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E. Digital Corporation v. New Dane

United States District Court, S.D. California

December 12, 2014

E.DIGITAL CORPORATION, Plaintiff,
v.
NEW DANE, d/b/a DANE-ELEC; GIGASTONE CORPORATION; and DANE ELEC CORP. USA, a/k/a DANE CORP.; Defendants. E.DIGITAL CORPORATION, Plaintiff,
v.
EYE-FI, INC., Defendant. E.DIGITAL CORPORATION, Plaintiff,
v.
MUSHKIN, INC., Defendant. E.DIGITAL CORPORATION, Plaintiff,
v.
OTHER WORLD COMPUTING, INC., Defendant. E.DIGITAL CORPORATION, Plaintiff,
v.
SEAGATE TECHNOLOGY LLC., Defendant.

CLAIM CONSTRUCTION ORDER

MARILYN L. HUFF, District Judge.

On September 18, 2014, Plaintiff e.Digital Corp. and Defendants Dane Elec. Corp. USA, Gigastone Corp., Eye-Fi, Inc., Mushkin, Inc., Other World Computing, Inc., Seagate Technology, LLC and Swissbit NA, Inc., filed a joint hearing statement in then-Lead Case No. 3:13-cv-2894-H-BGS, identifying twelve (12) disputed claim terms plus the preamble from U.S. Patent No. 5, 839, 108 ("the 108 patent").[1] (Doc. Nos. 38-40.) On October 30, 2014, the parties filed their opening claim construction briefs. (Doc Nos. 32 and 33 in new Lead Case No. 3:13-cv-2897-H-BGS.) On November 13, 2014, the parties filed responsive claim construction briefs. (Doc. Nos. 34 and 35.) The Court held a claim construction hearing on Friday, December 12, 2014 at 9:00 a.m. Anton Handal and Gabriel Hedrick appeared for Plaintiff e.Digital. Robert Ortiz appeared on behalf of defendants Mushkin, Inc. and Other World Computing, Inc.[2] D. Scott Hemingway was also present for the defendants.

Upon review of the parties' claim construction briefs and accompanying materials, the Court construes the disputed claim terms.

Background

This claim construction relates to Plaintiff's action against Defendants for infringement of the 108 patent. The 108 patent is a continuation-in-part of U.S. Patent No. 5, 787, 445 ("the 445 patent"). Plaintiff asserts only claim 1 of the 108 patent against the Defendants. With respect to the operative claim, the patent abstract of the 108 patent describes "a flash memory module which can record data according to industry standard formats to enable the transfer of data to and from personal computers through swapping of flash memory media." (See 108 patent, Abstract.)

Discussion

I. Legal Standards

A. Legal Standards for Claim Construction

Claim construction is an issue of law for the court to decide. Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). "The purpose of claim construction is to determin[e] the meaning and scope of the patent claims asserted to be infringed.'" O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008). "It is a bedrock principle' of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc).

Claim terms are generally given their ordinary and customary meaning. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). In patent law, the ordinary and customary meaning of a claim term is the meaning that the term would have to a person having ordinary skill in the art ("PHOSITA")[3] at the time of the invention. Phillips, 415 F.3d at 1313. In determining the meaning of a term, the PHOSITA 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. This test provides an objective baseline from which to begin claim interpretation. Id.

"In some cases, the ordinary meaning of claim language as understood by a [PHOSITA] may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words." Id. at 1314. "However, in many cases, the meaning of a claim term as understood by persons of skill in the art is not readily apparent." O2 Micro, 521 F.3d at 1360. If the meaning of the term is not readily apparent, the court must look to "those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean, " including intrinsic and extrinsic evidence. See Phillips, 415 F.3d at 1314. A court should begin with the intrinsic record, which consists of the language of the claims, the patent specification, and, if in evidence, the prosecution history of the asserted patent. Id.

In determining the proper construction of a claim, a court should first look to the language of the claims. See Vitronics, 90 F.3d at 1582; see also Comark Commc'ns. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998) ("The appropriate starting point... is always with the language of the asserted claim itself.") The context in which a disputed term is used in the asserted claim may provide substantial guidance as to the meaning of the term. See Phillips, 415 F.3d at 1314. In addition, the context in which the disputed term is used in other claims, both asserted and unasserted, may provide guidance because "the usage of a term in one claim can often illuminate the meaning of the same term in other claims." Id. A court must also read claims "in view of the specification, of which they are a part." Markman, 52 F.3d at 979; see 35 U.S.C. § 112(b) ("The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.") The specification "is the single best guide to the meaning of a disputed term, " and is usually dispositive of the term's meaning. Vitronics, 90 F.3d at 1582. In addition, "a claim construction that excludes the preferred embodiment is rarely, if ever, correct and would require highly persuasive evidentiary support." Adams Respiratory Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283, 1290 (Fed. Cir. 2010) (citations omitted). But "[t]he written description part of the specification does not delimit the right to exclude. That is the function and purpose of claims." Markman, 52 F.3d at 980; Comark Commc'ns, 156 F.3d at 1186 ("[L]imitations from the specification are not to be read into the claims....").

