Steven L. Caponi, BLANK ROME LLC, Wilmington, DE, Morgan Chu, Samuel K. Lu, IRELL & MANELLA LLP, Los Angeles, CA, Attorneys for Plaintiff.
Richard L. Horwitz, David E. Moore, POTTER ANDERSON & CORROON LLP, Wilmington, DE, Attorneys for Defendants Apple Inc. and AT&T Mobility LLC.
Jack B. Blumenfeld, Rodger D. Smith II, MORRIS, NICHOLS, ARSHT & TUNNELL LLP, Wilmington, DE, Attorneys for Defendants AT&T Mobility LLC and Motorola Mobility LLC.
Frederick L. Cottrell, III, RICHARDS, LAYTON & FINGER, P.A., Wilmington, DE, Attorney for Defendants Huawei Technologies Co., Ltd. and Futurewei Technologies, Inc.
John W. Shaw, David Fry, SHAW KELLER LLP, Wilmington, DE, Attorneys for Defendants HTC Corp. and HTC America, Inc.
Adam W. Poff, Monte T. Squire, YOUNG, CONAWAY, STARGATT & TAYLOR LLP, Wilmington, DE, Attorneys for Defendants Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC.
Gregory E. Stuhlman, GREENBERG TRAURIG, LLP, Wilmington, DE, Attorney for Defendants LG Electronics, Inc., LG Electronics USA, Inc., and LG Electronics Mobilecomm U.S.A., Inc.
John C. Phillips, Jr., Megan C. Haney, PHILLIPS, GOLDMAN & SPENCE, P.A., Wilmington, DE, Attorneys for Defendants Kyocera Corp. and Kyocera Wireless Corp.
Steven J. Fineman, RICHARDS, LAYTON & FINGER, P.A., Wilmington, DE, Attorney for Defendant Dell Inc.
LEONARD P. STARK, District Judge.
Pending before the Court is the issue of claim construction of various disputed terms found in U.S. Patent Nos. 7, 461, 353 (the "'353 patent") (D.I. 467 Ex. 1) and 7, 831, 926 (the "'926 patent") (D.I. 467 Ex. 2) (collectively, the "patents-in-suit").
On May 10, 2010, SoftView LLC ("Softview" or "Plaintiff') filed this patent infringement action. (D.I. 1) The defendants are Apple Inc., AT&T Mobility LLC, Dell Inc., HTC Corp., HTC America Inc., Hua Wei Technologies Co., Ltd., Futurewei Technologies, Inc., Kyocera Corp., Kyocera Wireless Corp., LG Electronics, Inc., LG Electronics USA, Inc., LG Electronics Mobilecomm U.S.A., Inc., Motorola Mobility LLC, Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC, and Sony Ericsson Mobile Communications (USA) Inc. (collectively, "Defendants"). The patents-in-suit relate to a system and method for allowing web pages to be rendered, zoomed, and panned in a web browser.
The parties completed briefing on claim construction on October 22, 2012. (D.I. 478, 479, 499, 500) The Court held a Markman hearing on January 10, 2013 R. (D.I. 675) (hereinafter "Tr.")
II. LEGAL STANDARDS
"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 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. 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).
III. CONSTRUCTION OF DISPUTED TERMS
1. "scalable content"
a. Plaintiff's Proposed Construction: "content capable of being rendered at multiple zoom levels."
b. Defendants' Proposed Construction: "data in a format generated after pre-rendering that provides the layout, functionality, and design of the web page at multiple user-selected scale resolutions."
"Pre-rendering": "the process of blocks 150-154 of Figure 5 ( see '353 15:43-17:41)."
c. Court's Construction: "content capable of being rendered at multiple zoom levels."
Plaintiff argues that Defendants' construction improperly limits the term by importing three limitations: the data used (1) is generated after pre-rendering; (2) provides the layout, functionality, and design; and (3) is scaled to user-selected resolutions.
The Court finds no basis for incorporating the pre-rendering process limitation, which is "a commonly performed" process in the prior art. ('353 patent col. 17 ll. 31-34; Tr. at 59) Similarly, the Court finds no reason to incorporate "the layout, functionality, and design of the web page" limitation, as this language is already contained in the independent claims containing the term scalable content. ( See, e.g., '353 patent col. 22 ll. 36-40; col. 25 ll. 48-57; col. 29 ll. 1-9; col. 32 ll. 9-11, 38-41; col. 35 ll. 13-20; col. 39 ll. 33-35; col. 40 ll. 7-10; col. 43 ll. 29-35; col. 48 ll. 27-30)
Turning to the third dispute, the parties agree on the existence of multiple zoom levels/user-selected scale resolutions. (D.I. 499 at 4 n.3; D.I. 500 at 7) The term "scalable" is used throughout the specification as "zoomed." ( See, e.g., '353 patent col. 2 ll. 24-25; col. 4, ll. 5) Furthermore, in the inter partes reexamination, scaled and zoomed are used interchangeably. (D.I. 478 Ex. Fat FH_DEF000018) Though the specification also supports Defendants' construction by suggesting that content can be altered at "various user-selectable scaled resolutions" ('353 patent col. 9 ll. 8-10), claim 2 - which depends from claim 1- specifically claims "user-selectable" content. The Court is not persuaded it should read a "user-selectable" limitation into "scalable content."
a. Plaintiff's Proposed Construction: "capable of being rendered at multiple zoom levels/rendering at multiple zoom levels/rendered at multiple zoom levels."
b. Defendants' Proposed Construction: "scaling"/"scaled": these terms have a plain and ordinary meaning and do not need to be construed.
However, if the Court chooses to construe these terms, the following constructions should be used:
"scaling": "setting to a user-selected resolution."
"scaled": "set to a user-selected resolution."
"scalable": "defined in the context of scalable content' and scalable vector-based content.'"
c. Court's Construction: "capable of being rendered at multiple zoom levels/rendering at multiple zoom levels/rendered at multiple zoom levels."
The dispute over these terms is essentially the same dispute that the Court resolved with respect to the prior term. Again, the Court adopts Plaintiff's proposal.
a. Plaintiff's Proposed Construction: this term has a plain and ordinary meaning and does not need to be construed.
However, if the Court chooses to construe this term, the following construction should be used:
b. Defendants' Proposed Construction: "converting the format of."
c. Court's Construction: "converting."
The Court concludes that the term does not require the additional language - "the format of' - proposed by Defendants. The claim language states that "the HTML-based Web content from its original format" is translated into "scalable content." ('353 patent col. 22 ll. 34-36) As the surrounding claim language makes clear that the original format is translated into scalable content, the language "the format of' is unnecessary.
4. "processing [the] HTML-based Web content to produce scalable content"
a. Plaintiff's Proposed Construction: "processing [the] HTML-based Web content to produce content capable of being zoomed in or out."
b. Defendants' Proposed Construction: "converting [the] Web content from its HTML format to a scalable content format."
c. Court's Construction: "converting [the] Web content from HTML to a scalable content."
The Court declines to adopt Defendants' use of "format" in this claim term. The Court further concludes that "processing... to produce, " is used interchangeably with "translating." ( Compare '353 patent col. 22 ll. 34-36 ("translating... the HTML-based Web content... into scalable content"), with id. at col. 25 ll. 46-47 ("processing HTML-based Web content to produce scalable content")) ...