LUCY H. KOH

ORDER CONSTRUING '239 PATENT

CLAIM 15

Samsung has requested that the Court construe an additional limitation in claim 15 of the '239 patent: "means for transmission of said captured video over a cellular frequency." Samsung also requests permission to amend its infringement contentions to include theories for means-plus-function equivalents and the doctrine of equivalents for claim 15. The parties have submitted briefs and expert declarations in support of their respective positions. The Court has reviewed the parties' submissions and, in the interest of resolving any potential dispute prior to trial (cf. O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362-63 (Fed. Cir. 2008)), now construes the limitation at issue.

I. BACKGROUND

On April 10, 2013, the Court issued its Order Construing Disputed Claim Terms, following a claim construction hearing and full briefing from the parties. ECF No. 447 ("Order"). At the time, Samsung asserted claims 1 and 15 of the '239 patent. Among the disputed terms, the Court construed certain means-plus-function limitations in claim 1 of the '239 patent, but the parties did not request construction of any terms in claim 15 of the '239 patent. See Order at 64; Joint Claim Construction Statement at 9-40 (ECF No. 300-1). Since the Court issued its Order, the parties have filed multiple rounds of motions seeking to exclude opposing expert opinions based on the Court's existing claim construction rulings. See ECF Nos. 878-4, 877-4, 1202-3. Those disputes were resolved well before the March 5, 2014 pretrial conference. See ECF Nos. 1127, 1301.

On February 4, 2014, the parties filed case-narrowing statements pursuant to the Court's case management orders, limiting their asserted patent claims to five claims per side. Samsung elected claims 1 and 15 of the '239 patent among its five claims. See Samsung's Feb. 4, 2014 Case Narrowing Statement at 2 (ECF No. 1236). However, at the March 5, 2014 pretrial conference, Samsung sua sponte indicated that it might voluntarily withdraw some asserted claims for trial and would do so by March 7. See ECF No. 1411 at 6:14-24.

On March 7, 2014, the parties sua sponte filed a stipulation in which Samsung agreed to withdraw several asserted patent claims, including claim 1 of the '239 patent, leaving claim 15 as the only asserted claim of the '239 patent. See ECF No. 1419. On March 13, 2014, Samsung filed an "administrative motion" for additional claim construction of "means for transmission of said captured video over a cellular frequency" as recited in claim 15, requesting briefing and a hearing prior to trial, which will begin on March 31, 2014. See ECF No. 1461. Apple responded by contending that additional claim construction was not necessary in light of the Court's construction of claim 1, but requesting permission for a summary judgment motion and hearing regarding noninfringement of claim 15 should the Court construe the terms at issue. See ECF No. 1465. The parties agree that claim 15 presents a means-plus-function limitation and concur on the claimed function, but disagree about the scope of the corresponding structure. The parties also disagree about whether Samsung previously waived its ability to assert equivalents (either means-plus-function or under the doctrine of equivalents) for claim 15.

The Court allowed the parties to submit short briefs regarding claim construction and Samsung's ability to amend its infringement contentions, but denied Apple's request for another round of summary judgment briefing on the eve of trial. See ECF No. 1470. Samsung filed its brief on March 19, 2014. See ECF No. 1484 ("Samsung Br."). Apple filed a response on March 21, 2014. See ECF No. 1491 ("Apple Br.").

II. LEGAL STANDARDS

As before, the Court construes patent claims as a matter of law based on the relevant intrinsic and extrinsic evidence. See Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp., No. 2012-1014 (Fed. Cir. Feb. 21, 2014) (en banc); Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc); see also Order at 2. Claim construction of means-plus-function limitations pursuant to 35 U.S.C. § 112(f) requires identifying the claimed function and the corresponding structure for performing that function in the patent's disclosure. See Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1311 (Fed. Cir. 2012); see also Order at 47.

