UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION
February 3, 2012
BELKIN INTERNATIONAL, INC.; BELKIN, INC.; D-LINK CORPORATION; D-LINK SYSTEMS, INC.; NETGEAR, INC.; ZYXEL COMMUNICATIONS CORPORATION; AND ZYXEL COMMUNICATIONS, INC., DEFENDANTS.
The opinion of the court was delivered by: Lucy H. Koh United States District Judge
ORDER CONSTRUING DISPUTED CLAIM TERMS OF U.S. PATENT NO. RE. 36,769
Plaintiff Fujitsu, Ltd. ("Fujitsu") brings this action for patent infringement against Defendants Belkin International, Inc.; D-Link Corp.; D-Link Systems, Inc.; Netgear, Inc.; Zyxel 18 Communications Corp.; and Zyxel Communications, Inc. (collectively "Defendants"). The parties 19 now seek construction of two disputed terms in the claims of U.S. Patent No. Re. 36,769 ("the '769 20 Patent"). The Court held a Tutorial on October 6, 2011, and a Markman hearing on October 14, 21 2011. For the reasons discussed in Section III.B, infra, the parties filed supplemental briefing on 22 October 21, 24, and 28, 2011. ECF Nos. 191, 195, 200. The Court has reviewed the claims, 23 specifications, and other relevant evidence, and has considered the briefing and arguments of the 24 parties. The Court now construes the terms at issue. 25
The '769 Patent is a reissue of U.S. Patent No. 5,357,091 ("the '091 Patent"), which was 28 filed on April 30, 1992, claiming priority over a Japanese application filed in April 1991. The '091 Patent was issued on October 18, 1994. Two years later, on October 18, 1996, Fujitsu filed a 2 reissue application, in which it canceled all independent claims of the '091 Patent, added 18 3 additional claims, and rewrote the dependent claims to depend on new independent claims 38 and 4 39. After considering more than thirty references during the reissue proceedings, the U.S. Patent 5 and Trademark Office ("PTO") allowed the '769 Patent to issue on July 11, 2000. 6
7 in 2005 and Belkin in 2006 ("Belkin Reexam I"), which the PTO merged
into a single 8 reexamination proceeding involving review of more than
180 prior art references. The PTO issued 9 a reexamination certificate
on December 8, 2009, in which it canceled six claims and allowed 41 10
additional claims. Belkin filed a second request for ex parte
reexamination on March 3, 2011
14 that use such a device to facilitate communication between an
electronic device system and an 15 external or peripheral device. At
the time of Fujitsu's claimed invention, small scale portable 16
electronics, such as laptop computers, featured connector ports
mounted on the sidewall of the 17 main body for connecting to external
devices, such as printers and modems. These various 18 connectors were
of different dimensions and specifications and occupied valuable real
estate on the 19 sidewall of small scale portable electronics,
imposing a significant constraint on the ability to 20 downsize such
electronic devices. See '769 Patent, col. 1:15-62. 21
22 serves as an interface between an electronic device (such as a laptop) and an external device (such 23 as a printer), thereby reducing or eliminating the need for multiple externally mounted connector 24 ports on the sidewalls of the electronic device's main body. See id. col. 1:54-62; col. 2:1-4; col. 25
Integrated Circuit (IC) memory cards, these cards could be inserted into a slot in the main body of 27 a portable electronic device and used as an external storage device. See id. col. 1:18-55. The '769 28 patent is the first disclosure of a card-type device that serves not as a memory storage device but
The '769 Patent was reexamined in response to independent ex parte requests from Fujitsu ("Belkin Reexam II"), which the PTO granted but on which no action has yet been taken.
B. Background and Description of the Invention
The invention at issue relates to a "card type input/output interface device" and to systems
The claimed invention sought to address this problem by creating a card-type device that 7:15-24. At the time, card-type devices were commonly used for memory storage. Known as rather as an interface device capable of transferring data between an electronic device and an 2 external device. 3
4 consists of three main components: (1) a first connection part on one end ("first data interface 5 unit") for transferring data between a main body of an electronic device and the card type 6 input/output interface device; (2) a second connection part on the opposite end ("second data 7 interface unit") for transferring data between an external device and the card type input/output 8 interface device; and (3) a circuit connecting the first interface and second interface units ("data 9 transfer circuit"). See '769 Patent, col. 2:5-15. An electronic device accommodating this card type 10 input/output interface unit may include a single slot formed in the main body rather than
As shown in Figure 1 of the '769 Patent, the claimed card type input/output interface device incorporate multiple connector ports on its sidewalls, thereby facilitating downsizing of the electronic device. See id. col. 2:1-5. 13
The first two embodiments disclose a wireless card interface device, while the third embodiment 15 discloses a wired connection. In the first two embodiments, the card type input/output interface 16 device is configured to send and receive data at the second data interface wirelessly via a radio 17 transmitter/receiver unit and an antenna. See id., col. 3:18-col.5:41 (first embodiment); col. 5:42-18 col. 6:29 (second embodiment). In the third embodiment, the card type input/output interface 19 device is configured to send and receive data at the second data interface through a cable using 20 various types of standard connectors. See id. col. 6:31-7:43. 21
The asserted claims of the '769 patent can be divided into three categories: (1) "device" 22 claims directed to the "card type input/output interface device" itself (e.g., claims 2, 4-18, 38, 41-23 43, 56-61, 63, 65-66, 72-76, 78, 80-82, 88-89, and 91-93); (2) "system" claims directed to a system 24 comprised of the card interface device and an "external device" to which it connects (e.g., claims 25 46-49, 62, 67-69, 77, 83-85, 90, and 94-96); and (3) "electronic system" claims directed to an 26 electronic system comprised of the card interface device, an "electronic device," and an "external 27 device" (e.g., claims 20, 22-37, 39, 52-54, 64, 70-71, 79, and 86-87). See First Am. Compl. 28
The '769 patent describes three embodiments of the card type input/output interface device.
