Case: 20-1191 Document: 26 Page: 1 Filed: 02/21/2020
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IRONWORKS PATENTS LLC,
Plaintiff-Appellant
v.
SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
ELECTRONICS AMERICA, INC.,
Defendants-Appellees
______________________
2020-1191
______________________
Appeal from the United States District Court for the
Northern District of California in No. 4:17-cv-01958-HSG,
Judge Haywood S. Gilliam, Jr.
______________________
Decided: February 21, 2020
______________________
ALISON AUBREY RICHARDS, Global IP Law Group, Chi-
cago, IL, argued for plaintiff-appellant. Also represented
by DAVID P. BERTEN, C. GRAHAM GERST, HANNAH L.
SADLER.
ALLAN SOOBERT, Paul Hastings LLP, Washington, DC,
argued for defendants-appellees. Also represented by
STEPHEN BLAKE KINNAIRD; ELIZABETH BRANN, San Diego,
CA.
Case: 20-1191 Document: 26 Page: 2 Filed: 02/21/2020
2 IRONWORKS PATENTS LLC v. SAMSUNG ELECS. CO., LTD.
______________________
Before LOURIE, DYK, and MOORE, Circuit Judges.
MOORE, Circuit Judge.
MobileMedia Ideas, LLC sued Samsung Electronics
Co., Ltd. and Samsung Electronics America, Inc. (collec-
tively, Samsung), alleging infringement of the claims of
U.S. Patent No. 6,427,078 and U.S. Patent No. 5,915,239. 1
In March 2017, MobileMedia assigned the patents-in-suit
to Ironworks, which was then substituted as plaintiff in
July 2017. In October 2018, the district court issued a
claim construction order, construing claim terms of both
the ’078 patent and ’239 patent. Following the claim con-
struction order, the parties stipulated to noninfringement
of the claims of the ’078 patent and to noninfringement and
invalidity of the claims of the ’239 patent. The district
court entered judgment based on its claim construction or-
der and the parties’ stipulation. Ironworks appeals the
1 MobileMedia also asserted infringement of the
claims of U.S. Patent No. 5,553,125. Samsung filed coun-
terclaims alleging noninfringement and invalidity of the
asserted claims of the ’125 patent. The district court dis-
missed with prejudice the claim of infringement of the as-
serted claims of the ’125 patent. Order Granting Motion to
Dismiss Claim Regarding ’125 Patent, Ironworks Patents
LLC v. Samsung Electronics Co., Ltd., et al., No. 4:17-cv-
01958-HSG (N.D. Cal. Nov. 16, 2017), ECF No. 140. It
later dismissed without prejudice Samsung’s counter-
claims of noninfringement and invalidity of the asserted
claims of the ’125 patent. Order of Final Decision, Iron-
works Patents LLC v. Samsung Electronics Co., Ltd., et al.,
No. 4:17-cv-01958-HSG (N.D. Cal. Nov. 22, 2019), ECF No.
178. The district court also dismissed without prejudice
Samsung’s counterclaim for invalidity of the asserted
claims of the ’078 patent.
Id.
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IRONWORKS PATENTS LLC v. SAMSUNG ELECS. CO., LTD. 3
district court’s judgment, arguing that the district court’s
claim constructions were erroneous. We have jurisdiction
under 28 U.S.C. § 1295(a)(1).
For the reasons discussed below, we vacate and remand
the district court’s judgment of noninfringement of the as-
serted claims of the ’078 patent because the district court
erred in its construction of the term “camera unit.” We also
vacate and remand the judgment of invalidity of the as-
serted claims of the ’239 patent because the district court
erred in its construction of the term “means for interpret-
ing the received voice commands.” Finally, we affirm the
judgment of noninfringement of the asserted claims of the
’239 patent because the district court did not err in its con-
struction of the term “means for storing the sub-identifi-
ers.”
I. THE ’078 PATENT
Ironworks asserted infringement of claims 1–3, 6, 18,
36, 38, 42, 46, 73, and 77 of the ’078 patent. All three as-
serted independent claims—claims 1, 36, and 73— require
a “camera unit.” The district court construed “camera unit”
as “camera arrangement comprising a camera, optics, mi-
croprocessor and memory, battery, and interface to exter-
nal systems constituting an individual component of a
whole personal communication device or whole portable
mobile cellular phone.” J.A. 40. Based on the district
court’s construction of “camera unit,” the parties stipulated
to noninfringement of the asserted claims of the ’078 pa-
tent. The district court entered final judgment of nonin-
fringement of those claims. Ironworks appeals from that
decision, arguing that the district court erroneously con-
strued the term “camera unit.”
We review a district court’s claim construction de novo
except for underlying fact findings related to extrinsic evi-
dence, which we review for clear error. Teva Pharm. USA,
Inc. v. Sandoz, Inc.,
135 S. Ct. 831, 835 (2015). “The words
of a claim are generally given their ordinary and customary
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4 IRONWORKS PATENTS LLC v. SAMSUNG ELECS. CO., LTD.
meaning as understood by a person of ordinary skill in the
art when read in the context of the specification and pros-
ecution history.” Thorner v. Sony Comput. Entm’t Am.
LLC,
669 F.3d 1362, 1365 (Fed. Cir. 2012). We hold that
the district court erred in its construction of “camera unit.”
The ’078 patent is directed to a device for personal com-
munication, data collection and data processing. ’078 pa-
tent at 1:10–12. The device is a “small-sized, portable and
hand-held work station,” such as a notebook computer, that
includes a data processing unit, a display, a user interface,
at least one memory unit, a power source, and application
software. ’078 patent at Abstract; see also
id. at 1:12–17.