"Amendment of the Infringement Contentions or the Invalidity Contentions may be made only by order of the Court upon a timely showing of good cause." Patent L.R. 3-6. This Court's rules have required the parties to give "early notice of their infringement and invalidity contentions, and to proceed with diligence in amending those contentions when new information comes to light in the course of discovery." O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1365-66 (Fed. Cir. 2006). Accordingly, determining whether "good cause" justifies amendment of contentions in a particular situation depends on the amending party's diligence and the degree of prejudice to other parties. See Order Re: Samsung's and Apple's Mots. for Leave at 2-4 (ECF No. 636) (collecting cases). "Only if the moving party is able to show diligence may the court consider the prejudice to the non-moving party." Genentech, Inc. v. Trs. of the Univ. of Pa., No. 10-CV-02037, 2011 U.S. Dist. LEXIS 108127, at *4 (N.D. Cal. Sept. 16, 2011).

III. DISCUSSION

A. Claim Construction

The only limitation at issue is "means for transmission of said captured video over a cellular frequency," recited in '239 patent claim 15. Both claim 1, which the Court previously construed, and claim 15 are reproduced below for reference.

The parties' prior dispute regarding claim 1 of the '239 patent provides some context for this claim construction. Previously, the Court construed the similar limitation in claim 1 of "means for transmitting said composite signal" to mean "one or more modems connected to one or more cellular telephones, telephone lines, and/or radio transmitters, and software performing a software sequence of initializing one or more communications ports on the remote unit, obtaining the stored data file, and transmitting the stored data file." Order at 55-64. Thus, the Court has already determined that certain types of hardware and software from the specification correspond to "means for transmitting" a signal. Id.

1. "Cellular Radio Transmitters"

Samsung, citing expert opinion, argues that the claimed structure must include "cellular telephones or cellular radio transmitters" because a person of ordinary skill would have understood that a cellular radio transmitter performs the transmission in a cellular telephone. Samsung Br. at 1; Decl. of Prof. Dan Schonfeld (ECF No. 1484-1, "Schonfeld Decl.") ¶ 3. Samsung also argues that the doctrine of claim differentiation favors its definition. Claim 16 depends from claim 15 and recites "a cellular telephone."

Samsung's positions are unpersuasive. First, the intrinsic evidence does not support Samsung's proposal. As Apple points out, the phrase "cellular radio transmitter" appears nowhere in the entire patent. Also, if Samsung is correct that a cellular telephone necessarily comprises a cellular radio transmitter, then Samsung's proposed language of "cellular telephones or cellular radio transmitters" is superfluous. Therefore, it would be incorrect to read the structure of "cellular radio transmitters" into claim 15, for § 112(f) does not "permit incorporation of structure from the written description beyond that necessary to perform the claimed function." Micro Chem., Inc. v. Great Plains Chem. Co., Inc., 194 F.3d 1250, 1258 (Fed. Cir. 1999).

Nor do principles of claim differentiation require Samsung's construction. Claim 16 specifies additional limitations not found in claim 15: "at least two interfaces" and "a cellular telephone connected to each interface" (emphasis added). These extra limitations differentiate claim 16 from claim 15, and also require that a cellular telephone be connected to each interface, which adds an additional restriction on cellular telephones that does not exist in claim 15. Furthermore, this Court previously observed that "the presence of a dependent claim reciting a structure does not override the requirements of § 112, ¶ 6." Order at 48 (citing Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1538 (Fed. Cir. 1991)). Here, as explained above, the specification provides no basis for reading "cellular radio transmitters" into the claimed structure.

Samsung's unexplained delay also undermines its arguments—Samsung waited until less than three weeks before trial and more than a year after claim construction briefing and the hearing to take this new position. Indeed, Samsung did not propose "cellular radio transmitters" in its construction of the similar "means for transmitting" limitation in claim 1. See Samsung's Opening Claim Construction Br. at 22 (ECF No. 335); see generally Feb. 21, 2013 Tr. of Proceedings (ECF No. 429). Samsung's late efforts to construe claim 15 appear to be a last-ditch attempt to seek reconsideration of the Court's construction of claim 1, which Samsung no longer asserts.

