SecroNet v. NetGear – Claim Construction Analysis

SecroNet Ltd. v. NetGear Inc. (PDF) Decided July 30, 2007 Judge Hamilton This is an in depth analysis of a claim construction, written by a person who would like to remain anonymous. Judge Hamilton construes 10 claim terms in this claim construction opinion. The 5 patents at issue relate to local area network technologies. Of particular interest is the court’s construction of the terms ââ?¬Å?local area networkââ?¬Â? and ââ?¬Å?electrical outlet.ââ?¬Â? In addition, the court discussed whether terms included in the claim preamble should be construed as limitations to the claim. Patents at Issue: The ‘360 patent discloses an intelligent network capable of distributed sensing, control and communication. The ‘510, ‘368, and ‘280 patents (collectively the ‘510 family) relate to local area networks. The ‘538 patent discloses a network for using a telephone line within a residence or another building. Construction of Disputed Terms and Phrases: 1. ââ?¬Å?Serially connected intelligent cell[s] (ââ?¬Å?SICS”)ââ?¬Â? SercoNet’s Proposed Construction: SercoNet proposed that SICs should be construed as ââ?¬Å?two or more intelligent cells directly connected using point-to-point mediumââ?¬Â?, where ââ?¬Å?intelligent cellsââ?¬Â? refer to programmable elements for providing remote control, sensing, and/or communications that when interconnected with other like elements form a communications, control and sensing network or system with distributed intelligence. NetGear’s Proposed Construction: NetGear agreed with SercoNet’s construction of intelligent cells, but differed in its interpretation of ââ?¬Å?serially connectedââ?¬Â? proposing ââ?¬Å?a device, which is connected to at least one other such device, by means of a bi-directionally communication channel. The devices are arranged in a serial (i.e. Daisy chained) fashion, but not a bus or star topology.ââ?¬Â? Court’s Construction: The court looked to the use of the term within the claims to determine that the term defines ââ?¬Å?connections at the cell to-to-cell level, indicating that the term ‘serial’ is focused on how each cell is connected to another cell, rather than referring to a pattern of cells in a larger topology.ââ?¬Â? Turning to the specification, the court found that every communication between ââ?¬Å?SICs is a ‘point-to-point communication’,ââ?¬Â? and that a unique feature of the ââ?¬Å?serial connect[ions]ââ?¬Â? of the claims was that each conducting media connects and communicates with no more than two intelligent cells. The court stated that any reference within the specification or the prosecution history to the term ââ?¬Å?daisy-chainââ?¬Â?, was in conjunction with a larger network topology, and thus was not determinative in construing ââ?¬Å?serially connected.ââ?¬Â? Accordingly, the court adopted SercoNet’s proposed construction of ââ?¬Å?SICsââ?¬Â?, construing the term to mean ââ?¬Å?two or more intelligent cells directly connected using point-to-point mediumââ?¬Â?, where ââ?¬Å?intelligent cellsââ?¬Â? refers to ââ?¬Å?programmable elements for providing remote control, sensing and/or communications that when interconnected with other like elements for a communications, control and sensing network or system with distributed intelligence. 2. ââ?¬Å?Line-powered, serially connected intelligent cells (PSICs)ââ?¬Â? SercoNet’s Proposed Construction: SercoNet contended that the term PSICs should be construed to mean ââ?¬Å?SICs wherein one SIC receives power directly from the power source and other SICs are fed power from network wiring and/or may feed power to other conntected SICs.ââ?¬Â? NetGear’s Proposed Construction: NetGear proposed that the term PSICs be construed to mean ââ?¬Å?an SIC capable of receiving and transmitting power on the data lineââ?¬Â? Court’s Construction: Based on the plain claim language, the court determined that ââ?¬Å?PSIC’s are powered, and that this is not an optional featureââ?¬Â? of the invention. Turning to the specification, the court determined that some SICs receive power from the power source whereas other SICs receive power from serially connected SICs. Moreover, the specification disclosed that some SICs do not feed power, namely those located on the endpoints of a string of PSICs. Accordingly, the court adopted SercoNet’s proposed construction of ââ?¬Å?PSICsââ?¬Â? with a slight modification and construed the term to mean ââ?