RON CLARK

Silvia Jordan, Kaye Scholer, New York, NY, Jason F. Hoffman, Roy William Sigler, Alan Michael Fisch, Fisch Hoffman Sigler LLP, Washington, DC, for Plaintiff. Daniel Johnson, Jr., Morgan Lewis & Bockius LLP, San Francisco, CA, Lawrence Augustine Phillips, Clyde Moody Siebman, Siebman Reynolds Burg & Phillips LLP, Sherman, TX, Michael Francis Carr, Michael John Lyons, Morgan Lewis & Bockius LLP, Palo Alto, CA, David L. Witcoff, Marc S. Blackman, Jones Day, Chicago, IL, Tharan Gregory Lanier, Jones Day, Menlo Park, CA, Jennifer Parker Ainsworth, Matthew T. Milam, Wilson Robertson & Cornelius PC, Eric Hugh Findlay, Roger Brian Craft, Walter Wayne Lackey, Jr., Findlay Craft, Tyler, TX, R. Tyler Goodwyn, IV, Lora A. Brzezynski, Renzo Nicola Rocchegiani, Song K. Jung, McKenna Long & Aldridge LLP, Roy William Sigler, Fisch Hoffman Sigler LLP, Washington, DC, Mitchell G. Stockwell, Kilpatrick Townsend & Stockton LLP, Laura S. Huffman, King & Spalding, Atlanta, GA, Allison H. Altersohn, Erik J. Dykema, Jeffrey S. Seddon, II, Robert F. Perry, Susan A. Kim, King & Spalding, LLP, New York, NY, Danny Lloyd Williams, David Wynne Morehan, David Kent Wooten, Kyung Kim, Leisa Talbert Peschel, Ruben Singh Bains, Williams Morgan & Amerson PC, Joe W. Redden, Jr., Michael Ernest Richardson, Beck Redden & Secrest LLP, Houston, TX, Times Wang, Alan J. Heinrich, Jonathan Robert Lange, Lisa Partain, Stephen C. McArthur, Xinlin Li, Irell & Manella, Los Angeles, CA, John H. McDowell, Jr., Benjamin Jack Setnick, Mark David Mutschink, Andrews Kurth LLP, Dallas, TX, James V. Mahon, Andrews Kurth LLP, Durham, NC, Leslie T. Grab, Matias Ferrario, Steven D. Moore, Kilpatrick Townsend & Stockton LLP, Winston-Salem, NC, Taylor Higgins Ludlam, Kilpatrick Townsend & Stockton LLP, Raleigh, NC, for Defendants.

Memorandum Adopting Report and Recommendation re Indefiniteness of '884, ' 651, & '715 Patents

RON CLARK, District Judge.

This matter was referred to the United States Magistrate Judge pursuant to 28 U.S.C. § 636, and he has recommended that Defendants' motion for summary judgment of indefiniteness regarding United States Patent No. 6,271,884, U.S. Patent No. 6,838,651, and U.S. Patent No. 6,838,715 be granted in part and denied in part [Doc. # 181; Doc. # 210]. These patents relate to digital cameras and camcorders and the sensor arrays used therein. Having received the recommendation of the United States Magistrate Judge [Doc. # 210], having considered the objections and responses thereto filed by Plaintiff and Defendants [Doc. # 219; Doc. # 222; Doc. # 238; Doc. # 241], and having conducted a de novo review of the objections in relation to the pleadings and applicable law, this court is of the opinion that the findings and conclusions of the Magistrate Judge are correct and adopts the Magistrate Judge's reports as the findings and conclusions of the court.

