IN RE: MAXIM INTEGRATED PRODUCTS, INC. MDL No. 2354. This Document Relates to: All Actions.
JOY FLOWERS CONTI, Chief District Judge.
These are patent infringement cases, centralized in this court for coordinated and consolidated pretrial proceedings by order of the Panel on Multidistrict Litigation. (ECF No. 1.) Approximately twenty-five separate cases are currently proceeding at the miscellaneous number assigned to this MDL, 12-mc-244, to which all citations to the record refer. Prior to creation of the instant MDL, Maxim Integrated Products, Inc. ("Maxim") sued ten companies in the United States District Court for the Eastern District of Texas alleging patent infringement, and four companies brought declaratory judgment actions against Maxim in federal district courts in Colorado, Kansas and Pennsylvania seeking declarations of non-infringement and invalidity of the same patents. (Id.) All of these, and the later-joined, cases involve five related patents owned by Maxim directed to electronically performing secure transactions. Maxim alleges that various smartphone software applications, or "Apps, " infringe its patents. The companies accused of infringement, including those that initiated litigation by bringing declaratory judgment actions, are collectively referred to by this court as the Opposing Parties ("OPs").
Maxim specifically asserts that the OPs infringe five of its patents: United States Patent Nos. 5, 805, 702 (the "702 Patent", ECF No. 610 at JX-1), 5, 940, 510 (the "510 Patent", ECF No. 610 at JX-3), 5, 949, 880 (the "880 Patent", ECF No. 610 at JX-5), 6, 105, 013 (the "013 Patent", ECF No. 610 at JX-7), and 6, 237, 095 (the "095 Patent", ECF No. 610 at JX-9). These patents are all related. (ECF No. 691 at 2.) The 880 Patent issued from a divisional application of the 510 Patent. (Id.) The 702 Patent, 013 Patent and 095 Patent date back to a common provisional application and share a substantially similar specification. (Id.) The 013 Patent and 095 Patent incorporate by reference the 510 Patent. The 510 Patent and 880 Patent incorporate by reference the 702 Patent. (Id.)
The parties submitted a joint disputed claim terms chart originally identifying forty-three terms requiring construction by the court, (ECF No. 580), but later indicated that eight of the forty-three disputes had been resolved following claim construction briefing (ECF No. 677-1). Maxim filed an opening claim construction brief (ECF No. 634), to which the OPs filed a consolidated response (ECF No. 642). Maxim thereafter filed a reply brief. (ECF No. 651.) A subset of the OPs, referred to as the Joining Parties ("JPs"), filed a separate claim construction brief with respect to a single disputed claim term, i.e., "certificate, " (ECF No. 680), to which Maxim responded (ECF No. 686). A hearing was held before the Special Master and the court on September 12, 2013 (the "September Hearing"). (ECF No. 709 (Transcript).) Following the September Hearing, Maxim filed a supplemental brief with respect to a single disputed claim term, i.e., "packet." (ECF No. 687.)
On October 9, 2013, the Special Master filed a Report and Recommendation ("R&R") regarding claim construction, (ECF No. 691), which was later modified only as to the disputed claim term "microcontroller core" to correct a typographical error in the R&R (ECF No. 693). The OPs (ECF No. 704), Maxim (ECF No. 705), and the JPs (ECF No. 713) filed objections to the Special Master's R&R and responses to those objections (ECF Nos. 715, 714 and 718, respectively.) The court heard oral argument on the objections to the R&R on November 13, 2013 (the "November Hearing"). (ECF No. 726 (Transcript).)
The court reviewed the initial claim construction briefing and the briefing on the objections to the R&R and considered the arguments made and written materials submitted at the September and November Hearings and is prepared to issue its order on claim construction. In accordance with the court's previous order on post-claim construction scheduling, (ECF No. 724), Maxim's counsel is directed to file a version of that order listing dates certain for the various deadlines. The court will thereafter set a date for the Daubert hearing and post-discovery status conference.
