United States District Court, D. Delaware
ORDER CONSTRUING THE TERMS OF U.S. PATENT NO. 5,
having considered the submissions of the parties and hearing
oral argument on the matter, IT IS HEREBY ORDERED, ADJUDGED,
and DECREED that, as used in the asserted claims of U.S.
Patent No. 5, 495, 291 (the '"291 Patent"):
term "controller" is construed to mean "a
component or subsystem that causes, directly or indirectly,
aspects of operation of a device."
phrase "a predefined period of time" is construed
to mean "a period of time, determined in advance, . ..
phrase "repeating the selecting, decompressing,
decompressing, and providing steps until all the video data
streams have been provided to the output" is construed
in accordance with its plain and ordinary
 Defendant proposes a construction that
limits the claimed "controller" to a
"microcontroller." The court does not find
Defendant's citations to the specification or prosecution
history persuasive, however. (D.I. 51 at 6). The
patentee's use of the term "microcontroller" in
the specification's preferred embodiment indicates that
he certainly understood the meaning of the term, '291
patent, col. 3 ll. 23-24, and could have used it in claim 9
if he thought that term more adequately conveyed the scope of
his invention. Accordingly, the court will not limit
"controller" to the construction Defendant
proposes-a "microcontroller that receives signals and
issues commands to control the flow of video data."
(D.I. 50 at 1). Instead, the court construes the term broadly
to mean "a component or subsystem that causes, directly
or indirectly, aspects of operation of a device."
Plaintiffs contention is twofold: the
phrase "a predefined period of time" requires no
construction, but, if it does, the phrase means "a fixed
amount of time." The court finds that the term does need
construction, but it declines to adopt the one Plaintiff
First, Plaintiffs proposed construction eliminates the
temporal element required by the term "predefined."
To remedy that issue, Plaintiffs argued at the
Markman hearing that the amount of time was fixed
"relative to the controller." Markman
Hr'g Tr. 36:9-11. The court and Defendant take that to
mean that the amount of time "is being defined before
the data gets to the controller and the first switch."
Id. 38:7-10. For the reasons outlined below, the
court cannot adopt Plaintiffs construction even with its
clarification that the time is fixed relative to the
Plaintiff argues that "once the identity and
length of the first video stream is known, it is known at
what particular point in the first video stream the system
must begin decoding the second video stream in the second
decompression circuit, " making that point
"fixed." (D.I. 52 at 10). Plaintiff points to
figure 4 to demonstrate that the length of the first video
stream, variable y, minus the number of frames of the second
video stream that need to be decompressed before the first
stream ends, variable x, equals the time, variable z, when
the system must begin decoding the second video stream. (D.I.
52 at 11). Plaintiff believes that because variables y and x
are known when the controller determines the identity and
length of the first video stream, the variable z is
"fixed" at that point. Id. The court
agrees with Defendant, however, that Plaintiff makes a number
of impermissible assumptions, divorced from the language of
the patent, to reach that conclusion.
Plaintiff assumes that the number of frames of the
second video that need to be decompressed prior to the end of
the first video remains constant across different video data
streams. The specification clearly refutes that contention,
stating that "[a]t least several frames" of the
second video stream need to be decompressed and available for
display. '291 patent, col. 2 11. 59-62. "At least
several" cannot be interpreted as requiring a constant
number of frames to be decompressed prior to the end of the
first video stream.
Plaintiff also inherently assumes that the second bit
rate is fixed. Again, that assumption is explicitly nullified
by claims 12, 13 and 14, which disclose, respectively, a
second bit rate that is slower than the first, a second bit
rate that is the same as the first, and a second bit rate
that is faster than the first. Id. col. 7 ll. 33-38.
Given figure 4, the only logical way the controller can
determine the start time for decompression of the second
stream is after it has received the identity and length of
the first video data stream, after it knows the number of
frames that need to be decompressed prior to the end of the
first data stream, and after the input switch sets the bit
rate of the second data stream. '291 patent, fig. 4, col.
41. 64-col. 51. 65. Thus, while the time at which the system
must start decompressing the second data stream can be
determined in advance of the controller providing the second
video data stream to the second decompression array, that
time cannot be described as "fixed." The court thus
adopts Defendant's construction, finding it a more
accurate portrayal of the scope of a "predefined period
of time." The court wishes to note that it included
commas before and after the phrase "determined in
advance." The ellipsis included after the second comma
is only there to make clear that the court included two
.commas in its construction. The ellipsis is not part of the
construction, it is just there to indicate that the construed
phrase is part of a larger sentence within claim 17.
 Defendant contends that claim 17, as
written, is confusing because it fails to explicitly
highlight the alternating action that is the key part of the
claimed invention. Markman Hr'g Tr. 47:1-11. For
that reason, Defendant believes the claim phrase
"repeating the selecting, decompressing, decompressing,
and providing steps until all the video data streams have
been provided to the output" should be replaced with
"alternating, until all video streams have been provided
to the output, the decompression array that is decompressing
video data at a first rate and providing the video data to
the output." (D.I. 51 at 12). The court finds, however,
that the alternating action of the present invention is clear
from the plain and ordinary meaning of the claim phrase.
There is no need to alter the language.
Further, the terms "decompression array" and
"decompression circuit" would unnecessarily limit
the scope of claim 17. In claims 9-16, the patentee used the
term "decompression array, " '291 patent, col.
7 1.4-col. 8 1. 13, and he used the term "decompression
circuit" in a preferred embodiment in the specification.
Id. col. 4 ll. 38-45. If the patentee wanted
"decompression circuit" or "decompression
array" to be included in claim 17, he certainly could
have put it there. The patentee's decision to leave both
terms out evidences his intent to have the method claim
construed broadly. The court agrees with Plaintiff that
"[c]laim 17 requires only the performance of a specified
method of steps, not the performance of steps by a particular
component or components." Markman Hr'g Tr.
45:24-46:1. Nothing in the specification ...