit”
`comprises. Claim 1 recites:
`1. A portable cellular mobile phone for personal
`communication, data collection and data pro-
`cessing, which is a small-sized, portable and hand-
`held work station including a housing and compris-
`ing
`a data processing unit comprising a microproces-
`sor,
`a display,
`a user interface,
`a number of peripheral device interfaces,
`at least one memory unit;
`a power source, and
`application software,
`
`

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`IRONWORKS PATENTS LLC v. SAMSUNG ELECS. CO., LTD.
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`wherein the device also comprises:
`a camera unit for obtaining and outputting image
`information comprising:
`a camera for receiving image information;
`optics connected to said camera for passing said im-
`age information to the camera;
`means for processing and for storing at least a por-
`tion of said image information obtained by said
`camera unit for later recall and processing;
`at least one memory unit for storing said image in-
`formation; and
`an output coupled to said data processing unit for
`outputting image information from said memory
`unit to the processing unit; and
`wherein at least a portion of said camera unit is lo-
`cated within said housing, and said data processing
`unit processes image information output by said
`camera unit,
`wherein said display presents image information
`obtained by said camera unit, and
`wherein said device further comprises means for
`transmitting image information processed by said
`processing unit to another location using a radio
`frequency channel.
`(emphasis added). Claim 36 recites:
`36. A portable notebook computer having a hous-
`ing, comprising:
`a camera unit for recording an image of a selected
`object, and having at least one memory unit for
`storing an image recorded by said camera unit;
`
`

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`IRONWORKS PATENTS LLC v. SAMSUNG ELECS. CO., LTD.
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`means, coupled to said camera unit, for processing
`an image recorded by said camera unit, and
`means for transmitting an image processed by said
`processing means to another location using a radio
`frequency channel;
`wherein at least a portion of said camera unit is in-
`tegrated in one of said housing of said notebook
`computer and a circuit card.
`(emphasis added). Claim 73 recites:
`73. A portable cellular mobile phone comprising:
`a built in camera unit for obtaining image infor-
`mation;
`a user interface for enabling a user to input signals
`to operate the camera unit;
`a display for presenting image information ob-
`tained by the camera unit;
`a microprocessor adapted to control the operations
`of the camera unit in response to input signals from
`the user interface, and to process image infor-
`mation received by the camera unit; and
`means, coupled to said microprocessor, for trans-
`mitting image information processed by said micro-
`processor to another
`location using a radio
`frequency channel;
`and wherein the camera unit comprises:
`optics for obtaining image information;
`an image sensor for obtaining image information;
`and
`means for processing and for storing at least a por-
`tion of the image information obtained by the cam-
`era unit for later recall and processing.
`
`

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`IRONWORKS PATENTS LLC v. SAMSUNG ELECS. CO., LTD.
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`(emphasis added).
`We hold that the proper construction of “camera unit”
`requires that the camera unit include a “camera, optics,
`and an image processing unit.” Each of the asserted inde-
`pendent claims recites a camera unit, but each describes
`the camera unit differently. For example, claim 1 describes
`that a camera unit comprises a camera, optics, means for
`processing and for storing, at least one memory unit, and
`an output. Claim 36 describes a camera unit as “having at
`least one memory unit.” And claim 73 describes that the
`camera unit comprises optics, an image sensor, and means
`for processing and storing. Because the claims recite dif-
`fering components of a camera unit, we turn to the specifi-
`cation for context.
` The specification confirms that a “camera unit” is a
`camera, optics, and an image processing unit. The specifi-
`cation consistently refers to camera unit 14 which includes
`camera arrangement 14o (comprising camera 14a and op-
`tics 14b) and image processing unit 14c (which comprises
`microprocessor 23 and memory units 24). See, e.g., ’078 pa-
`tent at 3:14–18, 3:22–26, 5:23–25. For example, the speci-
`fication describes “[c]amera unit 14, which is represented
`in the form of a block diagram in FIG. 5, consists of camera
`arrangement 14[o] which comprises camera 14a provided
`with suitable optics 14b, and image processing unit 14c
`connected to the camera arrangement.” ’078 patent at
`3:14–18. That is consistent with the specification’s other
`teachings that camera unit 14 is comprised of camera 14a,
`optics 14b, and image processing unit 14c. ’078 patent at
`4:25–29, 3:22–26. And throughout the specification, the
`camera unit and its components are identified using a
`numbering convention that associates those components
`with the number 14. The specification refers to “camera
`unit 14” and its components as “camera 14a,” “optics 14b,”
`and “image processing unit 14c.”
`
`