I. LEGAL STANDARDS
A. Generally Applicable Principles of Claim Construction
Claim construction is a matter of law. Markman v. Westview Instruments, Inc. , 52 F.3d 967, 979 (Fed. Cir. 1995). "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) (en banc) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc. , 381 F.3d 1111, 1115 (Fed. Cir. 2004)). The 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 (citing Vitronics Corp. v. Conceptronic, Inc. , 90 F.3d 1576, 1582 (Fed Cir. 1996)); Innova/Pure Water , 381 F.3d at 1116. In arriving at this meaning, a court is to look first and foremost to the "intrinsic evidence, " which consists of the patent's claim language, the specification and written description, and the prosecution history, to determine the meaning of disputed claim terms. Phillips , 415 F.3d at 1311-17; Medrad, Inc. v. MRI Devices Corp. , 401 F.3d 1313, 1319 (Fed. Cir. 2005). The specification is the single best guide to the meaning of a disputed term, and is "usually... dispositive." Phillips , 415 F.3d at 1315 (quoting Vitronics , 90 F.3d at 1582).
Claim language guides the court's construction of claim terms. Phillips , 415 F.3d at 1314. Yet, the "claims cannot enlarge what is patented beyond what the inventor has described as the invention." Abbott Laboratories v. Sandoz, Inc. , 566 F.3d 1282, 1288 (Fed. Cir. 2009) (citing Biogen, Inc. v. Berlex Labs., Inc. , 318 F.3d 1132, 1140 (Fed. Cir. 2003)). The context in which a term is used not only in the asserted claims, but also in any claims that are not being asserted in a particular lawsuit, can be highly instructive because "terms are normally used consistently throughout the patent." Phillips , 415 F.3d at 1314. "The 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). Differences among claims, such as additional limitations in dependent claims, can provide further guidance. The doctrine of claim differentiation provides that the presence of a dependent claim that adds a particular limitation raises a rebuttable presumption that the limitation in question is not found in the independent claim. Wenger Mfg., Inc. v. Coating Mach. Sys., Inc. , 239 F.3d 1225, 1233 (Fed. Cir. 2001). Although the doctrine is at its strongest "where the limitation sought to be read into' an independent claim already appears in a dependent claim, " there is still a presumption that two independent claims have different scope when different words or phrases are used in those claims. Seachange Int'l Inc., v. C-COR, Inc. , 413 F.3d 1361, 1368 (Fed. Cir. 2005) (citing cases). "However, the doctrine, only creates a presumption that each claim in a patent has a different scope.'" Id. at 1369 (quoting Kraft Foods, Inc. v. Int'l Trading Co. , 203 F.3d 1362, 1368 (Fed. Cir. 2000)).
Claims are always to be read in view of the specification, of which they are a part. Markman , 52 F.3d at 979. "The person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Phillips , 415 F.3d at 1313. Moreover, "where the ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of the claim to be ascertained from the words alone" the specification can provide clarity. Teleflex. Inc. v. Ficosa N. Am. Corp. , 299 F.3d 1313, 1325 (Fed. Cir. 2002). In the specification, a patentee may define his own terms, give a claim term a different meaning than it would otherwise possess, or disclaim or disavow some claim scope. Id. at 1316. Although a court generally presumes terms possess their ordinary meaning, this presumption can be overcome by statements of clear disclaimer, SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc. , 242 F.3d 1337, 1343-44 (Fed. Cir. 2001), or when the patentee acts as his own lexicographer. Irdeto Access, Inc. v. EchoStar Satellite Corp. , 383 F.3d 1295, 1301 (Fed. Cir. 2004).