¬Å?SICs wherein one SIC receives power directly from the power source and other SICs are fed power from network wiring and may feed power to other connected SICs if capable.ââ?¬Â? 3. ââ?¬Å?Independent communicationââ?¬Â? SercoNet’s Proposed Construction: SercoNet contended that ââ?¬Å?independent communicationââ?¬Â? be construed as ââ?¬Å?communication among a pair of devices that does not effect nor preclude the communication of any other communicating pair of devices.ââ?¬Â? NetGear’s Proposed Construction: NetGear proposed that the term ââ?¬Å?independent communicationââ?¬Â? be construed to mean ââ?¬Å?capable of communicating with adjacent cells by means of different types of frames and protocols.ââ?¬Â? Court’s Construction: The court focused on the plain language of the claims to determine that independent communication ââ?¬Å?denotes a communication between each pair, in which such a communication operates irrespective of communications between any other communicating pair.ââ?¬Â? Turning to the specification, the court noted that ââ?¬Å?communication between SICs of a communicating pair is independent of the communication between SICs of any other communicating pair, in that these communications neither preclude nor affect one another in any way.ââ?¬Â? NetGear focused on the prosecution history of the patents as suggesting otherwise, however, the court did not find this determinative because ââ?¬Å?patent prosecution history is less important and less reliable in claim construction than the specification.ââ?¬Â? According, the court determine that ââ?¬Å?independent communicationââ?¬Â? should be construed to mean ââ?¬Å?communication among a pair of devices that does not effect nor preclude the communication of any other communicating pair of devices.ââ?¬Â? 4. ââ?¬Å?Local area network ââ?¬Å?LANââ?¬Â? SercoNet’s Proposed Construction: SercoNet contended that ââ?¬Å?LANââ?¬Â? means ââ?¬Å?a short distance communications network (typically within a building or campus) used to link computers and peripheral devices (such as printers, CD-ROMS, modems) under some form of standard control.ââ?¬Â? NetGear’s Proposed Construction: NetGear proposed that the term be construed to mean ââ?¬Å?a configuration of devices, arranged in a serial (i.e., daisy-chained) fashion, but not a bus or star topology.ââ?¬Â? Court’s Construction: Based on the plain language of the claims, the court determined that the term ââ?¬Å?LANââ?¬Â? was used generally without any specific or unique meaning. Turning to the ordinary plain meaning as one skilled in the art of electrical engineering would interpret it, the court accepted SercoNet’s definition of the term, construing LAN to mean ââ?¬Å?a short distance communications network (typically within a building or campus) used to link computers and peripheral devices (such as printers, CD-ROMS, modems) under some form of standard control.ââ?¬Â? 5. ââ?¬Å?Electrical outletââ?¬Â? SercoNet’s Proposed Construction: SercoNet contended that term be construed in accordance with its customary meaning ââ?¬â?? that of ââ?¬Å?a point on [a] wiring system at which current is taken to supply utilization equipmentââ?¬Â? – as taken from the authoritative dictionary of the standard setting organization, the Institute of Electrical and Electronics Engineers (ââ?¬Å?IEEEââ?¬Â?). NetGear’s Proposed Construction: NetGear proposed that an ââ?¬Å?electrical outletââ?¬Â? be construed to mean ââ?¬Å?a power line termination from which electric power can be obtained by inserting a plug,ââ?¬Â? as provided by the McGraw-Hill Electronics Dictionaryââ?¬Â? Court’s Construction: The court found that SercoNet’s definition, taken from the authoritative dictionary of the Institute of Electrical and Electronics (ââ?¬Å?IEEEââ?¬Â?) was more persuasive than NetGear’s, which was taken from the McGraw Hill Electronics Dictionary. The court also determined that the specification supported this definition. Accordingly, the court construed ââ?¬Å?electrical outletââ?¬Â? to mean ââ?¬Å?a point on the wiring system at which current is taken to supply utilization equipment.ââ?¬Â? 6. ââ?¬Å?First and second data couplers, each coupled to a respective one of said first and second ports, and each having a data signal port operative to pass only a data signalââ?¬Â? SercoNet’s Proposed Construction: SercoNet proposed that this term be construed as ââ?¬Å?two data couplers, each coupled to a different port, where each such port transmits a data signal, but not a power signal.