The opinion of the court was delivered by: MARTIN JENKINS, District Judge
Before the Court are the parties' proposed constructions of
disputed terms contained in three of PCTEL, Inc.'s ("PCTEL")
patents. The patents-in-suit describe and claim technology used
This case concerns the alleged infringement of U.S. Patent
Number 4,841,561 (the "'561" patent) entitled "Operating Default
Group Selectable Data Communication Equipment," U.S. Patent
Number 5,931,950 (the "'950" patent) entitled "Wake-Up-On-Ring
Power Conservation for Host Signal Processing Communication
System," and U.S. Patent Number 6,493,780 (the "'780" patent)
entitled "Wake-Up-On-Ring Power Conservation for Host Signal
Processing Communication System." PCTEL alleges that Agere
Systems, Inc. and Lucent Technologies, Inc. (collectively
"Agere"), have infringed each of the three patents. PCTEL also
alleges that U.S. Robotics Corporation ("USR") infringed the '561
patent. The issue before the Court is the construction of disputed terms contained in the patents.
A modem allows one or more electronic devices to communicate
over telephone lines. Electronic devices that employ modems
include personal computers, notebook computers and specialized
computers such as ATM machines and cable TV set-top boxes. Modems
are used to transmit computer signals over telephone lines
because telephone lines are designed for analog signals, not
digital signals. Modems receive digital signals from a computer
and "modulate" the computer signals so that the signals have
electrical characteristics suitable for transport over the
telephone network as analog signals. In the other direction,
modems receive analog signals from a telephone line and
"demodulate" analog signals into digital signals that a computer
understands. Modem is a contraction of "modulation" and
The '561 patent claims a multi-country modem feature so that a
single modem can be used in multiple countries. In the
mid-1980's, different countries had different requirement for
connecting to and communicating over their telephone lines. For
example, some of the parameters that varied by country were: 1)
the make/break ratio; 2) guard tone; 3) line impedance; and 4)
transmit line signal level. The '561 patent included the
parameters for desired countries and when a desired country is
selected, the patented feature loads the proper parameters,
properly configuring the modem for the selected country.
Thus, the '561 patent permits portable computer users to use
their modem in foreign countries. This multi-country support also
allows desktop, server and specialized computer manufactures to
sell throughout the world a computer with a modem, which may be
sold and used in different countries.
The '950 and'780 patents describe and claim a host signal
processing ("HSP") modem that permits a host computer to enter a
power savings state, while retaining the ability for the HSP
modem to receive an incoming telephone or modem call.
As computers became faster and more powerful, they consumed
correspondingly greater amounts of electricity. Computer
manufactures developed techniques for reducing the power consumption of their products. To overcome this problem, the
inventor of the '950 and '780 patents invented a modem that
allows a power management system to place a computer in
power-saving mode when there is no active connection, yet still
allows the modem to respond to incoming calls. Thus, in sum, with
the use of the claimed invention of the '950 and '780 patents,
the host computer is capable of entering a sleep mode, and unlike
prior HSP modem systems, still handle incoming calls.
The construction of a patent claim is a matter of law for the
Court. Markman v. Westview Instruments, Inc., 517 U.S. 370, 372
(1996). The Court must conduct an independent analysis of the
disputed claim terms. It is insufficient for the Court to simply
choose between the constructions proposed by the adversarial
parties. Exxon Chem. Patents v. Lubrizol Corp., 64 F.3d 1553,
1555 (Fed. Cir. 1995). To determine the meaning of a patent
claim, the Court considers three sources: the claims, the
specification, and the prosecution history. Markman v. Westview
Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en
banc), aff'd, Markman, 517 U.S. 370.
The Court looks first to the words of the claims. Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
1996). "Although words in a claim are generally given their
ordinary and customary meaning, a patentee may choose to be his
own lexicographer and use terms in a manner other than their
ordinary meaning, as long as the special definition of the term
is clearly stated in the patent specification or file history."
Id. (citation omitted). "A technical term used in a patent
document is interpreted as having the meaning that it would be
given by persons experienced in the field of the invention,
unless it is apparent from the patent and the prosecution history
that the inventor used the term with a different meaning."
Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1578
(Fed. Cir. 1996). The doctrine of claim differentiation creates
the presumption that limitations stated in dependent claims are
not to be read into the independent claim from which they depend
because different language used in separate claims is presumed to
indicate that the claims have different meanings and scope.
Tandon Corp. v. U.S. International Trade Com., 831 F.2d 1017,
1023 (Fed. Cir. 1987).
Second, it is always necessary to review the specification to
determine whether the inventor has used any terms in a manner inconsistent with their ordinary
meaning. Vitronics, 90 F.3d at 1582. The specification can act
as a dictionary when it expressly or impliedly defines terms used
in the claims. Id. Because the specification must contain a
description of the invention that is clear and complete enough to
enable those of ordinary skill in the art to make and use it, the
specification is the single best guide to the meaning of a
disputed term. Id. The written description part of the
specification itself does not delimit the right to exclude,
however; that is the function and purpose of claims. Markman,
52 F.3d at 980.
Third, the court may consider the prosecution history.
