CIF Licensing, LLC v. Agere Systems Inc. (565 F. Supp. 2d 533, 2008)

MEMORANDUM OPINION

FARNAN, District Judge.

Plaintiff CIF Licensing, LLC, d/b/a GE Licensing (“GE”) filed this patent 'infringement action against Defendants Agere Systems, Inc. (“Agere”) on March 23, 2007. GE’s Complaint alleges infringement of U.S. Patent Nos. 5,048,054 (filed May 12, 1989) (“the '054 Patent”), 5,428,641 (filed Jul. 23, 1993) (“the '641 Patent”), 5,446,758 (filed Jul. 8, 1993) (“the '758 Patent,”) and 6,198,776 (filed Dec. 29, 1997) (“the '776 Patent”). Presently before the Court is the parties’ claim construction dispute regarding terms and phrases used in the '054 and '641 Patents. The parties also briefed, but subsequently agreed upon, the construction of terms and phrases in the '758 and '776 Patents. The Court held a Markman hearing on June 11, 2008 regarding construction of the terms and phrases that remain in contention, and this Memorandum Opinion provides the Court’s construction of those claim terms and phrases.

I. BACKGROUND

The patents at issue relate to technology used to optimize the rate at which data can be transmitted across communication channels. The '054 Patent claims a “Line Probing Modem,” which, after receiving a “line probing signal” from a remote device, can process that signal to determine which of several available frequency bands will provide for the most efficient communication between the two devices. The '641 Patent relates to a device and method for mapping a digital data sequence for transmission in a digital communications system.

II. Discussion

A. Legal Standard

A patent specification must include a written description of the invention detailed enough to enable someone skilled in the art to make and use the invention, and it must include one or more claims that distinctly point out and claim the subject matter the patentee regards as his invention. 35 U.S.C. § 112. Claim construction is a question of law. Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-78 (Fed.Cir.1995), aff'd, 517 U.S. 370, 388-90, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). A claim term should be construed to mean “what one of ordinary skill in the art at the time of the invention would have understood the term to mean.” Markman, 52 F.3d at 986.

The process of claim construction begins with an analysis of the claims themselves. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996); see also Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed.Cir.1999) (stating that “[t]he starting point for any claim construction must be the claims themselves.”). Although the words in a claim are generally to be given their ordinary and customary meaning, a patentee may choose to supply his own meaning for a term, as long as any specially defined words are clearly set forth in the patent. Vitronics, 90 F.3d at 1582. The Court must then review the patent specification to determine whether a term must be construed with a definition that varies from its ordinary meaning. Id. The specification is “the single best guide to the meaning of the disputed term.” Id. However, “[e]ven when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using ‘words or expressions of manifest exclusion or restriction.’ ” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed.Cir.2004) (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed.Cir.2002)). Further, where a patent drawing is set forth as a preferred embodiment of the invention, such a drawing is “not meant to represent ‘the’ invention or to limit the scope of coverage defined by the words used in the claims themselves.” Gart v. Logitech, Inc., 254 F.3d 1334, 1342 (Fed.Cir.2001). The Court must also consider the patent’s prosecution history, if in evidence. Vitronics, 90 F.3d at 1582.

Extrinsic evidence may be properly consulted only if ambiguity as to the disputed terms’ meaning remains after consideration of the claims themselves, the specification, and the prosecution history. Id. at 1583. If needed, “[e]xtrinsic evidence is to be used for the court’s understanding of the patent, not for the purpose of varying or contradicting the terms of the claims.” Markman, 52 F.3d at 981. Prior art may be used to shed light on the patentee’s understanding of a term as he used it in the patent. Arthur A. Collins, Inc. v. Northern Telecom Ltd., 216 F.3d 1042, 1045 (Fed.Cir.2000).

B. Construction of the Disputed Terms of the '051 Patent

The '054 Patent claims a “line probing modem,” a device which addresses the challenge posed by the increased error rates that accompany high-speed data transfers across a digital communications network. The claimed device can receive a modulated signal from a remote device over any one of a multitude of frequency bands which may be concurrently available on a network. The modem uses a line probing signal to measure the characteristics of the various frequency bands, and it chooses to receive the data over the band that will yield the optimal signal-to-noise ratio for the data transfer. The modem also reduces the effects of impairments along the communication channel. The parties disagree over the proper construction of the following terms, which, for purposes of illustration, are highlighted in bold where they appear in claims 1, 12, and 46 of the '054 patent.