"Although the specification may aid the court in interpreting the meaning of disputed language in the claims, particular embodiments and examples appearing in the specification will not generally be read into the claims." Constant v. Advanced Micro-Devices, Inc. , 848 F.2d 1560, 1571 (Fed. Cir. 1988); see also Phillips , 415 F.3d at 1323. Nonetheless, "[a] claim interpretation that excludes a preferred embodiment from the scope of the claim is rarely, if ever, correct.'" Globetrotter Software, Inc. v. Elam Computer Grp. Inc. , 362 F.3d 1367, 1381 (Fed. Cir. 2004) (quoting Vitronics Corp ., 90 F.3d at 1583). Even if a patent describes only a single embodiment, the claims of the patent must not be construed as being limited to that embodiment unless the patentee has demonstrated a clear intention to limit the claim scope using "words or expressions of manifest exclusion or restriction." Phillips , 415 F.3d at 1323; Liebel-Flarsheim Co. v. Medrad, Inc. , 358 F.3d 898, 906 (Fed. Cir. 2004) (citing cases); Teleflex , 299 F.3d at 1327. The purpose of the specification is "to teach and enable those of skill in the art to make and use the invention" and sometimes, the best way to do that is to provide an example. Teleflex , 299 F.3d at 1327. Although the Court of Appeals for the Federal Circuit acknowledges that "the distinction between using the specification to interpret the meaning of a claim and importing limitations from the specification into the claim can be a difficult one to apply in practice, " it instructs courts to maintain their focus on how a person of ordinary skill in the art would understand the claim terms. Id.
The prosecution history is another tool that supplies the proper context for claim construction. Home Diagnostics Inc. v. LifeScan, Inc ., 381 F.3d 1352, 1356 (Fed. Cir. 2004). Because the file history "represents an ongoing negotiation between the [United States Patent and Trademark Office ("PTO")] and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful in claim construction proceedings." Phillips , 415 F.3d at 1317. Nevertheless, the prosecution history is intrinsic evidence that is relevant to the determination of how the inventor understood the invention and whether the inventor limited the invention during prosecution by narrowing the scope of the claims. Id . Where an applicant limits claim scope during prosecution through a "clear disavowal of claim coverage, such as an amendment to overcome a rejection, " the well-established doctrine of prosecution disclaimer "preclud[es] patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution." Amgen Inc. v. Hoechst Marion Roussel, Inc. , 314 F.3d 1313, 1327 (Fed. Cir. 2003) (citing York Prods., Inc. v. Central Tractor Farm & Fam. Ctr. , 99 F.3d 1568, 1575 (Fed. Cir. 1996)); Omega Eng'g Inc. v. Raytek Corp. , 334 F.3d 1314, 1323 (Fed. Cir. 2003). By distinguishing the claimed invention over the prior art, an applicant is indicating what the claims do not cover. Spectrum Int'l v. Sterilite Corp. , 164 F.3d 1372, 1378-79 (Fed. Cir. 1988) (quotation omitted). In order for the doctrine to apply, however, the prosecution history must show that the patentee clearly, unambiguously and unmistakably disclaimed or disavowed the proposed interpretation during prosecution in order to obtain claim allowance. Middleton Inc. v. 3M Co. , 311 F.3d 1384, 1388 (Fed. Cir. 2002); Cordis Corp. v. Medtronic AVE, Inc. , 339 F.3d 1352, 1358 (Fed. Cir. 2003); Schindler Elevator Corp. v. Otis Elevator Co. , 593 F.3d 1275, 1285 (Fed. Cir. 2010).
Phillips rejected any claim construction approach that sacrificed the intrinsic record in favor of extrinsic evidence, such as dictionary definitions or expert testimony. Phillips , 415 F.3d at 1319-24. Still, though "less significant than the intrinsic record in determining the legally operative meaning of claim language, " a court may rely on extrinsic evidence to "shed useful light on the relevant art." Id. at 1317 (quotation omitted). Technical dictionaries and treatises may help the court understand the underlying technology and the manner in which one skilled in the art might use claim terms, but such sources may also provide overly broad definitions or may not be indicative of how terms are used in the patent. Id. at 1318. Similarly, expert testimony may aid the court in determining the particular meaning of a term in the pertinent field, but "conclusory, unsupported assertions by experts as to the definition of a claim term are not useful." Id . Generally, extrinsic evidence is "less reliable than the patent and its prosecution history in determining how to read claim terms." Id.
