United States District Court, N.D. California
CLAIM CONSTRUCTION ORDER Re: Dkt. No. 49
JEFFREY S. WHITE UNITED STATES DISTRICT JUDGE
The
Court has been presented with a technology tutorial and
briefing leading up to a hearing pursuant to Markman v.
Westview Instruments, Inc., 517 U.S. 370 (1996). This
Order construes the disputed claim terms selected by the
parties, which appear in the patents at issue in this case:
U.S. Patent Nos. 6, 356, 841 (“'841 Patent”),
6, 744, 759 (“'759 Patent”), 7, 228, 432
(“'432 Patent”), 7, 302, 698 (“'698
Patent”), 7, 567, 575 (“'575 Patent”),
and 8, 429, 231 (“'231 Patent”).
BACKGROUND
Plaintiff
Facebook, Inc. (“Facebook”) contends that
Defendants BlackBerry Limited and BlackBerry Corporation
(collectively, “BlackBerry”) infringe six of its
patents. The six patents are described as follows:
• The '841 Patent is titled “G.P.S. Management
System” and is directed towards “a management
system” that uses G.P.S. receivers to “track[]
remote units from a central office” and further
“determin[e] if those remote units have varied from a
set of predetermined parameters of operation.”
('841 Patent, Title, Abstract.)
• The '759 Patent is titled “System and Method
for Providing User-Configured Telephone Service in a Data
Network Telephony System” and is directed to
“providing user-configured telephone service to a user
of a data network telephone.” ('759 Patent, Title,
Abstract.)
• The '432 Patent is titled “Method and
Apparatus for Providing Security for a Computer System”
and is directed to “providing security for a computer
system” using a “dedicated security
processor” that receives a request for a file,
validates the file, and provides the requested file to
another processor. ('432 Patent, Title, Abstract.)
• The '698 Patent is titled “Operation of
Trusted State in Computing Platform.” ('698 Patent,
Title.) The '698 Patent is purportedly directed to
placing a computer entity into a trusted state and monitoring
that state using a trusted component. (Id.,
Abstract.)
• The '575 Patent is titled “Personalized
Multimedia Services Using a Mobile Service Platform”
and is directed to “providing multimedia data”
from a multimedia source to a mobile device by communicating
a series of information. ('575 Patent, Title, Abstract.)
• The '231 Patent is titled “Voice Instant
Messaging” and is directed towards establishing both
instant messaging and voice communication “through an
instant messaging host.” ('231 Patent, Title,
Abstract.)
The
parties initially proposed ten terms for claim construction.
(Dkt. No. 71.) However, following the Court's Order
regarding tentative constructions and questions for the
hearing (Dkt. No. 78), the parties agreed on four of the
terms. (Dkt. Nos. 80, 81, 85.) The parties also modified in
part their proposed constructions in response to the
Court's questions. (Dkt. No. 80.) The Court shall address
additional facts as necessary in the remainder of this Order.
ANALYSIS
A.
Legal Background
Claim
construction is a question of law for the Court.
Markman, 517 U.S. at 384. 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) (citation
omitted). “The purpose of claim construction is to
determine 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). The Court has an obligation to assign “a fixed,
unambiguous, legally operative meaning to the claim” in
order to “ensure that questions of the scope of the
patent claims are not left to the jury.” Every
Penny Counts, Inc. v. Am. Express Co., 563 F.3d 1378,
1383 (Fed. Cir. 2009) (quotation omitted).
Claim
terms are generally given “their ordinary and customary
meaning”-i.e., “the meaning that the terms would
have to a person of ordinary skill in the art at the time of
the invention.” Phillips, 415 F.3d at 1312-13.
There are only two exception to this rule: (1) “when a
patentee sets out a definition and acts as his own
lexicographer, ” and (2) “when the patentee
disavows the full scope of a claim term either in the
specification or during prosecution.” Thorner v.
Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365
(Fed. Cir. 2012).
In
determining the ordinary and customary meaning, the claim
language “provide[s] substantial guidance as to the
meaning of particular claim terms.” Phillips,
415 F.3d at 1314. Additionally, “the context in which a
claim term is used in the asserted claim can be highly
instructive.” Id. However, a 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. at
1313. The specification “is always highly relevant to
the claim construction analysis” and is usually
“dispositive.” Id. at 1315. The scope of
the claims must be “determined and confirmed with a
full understanding of what the inventors actually invented
and intended to envelop with the claim.” Id.
at 1316 (quoting Renishaw PLC v. Marposs Soceta' per
Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)). The
construction that “stays true to the claim language and
most naturally aligns with the patent's description of
the invention will be, in the end, the correct
construction.” Id.
In
addition to the claims and the specification, the prosecution
history may be used “to provide[] evidence of how the
PTO and the inventor understood the patent.”
