United States District Court, D. Delaware
INTELLECTUAL VENTURES I, LLC and INTELLECTUAL VENTURES II LLC, Plaintiffs,
CANON INC., CANON USA, INC., AND CANON SOLUTIONS AMERICA, INC., Defendants.
SUE L. ROBINSON, District Judge.
At Wilmington this 27th day of March, 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. 8, 300, 285 ("the '285 patent"), 6, 650, 432 ("the '432 patent"), RE 43, 086 ("the '086 patent"), and RE 44, 528 ("the '528 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), and the standard set forth below, as follows:
1. Standard. "In construing a means-plus-function claim, [pursuant to 35 U.S.C. § 112, ¶ 6, ] the district court must first determine the claimed function and then identify the corresponding structure in the written description of the patent that performs that function." Baran v. Med. Device Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010) (citing Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1332 (Fed. Cir. 2006)). Ultimately, if no corresponding structure is disclosed in the specification, the claim term must be construed as indefinite, pursuant to 35 U.S.C. § 112, ¶ 2. Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012),
2. Where the claim language does not recite the term "means, " there is a presumption that the limitation does not invoke 35 U.S.C. § 112, ¶ 6. Personalized Media Commc'ns, LLC v. ITC, 161 F.3d 696, 702 (Fed. Cir. 1998). This presumption can be overcome if the challenger demonstrates that "the claim term fails to recite sufficiently definite structure' or else recites function without reciting sufficient structure for performing that function.'" CCS Fitness v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002) (internal citations omitted). To determine whether a claim term that lacks the word "means" is subject to § 112, ¶ 6, the court must consider the words of the claims themselves, the written description, the prosecution history, and any relevant intrinsic evidence. Inventio AG v. ThyssenKrupp Elevator Americas Corp., 649 F.3d 1350, 1356 (Fed. Cir. 2011) (citing Personalized Media, 161 F.3d at 704 (The presumption that a claim lacking the term "means" recites sufficiently definite structure can be rebutted "if the evidence intrinsic to the patent and any relevant extrinsic evidence so warrant[s].")).
3. In Inventio, the Federal Circuit considered the terms "modernizing device" and "computing unit." 649 F.3d at 1357-60. The Court held that § 112, ¶ 6 was not applicable because the claimed "modernizing device" connoted sufficiently definite structure. Id. at 1359. "[T]he claims recite[d] a modernizing device, ' delineate[d] the components that the modernizing device is connected to, describe[d] how the modernizing device interacts with those components, and describe[d] the processing that the modernizing device performs. The written descriptions additionally show[ed] that the modernizing device convey[ed] structure to skilled artisans." Id. With respect to the "computing unit, " the Court again found that the limitation connoted sufficiently definite structure based upon a reading of the claims and the written description." Id. at 1359-60.
4. Generally, "in a means-plus-function claim in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.'" Aristocrat Techs. Australia Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (quoting WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999)). The specification can express the algorithm "in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure." Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (internal citation omitted).
5. The description of the algorithm must do more than describe the function to be performed; it must describe how the function is to be performed. Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1382-83 (Fed. Cir. 2009) (finding "[t]he specification contains no description of the structure or the process that the access control manager uses to perform the "assigning" function."). It is insufficient to aver that a disclosure has enough structure for a person of ordinary skill to devise some method or write some software to perform the desired function. Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1319 (Fed. Cir. 2013) (citing Blackboard, 574 F.3d at 1385).
6. In Ergo Licensing, the Federal Circuit explained that a narrow exception to the requirement for an algorithm exists.
[A] general-purpose computer is sufficient structure if the function of a term such as means for processing' requires no more than merely processing, ' which any general purpose computer may do without any special programming. If special programming is required for a general purpose computer to perform the corresponding claimed function, then the default rule requiring disclosure of an algorithm applies. 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.
673 F.3d at 1364 (citing In re Katz, 639 F.3d 1303, 1316 (Fed. Cir. 2011)).
7. "[S]can control signals:" Indefinite under 35 U.S.C. § 112, ¶ 2. The '285 patent seeks to minimize electromagnetic interference and improve the quality of images transmitted by a scanner through: (1) transmitting digital image data "instead of analog image signals;" and (2) transmitting scanning control signals "through a common IC communication interface instead of timing control signals transmitted through a connection cable." ('285 patent, col. 3:1-8) The patent describes a "scanning circuit structure for a document scanner" in which "[t]he main circuit module receives a scanning instruction from a communication interface and converts the scanning instruction into scan control signals." ( Id. at col. 2:20-23) The scan control signals "pass along the connection cable" where they are then converted into "timing control signals." ( Id. at cols. 2:20-23; 2:23-29; 2:37-40; 3:50-64) The specification does not provide further guidance as to the type or format of the signals or what the signals ultimately control. Regardless of the importance of signal format to the stated purpose of the invention, the precise function of the signals is relevant, especially where independent claim 7 specifies that "the received scan control signals do not comprise any timing control signals." ( Id. at col. 5:23-24) As such, the claimed "scan control signal" is not a commonly-understood control signal, but is instead a functionally specialized signal, the scope of which is not adequately described in the claims or the specification. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2124 (2014). The term "scan control signals, " therefore, is indefinite under 35 U.S.C. § 112, ¶ 2.