("FAC") ¶ 17, ECF No. 102. Fujitsu originally asserted 32 of the 86 claims in the '769 patent but 2 has since reduced the number of asserted claims to 21.*fn1
C.Claim Terms at Issue
The parties originally sought construction of eight terms: (1) "card"/"card interface"; (2) "data interface unit"; (3) "data transfer circuit"; (4) "slot"; (5) "to be inserted into a slot provided in 6 the electronic device"; (6) "wireless data transmitter/receiver"; (7) "edge portion"; and (8) 7 "providing a peripheral function for the electronic device."*fn2 However, since filing their original 8 claim construction briefs, the parties have stipulated to construe the first six terms as follows: 9
(1) "card" and "card interface" are to be given their ordinary and customary meaning;
(2) "data interface unit" is to be construed as "a unit for buffering or receiving/transmitting data";
(3) "data transfer circuit" is to be construed as "a circuit for transferring data";
(4) "slot" is to be given its ordinary and customary meaning;
(5) "to be inserted into a slot provided in the electronic device" is to be given its plain meaning; and
(6) "wireless data transmitter/receiver" is to be construed as "electronics that can send and receive data wirelessly."*fn3
The parties having so stipulated, the Court hereby adopts these constructions for the first six terms. 2
Thus, the only remaining disputed terms requiring construction by the Court are (1) "edge portion," 3 and (2) "providing a peripheral function for the electronic device." 4
"Ultimately, the interpretation to be given a term can only be determined and confirmed with a full 8 understanding of what the inventors actually invented and intended to envelop with the claim." 9
Accordingly, a claim should be construed in a manner that "stays true to the claim language and 11
In construing disputed terms, the Court looks first to the claims themselves, read in context, 13 for "[i]t is a 'bedrock principle' of patent law that 'the claims of a patent define the invention to 14 which the patentee is entitled the right to exclude.'" Id. at 1312 (quoting Innova/Pure Water, Inc. 15 v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). Generally, the words 16 of a claim should be given their "ordinary and customary meaning," which is "the meaning that the 17 term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., 18 as of the effective filing date of the patent application." Id. at 1312-13 (internal quotation marks 19 and citations omitted); accord Chamberlain Group, Inc. v. Lear Corp., 516 F.3d 1331, 1335 (Fed. 20 Cir. 2008). In some instances, the ordinary meaning to a person of skill in the art is clear, and 21 claim construction may involve "little more than the application of the widely accepted meaning of 22 commonly understood words." Phillips, 415 F.3d at 1314. 23
In many cases, however, the meaning of a term to a person skilled in the art will not be 24 readily apparent, and the court must ascertain the term's meaning by looking to other sources, such 25 as "'the words of the claims themselves, the remainder of the specification, the prosecution history, 26 and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, 27 and the state of the art.'" Id. (quoting Innova, 381 F.3d at 1116). Under these circumstances, 28 courts generally begin by examining intrinsic evidence (including the claims, the specification,
Claim construction is a question of law to be determined by the Court. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff'd 517 U.S. 370 (1996).
Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (internal citation omitted).
most naturally aligns with the patent's description of the invention." (internal citation omitted).
and, if in evidence, the prosecution history) before turning to extrinsic evidence (e.g., expert 2 testimony, dictionaries, and treatises). Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996); see also Phillips, 415 F.3d at 1324 ("[T]here is no magic formula or catechism for 4 conducting claim construction[, n]or is the court barred from considering any particular sources or 5 required to analyze sources in any specific sequence, as long as those sources are not used to 6 contradict claim meaning that is unambiguous in light of the intrinsic evidence."). 7
First, the court should consider the context in which the term is used
in an asserted claim or
in related claims, bearing in mind that "the person of ordinary
skill in the art is deemed to read the 9 claim term not only in the
context of the particular claim in which the disputed term appears,
but in 10 the context of the entire patent, including the
specification." Phillips, 415 F.3d at 1313. Claim
differentiation is a valuable claim construction tool, in that "the
presence of a dependent claim that
adds a particular limitation gives rise to a presumption that the
limitation in question is not present 13 in the independent claim."
Id. at 1314-15 (citation omitted).
15 part." Markman, 52 F.3d at 979; accord Phillips, 415 F.3d at 1315. Because the specification 16 must contain a description of the invention sufficiently clear "to teach and enable those of skill in 17 the art to make and use the invention," Phillips, 415 F.3d at 1323, the specification is "'always 18 highly relevant'" and "'[u]sually  dispositive; it is the single best guide to the meaning of a 19 disputed term,'" id. at 1315 (quoting Vitronics, 90 F.3d at 1582); accord Eon-Net LP v. Flagstar Bancorp, 653 F.3d 1314, 1320 (Fed. Cir. 2011). Where the specification reveals that the patentee 21 has given a special definition to a claim term that differs from the meaning it would ordinarily 22 possess, the inventor's lexicography governs. Phillips, 415 F.3dat 1316. Likewise, where the 23 specification reveals an intentional disclaimer or disavowal of claim scope by the inventor, the 24 inventor's intention as revealed through the specification is dispositive. Id.
