United States District Court, D. Delaware
Martina Tyreus Hufhal, FISH & RICHARDSON P.C.,
Wilmington, DE Michael J. Kane, William R. Woodford, Jason M.
Zucchi, and Phillip W. Goter, FISH & RICHARDSON P.C.,
Minneapolis, MN Juanita Brooks, Geoff D. Biegler, FISH &
RICHARDSON P.C., San Diego, CA Attorneys for Plaintiff.
G. Day, Tiffany Geyer Lydon, and Andrew C. Mayo, ASHBY&
GEDDES, Wilmington, DE John P. Schnurer, Kevin J. Patariu,
and Evan S. Day, PERKINS COIE LLP, San Diego, CA Floyd B.
Chapman, Kevin P. Anderson, and Karin Hessler, WILEY REIN
LLP, Washington, DC Attorneys for Defendants.
U.S. District Judge.
IP, LLC filed suit against Defendants Telecommunication
Systems, Inc., Networks in Motion, Inc., and Cellco
Partnership (collectively, "TCS"), alleging
infringement of U.S. Patent No. 5, 987, 377, which claims
systems and methods for determining an expected time of
arrival of a vehicle equipped with a mobile unit using a
dispatch remotely located from the vehicle.
before the Court is the issue of claim construction. The
Court previously construed a number of claim terms in this
case. (See D.I. 167) The parties subsequently filed
cross-motions for summary judgment regarding, among other
issues, infringement. (See D.I. 375, 378) The Court
denied those motions, finding there to be a genuine dispute
of material fact created by the parties' expert opinions,
which both reasonably applied the Court's construction of
the term "dispatch." (See D.I. 538 at 11)
The Court also noted that further construction of
"dispatch" may be appropriate. (See Id. at
12 n.l) Thereafter, TCS sought leave to pursue further
construction of the term (see D.I. 545), which the
Court granted. The parties submitted supplemental claim
construction briefs. (See D.I. 552, 553, 556, 557).
The Court held a claim construction hearing on April 28,
2017. (See D.I. 561 ("Tr."))
ultimate question of the proper construction of a patent is a
question of law. See Teva Pharm. USA, Inc. v. Sandoz,
Inc., 135 S.Ct. 831, 837 (2015) (citing Markman v.
Westview Instruments, Inc., 517 U.S. 370, 388-91
(1996)). "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). "[T]here is no magic
formula or catechism for conducting claim construction."
Id. 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."
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).
"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).
likewise true that "[differences 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).
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." Hill-Rom
Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed.
Cir. 2014) (quoting Liebel-Flarsheim Co. v. Medrad,
Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)) (internal
quotation marks omitted).
addition to the specification, a court "should also
consider the patent's prosecution history, if it is in
evidence." Markman v. Westview Instruments,
Inc., 52 F.3d 967, 980 (Fed. Cir. 1995),
aff'd, 517 U.S. 370 (1996). 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.
cases, "the district court will need to look beyond the
patent's intrinsic evidence and to consult extrinsic
evidence in order to understand, for example, the background
science or the meaning of a term in the relevant art during
the relevant time period." Teva, 135 S.Ct. at
841. Extrinsic evidence "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. Where the intrinsic record
unambiguously describes the scope of the patented invention,
reliance on any extrinsic evidence is improper. See
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
1298, 1308 (Fed. Cir. 1999) (citing Vitronics, 90
"[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
%505 F.3d 1351, 1358 ...