Patent claims must particularly point out and distinctly claim the subject matter regarded as the invention. 35 U.S.C. § 112, ¶ 2. Whether a claim meets this definiteness requirement is a question of law. Amgen Inc. v. F. Hoffman-LA Roche Ltd. , 580 F.3d 1340, 1371 (Fed. Cir. 2009); Young v. Lumenis, Inc. , 492 F.3d 1336, 1344 (Fed. Cir. 2007). The primary purpose of the definiteness requirement is to ensure that the claims are written in such a way that they give notice to the public of the extent of the legal protection afforded by the patent so that interested members of the public, e.g., competitors of the patent owner, can determine whether or not they infringe. All Dental Prodx, LLC v. Advantage Dental Prods., Inc. , 309 F.3d 774, 779-80 (Fed. Cir. 2002) (citing Warner-Jenkinson Co. v. Hilton Davis Chem. Co. , 520 U.S. 17, 28-29 (1997)). In other words, "[a] patent holder should know what he owns, and the public should know what he does not." Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. , 535 U.S. 722, 731 (2002).
An accused infringer must demonstrate by clear and convincing evidence that one of ordinary skill in the relevant art could not discern the boundaries of the claim based upon the claim language, the specification, the prosecution history, and the knowledge in the relevant art in order to meet the "exacting standard" to prove indefiniteness. Halliburton Energy Servs., Inc. v. M-I LLC , 514 F.3d 1244, 1249-50 (Fed. Cir. 2008). "Only claims not amenable to construction' or insolubly ambiguous' are indefinite." Id. at 1250 (quoting Datamize, LLC v. Plumtree Software, Inc. , 417 F.3d 1342, 1347 (Fed. Cir. 2005)). Where "one skilled in the art would understand the bounds of the claim when read in light of the specification" the claim is sufficiently definite. Exxon Research & Eng'g Co. v. United States , 265 F.3d 1371, 1375 (Fed. Cir. 2001). The ultimate issue is whether someone working in the relevant technical field could understand the bounds of a claim. Haemonetics Corp. v. Baxter Healthcare Corp. , 607 F.3d 776, 783 (Fed. Cir. 2010). Where "the meaning of a claim is discernible, even though the task may be formidable and the conclusion may be one over which reasonable persons will disagree, " the claims are sufficiently clear to avoid invalidity on indefiniteness grounds. Exxon Research , 265 F.3d at 1375. This approach "accord[s] respect to the statutory presumption of patent validity.... and... protect[s] the inventive contribution of patentees, even when the drafting of their patents has been less than ideal." 35 U.S.C. § 282; Datamize , 417 F.3d at 1347-48.
II. CONSTRUCTION OF DISPUTED CLAIM TERMS
For ease of reference, the court addresses the disputed claim terms in the order that they appear in the R&R, (ECF No. 691), and by reference to the number assigned to the claim term by the Special Master. The court discusses each disputed claim term, or group of closely related terms, in a separate section below. Each section begins with an individual claim construction chart that lists, in the first column, the number assigned to the term by the Special Master in the R&R. The second column of each chart recites the disputed claim term and makes parenthetical reference, following the claim term, to the number at which that disputed claim term appeared in the parties' joint disputed claim terms chart. (ECF No. 677-1.) Each individual claim construction chart next includes a column listing the patent number and claim number at which the disputed claim term is found, followed by this court's claim construction in the last column.
The court uses bold typeface where its construction differs from, or adds to, the Special Master's recommended construction. In some instances, the court suggests, in footnotes, curative jury instructions that may be required under certain circumstances. The court does so in order to recognize that this is an MDL proceeding, and that this court may not preside over the jury trial in a particular case. By doing so, the court does not indicate that any party is authorized purposefully to submit evidence or present argument that contradicts this court's claim construction. The court, however, includes these curative instructions out of an abundance of caution and for the purpose of ensuring clarity when the cases centralized here are returned to their home courts.
A. First Claim Construction Chart
R&R# Term (Chart #) Patent/Claim Construction 1(a) "first data" (#12) 510/1 no construction required 1(a) "first data" "second data" (#12) 095/1 no construction required 1(b) "units of exchange" (#34) 880/1 no construction required 1(b) "value datum" (#34) 880/1 data that can be exchanged [as payment] for goods and services, the data representing a value for money, credit or other items 1(c) "first portable module" (#13) 510/1 no construction required
Very generally, the disputes concerning each of these terms center on whether the patent claims are limited only to monetary transactions. The court agrees with the Special Master's fundamental conclusion that although the 880 Patent's "value datum" term indicates a monetary, or other credit, transaction, the other terms, and patents, are not so limited.