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`IRONWORKS PATENTS LLC v. SAMSUNG ELECS. CO., LTD.
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`Samsung argues that the district court correctly held
`that the camera unit also requires a battery and an inter-
`face. This argument is premised upon a single sentence in
`the specification that states, “the structure of both camera
`card 15 and camera unit 14 conforms to the block diagram
`shown in Fig. 5.” According to Samsung, everything in Fig-
`ure 5 must therefore be included in the construction of cam-
`era unit. We do not agree. Figure 5 uses the same
`numbering convention as the rest of the specification, sug-
`gesting camera unit 14 is comprised of elements numbered
`as 14 (i.e., camera arrangement 14o, which comprises cam-
`era 14a and optics 14b, and image processing unit 14c). See
`’078 patent at 4:25–29. Other elements in Figure 5 are
`numbered differently, such as battery 21 and interface 22,
`suggesting they are not part of the camera unit 14. See id.
`In fact, the description concerning Figure 5 explains that
`“camera card 15” (as opposed to “camera unit 14”) includes
`battery 21 and interface 22. Id. at 4:25–29. On the other
`hand, a camera unit as expressly defined in the specifica-
`tion includes a camera, optics, and an image processing
`unit. Id. at 3:14–18.
`The specification demonstrates that the battery and in-
`terface are not necessary components of the camera unit
`itself. It describes two separate embodiments involving the
`camera unit: one in which the described camera unit is
`fixed on an insertable camera card separate from the per-
`sonal communication device, and another where the cam-
`era unit is integrated with the device.
`In the first embodiment, “the camera unit (14) is fitted
`on a PCMCIA card (15) which can be connected to the
`PCMCIA card slot (16) of the device.” ’078 patent at Ab-
`stract; see also id. at 3:22–29, 4:25–29. The PCMCIA card
`is an insertable, portable card that is connectable and de-
`tachable from the mobile device itself. See id. at 4:2–8. The
`specification describes that, in this embodiment, “[b]attery
`21 is mainly used to ensure that images are maintained in
`the volatile memory units if the PCMCIA card is detached
`
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`Case: 20-1191 Document: 26 Page: 9 Filed: 02/21/2020
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`IRONWORKS PATENTS LLC v. SAMSUNG ELECS. CO., LTD.
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`from the card slot.” ’078 patent at 4:43–45. In that embod-
`iment, the battery is a necessary component of the
`PCMCIA card on which the camera unit is fitted because it
`is necessary to ensure that images are not lost when the
`camera card is detached from the personal communication
`device. That embodiment further explains that “image in-
`formation [from the camera card] is transmitted to proces-
`sor 4 of the mobile organizer along PCMCIA interface 22 or
`a corresponding interface.” Id. at 4:59–61. It is the inter-
`face which enables communication of information on the
`card to the mobile device. However, the fact that the inter-
`face may be necessary for operation of the card does not
`necessitate that it be part of the construction for the cam-
`era unit.
`In the second embodiment, the camera unit is “placed
`in the housing” or “integrated” with the device. ’078 patent
`at Abstract; 3:6–21; 4:48–51. In this embodiment, because
`the camera unit is integrated in the housing and not re-
`movable, there is not the same technical need for the bat-
`tery or the interface. The specification makes clear that
`the battery is not a required component of such a camera
`unit, which is integrated in the housing that includes its
`own power source. The specification does, however, allow
`for the option of a battery in this embodiment: “[b]attery
`21 can be also used for the same purpose [i.e., to ensure
`that images are maintained in the volatile memory units]
`in camera unit 14.” ’078 patent at 4:46–47 (emphasis
`added). Likewise, this second embodiment with a perma-
`nently installed, non-portable camera unit does not need a
`PCMCIA interface. The camera unit is directly integrated
`into the mobile device. See id. at 3:12–13 (“[c]amera unit
`14 is connected via input/output controller 5 to data pro-
`cessing unit 2”).
`The camera unit 14 as consistently defined throughout
`the specification consists of a camera, optics, and an image
`processing unit. Given the consistent usage in the specifi-
`cation and the technical differences between the two
`
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`IRONWORKS PATENTS LLC v. SAMSUNG ELECS. CO., LTD.
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`embodiments disclosed, camera unit should not be con-
`strued so as to require a battery and interface. Because the
`district court erred in its construction of the term “camera
`unit,” and that construction was the basis for the parties’
`stipulation of noninfringement of the ’078 patent, we va-
`cate and remand the district court’s judgment of nonin-
`fringement of the asserted claims of the ’078 patent.
`II. THE ’239 PATENT
`Ironworks asserted infringement of claims 4, 10, 18,
`and 27 of the ’239 patent. The district court issued a claim
`construction order construing various terms of the ’239 pa-
`tent. The parties stipulated to entry of judgment of nonin-
`fringement and invalidity of the asserted claims of the ’239
`patent based on the district court’s claim construction.
`The ’239 patent relates to a method that allows a user
`to make phone calls using voice commands by selecting, in
`response to a spoken voice command, a telephone number
`stored with an “identifier” in audio form, such as a person’s
`name. See, e.g., ’239 patent at 1:5–15, 4:19–37. Ironworks
`asserted infringement of claims 4, 10, 18, and 27 of the ’239
`patent. Claims 4 and 10 are the only asserted independent
`claims. Claim 4 recites:
`4. A voice controlled device comprising:
`means for storing the telephone numbers to be se-
`lected,
`means for storing at least one identifier for each
`telephone number to be selected,
`means for receiving an identifier given in a voice
`form,
`means for interpreting the received voice com-
`mands,
`means for selecting a telephone number in re-
`sponse to a voice command,
`
`

