JON S. TIGAR United States District Judge

CLAIM CONSTRUCTION ORDER

Re: ECF Nos. 42, 48

Before the Court is Plaintiff GoPro, Inc.'s ("GoPro") Opening Claim Construction Brief, ECF No. 42, and Defendants C&A Marketing, Inc., C&A Licensing, LLC, and PLR IP Holdings, LLC's (collectively, "C&A") Responsive Claim Construction Brief, ECF No. 42. The parties propose competing constructions of four terms of U.S. Patent No. 9,025,896 (the "'896 patent"). The Court will construe the terms as set forth below.

I. BACKGROUND

A. Procedural History

GoPro filed its complaint in this action on June 27, 2016, alleging infringement of the '896 patent, in addition to U.S. Patent No. 9,282,226 (the "'226 patent"). ECF No. 1. On March 17, 2017, the parties filed their Joint Claim Construction and Prehearing Statement pursuant to Patent Local Rule 4-3. ECF No. 38. In that statement, the parties agreed that the asserted claims of the '226 patent "require no construction and should be given their plain and ordinary meaning." Id. at 2. On April 28, 2017, GoPro filed its Opening Claim Construction Brief. ECF No. 42. On May 12, 2017, C&A filed its Responsive Claim Construction Brief. ECF No. 48. C&A attached to that brief the supporting Declaration of Alan C. Bovik ("Bovik Declaration"). ECF No. 48-2. On May 19, 2017, GoPro filed its Reply Claim Construction Brief. ECF No. 53. The same day, GoPro filed a Motion to Strike the Bovik Declaration on the ground that C&A did not properly disclose the testimony as required under the Court's Patent Local Rules. ECF No. 54. By Order dated May 31, 2017, the Court granted the Motion to Strike, ECF No. 62, and thus does not consider the Bovik Declaration in construing the disputed claims. On June 15, 2017, the Court conducted a Markman hearing. ECF No. 71.

B. The '896 Patent

The '896 patent is titled "Compression and Decoding of Single Sensor Color Image Data." ECF No. 38-2 ('896 patent) at Cover. The patent issued on May 5, 2015, but claims priority to a provisional application filed on March 22, 2006. Id. The patent "relates to compression and retrieval of video content gathered from a single-sensor imager." Id. at 1:32-33. According to the patent, "[p]rofessional video cameras typically have three sensors to collect light, each filtered for red, green, and blue channels." Id. at 1:37-38. In contrast, "digital still photography . . . uses a single sensor design with individual pixels filtered for red, green, and blue . . . ." Id. at 1:40-42. This "single-sensor" is sometimes called a "Bayer sensor." Id at 1:44. Figure 1 of the '896 patent, reproduced here, is a graphical depiction of a typical Bayer sensor.

Image materials not available for display.

FIG. 1: Typical Bayer sensor

The image data collected from Bayer sensors - known as a "RAW image" - must generally be converted into YUV or RGB images that can be used by "traditional post-production tools." Id. at 1:52-54. This is typically done using a process known as "De-bayer filtering (or demosaicing)," which the patent describes as follows:

De-Bayer filtering (or demosaicing) is the process of interpolating the missing color components at every pixel location. As acquired, the Bayer sensor only collects one of the three color primaries at every pixel site—the two other primaries are predicted via a range of different algorithms that typically take substantial compute time for high quality results.

Image materials not available for display. According to the patent, this method reduces "the computational load" resulting in "simpler implementations and longer camera battery life," and reduces the size of the compressed data. Id. at 4:34-37. The patent describes that these planes can be used to construct a "preview" image, a lower resolution image that might be displayed, for example, in a viewfinder of a digital video camera. Id. at 4:54-5:5.