The OPs object to the Special Master's conclusion that the terms "first data, " "second data" and "first portable module" need not be construed, and are not limited to monetary transactions. (ECF No. 704 at 3-7.) The OPs' arguments that the 095 and 510 Patents must be limited to transactions that involve cash, or cash equivalents, are not persuasive.
The Special Master explained that the doctrine of claim differentiation, the permissive language used in the claims and the rest of the specification, and the file history of the 095 Patent demonstrate that the claims of the 095 Patent are not limited to cash exchanges. (ECF No. 691 at 13-14). The court agrees with this analysis and adopts it.
With respect to the 510 Patent, the court rejects the OPs' argument that the patentees redefined the term "data" to mean "monetary value" because the patent lacks a legally sufficient clear statement of lexicography. Intellicall, Inc. v. Phonometrics. Inc. , 952 F.2d 1384, 1388 (Fed. Cir. 1992); (ECF No. 691 at 14-15.) The OPs' lexicographer argument is also contradicted explicitly by the 510 Patent's file history. During prosecution of the 510 Patent, the PTO examiner identified two distinct inventions in the originally filed claims of the 510 Patent; one directed toward "a system for communicating data securely, " and one directed toward "a method for electronically transferring units of exchange." (ECF No. 610 at JX-4, 244MAX001038-43, 1071.) The "system for communicating data securely" invention became the 510 Patent, while the "method for electronically transferring units of exchange" invention became the 880 Patent. The court cannot conclude that the patentees defined "data" in the 510 Patent to mean "monetary value" in the context of this file history. Finally, under controlling precedent, this court cannot limit the claims of the 510 Patent to a preferred embodiment, even if there is only one, unless the patentee demonstrated a clear intention to limit the claim scope using "words or expressions of manifest exclusion or restriction." Teleflex , 299 F.3d at 1327. Again, in the entire context of the 510 Patent, the court cannot conclude that the patentees demonstrated such a clear intention to limit their claims. Based upon the 510 Patent's specification and file history, which claims the broader invention directed toward "a system for communicating data securely, " the court cannot conclude that the 510 Patent is limited to monetary transactions. (ECF No. 691 at 13-14, 15.)
In addition, the incorporation by reference in the 510 Patent of the 702 Patent supplies further support for the conclusion that the 510 Patent does not manifest an intent to exclude non-monetary embodiments. (ECF No. 610 at JX-3, 1:7-16.) The 702 Patent includes numerous embodiments that are unrelated to monetary transactions. (Id. at JX-1, 4:45-7:50, 13:51-16:19.) For the first time in their objections to the R&R, the OPs argue that the patentees' statement of incorporation is ineffective and, that, even if it were proper, an incorporated patent cannot be considered for purposes of construing the terms of the host patent. (ECF No. 704 at 6.) The court disagrees. As an initial matter, the statement of incorporation in the 510 Patent meets the standards and requirements set forth in the applicable regulations and PTO procedures. 37 C.F.R. § 1.57(c); Manual of Patent Examining & Procedure (MPEP), 6th ed. §§ 608.01(p), 2163.07(b) (Sep. 1995); Dealertrack, Inc. v. Huber , 674 F.3d 1315, 1323 (Fed. Cir. 2012). It follows that the 702 Patent "is as much a part of the [510 Patent] as if the text was repeated in [the 510 Patent]." MPEP § 2163.07(b).
