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S.A. v. Blackberry Ltd.

United States District Court, D. Delaware

September 13, 2018

3G LICENSING, S.A., KONINKLIJKE KPN N.V., and ORANGE S.A., Plaintiffs,
v.
BLACKBERRY LIMITED and BLACKBERRY CORPORATION, Defendants. 3G LICENSING, S.A., KONINKLIJKE KPN N.V., and ORANGE S.A., Plaintiffs,
v.
HTC CORPORATION, Defendant. 3G LICENSING, S.A., KONINKLIJKE KPN N.V., and ORANGE S.A., Plaintiffs,
v.
LENOVO HOLDING CO., INC., LENOVO (UNITED STATES) INC. and MOTOROLA MOBILITY LLC, Defendants. 3G LICENSING, S.A., KONINKLIJKE KPN N.V., and ORANGE S.A., Plaintiffs,
v.
LG ELECTRONICS INC., LG ELECTRONICS, U.S.A., INC. and LG ELECTRONICS MOBILECOMM U.S.A., INC., Defendants.

          Joseph J. Farnan, Jr., Brian E. Farnan, Michael J. Farnan, FARNAN LLP, Wilmington, DE Alexandra G. White, Jeffrey S. David, Hunter Vance, SUSMAN & GODREY, Houston, TX Andres C. Healy, SUSMAN & GODREY, Seattle, WA Attorneys for Plaintiffs 3G Licensing, S.A., Koninklijke KPN N.V., and Orange S.A.

          Colm F. Connolly, Amy M. Dudash, MORGAN, LEWIS & BOCKIUS LLP, Wilmington, DE Eric Kraeutler, John V. Gorman, MORGAN, LEWIS & BOCKIUS LLP, Philadelphia, PA Robert C. Bertin, MORGAN, LEWIS & BOCKIUS LLP, Washington, DC Attorneys for Defendants Blackberry Limited and Blackberry Corporation.

          John W. Shaw, Nathan R. Hoeschen, SHAW KELLER LLP, Wilmington DE Yar R. Chaikovsky, Philip Ou, Jonas Herrell, Radhesh Devendran, PAUL HASTINGS LLP, Palo Alto, CA Attorneys for Defendant HTC Corporation.

          Jack B. Blumenfeld, Stephen J. Kraftschik, MORRIS NICHOLS ARSHT & TUNNELL LLP, Wilmington, DE Steven D. Moore, KILPATRICK TOWNSEND & STOCKTON, San Francisco, CA Taylor Higgins Ludlam, KILPATRICK TOWNSEND & STOCKTON, Raleigh, NC Russell A. Korn, Richard W. Goldstucker, Courtney S. Dabbiere, KILPATRICK TOWNSEND & STOCKTON, Atlanta, GA Attorneys for Defendants Lenovo Holding Co. Inc., and Lenovo (United States) Inc.

          Roger D. Smith, II, MORRIS NICHOLS ARSHT & TUNNELL LLP, Wilmington, DE Peter H. Kang, Ashish Nagdev, Jingyung Lee, SIDLEY AUSTIN LLP, Palo Alto, CA Ryan M. Sandrock, SIDLEY AUSTIN LLP, San Francisco, CA Attorneys for Defendants LG Electronics Inc., LG Electronics U.S.A., Inc., and LG Electronics MobileComm U.S.A., Inc.

          MEMORANDUM OPINION

          STARK, U.S. DISTRICT JUDGE.

         Plaintiffs sued multiple Defendants in numerous related actions for alleged infringement of several patents. Presently before the Court are the parties' disputes over the meaning of disputed terms in the asserted claims of the four patents remaining at issue: U.S. Patent Nos. 9, 014, 667 (“'667 patent”), 7, 933, 564 (“'564 patent”), 7, 995, 091 (“'091 patent”), and 6, 856, 818 (“'818 patent”). The parties submitted claim construction briefs (see D.I. 123, 126, 138, 140), expert declarations (see D.I. 125, 139, 142), technology tutorials (see D.I. 130, 131, 132), and objections to the tutorials (see D.I. 137, 141).[1] The Court held a claim construction hearing on June 25, 2018, at which both sides presented oral argument. (See D.I. 147 (“Tr.”)) Later, the parties agreed upon certain constructions and proposed certain amended constructions. (See D.I. 145, 148)

         I. LEGAL STANDARDS

         A. CLAIM CONSTRUCTION

         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 “[d]ifferences 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. 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)).