26 consists of the complete record of proceedings before the PTO and includes the prior art references 27 cited during the examination. Id. at 1317. Although it is generally less useful than the 28 specification for claim construction purposes, the prosecution history nevertheless "can often
Furthermore, the claims must be read "in view of the specification, of which they are a
The court should also consider, if it is in evidence, the patent's prosecution history, which inform the meaning of the claim language by demonstrating how the inventor understood the 2 invention and whether the inventor limited the invention in the course of prosecution, making the 3 claim scope narrower than it otherwise would be." Id. (internal citations omitted). For example, 4 "where the patentee has unequivocally disavowed a certain meaning to obtain his patent, the 5 doctrine of prosecution disclaimer attaches and narrows the ordinary meaning of the claim 6 congruent with the scope of the surrender." Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 7
Finally, the court is also authorized to consider extrinsic evidence in construing claims, 9 such as "expert and inventor testimony, dictionaries, and learned treatises." Markman, 52 F.3d at background on the technology at issue, [explaining] how an invention works, [ensuring] that the 12 court's understanding of the technical aspects of the patent is consistent with that of a person of 13 skill in the art, or [establishing] that a particular term in the patent or the prior art has a particular 14 meaning in the pertinent field." Phillips, 415 F.3d at 1318. Technical dictionaries are likewise 15 helpful in educating the court on how one of ordinary skill in the art might use the claim terms. Id. 16
Although the court may consider evidence extrinsic to the patent and prosecution history, such 17 evidence is considered "less significant than the intrinsic record" and "less reliable than the patent 18 and its prosecution history in determining how to read claim terms." Id. at 1317-18 (internal 19 quotation marks and citation omitted). Thus, while extrinsic evidence may be useful in claim 20 construction, ultimately "it is unlikely to result in a reliable interpretation of patent claim scope 21 unless considered in the context of the intrinsic evidence." Id. at 1319. Any expert testimony "'that is clearly at odds with the claim construction mandated by the claims themselves, the written 23 description, and the prosecution history'" will be significantly discounted. Id. at 1318 (quoting Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 716 (Fed. Cir. 1998)).
1324 (Fed. Cir. 2003).
980 (internal citations omitted). Expert testimony may be particularly useful in "[providing]
Fujitsu's Proposed Construction Defendants' Proposed Construction
Plain meaning "a sidewall of the card"
The term "edge portion" does not appear in the specification but
appears in dependent
claims 8 and 26, which recite a card interface device "wherein said
antenna is an edge portion of 8 said card." '769 Patent, claims 8, 26.
Defendants propose construing "edge portion" as "the 9 sidewall of the
card" so as to avoid jury confusion with the terms "end" or "end
portion," which 10 appear elsewhere in the claims. Resp. at 15; see,
e.g., '769 Patent, claim 51 (describing "a card,
provided with a first end portion and a second end portion opposite to
the first end portion, the first
end portion inserted into the slot of the electronic device").
Defendants assert that their 13 construction is supported by Figures
4A through 4D, which are diagrams showing "an antenna 14 used in
disclosed embodiments of the present invention." '769 Patent, col.
2:54-55. These 15 embodiments illustrate the antenna (12-1) at the
sidewall of the card. Defendants also argue that 16 their construction
is supported by the text of the specification, which describes the
antenna in 17
Figure 4A as being "fastened to the sidewall of the card." Id., col. 4:60-62. Fujitsu counters that 18 nothing in the claim language or specification supports narrowly construing the term to mean "the 19 sidewall" and that the term "edge" is commonly understood to mean "the line where an object or 20 area begins or ends." Br. at 17 (citing Garten Decl. Ex. 11 at FUJ0020922, Ex. 12 at 21 FUJ0020932).
The Court agrees with Fujitsu that "the ordinary meaning" of this
claim term "may be
readily apparent even to lay judges," and therefore claim
construction "involves little more than the 24 application of the
widely accepted meaning of commonly understood words." Phillips, 415
F.3d at 25
1314. Furthermore, Defendants' proposed narrowing construction is not
supported by evidence, 26 intrinsic or otherwise. Indeed, Defendants'
proposed construction is inconsistent with the plain 27 language of
the specification. Defendants would have the Court construe claims 8
and 26 as 28 reciting a card interface device "wherein said antenna is
the sidewall of the card." The preferred
Fujitsu's Proposed Construction
Defendants' Proposed Construction
"performing a function instructed by the electronic device"
Defendants' Alternative Proposed Construction*fn4
"peripheral devices such as modems, printers or disk drives, that are connected to a computer and are controlled by its microprocessor, and human input/output devices, such as keyboards, monitors and mice"
embodiment, however, describes an antenna that is "rotatably supported by a screw member 12k," 2 which in turn is "fastened to the sidewall of the card 4 so that the rod antenna 12-1 rotates around 3 the screw member 12k." '769 Patent, col. 4:59-62 (emphasis added). The proposed embodiment 4 specifically and expressly discloses an antenna attached by a screw to the sidewall of the card; 5 therefore, the antenna cannot be the sidewall of the card, as Defendants propose. Defendants' 6 proposed construction of "edge portion" as "a sidewall of the card" reads out the preferred 7 embodiment. A proposed construction that excludes a preferred embodiment "is rarely, if ever, 8 correct." Vitronics Corp., 90 F.3d at 1582; see also Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1305 (Fed. Cir. 2007). 10
The Court finds nothing in the evidence that justifies displacing the plain and ordinary meaning of a non-technical term with unsupported limitations and therefore agrees with Fujitsu.