The parties dispute four claim terms in claims 1 and 10 of the '896 patent. Claim 1 recites a method while Claim 10 recites the system corresponding to the method. Claim 1 is reproduced below, with the disputed claim terms highlighted in bold:

1. A method for decoding an encoded image, the method comprising:

storing encoded image data in a non-transitory computer-readable storage medium, the encoded image data representative of an original image at an original resolution, the original image comprising a plurality of image planes, the encoded image data comprising a set of encoded image planes each representative of one or more of the image planes of the original image;

receiving a request for a preview of the original image, the requested preview comprising the original image at a preview resolution less than the original resolution; and

in response to receiving the request for a preview of the original image:

accessing a subset of the set of encoded image planes, the subset comprising less than all of the set of encoded image planes; and

decoding, by a processor, the accessed subset of encoded image planes to produce the original image at the preview resolution.

II. APPLICABLE LAW

The construction of terms found in patent claims is a question of law to be determined by the court. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). "[T]he interpretation to be given a term can only be determined and confirmed with a full understanding of what the inventors actually invented and intended to envelop with the claim." Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (quoting Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)); see also MySpace, Inc. v. GraphOn Corp., 672 F.3d 1250, 1256 (Fed. Cir. 2012) (when construing claims, courts must consider "what was invented, and what exactly was claimed."). The "correct construction," therefore, is one that "stays true to the claim language and most naturally aligns with the patent's description of the invention." Id. While not every claim term must be construed, "[w]hen the parties present a fundamental dispute regarding the scope of a claim term, it is the court's duty to resolve it." O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008); see also Every Penny Counts, Inc. v. Am. Express Co., 563 F.3d 1378, 1383 (Fed. Cir. 2009) ("[T]he court's obligation is to ensure that questions of the scope of the patent claims are not left to the jury. In order to fulfill this obligation, the court must see to it that disputes concerning the scope of the patent claims are fully resolved.") (citation omitted).

"It is a 'bedrock principle' of patent law that 'the claims of a patent define the invention.' " Id. at 1312 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). The Federal Circuit has held that words of a claim are generally given their "ordinary and customary meaning," which is the "meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." Id. at 1312-13. In some cases, the ordinary meaning of claim language is "readily apparent," and "claim construction . . . involves little more than the application of the widely accepted meaning of commonly understood words." Id. at 1314. In other cases, "determining the ordinary and customary meaning of the claim requires examination of terms that have a particular meaning in a field of art." Id. Claim construction may deviate from the ordinary and customary meaning of a disputed term only if "a patentee sets out a definition and acts as his own lexicographer" or if "the patentee disavows the full scope of a claim term either in the specification or during prosecution." Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing Vitronics Corp v. Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996)).

In claim construction, "the claims themselves provide substantial guidance as to the meaning of particular claim terms." Phillips, 415 F.3d at 1314. The "context in which a term is used in the asserted claim," "[o]ther claims of the patent in question, both asserted and unasserted," and "[d]ifferences among claims" are all instructive. Id. "The claims, of course, do not stand alone" and instead "must be read in view of the specification," which is "[u]sually . . . dispositive" and "the single best guide to the meaning of a disputed term." Id. at 1315. Courts "normally do not interpret claim terms in a way that excludes disclosed examples in the specification." Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1305 (Fed. Cir. 2007). Additionally, the Federal Circuit has cautioned that "limitations from the specification are not to be read into the claims." Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). Even if a patent describes only a single embodiment, the Federal Circuit has "expressly rejected" the contention that the claims must be construed as being limited to that embodiment. Phillips, 415 F.3d at 1323. In addition to consulting the specification, "the court should also consider the patent's prosecution history." Markman, 52 F.3d at 980 (citing Graham v. John Deere Co., 383 U.S. 1, 33 (1966)). However, because the "prosecution history represents an ongoing negotiation between the [Patent and Trademark Office] and the applicant, rather than the final product," it "often lacks the clarity of the specification" and therefore "is less useful." Phillips, 415 F.3d at 1317.

Though intrinsic evidence - the claims, specification, and prosecution history - is more significant and reliable than extrinsic evidence, courts may also consider the extrinsic record in claim construction, including expert and inventor testimony, dictionaries, and learned treatises. Id. at 1317-18. Within the class of extrinsic evidence, dictionaries, and especially technical dictionaries, "can assist the court in determining the meaning of particular terminology to those of skill in the art" because they "endeavor to collect the accepted meanings of terms used in various fields of science and technology." Id. at 1318.