1. A modem for receiving data sent from a remote device over a communication channel by using a single carrier modulated signal, the modem comprising:

a. a receiver for receiving the modulated signal and for receiving a line probing signal sent by the remote device over the channel, the receiver being capable of receiving the modulated signal over any one of a plurality of frequency bands, said line probing signal simultaneously stimulating more than one of said plurality of frequency bands;

b. a line probing processor for measuring characteristics of the channel based upon the received line probing signal; and

c. a selector for selecting one of the plurality of frequency bands, said selection being based upon the measured characteristics of the channel, said selected frequency band to be used for receiving the modulated signal from the remote device.

12. A modem for receiving data sent from a remote device over a communication channel by using a single carrier modulated signal, the modem comprising:

a. a receiver for receiving the modulated signal and for receiving a line probing signal sent by the remote device over the channel, the receiver being capable of receiving the modulated signal over any one of a plurality of frequency bands, each one of said, plurality of frequency bands being characterized by a corresponding baud rate and carrier frequency;

b. a line probe processor for measuring characteristics of the channel based upon the received line probing signal; and

c. a selector for selecting one of the plurality of frequency bands, said selection being based upon the measured characteristics of the channel, the modulated signal from the remote device being received at the corresponding baud rate associated with said selected frequency band.

46. A modem for receiving data sent from a remote device over a communication channel by using a single carrier modulated signal, the modem comprising:

a. a receiver for receiving the modulated signal and for receiving a line probing signal sent by the remote device over the channel, the receiver being capable of receiving the modulated signal over any one of a plurality of bit rates;

b. a line probing processor for measuring characteristics of the channel based upon the received line probing signal; and

c. a selector for selecting one of the plurality of bit rates, said selection being based upon the measured characteristics of the receiver channel, the selected bit rate to be used for receiving the modulated signal from the remote device.

U.S. Patent No. 5,048,054, at col. 15 1. 21-38; col. 16 1.17-36; col. 19 1. 40-56. Figure 1 is “a block diagram of a communications system which embodies the invention,” and is described in the Patent under the heading, “Description of the Preferred Embodiment.” '054 Patent, col. 4 1. 5-12. The patent states that “Other embodiments are within [the Patent’s] claims.” Id. at col. 15 1.19.

1. “receiver,” “line probing processor,’ and “line probe processor”

GE Proposed Agere’s Proposed Term_Construction_Construction_

“receiver” any structure capable of receiving an a hardware device for accepting _electronic signal_signals from a remote device

“line probing structure that processes a line prob- a hardware component that processor” ing signal_processes a line probing signal

“line probe [not briefed separately from the con- “line probe processor” is inter-processor” struction of “line probing processor”] changeable with “line probing processor”

The parties dispute the meaning of the terms “receiver,” which appears, used in nearly identical contexts, in claims 1, 12, and 46 of the '054 Patent, “line probing processor,” which appears in claims 1 and 46, and “line probe processor,” which appears in claim 12. '054 Patent, col. 15 1. 24, 31; col. 16 1. 12, 28; col. 19 1. 43, 48. The terms “line probe processor” and “line probing processor” appear in virtually identical contexts in claims 1 and 46 (“line probing processor”) and claim 12 (“line probe processor”). '054 Patent col. 15 1. 31, col. 16 1. 28, col. 19 1. 48.

The parties’ contentions regarding these three terms center on essentially the same issue. Agere contends that the terms each describe a discreet component of the modem and that each component is comprised exclusively of hardware. To support its argument, Agere refers the Court to the specifications of the patent. Specifically, Agere contends that Figure 1 must be interpreted to depict individual hardware components of the claimed device, and that such depiction indicates a limitation on the claim. Agere notes, for example, that on Figure 1, the line probing processor (labeled “58”) is illustrated separately from the receiver (“46”), while other components of the modem (“47” and “48”) are displayed as parts of the receiver. Agere further contends neither the specification nor the claims themselves suggest that “any of the components on Figure 1 might be implemented as software components running on a digital signal processor” (or other general service processor) (D.I. 87 at 14-15.).