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`wherein the identifier comprises a plurality of sub-
`identifiers, and the voice controlled device com-
`prises means for storing the sub-identifiers, and
`means for selecting a telephone number in re-
`sponse to a voice command comprising at least two
`of the plurality of sub-identifiers including the sub-
`identifier.
`(emphases added). Claim 10 recites:
`10. A voice controlled device comprising:
`means for storing telephone numbers to be se-
`lected,
`means for storing at least one identifier for each
`telephone number to be selected,
`means for receiving an identifier given in a voice
`form,
`means for interpreting received voice commands,
`means for selecting a telephone number in re-
`sponse to a voice command,
`wherein the identifier comprises several sub-iden-
`tifiers, and the voice controlled device comprises
`means for storing the sub-identifiers, and
`means for selecting a telephone number in re-
`sponse to a voice command comprising a combina-
`tion of several sub-identifiers.
`(emphases added).
`
`

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`IRONWORKS PATENTS LLC v. SAMSUNG ELECS. CO., LTD.
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`1. “means for interpreting the received voice commands”
`The district court construed the term “means for inter-
`preting the received voice commands”2 as a means-plus-
`function term having the function of “interpreting the re-
`ceived voice commands” and lacking corresponding struc-
`ture in the specification, resulting in the term being
`indefinite under § 112. J.A. 56–60, 64. Based on the court’s
`holding that the term was indefinite under § 112, the par-
`ties stipulated that the asserted claims of the ’239 patent
`were invalid. J.A. 3450–51.
`Ironworks argues that the district court erred to the
`extent that it held that “means for interpreting the re-
`ceived voice commands” lacks definite corresponding struc-
`ture in the specification. Ironworks argues the ’239 patent
`discloses that the voice-control unit, including its subcom-
`ponents and associated programming, is the structure that
`interprets received voice commands. And Ironworks ar-
`gues that the specification expressly discloses an algorithm
`for operation of the voice-control unit. We agree. The spec-
`ification states that, “voice-control unit 2 comprises advan-
`tageously a voice-recognition means 3, a voice pattern
`memory 4, a controller unit 5, read-only memory 6, random
`access memory 7, speech synthesizer 8 and a interface 9.”
`’239 patent at 3:26–30. It further discloses structure for
`the voice-control unit by describing the algorithm per-
`formed by the voice-control unit and its components. Id. at
`5:9–25. The district court recognized that “column 5:9–25
`could set forth a sufficiently specific step-by-step procedure
`for the operation of the voice-control unit.” J.A. 58. The
`specification includes sufficient structure for the voice-
`
`2 Claims 4 and 10 of the ’239 patent recite a “means
`for interpreting the received voice commands” and “means
`for interpreting voice commands,” respectively. As used in
`this opinion the term “means for interpreting the received
`voice commands” refers to both terms.
`
`

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`control unit of which the voice-recognition means is a com-
`ponent. ’239 patent at 3:26–30 (“voice-control unit 2 com-
`prises advantageously a voice-recognition means 3”
`(emphasis added)).
`Samsung recognizes that the “voice recognition means
`3” is a component of the larger “voice-control unit 2” and
`admits column 5:9–25 could set forth a sufficiently specific
`algorithm for the operation of the voice-control unit. But
`Samsung argues the district court correctly concluded that
`Ironworks’ statement in its claim construction reply brief
`that, “the proposed structure is not limited to the ‘voice-
`control unit’” forecloses reliance on an algorithm associated
`with the voice-control unit 2. J.A. 58 (citing J.A. 3437).
`Samsung also argues that the district court’s construction
`of the separate “means for selecting” terms relies on por-
`tions of the specification that overlap with Ironworks’ pro-
`posed construction here, and the specification does not
`support a construction in which the same structures sup-
`port both functions.
`Not only did Ironworks not disclaim an argument that
`column 5 provides an algorithm based on the relationship
`between voice recognition means 3 and voice-control unit
`2, the fact that the algorithm overlaps with the undisputed
`algorithm associated with other terms is not unexpected.
`Indeed, an algorithm can support more than one function.
`See Oral Arg. at 13:37–50 (Judge: Isn’t it the case in elec-
`trical systems that the same software can perform multiple
`functions? Doesn’t it happen . . . all the time? A: Yes.
`Judge: Can’t the same algorithm achieve two different
`parts? A: Yes. Judge: Isn’t that a pretty regular occur-
`rence? A: Yes, Your Honor.). Because the algorithm is suf-
`ficiently disclosed in the specification itself, and voice
`recognition means 3 is included within the voice-control
`unit 2, we hold the appropriate structure is “voice-control
`unit implementing the algorithm at Figure 3, col. 5:9–25,
`or col. 6:1–57.”
`
`