III. THE DISPUTED CLAIM TERMS

A. "a set of encoded image planes" (claims 1 and 10)

GoPro argues that this term "is sufficiently clear on its face and would not benefit from claim construction." ECF No. 42 at 7. It alternatively proposes a construction of "image planes resulting from modifying and compressing raw image data." Id. C&A proposes a construction of "image planes resulting from modifying and compressing raw image data." ECF No. 48 at 9.

The Court first considers whether the term requires any construction. The words in this claim term are not particularly complicated or overly technical in nature. However, since the parties present a fundamental dispute regarding the proper scope of the claim as it relates to this term, failing to construe this term could result in the parties making claim construction arguments before the jury. O2 Micro Int'l Ltd., 521 F.3d at 1362; Every Penny Counts, Inc., 563 F.3d at 1383. Moreover, even if the meaning of this term would be clear to one of ordinary skill in the art, it may not be clear, in the context of the technical field of digital videography, to a lay jury. Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1360 (Fed. Cir. 2008) ("claims are construed as an aid to the decision-maker, by restating the claims in non-technical terms"). The Court will therefore construe this term.

The parties agree that "a set of encoded image planes" requires that image data be compressed. C&A's proposed construction adds to this the limitations that (1) the compression is performed first "without demosaicing" and (2) that the image data is then "stored in the recording medium as sets of data." The Court addresses each in turn.

GoPro contends that "[a] demosaicing concept appears nowhere in the '896 Patent's claims, nor does its specification contain any indication . . . that the patentee intended to disclaim or otherwise redefine 'encoded' as 'compressed without demosaicing.'" ECF No. 42 at 9. GoPro further contends the "without demosaicing" limitation would exclude a disclosed embodiment, as "the specification discloses certain embodiments of the invention where demosaicing is performed using a de-Bayer filter." Id. (emphasis in original). Specifically, GoPro points to an embodiment in the patent in which "[a] lower quality, but more efficient, de-Bayer filter can be used for real time preview during editing and a higher quality algorithm . . . can be used for export (e.g., to film or a digital presentation format)." ECF No. 42 at 9, citing '896 patent at 6:34-36. GoPro notes that C&A took the position in its April 21, 2017 petition for inter partes review that "there is no evidence of disclaimer in the '896 [patent's] specification or prosecution history that excludes any embodiment" and that "no construction is necessary" for the disputed terms. Id. at 7 (quoting C&A Marketing, Inc. v. GoPro, Inc., Petition for Inter Partes Review, Case No. IPR2017-01300 at 11 (Apr. 21, 2017)) (emphasis in original).

C&A contends that "[t]he '896 patent background, specification, and provisional application consistently distinguish the prior art process of demosaicing RAW data." ECF No. 48 at 9. C&A argues that the patent distinguishes the prior art method of demosaicing prior to compression - which "increases the size of the data by 3x" and does not benefit compression (id. at 10, citing '896 patent at 4:23-34) - with the claimed invention, in which "[n]o data is added or lost . . . as it is with de-Bayer processing" (id., quoting '896 patent at 4:10-13). C&A also points to the provisional application to which the '896 patent claims priority, which states that the "invention relies on a different processing order that delays the computationally expensive de-bayer operation to occur after the compression step," ECF No. 48-4 at 3, and disparages de-Bayer filtering as "slow," id. at 6. According to C&A, its construction does not exclude the embodiment identified by GoPro, as that embodiment describes application of a de-Bayer filter after compression. ECF No. 48 at 12.