As to extrinsic evidence, the parties provide only brief expert declarations. These opinions are conclusory and provide little guidance. Samsung's expert opines that a person of ordinary skill would know that a cellular radio transmitter "is the actual hardware enabling transmission of information" in a cellular telephone, but provides little support for this position. Schonfeld Decl. ¶ 3. As explained above, even if all cellular telephones have cellular radio transmitters, then Samsung's proposed construction is superfluous. Apple's expert repeats portions of the specification, noting for example the absence of "cellular radio transmitter" in the specification. See Decl. of James Storer, Ph.D. (ECF No. 1491-2, "Storer Decl.") ¶¶ 10-11. In short, neither side's expert provides a dispositive opinion that alters the conclusion supported by the specification—that "cellular radio transmitters" is not part of the required structure for transmission of signals.

The parties appear to agree that claim 15's structure also excludes conventional telephone lines and radio transmitters, which are structures that the Court included in its construction of the similar limitation of "means for transmitting said composite signal" in claim 1. The Court construed that limitation in claim 1 to encompass "one or more modems connected to one or more cellular telephones, telephone lines, and/or radio transmitters." In doing so, the Court observed that claim 1 does not restrict the type of frequency used for transmitting a signal, and the '239 patent's specification also discloses the use of land lines and radio transmissions, in addition to cellular telephones. Order at 57-59; see also '239 Patent col.2 ll.29-31 ("A further object is to provide an apparatus that will transmit audio/video files for immediate broadcast over radio frequencies, cellular telephone frequencies, or land telephone lines."). By contrast, claim 15 limits "means for transmission" to "over a cellular frequency." Accordingly, neither party contends that claim 15's structure comprises conventional telephone lines and radio transmitters.

In light of the foregoing, the hardware structure corresponding to "means for transmission of said captured video over a cellular frequency" is properly construed as "one or more modems connected to one or more cellular telephones."

2. Software as Part of the Corresponding Structure

Samsung argues that claim 15's structure should not be restricted to software of any kind because software is not necessary for transmission of captured video. Samsung Br. 3. Although the Court construed claim 1's "means for transmitting" to require software (Order at 64), Samsung points out that claim 1 includes the terms "remote unit" and "host unit," and the specification discusses transmission software only in the context of communication between a "remote unit" and "host unit." E.g., '239 Patent col.8 ll.23-25 ("Transfer software sequence B enables the remote unit to communicate with the host unit to transmit a stored data file using the system hardware."). Samsung contends that claim 15 is different because it "does not require transmitting from a remote unit to a host unit," and therefore does not require software. Samsung Br. 3.

Apple proposes that claim 15 be construed to require "software performing a software sequence of initializing one or more communications ports on the remote unit, obtaining the stored data file, and transmitting the stored data file." Apple asserts that the '239 patent states that software is necessary for any transmission, and that the "computer" of claim 15 corresponds to the "remote unit" in the specification, such that the specification's discussion of transmission software applies equally to claim 15. See Apple Br. at 2.