None of the decisions cited by the OPs, in either their briefing or in the materials submitted at the November Hearing, indicate that this court is prohibited from considering the 702 Patent in construing the claims of the 510 Patent. Young Dental Mfg. Co. v. Q3 Special Prods. , 112 F.3d 1137, 1143 (Fed. Cir. 1997) (distinguishable at least because the court addressed differing specifications in a parent and continuation-in-part patent); SanDisk Corp. v. Kingston Tech. Co. , 695 F.3d 1348, 1366 (Fed. Cir. 2012) (distinguishable at least because the court addressed how the disclosure-dedication rule applied to incorporated subject matter); Modine Mfg. Co. v. ITC , 75 F.3d 1545, 1552 (Fed. Cir. 1996) (distinguishable at least because the host patent explicitly replaced value assigned to the term in controversy in the incorporated patent with a different value); Zenon Env't, Inc. v. United States Filter Corp. , 506 F.3d 1370, 1378-1379 (Fed. Cir. 2007) (distinguishable at least because the court addressed effect of language of incorporation that was specific, instead of general); Helicos Biosciences Corp. v. Illumina, Inc. , 888 F.Supp.2d 519, 533 (D. Del. 2012) (not controlling authority and distinguishable at least because the court addressed effect of incorporated subject matter on anticipation analysis); Biogen Idec, Inc. v. GlaxoSmithKline LLC , 713 F.3d 1090, 1097 (Fed. Cir. 2013) (distinguishable at least because prosecution history disclaimer applied). The various non-monetary embodiments described in the 702 Patent can be considered in construing the terms of the 510 Patent and support the conclusion that the 510 Patent is not limited to monetary transactions.
Once the OPs' arguments in favor of limiting the claims of the 510 and 095 Patents to monetary exchange transactions are rejected, it follows that the terms "first data, " "second data" and "first portable module" need no further construction. The jury will be well-equipped to understand each of these terms as they are used in the context of the asserted claims of the patents.
The analysis with respect to the terms "value datum" and "units of exchange" in the 880 Patent is different. To be clear at the outset, the OPs have not objected to the Special Master's construction of "value datum, " (ECF No. 704), and Maxim has done so only by way of reference to its initial claim construction briefing, in which it contended that the term need not be construed at all (ECF No. 634 at 57-59; ECF No. 705 at 8). Maxim does not object to the Special Master's failure to construe the term "units of exchange, " (ECF No. 705), and the OPs do so only by way of a chart incorporating their initial claim construction briefing. (ECF No. 704-1.) With respect to the term "value datum" the original dispute between the parties was whether the term must constitute legal tender itself, or merely represent a unit of exchange. (ECF No. 691 at 16-19.) The Special Master concluded that "value datum" could be a representation of money, or some other form of credit, but had to be exchangeable for goods or services. (Id. at 21.) The parties are largely in agreement with the Special Master's recommended construction, and the court adopts it, in large part. The record indicates that the "value datum" must be exchangeable, but need not necessarily be, or represent only, cash, as opposed to some other form of credit. The court has removed the words "as payment" from the Special Master's recommended construction in order to avoid any possible unintended implication that the term is limited to transactions in which cash is directly exchanged for goods or services.
The Special Master concluded that the term "units of exchange" need not be construed because it is found in the preamble and is non-limiting with respect to the subsequent steps of the method claim. (Id. at 19-20.) The court reviewed the OPs' original arguments about the term "units of exchange, " but agrees with the Special Master's conclusion that the term need not be construed, for the reasons set forth in the R&R.
B. Second Claim Construction Chart
R&R# Term (Chart #) Patent/Claim Construction "portable module reader that 2 can be placed in communication 510/1 no construction required with said first portable module" (#21)
The Special Master recommended that this term be construed to mean "a device that can be placed in communication with the first portable module to read data from the portable module." (ECF No. 691 at 26-27.) The OPs object to the Special Master's construction, which rejects their argument that the phrase "placed in communication with" requires that two items physically touch or at least be in close proximity to each other. (ECF No. 704 at 16-18.) The court agrees with the Special Master's conclusion that the 510 Patent does not require proximity or physical touching of the "first portable module" and the "portable module reader." The specifications of the 510 Patent and the 702 Patent describe various ways that these two items can communicate, which include use of a wireless communication system or a network. (ECF No. 610 at JX-3, 2:45-58; JX-1, 11:42-59.) The phrase "placed in communication with" is related to and derivative of those forms of communication, and the OPs failed to convince the court otherwise.
Although "placed" can indicate physical contact between two items, e.g., "she placed the glass on the table, " it need not only refer to physical contact; e.g., "the real estate broker placed the buyers in contact with a reputable contractor." Notably, the phrase used in the patents is actually "placed in communication with." Communication does not inherently require physical contact or even proximity, and the patents acknowledge and disclose this precise concept by making reference to networks and wireless systems. The intrinsic record does not limit the term to forms of communication that require physical contact or proximity.
