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Wi-Lan Inc. v. Sharp Electronics Corporation

United States District Court, D. Delaware

April 27, 2018

WI-LAN INC., Plaintiff,
VIZIO, INC., Defendant.

          Brian E. Farnan and Michael J. Farnan, FARNAN LLP, Wilmington, DE, Monte M. Bond, Jeffrey R. Bragalone, Patrick J. Conroy, Terry Saad, and James R. Perkins, BRAGALONE CONROY P.C, Dallas, TX, Attorneys for Plaintiff.

          Jack B. Blumenfeld and Stephen J. Kraftschik, MORRIS, NICHOLS, ARSHT & TUNNELL LLP, Wilmington, DE, Gianni Cutri and Joel Merkin, KIRKLAND & ELLIS LLP, Chicago, DL, Michael W. De Vries, KIRKLAND & ELLIS LLP, Los Angeles, CA, Adam R. Alper and James Beard, KIRKLAND & ELLIS LLP, San Francisco, CA, Jared Barcenas, KIRKLAND & ELLIS LLP, New York, NY, Attorneys for Sharp Electronics Corporation.

          Pilar Gabrielle Kraman, YOUNG, CONAWAY, STARGATT & TAYLOR, LLP, Wilmington, DE, Adrian M. Pruetz and Rex Hwang, GLASER WEIL FINK HOWARD AVCHEN & SHAPIRO LLP, Los Angeles, CA, Attorneys for Vizio, Inc.



         Plaintiff Wi-LAN Inc. ("Plaintiff") brought this patent infringement suit against Defendants Sharp Corporation, Sharp Electronics Corporation, and Vizio, Inc. ("Defendants"), alleging that Defendants infringe Plaintiffs U.S. Patent Nos. 6, 359, 654 (the "'654 patent") and 6, 490, 250 (the "'250 patent"). (See generally D.I. 15)[1] The '654 patent generally relates to methods to display interlaced video on non-interlaced monitors. ('654 patent, Abstract) The '250 patent generally relates to an integrated multimedia encoding system. ('250 patent, Abstract)

         Presently before the Court is the issue of claim construction. The parties submitted technology tutorials (see D.I. 252, 256), objections to such technology tutorials (see D.I. 267, 270), claim construction briefs (see D.I. 253, 254, 266, 269), and expert declarations (see D.I. 253-1, 255-3, 255-4, 266-1). The Court held a claim construction hearing on February 26, 2018, at which both sides presented oral argument. (See D.L 272 ("Tr."))


         The 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." Id.

         "[T]he 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).

         While "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).

         It is 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).

         It is 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).

         In 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.

         In some 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. Furthermore, "statements made by a patent owner during an IPR [inter partes review] proceeding ... can be considered for claim construction." Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1362 (Fed. Cir. 2017). 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 F.3d at 1583).

         Finally, "[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'n 505 F.3d 1351, 1358 (Fed. Cir. 2007) (quoting Modine Mfg. Co. v. U.S. Int'l Trade Comm'n, 75 F.3d 1545, 1550 (Fed. Cir. 1996)).


         A. '654 Patent

         1. "A method for displaying interlaced video data on a non-interlaced monitor, the interlaced video data comprising a plurality of paired fields, each pair of fields being vertically offset relative to each other by one-half of a field line spacing distance, each field comprising a plurality of lines of video data"[2]

Plaintiff Preamble is not limiting Plain and ordinary meaning No construction necessary

Defendants Preamble is limiting

Court Preamble is limiting

         The parties dispute whether the preamble of claim 1 is limiting. "[A] preamble limits the invention if it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim." Catalina Marketing Int'l, Inc. v., Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (internal quotation marks omitted). In other words, "when the preamble is essential to understand limitations or terms in the claim body, the preamble limits claim scope." Id. Moreover, "[w]hen limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention." Pacing Techs., LLC v. Garmin Int'l, Inc., 778 F.3d 1021, 1024 (Fed. Cir. 2015) (internal quotation marks omitted). "Conversely, a preamble is not limiting where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention." Catalina Marketing, 289 F.3d at 808 (internal quotation marks omitted).

         Plaintiff argues that the preamble is not limiting, because it "does not contain any steps, " but rather "describes an intended use of the claimed process" - displaying interlaced video data on a non-interlaced monitor - and the '"features that necessarily exist' in interlaced video data." (D.I. 254 at 1-2; see also D.I. 266 at 1 (quoting Schumer v. Lab. Computer Sys., Inc., 308 F.3d 1304, 1310 (Fed. Cir. 2002))) Defendants argue that the preamble is limiting, because it "recites the framework essential to understand the remainder of the claim and provides antecedent basis for numerous elements." (D.I. 269 at 2)

         The Court concludes that the preamble is limiting because it is essential to understanding terms in the remainder of the claim. For example, step (c) of the claim requires "correct[ing] the vertical offset;" without the preamble, a person of ordinary skill in the art ("POSA" or "POSITA") would not know that the vertical offset is precisely "one-half of a field line spacing distance." ('654 patent, cl. 1)

