United States District Court, N.D. California
ORDER GRANTING MOTION FOR RECONSIDERATION Re: ECF No. 880
JON S. TIGAR, District Judge.
The Court previously issued an Order Construing and Determining Validity of Claims of United States Patent No. 5, 592, 491 ("Claim Construction Order"), ECF No. 748, 2013 WL 3455631, 2013 U.S. Dist. LEXIS 95003 (N.D. Cal. July 8, 2013). The patentholder, EON Corp IP Holdings LLC ("EON") subsequently moved for leave to file a motion for reconsideration of various aspects of the Claim Construction Order. The Court granted leave for EON to file a motion seeking reconsideration of only the following two issues:
1. Whether the Court (a) erred in concluding that the "switching means" must perform the specific functions of "gathering, determining and selecting, " and, if so, (b) whether, after correcting that error, the Court should necessarily reconsider its ultimate invalidity conclusion.
2. Whether the Court should clarify its construction of the "modem communicatively coupled" term to clarify whether the term "connected" refers to the type of communications protocol utilized, and whether the parties do or do not have an O2 Micro dispute over the type of communications protocol encompassed within the scope of the claim.
Order Granting in Part and Denying in Part Plaintiff's Motion for Leave to File a Motion for Reconsideration, ECF No. 873. The matter came for hearing on January 23, 2014. The Court will revise its Claim Construction Order in the following manner and for the following reasons.
A. Indefiniteness of Claims 1 and 13: "switching means"
The parties agree that the term "switching means" in Claims 1 and 13 of the 491 Patent is a means-plus-function term, and that the claimed function is "selecting a communication path." See Joint Claim Construction and Prehearing Statement Exhibit B at 5, ECF No. 579-2. In the Claim Construction Order, the Court concluded that Claims 1 and 13 of the 491 Patent were invalid for indefiniteness because the patent failed to identify sufficient structure to perform the claimed function. 2013 WL 3455631, at *2-6, 2013 U.S. Dist. LEXIS 95003, 15-27.
In determining the nature of the claimed function of "selecting a communications path, " the Court reviewed the intrinsic record and concluded:
[T]he switching means gathers information about how much rf signal the subscriber unit is receiving and determines whether the subscriber unit is able' or unable' to receive rf signals, on this basis selects the appropriation path, and then performs the switch. In other words, it makes a determination. No other feature of the invention performs this function. It must be the "switching means."
Claim Construction Order 6:1-6, 2013 WL 3455631, at *4, 2013 U.S. Dist. LEXIS 95003, 19. In its Motion for Reconsideration, EON has pointed out that other elements of the intrinsic record, particularly U.S. Patent No. 5, 388, 101 ("the 101 Patent"), of which the 491 Patent is a continuation-in-part, indicate that other disclosed elements actually perform the functions of "gathering information" about rf signal, and "determining" whether the unit is able to receive rf signals. Notably, a disclosed "frequency control component" is disclosed to monitor transmission frequency, a disclosed "data processor" enables the subscriber unit to make rf signal strength assessments, and disclosed subscriber unit software assesses whether signal strength goes below a threshold value. 101 Patent at 9:14-19, 10:15-31, 10:39-43. Therefore, EON argues that a personal of ordinary skill of the art would understand these functions to already be claimed by elements in the 101 Patent, which are incorporated within the "subscriber unit" claimed in the 491 Patent. See 491 Patent at 1:43-52, 2:3-11.
In their opposition brief, Defendants argue:
There is no question that the '491 patent explains that selection of a communications path requires a determination of which path to use. See, e.g., '491 patent, claim 5. The Court's finding that the "selecting" function includes making "a determination" and, consequently "gathering, determining, and selecting, " i.e. "choosing, " is ...