The Court agrees that claim 15's means-plus-function structure requires software for the same reasons that applied to claim 1. As explained above, the Court previously determined that claim 1's "means for transmitting" must include software because the specification teaches that a software sequence is necessary for transmitting a signal in the context of the invention. See Order at 61-63. Under the preferred embodiment, the '239 patent discloses that software is required for transmission: "Transfer software sequence B enables the remote unit to communicate" and "contains all of the instructions necessary" for communication. '239 Patent col.8 ll.23-30 (emphases added); see also id. col.8 l.45 - col.10 l.2 (discussing "Transfer Software Sequence B"), col.2 l.24 - col.3 l.14 ("Summary of the Invention"; "a computer program sequence . . . sends [data] to one or more computer interfaces which transmit the data file"). Samsung is correct that claim 15 does not recite a "remote unit" or "host unit," which appear in both claim 1 and the specification. However, Samsung fails to demonstrate that this difference shows that software is unnecessary for "transmission" as recited in claim 15, or that the specification supplies any other structure for performing an alternate type of transmission that does not involve a "remote unit" and "host unit." Indeed, the term "transmission" implies communication from one unit to another, and the specification explains that software is necessary to enable such communication. E.g., id. col.8 ll.25-30. Samsung also suggests that "transmitting" (claim 1) and "transmission" (claim 15) require different constructions (ECF No. 1461 at 3), but fails to explain why "transmitting" involves software while "transmission" does not. See, e.g., AIA Eng'g Ltd. v. Magotteaux Int'l S/A, 657 F.3d 1264, 1275 (Fed. Cir. 2011) (construing "homogeneous solid solution" and "homogeneous ceramic composite" as "synonymous").

Samsung next argues in the alternative that, if claim 15's structure is construed to include software, the software "should be restricted solely to software to perform the claimed function," which "does not include initializing a communications port or obtaining the stored data file." Samsung Br. at 4. Accordingly, Samsung proposes the alternative construction of "software that transmits the file." Id. Apple counters that the same software sequence for "initializing" and "obtaining" in claim 1 is also necessary for "transmission" in claim 15. See Apple Br. at 1. Apple also argues that claim 15's software requires a sequence for "obtaining the stored data file" because the "captured video" recited in claim 15 must be a stored data file. Id. at 1-3. Apple points out that the '239 patent applicants relied on creation of a data file to distinguish prior art. Id.

The Court agrees in part with Apple. Samsung provides no persuasive reasons why the software sequence that the Court identified for claim 1 is not also required for claim 15. The Court previously explained in detail why the software sequence in claim 1 is necessary, not optional, for transmitting a signal. See Order at 61-62 ("[T]he other steps performed by software sequence B—initializing communication ports, obtaining the stored data file, and transmitting the stored data file—all appear to be necessary for any transmission . . . ."). Specifically, the written description lists five software algorithms in "transfer software sequence B": "[1] initialize the communications ports on the remote, [2] obtain a cellular connection with each cellular telephone to the host unit, [3] obtain the stored data file, [4] initiate file splitting sequence C, and [5] transmit the split data file." '239 Patent col.8 ll.25-30. However, not all five algorithms are necessary for transmission— the step of "file splitting" need not occur, or may occur prior to transmission. E.g., id. col.3 ll.22-23 ("In an alternate embodiment, a basic one, the signal is not divided before it is transmitted."); see Order at 62. Moreover, claim 17 depends from claim 15 and includes "means for splitting the captured video into pieces for transmission," which further confirms that claim 15 does not require software for initiating file splitting. By contrast, the steps of initializing the communications ports and obtaining the data for transmission are required for the transmission process. See id. at 62-63.

However, as explained above, claim 15 is limited to transmission "over a cellular frequency," while claim 1 is not. For claim 1, the Court previously concluded that the specification's algorithm to "obtain a cellular connection with each cellular telephone to the host unit" ('239 Patent col.8 ll.27-28) was not necessary structure because claim 1 encompasses transmitting over telephone lines and radio transmitters, not just cellular telephones:

[T]he transmission may take place using a radio transmitter instead of a traditional phone or cell phone. Thus, the software algorithm of "obtain[ing] a cellular connection with each cellular telephone" relates only to a particular embodiment of the invention using cell phones, and is not necessary for the embodiments using a radio transmitter.

The Court further disagrees with Apple's proposed construction because it includes terms from claim 1 that do not appear in claim 15. Apple proposes "software performing a software sequence of initializing one or more communications ports on the remote unit, obtaining the stored data file, and transmitting the stored data file" (emphases added). However, neither "remote unit" nor "stored data file" (or "storing") appears in claim 15:

Where claim 1 states that the "means for transmitting" is included in a "mobile remote unit," claim 15 recites that the "means for transmission" are included in "[a]n apparatus for transmission of data." Therefore, the "one or more communications ports" in Apple's proposed construction must refer to ports in the claimed apparatus for transmission.

