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Intellect Wireless, Inc. v. Kyocera Communications

June 29, 2010

INTELLECT WIRELESS, INC., PLAINTIFF,
v.
KYOCERA COMMUNICATIONS, INC., AND KYOCERA WIRELESS CORP., DEFENDANTS.



The opinion of the court was delivered by: James F. Holderman Chief Judge, United States District Court

MEMORANDUM OPINION AND ORDER

JAMES F. HOLDERMAN, Chief Judge

On April 8 and April 19, 2010, this court held a claim construction hearing on the disputed claim terms of U.S. Patent Nos. 7,266,186 ("'186 Patent") and 7,310,416 ("'416 Patent") pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). After initially evaluating the evidence intrinsic to the patenting process, the court found that although the intrinsic record provided some meaning that was helpful to the interpretation of the disputed claim terms to a person of ordinary skill in the art, consideration of extrinsic evidence was called for and appropriate in this case. Consequently, the court also has evaluated expert testimony among other extrinsic evidence. Having considered all the evidence, both the intrinsic evidence and the extrinsic evidence, along with counsels' arguments, the relevant legal authority, and the parties' submissions, the court rules as stated below as to the meanings of the five disputed claim terms to a person of ordinary skill in the art at the time of the application for the respective patents at issue in this suit.

BACKGROUND

Plaintiff Intellect Wireless, Inc. ("Intellect Wireless") brought this suit against Motorola, Inc. ("Motorola"), LG Electronics, Inc. ("LG"), Sanyo North America Corporation ("Sanyo"), Kyocera Communications, Inc. (formerly known as Kyocera Sanyo Telecom, Inc.) ("Kyocera Communications"), and Kyocera Wireless Corp. ("Kyocera Wireless") for infringement of the '186 and '416 Patents and against Sprint Spectrum L.P. ("Sprint") for infringement of the '186 Patent and U.S. Patent Nos. 7,257,210 and 7,305,076. Motorola, LG, Sanyo, and Sprint have been dismissed from this dispute pursuant to settlements those defendants reached with Intellect Wireless. Intellect Wireless accuses Kyocera Communications and Kyocera Wireless (collectively "Kyocera"), the only remaining defendants, of infringing claims 1, 2, 4, 5, 8, 10, 13, 14, 17, 34, and 35 of the '186 Patent and claims 1, 2, 4, 7, 25, 35, 36, 43, and 44 of the '416 Patent.

Intellect Wireless is the assignee of the '186 and '416 Patents, and Daniel A. Henderson is the named inventor. Both the '186 and '416 Patents share a common specification and claim priority to the 08/177,851 application, which was filed on January 5, 1994 and ultimately issued as U.S. Patent No. 6,278,862 ("'862 Patent"). The '186 Patent, which is titled "Method and Apparatus for Improved Personal Communication Devices and Systems,"*fn1 was filed on December 19, 2001, and issued on September 4, 2007; it is a continuation-in-part of the U.S. Patent No. 7,426,264 ("'264 Patent") which is a continuation-in-part of the '862 Patent. The '416 Patent, which is also titled "Method and Apparatus for Improved Personal Communication Devices and Systems," was filed on January 28, 2005, and issued on December 18, 2007; it is a division of the '186 Patent.*fn2

Asserted claim 1 of the '186 Patent is an independent apparatus claim directed to a wireless portable communication device. '186 Patent, col.46 l.43. Asserted claims 2, 4, 5, 8, 10, 13, 14, 17, 34, and 35 of the '186 Patent depend on either claim 1 or on a claim or claims that depend on claim 1.

Claim 1 of the '186 Patent provides the following: A wireless portable communication device for use by a message recipient for receiving a picture from a message originator having a telephone number, comprising: a receiver operably coupled to receive a message from a message center over a wireless connection, the message including a non-facsimile picture supplied by the message originator and a caller ID automatically provided by a communications network that identifies the telephone number of the message originator, the message originator sending the caller ID with the picture to the message center; a display; and a controller operably coupled to display the picture and caller ID on the display. Id. at col.46 ll.43-56.

