United States District Court, W.D. Pennsylvania
KANGAROO MEDIA, INC., and IMMERSION ENTERTAINMENT, LLC, Plaintiffs,
YINZCAM, INC., Defendant.
JOY FLOWERS CONTI, District Judge.
This is a patent case involving four related patents: United States Patent No. 7, 210, 160 (the "160 Patent"), United States Patent No. 8, 239, 910 (the "910 Patent"), United States Patent No. 7, 859, 597 (the "597 Patent"), and United States Patent No. 8, 253, 865 (the "865 Patent"). Plaintiff Immersion Entertainment, LLC is the owner of the four patents, by assignment, and each patent is exclusively licensed to Kangaroo Media, Inc. (collectively, "Kangaroo"). (ECF No. 51 at ¶¶ 2-5.) Kangaroo alleges that defendant YinzCam, Inc. ("YinzCam") infringes various claims of each patent.
I. Procedural History
On October 17, 2012, the court referred claim construction to Special Master Gale Peterson (the "Special Master"). (ECF No. 53.) The parties identified ten claims requiring construction, (ECF No. 62), and submitted briefing on those terms, (ECF Nos. 66-70). The Special Master and court held a claim construction hearing on January 29, 2013. (ECF No. 72.) The Special Master filed his Report and Recommendation ("R&R") on February 5, 2013. (ECF No. 71.)
Both YinzCam and Kangaroo filed objections to the R&R on February 19, 2013. (ECF Nos. 73, 75.) Responses to the objections were filed on March 5, 2013. (ECF Nos. 76-77.) While the Special Master's R&R and the parties' objections to it were under advisement by the court, the parties filed a joint motion to stay all proceedings in this matter, pending settlement discussions. (ECF No. 78.) The court granted the motion, and directed the parties to advise the court with respect to the progress of settlement negotiations no later than June 7, 2013. (ECF No. 79.) The parties so-advised the court, and thereafter filed six additional motions to stay the case to allow settlement negotiations to proceed. (ECF Nos. 80, 82, 84, 86, 88, and 90.) In each instance the court granted to motion, but required the parties to advise the court of the status of settlement negotiations by a date-certain, usually within a period of one or two months. (ECF Nos. 81, 83, 85, 87, 89, and 91.)
On June 16, 2014, the parties filed a joint motion to lift the stay, indicating that the "parties have not completed [a settlement] agreement" and asking that the stay be lifted and a scheduling conference be held following the court's entry of a claim construction order. (ECF No. 93.) On July 3, 2014, the court lifted the stay. (7/3/2014 Text Order.) A ruling on claim construction is now necessary.
II. The Objections and Claim Construction
YinzCam objects to the Special Master's recommended construction of the following claim terms: (1) "channel/channels;" (2) the "broadcast" terms; (3) "programmable portable receivers"/"programmable receiver;" (4) "upgrade, update, alteration, or modification to the device(s);" (5) "wirelessly receiv[e/ing]"/transmitted wirelessly/wirelessly transmitted/transmitting;" and "communications network." (ECF No. 73.) Kangaroo objects to the Special Master's recommended construction of two groups of "selecting" terms. (ECF No. 75.)
The court reviewed the claim construction briefing, the R&R, and the briefing on the parties' objections, and adopts the R&R, largely without alteration. An order will be filed contemporaneously with this opinion setting forth the court's final claim construction of each disputed claim term. No party will be permitted to argue its rejected claim construction position to the jury. O2 Micro Int'l, Ltd. v. Beyond Innovation Tech. Co. , 521 F.3d 1351, 1361 (Fed. Cir. 2008). The court will not repeat this principle with respect to each disputed claim term, but it applies with equal force throughout this opinion.
The primary dispute between the parties with respect to these disputed claim terms is whether channels can be distinguished only by different frequencies. YinzCam argues that the Special Master disregards the way in which the terms are used throughout the specification, resulting in an erroneous recommended construction. (ECF No. 73 at 2.) According to YinzCam the court should look to exemplary embodiments from the specifications, and limit the claims. YinzCam reviews several examples of how the terms "channel" and "channels" are used in the specification, and alleges that these proffered examples indicate that Kangaroo intended to use the term "channels" to refer to "channels based on frequencies." ( Id. at 4.)
YinzCam made these same arguments in its claim construction briefing. (ECF No. 68.) Although the Court of Appeals for the Federal Circuit has noted that the specification "is the single best guide to the meaning of a disputed term, " Phillips v. AWH Corporation , 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc), it also "expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment." Id. at 1323. The court finds that the Special Master appropriately reviewed the context of the claim language and the specification, and came to the proper conclusion that the "channel" terms are not limited to frequencies. (ECF No. 71 at 25-30.)
Aside from its specification-based argument, YinzCam contends that the term "channel" has an established meaning in the field of communications as a frequency that carries a signal with content unique to that frequency. (ECF No. 68 at 9-10.) Both Kangaroo and YinzCam rely on the same extrinsic sources to support their preferred definition of "channel, " but selectively quote from those sources. (ECF No. 71 at 25-26.) The court concurs with the Special Master's conclusion that there is not one "ordinary and customary" meaning of the term "channel" and that frequency allocation is just one method of electronically separating content. ( Id. at 29.) YinzCam's suggested definition, which restricts the term to frequency allocation, is only one way to separate channels. (Id.) The Special Master properly considered the dictionary definitions offered by both parties in making his decision, and the court concurs with that analysis.
YinzCam argues that the Special Master erred in considering the prosecution history evidence, and that such evidence cannot be used to modify what is described in the specification. (ECF No. 73 at 10.) As the Special Master noted, the Court of Appeals for the Federal Circuit, however, has found that "the 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." Phillips , 415 F.3d at 1323-24. Here, the Special Master found that the prosecution history confirmed that Kangaroo intended for frequency to be only one of several technologies for differentiating content. (ECF No. 71 at 23.) The court concurs, but finds that reliance on the prosecution history to define these terms is not necessary. That history does, however, reflect that time division multiplexing, frequency division multiple access, and code division multiple access were other methods of electrical separation of channels known in the art at the time of the invention. (ECF No. 66-11 at 17; ECF No. 71 at 29.) The court agrees with the Special Master that nothing in the patents affirmatively restricts "channels" to frequency allocations, and that there is no evidence that Kangaroo disclaimed patent scope or acted as its own lexicographer during prosecution. (ECF No. 71 at 31-40.)
The court finds that the Special Master conducted a detailed and thorough review of these disputed claim terms and adopts the recommended constructions, with non-substantive changes. The terms "channel" and "channels" in claims 1, 7, 20, 33 of the 160 patent, in claims 22 and 23 of the 597 patent, and in claims 2 and 20 of the 865 patent are construed to mean "a pathway for information from a sender to a receiver, which may be, but is not required to be, distinguished by frequency."
(2) "broadcast area"/"broadcasting"/"broadcast"/"wireless transmitter with a broadcast area"/"transmitting said [audio/video] ...