The Court begins with the words of the claims themselves. Phillips, 415 F.3d at 1314. The claims impose no requirement that "a set of encoded image planes" consists of image data compressed first without demosaicing. The claims do not mention demosaicing at all, much less preclude demosaicing or require compression before demosaicing. Thus, to limit the term in the manner sought by C&A, the Court would have to find that "clear and unmistakable statements by the patentee that limit the claims." GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014). Under Federal Circuit law, a patentee can disavow claim scope and limit the claimed invention to a particular feature by, among other things, describing that feature as a "very important feature . . . in an aspect of the present invention" and disparaging alternatives to that feature. Inpro II Licensing, S.A.R.L. v. T-Mobile USA Inc., 450 F.3d 1350, 1354-55 (Fed.Cir.2006).

The Court agrees with GoPro that the statements in the specification of the '896 patent do not rise to the level of disavowal. Inpro provides a useful contrast. There, the parties disputed the construction of the term "host interface" and whether the term required a "direct parallel bus connection." Inpro, 450 F.3d at 1353. The Federal Circuit found that the district court properly construed the term to require a direct connection based on: (1) a statement in the specification that described the direct connection as a "very important feature" of the claimed invention; (2) the fact that the only "host interface" described in the patent was a direct connection; (3) the specification's discussion of how a direct connection solved a problem in the prior art; and (4) the discussion in prosecution history of related applications of the advantage of a direct connection over serial connections. Id. at 1355-56. The Court does not find the statements in the '896 patent's specification to be as clear a disclaimer as that relied on by the Federal Circuit in Inpro. While the specification does acknowledge the limitations of demosaicing, it does not clearly state that the invention excludes demosaicing prior to compression. Nor does the patent state that compression without demosaicing is an "important feature" of the claimed invention. Moreover, C&A does not identify any portion of the prosecution history where the patentees distinguished the claimed invention over prior art based on the compression being performed without demosaicing.

The excerpts from the provisional application go further in disparaging methods requiring demosaicing prior to compression. See e.g. ECF No. 48 at 7-8. But, as C&A acknowledges, the patentee was "describing how 'the invention' is 'different' from the prior art . . . ." Id. at 8. C&A does not contend that the "invention" of the provisional application, filed eight years before the '896 patent, is the same as that claimed in the '896 patent. Indeed, the provisional application describes its invention as "RAW Bayer compression occurring within the camera itself or with the camera tethered to an external device that performs the Bayer compression." ECF No. 48-1 at 8. In contrast, the '896 patent claims a method of image compression using single-sensor color imagers, and a method of providing a preview image at a lower resolution than the original captured image. See '896 patent at Abstract, Claim 1.

Moreover, the Court agrees with GoPro that one of the embodiments disclosed in the '896 patent appears to describe demosaicing RAW image data before compression. The patent explains that in this embodiment a "lower quality, but more efficient, de-Bayer filter can be used for real-time preview during editing" and "a high quality algorithm, which may be computationally slower, can be used for export (e.g., to film or a digital presentation format)." '896 patent at 6:34-38 (emphasis added). Though not explicit, this statement appears to contrast the use of a de-Bayer filter for "real-time preview," using uncompressed data, with the high quality images ultimately exported for display on a larger screen, which presumably must be compressed. Given that C&A's proposed limitation of "without demosaicing" would exclude this embodiment, it is likely incorrect. Epos Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1347 (Fed. Cir. 2014) ("a claim construction that excludes the preferred embodiment . . . is rarely, if ever, correct . . . ."). Thus, the Court declines to limit the term "a set of encoded image planes" to image data compressed without demosaicing.