Claim 1 of the '416 Patent also claims an independent apparatus directed to a wireless portable communication device. '416 Patent, col.46 l.39. Asserted claims 2, 4, 7, 25, 35, and 36 of the '416 Patent depend on either independent claim 1 or on a claim or claims that depend on claim 1.

Claim 1 of the '416 Patent claims the following: A wireless portable communication device comprising: a CPU; a portable receiver operably coupled to receive a message from a message center over a wireless connection, the message including a non-facsimile picture supplied by the message originator and a caller ID automatically provided by a communications network that identifies the telephone number of the message originator, the message originator sending the caller ID with the picture to the message center, the portable receiver coupled to the CPU; a memory that stores (1) Caller ID data received and (2) data associated with actual or potential communicants in a database, wherein the data represents at least one of:

a) a telephone number;

b) name;

c) address; and

d) picture information; a small display coupled to and operable by the CPU that allows viewing data stored in memory that is associated with actual or potential communicants or received Caller ID data; a connector; and a detachable input interface that is releasably connected to the connector that is utilized to add or modify the stored data associated with actual or potential communicants.

Id. at col.46 ll.39-65.

Lastly, independent claim 43 of the '416 Patent claims the following "wireless portable communication device":

A wireless portable communication device for use by a message recipient for receiving a picture from a message originator having a telephone number, comprising: a receiver operably coupled to receive a message from a message center over a wireless connection, the message including a non-facsimile picture supplied by the message originator with a caller ID automatically provided by a communications network that identifies the telephone number of the message originator; a memory that stores caller ID data received and a received picture; a display for displaying the received picture and the received caller ID; and a controller operably coupled to display data that is stored in memory.

Id. at col.50 ll.27-41. Asserted claim 44 depends on independent claim 43.

The parties have narrowed their claim construction disagreement to five claim terms for the court to construe: (1) "receiver," (2) "message center," (3) "caller ID," (4) "automatically provided by a communications network," and (5) "message originator sending the caller ID with the picture to the message center." Both Intellect Wireless and Kyocera filed briefs and materials in support of their respective interpretations of the five disputed claim terms, and on April 8 and 19, 2010, the court held a hearing during which Kyocera presented the testimony of Dr. Harold Poor, an expert in wireless communications. Both sides' attorneys thereafter presented their oral arguments as to their respective positions The court has carefully considered the matter as discussed below.

LEGAL STANDARDS

Claim construction is a matter of law for the court. Markman v. Westview Instruments, Inc., 517 U.S. 370, 390 (1996). "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) (citing Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). In construing a patent claim, courts are to give claim terms their "ordinary and customary meaning," which is "the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention." Id. at 1312-13. The ordinary and customary meaning of a term is determined in light of the entire intrinsic evidence, e.g., the claims, the specification, and the prosecution history. Id. at 1313. In reviewing the specification to determine the meaning of claim terms, however, "courts must take care not to import limitations into the claims from the specification." Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir. 2009).

CLAIM CONSTRUCTION

A. Person of Ordinary Skill in the Art

The parties agreed that for purposes of construing the disputed claim terms in the '186 and '416 Patents, a person of ordinary skill in the art at the time of the invention would have had a Bachelor's Degree in electrical engineering and at least two years of experience in system design work in the portable wireless communications field, a Master's Degree in electrical engineering, and at least one year of experience in systems design work in the portable wireless communications field or equivalent experience designing portable wireless systems or in the electronic engineering field. (4/8/10 Tr. 6:6-7:22.) Additionally, the parties stipulated that the "time of the invention" for purposes of determining the plain and ordinary meaning of the disputed claim terms is the mid-1990s. (Id. at 5:5-6:4.)

