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Intellectual Ventures I, LLC v. Canon Inc.

United States District Court, D. Delaware

January 23, 2015

INTELLECTUAL VENTURES I, LLC and INTELLECTUAL VENTURES II, LLC, Plaintiffs,
v.
CANON INC., CANON USA, INC., AND CANON SOLUTIONS AMERICA, INC., Defendants.

MEMORANDUM ORDER

SUE L. ROBINSON, District Judge.

At Wilmington this 23rd day of January, 2015, having heard argument on, and having reviewed the papers submitted in connection with, the parties' proposed claim construction;

IT IS ORDERED that the disputed claim language of U.S. Patent Nos. 6, 130, 761 ("the '761 patent"), 7, 817, 914 ("the '914 patent"), 5, 444, 728 ("the '728 patent"), 7, 315, 406 ("the '406 patent"), 5, 712, 870 ("the '870 patent"), and 6, 977, 944 ("the '944 patent") shall be construed consistent with the tenets of claim construction set forth by the United States Court of Appeals for the Federal Circuit in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), as follows:

1. "[M]onitoring a flow of current in said laser and in said bypass:"[1] "Detecting a flow of current in said laser and a flow of current in said bypass." This construction is consistent with the claim language, where the act of "monitoring" is distinct from "provid[ing] a measure of current." ('728 patent, col. 18:45-46) To the extent that the current monitored is the same as the current measured, there is nothing in the claim language that requires importing the limitation of measuring only a "sum" of the main current plus the bias current, as is done in one embodiment. ( Id. at col. 2:60-65)

2. "[M]ain circuit module capable of receiving a scanning instruction... converting the scanning instruction into scan control signals, passing the scan control signals to a connection cable as well as receiving a digital image data:"[2] Not indefinite under 35 U.S.C. § 112, ¶ 2. Not subject to 35 U.S.C. § 112, ¶ 6. The claims and the specification of the '406 patent explain how the main circuit module receives scanning instructions and connects to the optical sensor circuit module through a connection cable. ('406 patent, cols. 2:20-22; 2:33-35; 2:37-44; 2:57-67; 3:39-45; 3:50-59; 4:10-23; claim 1; claim 26) The specification further describes the fabrication, location and various components of the main circuit module. ('406 patent, cols. 1:28-35; 2:27-29; 2:32-39; 3:41-43; 4:10-21) In the absence of any "means for" language, such a description is sufficient to avoid application of 35 U.S.C. § 112, ¶ 6. See Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1320-21 (Fed. Cir. 2004) (holding the terms "circuit" and "circuitry" along with "a recitation of the respective circuit's operation in sufficient detail to suggest structure to persons of ordinary skill in the art" are "not means-plus function limitations subject to 35 U.S.C. § 112 ¶ 6"). The description provided by the claims and specification is also sufficient to "inform, with reasonable certainty, those skilled in the art about the scope of the invention, " and the term, therefore, is not indefinite. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2124 (2014).

3. "[S]can control signals:"[3] Indefinite under 35 U.S.C. § 112, ¶ 2. The claims and the specification describe "scan control signals" as converted "scanning instructions" that "pass along the connection cable" where they are then converted into "timing control signals." ( See '406 patent, cols. 2:13-16; 2:20-22; 2:32-34; 3:48-62, claim 1) The specification does not provide further guidance as to the type or format of the signals or what the signals ultimately control. The term, read in light of the specification, "fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention." Nautilus, 134 S.Ct. at 2124. The term "scan control signals, " therefore, is indefinite under 35 U.S.C. § 112, ¶ 2.

4. "[O]ptical sensor circuit module... capable of receiving [the] scan control signals... and converting the scan control signals to timing control signals:"[4] Not indefinite under 35 U.S.C. § 112, ¶ 2. Not subject to 35 U.S.C. § 112, ¶ 6. Claim 1 of the '406 patent explains that the optical sensor circuit module "is connected to the main circuit module through the connection cable." The specification describes how the optical sensor circuit module "receives the scan control signals and converts the scan control signal into timing control signals." ('406 patent, col. 2:19-22; see also 3:37-40) The specification further describes the fabrication, attachments and various internal components of the optical sensor circuit module. ( Id. at col. 1:28-35; 1:36-43; 2:29-32; 2:41-51; 3:43-47; 3:58-4:2; fig. 2) In the absence of any "means for" language, such a description is sufficient to avoid application of 35 U.S.C. § 112, ¶ 6. See Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1320-21 (Fed. Cir. 2004) (holding the terms "circuit" and "circuitry" along with "a recitation of the respective circuit's operation in sufficient detail to suggest structure to persons of ordinary skill in the art" are "not means-plus function limitations subject to 35 U.S.C. § 112 ¶ 6"). The description provided by the claims and specification is also sufficient to "inform, with reasonable certainty, those skilled in the art about the scope of the invention, " and the term, therefore, is not indefinite. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2124 (2014).