Claim 1 also includes "means for storing said composite signal," which does not appear in claim 15. Instead, claim 15 recites a computer with a video capture module "to capture and compress video," with means for transmission of "said captured video." Accordingly, the information that is obtained and transmitted in claim 15 must be "said captured video."

Apple posits that "[t]he disclosed structure for 'captured video' is a stored data file." Apple Br. at 2. Apple's argument is that the '239 patent applicants stated during prosecution that their invention requires a stored data file because they distinguished a prior art reference on that basis: "Thus, Gattis does not disclose the creation of a data file as required by Applicants' claims." ECF No. 1491-3 (Feb. 2, 1996 amendment, SAMNDCA630-00832606). However, the excerpted prosecution history also shows that the applicants were discussing then-pending claims 1 and 12, and claim 12 specifically recited "a data file." Id. (SAMNDCA630-00832605). There is no indication that the applicants were addressing claim 15 as issued or the term "said captured video." Accordingly, the Court rejects Apple's prosecution history argument.

For the reasons above, the Court provides the following construction of the software structure: "software performing a software sequence of initializing one or more communications ports on said apparatus, obtaining a cellular connection, obtaining said captured video, and transmitting said captured video."

B. Amendment of Samsung's Infringement Contentions for Claim 15

In its motion requesting construction of claim 15, Samsung sought permission to argue infringement under the doctrine of equivalents, if the Court did not adopt Samsung's proposed construction. See Samsung's Admin. Mot. for Limited Additional Claim Construction at 4 n.1 (ECF No. 1461). In its claim construction brief, Samsung further clarifies that it wants to amend its infringement contentions to assert equivalents under § 112(f) in addition to the doctrine of equivalents. See Samsung Br. at 5. Apple responds that Samsung waived its right to amend when Samsung previously withdrew equivalents contentions for claim 15 and failed to seek additional claim construction until the eve of trial. See Apple Br. at 4-5.

Based on the parties' litigation conduct regarding infringement contentions (discussed below), the Court concludes that Samsung had not preserved the right to assert equivalents (for means-plus-function structure or the doctrine of equivalents) prior to its present request for additional claim construction. The parties have repeatedly litigated the proper scope of Samsung's infringement contentions, and Samsung failed to assert its equivalents theories for claim 15 until now, after sua sponte dropping claim 1 voluntarily from the case.

After the Court issued its claim construction Order, the parties moved for leave to amend their respective infringement contentions. On June 26, 2013, Judge Grewal granted and denied in part Samsung's request to assert equivalents for the '239 patent. See ECF No. 636. Judge Grewal rejected Samsung's general attempt to include the doctrine of equivalents for all asserted patents and § 112(f) equivalents for all means-plus-function limitations not yet construed, finding that Samsung did not have "good cause to add DOE and Section 112(f) equivalents theories" at that time. Id. at 5, 8. Samsung concedes that it lost its attempt to assert equivalents for claim 15: "Judge Grewal denied Samsung's amendments for claim 15 because Samsung's request was 'premature.'" Samsung Br. at 5 & n.3. However, Judge Grewal advised: "If and when Samsung faces an adverse construction, it may seek leave to amend in light of that adverse construction." ECF No. 636 at 8.

Meanwhile, Judge Grewal partially granted Samsung's specific request to assert both § 112(f) equivalents and the doctrine of equivalents for the "means for transmitting" limitation in claim 1 of the '239 patent because "the claim construction order provides good cause for the proposed amendments," but did not permit Samsung to include the vague phrase "and/or other processes." Id. at 17-18. Samsung specifically identified this limitation and presented arguments as to why it should be allowed to adjust its contentions in response to the Court's claim construction. Id.

