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
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 ...