5. "[T]iming control signals:"[5] Indefinite under 35 U.S.C. § 112, ¶ 2. In the context of the claims and the specification, the optical sensor circuit module converts scan control signals received from the main circuit module into timing control signals. ('406 patent, col. 2:13-22) These timing control signals "extract[] an analog signal from the optical sensor." ( Id. at col. 3:53-67) As with scan control signals, the specification does not provide guidance as to the type or format of the timing control signals or what they ultimately control. As such, the term, read in light of the specification, "fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention." Nautilus, 134 S.Ct. at 2124. The term "timing control signals, " therefore, is indefinite under 35 U.S.C. § 112, ¶ 2.

6. "[C]onverting:"[6] Not indefinite under 35 U.S.C. § 112, ¶ 2. As recited in the claims, the main circuit module is capable of "converting" the scanning instructions into scan control signals and the optical sensor circuit module is capable of "converting" the scan control signals to timing control signals." ('406 patent, claims 1, 26, 30) Consistent with the claims, the specification uses "converting" to describe "changing from one form to another." ( Id. at cols. 2:13-15; 2:20-22; 2:32-34) As read in the context of the claims and specification, the term "converting" is not indefinite under 35 U.S.C. § 112, ¶ 2 because it "inform[s], with reasonable certainty, those skilled in the art about the scope of the invention." Nautilus, 134 S.Ct. at 2124 (2014).

7. "[O]ptical sensor circuit module... capable of receiving scan control signals... converting the scan control signals to timing control signals... extraction of an analog image signal... and conversion of the analog image signal into digital image data:"[7] Not indefinite under 35 U.S.C. § 112, ¶ 2. Not subject to 35 U.S.C. § 112, ¶ 6. Claim 30 of '406 patent explains that the optical sensor circuit module "is connected to the main circuit module through the connection cable." The specification describes how the optical sensor circuit module "receives the scan control signals and converts the scan control signal into timing control signals." ('406 patent, col. 2:19-22; see also 3:37-40) The specification further describes the fabrication, attachments and various internal components of the optical sensor circuit module. ( Id. at cols. 1:28-35; 1:36-43; 2:29-32; 2:41-51; 3:43-47; 3:58-4:2; fig. 2) In the absence of any "means for" language, such a description is sufficient to avoid application of 35 U.S.C. § 112, ¶ 6. See Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1320-21 (Fed. Cir. 2004) (holding the terms "circuit" and "circuitry" along with "a recitation of the respective circuit's operation in sufficient detail to suggest structure to persons of ordinary skill in the art" are "not means-plus function limitations subject to 35 U.S.C. § 112, ¶ 6"). The description provided by the claims and specification is also sufficient to "inform, with reasonable certainty, those skilled in the art about the scope of the invention, " and the term, therefore, is not indefinite. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2124 (2014).

8. "[T]iming generator... capable of generating the timing control signals that control a generation of the analog image signal and a conversion of the analog image signal into the digital image data:"[8] Not indefinite under 35 U.S.C. § 112, ¶ 2. Not subject to 35 U.S.C. § 112, 116. Claims 5, 29 and 31 of the '406 patent specify that the timing generator is capable of outputting signals and operates as an electrical circuit that is coupled to the optical sensor and the analog/digital converter. The specification depicts the timing generator as a structural component of the optical sensor circuit module capable of producing timing control signals needed to extract the analog image signal from the optical sensor. ('406 patent, cols. 2:29-32; 2:46-51; 3:43-47; 3:58-62) In the absence of any "means for" language, this description is sufficient to avoid application of 35 U.S.C. § 112, - 6. See lnventio AG v. ThyssenKrupp Elevator Americas Corp., 649 F.3d 1350, 1358 (Fed. Cir. 2011) (finding that "modernizing device" is not subject to § 112, ¶ 6 as it "functions as an electrical circuit" and the operation of the circuit is sufficiently described in the claims). The description provided by the claims and specification is also sufficient to "inform, with reasonable certainty, those skilled in the art about the scope of the invention, " and the term, therefore, is not indefinite. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2124 (2014).

9. "[S]electing an automatic image trigger condition:"[9] "A user of the image capture device selects the automatic image trigger condition." This construction is most consistent with the architecture of independent method claim 1, which separates "selecting an automatic image trigger condition" from "entering a threshold level corresponding to the automatic image trigger conditions." ('914 patent, claim 1) Defendants' proposal to import the language of "when a corresponding threshold level is reached" unnecessarily collapses the steps of "selecting" and "entering."

10. "[E]ntering a threshold level:"[10] "A threshold level entered by user." The specification provides examples of how image capture is initiated when "some measured variable exceeds a given threshold value" ('941 patent, col. 9:47-48) or when a "sensed signal exceeds a given threshold value." ( Id. at col. 9:38-40) For example, the specification states that the device may be equipped with an audio sensor, and a threshold level of noise is set so that noise above the predetermined threshold will trigger image capture. ( Id. at col. 5:42-48) However, these examples merely inform the range of thresholds a user may enter and do not limit the claim scope.

11. "[A]utomatically operating the image capture device to capture at least one digital image upon the automatic detection of the automatic image trigger condition meeting the threshold level:"[11] "Upon the automatic detection of the automatic trigger condition meeting the threshold level, the image capture device captures, without further intervention by a user, at least one digital image." Such construction does not preclude incidental involvement by the user in operating the device between the "entering a threshold level" and "automatically operating" steps, so long as the device itself operates automatically to capture an image ...


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