The Court next considers whether the term "a set of encoded image planes" requires that image data is "stored in the recording medium as sets of data" as proposed by C&A. The parties agree that the set of encoded image plans is initially "stored in the recording medium." ECF No. 42 at 7; ECF No. 49 at 12. But GoPro contends that C&A's proposed limitation of "stored in the recording medium" requires "that the encoded image planes must forever remain [in the storage medium] throughout the decoding process," which is incorrect because "they must necessarily be read out of storage to be decoded." ECF No. 42 at 10. C&A responds that its proposal does not require that encoded image planes remain forever in storage, and agrees with GoPro that image planes must necessarily be read out of storage as part of the decoding process. GoPro further contends that the additional limitation proposed by C&A is unnecessary because claim 1 explicitly recites "storing encoded image data in a non-transitory computer-readable storage medium," with encoded image data "compris[ing] a set of encoded image planes." ECF No. 42 at 10, citing '896 patent, at Claim 1. The Court agrees with GoPro that the limitation "stored in the recording medium" is unnecessary in light of the surrounding claim language that already requires the encoded image data, comprising a set of encoded image planes, to be stored in a computer-readable storage medium. C&A argues that some construction is necessary because without the added limitation "compression can have two meanings: (1) reduced-size data for storage and (2) reduced-size data for transmission." ECF No. 48 at 15. However, since neither party argues that the latter meaning of compression applies, there is no danger that the parties will improperly advance different claim interpretations in front of the jury. Id.; cf. O2 Micro Int'l Ltd., 521 F.3d at 1362. The Court therefore rejects the portion of C&A's construction requiring a set of encoded image planes to be "stored in the recording medium."

The parties' dispute regarding "sets of data" appears to be grammatical - GoPro contends that the plural "sets of data" is inconsistent with the singular "set of image planes," while C&A responds that "sets of data" refers to the plural "image planes." ECF No. 42 at 11; ECF No. 48 at 16. As the Court will not construe the "a set of encoded image planes" to require that image data be "stored in the recording medium," the Court need not address whether the image data must be stored in the recording medium "as sets of data."

C&A's only criticism of GoPro's proposed construction is that it requires "modifying" RAW image data, which, according to C&A, is inconsistent with one of the embodiments disclosed in Figure 7 of the '896 patent. ECF No. 48 at 14. According to C&A, in Figure 7, "RAW image data is separated into individual color planes and compressed," and "[t]he compressed RAW data is unmodified; it is still RAW data." Id. Figure 8, in contrast, discloses "differencing" of raw image data, which C&A says is modification of raw image data. Id. GoPro responds that separating an image into individual color planes, even without differencing, is "modification" of the image data, which is consistent with the embodiment disclosed in Figure 7. ECF No. 53 at 7. GoPro further contends that in the '896 patent, "only modified raw image data is compressed." Id. at 7. Here, the Court agrees with C&A. Nothing in the claims or specification requires "modifying" raw image data. Separating raw image data into planes corresponding to different colors does not modify the underlying image data. The patent's only reference to "modifying" image data is in reference to "differencing," which is not disclosed in Figure 7. See '896 patent, at 3:4:6-8 (referring to "modified image planes" as a result of "differencing the channels").

The Court therefore construes the term "a set of encoded image planes" as "image planes resulting from compressing raw image data."

B. "encoded image data" (claims 1 and 10)

GoPro argues that this term requires no construction. ECF No. 42 at 9. It alternatively proposes a construction of "data that consists of a set of encoded image planes." Id. C&A proposes a construction of "data obtained from an image sensor (i.e. RAW data) and then compressed without demosaicing." ECF No. 48 at 17.

The Court agrees with GoPro that this term requires no construction. It consists of three straightforward, non-technical terms that a lay juror would have no trouble understanding. Moreover, the claims themselves provide a straightforward definition of "encoded image data": "data representative of an original image at an original resolution . . . comprising a set of encoded image planes . . . ." '896 patent at Claims 1, 10. The Court has already construed "a set of encoded image planes," and in doing so resolved the parties' primary dispute with respect to the "encoded image data" term - whether image data must be compressed without demosaicing. The Court therefore finds that this term should be given its plain and ordinary meaning. O2 Micro Int'l Ltd., 521 F.3d at 1362 ("district courts are not (and should not be) required to construe every limitation present in a patent's asserted claims").

