Guitar Apprentice, Inc. v. Ubisoft, Inc.
| Decision Date | 26 February 2015 |
| Docket Number | No. 2:13–cv–02903–JPM–tmp.,2:13–cv–02903–JPM–tmp. |
| Citation | 97 F.Supp.3d 965 |
| Parties | GUITAR APPRENTICE, INC., Plaintiff, v. UBISOFT, INC., Defendant. |
| Court | U.S. District Court — Western District of Tennessee |
John Francis Triggs, Ryan Daniel Levy, Patterson Intellectual Property Law. P.C., Nashville, TN, Amy Pepke, Butler Snow LLP, Memphis, TN, for Plaintiff.
Douglas F. Halijan, Shea B. Oliver, Burch Porter & Johnson, Memphis, TN, Eric Buresh, Michelle Marriott, Mark Lang, Erise Ip, P.A., Overland Park, KS, for Defendant.
ORDER FOLLOWING CLAIM CONSTRUCTION HEARING
Before the Court is the parties' request for claim construction pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed.Cir.1995) (en banc).
Plaintiff Guitar Apprentice, Inc. (“Guitar Apprentice”) is a Delaware corporation with its principal place of business in Tennessee. (Compl. ¶ 1.) Defendant Ubisoft, Inc. (“Ubisoft”) is a California corporation with its principal place of business in California. (Id. at ¶ 2.) This case involves the alleged infringement of United States Patent Number 8,586,849 (the “'849 patent”). (Id. at ¶ 16.) Guitar Apprentice owns the '849 patent and alleges that Ubisoft advertises and distributes products that infringe the '849 patent. (Id. at ¶¶ 16, 19.)
Guitar Apprentice filed its complaint against Ubisoft on November 19, 2013, alleging that Ubisoft's products infringed Guitar Apprentice's '849 patent. (ECF No. 1.) On January 15, 2014, Ubisoft filed its answer. (ECF No. 8.)
On April 17, 2014, the Court held a Patent Scheduling Conference, during which the parties presented the technology. (ECF No. 22.)
On July 15, 2014, Ubisoft filed its First Amended Answer to Guitar Apprentice's Complaint and Counterclaim to add a counterclaim that the '849 patent is unenforceable. (ECF No. 27.) On July 29, 2014, Guitar Apprentice filed its answer to Ubisoft's counterclaim. (ECF No. 30.)
On July 28, 2014, the parties filed their respective Opening Claim Construction Briefs. (ECF Nos. 28, 29.) On August 27, 2014, the parties filed their respective Responsive Claim Construction Briefs. (ECF Nos. 31, 32.) The Court held a claim construction hearing on October 21, 2014. (ECF No. 44.)
On November 6, 2014, Ubisoft filed its Supplemental Claim Construction Brief, citing a recent decision by the United States Court of Appeals for the Federal Circuit (“the Federal Circuit”) in the case of Robert Bosch, LLC v. Snap–On, Inc., 769 F.3d 1094 (Fed.Cir.2014). (ECF No. 48.) On the same day, Guitar Apprentice filed its own Supplemental Claim Construction Brief, arguing that the Bosch decision was distinguishable on its facts and that the Federal Circuit's recent decision in Williamson v. Citrix Online, LLC, 770 F.3d 1371 (Fed.Cir.2014) governed this Court's construction of some of the disputed claims in the '849 patent. (ECF No. 50.) Both parties filed a response to the other's Supplemental Claim Construction Brief on November 13, 2014. (ECF Nos. 51, 52.)
“In conducting an infringement analysis, a court must first determine the meaning of any disputed claim terms and then compare the accused device to the claims as construed.” Proveris Scientific Corp. v. Innovasystems, Inc., 739 F.3d 1367, 1371–72 (Fed.Cir.2014) (citing Wavetronix LLC v. EIS Elec. Integrated Sys., 573 F.3d 1343, 1354 (Fed.Cir.2009) ); accord Markman, 52 F.3d at 976. Regarding the first step, claim construction is a question of law with “evidentiary underpinnings” to be determined by the court. Teva Pharm. USA, Inc. v. Sandoz, Inc., –––U.S. ––––, 135 S.Ct. 831, 835, 837, ––– L.Ed.2d –––– (2015) ; Markman v. Westview Instruments, Inc., 517 U.S. 370, 390, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). Where terms or phrases are “not commonly understood,” a court may make subsidiary findings of fact based on evidence extrinsic to the patent to assist the court in its task of claim interpretation. See Teva Pharmaceuticals, 135 S.Ct. at 837–38. These factual determinations precede the court's ultimate legal construction of the patent's claims. Id.