8. "[T]iming control signals:" 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. ('285 patent, col. 2:20-29) These timing control signals "extract an analog signal from the optical sensor." (Id. at col. 3:62-64) 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. For the same reasoning applied to the term "scan control signals, " the term "timing control signals" "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.
9. "[C]ompensating and adjusting:" Indefinite under 35 U.S.C. § 112, ¶ 2. The specification of the '285 patent states that "[t]he main control logic unit also includes an image front-end processor for compensating and adjusting the captured digital image data so that the scanned image has a better quality." ('285 patent, col. 2:57-60) (emphasis added) Instructing that the scanned image has "a better quality" fails to provide adequate guidance to a person having ordinary skill in the art, especially where the extrinsic evidence provides no additional certainty or guideposts. (D.I. 226, ex. 1 at 15, 234) (Merriam-Webster's Collegiate Dictionary defines "compensate" as, "3a: to provide with means of counteracting variation b: to neutralize the effect of (variations), " and "adjust" as "a: to bring to a more satisfactory state") Such subjective language "does not provide a reasonably clear and exclusive definition, leaving the facially subjective claim language without an objective boundary." See Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 13773 (F3d. Cir. 2014). Accordingly, the term "compensating and adjusting" "fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention." Nautilus, 134 S.Ct. at 2124.
10. "[A]n automatic scan operation:" "Scan operation in which the user operates the scanner without specifying image processing settings." Although "an automatic scan operation" appears in the preamble, the automatic nature of the scan operation is an essential component of the invention, with the inventors describing the "objective of the invention" as "performing an automatic scan operation... without requiring the user to specify image processing settings." ('432 patent, col. 1:60-65) Figure 1 depicts a user interface 50 that allows for user input 60. ('432 patent, figure 1) The specification explains that "[t]he block designated by the reference number 60 is used to represent the input from user operation." ( Id. at col. 3:26-28) The specification clarifies the scope of the user input, stating that "the user first needs to place the original document on the scanner, and then press a scan button to activate the scan operation. After this, all the user needs to do is simply wait until the final scanned image is produced." ( Id. at col. 2:54-57) Regarding any user involvement in image processing settings, the specification states that "[t]he user needs not [sic] to specify any image processing settings. These will be automatically specified by the user interface based on the image qualities of the primitive scanned image." ( Id. at col. 2:58-60) During prosecution, the applicants distinguished a prior art reference with the argument that "the [prior art] scanning operation... is not fully automatic and yet the user needs to manually change the settings." (D.I. 220, ex. 29 at A1410-11) In the patent itself, the applicants distinguish the present invention from "conventional image scan programs" which "require the user to specify various image processing settings to the scan operation." ('432 patent, col. 1:36-38) In sum, although the patented method and user interface allow the user to initiate scanning, nothing in the intrinsic record supports the position that a user may specify image processing settings.
11. "[I]mage processing settings:" "Settings used by the scanner to obtain a scanned image." This construction is consistent with the specification, which describes image processing settings as "including, for example, color setting, DPI setting, and image size setting." ('432 patent, col. 4:6-9) Unlike "image processing routines, " which include processes performed on the scanned image such as "automatic cutting, distortion correction, color calibration, and automatic character recognition" ( id. at col. 4:15-19), "image processing settings" are used to either "obtain a primitive scanned image" or a "final scanned image" ( Id. at claims 1-8).
12. "[A]pplication program:" "Post-scan application." Although the word "post-scan" does not appear in the claims or the specification, the specification states that "the final scanned image is transferred via the scanner driver 30 to the application program so that the final scanned image can be used by the application program 40." ('432 patent, col. 4:46-48) The specification provides examples of an application program, such as "an image editing program or a word processor, " that are used following the final scan to "process the final scanned image as an image file." ( Id. at col. 4:49-51) Such a post-scan use of the application program is reinforced by the claims themselves, which recite transferring the final scanned image to the application program "for use by the application program." ( Id. at claims 1-8) Accordingly, the present construction is consistent with the claims and the specification.
13. "[I]mage processing routines:" Not indefinite under 35 U.S.C. § 112, ¶ 2. The claims and specification provide concrete examples of image-enhancement processes including "automatic cutting, distortion correction, color calibration, and automatic character recognition." ('432 patent, col. 3:39-44; see also claims 1-8) Although the term may "broadly refer to an entire field of potential image processing techniques" (D.I. 233 at ¶ 41), the specification is "clear in its examples" and, therefore, provides adequate boundaries. See Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357, 1368 (Fed. Cir. 2010), abrogated on other grounds by ...