C. "a set of encoded image planes each representative of one or more image planes of the original image" (claims 1 and 10)

GoPro again argues that this phrase requires no construction. ECF No. 42 at 13. It alternatively proposes a construction of "a set of encoded image planes, each encoded image plane representative of one or more image planes of the original image." Id. C&A proposes a construction of "image data first compressed without demosaicing and then stored in the recording medium as sets of data, each set of data corresponding to an image plane of the sensor." ECF No. 48 at 16. With respect to this phrase, the parties dispute the same issues the Court already resolved with respect to the term "a set of encoded image planes." Given the Court's construction of "a set of encoded image planes," the Court concludes that the larger phrase requires no further construction.

D. "access[ing] a subset of the set of encoded image planes" (claims 1 and 10)

GoPro again argues that this phrase requires no construction. ECF No. 42 at 11. It alternatively proposes a construction of "accessing less than all of the set of encoded image planes." Id. C&A proposes a construction of "accessing some but not all of the encoded image planes of a frame." ECF No. 48 at 18. The parties dispute two aspects of their respective proposals: (1) the proper construction of "subset"; and (2) whether the term requires accessing "image planes of a frame."

1. "subset"

GoPro contends that, if this phrase is construed at all, the term "subset" should be construed as "less than all" based on its definition in the claims themselves. ECF No. 42 at 16 ("However, the claim defines 'subset' immediately after its use: 'the subset comprising less than all of the set of encoded image planes.'") (citing '896 patent at 7:24-25). C&A counters that "less than all" is ambiguous because it could include a null set, since none is "less than all." ECF No. 48 at 18. According to C&A, this would "render the claim language absurd." Id.

The claims require that the decoder access a subset of the encoded image planes for purposes of generating a preview image: "a decoder configured to, in response to receiving the request a preview of the original image . . . access a subset of the set of encoded image planes . . . and decode the accessed subset of encoded image planes to produce the original image at the preview resolution." '896 patent at 8:17-23. If "subset" could refer to none, as would be possible under GoPro's "less than all," construction, accessing and decoding none of the set of encoded image planes could meet this limitation. Put another way, the claim could be met by generating a preview image without ever accessing or decoding image planes. During the Markman hearing, GoPro confirmed that, in its view, this would fall within the scope of the claims:

The drafter says "less than all" and there is no dispute that in math - this is an uncontrovertible mathematical truth, that less than all or a subset includes something called the empty set, which is nothing. So from a - using the word "subset" in a patent dealing with a lot of math, a person of ordinary skill in the art would understand that you could, in fact, access none of the encoded image planes and still meet the claim.

On one hand, "courts may not redraft claims, whether to make them operable or to sustain their validity." Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004); see also Haemonetics Corp. v. Baxter Healthcare Corp., 607 F.3d 776, 781 (Fed. Cir. 2010) ("we construe claims with an eye toward giving effect to all of their terms . . . even if it renders the claims inoperable or invalid") (internal citation omitted). On the other hand, construing "subset" as "less than all" - allowing the claim to be satisfied by accessing none of the encoded image planes - would effectively read out the entire decoding step, because there would be no encoded image planes to decode. Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) ("claims are interpreted with an eye toward giving effect to all terms in the claim."). Moreover, in construing the claims the Court must always consider what the patentees actually invented when considering the patent as a whole. MySpace, Inc., 672 F.3d at 1256 (when construing claims, courts must consider "what was invented, and what exactly was claimed."). The Court is confident that the patentees did not intend to - and did not - claim display of a preview image without any decoding. Indeed, decoding appears to be at the heart of the claimed invention, as evidenced by the title of the patent: "Compression and Decoding of Single Sensor Color Image Data." Thus, the Court will adopt C&A's construction of "subset" as "some but not all."

E. "of a frame"

The crux of the dispute with respect to C&A's proposed addition of the "of a frame" limitation is whether the claimed method (and the corresponding system) must operate on a single frame - one of several images that make up a video - or whether it can instead be applied to a video as a whole.

GoPro contends that C&A's proposed addition of the phrase "of a frame" is an improper attempt "to limit the set of encoded image planes to one frame." ECF No. 42 at 16. GoPro notes that the word "frame" does not appear anywhere in the claims, suggesting the claims are not so limited. Id. at 13. GoPro argues that the patent clearly relates to video compression, which necessarily involves multiple frames rather than a single frame as suggested by C&A's construction. Id. at 17.

