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Technology Licensing Corp. v. Thomson

March 9, 2010

TECHNOLOGY LICENSING CORPORATION, A NEVADA CORPORATION, PLAINTIFF,
v.
THOMSON, INC., A DELAWARE CORPORATION, DEFENDANT.



MEMORANDUM AND ORDER RE: MOTION FOR CLAIM CONSTRUCTION

Technology Licensing Corporation ("TLC") owns U.S. Patent Nos. RE40,411 E (the "'411" patent) and RE40,412 E (the "'412" patent). The patents relate to identifying and separating the synchronizing signal component of a video signal, which allows televisions to accurately reproduce the image that was transmitted to it over the airwaves. Plaintiff contends that three of Thomson, Inc.'s ("Thomson") products violate plaintiff's patents by incorporating three different sync separator chips that practice plaintiff's patents. (Def. Thomson's Opening Markman Brief Ex. E, at 4.)

On February 1, 2010 the parties submitted their claim construction briefs and the court conducted a Markman*fn1 hearing on March 1, 2010 on the limited issue of whether the terms "circuit" and "circuitry" constitute means-plus-function limitations. After considering the parties' briefs and all other relevant documents, along with the parties' arguments at the Markman hearing, the court construes the disputed claims as set forth below.

I. Factual and Procedural Background

TLC is the holder of the '411 and '412 patents, which are July 1, 2008 reissues of U.S. Patent Nos. 5,745,250 (the "'250 patent"), and 5,486,869 (the "'869 patent"), respectively. The '869 patent was issued from application No. 07/837,323, filed on February 18, 1992. (Szpondowski Decl. Ex. B., at 1.) The '250 patent was issued from a continuation-in-part application of application No. 08/493,661, filed on June 22, 1995, which was a continuation-in-part of application No. 07/837,323 which eventually became the '869 patent. (Id. Ex. A., at 1.) The '411 patent comprises "a method and apparatus for identifying and separating the synchronizing signal component of video like signals by identifying or detecting the arrangement or sequence of the known occurrances [sic] of events or patterns of the synchronizing signal component" and the '412 patent "provides a synchronizing signal separation." (Id. Ex. A, at 1, Ex. B, at 1.)

Images and sounds captured by television cameras are transmitted to televisions via composite video signals, which must then be accurately reproduced on the television screen. A synchronization signal (also referred to as "sync signal" or "sync pulse") within the composite video signal allows televisions to accurately reproduce transmitted images by indicating the beginning of the information for each line on the television screen. The synchronization signal indicates this information through changes in its voltage level, and the sync signal must be extracted from the composite signal in order for the television to accurately reproduce the transmitted image.

The '411 and '412 patents relate to identifying and separating the sync signal component of a composite video signal in order to allow accurate reproduction of the transmitted image. A typical sync signal is a downward (negative) pulse that is preceded by a "front porch" interval and followed by a "back porch" interval. In order to identify and separate the sync signal, the '411 and '412 patents outline two steps. First, the "tip," or negative peak of the sync pulse (known as the "sync tip"), is "clamped," or brought down to a known voltage level, by adding current to or draining current from the signal. Second, the clamped sync pulse is "sliced" by comparing it to a "slicing voltage," which is typically found between the sync tip and the "back porch" interval of the sync signal. The sync separator produces a logic level sync signal that departs from its usual level when the video signal is below the slicing voltage---that is, when a sync pulse is present.

At issue in this litigation are three different sync separator chips that Thomson incorporates into three of its products: 1) the Elantec EL4583 chip in its LDK 5301 product; 2) the Gennum 4882 chip in its FSS 8900 product; and 3) the Elantec EL4511 chip in its 8900 GEN-SM product. (Def.'s Opening Markman Brief Ex. E, at 4.) On June 20, 2003, TLC filed suit in this court alleging that each of these products violate claims in the '250 and '869 patents through incorporation of the three chips, each of which practice the patents-in-suit. The action was twice stayed pending resolution of a related case in the United States District Court for the Northern District of California*fn2 and pending completion of patent reissue proceedings for the '250 and '869 patents on October 3, 2003, and September 20, 2004, respectively. (Docket Nos. 24, 50.) On September 11, 2009, Thomson filed an unopposed motion to lift the September 20, 2004 stay in the instant action, which was granted. (Docket Nos. 221, 225.) TLC filed a Second Amended Complaint on January 21, 2010 which substituted the '411 and '412 reissue patents for the '250 and '869 patents. (Docket No. 240.) Presently before the court are the parties' motions for claim construction.