Vitronics, 90 F.3d at 1582. "Although the prosecution history
can and should be used to understand the language used in the
claims, it too cannot enlarge, diminish, or vary the limitations
in the claims." Markman, 52 F.3d at 980 (internal quotation
marks deleted) (citations omitted). However, a concession made or
position taken to establish patentability in view of prior art on
which the examiner has relied, is a substantive position on the
technology for which a patent is sought, and will generally
generate an estoppel. In contrast, when claim changes or
arguments are made in order to more particularly point out the
applicant's invention, the purpose is to impart precision, not to
overcome prior art. Such prosecution is not presumed to raise an
estoppel, but is reviewed on its facts, with the guidance of
precedent. Pall Corp. v. Micron Separations, Inc.,
66 F.3d 1211, 1220 (Fed. Cir. 1995) (citations omitted).
Ordinarily, the Court should not rely on expert testimony to
assist in claim construction, because the public is entitled to
rely on the public record of the patentee's claim (as contained
in the patent claim, the specification, and the prosecution
history) to ascertain the scope of the claimed invention.
Vitronics, 90 F.3d at 1583. "[W]here the public record
unambiguously describes the scope of the patented invention,
reliance on any extrinsic evidence is improper." Id. Extrinsic
evidence should be used only if needed to assist in determining
the meaning or scope of technical terms in the claims, and may
not be used to vary or contradict the terms of the claims. Id.
(quoting Pall Corp., 66 F.3d at 1216); Markman,
52 F.3d at 981.
The Court "is free to consult technical treatises and
dictionaries at any time, however, in order to better understand
the underlying technology and may also rely on dictionary
definitions when construing claim terms, so long as the
dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents."
Vitronics, 90 F.3d at 1584 n. 6. The Court also has the
discretion to admit and rely upon prior art proffered by one of
the parties, whether or not cited in the specification or the
file history, but only when the meaning of the disputed terms
cannot be ascertained from a careful reading of the public
record. Id. at 1584. Referring to prior art may make it
unnecessary to rely on expert testimony, because prior art may be
indicative of what all those skilled in the art generally believe
a certain term means. Id. Unlike expert testimony, these
sources are accessible to the public prior to litigation to aid
in determining the scope of an invention. Id.
Disputed claim terms are construed consistently across all
claims within a patent. Southwall Techs., Inc. V. Cardinal IG
Co., 54 F.3d 1570, 1579 (Fed. Cir. 1995). Where patents-in-suit
share the same disclosures, common terms are construed
consistently across all claims in both patents. Mycogen Plant
Sci., Inc. v. Monsanto Co., 252 F.3d 1306, 1311 (Fed. Cir. 2001)
(overruled on other grounds).
"The subjective intent of the inventor when he used a
particular term is of little or no probative weight in
determining the scope of a claim (except as documented in the
prosecution history)." Markman, 50 F.3d at 985 (citation
omitted). "Rather the focus is on the objective test of what one
of ordinary skill in the art at the time of the invention would
have understood the term to mean." Id. at 986.
The following is a list of eleven terms identified by the
parties in the March 16, 2005 Revised Joint Claim Construction
and Prehearing Statement:
1) memory means
2) hardware related [operating] parameter
3) changing a [the] hardware configuration
4) means for changing a [the] hardware configuration
5) to assume a proper configuration
6) host signal processing [communication system/modem]
7) host processor 8) periodically asserts a first signal while operating in a
9) as the interrupt signal
A. memory means (Claims 1, 2, 5, 10)
A "means-plus-function" claim is a special type of claim
provided for in 35 U.S.C. § 112, paragraph 6, which provides:
An element in a claim for a combination may be
expressed as a means or a step for performing a
specified function without the recital of structure,
material, or acts in support thereof, and such claim
shall be construed to cover the corresponding
structure, material, or acts described in the
specification and equivalents thereof.
35 U.S.C. § 112, ¶ 6. Under this provision, an inventor can
describe an element of the invention by the result accomplished
or the function served, rather than by describing the item or
element to be used. Warner-Jenkinson Co., Inc. v. Hilton Davis
Chemical Co., 520 U.S. 17, 27 (1997). When using
means-plus-function language, "[t]he applicant must describe in
the patent specification some structure which performs the
specified function." Valmont Industries, Inc. v. Reinke
Manufacturing Co., Inc., 983 F.2d 1039
, 1042 (Fed. Cir. 1993). A
structure disclosed in the specification is only deemed to be
"the corresponding structure" if the specification clearly links
or associates that structure to the function recited in the
claim. Kahn v. General Motors Corp., 135 F.3d 1472
, 1476 (Fed.
Cir. 1998). The duty to link or associate structure in the
specification with the function is the quid pro quo for the
convenience of employing the means-plus-function format. Id.
An accused device with a structure that is not identical to the
structure described in the patent will literally infringe the
patent if the accused device performs the identical function
required by the means-plus-function claim with a structure
identical or equivalent to that described in the patent. Cybor
Corp. v. FAS Technologies, Inc., 138 F.3d 1448, 1457 (Fed. Cir.