DISCUSSION

A. Defendants' Objections to Recommended Denial of Motion for Summary Judgment as to '884 Patent and '715 Patent [Doc. # 219]

Defendants object to the report's findings that “overall gain control block” in Claim 14 of the '884 Patent connotes sufficient structure to avoid being a means-plus-function term (or, alternatively, that adequate corresponding structure is disclosed), that the word “approximately” in the term “approximately aligns” in claims of the '715 Patent does not render the claims invalid as indefinite, and that the phrase “shifted closer to said optical center ...” in claims of the '715 Patent does not create a physical impossibility that renders the claims invalid as indefinite [Doc. # 219 at 2, 5, 6, 10]. All of these issues have been properly addressed by the report of the Magistrate Judge [Doc. # 210 at 753–56, 759–65], but certain specific objections are discussed in further detail herein.

1. '884 Patent

As to “overall gain control block,” Defendants submit the court failed to address the “USB Camera Designer's Guide,” which was a proprietary document of the original assignee of the patent, Conexant Systems, Inc. Id. The patentee submitted the USB Camera Designer's Guide to the United States Patent and Trademark Office during prosecution of the '884 Patent, and Defendants argue the USB Camera Designer's Guide confirms that the term “block” does not connote structure. Id. at 4.

In its response, Plaintiff argued that the Magistrate Judge's finding that the claim term “overall gain control block” is not a means-plus-function limitation is fully supported by both the intrinsic record and the law [Doc. # 238 at 3]. Plaintiff contends that the USB Camera Designer's Guide indicates that the term “block” is purely functional, and the sections on which Defendants rely do not discuss the term “overall gain control block.” Id. at 5 n. 18.

As a preliminary matter, Defendants' reply brief in support of their motion for summary judgment cited the USB Camera Designer's Guide in a footnote only to rebut Plaintiff's reliance on it as evidence that the constituent term “block” connotes structure to a person of ordinary skill in that art [Doc. # 192 at 2 n. 1; Doc. # 185 at 7 n. 18; See Doc. # 185, Ex. 2, USB Camera Designer's Guide at p. “2–3” (“Power conditioning block”), p. “3–8” (“Clock Generator Block”) ]. In other words, Defendants argued that the court should not to rely upon the USB Camera Designer's Guide. The Magistrate Judge evidently agreed with Defendants.

But even considering the USB Camera Designer's Guide, the specification and the claims are far more probative than two isolated uses of the term “block” (cited in the preceding paragraph) in an essentially extrinsic design manual that the patentee submitted during prosecution. Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed.Cir.2005) (“[W]hile extrinsic evidence can shed useful light on the relevant art, we have explained that it is less significant than the intrinsic record in determining the legally operative meaning of claim language.”) (citations and internal quotation marks omitted). The Magistrate Judge properly found that “overall gain control block” connotes sufficient structure to avoid application of 35 U.S.C. § 112, ¶ 6, particularly in light of the presumption that 35 U.S.C. § 112, ¶ 6 does not apply where the claim language does not expressly recite a “means.” Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed.Cir.2004). The Magistrate Judge also properly found, in the alternative, that the claims and the specification disclose sufficient corresponding structure [Doc. # 210 at 755–56]. This court adopts those findings, and Defendants' objections are accordingly overruled.

2. '715 Patent

There are sometimes cases involving a term of degree where “the patent fails to provide a person of ordinary skill in the art an objective anchor against which a potentially infringing product may be compared” and “provides no objective framework regarding what is necessary to serve the inventor's purposes.” Advanced Display Techs. of Tex., LLC v. AU Optronics Corp., et al., Nos. 6:11–CV–11, –391, 2012 WL 2872121, at *12–*13 (E.D.Tex. July 12, 2012) (Davis, J.). In addition, Defendants cite the presence of “close prior art” as requiring better definition for the degree of “approximately” than is provided in the patent. Amgen, Inc. v. Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1218 (Fed.Cir.1991) (“When the meaning of claims is in doubt, especially when, as is the case here, there is close prior art, they are properly declared invalid.”). However, in the present case, the term “approximately” in Claims 1–3, 5, 6, 9–11, and 13–15 of the '715 Patent is anchored by the disclosure of the operation of the purported invention and the use of “shift groups,” as thoroughly addressed in the five-page analysis by the Magistrate Judge [ See Doc. # 210 at 760–63]. Defendants' objections in this regard are overruled.