The plain and ordinary meaning of the term "edge portion" is sufficiently clear, and therefore no 13 construction is required. 14
B."providing a peripheral function for the electronic device"
At the heart of the dispute over the construction of this term is
whether an external device
"providing a peripheral function for the electronic device" includes
routers and access points such 25 as Defendants' accused devices.
Fujitsu's proposed "plain meaning" construction would 26
presumably be broad enough to encompass such devices, whereas
Defendants' narrower proposed 2 constructions may not.
Prior to the Markman hearing, the parties stipulated to adding two
prior art references, U.S.
Patent No. 4,972,457 ("O'Sullivan") and the Arlan 400 Brochure
("Arlan"), to the Markman 5 hearing record. ECF No. 187, Exs. C &
F.*fn5 During the Markman hearing, Defendants
introduced 6 new arguments based on these two references.*fn6
Defendants represented that they discovered these 7 new
arguments between the time Fujitsu filed its reply and the Markman
hearing. Markman Hr'g
Tr. 84:25-85:11. At the Markman hearing, Defendants also proposed a
new alternative claim 9 construction in response to the Court's
questions at the Tutorial. Id. at 31:14-24. Defendants 10 provided
their alternative claim construction to Fujitsu the day before the
Markman hearing. Id. at
original claim construction briefing discussed O'Sullivan. 13
14 briefing have been waived and may not be raised for the first time at the Markman hearing. 15
However, in this instance, the parties have narrowed their claim construction disputes from a 16 possible total of ten terms down to two terms, and the parties have represented that a ruling as to 17 whether this term covers routers and access points is necessary for settlement. Defendants' sales of 18 routers and access points essentially constitute the potential damages in this case. Moreover, if this 19 case does not settle, the Court finds that ignoring Defendants' new argument would "frustrate the 20
Court's ability to satisfy its independent duty to properly instruct the jury." Capital Mach. Co., 21 2011). Accordingly, the Court will consider the additional briefing and materials attached thereto 23 in construing this term. Ultimately, however, the Court finds that Defendants' new arguments lack 24 merit. 25 26
20:17-23. The parties discussed Arlan in their original claim construction briefing. N either party's
Ordinarily, the Court would find that any arguments not made in the claim construction Inc. v. Miller Veneers, Inc., No. 1:09-cv-00702, 2011 WL 4102583, at *2 n.3 (S.D. Ind. Sept. 14, 2 at the time of the invention would understand external devices "providing a peripheral function" to 3 include modems, printers, and other "well-known accessory devices." Br. at 7; Reply at 1. 4
Defendants proffer two proposed constructions. In the first round of briefing, Defendants 5 argued that the claimed "external device providing a peripheral function for the electronic device" 6 is essentially a "peripheral device." Resp. at 16, 20 & n.12. As such, Defendants contended that 7 the claimed "external device" must: (1) be "under the control of" the electronic device, id. at 16; 8 "perform a function on the data and transform it," id. Defendants urged the Court to construe 10 instructed by the electronic device."
At the Markman hearing, Defendants proposed the following alternative
"external device providing a peripheral function for the electronic
device": "a peripheral device 14 such as a modem, printer, or disk
drive, that is connected to a computer and is controlled by its 15
microprocessor, and a human input/output device, such as a keyboard,
monitor or mouse."*fn7 Thus,
Defendants changed the term to be construed from (1) "providing a
peripheral function for the 17 electronic device" to (2) "external
device providing a peripheral function for the electronic device." 18
meaning construction is most appropriate for this term. 20
22 claims 45, 47, 48, and 49. For example, independent claim 45 recites "an external device 23 providing a peripheral function for the electronic device." '769 Patent, col.12:47-48. Fujitsu and "external device." See Resp. at 16; Reply at 1. While the Court likewise agrees that "providing a 26 27
Fujitsu argues that a person of ordinary skill in the art reading the claims and specification (2) "execut[e] . . . instructions on the data" received from the electronic device, id. at 18; and (3) 9 "providing a peripheral function for the electronic device" to mean "performing a function
The Court rejects Defendants' proposed constructions and finds that a plain and ordinary
1.Claim Language and Specification
The disputed term is used throughout the asserted two device "system" claims. '769 Patent, Defendants agree that the term "providing a peripheral function" necessarily modifies the term peripheral function" refers to a specific kind of external device, to construe the precise scope of the 2 disputed limitation, the Court must read the claim language in light of the specification. 3
"electronic device" through the card interface. Id. at col. 1:11-14, 56-59; col. 3:40-47. In 6 describing the field of the invention, the specification states, "[t]he present invention generally 7 relates to a card type input/output interface device, which couples a main body of an electronic 8 device system and an external or peripheral device with each other." Id. at col.1:11-14 (emphasis 9 added). The specification identifies modems and printers as examples of the claimed "external 10 device providing a peripheral function for the electronic device." '769 Patent, claims 45, 47, 48, 13 supported their first proposed construction because one of ordinary skill in the art would 14 understand that "'an external device performing a peripheral function for the electronic device' is 15 the same thing as a 'peripheral device.'" Resp. at 16. Defendants supported this argument with the 16 fact that modems and printers, the only examples in the specification of external devices 17
Defendants, a peripheral device is well understood by those of ordinary skill in the art to mean "a 19 device that acts under the control of another device." Id. (citing Brody Rep. ¶ 97). 20
1:11-14 (emphasis added), indicates that "external device" is not interchangeable with "peripheral 23 device," as Defendants suggest. The plain meaning of the word "or" in this context suggests the 24 possibility of a device that is an "external device providing a peripheral function to the electronic 25 device," but that is not a "peripheral device." Moreover, that the specification in several places 26 refers to "an external device" alone without referring to a "peripheral device" provides further 27 support that "external device providing a peripheral function" and "peripheral device" are not 28 necessarily coextensive.