Claim construction begins with the language of the claims themselves. Braintree Labs., Inc. v. Novel Labs., Inc., 749 F.3d 1349, 1354–55 (Fed.Cir.2014) (citing Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed.Cir.2001) ). Claim terms in the patent “are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art” at the time the patent was filed. CardSoft v. Verifone, Inc., 769 F.3d 1114, 1117 (Fed.Cir.2014) ; Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed.Cir.2005). This general rule has two known exceptions: (1) “when a patentee sets out a definition and acts as his own lexicographer,” or (2) “when the patentee disavows the full scope of the claim term either in the specification or during prosecution.” Hill–Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed.Cir.2014) (quoting Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed.Cir.2012) ). Where a claim term has more than one “ordinary” meaning, or when reliance on a term's “ordinary” meaning does not resolve the parties' dispute, a determination that a claim term “needs no construction” or has the “plain and ordinary meaning” may be inadequate. O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed.Cir.2008).
“To determine the scope and meaning of a claim, we examine the claim language, written description, prosecution history, and any relevant extrinsic evidence.” InTouch Techs., Inc. v. VGO Commc'ns, Inc., 751 F.3d 1327, 1339 (Fed.Cir.2014) (citing Phillips, 415 F.3d at 1315–19 ); Markman, 52 F.3d at 978–79.
Apart from the claim language itself, the specification is the single best guide to the meaning of a claim term. And while the prosecution history often lacks the clarity of the specification, it is another established source of intrinsic evidence. After considering these three sources of intrinsic evidence, a court may also seek guidance from extrinsic evidence. However, extrinsic evidence may be less reliable than the intrinsic evidence.
Vederi, LLC v. Google, Inc., 744 F.3d 1376, 1382 (Fed.Cir.2014) (citations and internal quotation marks omitted).
Regarding the relationship of dependent claims to independent claims, there is a presumption under the doctrine of claim differentiation that limitations found in dependent claims are not included in the independent claim. See GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1310 (Fed.Cir.2014) ; Liebel–Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed.Cir.2004). Claim differentiation, however, “is not a hard and fast rule, and the presumption can be overcome by a contrary construction required by the specification or prosecution history, such as via a disclaimer.” Id.
Section 112 of the Patent Act provides that claim limitations may be expressed as “means-plus-function” limitations:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
35 U.S.C. § 112(f). The Federal Circuit has established two guidelines for determining whether § 112(f) applies to a given claim limitation. First, “use of the word ‘means' creates a rebuttable presumption that the drafter intended to invoke [§ 112(f) ], while failure to use the word ‘means' creates a rebuttable presumption that the drafter did not intend the claims to be governed by [§ 112(f) ].” Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1373 (Fed.Cir.2012) (citing Personalized Media Commc'ns, LLC v. Int'l Trade Comm'n, 161 F.3d 696, 703–04 (Fed.Cir.1998) ). “[This] presumption[ ] can be rebutted if the evidence intrinsic to the patent and any relevant extrinsic evidence so warrant.” Personalized Media, 161 F.3d at 704.
Second, if the patentee omits the term “means” from the claim, there is a rebuttable presumption that § 112(f) does not apply. Id. at 703. The presumption that § 112(f) does not apply because of the failure to use the word “means” “may be overcome if the claim fails to recite ‘sufficiently definite structure’ or merely recites a ‘function without reciting sufficient structure for performing that function.’ ” Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1297 (Fed.Cir.2014) (quoting Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1319 (Fed.Cir.2004) ). The Federal Circuit has “repeatedly characterized this presumption as ‘strong’ and ‘not readily overcome’ and, as such, [has] ‘seldom’ held that a limitation without recitation of ‘means' is a means-plus-function limitation.” Id. (citing Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358, 1362 (Fed.Cir.2004) ; Inventio AG v. ThyssenKrupp Elevator Ams. Corp., 649 F.3d 1350, 1356 (Fed.Cir.2011) ).
“The correct inquiry is ‘whether skilled artisans, after reading the patent, would conclude that a claim limitation is so devoid of structure that the drafter constructively engaged in means-plus-function claiming.’ ” EnOcean GmbH v. Face Int'l Corp., 742 F.3d 955, 958 (Fed.Cir.2014) (quoting Inventio, 649 F.3d at 1357 (Fed.Cir.2011) ).
The overall means-plus-function analysis is a two-step process. Naturally, there is some analytical overlap between these two steps. In the first step, we must determine if the claim limitation is drafted in means-plus-function format. As part of this step, we must construe the claim limitation to decide if it connotes “sufficiently definite structure” to a person of ordinary skill in the art, which requires us to consider the specification (among other evidence). In the second step, if the limitation is in...
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