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Monec Holding Ag v. Motorola Mobility, Inc.

United States District Court, Third Circuit

June 11, 2013

MONEC HOLDING AG, Plaintiffs,
v.
MOTOROLA MOBILITY, INC., SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG ELECTRONICS, INC., HTC CORP., HTC AMERICA, INC. and EXEDA, INC., Defendants.

REPORT AND RECOMMENDATION

SHERRY R. FALLON, District Judge.

I. INTRODUCTION

On September 9, 2011, plaintiff Monec Holding AG ("plaintiff' or "Monec") filed suit against defendants Motorola Mobility LLC, Samsung Electronics America, Inc., Samsung Electronics Inc., [1] HTC Corp., HTC America Inc., Exeda Inc., and Samsung Electronics Co., Ltd. (collectively, "defendants"), alleging infringement of U.S. Patent No. 6, 335, 678 B1, as reexamined[2] ("the '678 patent"), entitled "Electronic Device, Preferably An Electronic Book." (DJ. 1)

The court held a Markman hearing on April 30, 2013. This order sets forth the court's recommendations of constructions for disputed claim terms discussed in the briefing and at the Markman hearing.

II. BACKGROUND OF THE INVENTION

The '678 patent is assigned to Monec and lists Theodor Heutschi as the inventor. The 678 patent originally issued on January 1, 2002 with thirteen claims. On November 11, 2009, non-party Apple Inc. ("Apple") filed a request for ex parte reexamination as to all claims. Following ex parte reexamination, the United States Patent and Trademark Office ("PTO") issued a reexamination certificate on May 10, 2011, modifying the language of claim 1 and adding new claims 14-28.

The '678 patent describes a touch-screen electronic reading device that can exchange information with at least one other device via a multiband station. (678 patent, col. 5:65-6:10) The specification states that the electronic device has "a very light and easily portable construction, can be used very universally and at the same time has a relatively large display." (678 patent, col. 1:43-46) The '678 patent allows for interne access, email retrieval, video conferencing, navigation, downloads, and book procurement. ( Id., col. 2:35-42) The specification describes the components of the electronic book to include "a housing, a display, an electronic circuit, a memory, a receiver for data from the system, input means and a power source, which can be charged for example by means of solar cells or thermo-electric generators." ( Id at col. 2:13-17)

On March 23, 2009, Monec sued Apple for infringement of the '678 patent in the Eastern District of Virginia. On July 17, 2009, the court held oral argument and granted summary judgment of non-infringement as to all claims, holding that the accused iPhone devices did not infringe the '678 patent because they included a display that was too small to show one page of a book at a normal size. (D.I. 127, Ex. B, Ex. F at 19:2-22, 7:9-8:3) The court denied Monec's motion for reconsideration, and Monec appealed the summary judgment ruling to the Federal Circuit. (D.I. 139, Ex. C at 3:17-19) The parties settled shortly thereafter, including a provision in the dismissal order to vacate the court's summary judgment order. (D.I. 127, Ex. D)

III. LEGAL STANDARD

"It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude." Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (internal quotation marks omitted). Construing the claims of a patent presents a question of law. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-78 (Fed. Cir. 1995), aff'd, 517 U.S. 370 , 388-90 (1996). "[T]here is no magic formula or catechism for conducting claim construction." Phillips, 415 F.3d at 1324. Instead, the court is free to attach the appropriate weight to appropriate sources "in light of the statutes and policies that inform patent law." Id.

"[T]he words of a claim are generally given their ordinary and customary meaning... [which is] the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." Id. at 1312-13 (internal citations and quotation marks omitted). "[T]he ordinary meaning of a claim term is its meaning to the ordinary artisan after reading the entire patent." Id. at 1321 (internal quotation marks omitted). The patent specification "is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).

While "the claims themselves provide substantial guidance as to the meaning of particular claim terms, " the context of the surrounding words of the claim also must be considered. Phillips, 415 F.3d at 1314. Furthermore, "[o]ther claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment... [b]ecause claim terms are normally used consistently throughout the patent...." Id. (internal citation omitted).

It is likewise true that "[d]ifferences among claims can also be a useful guide... For example, the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim." Id at 1314-15 (internal citation omitted). This "presumption is especially strong when the limitation in dispute is the only meaningful difference between an independent and dependent claim, and one party is urging that the limitation in the dependent claim should be read into the independent claim." SunRace Roots Enter. Co., Ltd. v. SRAM Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003).

It is also possible that "the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor's lexicography governs." Phillips, 415 F.3d at 1316. It bears emphasis that "[e]ven when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction." Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (internal quotation marks omitted), aff'd, 481 F.3d 1371 (Fed. Cir. 2007).

In addition to the specification, a court "should also consider the patent's prosecution history, if it is in evidence." Markman, 52 F.3d at 980. The prosecution history, which is "intrinsic evidence, " "consists of the complete record of the proceedings before the PTO [Patent and Trademark Office] and includes the prior art cited during the examination of the patent." Phillips, 415 F.3d at 1317. "[T]he prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Id.

A court also may rely on "extrinsic evidence, " which "consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Markman, 52 F.3d at 980. For instance, technical dictionaries can assist the court in determining the meaning of a term to those of skill in the relevant art because such dictionaries "endeavor to collect the accepted meanings of terms used in various fields of science and technology." Phillips, 415 F.3d at 1318. In addition, expert testimony can be useful "to ensure that the court's understanding of the technical aspects of the patent is consistent with that of a person of ordinary skill in the art, or to establish that a particular term in the patent or the prior art has a particular meaning in the pertinent field." Id. Nonetheless, courts must not lose sight of the fact that "expert reports and testimony [are] generated at the time of and for the purpose of litigation and thus can suffer from bias that is not present in intrinsic evidence." Id. ("[C]onclusory, unsupported assertions by experts as to the definition of a claim term are not useful to a court.") Overall, while extrinsic evidence "may be useful" to the court, it is "less reliable" than intrinsic evidence, and its consideration "is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence." Id. at 1318-19.

Finally, "[t]he construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction." Renishaw PLC v. Marposs Societa' Per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows that "a claim interpretation that would exclude the inventor's device is rarely the correct interpretation." Osram GmbH v. Int'l Trade Comm'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007).

IV. CONSTRUCTION OF DISPUTED TERMS

A. "said display has dimensions such that one page of a book can be displayed at a normal ...

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