The specification does not use the term "peripheral function," but does use the terms "external device" and "peripheral device" when referring to devices that communicate with the and 49; see, e.g., id. at col. 1:22-24; col. 3:65-67; col. 6:14.
Defendants' First Proposed Construction. Defendants argued that the specification "providing a peripheral function for the electronic device," are peripheral devices. According to
The Court disagrees that the specification supports Defendants' first proposed construction.
That the specification uses the terms "external or peripheral device," see, e.g., '769 Patent col. 2 function" to mean "the execution of instructions on data." Resp. at 18. This interpretation is not 3 supported by the specification. The specification does not refer to "instructions" sent from the 4
"electronic device" to the "external device" to perform or execute a "function," as Defendants' first 5 proposed construction would require. The only reference in the specification to any "instruction" 6 concerns an internal instruction-that is, within the electronic device-sent from the processor to 7 the card interface device "to transfer data." Id. at col. 5:6-11; 6:16; see also Williams Rep. ¶ 59;
Defendants also argue that one of ordinary skill in the art would understand "peripheral Brody Dep. 67:7-8; 68:9-10. For example, the specification states that in one embodiment, "[t]he 9 processor in the main body 20 or the like specifies the external device 30 and generates an 10 instruction to transfer data." '769 Patent, col. 6:16. As Defendants' expert admits, Defendants' first proposed construction does not rely on the "narrow use" of the word "instruction" from the specification. See Brody Dep. 68:3-8. Thus, Defendants' first proposed construction, which 13 requires the external device to perform a function "instructed by the electronic device," finds no 14 support in the specification (emphasis added). 15
16 the specification, but rather from a skilled artisan's understanding that a peripheral device is "controlled by" the electronic device, Brody Dep. 66:14-16; 67:22-68:1, this limitation is 18 undermined by Defendants' second proposed construction. Defendants argued in the first round of 19 briefing that the "external device providing a peripheral function for the electronic device" was a "peripheral device." As discussed below, Defendants' second proposed construction identifies 21 mice as an example of a peripheral device. However, Defendants admitted at the Tutorial that mice 22 are not "controlled by" or "instructed by" the electronic device. See Tutorial Tr. 102:12-21. Thus, 23 the "instructed by" limitation is unsupported by the specification and inconsistent with Defendants' 24 own alternative proposed construction. 25
Nor does the specification language suggest that the external device must "perform a 26 function" on data sent from the electronic device, as Defendants argue would be understood by a 27 person of ordinary skill in the art. Defendants state that a "true peripheral device such as a printer . 28
Moreover, to the extent Defendants argue that the "instructed by" limitation comes not from . . transforms the data (i.e., by performing functions such as printing the data)." Resp. at 17 (citing Brody Rep. ¶¶ 100-03) (emphasis in original). Defendants also state that a skilled artisan would 2 understand that "a peripheral device does not merely transfer data and pass it along to another 3 location, but instead performs a function on the data and transforms it." Resp. at 18. 4
Defendants rely on the disclosed embodiments -- a modem and a printer -- for the requirement that 7 an external device "providing a peripheral function for the electronic device" transforms data 8 received from the electronic device, Defendants are improperly seeking to import the limitations of 9 the disclosed embodiments into the claim terms. See Phillips, 425 F.3d at 1323. Accordingly, the 10
The specification does not support Defendants' first proposed construction in this regard.
There is no mention in the specification of the external device transforming data. To the extent 6 Court finds that the specification does not support Defendants' first proposed construction.
Defendants' Alternative Proposed Construction. Defendants' new proposed construction -- "a peripheral device such as a modem, printer, or disk drive, that is connected to a computer and is 13 controlled by its microprocessor, and a human input/output device, such as a keyboard, monitor, or 14 mouse" -- is a more explicit attempt to import the limitations of the disclosed embodiments into the 15 claim terms by directly importing the examples of printers and modems, while imposing other 16 limitations such as human input/output devices, that do not appear in the specification at all. 17
Moreover, Defendants do not explain why the electronic device to which the external device 18 connects ought to be limited to a computer when the specification does not suggest such a 19 limitation. Accordingly, the Court finds that the specification does not support Defendants' 20 alternative proposed construction. 21
22 term. 23
25 their proposed constructions. As discussed above, the Court granted leave to file supplemental 26 briefing to address Defendants' new arguments based on the Arlan and O'Sullivan references. 27
Neither of Defendants' proposed constructions is supported by the prosecution history arguments 28 made in the two sets of briefs.
Thus, the specification supports neither of Defendants' proposed constructions for this
The parties' original briefs cite little evidence from the prosecution history in support of 2 undermines Defendants' position that peripheral devices do not include routers and access points. 3
Br. at 9-10. According to Fujitsu, "Belkin cited prior art that used access points or routers in an 4 effort to invalidate the claims during reexamination, but now seeks a narrowing construction to 5 avoid infringement by those same devices." Reply at 3. Fujitsu notes that during reexamination 6
Belkin argued that the Arlan reference disclosed a wireless card that is "used to connect . . . a 7 personal computer  to an external or peripheral device, such as a network server." Br. at 10 8
In the first round of briefing, Fujitsu argued that evidence from the reexamination history (citing Request for Reexamination, Garten Decl. Ex. 7 at 35). Thus, on reexamination Belkin 9 appeared to take a broader view of an "external device providing a peripheral function" than it does 10 here.