In construing the terms of a claim, even though claim terms are "understood in light of the specification, a claim construction must not import limitations from the specification into the claims." Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1354 (Fed. Cir. 2012). Moreover, "[e]ven when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction." Liebel Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004).

A court may also look beyond the patent and consult the prosecution history during claim construction. Phillips, 415 F.3d at 1317. The prosecution history consists of the complete record of the proceedings before the PTO and the prior art cited during the examination of the patent. Id. "[T]he 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 the prosecution, making the claim scope narrower than it would otherwise be." Id. Under the doctrine of prosecution disclaimer, "claims that have been narrowed in order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that which was previously by limitation eliminated from the patent." Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 33 (1966). But "in order for prosecution disclaimer to attach, the disavowal must be both clear and unmistakable." 3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1325 (Fed. Cir. 2013). "[D]isavowal during prosecution overcomes the heavy presumption that claim terms carry their full ordinary and customary meaning." Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1095 (Fed. Cir. 2013). Because "the prosecution history represents an ongoing negotiation between the PTO and the inventor, it often lacks the clarity of the specification and thus is less useful for claim construction purposes.'" Id. (quoting Phillips, 415 F.3d at 1317).

In most situations, analysis of the intrinsic evidence will resolve claim construction disputes. See Vitronics, 90 F.3d at 1583. However, "because extrinsic evidence can help educate the court regarding the field of the invention and can help the court determine what a person of ordinary skill in the art would understand claim terms to mean, it is permissible for the district court in its sound discretion to admit and use such evidence." Phillips, 415 F.3d at 1319. Extrinsic evidence "consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Id. at 1317. A court evaluates all extrinsic evidence in light of the intrinsic evidence. Id. at 1319. A court should not rely on extrinsic evidence in construing claims to contradict the meaning of claims discernable from examination of the claims, the written description, and the prosecution history. See Dow Chem. Co. v. Sumitomo Chem. Co., Ltd., 257 F.3d 1364, 1373 (Fed. Cir. 2001); Vitronics, 90 F.3d at 1583.

"[D]istrict courts are not... required to construe every limitation present in a patent's asserted claims." O2 Micro, 521 F.3d at 1362. In certain situations, it is appropriate for a court to determine that a claim term needs no construction and its plain and ordinary meaning applies. See id.; Phillips, 415 F.3d at 1314. But "[a] determination that a claim term needs no construction' or has the plain and ordinary meaning' may be inadequate when a term has more than one ordinary' meaning or when reliance on a term's ordinary' meaning does not resolve the parties' dispute." O2 Micro, 521 F.3d at 1361. If the parties dispute the scope of a certain claim term, it is the court's duty to resolve the dispute. Id. at 1362.

B. Legal Standards Regarding the Preamble

"Whether to treat a preamble term as a claim limitation is determined on the facts of each case in light of the claim as a whole and the invention described in the patent." Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010) (internal quotations omitted).

In general, the preamble "does not limit the claims." Id. (quoting Allen Engineering Corp. v. Bartell Industries, Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002)). But a preamble "may be construed as limiting if it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim.'" Id. (quoting Symantec Corp. v. Computer Associates Int'l, Inc., 522 F.3d 1279, 1288-89 (Fed. Cir. 2008)). "When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention." Eaton Corp. v. Rockwell Intern. Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). "[C]lear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention." Id. (quoting Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). On the other hand, because a claim preamble typically exists to "give context for what is being described in the body of the claim[, ] if it is reasonably susceptible to being construed to be merely duplicative of the limitations in the body of the claim (and was not clearly added to overcome a rejection), [a court does] not construe it to be a separate limitation." Id. at 1288-89. As a result, "[a] preamble is not limiting... where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention." Symantec, 522 F.3d at 1288 (internal quotations omitted).

C. Legal Standards Regarding Indefiniteness and Incorporation by Reference

A patent specification must "conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as [the] invention." 25 U.S.C. §112 ¶2 (2006 ed.). "[A] patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention." Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2124 (2014). "The definiteness requirement... mandates clarity, while recognizing that absolute precision is unattainable." Id. at 2129. "[A] patent does not satisfy the definiteness requirement of § 112 merely because a court can ascribe some meaning to a patent's claims.' The claims, when read in light of the specification and the prosecution history, must provide objective boundaries for those of skill in the art." Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014) (quoting Nautilus, 134 S.Ct. at 2130 & n.8).