Id. at 1317. The prosecution history can demonstrate
“how the inventor understood the invention and whether
the inventor limited the invention in the course of
prosecution.” Id. “[A]ny explanation,
elaboration, or qualification presented by the inventor
during patent examination is relevant, for the role of claim
construction is to ‘capture the scope of the actual
invention' that is disclosed, described and
patented.” Fenner Inv., Ltd. v. Cellco
P'ship, 778 F.3d 1320, 1323 (Fed. Cir. 2015). The
claims, specification, and prosecution history together
constitute the “intrinsic evidence” that forms
the primary basis for claim construction. Phillips,
415 F.3d at 1312-17 (citation omitted). Courts may also
consider extrinsic evidence if it is “helpful in
determining the ‘true meaning of language used in the
patent claims'” and is not contradicted by the
intrinsic evidence. Id. at 1318 (quoting
Markman, 52 F.3d at 980).
B.U.S.
PATENT NO. 6, 356, 841
1.“central
location” (claims 12 and 23)
-
Facebook's Proposed
Construction
|
BlackBerry's Proposed
Construction
|
Final Construction
|
No construction necessary at this time.
Alternatively, if construction is needed,
“location that communicates with the remote
unit and is different from the remote unit.”
|
a single location that receives, stores, and
analyzes GPS and other data from one or more remote
unit
|
an integrated set of components that receives,
stores, and analyzes G.P.S and other data from one
or more remote unit
|
The
term “central location” appears in asserted
claims 12 and 23, as well as unasserted claims 1, 17, 29, and
36 of the '841 Patent. The '841 Patent describes a
“central location” or “central
office” that monitors remote units (such as vehicles)
using G.P.S. and optionally compares the received information
to predetermined values (such as an allowed time for the
vehicle to remain in one place). ('841 Patent, Abstract,
1:34-48.) The parties dispute (1) whether the term
“central location” requires construction, (2) the
functions performed by the central location, and (3) whether
a “central location” can encompass a distributed
solution, in which multiple locations scattered around the
world together constitute the “central location.”
As an
initial matter, the term “central location”
requires construction. Although the term
“location” has an ordinary lay meaning-a physical
place-that lay meaning fails to resolve the parties'
dispute. Specifically, the term “location”
invites the parties to debate whether components located at
different “points in space” are sufficiently far
apart to constitute different
“locations.”[1]The '841 Patent provides no guidance
in this regard as it is silent about the spatial
configuration of the “central location.”
Moreover, there is evidence that the '841 Patent does not
use the lay meaning of “location.” The
prosecution history reveals that the term “central
location” was added to replace “central
office” in order to avoid confusion with a specialized
meaning of “central office.” (Dkt. 49-1
(“June 26, 2001 Amendment”) at 15.) Figure 19
shows the “central office” as a set of components
without any reference to the spatial “location”
of those components. ('841 Patent, Fig. 19.) The claims
also recite that the “central location” performs
functions related to communication and data analysis-which
are far afield from the ordinary behavior of physical places.
(E.g., id., claims 1, 23.) The term
“central location” therefore requires
construction.
“Central
location” is hereby construed as “an integrated
set of components that receives, stores, and analyzes G.P.S
and other data from one or more remote unit.” This
meaning is clear from the claims, specification, and
prosecution history of the '841 Patent. First, the claims
require the “central location” to communicate
with remote units, receive G.P.S. data from those units, and
(in most claims) compare the received data “to a
predetermined parameter having a range of acceptable
values” and note an exception if the predetermined
parameter is “outside the range of acceptable
values.” (Id., claims 1-50.) The claims thus
make clear that the “central location” is or has
a computer system capable of communication and data
processing functions.
The
specification confirms this understanding. Figure 19 shows a
preferred embodiment of the “central office” that
“includes provisions to receive and process information
sent to it by the other components.” (Id.,
7:51-55.) The “central office” comprises a set of
components, including: two wireless communication devices, a
processor, a storage device, and a set of applications.
(Id., 7:56-8:24.) The components work together to
perform communication and data analysis. The processor
receives data from the remote units through the communication
devices and “prepares the information for storage in
storage device.” (Id., 8:12-18.) The storage
device stores the data for further operation. (Id.,
8:16-19.) The applications “prepare reports and perform
other functions” with the stored data. (Id.,
8:19-24.) Figures 7 through 18 show the reports generated by
the central office, which include information about the
“average engine run time, ” “average
mileage, ” and “daily route history” for
each vehicle. (Id., 8:23-24, Figs. 7-18.) The
specification thus confirms that the “central
location” is primarily a functional system-a set of
components that work together to perform communication and
data processing-rather than a particular physical place.
Finally,
the prosecution history further confirms that the
“central location” is defined by its centralized
data processing and communication abilities. During
prosecution, the patentee replaced “central
office” (the term used in the specification) with
“central location” in all claims. (June 26, 2001
Amendment at 15.) The patentee explained that the amendment
“was not done for any purpose related to patentability,
but rather to clarify the meaning of the claims” and
“avoid the possible confusion” with a specialized
meaning of “central office” in the field of
telecommunications networks. (Id.) Contemporaneous
technical dictionaries define “central office” in
communications as “the switching center where
interconnections between customers' communications lines
are made.” (Dkt. No. 51-6 (“Microsoft Computer
Dictionary”) at 3.) Thus, the prosecution history
demonstrates that “central location” in the
'841 Patent is similar to-but broader than-a place that
centrally receives and processes (interconnects)
communication lines. Accordingly, a “central
location” is “an integrated set of components
that receives, stores, and analyzes G.P.S and other data from
one or more remote unit.”