B. Construction of Disputed Claim Terms

1. "Receiver"

The disputed claim term "receiver" appears in claims 1, 2, 4, 7, 25, 35, 36, 43, and 44 of the '416 Patent and claims 1, 2, 4, 5, 8, 10, 13, 14, 17, 34, and 35 of the '186 Patent. Kyocera seeks to have the court construe "receiver" as "circuitry for receiving RF transmissions operably coupled to a paging network." (Dkt. No. 207 ("Kyocera Br.") at 6.) Intellect Wireless, on the other hand, challenges the "operably coupled to a paging network" limitation in Kyocera's proffered definition. Intellect Wireless contends that the "receiver" is simply a "circuit or device for receiving signals." (Dkt. No. 212 ("Intellect Wireless Resp.") at 7.) The dispute between the parties centers on whether the "receiver" in the asserted claims of the '186 and '416 Patents must include circuitry which enables it to communicate with a paging network.

In construing the disputed terms, the court first looks to the claim language. See Phillips, 415 F.3d at 1312. Here, the asserted claims in the '186 and '416 Patents do not expressly require that the "receiver" be coupled to or able to communicate with a paging network. Claim 1 of the '186 Patent and claims 1 and 43 of the '416 Patent state that the "receiver" is "operably coupled to receive a message from a message center over a wireless connection." '186 Patent, col.46 ll.46-47; '416 Patent, col.46 ll.41-42, col.50 ll.30-31. Those claims additionally only identify "a communications network" wit hout expressly defining the type of network, i.e. paging or cellular. '186 Patent, col.46 l.50; '416 Patent, col.46 l.45, col.50 l.34.

The doctrine of claim differentiation further supports Intellect Wireless's position that the claimed "receiver" is not necessarily operably coupled to a paging network. Under that doctrine, "the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim." Phillips, 415 F.3d at 1315. Dependent claim 14 of the '186 Patent, for example, claims "[a] wireless portable communication device according to claim 1, wherein the receiver comprises at least one of: a page receiver; a cellular telephone receiver; a radio frequency receiver; and a personal digital receiver." '186 Patent, col.47 ll.48-53. By stating that the "receiver" includes at least a "page receiver," claim 14 indicates that the "receiver" in independent claim 1 is not required to include a page receiver or, in other words, a receiver operably coupled to a paging network. If, as Kyocera argues, the claimed "receiver" in independent claim 1 of the '186 Patent must be operably coupled to a paging network, the inclusion of a "page receiver" in dependent claim 14 would be redundant.

Dependent claims 7 and 8 of the '416 Patent also undercut Kyocera's argument that the claimed "receiver" in the asserted claims must be able to communicate with a paging network. Dependent claim 7 states that "the communication network includes a cellular system and the wireless portable communication device includes one of a cellular telephone device or a two-way communication device." '416 Patent, col.47 ll.14-18. The communications network which provides the caller ID in claim 1 of the '416 Patent presumably is broader than the communications network in dependent claim 7. Dependent claim 7, therefore, indicates that the communication network in independent claim 1 is not limited to a paging network, as Kyocera contends, but could instead be a cellular communications system. As a result, the claimed "receiver," which receives the message, need not be operably coupled to a paging network.

Additionally, dependent claim 8 of the '416 Patent claims "[a] wireless portable communication device as in claim 1 where the communications network includes a paging system and the wireless communication device is a pager." Id. at col.47 ll.19-21. Again, because the communications network in the independent claim is presumed to be broader than in the dependant claim, requiring the communications network in claim 1 of the '416 Patent to include a paging system would render superfluous the language in dependent claim 8 specifying that "the communications network includes a paging system." Accordingly, the language of the claims does not support the "operably coupled to a paging network" limitation in Kyocera's proposed definition. See Bradford Co. v. Conteyor N. Am, Inc., 603 F.3d 1262, 1271 (Fed. Cir. 2010) (relying on claim differentiation to determine that disputed claim term was "entitled to a broader scope than the district court allowed").