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`IRONWORKS PATENTS LLC v. SAMSUNG ELECS. CO., LTD.
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`Because we conclude that the district court erred in
`holding that the term “means for interpreting the received
`voice commands” was indefinite, we vacate and remand the
`judgment of invalidity of the ’239 patent.
`2. “means for storing the sub-identifiers”
`The district court construed the term “means for stor-
`ing sub-identifiers” as having the function of “storing sub-
`identifiers” and the structure of “voice pattern and voice-
`equivalent memory, and the control circuitry and program-
`ming for storing sub-identifiers in memory executing the
`algorithms disclosed in columns 4:19–54 [of the ’239 pa-
`tent’s specification].” J.A. 64. Under that construction, the
`parties stipulated to noninfringement of the claims of the
`’239 patent. J.A. 3451.
`Ironworks argues that the district court erred in its re-
`quirement that the specification disclose an algorithm.
`Ironworks contends that this term falls within the excep-
`tion set forth in In re Katz Interactive Call Processing Pa-
`tent Litigation that a specification need not disclose
`algorithmic structure for a computer-implemented means-
`plus-function claim when the function “can be achieved by
`any general purpose computer without special program-
`ming.” 639 F.3d 1303, 1316 (Fed. Cir. 2011).
`We do not agree. Katz “identified a narrow exception
`to the requirement that an algorithm must be disclosed for
`a general-purpose computer to satisfy the disclosure re-
`quirement.” Ergo Licensing, LLC v. CareFusion 303, Inc.,
`673 F.3d 1361, 1364–65 (Fed. Cir. 2012). “It is only in the
`rare circumstances where any general-purpose computer
`without any special programming can perform the function
`that an algorithm need not be disclosed.” Id.; see also EON
`Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d
`616, 621–22 (Fed. Cir. 2015) (“a microprocessor can serve
`as structure for a computer-implemented function only
`where the claimed function is ‘coextensive’ with a micro-
`processor itself”). The function of storing sub-identifiers
`
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`IRONWORKS PATENTS LLC v. SAMSUNG ELECS. CO., LTD.
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`“requires more than merely plugging in a general-purpose
`computer.” Ergo Licensing, 673 F.3d at 1365. The specifi-
`cation describes that storing the identifier (which is com-
`prised of a plurality of sub-identifiers) requires that the
`voice-control unit be set into a particular function mode,
`then perform several intervening steps, after which each
`sub-identifier is stored into the voice-equivalent memory.
`’239 patent at Figure 2, 4:19–54. We see no error in the
`district court’s construction and likewise agree that the
`Katz exception does not apply. Accordingly, we affirm the
`district court’s judgment of noninfringement of the ’239 pa-
`tent’s claims.
`Ironworks contends that “all equivalents thereof”
`should be added to the district court’s constructions of
`“means for storing the sub-identifiers” and “means for se-
`lecting a telephone number . . . .” Samsung appears to
`agree that the district court’s constructions include “equiv-
`alents.”
`
`CONCLUSION
`For the foregoing reasons, we vacate and remand the
`judgment of noninfringement of the claims of the ’078 pa-
`tent because it depends on the district court’s erroneous
`construction of the term “camera unit.” We further vacate
`and remand the judgment of invalidity of the claims of the
`’239 patent because the district court erroneously con-
`strued “means for interpreting the received voice com-
`mands” as not having a definite structure. We affirm the
`judgment of noninfringement of the claims of the ’239 pa-
`tent because the district court correctly construed the term
`“means for storing the sub-identifiers.” We have consid-
`ered the appellants remaining arguments and conclude
`they are without merit.
`AFFIRMED-IN-PART, VACATED-IN-PART, AND
`REMANDED
`
`

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`Case: 20-1191 Document: 26 Page: 16 Filed: 02/21/2020
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`16
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`IRONWORKS PATENTS LLC v. SAMSUNG ELECS. CO., LTD.
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`COSTS
`The parties shall bear their own costs.
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