United States District Court, D. Delaware
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.
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.
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.
US. DISTRICT JUDGE.
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) 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)
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."))
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).
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.
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.
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).
"[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)).
CONSTRUCTION OF DISPUTED TERMS
"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"
Plaintiff Preamble is not limiting Plain and
ordinary meaning No construction necessary
Defendants Preamble is limiting
Court Preamble is limiting
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. Coolsavings.com, 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).
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)
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)
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"
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)
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.
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
Court "changing the vertical resolution by
changing by a constant factor the number of lines
and/or pixels in a field"
(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
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) 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)
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.Further, the Court concludes that the
patent refers to scaling in fields rather than scaling in