As to “shifted closer to said optical center ...” in Claims 1 and 11, Defendants re-urge their reliance on Chef America and the general principle that courts should not rewrite unambiguous claim language to avoid inoperability. Chef Am., Inc. v. Lamb–Weston, Inc., 358 F.3d 1371, 1374 (Fed.Cir.2004). The Magistrate Judge fully considered Chef America and correctly concluded that “there is a plain, natural reading of the claim that avoids inoperability or exclusion of all embodiments and that is consistent with the specification” [Doc. # 210 at 764]. Both the first and second metal interconnect segments shift closer to the optical center, but the second shifts more. Defendants' objection in this regard is overruled.

Accordingly, Defendants' objections as to the term “overall gain control block” in the '884 Patent, the “approximately aligns” terms in the '715 Patent, and the term “shifted closer to said optical center ...” in the '715 Patent are overruled.

B. Plaintiff's Objections to Recommended Grant of Motion for Summary Judgment as to '651 Patent [Doc. # 222]

Plaintiff objects to the recommendation that Claims 13–15 are invalid because of lack of antecedent basis for the term “pixels,” plural [Doc. # 222 at 1]. Many of Plaintiff's objections have already been addressed by the Magistrate Judge in his recommendations [Doc. # 241 at 3]. Claim 13 recites:

Claim 13 recites (emphasis added):

13. A solid state imaging device, comprising:

groups of pixels, wherein each of said groups of pixels include:

a red pixel having an output;

a blue pixel having an output;

a first green pixel having an output; and

a second green pixel having an output;

a first analog-to-digital converter connected to the output of the red pixel for converting the output of the red pixels into a first digital signal and connected to the output of the blue pixel for converting the output of the blue pixels into a second digital signal;

a second analog-to-digital converter connected to the output of the first green pixel for converting the output of the first green pixels into a third digital signal and connected to the output of the second green pixel for converting the output of the second green pixels into a fourth digital signal; and

a color interpolation circuit for combining the first, second, third and fourth digital signals.
Plaintiff submits the plural term “pixels” and the “groups of pixels” language were added to distinguish the “Fowler” prior art, in which, according to Plaintiff, each of the analog-to-digital converters (“A/D converters”) was dedicated to a single pixel. Id. at 4–5. The patentee amended application claim 12 (which was similar to application claim 17, which in turn ultimately issued as Claim 13 of the '651 Patent) and argued:

It is respectfully submitted that Fowler discloses that each pixel 14 in FIG. 1 has a dedicated A/D converter. (See col. 2, lines 47–54.) In contrast, claim 12 of the present application, as amended, includes a first A/D converter for the red pixels, a second A/D converter for the blue pixels, a third A/D converter for the first green pixels, and a fourth A/D converter for the second green pixels. Therefore, in sharp contrast to Fowler, each of the A/D converters of claim 12 is not dedicated to a single pixel.
[Doc. # 181, Ex. 1, 9/22/2003 Amendment and Response at 14].

Plaintiff did not present this prosecution history or the Fowler reference to the Magistrate Judge when responding to Defendants' briefing or oral argument [ See Doc. # 185; Doc. # 202; Doc. # 241 at 4], and evidence and arguments presented for the first time upon objection to a report and recommendation need not be considered. Rhodes v. Dir., TDCJ–CID, No. 6:11–CV236, 2011 WL 6153088, at *3 (E.D.Tex. Dec. 12, 2011) (“The Fifth Circuit has held that issues raised for the first time in objections to the Report of the Magistrate Judge are not properly before the District Court.”) (citing Finley v. Johnson, 243 F.3d 215, 218 n. 3 (5th Cir.2001), United States v. Armstrong, 951 F.2d 626, 630 (5th Cir.1992), Cupit v. Whitley, 28 F.3d 532, 535 n. 5 (5th Cir.1994)).