Defendants cite Seachange Int'l Inc. v. C-Cor Inc., 413 F.3d 1361, 1374 (Fed. Cir. 2005), and counter that the alleged infringer's statements during reexamination do not impact the scope of 13 the term. It is true that statements made by the patentee that distinguish prior art may lead to a 14 disavowal of claim scope. However, this does not mean that an accused infringers' statements 15 during reexamination are wholly irrelevant to construing the claim terms. Moreover, Defendants 16 have not cited any cases that stand for such a proposition. Indeed, the Federal Circuit's case law 17 appears to allow for the consideration of any statements made during the prosecution history. See 18
Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2008) ("Statements 19 made during prosecution may also affect the scope of the claims." (citing Rexnord Corp. v. Laitram 20
Defendants understood a "peripheral device" to include "network servers," merely suggests that 22
Defendants may have understood "providing a peripheral function for the electronic device" to be a 23 broader concept than they advocate here. This does not, however, answer the parties' central 24 question of whether the claimed "external device providing a peripheral function for the electronic 25 device" includes routers and access points. Accordingly, the Court looks to Fujitsu's statements 26 during the reexamination history to see if there was a clear disavowal of claim scope. 27
In their supplemental briefing, Defendants argue that Fujitsu disavowed routers and access 28 points during the reexamination history when distinguishing O'Sullivan and Arlan. Suppl. Resp. at
Corp., 274 F.3d 1336, 1343 (Fed. Cir. 2001))). Nevertheless, the statement Fujitsu cites here, that 21
1. As stated above, "where the patentee has unequivocally disavowed a certain meaning to obtain 2 his patent, the doctrine of prosecution disclaimer attaches and narrows the ordinary meaning of the 3 claim congruent with the scope of the surrender." Omega Eng'g,334 F.3d at 1324. For the 4 prosecution disclaimer doctrine to apply, the disavowal must be "clear and unmistakable," id. at 5 1326, and must be the only "reasonable interpretation" of the patentee's statements, SanDisk Corp. 6 v. Memorex Prods., Inc., 415 F.3d 1278, 1287 (Fed. Cir. 2005) ("There is no 'clear and 7 unmistakable' disclaimer if a prosecution argument is subject to more than one reasonable 8 interpretation, one of which is consistent with a proffered meaning of the disputed term."). 9
10 reexamination proceedings, in Fujitsu's Response and Amendments to the Office Action mailed on September 29, 2007, and the Decision Granting One Month Petition for Extension of Time mailed on November 29, 2007, Fujitsu sought to overcome the rejection of original Claims 2, 4-18, 20 and 13 38-43, 45-49, and 51-54 were rejected under 35 U.S.C. § 102(a) as being anticipated by 15 103(a) as being unpatentable over O'Sullivan in view of Inoue (Gordon, May, or Mizutani)." Id. at 17 59. Fujitsu asserted several grounds for traversing these rejections. Id. For example, Claim 45 18 recites "an external device providing a peripheral function for the electronic device." Id. at 16. 19
"disclose, teach, or suggest, 'a card, electrically connected to the external device to be inserted into 21 a slot provided in the electronic device.'" Id. at 61-62. On the other hand, Fujitsu never argued 22 that Claim 45 was not anticipated by O'Sullivan because O'Sullivan failed to disclose "an external 23 device providing a peripheral function for the electronic device." Thus, Fujitsu distinguished 24
O'Sullivan on several grounds unrelated to whether O'Sullivan disclosed, taught, or suggested "an 25 external device providing a peripheral function for the electronic device." 26 27
Fujitsu's Distinguishing of Claims Containing "Peripheral Function" Generally. During 22-55, and additional Claims 56-109. Fowler Decl. Ex. 3 at 37.*fn8 Claims 2, 4-6, 18, 20, 22-24, 36, O'Sullivan, and Claims 7-9, 12-17, 25-27, 30-35, 44, 50, and 55 were "rejected under 35 U.S.C. § 16 Fujitsu argued that Claim 45 was not anticipated by O'Sullivan because O'Sullivan failed to 20 Likewise, Claims 2, 4-5, 18, 20, 22-23, 36-43, 45-49, and 51-54 were rejected under 35 U.S.C. § 102(b) as being anticipated by Arlan, and Claims 6-9, 12-13, 24-27, 30-31, 44, 50, and 55 3 were "rejected under 35 U.S.C. § 103(a) as being unpatentable over Arlan in view of Inoue 4 (O'Sullivan, Gordon, May or Mizutani)." Id. at 67. Fujitsu asserted several grounds for traversing 5 these rejections as well. Id. For example, Fujitsu argued Claim 45 was not anticipated by Arlan 6 because Arlan failed to "disclose, teach, or suggest 'a second data interface unit for transmitting the 7 output information to the external device and for receiving the input information from the external 8 device.'" Id. at 67. On the other hand, Fujitsu never argued that Claim 45 was not anticipated by 9
Arlan because Arlan failed to disclose "an external device providing a peripheral function for the 10 electronic device." Furthermore, Fujitsu asserted that the "new claims [we]re also allowable because they recite further patentable distinctions over the references." Id. at 79. Thus, Fujitsu listed several grounds for distinguishing all of the cited prior art references, none of which included 13 failure to disclose "an external device providing a peripheral function for the electronic device." 14
16 not asserted here, Fujitsu argued: "New Claim 62, for example, is not anticipated by the references 17 also at least because the references fail to disclose, teach, or suggest 'an external device providing a 18 peripheral function for the electronic device, wherein the external device comprises an antenna and 19 a wireless transmitter/receiver.' For example, O'Sullivan does not teach or suggest such an 20 external device. The other references are similarly deficient. Favorable action is requested." Id. at 21
81-82. Claim 62 recites, in part, a system comprising "an external device providing a peripheral 22 function for the electronic device, wherein the external device comprises an antenna and a wireless 23 transmitter/receiver." '769 Patent, claim 62 (emphasis added). Defendants contend that "Fujitsu 24 disavowed O'Sullivan and Arlan on the basis they did not contain an 'external device performing 25 [sic] a peripheral function,' and not on the basis they lacked an 'antenna and a wireless 26 transmitted/receiver.'" Suppl. Resp. at 1 (emphasis omitted).Defendants argue that Fujitsu's 27 statement therefore amounts to a clear disavowal of routers and access points because routers 28 comprise an antenna and a wireless transmitter/receiver.
