United States District Court, D. Nevada
C. JONES UNITED STATES DISTRICT JUDGE.
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.
FACTS AND PROCEDURAL HISTORY
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).
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
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
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. 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
CLAIM CONSTRUCTION STANDARDS
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.”
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).
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
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.
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).
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)
parties have stipulated that “storage hierarchy”
(9),  “defined hierarchy of storage”
(11), and “hierarchy of storage” (20) require no
of the ‘638 Patent reads in full:
method for receiving a person at an entrance, ...