Nor do the specifications or the prosecution histories of the patents at issue support imposing Kyocera's "paging" limitation into the claims. Admittedly, Kyocera is correct that the specifications are replete with references to "paging" and "pagers." The Field of Invention, for example, explains that "[t]his invention relates in general to communications systems and in particular to wireless communications systems which include paging devices." '186 Patent, col.1 ll.25-28. Similarly, the specifications' Description of the Prior Art "is specifically related to stored voice paging receivers and paging systems." Id. at col.1 ll.34-35.

Nevertheless, "[t]he claims, not specification embodiments, define the scope of patent protection." Kara Tech., Inc. v. Stamps.com Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009). "Generally, a claim is not limited to the embodiments described in the specification unless the patentee has demonstrated a 'clear intention' to limit the claim's scope with 'words or expressions of manifest exclusion or restriction.'" i4i Ltd. P'ship v. Microsoft Corp., 598 F.3d 831, 843 (Fed. Cir. 2010) (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)).*fn3

In this case, the specifications do not support requiring the "receiver" to be operably coupled to a paging network. First, the Abstracts for the '186 and '416 Patents illustrate that the court's construction of "receiver" should not depart from the term's plain and ordinary meaning. See Hill-Rom Co. v. Kinetic Concepts, Inc., 209 F.3d 1337, 1341 n.* (Fed. Cir. 2000) ("We have frequently looked to the abstract to determine the scope of the invention, and we are aware of no legal principle that would require us to disregard that potentially helpful source of intrinsic evidence as to the meaning of claims.") (citations omitted); Lucent Techs., Inc. v. Gateway, Inc., 525 F.3d 1200, 1207-10 (Fed. Cir. 2008) (reviewing patent's abstract in determining that specification did not support the district court's claim construction). The '186 Patent's Abstract, for example, recognizes that "[t]he personal communication device can be a cellular telephone, PDA or pager." Similarly, the '416 Patent's Abstract states: "The wireless communication device may include a cellular or paging link and can receive Caller ID data originating from the public switched telephone network over a wireless communication system." Notably, the Abstract for the '416 Patent does not require that the claimed "receiver" be able to communicate with a paging network but rather merely indicates that the "receiver" may have such a capability.

Regarding the remainder of the specifications, although Intellect Wireless directs the court to the various references to "cellular" throughout the patent, the court finds that the following discussion of the AT&T "EO" is persuasive support for Intellect Wireless's position that the claimed "receiver" is not necessarily coupled to paging network:

Personal communication device 61 [sic] may be a receive-only device, such as a paging device, or a more sophisticated bi-directional communication device, such as a personal communication device or personal digital assistant, such as the personal digital assistant sold under the trademark "Macintosh Newton" by Apple Computer, or the product sold by AT&T under the trademark "EO." '186 Patent, col.36 l.66-col.37 l.5. According to a February 1993 article titled "EO Personal Communicator" which is cited in the specifications, the AT&T "EO" is a personal communication device which "connects to the cellular or external telephone system." (Dkt. No. 233 at 3.) Noticeably absent from the 1993 article is any discussion of paging networks or a paging receiver (see id. at 2-3), and Kyocera has not presented any evidence that the AT&T "EO," without additional equipment, could communicate with a paging network. Thus, the court agrees with Intellect Wireless that the specifications' reference to the "EO" would have indicated to one of ordinary skill in the art in the mid-1990s that the "receiver" in the claimed personal communication device was not limited to those only possessing circuitry enabling communication with a paging network.

As additional support for its proposed construction, Kyocera emphasizes the specifications' discussion of various paging communication protocols such as "POCSAG," arguing that the absence of any cellular communication protocols would suggest to one of ordinary skill in the art that the "receiver" must be able to communicate with a paging network. The specifications, however, recognize that such protocols "are not essential to the main concept of the embodiments." '186 Patent, col.36 ll.61-62. Furthermore, Kyocera's wireless communications expert, Dr. Harold Poor, admitted that one of ordinary skill in the art in the mid-1990s would have understood that cellular protocols applied to communications involving cellular phones even if the patent did not specifically identify such a cellular protocol. (4/8/10 Tr. 154:7-155:24.) The ...


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