1998) (en banc); Kahn, 135 F.3d at 1476. "Thus, the statutory
provision prevents an overly broad construction by requiring
reference to the specification, and at the same time precludes an
overly narrow construction that would restrict coverage solely to
those means expressly disclosed in the specification." Symbol Technologies, Inc. v. Opticon, Inc., 935 F.2d 1569, 1575 (Fed.
Cir. 1991) (citations omitted).
The parties disagree whether "memory means" is governed by
35 U.S.C. § 112 ¶ 6. PCTEL contends that this claim is not governed
by § 112, ¶ 6.*fn1 However, if the claim is subject to §
112, ¶ 6, PCTEL contends that the corresponding structure is
"memory and equivalents thereof." Agere contends that this claim
is a means-plus-function limitation that is governed by § 112, ¶
6. Agere asserts that the corresponding structure is "external
memory ROM/RAM 50 of modem 10." USR contends that this claim is
governed by § 112, ¶ 6, and that the corresponding structure is
"a memory and equivalents thereof."
PCTEL relies upon Envirco Corp. v. Clestra Cleanroom, Inc.,
209 F.3d 1360 (Fed. Cir. 2000), to support its proposition that
the term is not governed by § 112, ¶ 6.*fn2 In Envirco,
the Federal Circuit held that the word "baffle" alone constituted
sufficient structure, and trumped the use of the word "means."
Id. at 1364-65. "Because the term "baffle" itself imparts
structure, meaning a surface which deflects air, its use in the
claims rebuts the presumption that § 112, ¶ 6 applies." Id. at
PCTEL also relies upon Katz v. AT&T Corp.,
63 F. Supp. 2d 583, 640 (E.D. Pa. 1999), where the court held that "memory
means" is not subject to analysis under § 112 ¶ 6 because the
word "memory" connotes sufficient structure to rebut the
presumption that the term is written in means-plus-function
format. The Katz court construed "the term `memory' according
to its plain meaning as: computer hardware that stores
information, such as disks, RAM, or tapes." Id. at 602 n. 14.
Agere and USR assert that this claim limitation is a
means-plus-function limitation, and rely upon Genlyte Thomas
Group LLC v. Lutron Elecs. Co., Inc., 2004 WL 690847, *11-13
(N.D. Tex. March 31, 2004). In Lutron, the court concluded that
"`memory means' is means plus function language, and the Court
must determine the structure described in the specification for
carrying out the function of storing information. . . ." Id. at
*11. Other courts have agreed with this conclusion. See British
Telecomm. PLC v. Prodigy Comm. Corp., 189 F. Supp. 2d 101,
127-31 (S.D.N.Y. 2002); Lucent Techs., Inc. v. Newbridge Networks Corp.,
168 F. Supp. 2d 181, 202 (D. Del. 2001).
As in Lutron and Lucent, the Court finds that PCTEL has not
overcome the presumption that "memory means" is a
means-plus-function limitation. The function of this element is
to store values for storing operating parameters. The structure
associated with this element is memory associated with "External
Memory ROM/RAM 50."
However, the parties' disagree regarding the precise scope of
the structures to be included in the claim. PCTEL and USR assert
that the structure of "memory means" is "memory and equivalents
thereof." PCTEL contends that the '561 patent discloses a
discrete class of structures that perform the claimed function
and admits that a specific, preferred type of memory is disclosed
in embodiment of the patant (i.e., ROM and RAM). PCTEL argues
that it should not be penalized for having disclosed a preferred
type of memory by having the scope of the claims narrowed so as
to only cover a certain type of memory. Along the same lines,
PCTEL asserts that the location of its memory should not be
limited to only "external" memory.
Agere responds that the only disclosed embodiment of the
invention of the '561 patent expressly discloses that the
structure corresponding to the "memory means" is "External Memory
ROM/RAM 50 of modem 10." Agere also notes that Fig. 1 of the '561
patent discloses that External Memory ROM/RAM 50 of modem 10 is
separate and "external" to the data terminal equipment, which can
contain a separate ROM and/or RAM of its own.
At this stage of the litigation, the Court need only identify
all corresponding structures disclosed in the specification of
the '561 patent. "[T]he scope of such a claim is not limitless,
but is confined to structures expressly disclosed in the
specification and corresponding equivalents." Symbol
Technologies, 935 F.2d at 1575. The Court notes that the
specification reveals "memory means" such as "RAM," "ROM,"
"EPROM," and "EEPROM." Therefore, the Court finds that the
structure corresponding to "memory means" is memory 50,
including "RAM," "ROM," "EPROM," or "EEPROM." The Court declines
to limit the location of the memory to only "external memory."
B. Hardware Related [Operating] Parameter (Claims 1 and 11)
PCTEL states that the term has a plain and understood meaning,
and no construction of the term is necessary. Alternatively,
PCTEL contends that the term should be construed as "characteristics relating to electrical/physical properties of
circuitry." To support its ...