         B. INDEFINITENESS

         A patent claim is indefinite if, “viewed in light of the specification and prosecution history, [it fails to] inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2129 (2014). A claim may be indefinite if the patent does not convey with reasonable certainty how to measure a claimed feature. See Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1341 (Fed. Cir. 2015). But “[i]f such an understanding of how to measure the claimed [feature] was within the scope of knowledge possessed by one of ordinary skill in the art, there is no requirement for the specification to identify a particular measurement technique.” Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1319 (Fed. Cir. 2015).

         II. CONSTRUCTION OF DISPUTED TERMS[2]

         A. The '667 Patent[3]

         The '667 patent “relates to a telecommunications network configured for providing access to a plurality of terminals” and a method of permitting access to that network. '667 Patent Abstract. The patent discloses mechanisms that enable the network to deny access to terminals when network resources are stretched. See Id. 1:23-40. The network includes “a register, an access request receiver and an access module.” Id. Abstract. Each terminal has a “unique identifier” to access the network. Id. “The register is configured for storing the unique identifier of at least one terminal in combination with at least one grant access time interval . . . during which access for the terminal is permitted.” Id. “The access module is configured for denying access for the terminal if the access request is received outside the time interval . . . .” Id.

         1.deny access time interval”[4]

Plaintiffs

“time slot, bounded by particular (albeit potentially variable) beginning and end times, during which access to the telecommunications network is denied”

Defendants

“time slot, bounded by particular beginning and end times, (which are potentially variable, i.e., the previously scheduled particular beginning and end times may potentially be modified by a network operator's plan prior to the time slot), during which access to the telecommunications network is denied”

Court

“time slot, bounded by particular (albeit potentially variable) beginning and end times, during which access to the telecommunications network is denied”

         The parties, relying on a construction of this term by a previous court, agree that the term refers to a time slot during which access to the telecommunications network is denied. The previous court noted that the time slot is “bounded by particular (albeit potentially ‘variable,' see '667 Patent at 4:65) beginning and end times.” (D.I. 124 at 74) During oral argument, the parties' dispute narrowed to the meaning of variable. (See Tr. at 14-26) Defendants argue that variable means “the network operator who is controlling [time slot] can determine for scheduling purposes the particular beginning and end time they want, but it doesn't mean that these are totally open and random timers that can be set on the fly at any time.” (Id. at 15) Plaintiffs argue that the meaning of variable is not limited to just allowing prescheduled time slots but also contemplates changing the time slots in a dynamic manner. ((See Id. at 19-21; see also Id. at 20-21 (“[W]hat the patent contemplates and what the claims cite is a network that is monitoring the load and that is able to dynamically and variably specify a time interval when . . . access will be denied . . . .”))

         The Court agrees with Plaintiffs. The patent explains that “a variable time interval x-y is scheduled, depending on the network load experienced by or expected for the telecommunications network.” '667 patent, 4:65-67. This variable time interval is not limited to a predetermined time slot. Instead, “[n]etwork monitoring may be real time and/or be based on the expected network load .” (Id. at 5:43-44) (emphasis added) The dynamic nature of the time interval is reflected in the claim language “the time period is adapted by the telecommunications network depending on a monitored network load.” (Id. at 14:7-8) The Court is not persuaded by Defendants that Plaintiffs' position in a related Inter Partes Review involved a clear and unmistakable disclaimer. (See, e.g., Tr. at 22-23)

         2.machine-to-machine applications”

Plaintiffs

As previously construed, “applications that allow for data communication between devices and that normally operate without human intervention”

Defendants

“applications to communicate data between machines that normally operate without human intervention”

Court

“applications that allow for data communication between devices and that normally operate without human intervention”