ââ?¬Â? NetGear’s Proposed Construction: NetGear proposed that this term be construed as ââ?¬Å?the device has two data couplers, each coupled to a different port (the first and second port). Each data coupler is capable of separating the data from the power receive at that port, and passing along the data signalââ?¬Â? Court’s Construction: The court focused on the specification to construe this term, determining that the specification does not support NetGear’s interpretation that the separating function is necessary part of the invention in all circumstances. Accordingly, the court construed to term as ââ?¬Å?two data couplers, each coupled to a different port, where each such port transmits a data signal, but not a power signal.ââ?¬Â? 7. ââ?¬Å?A power supply coupled to the first power signal port and to at least one of said modems to be powered by the power signal and for powering said modemââ?¬Â? SercoNet’s Proposed Construction: SercoNet proposed that this term be construed as ââ?¬Å?the device receives a power signal and allows the transfer of the power signal with the modem and the power coupler.ââ?¬Â? NetGear’s Proposed Construction: NetGear proposed that this term be construed as ââ?¬Å?the device receives power and data on the first wiring segment, and filters the power. The filtered power is used to power a modem.ââ?¬Â? Court’s Construction: The court found that the plain language of the claim supported SercoNet’s proposed construction. In addition, the court found that ââ?¬Å?filteringââ?¬Â? the power is not required anywhere in the specification. Accordingly, the court construed the term as ââ?¬Å?the device receives a power signal and allows the transfer of the power signal with the modem and the power coupler.ââ?¬Â? 8. ââ?¬Å?First, second and third nodesââ?¬Â? SercoNet’s Proposed Construction: SercoNet proposed that this term be construed as ââ?¬Å?three distinct communication entities designated 1st, 2nd and 3rd.ââ?¬Â? NetGear’s Proposed Construction: NetGear proposed that this term be construed as ââ?¬Å?first, second and third SICs.ââ?¬Â? Court’s Construction: Based on the use of the term independent of the term SIC in the claim language, the court determined that ââ?¬Å?nodesââ?¬Â? were not equivalent to ââ?¬Å?SICs.ââ?¬Â? The specification identified addressable entities other than SICs in the exemplary network. Accordingly, the court construed to them to mean ââ?¬Å?3 addressable or identifiable entities designated 1st, 2nd, and 3rd.ââ?¬Â? 9. ââ?¬Å?First and second wiring segments in a buildingââ?¬Â? SercoNet’s Proposed Construction: SercoNet proposed that this term be construed as ââ?¬Å?two distinct wiring segments, each consists of 2 or more distinct wires exclusively located in a structure.ââ?¬Â? NetGear’s Proposed Construction: NetGear proposed that this term be construed as ââ?¬Å?the building’s conventional telephone wiring which has been modified so as to be split into fully separate segments.ââ?¬Â? Court’s Construction: The court found that the plain claim language does not support the limitation that the wiring must be telephone wiring, as proposed by NetGear. Turning to the specification, the court determined that although the specification disclosed use of the invention in telephone wiring, it did not explicitly limit the invention to such wiring. Accordingly, the court construed the term as ââ?¬Å?two distinct wiring segments, each consist[ing] of 2 or more distinct wires exclusively located in a building.ââ?¬Â? 10. ââ?¬Å?Telephone signalââ?¬Â? SercoNet’s Proposed Construction: SercoNet proposed that this term be construed as ââ?¬Å?an electrical signal carrying bi-directional speech information in either a digital or analog form.ââ?¬Â? NetGear’s Proposed Construction: NetGear proposed that this term be construed as ââ?¬Å?an analog telephone signal (i.e., the signal that is used for plain telephone service (POTS))ââ?¬Â? Court’s Construction: Turning to the plain claim language, the court found that nowhere is the specification is a telephone signal limited to an analog signal. From the specification, the court determined that at least one embodiment of the invention described both analog and digital telephone networks. Accordingly, the court adopted SercoNet’s construction, construing the term to mean ââ?¬Å?an electrical signal carrying bi-directional speech information in either a digital or analog form.ââ?¬Â?