Moreover, even if the prosecution history involving Fowler is considered, it fails to resolve the antecedent basis problem. In particular, Plaintiff does not address the problem emphasized by the Magistrate Judge that Claim 13 recites “a first analog-to-digital converter connected to the output of the red pixel [ (singular) ] for converting the output of the red pixels [ (plural) ] into a first digital signal” [Doc. # 210 at 758].

Plaintiff relies on the examiner's silence on this issue as evidence that the examiner did not find any lack of antecedent basis [Doc. # 222 at 5]. Plaintiff presents no authority, however, for the proposition that the absence of such an objection during prosecution should preclude a finding of indefiniteness during litigation. Further, at the time of the September 22, 2003 amendment and the January 16, 2004 office action cited by Plaintiff as evidence of the examiner's acquiescence, the claims at issue did not recite the “connected to the output of the red pixel [ (singular) ]” language that appears in issued Claim 13 [ See Doc. # 222, Ex. 2, 9/22/2003 Amendment and Response at 6–8; Doc. # 222, Ex. 3, 1/16/2004 Final Rejection at 5–7]. The patentee added that language to application claim 17 later, as part of the January 28, 2004 Amendment and Response [Doc. # 181, Ex. 2 at 5]. The prosecution history relied upon by Plaintiff thus predates the “connected to the output of the red pixel [ (singular) ]” language on which the Magistrate Judge relied.

The Magistrate Judge properly found Claims 13–15 of the '651 Patent invalid based on indefiniteness. Plaintiff's objections in that regard are overruled.

CONCLUSION

For the foregoing reasons, it is hereby ORDERED that the Report and Recommendation [Doc. # 210] on Defendants' Motion for Summary Judgment of Indefiniteness Regarding U.S. Patent No. 6,271,884, U.S. Patent No. 6,838,651, and U.S. Patent No. 6,838,715 [Doc. # 181] is hereby adopted, and Defendants' motion [Doc. # 181] is accordingly hereby GRANTED IN PART and DENIED IN PART. Specifically, Defendants' motion is GRANTED as to claims 13, 14, and 15 of the '651 Patent, but is otherwise DENIED.

REPORT AND RECOMMENDATION OF UNITED STATES MAGISTRATE JUDGE

AMOS L. MAZZANT, United States Magistrate Judge.

Before the Court is Defendants' Motion for Summary Judgment of Indefiniteness Regarding U.S. Patent No. 6,271,884 (“'884 Patent”), U.S. Patent No. 6,838,651 (“'651 Patent”), and U.S. Patent No. 6,838,715 (“'715 Patent”) (“Motion”) (Dkt. # 181). Also before the Court are Plaintiff's Opposition (“Response”) (Dkt. # 185) and Defendants' Reply (“Reply”) (Dkt. # 192). The Court held a hearing on May 31, 2012. Having considered the relevant pleadings and oral arguments of counsel, the Court is of the opinion that Defendants' motion for summary judgment should be granted in part and denied in part, as set forth herein.

BACKGROUND

In the above-captioned case, Plaintiff asserts five patents related to digital cameras and camcorders, and the sensor arrays used therein. Defendants' present motion requests summary judgment of indefiniteness based on “ambiguous limitations” in several asserted claims of three of the patents-in-suit, which are addressed in turn herein. Motion (Dkt. # 181) at 1. All remaining Defendants join in this motion.

