Smartflash LLC v. Apple Inc.

• Decision Date: 04 December 2014
• Docket Number: CIVIL ACTION NO. 6:13cv447, CIVIL ACTION NO. 6:13cv448
• Citation: 77 F.Supp.3d 535
• Parties: Smartflash LLC, et al., Plaintiffs, v. Apple Inc., et al., Defendants. Smartflash LLC, et al., Plaintiffs, v. Samsung Electronics Co., Ltd. et al., Defendants.
• Court: U.S. District Court — Eastern District of Texas

77 F.Supp.3d 535

Smartflash LLC, et al., Plaintiffs

v.Apple Inc., et al., Defendants.

Smartflash LLC, et al., Plaintiffs

v.Samsung Electronics Co., Ltd. et al., Defendants.

CIVIL ACTION NO. 6:13cv447

CIVIL ACTION NO. 6:13cv448

United States District Court, E.D. Texas.

Signed December 4, 2014

Christopher S. Stewart, Daniel R. Pearson, Hamad M. Hamad, Jason Dodd Cassady, Jason Scott McManis, John Austin Curry, John Franklin Summers, Justin Thoms Nemunaitis, Warren Joseph McCarty, III, Bradley Wayne Caldwell, Caldwell Cassady & Curry, PC, Dallas, TX, Claire Abernathy Henry, Thomas John Ward, Thomas John Ward, Jr., Ward & Smith Law Firm, Longview, TX, for Plaintiffs.

Ching-Lee Fukuda, Josef B. Schenker, Kevin J. Post, Ropes & Gray, New York, NY, Daniel Keese, Daniel W. Richards, James R. Batchelder, Lauren N. Robinson, Ropes & Gray, East Pala Alto, CA, Eric M. Albritton, Shawn A. Latchford, Albritton Law Firm, Longview, TX, Megan F. Raymond, Sharon Lee, Ropes & Gray, Washington, DC, Samuel Wallace Dunwoody, IV, Jamil N. Alibhai, Jordan Christine Strauss, Michael Craig Wilson, Munck Wilson Mandala LLP, Andrew Thompson Gorham, Fish & Richardson, Dallas, TX, for Defendants.

JURY TRIAL DEMANDED

ORDER ADOPTING REPORT AND RECOMMENDATION OF UNITED STATES MAGISTRATE JUDGE

MICHAEL H. SCHNEIDER, UNITED STATES DISTRICT JUDGE

The above entitled and numbered civil action was referred to United States Magistrate Judge K. Nicole Mitchell pursuant to 28 U.S.C. § 636. The Report and Recommendation of the Magistrate Judge (“R & R”), which recommends adoption of the Court's claim construction and denial of Defendants' Motions for Summary Judgment for Invalidity, has been presented for consideration (6:13cv447, Doc. No. 229; 6:13cv448, Doc. No. 270). Defendants filed objections (6:13cv447, Doc. No. 251; 6:13cv448, Doc. Nos. 303, 304) to the R & R.

Defendants' objections assert that the R & R violated the “Federal Circuit's clear directions” by not applying 35 U.S.C. § 112, ¶ 6 to apparatus claims reciting the word “processor.” 6:13cv448, Doc. No. 304 at 2 (citing Aristocrat Techs. Austl. PTY Ltd. v. Int'l Game Tech., 521 F.3d 1328 (Fed.Cir.2008) (holding that under § 112, ¶ 6, a “control means” claim limitation was indefinite because the patent did not disclose an algorithm); Noah Sys. Inc. v. Intuit Inc., 675 F.3d 1302 (Fed.Cir.2012) (holding that under § 112, ¶ 6, an “access means” claim limitation was indefinite because the patent disclosed an algorithm that failed to enable one skilled in the art)); see also 6:13cv447 Doc. No. 251 at 5. Additionally, Defendants point out that the R & R did not address the Personal Audio case from this District that construed limitations reciting a “processor” as means plus function claims subject to § 112, ¶ 6. 6:13cv448, Doc. No. 304 at 2; 6:13cv447, Doc. No. 251 at 5; Personal Audio, LLC v. Apple, Inc., No. 9:09–cv–111, 2011 WL 11757163 (E.D.Tex. Jan. 30, 2011). The Court addresses Federal Circuit guidance on this issue and the Personal Audio case below.

Federal Circuit Guidance

Section 112, ¶ 6(now § 112(f) ) allows a patentee to claim a “means or step for” a function without reciting structure to support that function, but the “claim shall be construed to cover the corresponding structure ... described in the specification and equivalents thereof.” Accordingly, “[m]eans-plus-function claiming applies only to purely functional limitations that do not provide the structure that performs the recited function.” Phillips v. AWH Corp., 415 F.3d 1303, 1311 (Fed.Cir.2005). Thus, the court must first determine whether the limitation invokes § 112, ¶ 6. Rodi m e PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1302 (Fed.Cir.1999). A limitation that actually uses the word “means” raises a rebuttable presumption that § 112, ¶ 6 applies. Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed.Cir.2004). By contrast, when a claim limitation lacks the term “means,” it creates a rebuttable presumption that § 112, ¶ 6 does not apply. Id. “The use of the term ‘means' is ‘central to the analysis,’ because the term ‘means,’ particularly as used in the phrase ‘means for,’ is ‘part of the classic template for functional claim elements,’ and has come to be closely associated with means-plus-function claiming.” Id. (internal citations omitted).