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Lifescan v. Roche Claim Construction

Lifescan, Inc. v. Roche Diagnostics Corp. (PDF) Decided Sept. 11, 2007 Judge Illstone Judge Illstone construes four disputed claim terms in this claim construction opinion. The patents involve technology that is used by people with diabetes to monitor their blood glucose levels. Of particular interest is the court’s focus on amendments made during prosecution to overcome prior art cited by the Examiner in determining the meaning of a disputed term in the claims.

Does an Exclusive Licensee Have Standing?

Atmel Corp. v. Authentec, Inc. (PDF) 490 F. Supp. 2d 1952 Decided June 11, 2007 Judge Wilken Judge Wilken was faced with Defendant Authentecââ?¬â?¢s motion to dismiss for lack of standing pursuant to FRCP 12(h)(3). Atmel sued Authentec for patent infringement of the ââ?¬Ë?114 patent. The ââ?¬Ë?114 patent was issued and assigned to Thomson-CSF. Thereafter, Thomson-CSF assigned the patent to a third party along with the majority shares in its subsidiary, TCS. At some point after the assignment, TCS became known at Atmel Gernoble. Atmel Gernoble is a subsidiary of Atmel Paris, which is in turn a subsidiary of Atmel Corp. Later Atmel Gernoble assigned the rights in the ââ?¬Ë?114 patent to Atmel Switzerland. In the United States, Atmel Corp. has alone practiced the ââ?¬Ë?114 patent. Defendant argued that at the time the original complaint was filed, Atmel Corp. did not own the patent and was not an exclusive licensee. At the time the complaint was filed, Atmel Corp. was the only plaintiff and the ââ?¬â?¢114 patent was the only patent in suit. Plaintiff counters that Atmel Corp. has exclusive rights to the ââ?¬Ë?114 patent and that, as the parent company, it acts as an exclusive licensee to the patent. Judge Wilken cites Propat Intââ?¬â?¢l Corp. v. RPost US, Inc., 473 F.3d 1187, 1189 (Fed. Cir. 2007) to state

the court held that an exclusive licensee with less than all substantial rights in the patent also has constitutional standing but ââ?¬Å?must normally join the patent owner in any suit on the patent.ââ?¬Â?

Contrast this with the recent case about appellate standing discussed by Patently-O earlier this week. Judge Wilken relied heavily upon a case from the Western District of Michigan in holding that

Atmel Corporation had constitutional standing as an exclusive licensee at the inception of the case and cured the defect in prudential standing when it joined Atmel Switzerland, the patent owner.

Being a parent company of the patent owner, and the fact that Atmel Corp. controlled the patent were key factors in this holding.

Abbott Diabetes Care: No Leave to Accuse More Bayer Products

Abbott Diabetes Care Inc., v. Roche Diagnostics Corp. (PDF) 2007 U.S. Dist. LEXIS 59161 Decided July 26, 2007 Judge Jenkins Abbott filed this patent infringement suit against Roche and Bayer Healthcare in August of 2005. The close of discovery was scheduled for Sept. 12, 2007. Before the court was a motion from Abbott to accuse additional Bayer products of infringement. Judge Jenkins denied this motion. The Northern District of California has local patent rules. Patent Local Rule 3-6 states “that a partyââ?¬â?¢s preliminary infringement contentions ‘shall be deemed that partyââ?¬â?¢s final contentions.'” A party may only amend its preliminary infringement contentions 2 ways in ND Cal. First, a party may amend without leave from the court if it does so within 30 days of the claim construction order. Second, the party must show “good cause” for leave to amend its preliminary infringement contentions if it wants to do so outside of the 30 day window. See Patent L.R. 3-7. Good cause is construed conservatively:

Unlike the liberal policy for amending pleadings, the philosophy behind amending claim charts is decidedly conservative, and designed to prevent the ââ?¬Ë?shifting sandsââ?¬â?¢ approach to claim construction. LG Electronics Inc. v. Q-Lity Computer Inc., 211 F.R.D. 360, 367 (N.D. Cal. 2002).

First, Judge Jenkins analyzed whether Abbott had shown good case for leave to amend. Abbott found out about the new products approximately around the beginning of 2007. Judge Jenkins found Abbott’s assertion of diligence to be unwarranted. Abbott admitted that it did not test the allegedly infringing Bayer products until May of 2007 and offered no adequate explanation for the 5 month delay. Second, Judge Jenkins determined that granting Abbott’s leave to amend would prejudice Bayer. The prejudice is based mostly on the short time left for discovery. Motion denied.

Judge White Claim Construction in Edwards Lifesciences v. Cook Inc.

Edwards Lifesciences LLC v. Cook Inc. and W.L. Gore and Associates (PDF) 2007 U.S. Dist. LEXIS 55634 Decided July 23, 2007 Judge White The patents in suit relate to devices for treating abdominal aortic aneurysms and occlusive disease without resort to “open” surgery.

Claim Construction in Use Techno Corp. and Futoshi Matsuyama v. Kenko USA

Use Techno Corp. and Futoshi Matsuyama v. Kenko USA, Inc. (PDF) 2007 U.S. Dist. LEXIS 55599 Decided July 24, 2007 Magistrate Judge LaPorte Claim construction of Patent 6,716,45

Niche Fame and Trademark Dilution

Phase Forward Inc. v. Mary Noel Adams (PDF) 2007 U.S. Dist. LEXIS 56022 Decided July 24, 2007 Judge Fogel Phase Forward (PFI) has a registered trademark in ââ?¬Å?Phase Forwardââ?¬Â? for ââ?¬Å?computer software used in the management of clinical trials of pharmaceutical products and medial devices and management of data resulting therefrom.ââ?¬Â? Adams filed an application to register the mark ââ?¬Å?Phase Forwardââ?¬Â? for ââ?¬Å?consultation services in the fields of product management, marketing and business planning.ââ?¬Â? PFI filed an opposition after Adams ignored a cease-and-desist letter. The Trademark Trial and Appeal Board (TTAB) dismissed the opposition. PFI appealed to ND Cal. PFI filed a compliant for: (1) federal trademark infringement (2) federal unfair competition (3) federal trademark dilution (4) California trademark infringement (5) California trademark dilution (6) California unfair competition (7) California common law trademark infringement and unfair competition (8) a request for judicial review of the decision by the TTAB PFI submitted new evidence of infringement as allowed because ââ?¬Å?[a] party appealing a decision of the TTAB under 15 U.S.C. 1071(b)(1) is permitted to introduce new evidence to the district court.ââ?¬Â? The new evidence presented a question of material fact so summary judgment on claims 1, 2, 4, 6, 7, and 8 was denied. PFI then conceded that claim 3 should be dismissed because it cannot meet

the more rigorous standards set forth in the Trademark Dilution Revision Act (ââ?¬Å?TDRAââ?¬Â?), and thus [PFI] agrees to dismiss Count III.

