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LLC v. Zmodo Technology Corp. Ltd.

United States District Court, D. Nevada

May 17, 2018

EY K365, LLC, Plaintiff,



         This case arises out of the alleged infringement of a patent for an audio-video doorbell system. The parties have asked the Court to construe several claim terms.


         Plaintiff Ey k365, LLC (“Ey k”) is a North Carolina company with its principle place of business in that state. (Compl. ¶ 2, ECF No. 1). Ey k is the assignee of U.S. Patent No. 9, 432, 638 (“the ‘638 Patent”) entitled “Communication and Monitoring System, ” which issued on August 30, 2016. (Id. ¶¶ 11-12). Defendant Zmodo Technology Corp. Limited (“Zmodo”) is a Nevada company with its principle place of business in Illinois. (Id. ¶ 3).

         Ey k sued Zmodo in the Western District of North Carolina, alleging direct infringement of claims 1 and 6 of the ‘638 Patent in violation of 35 U.S.C. § 271(a) “by making, using, offering for sale, selling, and/or importing [infringing] devices in the United States, ” (id. ¶ 13), as well as inducing infringement of those claims in violation of 35 U.S.C. § 271(b), (id. ¶ 21). Zmodo answered and filed counterclaims for declaratory judgment of non-infringement and invalidity under §§ 101, 102, 103, and 112. (Answer & Countercl., ECF No. 15). Both parties demanded a jury.

         Zmodo moved to dismiss for failure to state a claim under 35 U.S.C. § 101 and also moved for summary judgment, arguing the effective filing date of the ‘638 Patent was March 24, 2015 and that claims 1-20 were invalid under § 102(a)(1) as anticipated by U.S. Patents Nos. 7, 193, 644; 8, 154, 581; and/or 8, 164, 614. Ey k answered the Counterclaim and moved to dismiss Zmodo's fourth through ninth affirmative defenses for failure to satisfy Rule 8(c). Chief Judge Whitney of the Western District of North Carolina denied the dispositive motions without prejudice as premature. This Court has since denied the motions to dismiss and declined to address any motions for summary judgment until after claim construction.

         Soon after the Supreme Court decided TC Heartland, Zmodo filed a motion to dismiss or transfer because it resided in the District of Nevada and had no regular and established place of business in the Western District of North Carolina. See 28 U.S.C. § 1400(b); TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S.Ct. 1514, 1520-21 (2017). Chief Judge Whitney granted the motion in part, transferring the case to this District. The case was randomly assigned to Judge Dorsey but immediately randomly reassigned to this Court because Judge Dorsey was not a patent pilot program judge.[1] Claim construction briefing was completed before transfer. The Magistrate Judge ordered the parties to address the issue in a joint case management report, but the parties disagreed in that report as to whether the Court should conduct claim construction immediately in the present case or wait until the related case is fully prepared for claim construction and hold a consolidated hearing. The Court will delay no longer and now construes the disputed claim terms.


         The construction of patent claim terms is a question of law to be determined by a court. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). “[T]he interpretation to be given a term can only be determined and confirmed with a full understanding of what the inventors actually invented and intended to envelop with the claim.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (quoting Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)). Consequently, courts construe claims in the manner that “most naturally aligns with the patent's description of the invention.” Id.

         The first step in claim construction is to look to the language of the claim itself. A disputed claim term should be construed in light of its “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, i.e., as of the effective filing date of the patent application.” Id. at 1313. In some cases, the ordinary meaning of a disputed term to a person of skill in the art is readily apparent, and claim construction involves “little more than the application of the widely accepted meaning of commonly understood words.” Id. at 1314. Moreover, a district court is not obligated to construe terms with ordinary meanings, lest trial courts be inundated with requests to parse the meaning of every word in the asserted claims. O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1360 (Fed. Cir. 2008); U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (noting that claim construction “is not an obligatory exercise in redundancy”); see also Biotec Biologische Naturverpackungen GmbH & Co. KG v. Biocorp, Inc., 249 F.3d 1341, 1349 (Fed. Cir. 2001) (finding no error in a refusal to construe “melting”); Mentor H/S, Inc. v. Med. Device Alliance, Inc., 244 F.3d 1365, 1380 (Fed. Cir. 2001) (finding no error in a refusal to construe “irrigating” and “frictional heat”). There is a “heavy presumption” that claim terms carry the meanings a person skilled in the relevant art would customarily attribute to them. Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1355 (Fed. Cir. 2004).

         Claim construction may deviate from the ordinary and customary meaning of a disputed term only if: (1) “a patentee sets out a definition and acts as his own lexicographer”; or (2) “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). Ordinary and customary meaning is not always the same as the dictionary definition. Phillips, 415 F.3d at 1321.

Properly viewed, the “ordinary meaning” of a claim term is its meaning to the ordinary artisan after reading the entire patent. Yet heavy reliance on the dictionary divorced from the intrinsic evidence risks transforming the meaning of the claim term to the artisan into the meaning of the term in the abstract, out of its particular context, which is the specification.

Id. “Thus, the specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). It is therefore “entirely appropriate for a court, when conducting claim construction, to rely heavily on the written description for guidance as to the meaning of claims.” Phillips, 415 F.3d at 1315. Courts can also look to the prosecution history as part of the intrinsic record to determine how the Patent Office and the inventor understood the patent. Id. at 1317. However, the prosecution history lacks the clarity of the specification and is often less useful for claim construction purposes. Id.

         “A court may, in its discretion, receive extrinsic evidence in order to aid the court in coming to a correct conclusion as to the true meaning of the language employed in the patent.” Markman, 52 F.3d at 980 (internal citations and quotation marks omitted). Extrinsic evidence “consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.” Id. Although such evidence may aid the court in construing claim terms, “it is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence.” Phillips, 415 F.3d at 1319. Thus, “while extrinsic evidence can shed useful light on the relevant art, . . . it is less significant than the intrinsic record in determining the legally operative meaning of claim language.” Id. at 1317 (internal quotation marks omitted).

         Finally, a claim can be ruled indefinite under 35 U.S.C. § 112 if “read in light of the specification delineating the patent, and the prosecution history, [the claim] fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” See Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2124 (2014) (overruling the Court of Appeals' previous “amenable to construction” and “insolubly ambiguous” standards). “Whether a claim complies with the definiteness requirement of 35 U.S.C. § 112 ¶ 2 is a matter of claim construction . . . .” Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1311 (Fed. Cir. 2012). The amendment to § 112 via the Leahy-Smith America Invents Act did not alter the definiteness requirement. Compare 35 U.S.C. § 112 ¶ 2 (1952), with 35 U.S.C. § 112(b) (2012).

         III. ANALYSIS

         A. Withdrawn Disputes

         The parties have stipulated that “storage hierarchy” (9), [2] “defined hierarchy of storage” (11), and “hierarchy of storage” (20) require no construction.

         B. Disputed Terms

         Claim 1 of the ‘638 Patent reads in full:

         1. A method for receiving a person at an entrance, ...

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