The court considered the OPs' prosecution history disclaimer argument, and finds that the statements referenced do not rise to the level of clear and unmistakable disavowals. (ECF No. 704 at 18-19.) In order for the doctrine to apply, the prosecution history must show that the patentee clearly, unambiguously, and unmistakably disclaimed or disavowed the proposed interpretation during prosecution in order to obtain claim allowance. Schindler Elevator , 593 F.3d at 1285; Cordis , 339 F.3d at 1358; Middleton , 311 F.3d at 1388. The November 8, 1998 amendment's general reference to "locations that have a portable module reader" and its replacement of "able to communicate with" with "placed in communication with" do not reflect that the patentees limited their invention to physical proximity between the portable module and the portable module reader in order to obtain allowance. (ECF No. 704 at 18-19.) The OPs failed to meet the requirements for applying prosecution history disclaimer.
Although the court agrees with the Special Master's analysis, the court finds that a jury would not require any special construction of this phrase in order to decide questions of infringement or invalidity. The phrase will be readily understandable to a jury in the context of the related claim language. The court's differing approach to construction of this term from the Special Master's recommendation is noted in bold typeface, for ease of reference only, in the above individual claim construction chart. The Special Master's analysis is otherwise adopted by the court.
C. Third Claim Construction Chart
R&R# Term (Chart #) Patent/Claim Construction 510/1 an integrated hardware circuit 3 "microcontroller" (#16) 013/1&9 including a processor, memory and input/output
Maxim objects to the Special Master's recommended construction, but only by way of incorporation of its original claim construction briefing. (ECF No. 705 at 8.) Similarly, the OPs object only by way of a chart attached as an appendix to their objection brief, which likewise incorporates their original claim construction briefing. (ECF No. 704-2.) The original disputes regarding construction of this term were whether the microcontroller of the 510 and 013 Patents must: (1) be on a single integrated circuit; and (2) be used for a single purpose or application. The Special Master answered the first question in the affirmative and the second question in the negative. (ECF No. 691 at 29-30.) Nothing in the parties' initial briefing convinces the court that the Special Master erred.
The court agrees with the Special Master's analysis and conclusion, and adopts them without modification.
D. Fourth Claim Construction Chart
R&R# Term (Chart #) Patent/Claim Construction "math coprocessor... for a processor that works with 4 processing encryption 510/1 another processor processing calculations" (#7) complex mathematics of encryption "math coprocessor... for handling a processor that works with 4 complex mathematics of 013/1 another processor handling encryption and decryption" (#7) complex mathematics of encryption and decryption "modular exponentiation a processor that works with accelerator circuit... for another processor performing 4 performing encryption and 013/9 complex mathematics of modular decryption calculations" (#8) exponentiation for encryption and decryption 4 "coprocessor circuit" (#6) 095/1 A processor that works with another processor
Maxim does not object to the Special Master's recommended construction of these terms. The OPs object, but only by way of a chart attached as an appendix to their objection brief that incorporates their original claim construction briefing. (ECF No. 704-1.) In short, the OPs contend that these coprocessors must be distinct from and run concurrently with another processor. (ECF No. 642 at 31-33.) The Special Master rejected both of these positions and the court adopts the reasoning set forth in the R&R. (ECF No. 691 at 35.)
The OPs' remaining arguments are that all referenced coprocessors must be dedicated to performing modular exponentiation for the purpose of encryption and decryption. (ECF No. 642 at 33-36.) The Special Master properly rejected these arguments, concluding that claim differentiation applied and prosecution history disclaimer did not. (ECF No. 691 at 34-36.) The Special Master also accurately considered the structure and content of the specifications in construing these terms. (Id.) The OPs' original briefing provides no reason for this court to disagree with the Special Master's analysis or conclusion.
Therefore, the court adopts the Special Master's recommended construction of these terms, with slight modification to the third term for purposes of consistency, as noted with bold typeface in the above ...