However, California trademark dilution still allows for the concept of ââ?¬Å?niche fame.ââ?¬Â? One of the large changes to the TDRA was the elimination of ââ?¬Å?niche fame.ââ?¬Â? As such, summary judgment was inappropriate for claim 5. Holding: Summary judgment GRANTED for Claim 3; DENIED for the rest.dis

Work Product Not Waived in Nidec v. Victor Co. of Japan

Nidec Corp. v. Victor Co. of Japan (PDF) Magistrate Judge Chen Decided July 26, 2007 Nidec moved to compel Victor Company of Japan (JVC) to produce several documents related to JVC�s perceptions of settlement positions and assessment of the case. At the direction of outside counsel, in-house counsel for JVC created a PowerPoint presentation for prospective buyers of JVC related to Nidec�s claims of patent infringement. JVC clarified, however, that the presentation was not specifically prepared for the buyers. As such, the presentation was not prepared for merely a business purpose, but was for a litigation purpose. The presentation was thus work product. Nidec claimed that the work product privilege was waived by JVC because JVC showed the presentation to third parties (the prospective buyers).

For work product ââ?¬Ë?protection is waived where disclosure of the otherwise privileged documents is made to a third party, and that disclosure enables an adversary to gain access to the information.ââ?¬â?¢

Nidec argued that the prospective buyers were adversaries of JVC so the privilege was waived. Magistrate Judge Chen explained that there has to be a potential for litigation between two parties for them to be adversaries.

In the instant case, there is insufficient evidence to demonstrate that JVC and the prospective buyers were adversaries because, at the time of the disclosure, litigation between the parties was nothing but the remotest of possibilities.

Next, the court analyzed whether disclosing the presentation to the potential buyers ââ?¬Å?substantially increasedââ?¬Â? the likelihood that the information would fall into the hands of Nidec. The disclosure did not ââ?¬Å?substantially increaseââ?¬Â? this likelihood because all of the potential buyers signed confidentiality agreements and security measures were used to protect the documents in question. Accordingly, privilege was not waived and the court did not compel disclosure of the documents.

ims.

Claim Construction in Intergraph Hardware Tech

Intergraph Hardware Tech. Co. v. Toshiba Corp. (PDF) 2007 U.S. Dist. LEXIS 56424 Judge Patel Aug. 2, 2007 Judge Patel construes three of Intergraph Hardware’s patents. Some of the terms are means-plus-function claims.

ND Cal Discusses Microsoft v. AT&T

Informatica Corp. v. Business Objects Data Integration, Inc. (PDF) Magistrate Judge LaPorte Decided May 16, 2007 Informatica sued Business Objects Data Integration (BODI) for patent infringement. The case went to trial where the jury found for Informatica. The jury awarded Informatica $25,240,000 for reasonable royalty damages. In a special verdict the jury found 10% of this award to be attributed to a violation of �§ 271(f). Magistrate Judge LaPorte extensively discussed the Supreme Courtâ��s decision in Microsoft v. ATT. In Microsoft, the Supreme Court held that Microsoft did not supply components from the United States within the meaning of �§ 271(f) by sending a golden master disk overseas for copying. Here, BODI created a master CD in San Jose. The master CD was shipped to a third party contractor in Ireland for duplication. The duplicates were then sent to another third party contractor in Ireland for packaging and shipment to the end user.

Consistent with Union Carbide on the issue of directly supplying components abroad, Microsoft controls on the issue of whether BODI ââ?¬Å?suppliedââ?¬Â? components from the United States by exporting master disks, but not user-ready copies, of its software.

The damages award must, thus, be adjusted downward to exclude foreign sales that fall outside the reach of �§ 271(f). This opinion is interesting because Magistrate Judge LaPorte points out that Microsoft v. ATT left a lot of questions unanswered. Can an intangible method or process ever qualify as a patented invention? How did the Microsoft v. ATT effect the Federal Circuitâ��s reasoning in Eolas v. Microsoft (which held that �§ 271(f) does not impose a requirement of tangibility on any component of a patented invention)? Is software in the abstract a component of a patented invention? Does Microsoft v. ATT call for liability if software is downloaded from the internet in a foreign country?