Facebook
argues in its brief that a broader meaning should apply.
First, Facebook argues that the patentee defined a broader
meaning of “central location” during prosecution.
While amending the claims to replace “central
office” with “central location, ” the
applicant stated that “[w]hile the ‘central
location' used in these claims could refer to or coincide
with a ‘central office,' as the term is understood
in the field of telecommunications networks, ” the
'841 Patent claims are not so limited, and “the
central location could be any location that communicates with
the remote unit and is different from the remote unit.”
(June 26, 2001 Amendment at 15.) Facebook does not contend
that the applicant acted as a lexicographer in making this
statement, and the Court finds that it did not.
Although
the prosecution history statement is probative of a broad
meaning for “central location, ” it is at odds
with the claims and specification of the '841 Patent. The
claims themselves require that the “central
location” receive data transmitted from the remote
units and perform data processing, such comparing data to
predetermined values. ('841 Patent, claims 1-11, 16-50.)
A construction that allowed “any location” to
satisfy this limitation would conflict with the other
requirements of the claims. Furthermore, the specification
states that the purported invention of the '841 Patent is
to centrally track and monitor remote units. (Id.,
1:6-9, 1:34-35, 2:55-57.) The '841 Patent describes prior
art “[c]onventional G.P.S. systems” that
“do not allow centralized storage and processing of
information” and “cannot track multiple G.P.S.
users.” (Id., 1:11-27; see also id.,
1:28-31 (describing problems in the prior art “because
the G.P.S. information is not collected and
analyzed”).) The '841 Patent improves over the
prior art because “the present invention includes
provisions for collecting, remotely storing, transmitting,
centrally storing and analyzing G.P.S. data and other data,
from a central location.” (Id., 1:35-38.) A
construction that allowed “any location” to be
the central location would fail to capture this feature of
“the present invention” or achieve any
improvement over the prior art. Accordingly, the
“central location” must receive, store, and
analyze data from the G.P.S. units in order to centrally
track multiple remote units-not just communicate with those
units.
Second,
Facebook argues in its brief that the term
“location” should have its plain and ordinary
meaning-which the Court understands to mean a physical place.
In response to the Court's tentative constructions,
however, Facebook agreed that the “central
location” can be an integrated set of components, while
BlackBerry argued that the “central location”
must be a physical location-such as a building or
facility-that merely houses the components performing
communication and data processing. (See Dkt. No. 80
(“Joint Statement”) at 2.) BlackBerry argues that
by using the term “central location, ” the
patentee excluded noncentralized solutions where
geographically distributed components perform the role of the
central office.
The
Court broadly agrees that a “central location”
may be a physical place that houses the integrated set of
components that performs the required functions. However,
there is no indication that the '841 Patent considers
physical location important and it may simply refer to a
logical “place.” Specifically, the '841
Patent does not appear to be concerned with spatial or
geographic centrality. For example, it does not describe a
place or distance that the “central location”
must occupy relative to the remote units. Instead, the
'841 Patent is primarily concerned with functional
centrality-centralized data processing and communication.
('841 Patent, 1:11-30, 1:33-48.) The '841 Patent
improves conventional G.P.S. systems that cannot determine
“location history” or “track multiple
users” because the G.P.S. information is stored locally
with the users. (Id., 1:17-27.) The '841 Patent
provides an improvement by storing G.P.S. information in one
logical “place” (i.e., in a single system) that
can then track multiple users and analyze location history.
(Id., 1:33-48.) While centralized communication and
data processing require a single integrated system to act as
the “central location, ” it does not require a
single physical location for that system.
The
intrinsic evidence confirms this interpretation. The
specification describes several “locations” where
the physical place is important, but the “central
location” is not one of them. For instance, the
specification describes a “service center” for
vehicles that can be geographically designated by selecting a
point on a map and an “alert call center” that is
shown as a physical building in Figure 3. (Id.,
3:50-53, 8:50-51, Fig. 3.) By contrast, the “central
office” is never described in geographic terms, and
Figure 19 shows a set of components without any surrounding
building. (Id., Fig. 19.) The prosecution history
also supports broadening “central location”
beyond a physical place. During prosecution, the applicant
replaced “central office”-defined as a
“switching center where interconnections between
customers' communications lines are made”- with
“central location.” (June 26, 2001 Amendment at
15.) While a “central office” must presumably be
a single physical location to receive and interconnect
physical communication lines, the claimed “central
location” communicates using wireless methods (such as
“satellite, cellular, and/or wireless”) and thus
does not need to be a physical location to receive
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