The presumption that § 112, ¶ 6 does not apply can be “overcome if the claim fails to recite sufficiently definite structure, or else recites function without sufficient structure for performing that function.” Id. (internal citation and quotation marks omitted). However, the Federal Circuit has “repeatedly characterized this presumption as ‘strong’ and ‘not readily overcome’ and, as such, ha[s] ‘seldom’ held that a limitation without recitation of ‘means' is a means-plus-function limitation.” Apple, Inc. v. Motorola, Inc., 757 F.3d 1286, 1297 (Fed.Cir.2014) (citing Lighting World, 382 F.3d at 1358 ; Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1374 (Fed.Cir.2012) (“When the claim drafter has not signaled his intent to invoke § 112 ¶ 6 by using the term ‘means,’ we are unwilling to apply that provision without a showing that the limitation is essentially devoid of anything that can be construed as structure.”)). “The correct inquiry, when ‘means' is absent from a limitation, is whether the limitation read in light of the remaining claim language, specification, prosecution history, and relevant extrinsic evidence, has sufficiently definite structure to a person of ordinary skill in the art.” Id. at 1298.

In computer implemented inventions, one of ordinary skill in the art can understand “structure” through an outline of an algorithm, a flowchart, or set of instructions or rules, rather than traditional physical structure. Id. (citing Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1385 (Fed.Cir.2011) (“[T]he patent need only disclose sufficient structure for a person of skill in the field to provide an operative software program for the specified function.”)). Section 112, ¶ 6 will not apply to terms “used in common parlance of by persons of ordinary skill in the pertinent art to designate structure.” Lighting World, 382 F.3d at 1359. Additionally, the Federal Circuit has held that terms such as “detector” and “circuit” are structural terms while generic terms such as “means,” “element,” and “device” are nonstructural. Apple, 757 F.3d at 1299 (citing Personalized Media Commc'ns, LLC v. Int'l Trade Comm'n, 161 F.3d 696, 705 (Fed.Cir.1998) ; Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1373 (Fed.Cir.2003) ). Even if a term covers a broad class of structures and identifies structures by their function, it is sufficient to avoid means-plus-function treatment. Lighting World, 382 F.3d at 1360. What is important is whether the term is understood to describe structure and is not simply a substitute for “means for.” Id.

As a preliminary matter, in two cases cited by Defendants as providing clear directions to the Court, Aristocrat and Noah, the asserted claims included the term “means.” There were no disputes that means-plus-function claim construction applied. Thus, neither case analyzed the presumption against the applicability of § 112, ¶ 6 where a claim does not recite “means.”

In Aristocrat, the court determined that the specification's disclosure for “control means” of a standard microprocessor with appropriate programming did not sufficiently define the scope of the means-plus-function claim. 521 F.3d at 1331, 1338. Noting its clear applicability because the claim explicitly recited “means,” the court applied § 112, ¶ 6, which requires the scope of the claim limitation to be defined by the structure disclosed in the specification plus any equivalents thereof. Id. at 1331. The court noted that “[i]n cases in which the inventor has invoked means-plus-function claiming, this court has consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor.” Id. at 1333. Additionally, the court stated that allowing the “patentee to claim a means for performing a particular function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming.”

Id. ; see also Personal Audio, 2011 WL 11757163, at *22.

Defendants' argument essentially applies Aristocrat in reverse. Defendants argue that because “processor” does not adequately define the scope of a means-plus-function limitation, it also cannot describe sufficient structure to avoid means-plus-function treatment when recited in the claim itself. 6:13cv448, Doc. No. 304 at 2; see also Doc. No. 177–1 ¶¶ 38–45 (asserting “the identified claims fail[ ] to disclose sufficient structure” because “the identified claims do not disclose the specialized algorithms that would be required to enable a general purpose processor to perform any of the claimed high-level functions.”). However, in light of the Federal Circuit's guidance in Apple, Defendants' reasoning fails; Aristocrat does not apply here, where the claim is not drafted in means-plus-function format. See 757 F.3d at 1298 ; see also Wi–Lan USA, Inc. v. Alcatel–Lucent USA, Inc., No. 12–23568–CIV, 2013 WL 4811233, at *40 (S.D.Fla. Sept. 9, 2013). The standard used to prove sufficient structure to avoid means-function-treatment is not identical to the standard for identifying corresponding structure to a means-plus-function claim. See 757 F.3d at 1298 ; see also Wi–Lan, 2013 WL 4811233, at *40–41. Similarly, Noah does not apply here because it also analyzes the adequacy the specification's disclosure for defining claim scope where a patentee has explicitly invoked means-plus-function claiming. 675 F.3d at 1314–18. It does not address the standard for overcoming the presumption against means-plus-function treatment. Id.

Defendants' expert report also fails to address the legal requirements for overcoming the presumption...