In response, GE argues that the limitations on the patent claims cannot be drawn from the specification, and that, even if they could, Figure 1 is “a block diagram of a communication system which embodies the invention,” ('054 Patent, col. 4 1. 11-12), rather than a circuit-level schematic that necessarily represents hardware. The claims themselves, GE contends, contain no reference to hardware, and no indication that the functions carried out by the invention must be performed exclusively by hardware components, rather than, perhaps, software running on other hardware, such as digital signal processor or CPU.

Having considered these contentions in view of the applicable case law, the Court concludes that the terms “receiver,” “line probing processor,” and “line probe processor” are not limited to purely hardware embodiments. Neither the language of the claims themselves nor the specifications support such limitations, and the pri- or art relied upon by the '054 inventor suggests that he actively avoided language that would have limited his invention to hardware embodiments.

The Court finds no evidence that the claim language implies that a “receiver” must be comprised entirely of hardware. Instead, viewing the Patent as a whole, the text is chiefly concerned with the function of, and the process employed by, the claimed invention, rather with than the specific form the device must take. The inventor describes the receiver as being capable of receiving both a modulated signal and a line probing signal — the claims do not specify whether the receiver must consist of hardware alone or whether its function might also be carried out by hardware that runs software. '054 Patent at col. 15 1. 21-38. Similarly, and as Agere recognizes, the language itself provides no indication of the specific form the line probing processor must take. Id. at col. 16 1.17-36.

Further, the prior art cited by the '054 Patent suggests that the '054 patentee did not intend to limit his claims to hardware-only embodiments. The claimed modem of a patent cited as prior art (’054 Patent, References Cited) describes particular hardware components (ROM memory chips, for example) that comprise the modem. U.S. Patent No. 4,679,227, col. 18 1. 41-43 (filed May 20, 1985). The specifications of that patent make extensive references to hardware, including the types of physical connections (RS-232 serial connections, for example) to be used between components of the hardware embodiment. Id. at col. 16 1. 3-30. The '054 inventor’s description of his invention differs markedly from the one he cited as prior art in that he completely avoided any such references to hardware. His choice of nonlimiting language, where the prior art included such limitations, supports the Court’s finding that he believed, at the time the he made his application, that his invention could be embodied in other than a purely hardware configuration.

Lacking indications in the language of the claims in the '054 Patent that the named components of the modem must each be a discreet, physical piece of hardware, Agere may not import such limitations from the depiction of a preferred embodiment of the invention that it believes represents a purely hardware system. See Garb, 254 F.3d at 1342. This is certainly true where the patentee, after describing the preferred embodiment, specifically states that “[o]ther embodiments are within the ... claims.” '054 Patent at col. 15 1. 19. The Court concludes that, regardless of whether it depicts hardware or not, Figure 1 does not foreclose the possibility that a different embodiment, perhaps one including both hardware and also software running on a separate processor, could be covered by the patent claims.

Accordingly, Court construes “receiver” to mean “any structure capable of receiving an electrical signal.” Given the identical contexts in which they are used, and a lack of textual evidence of disparate meanings, the Court is satisfied that “line probe processor” and “line probing processor” have equivalent meanings for the purposes of the asserted claims. The Court construes both to mean a “structure that processes a line probing signal.”

2. “selector”

_GE Proposed Construction_Agere’s Proposed Construction

any structure that runs a decision algorithm Invalid based on indefiniteness; invalid based on lack of enablement.

The parties dispute the meaning of the term “selector,” which also appears in claims 1, 12, and 46. Here, Agere contends that neither the language of the claims themselves nor the remainder of the specifications adequately disclose the “selector,” and that, therefore, the claim term is invalid, pursuant to 35 U.S.C. § 112. In response, GE contends that the meaning of “selector” is clear from the plain language of the claims. Further, GE contends that in the preferred embodiment, the line probing processor executes a “decision algorithm” and thereby acts, additionally, as the selector. GE contends that this both enables “selector” and demonstrates that the claimed components need not be discreet hardware devices.