LEGAL STANDARDS

In a motion for summary judgment, the moving party has the initial burden of showing that there is no genuine issue of any material fact and that judgment should be entered as a matter of law. Fed.R.Civ.P. 56(a) & (c); Celotex Corp. v. Catrett, 477 U.S. 317, 322–23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). “The evidence of the non-movant is to be believed, and all justifiable inferences are to be drawn in his favor.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). An issue is “material” where it involves a fact that might affect the outcome of the suit under the governing law of the underlying cause of action. See Burgos v. S.W. Bell Tel. Co., 20 F.3d 633, 635 (5th Cir.1994) (citing Liberty Lobby, 477 U.S. at 248, 106 S.Ct. 2505). The nonmovant is not required to respond to a motion for summary judgment until the movant first meets its burden of demonstrating that there are no factual issues warranting trial. Ashe v. Corley, 992 F.2d 540, 543 (5th Cir.1993). Once the movant has shown the absence of material fact issues, however, the opposing party has a duty to respond, via affidavits or other means, asserting specific facts showing that there is a genuine issue for trial. Fed.R.Civ.P. 56(c). “Summary judgment will not lie if the dispute about a material fact is ‘genuine,’ that is, if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Liberty Lobby, 477 U.S. at 248, 106 S.Ct. 2505. “Summary judgment is appropriate in a patent case, as in other cases,” under the standard of Federal Rule of Civil Procedure 56. Nike, Inc. v. Wolverine World Wide, Inc., 43 F.3d 644, 646 (Fed.Cir.1994).

ANALYSIS

A. United States Patent No. 6,271,884

(1) The Parties' Positions

Defendants argue that Claim 14 and Claim 17 (which depends from Claim 14) of the '884 Patent are indefinite because the term “overall gain control block” does not recite structure, and because there is no corresponding structure disclosed in the specification. Motion (Dkt. # 181) at 4–10.

Title 35 U.S.C. § 112, ¶ 6 provides that a patent applicant can claim “a means or step for performing a specified function ... and such claim shall be construed to cover the corresponding structure ... described in the specification and equivalents thereof.” Id. at 5. Although claim limitations subject to 35 U.S.C. § 112, ¶ 6—often referred to as “means-plus-function” limitations—usually include the phrase “means for,” Defendants submit that even a limitation that does not include “means for” can be covered by 35 U.S.C. § 112, ¶ 6 if it “is drafted as a function to be performed rather than definite structure or materials.” Id. (quoting Mas–Hamilton Grp. v. LaGard, Inc., 156 F.3d 1206, 1213–14 (Fed.Cir.1998)). “The task of determining whether the limitation in question should be regarded as a means-plus-function limitation, like all claim construction issues, is a question of law for the court.” Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed.Cir.2004).

Defendants urge that because the claimed “block” “refers to a function that can be implemented in various structures,” such as any software or hardware that performs the desired function, the term is governed by 35 U.S.C. § 112, ¶ 6. Id. at 6–8 (discussing Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371 (Fed.Cir.2009)).

Defendants then submit that because the “overall gain control block” is computer-implemented, the corresponding structure must be a specific algorithm, not a general purpose computer, and must not merely be a restatement of the desired function. Id. at 8 (citing Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1253 (Fed.Cir.2005); Aristocrat Techs. Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed.Cir.2008)). Defendants argue that because the specification discloses no algorithm, the term “overall gain control block” renders Claims 14 and 17 indefinite. Id. at 9 (citing, e.g., Aristocrat, 521 F.3d at 1334–35).

Plaintiff responds that the absence of “means for” language in the claims gives rise to “a strong presumption against” applying 35 U.S.C. § 112, ¶ 6. Response (Dkt. # 185) at 1 & 4. Plaintiff also argues that “the term ‘block’ provides sufficient structure as it is well-understood in the art—as reflected in the '884 Patent's specification—to refer to specific hardware or software units configured to perform specific functions.” Id. at 1 & 5 (citing Lighting World, 382 F.3d at 1362). Plaintiff concludes that 35 U.S.C. § 112, ¶ 6 does not apply. Finally, Plaintiff argues that Defendants' cited authorities of Mas–Hamilton and Desire2Learn are distinguishable because the Mas–Hamilton prosecution history described the “element” at issue as a “means,” and because Desire2Learn analyzed whether there was sufficient corresponding structure, not whether the term at issue should be interpreted under 35 U.S.C. § 112, ¶ 6. Id. at 8.