Fujitsu's Distinguishing of New Claim 62. However, specific to new Claim 62, which is 2 distinguishing the O'Sullivan and Arlan references on the ground that the external device in those 3 references did not "provide a peripheral function for the electronic device" or on the ground that 4 the external device in those references did not comprise "an antenna and a wireless 5 transmitter/receiver." The statement therefore does not amount to a "clear and unmistakable" 6 disavowal of routers and access points. Omega Eng'g,334 F.3d at 1324. Furthermore, "[e]ven if 7 an isolated statement appears to disclaim subject matter, the prosecution history as a whole may 8 demonstrate that the patentee committed no clear and unmistakable disclaimer." Ecolab, Inc. v. 9
The Court disagrees. The specific statement here is unclear as to whether it is FMC Corp., 569 F.3d 1335, 1342 (Fed. Cir. 2009) (citing Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1372-73 (Fed. Cir. 2007)).
The prosecution history as a whole further buttresses Fujitsu's construction. Fujitsu's patent application included numerous claims that included the limitation "providing a peripheral 13 function for the electronic device." Fujitsu never cited to this limitation to distinguish these claims 14 from any of the cited prior art references. For Claim 62, however, Fujitsu cited to the following 15 limitation as a basis to distinguish the invention from all cited prior art references, including 16
O'Sullivan and Arlan: "an external device providing a peripheral function for the electronic device, 17 wherein the external device comprises an antenna and a wireless transmitter/receiver." This 18 prosecution history as a whole supports Fujitsu's argument that the limitation, "wherein the 19 external device comprises an antenna and a wireless transmitter/receiver," was the basis upon 20 which Claim 62 was not anticipated by the cited prior art references. 21
At the very least, the specific ground upon which Fujitsu distinguished O'Sullivan and Arlan is ambiguous, and thus falls short of the "clear and unmistakable" disclaimer standard. See SanDisk, 415 F.3d at 1287. Moreover, even if there was a disclaimer as to Claim 62, it would not 24 extend to the other claims lacking the "wherein" clause. See Golight, Inc. v. Wal-Mart Stores, Inc., 25 355 F.3d 1327, 1333 (Fed. Cir. 2004) (disclaimer relating to art that did not teach 360-degree 26 rotation did not apply to claims lacking such a claim element). 27
28 and a wireless transmitter/receiver," and therefore the only ground on which Fujitsu distinguished
Defendants argue that O'Sullivan and Arlan teach external devices "comprising an antenna these devices is that they did not "provide a peripheral function for the electronic device." The 2 Court is not persuaded. 3
4 patent at issue. O'Sullivan's specification does in fact state: "the transceiver unit 4 communicates 5 with the cellular telephone network 12 using radio waves, these waves being transmitted and 6 received using antennas 10 and 32." Id. at col. 5:18-20. However, O'Sullivan's specification at 7 best is ambiguous as to whether O'Sullivan teaches: (1) an external device, and (2) an external 8 device comprising an antenna and a wireless transmitter/receiver. Moreover, Defendants rely 9 heavily on Figure 1, but the Court finds that Figure 1 does not clearly teach an external device, nor 10 does it clearly teach an external device comprising both an antenna and a wireless
The Court has reviewed O'Sullivan's specification and the reexamination history of the transmitter/receiver. Furthermore, the reexamination history of the patent at issue is ambiguous as to whether the Examiner understood that O'Sullivan taught an external device comprising an 13 antenna and a wireless transmitter/receiver. In light of these ambiguities, the Court cannot find a 14 prosecution history disclaimer. 15
16 cards for providing wireless LAN access to computers. Add'l Evid., Ex. F at 1-2. The first page of 17 the brochure depicts three computers; a "LAN file server"; and the Arlan card, which appears to 18 contain an antenna and is inserted into the LAN file server. Id. at 1. The second page of the 19 brochure depicts the Arlan card with an antenna. Id. at 2. Belkin appeared to contend in its 20 reexamination request, and the Examiner agreed, that the LAN file server is the "external device." 21
See Fowler Decl. Ex. 4 at 35 andEx. 6 at 76. However, the LAN file server does not appear to 22 comprise an antenna. Rather, the Arlan card appears to comprise the antenna. Thus, it is a 23 reasonable interpretation that Fujitsu was distinguishing the Arlan reference on the ground that the 24 external device, the LAN file server, did not comprise an antenna. The mere fact that Fujitsu 25 admitted that "Arlan disclosed a transceiver," Fowler Ex. 3 at 68, does not mean that Fujitsu 26 admitted that the external device in Arlan comprised a transceiver. Indeed, Fujitsu states that Arlan 27 did not specify "where the transceiver is located." Id. Again, in light of these ambiguities, the 28
The Arlan reference is similarly unavailing to Defendants. The Arlan brochure describes
Court cannot find a prosecution disclaimer.