On November 5, 2013, both parties filed motions to strike certain infringement contentions. ECF Nos. 877-4, 878-4. On December 13, 2013, the parties submitted a joint chart of issues disputed in their motions to strike, noting that Apple's motion targeted Samsung's equivalents arguments for claim 15. ECF No. 1056 at 3, 4. The chart also included the following agreement on equivalents theories in light of Judge Grewal's June 26, 2013 Order:

Both Apple and Samsung agree to withdraw all doctrine of equivalents and structural equivalents arguments under Section 112(f) in their respective expert reports that are subject of the parties' pending motions to strike. For clarity, Apple's motion to strike did not include and this agreement does not extend to the "means for capturing" and "means for transmitting" limitations that were subject to Judge Grewal's June 26, 2013 order. (Dkt. No. 636.) Subject to the resolution of Apple's pending Daubert motion, Samsung can argue both doctrine of equivalents and structural equivalents under Section 112(f) for these terms. This agreement does not preclude the parties from seeking leave to amend their infringement contentions to include doctrine of equivalents or structural equivalents arguments under Section 112(f) if the Court construes terms adverse to a party in the future.

While the June 26, 2013 Order and the parties' agreement allowed the parties to seek leave to amend contentions in response to later claim constructions, Samsung has failed to demonstrate that it exercised the necessary diligence to do so. To obtain leave to amend, the moving party must "proceed with diligence in amending those contentions." O2 Micro, 467 F.3d at 1365-66; Patent L.R. 3-6. Here, Samsung has asserted claim 15 since before claim construction (see ECF No. 383 at 2-3 (Feb. 18, 2013)), but never requested construction of any terms until March 13, 2014—after rulings on summary judgment, Daubert, and in limine motions; almost a year after the claim construction Order; and less than three weeks before trial. Between Judge Grewal's June 26, 2013 Order and Samsung's March 13, 2014 motion for additional claim construction, Samsung did not seek claim construction for claim 15 or leave to assert equivalents theories. See, e.g., Acer, Inc. v. Tech. Props. Ltd., No. 5:08-CV-877, 2010 U.S. Dist. LEXIS 142472, at *17 (N.D. Cal. Sept. 10, 2010) (denying leave to amend infringement contentions; "Because TPL has not demonstrated diligence, 'the inquiry should end.'" (citation omitted)). Nor does Samsung identify any new evidence that would justify this late request. The fact that Samsung sua sponte voluntarily withdrew claim 1 of the '239 patent does not permit Samsung to wholly revisit claim construction and pose new infringement theories.

Furthermore, Samsung's belated tactics would now unfairly prejudice Apple and tax the resources of the Court. Jury selection will begin on Monday, March 31, 2014. Instead of narrowing the issues for trial, Samsung now seeks to expand them by introducing new infringement theories. Samsung contends that Apple faces no prejudice because both parties' experts already opined on equivalents for claim 15. See Samsung Br. at 5 n.3. However, Apple responds that it would "need to re-consider its exhibit list, and submit new jury instructions," and that it relied on Samsung's withdrawal of its equivalents contentions for claim 15. Apple Br. at 5 & n.7. Samsung would almost certainly seek to revise its own proposed exhibits and jury instructions in response to any changes that Apple makes. Moreover, the Court has already ruled on summary judgment, Daubert motions, and motions in limine. With opening statements only days away, the Court will not entertain new rounds of motions for leave to amend infringement contentions, witness and exhibit lists, and jury instructions based on theories that Samsung could have raised long ago.

For the foregoing reasons, Samsung's request for leave to amend its infringement contentions to include equivalents theories for claim 15 is DENIED.

IV. CONCLUSION

In summary, and for the reasons stated herein, the Court construes the relevant limitation of '239 patent claim 15 as follows:

IT IS SO ORDERED.

__________

LUCY H. KOH

United States District Judge