As submitted in their briefs, the parties agree on the construction of two patent terms (Szpondowski Decl. Ex. C), dispute the construction of forty terms (Id. Ex. D), and agree that twenty-nine terms should be construed as having a plain and ordinary meaning to one of skill in the art (Id. Ex. E). The parties also dispute whether twenty-one claims in the '411 patent containing the term "circuit" or "circuitry" constitute means-plus-function limitations,*fn3 and agree that several other terms in the patents constitute means-plus-function limitations that require identification of their function and structure (Id. Ex. H).

II. Discussion

A. Legal Standard

The court, not the jury, must determine the meaning and scope of patent terms. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995), aff'd., 517 U.S. 370, 372 (1996). When construing disputed claim terms, the court often looks to both intrinsic and extrinsic evidence. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).

Intrinsic evidence includes the language of the claims, specification, and prosecution history. Vitronics, 90 F.3d at 1582. The language of a patent's claims 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 . . . as of the [patent's] effective filing date." Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). "Importantly, 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." Id.

The specification "is the single best guide to the meaning of a disputed term." Vitronics, 90 F.3d at 1582. The specification can provide further guidance on the meaning of terms in the claims by, for example, (1) revealing a "special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess," Phillips, 415 F.3d at 1316, (2) revealing an "intentional disclaimer, or disavowal, of claim scope by the inventor," id., or (3) defining a term by implication, "such that the meaning may be found in or ascertained by a reading of the patent documents," Novartis Pharms. Corp. v. Abbott Labs., 375 F.3d 1328, 1334-35 (Fed. Cir. 2004). Limitations from the preferred embodiments or specific examples in the specification, however, cannot be read into the claim. Anchor Wall Sys. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1306 (Fed. Cir. 2003).

The patent's 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 1317. The doctrine of prosecution disclaimer attaches only "where the patentee has unequivocally disavowed a certain meaning to obtain his patent," and will not attach where the alleged disavowal of claim scope is ambiguous. Omega Engr., Inc. v. Raytek Corp., 334 F.3d 1314, 1324, 1325 (Fed. Cir. 2003)

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. When used, extrinsic evidence cannot "vary or contradict" claim language, Vitronics, 90 F.3d at 1584, but it can be useful "for a variety of purposes, such as to provide background . . . [and] 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." Phillips, 415 F.3d at 1318.

A patent claim or limitation can be expressed as a "means . . . for performing a specified function without the recital of structure, material or acts in support thereof." 35 U.S.C. § 112(6). Claims expressed in this "means-plus-function" format are "construed to cover the corresponding structure . . . described in the specification and equivalents thereof." Id. Where a claim "recites a function, but then goes on to elaborate sufficient structure . . . within the claim itself to perform entirely the recited function, the claim is not in means-plus-function format." Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1427-28 (Fed. Cir. 1997).

Claims that do not use the word "means" enjoy a rebuttable presumption that they are not in means-plus-function format and that 35 U.S.C. § 112(6) does not apply. Watts v. XL Sys. Inc., 232 F.3d 877, 877 (Fed. Cir. 2009). This presumption can be rebutted when the term "nonetheless relies on functional terms rather than the structure or material to describe performance of the claimed function." Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1257 (Fed. Cir. 1999).

Once it is established that a claim or limitation is in means-plus-function format, courts interpret the claim in a two-step process. First, the claimed function of the means-plus-function claim or limitation must be identified. Next, the structure for the "means" limitation must be defined. The structure must be disclosed in the specification or prosecution history, clearly linked to the stated function, and necessary to perform that function. Omega Engr., 334 F.3d at 1321. The duty to link structure in the ...


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