The Court agrees with GE that the claimed “selector” is adequately disclosed. First, the function of the selector is apparent from a plain reading of the claims. Further, the specifications do not support Agere’s contention that every component of the modem must be a discreet hardware device devoted exclusively to its named function. Although a distinct block labeled “selector” does not appear on Figure 1, the function of the selector is described extensively in text of the preferred embodiment of the invention. In the preferred embodiment of the invention, the “fine probe processor” additionally acts as the “selector” by carrying out functions of that component in that it selects the appropriate frequency band and baud rate to use in com-munieation with the second modem. '054 Patent, col. 14 1. 8-53.

To reiterate, while the description of a preferred embodiment helps to define what the patent does claim, absent a specific declaration, it does not indicate the limits of what the patent claims. See Liebel-Flarsheim, 358 F.3d at 906. The Court finds no such specific limitations in the language of the claim or the specifications. Accordingly, the Court construes “selector” to mean “any structure that runs a decision algorithm.”

3. “for selecting one of the plurality of frequency bands” and “for selecting one of the plurality of bit rates”

GE Proposed Agere’s Proposed _Term_Construction_Construction_

“for selecting one of the plurality plain meaning “for determining a frequency band to of frequency bands” be used for receiving a modulated signal from the remote device, based upon channel characteristics measured by _the line probing processor.”_

“for selecting one of the plurality plain meaning “for determining a bit rate to be used of bit rates” for receiving a modulated signal from the remote device, based upon channel characteristics measured by the line probing processor.”

The parties offer substantively identical contentions regarding the phrases “for selecting one of the plurality of frequency bands” (appearing in claims 1 and 12) and “for selecting one of the plurality of bit rates” (appearing in claim 46). Agere contends that the phrase “measured characteristics of the channel,” which appears in all three claims following the disputed phrases, is “somewhat ambiguous,” with the result that the disputed phrases should be given a construction that makes clear that such characteristics are measured by the line processor. (D.I. 87 at 16-17.) Agere further contends that the phrase must be given a consistent meaning in each of the claims, and that this requires reading a limitation from claim 1 (“to be used for receiving the modulated signal from the remote device”) into claims 12 and 46. (Id. at 17-18.) GE contends in response that the meaning of the disputed phrases is plain and that the phrase “measured characteristics of the channel” is not at issue between the parties.

The Court has not been asked to construe the phrase “measured characteristics of the channel,” which is the phrase that Agere’s contentions aim at clarifying. The Court is satisfied that the meaning of the disputed phrases themselves, however, would be clear to one with ordinary skill in the art upon a reading of the plain language. No special knowledge is required to understand “for selecting one of a plurality,” which is written in clear, everyday language. “Frequency bands” and “bit rates,” on the other hand, are technical terms. However, they are technical terms which are each thoroughly explained and used consistently throughout the patent itself. See, e.g., '054 Patent, col. 11.12-28. Accordingly, the court declines to construe these phrases with meanings other than those indicated by their plain language.

C. Construction of the Disputed Terms of the ' 6Jpl Patent

The '641 Patent claims a device and method for mapping a digital data sequence so it can be transmitted across a digital communications system. In general, data is transmitted across a digital network through “symbols,” which contain bits of binary data. The claimed device and method can employ “frame mapping” to enable the transmission of a fractional number of data bits per symbol across a digital communication system using less power than other methods require. For purposes of illustration, claims 1, 3, 5, and 7 are presented below, with the disputed terms shown in bold.

1. A frame-mapping method for mapping N-symbol frames of data, N a predetermined integer (N>1), such that a fractional number Q of bits per frame can be transmitted without constellation switching, comprising the steps of:

A) selecting a number of bits for each frame to be one of: J-l, J, where J is an integer such that J-1 1), such that a fractional number of bits per frame can be transmitted without constellation switching, comprising:

A) a frame selector, operably coupled to receive the data, for selecting a number of bits for each frame of data to be one of: J-l, J, where J is an integer such that J-1 1), such that, on average, a fractional number Q of bits are mappable per frame without constellation switching, comprising the steps of:

A) selecting a number of bits for each frame to be one of: J-l, J, where J is an integer such that J-1 1), such that, on average, a fractional number Q of bits are mappable per frame without constellation switching, comprising:

A)a frame selector, operably coupled to receive the data, for selecting a number of bits for each frame of data to be one of: J-l, J, where J is an integer such that J-1