To establish the meaning of a claim, a court can consider "[m]aterial not explicitly contained in the single, prior art document... if that material is incorporated by reference into the document." Adv. Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). "Incorporation by reference provides a method for integrating material from various documents into a host document [] by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein. To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents. Whether material has been incorporated by reference into a host document, and the extent to which it has been incorporated, is a question of law." Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378-79 (Fed. Cir. 2007) (internal quotations and citations omitted). "In making that determination, the standard is whether one reasonably skilled in the art would understand the application as describing with sufficient particularity the material to be incorporated." Harari v. Lee, 656 F.3d 1331, 1334 (Fed. Cir. 2011).

II. Analysis of the Disputed Terms

A. The Preamble is Not Limiting

Defendants and Plaintiff disagree as to whether the preamble of claim 1 of the 108 patent is limiting. Defendants argue that the preamble is limiting because the patentees of the parent 445 patent relied on the terms "file system, " "primary memory, " and the "direct manipulation... of data segments" from the preamble of that patent to distinguish prior art references cited by the examiner. (Doc. No. 33 at 10:2-12:19.) Plaintiff responds that Defendants misread the prosecution history of the 445 patent and that the limitations of claim 1 of the 108 patent constitute a self-contained description of the invention. (Doc. No. 32 at 5:4-6:25; Doc. No. 34 at 6:17-8:9.)

The Court agrees with Plaintiff that the body of claim 1 defines the requisite components of the claimed invention and is thus a self-contained description of the invention. See Symantec, 522 F.3d at 1288-1289. Without the preamble, the invention remains functionally complete. The preamble simply defines the intended use of the method that is described in the body of the claim. Catalina Mktg., 289 F.3d at 808 ("a preamble is not limiting where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention'"). Accordingly, the preamble of Claim 1 is not limiting.

B. "file system"

Defendants seek a construction of the term "file system, " which is contained only in the preamble of claim 1. Defendants propose the term to mean "system to organize and keep track of files without using file allocation tables (memory maps)." (2894 Case, Doc. No. 39 at 20.)

The Court declines Defendants' proposed construction. In the 108 patent, the preamble is not limiting. See Symantec, 522 F.3d at 1288 ("A preamble is not limiting... where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.") (internal quotations omitted). Since the term "file system" is only contained within the preamble, the term therefore need not be construed.

C. "primary memory"

Defendants propose that this term should be construed as "main memory of a computer system, i.e., the main general-purpose storage to which the microprocessor has direct access." (2894 Case, Doc. No. 39 at 3.) Plaintiff argues that Defendants are proposing the plain and ordinary meaning of the term primary memory whereas the invention discloses something different, namely a non-volatile primary memory composed of a plurality of blocks, which Plaintiff argues is distinct from the plain and ordinary meaning of "primary memory." (Doc. No. 32 at 10:27-13:17.) Plaintiff argues that, as a result, the term should be construed together with the entirety of the claim limitation "creating the primary memory from a non-volatile, long-term storage medium, wherein the primary memory comprises a plurality of blocks in which the data segments are to be stored." (Id.; see also 2894 Case, Doc. No. 39 at 3-4.)

The Court agrees with Plaintiff. The term "primary memory" should be construed in the context of the full claim limitation. The Court's construction for the full claim term is explained below. Primary memory at the time of the invention was commonly associated with RAM or "main memory, " a form of volatile memory.[4] (See Doc. No. 13:7-14:3.) Claim 1 of the 108 patent discloses "creating the primary memory from a non-volatile, long-term storage medium, wherein the primary memory comprises a plurality of blocks in which the data segments are to be stored." (108 patent claim 1; see also Doc. No. 33 at 17:23-27 ("defendants propose replacing primary memory' with non-volatile, long-term memory, ' because the claim itself states that primary memory is created from a non-volatile, long-term storage medium'").) Yet, Defendants propose the plain and ordinary meaning of the term, which would include volatile "main memory" or RAM. This is inconsistent with the disclosure of claim 1 of the 108 patent. Accordingly, the term "primary memory" is therefore best understood in the context of the full claim limitation as construed by the Court.

D. "creating the primary memory from a non-volatile, long-term storage medium, wherein the primary memory comprises a plurality of blocks in which the data segments are to be stored";

Plaintiff proposes that this phrase should be construed as "causing a portion or portions of a non-volatile long term storage medium, comprised of a plurality of blocks in which the data segments are to be stored, to perform at least one of a host's primary memory functions." (2894 Case, Doc. No. 39 at 6.) Defendants propose that the term should mean "dividing the non-volatile, long-term memory into equal size blocks, each block being the ...


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