United States District Court, D. Delaware
Rodger D. Smith, II, Esq., Morris, Nichols, Arsht & Tunnell LLP, Wilmington, DE; Theodore Stevenson, III, Esq. (argued), McKool Smith, P.C., Dallas, TX; John Shumaker, Esq., McKool Smith, P.C., Austin, TX, attorneys for Plaintiff.
Mary Matterer, Esq., Morris James LLP, Wilmington, DE; Y. Ernest Hsin, Esq. (argued), Gibson, Dunn & Crutcher, Palo Alto, CA; Stuart M. Rosenberg, Esq., Gibson, Dunn & Crutcher, Palo Alto, CA, attorneys for Defendant Apple Inc.
David E. Moore, Esq., Potter, Anderson & Corroon LLP, Wilmington, DE; Morgan Chu, Esq. (argued), Irell & Manella LLP, Los Angeles, CA; Alan J. Heinrich, Esq., Irell & Manella LLP, Los Angeles, CA, attorneys for Defendants Research in Motion Ltd. and Research in Motion Corp.
RICHARD G. ANDREWS, District Judge.
Pending before this Court is the issue of claim construction of three disputed terms found in U.S. Patent No. 6, 405, 037, U.S. Patent No. 6, 430, 409, and U.S. Patent No. 6, 625, 447.
On August 31, 2011, Openwave Systems, Inc, now known as Unwired Planet ("Plaintiff'), filed a patent infringement action (No. 11-765 D.I. 1) against Apple Inc., Research in Motion Ltd., and Research in Motion Corp. ("Defendants"). The Court has considered the Parties' Claim Construction Briefs (D.I. 36, 44, 56, 58) and heard oral argument on November 25, 2013. (D.I. 61).
II. 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) (en banc) (internal quotation marks omitted). ""[T]here is no magic formula or catechism for conducting claim construction.' Instead, the court is free to attach the appropriate weight to appropriate sources in light of the statutes and policies that inform patent law.'" SoftView LLC v. Apple Inc., 2013 WL 4758195 (D. Del. Sept. 4, 2013) (quoting Phillips, 415 F.3d at 1324). When construing patent claims, a matter of law, a court considers the literal language of the claim, the patent specification, and the prosecution history. Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-80 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). Of these sources, "the 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." Phillips, 415 F.3d at 1315 (internal quotations and citations omitted).
Furthermore, "the 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." Phillips, 415 F.3d at 1312-13 (internal citations and quotation marks omitted). "[T]he ordinary meaning of a claim term is its meaning to [an] ordinary artisan after reading the entire patent." Id at 1321 (internal quotation marks omitted). "In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words." Id. at 1314 (internal citations omitted).
A court may consider extrinsic evidence, which "consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises, " in order to assist the court in understanding the underlying technology, the meaning of terms to one skilled in the art and how the invention works. Id. at 1317-19 (internal quotation marks and citations omitted). However, extrinsic evidence is less reliable and less useful in claim construction than the patent and its prosecution history. Id.
Finally, "[a] claim construction is persuasive, not because it follows a certain rule, but because it defines terms in the context of the whole patent." 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. Intl Trade Comm'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007) (internal quotation marks and citation omitted).
III. CONSTRUCTION OF DISPUTED TERMS
There are three terms at issue here, "mobile device" in the '037 patent, "wireless mobile telephone" in the '409 patent, and "two way communication device" in the '409 and '447 patents. The parties agree that these terms should be construed as a group, and for convenience will be referred to as "mobile device." (D.I. 36 at 7). There is only one issue, whether the terms are to be given their plain and ordinary meaning, as Plaintiff urges, or whether the patents disclaim mobile devices containing "computer modules, " as Defendants contend. I note that the construction of these terms has been previously litigated in the International Trade Commission ("ITC"). There, the Administrative Law Judge ("AU") sided with Defendants, construing "mobile device" as a "portable ...