C&A responds that "[t]he text of the patent is . . . clear that the claimed systems and methods are directed to decoding an individual image or individual frame of a video, not a video as a whole made up of multiple frames." ECF No. 48 at 19. It points to Figure 7 of the patent, which depicts "Bayer compression," and separates a "Source Bayer image in memory buffer" into four image planes. C&A notes that the '896 patent's specification describes a "Bayer image" as a "single high definition Bayer frame." '896 patent, at 3:52-56. C&A further contends that the "of a frame" limitation is also consistent with the provisional application, which explains that "a single high definition Bayer frame can be separated into four planes." ECF No. 48 at 19. C&A warns that GoPro seeks to broaden the claim for purposes of advancing its infringement claims, and without a clarifying construction "could mislead the factfinder into believing the claim term is far broader than the disclosure supports." Id. at 20.

The parties' dispute became clearer at the Markman hearing. C&A explained that its proposed addition of "of a frame" does not preclude video processing as GoPro suggests. According to C&A, the claimed invention is about "encoding and then doing a preview mode decode or fast decode of each image," and the claims "as written, read[] only on [] single frame processing, but you can do it over and over and over again." Hrg. Tr. at 33:3-7. In argument, C&A focused on Figure 7, which depicts an embodiment of the claimed invention, in which a single frame is separated into four image planes, two green, one red, and one blue. '896 patent at Fig. 7. In the embodiment, a subset of the planes - three of the four planes, discarding the extra green plane - is used to reconstruct a full color, lower resolution preview image. According to C&A, Figure 7 clearly shows that the claimed invention operates on frames rather than an entire video. C&A argues that in the absence of the "of a frame" limitation, generating a lower quality preview of a video by simply reducing frame rate - for example, taking out one out of every three frames - could satisfy the claims. This is because, if each frame consists of encoded image planes, accessing a subset of frames of a video would necessarily mean accessing a subset of the encoded image planes. The problem with this, according to C&A, is that the patentees did not invent the concept of reducing frame rate, and that is not the invention claimed by the patent. See Hrg. Tr. at 31:5-39:6.

GoPro conceded at the hearing that the claimed invention could be used to process video by compressing and decoding one frame at a time, with the process repeated for each frame. Id. at 46:24-47:6 (stating that the claimed invention could be carried out on a "frame-by-frame basis"). GoPro also did not dispute that, in its view, the "access[ing] a subset of the encoded image planes" limitation could be met by simply reducing frame rate. Id. at 47:20-49:20. Yet, GoPro conceded that it did not invent the concept of reducing frame rate. Id. at 50:5-9.

This is a close issue. The Court starts with the words of the claims themselves, which do not use the word "frame" or explicitly limit the claim to compression of a single frame. Vitronics, 90 F.3d at 1582 ("we look to the words of the claims themselves . . . to define the scope of the patented invention"). However, the Court agrees with C&A that the patent cannot be fairly read as pertaining to reducing frame rate. Indeed, the patent contains no discussion of frame rate reduction. Given GoPro's admission that, in the absence of any further limiting construction, frame rate reduction would fall within the scope of the claims, and that it did not invent the concept of frame rate reduction, the Court concludes that the addition of the "of a frame" limitation is necessary and consistent with the patent's description of the claimed invention. Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998) ("Ultimately, the interpretation to be given a term can only be determined and confirmed with a full understanding of what the inventors actually invented and intended to envelop with the claim.").

The Court therefore construes the term "access[ing] a subset of the set of encoded image planes" as "access[ing] some but not all of the encoded image planes of a frame." / / / / / / / / / / / / / / / / / / / / / / / / / / / / / /

CONCLUSION

For the foregoing reasons, the Court construes the disputed claim terms as follows:

IT IS SO ORDERED. Dated: July 24, 2017

/s/_________

JON S. TIGAR

United States District Judge