Defendants' reliance on Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361 (Fed. Cir. 2007) is misplaced. Defendants cite Andersen for the proposition that disavowal on a 3 particular ground may exist even if the applicant distinguishes the reference on other grounds as 4 well. Suppl. Resp. at 1. In Andersen, however, the basis for the disclaimer was clear and 5 unambiguous. Here, by contrast, the statement Defendants allege is a disclaimer is ambiguous. 6
The Court finds that the reexamination history does not support Defendants' position that Fujitsu disclaimed routers and access points. Moreover, Defendants have not stated how the 8 reexamination history supports either of their proposed constructions for this term. Accordingly, 9 the Court finds that the reexamination history does not support Defendants' proposed 10 constructions.
Turning finally to extrinsic evidence, Defendants rely primarily on the 1991 Microsoft Press Computer Dictionary ("Microsoft Dictionary") and the testimony of both Fujitsu's expert 14 and Defendants' expert, to support their proposed constructions, which they contend exclude 15 routers and access points. The Court discusses these sources in turn. 16
18 printers, modems and joy sticks," but not routers and access points, as peripheral devices, this 19 supports their narrow interpretation of the disputed term. Resp. at 17. The Court is not persuaded. 20
The Microsoft Dictionary defines peripheral as "a term used for
devices, such as disk
drives, printers, modems, and joysticks, that are connected to a
computer and are controlled by its 22 microprocessor. . . . Keyboards,
monitors, and mice are also strictly considered peripheral devices, 23
but because they represent primary sources of input and output in most
computer systems, they can 24 be considered more as extensions of the
system unit than as peripherals." Microsoft Computer 25
Dictionary (1991), at 298. 26
27 definition of "peripheral" supports Defendants' proposed construction of "providing a peripheral 28 function for the electronic device." As discussed above, the Court found that the disputed term is 3.
Defendants argue that because Microsoft Dictionary'sdefinition identifies "disk drives, Defendants' First Proposed Construction. The Court does not find that a single dictionary not limited to a "peripheral device" and applies more broadly to any external device that 2 "provid[es] a peripheral function for the electronic device." Furthermore, the Microsoft Dictionary 3 definition is silent as to whether a peripheral device necessarily receives instructions from the 4 electronic device, as Fujitsu's first proposed construction would require. Thus, the Microsoft 5 Dictionary does not support Defendants' first proposed construction. 6
7 construction is a clear attempt to mirror the Microsoft Dictionary definition. However, Defendants 8 have not pointed to intrinsic evidence to support importing the specific limitations identified in this 9 dictionary definition. Although the Court may consider evidence extrinsic to the patent and 10 prosecution history, such evidence is considered "less significant than the intrinsic record" and Defendants' Alternative Proposed Construction. Defendants' alternative proposed "less reliable than the patent and its prosecution history in determining how to read claim terms."
Phillips, 415 F.3d at 1317-18 (internal quotation marks and citation omitted). Moreover, the Court 13 is not inclined to limit "an external device providing a peripheral function for the electronic 14 device" only to those devices identified in the Microsoft Dictionary given that Defendants 15 themselves identified examples of external devices providing a peripheral function not identified in 16 the Microsoft Dictionary, such as network servers. See Garten Decl. Ex. 7 at 35. Thus, while the 17 Microsoft Dictionary supports Defendants' alternative proposed construction, the Court declines to 18 adopt it in light of the intrinsic evidence.
21 their alternative construction. Defendants quote Fujitsu's expert, Dr. Williams, as admitting that an 22 external device "providing a peripheral function for the electronic device" "needs to know what to 23 do with the data, how to organize that data and what functions to provide to the electronic device as 24 a result of receiving that data." Resp. at 18 (citing Williams Dep. 191:2-9, 192:24-193:6) 25 (emphasis added by Defendants). This quote does not support Defendants' conclusion that a 26 peripheral device must perform functions on the data. This quote merely states that the external 27 device must receive data that tells the external device what peripheral function to provide to the 28 electronic device as a result of receiving that data. Similarly, that Fujitsu's expert stated, in
Defendants rely on expert testimony in support of only their first proposed construction, not response to a hypothetical, that "instructions are often provided as part of the data stream that is 2 provided to the external device," Williams Rep. ¶ 61 (emphasis added by the Court), does not 3 support Defendants' position that the electronic device must always send the external device an 4 instruction to perform a function on and transform the data. 5
Defendants' own expert's testimony does not support Defendants' first
construction either. Defendants cite the testimony of their expert,
Dr. Brody, in support of their 7 proposed construction of "providing a
peripheral function." Resp. at 18. Defendants suggest that 8
"performing a peripheral function" requires "perform[ing] a function
on the data and 9 transform[ing] it." Id. Even if "performing a
peripheral function" required "transforming data," 10
Defendants' first proposed construction does not mention
"transforming" or any of its variants. As 11
such, Dr. Brody's testimony does not support Defendants' proposed
Given that the intrinsic and extrinsic evidence does not support either of Defendants' 13 proposed constructions, the Court adopts a plain and ordinary meaning construction of the term 14 "providing a peripheral function for the electronic device." Fujitsu is therefore free to argue that a 15 person of ordinary skill in the art would understand this term to include routers and access points.
In summary, and for the reasons stated herein, the Court construes the disputed claim terms 18 of the '769 Patent as follows: 19
"edge portion" is to be given its plain and ordinary meaning; and "providing a peripheral function for the electronic device" is to be given its plain and 21 ordinary meaning. 22
IT IS SO ORDERED.