         2. "respective buffers"[3]

Plaintiff Plain and ordinary meaning No construction necessary Plain and ordinary meaning is "a first and second memory space"

Defendants "separate buffers for the first field and the second field"

Court "separate buffers for the first field and the second field"

         Both sides agree that the term "respective buffers" requires that there be separate buffers for each field. (See Tr. at 24, 25, 38, 40) But Plaintiff argues that the claims do not require two separate buffers each with separate memory spaces; rather, the claims permit one buffer that has sufficient memory space to store both fields while "maintain[ing] separateness of the fields." (Tr. at 29) Defendants argue that the patent teaches there must be two distinct buffers for each of the two fields in the pair of fields. (See D.I. 253 at 3; Tr. at 27-28)

         The Court agrees with Defendants. In describing the background of the technology, the specification notes that the prior art method of "[d]einterlacing by interleaving two fields into a single buffer... gives very objectionable results when viewing video with rapid horizontal action." ('654 patent at 1:47-53) This suggests that a single buffer, despite having sufficient memory space to store both fields separately without overlap, is not covered by the patent. The patent further provides:

[T]he present invention ... capture[s] the two fields into separate buffers, one for the odd field and one for the even field. When one of the fields has been captured into the buffer, the buffer is displayed, scaled to the requested dimensions on the monitor using some scaling hardware or software...That image is displayed until the next field is captured into another buffer, and then the subsequent image is displayed until the third field is captured into either the original first buffer, or into another (third) buffer. The multiple buffering is to ensure that a video buffer is not being updated while it is being displayed, to avoid ''tearing"....

(Id. at 4:43-60 (emphasis added)) Moreover, the asserted claims of the '654 patent specify "respective buffets" - that is, plural buffers. A POSA would understand that the patent claims completely separate buffers, rather than just separate memory spaces in a single buffer, in order to practice the claimed method.

         3. "scaling"[4]

Plaintiff Plain and ordinary meaning No construction necessary Plain and ordinary meaning is "changing by a constant factor the number of lines and/or pixels in an image"

Defendants "changing the vertical resolution of the video signal by a constant factor"[5]

Court "changing the vertical resolution by changing by a constant factor the number of lines and/or pixels in a field"

         Step (b) of claim 1 requires "scaling each of the first field and second field of each pair of fields to fill vertical resolution of the non-interlaced monitor." ('654 patent, cl. 1) While the parties agree that scaling involves changing something by a constant factor, they disagree as to what may be changed. (See D.I. 254 at 3; D.I. 269 at 4)

         Plaintiff argues that "[t]he term 'scaling' is used throughout the specification in its broad sense to describe various scaling methods" - line-by-line, pixel-by-pixel, vertically, and horizontally - "and is not limited to vertical scaling of lines." (D.I. 254 at 3; see also Tr. at 45) Plaintiff further argues that "there is no lexicography that would limit scaling to any one particular type of scaling, " nor is there anything in the patent 'that would rise to the level of a disavowal of any type of scaling." (Tr. at 44) Defendants counter that the '654 patent "universally refers to scaling in the context of adding new lines" and does not contemplate scaling solely by changing the number of pixels. (D.I. 253 at 5) While Defendants agree that scaling generally can be accomplished by just adding pixels and widening the horizontal resolution, in Defendants' view such scaling would not practice claim limitation (b), which requires "scaling... to fill vertical resolution of the non-interlaced monitor." (Tr. at 52; see also '654 patent, cl. 1)[6] Defendants are also concerned that Plaintiffs construction would improperly permit Plaintiff to contend that there is no requirement that the vertical resolution be changed, as long as it is filled. (See Tr. at 57) While Plaintiff conceded that simply adding pixels to widen the resolution horizontally would be "scaling" but would not meet the rest of the claim limitation - because it is not scaling to fill vertical resolution - Plaintiff also indicated that performing horizontal scaling would meet the claim limitation as long as it filled the vertical resolution. (See Id. at 56-57) Separately, Defendants further argue that Plaintiffs construction is incorrect because "the claimed scaling occurs on fields, not images, of video data." (D.I. 253 at 4) (emphasis omitted)

         While the Court recognizes there may be various types of scaling in general, the Court agrees with Defendants that all references to scaling in the specification of the '654 patent refer to vertical scaling of lines, rather than just horizontal scaling of pixels. (See, e.g., '654 patent, at Figs. 4, 5, 6, 1:34-38, 1:63-2:7, 4:51-53, 5:19-64) More importantly, "the plainness of the claim language necessarily affects what ultimate conclusions about claim construction can properly be drawn based on the specification." Straight Path IP Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d 1356, 1361 (Fed. Cir. 2015) ("[Disavowal is required where claim language is plain, lacking a range of possible ordinary meanings in context."). Here, the claim language - "scaling... to fill vertical resolution" - requires an actual change in vertical resolution. The proper resolution of the parties' claim construction dispute must ensure that claim limitation (b) is not eviscerated.[7]Further, the Court concludes that the patent refers to scaling in fields rather than scaling in images.

         4. ...

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