         The parties agree that the term relates to operations that normally proceed without human intervention, but dispute whether the patent refers to applications (Plaintiffs' position) or machines (Defendants' position). Plaintiffs argue that Defendants' emphasis on machines is improper because the patent describes “applications as the entities that normally operate without human intervention, ” and this is how a person of ordinary skill in the art (“POSA”) familiar with network standards mentioned in the patent would have understood the term. (D.I. 123 at 3) (emphasis added by Plaintiffs) Defendants argue that Plaintiffs' construction is too broad because it “could read on generic network applications that run in the background (e.g., on servers) ‘without human interaction' to allow any type of data communication between any type of devices in the telecommunications network, even if the servers themselves otherwise operate with human interaction.” (D.I. 126 at 4)

         The Court agrees with Plaintiffs. Defendants' construction is too narrow and improperly reads specific embodiments described in the specification into the claims. See Phillips, 415 F.3d at 1323. Nothing in the intrinsic evidence suggests that the term is limited to machines that normally operate without human intervention.[5] The patent explains that “some machine-to-machine (M2M) applications do not require the transfer of data to be immediate, ” and “[i]f these applications are prevented from claiming one or more network resources during e.g. peak load hours, network resources can be saved.” '667 patent, 2:50-54 (emphasis added). The patent also explains that “M2M applications typically involve hundreds or thousands of devices that only rarely require access to a telecommunications network.” Id. 2:56-58 (emphasis added).

         3.unique identifier”[6]

Plaintiffs

Plain meaning; alternatively, “information enabling unique identification at a particular moment in time of the terminal in the telecommunications network”

Defendants

“terminal identifier that is unique within the telecommunication network to provide access to the entire network from all locations at all terms (unlike a temporary identifier which is assigned only for a particular access or a particular locations)”

Court

“information enabling unique identification at a particular moment in time of the terminal in the telecommunications network”

         Plaintiffs argue that “Defendants' construction provides no additional clarity to the term.” (D.I. 123 at 5) Defendants argue that “Plaintiffs' alternative construction seeks to read ‘unique' out of this claim term” and is overly broad. (D.I. 126 at 5; see also D.I. 140 at 4)

         The Court agrees with Plaintiffs. The patent explains that “[e]ach terminal comprises a unique identifier for accessing the telecommunications network.” '667 patent, 1: 46-47. According to the patent, the unique identifier is stored in a network register and is “preferably associated with a subscription of the terminal, e.g. the identifier of a SIM (IMSI) that is available in the terminal.” Id. 1: 47-52.

         4.peak load time intervals”

Plaintiffs

“time periods during which there is or is expected to be a higher than average quantity of network traffic”

Defendants

Indefinite

Court

“time periods during which there is or is expected to be a higher than average quantity of network traffic”

         Defendants argue that the term is indefinite because the patent provides “no guidance either to ‘peak load' or the beginning and end of the ‘time interval.'” (D.I. 126 at 5) Plaintiffs respond that the meaning of the term is self-evident from the patent and a POSA would understand that the term has a specific meaning in the art. (D.I. 123 at 6-7)

         The Court agrees with Plaintiffs. The patent provides information sufficient for a POSA to understand with reasonable certainty the meaning of peak load and the beginning and end of the time interval. According to the patent's claims, for example, the “terminal for the machine-to-machine applications are denied access to the telecommunications network during peak load time intervals.” 667 patent, 14:17-20. The patent explains that network resources could be saved if “some machine-to-machine (M2M) applications, ” which “do not require the transfer of data to be immediate, ” “are prevented from claiming one or more network resources during e.g. peak load hours.” Id. 2:50-54 (emphasis added). With respect to another time interval, a “deny access time interval, ” the patent refers to it as “a time period.” Id. 14:4-6.