Alternatively, Plaintiff argues that even under 35 U.S.C. § 112, ¶ 6, the specification discloses sufficient structure, in particular the “device driver 304.” Id. at 9–10. Plaintiff submits that the “device driver 304 ... over time alters the overall system gain,” and does so according to an algorithm, disclosed in both Claim 14 and the specification, that includes “adjusting the integration time while maintaining the integration time at an integral multiple of the period of the periodic intensity.” Id. at 9–10 (citing '884 Patent at Claim 14 & 6:6–9).

Defendants reply that “Plaintiff's construction attempts to capture all possible structures for adjusting overall system gain. This is the very definition of functional claiming.” Reply (Dkt. # 192) at 1 (emphasis omitted). Defendants cite Massachusetts Institute of Technology and Electronics For Imaging, Inc. v. Abacus Software, which affirmed a finding that “colorant selection mechanism” was subject to 35 U.S.C. § 112, ¶ 6. Id. at 2 (citing 462 F.3d 1344, 1354 (Fed.Cir.2006)).

Alternatively, Defendants reply that the purported corresponding algorithm cited by Plaintiff is in fact “merely the recitation of the function to be performed, not an algorithm for performing that function.” Id. at 3. At best, Defendants argue, “this language merely describes the outcome of the claimed function, which is insufficient.” Id. As to the “device driver” disclosed in the specification, Defendants reply that it “does not disclose an algorithm identifying how the device driver monitors the brightness data, how it alters overall system gain to affect that brightness, and how ‘automatic’ gain control is achieved. Instead, it merely identifies the result sought.” Id. at 4.

At the May 31, 2012 hearing, Plaintiff emphasized that Claim 21 recites “means for varying an overall system gain,” which is in the means-plus-function form covered by 35 U.S.C. § 112, ¶ 6, and which Plaintiff submitted is further evidence that Claim 14 is not covered by 35 U.S.C. § 112, ¶ 6. Plaintiff also noted that the specification uses the constituent term “block” twenty-two times. Plaintiff concluded that “block” denotes a structural term, not a means-plus-function term. (2) Discussion

Claim 14 recites (emphasis added):

14. An IMAGE

Figure 3A and this quoted passage support a plain reading of “shifted closer to said optical center than said first metal interconnect segment” to mean that the second metal interconnect segment and the first metal interconnect segment are both shifted closer to said optical center but by different amounts. In light of this supported, plain reading of the claim, Defendants' reliance on Chef America fails.

Because a person of ordinary skill in the art would read “shifted closer to said optical center” to refer to the relative amount of shift, Defendants' indefiniteness argument based on internal inconsistency or physical impossibility should be rejected. (3) Summary

In sum, Defendants have failed to meet their burden on summary judgment to prove indefiniteness by clear and convincing evidence as to either the “approximately aligns” limitation or the purported internal inconsistency regarding the phrase “shifted closer to said optical center.” Defendants' motion for summary judgment as to Claims 1–3, 5, 6, 9–11, and 13–15 of the ' 715 Patent should therefore be denied.

CONCLUSION AND RECOMMENDATION

The Court recommends that Defendants' motion for summary judgment be granted-in-part and denied-in-part. Specifically, the Court recommends that Defendants' motion should be granted as to Claims 13, 14, and 15 of the '651 Patent, but should otherwise be denied.

Within fourteen (14) days after service of the magistrate judge's report, any party may serve and file written objections to the findings and recommendations of the magistrate judge. 28 U.S.C. § 636(b)(1)(C).

Failure to file written objections to the proposed findings and recommendations contained in this report within fourteen days after service shall bar an aggrieved party from de novo review by the district court of the proposed findings and recommendations and from appellate review of factual findings accepted or adopted by the district court except on grounds of plain error or manifest injustice. Thomas v. Arn, 474 U.S. 140, 148, 106 S.Ct. 466, 88 L.Ed.2d 435 (1985); Rodriguez v. Bowen, 857 F.2d 275, 276–77 (5th Cir.1988).

July 2, 2012