         The patent also provides specific examples of time intervals when access to the network could be granted or denied. See Id. 4:60-5:7 (noting that “[0000-0500 am] time intervals are typically off-peak intervals for most days of the year”) (emphasis added); id. 7:34-39 (noting “network provider may . . . charge . . . high rate for data sent outside the off-peak time . . . [which] only provides an incentive to not send data during the expensive peak hour”) (emphasis added). While the patent does not expressly define the term, the Court is persuaded by Plaintiffs' expert that a POSA would understand the meaning of this term from the patent's context as referring to a higher than average quantity of traffic in the network. (See D.I. 123 at 6-7) (citing D.I. 125 ¶¶ 31-38) The patent's reference to a certain network standard, “3 GGP TS 23.060 (Release 7), ” '667 patent, 2:25, provides additional support. (See D.I. 125 ¶ 38) (Plaintiffs' expert explaining that this standard shows POSA term relates to “time periods during which the network had entered a ‘congestion' condition”) In sum, Defendants have not met their burden to show by clear and convincing evidence that the term is indefinite.[7]

         C. The '091 Patent

         The '091 patent “relates to techniques for setting up calls consisting of voice and video data, [referred to as “mixed media data, ”] across telecommunications networks, and a hardware and software interface and method of operating” such calls. '091 patent, 1:20-27. Setting up a mixed media telecommunication call, according to the patent, involves “transferring communication between communication channels of differing bandwidth . . . .” Id. Abstract. This is accomplished, for example, by “establishing data communications” on two different channels with different bandwidths. See Id. (explaining that data communication is established “on a first channel having a first bandwidth” and “on a second channel in response to a trigger indicating changes in the data to be communicated, wherein the second channel has a bandwidth providing resources different from the first bandwidth of the first channel.”). The patent also allows a user to switch from a video call to a voice-only call. See Id. (“The method further comprises responding to the discontinuation of an in-progress mixed-media call that transmits data using a first and second media by initiating a second call not supporting the second media.”); see also Id. Fig. 2 (illustrating “call flow for switching from video to voice mode”).

         1.the release of the first call”[8]

Plaintiffs

Plain meaning; no construction necessary. Alternatively: “the termination of the first call”

Defendants

Indefinite

Court

“the termination of the first call”

         Defendants argue that the term is indefinite due to lack of an “antecedent basis for ‘the release,' as ‘a release' does not appear anywhere in the claims.” (D.I. 126 at 19) Plaintiffs argue that a POSA “would have no trouble ascertaining the scope of this claim.” (D.I. 123 at 19)

         A failure to provide antecedent basis does not necessarily render a claim indefinite. See Energizer Holdings, Inc. v. Int'l Trade Comm'n, 435 F.3d 1366, 1370 (Fed. Cir. 2006). If, “despite the absence of explicit antecedent basis . . . the scope of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not indefinite.” Id. at 1370-71 (internal quotation marks omitted); see also Nautilus, 134 S.Ct. at 2129 (holding that claims are not indefinite if, “viewed in light of the specification and prosecution history, [they] inform those skilled in the art about the scope of the invention with reasonable certainty”). Defendants must prove by clear and convincing evidence that the lack of antecedent basis leaves one of ordinary skill in the art unable to discern the boundaries of the claim “based on the claim language, the specification, the prosecution history, and the knowledge in the relevant art.” Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1366 (Fed. Cir. 2011) (internal quotation marks omitted).

         Here, the specification provides sufficient context for a POSA to understand the scope of the term with reasonable certainty despite the lack of an antecedent basis. The specification explains that the term simply means termination or end of the first call. See '091 patent, 8:13-16 (“If the caller selects voice mode, the calling videophone releases the video call and makes a new (voice) call to the same number as the original call. This will incur a delay as the radio connection must be released and re-established.”) (emphasis added); id. 11:31-32 (“A further variation could be to always release the first call before setting up the second.”) (emphasis added); id., 8:37-43 (explaining that in “networks where it is not possible to put data calls on hold, it is preferred that the method of FIG. 2 [illustrating ‘Release'] is used to transfer from video to voice.”). The Court also credits the testimony submitted by Plaintiffs' expert to support this position. (See D.I. 125 ¶¶ 84-87) The record does not contain clear and convincing evidence of indefiniteness.

         Defendants argue that Plaintiffs' construction adds ambiguity to the meaning of release and discontinuation. (See D.I. 126 at 19) The Court disagrees. As Plaintiffs' expert explains, (see D.I. 139 ΒΆΒΆ 31-32), the patent distinguishes between release and discontinuation, explaining that releasing a call and placing a call on ...


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