In some embodiments, the device also includes a camera
unit, which may be placed into the housing of the device or
fitted on a PCMCIA card, e.g., an insertable camera card.
Id.
The three independent claims in which the term “cam-
era unit” appears differ in the elements the “camera unit”
comprises. Claim 1 recites:
1. A portable cellular mobile phone for personal
communication, data collection and data pro-
cessing, which is a small-sized, portable and hand-
held work station including a housing and compris-
ing
a data processing unit comprising a microproces-
sor,
a display,
a user interface,
a number of peripheral device interfaces,
at least one memory unit;
a power source, and
application software,
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IRONWORKS PATENTS LLC v. SAMSUNG ELECS. CO., LTD. 5
wherein the device also comprises:
a camera unit for obtaining and outputting image
information comprising:
a camera for receiving image information;
optics connected to said camera for passing said im-
age information to the camera;
means for processing and for storing at least a por-
tion of said image information obtained by said
camera unit for later recall and processing;
at least one memory unit for storing said image in-
formation; and
an output coupled to said data processing unit for
outputting image information from said memory
unit to the processing unit; and
wherein at least a portion of said camera unit is lo-
cated within said housing, and said data processing
unit processes image information output by said
camera unit,
wherein said display presents image information
obtained by said camera unit, and
wherein said device further comprises means for
transmitting image information processed by said
processing unit to another location using a radio
frequency channel.
(emphasis added). Claim 36 recites:
36. A portable notebook computer having a hous-
ing, comprising:
a camera unit for recording an image of a selected
object, and having at least one memory unit for
storing an image recorded by said camera unit;
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6 IRONWORKS PATENTS LLC v. SAMSUNG ELECS. CO., LTD.
means, coupled to said camera unit, for processing
an image recorded by said camera unit, and
means for transmitting an image processed by said
processing means to another location using a radio
frequency channel;
wherein at least a portion of said camera unit is in-
tegrated in one of said housing of said notebook
computer and a circuit card.
(emphasis added). Claim 73 recites:
73. A portable cellular mobile phone comprising:
a built in camera unit for obtaining image infor-
mation;
a user interface for enabling a user to input signals
to operate the camera unit;
a display for presenting image information ob-
tained by the camera unit;
a microprocessor adapted to control the operations
of the camera unit in response to input signals from
the user interface, and to process image infor-
mation received by the camera unit; and
means, coupled to said microprocessor, for trans-
mitting image information processed by said micro-
processor to another location using a radio
frequency channel;
and wherein the camera unit comprises:
optics for obtaining image information;
an image sensor for obtaining image information;
and
means for processing and for storing at least a por-
tion of the image information obtained by the cam-
era unit for later recall and processing.
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IRONWORKS PATENTS LLC v. SAMSUNG ELECS. CO., LTD. 7
(emphasis added).
We hold that the proper construction of “camera unit”
requires that the camera unit include a “camera, optics,
and an image processing unit.” Each of the asserted inde-
pendent claims recites a camera unit, but each describes
the camera unit differently. For example, claim 1 describes
that a camera unit comprises a camera, optics, means for
processing and for storing, at least one memory unit, and
an output. Claim 36 describes a camera unit as “having at
least one memory unit.” And claim 73 describes that the
camera unit comprises optics, an image sensor, and means
for processing and storing. Because the claims recite dif-
fering components of a camera unit, we turn to the specifi-
cation for context.
The specification confirms that a “camera unit” is a
camera, optics, and an image processing unit. The specifi-
cation consistently refers to camera unit 14 which includes
camera arrangement 14o (comprising camera 14a and op-
tics 14b) and image processing unit 14c (which comprises
microprocessor 23 and memory units 24). See, e.g., ’078 pa-
tent at 3:14–18, 3:22–26, 5:23–25. For example, the speci-
fication describes “[c]amera unit 14, which is represented
in the form of a block diagram in FIG. 5, consists of camera
arrangement 14[o] which comprises camera 14a provided
with suitable optics 14b, and image processing unit 14c
connected to the camera arrangement.” ’078 patent at
3:14–18. That is consistent with the specification’s other
teachings that camera unit 14 is comprised of camera 14a,
optics 14b, and image processing unit 14c. ’078 patent at
4:25–29, 3:22–26. And throughout the specification, the
camera unit and its components are identified using a
numbering convention that associates those components
with the number 14. The specification refers to “camera
unit 14” and its components as “camera 14a,” “optics 14b,”
and “image processing unit 14c.”
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8 IRONWORKS PATENTS LLC v. SAMSUNG ELECS. CO., LTD.
Samsung argues that the district court correctly held
that the camera unit also requires a battery and an inter-
face. This argument is premised upon a single sentence in
the specification that states, “the structure of both camera
card 15 and camera unit 14 conforms to the block diagram
shown in Fig. 5.” According to Samsung, everything in Fig-
ure 5 must therefore be included in the construction of cam-
era unit. We do not agree. Figure 5 uses the same
numbering convention as the rest of the specification, sug-
gesting camera unit 14 is comprised of elements numbered
as 14 (i.e., camera arrangement 14o, which comprises cam-
era 14a and optics 14b, and image processing unit 14c). See
’078 patent at 4:25–29. Other elements in Figure 5 are
numbered differently, such as battery 21 and interface 22,
suggesting they are not part of the camera unit 14. See
id.
In fact, the description concerning Figure 5 explains that
“camera card 15” (as opposed to “camera unit 14”) includes
battery 21 and interface 22.
Id. at 4:25–29. On the other
hand, a camera unit as expressly defined in the specifica-
tion includes a camera, optics, and an image processing
unit.
Id. at 3:14–18.
The specification demonstrates that the battery and in-
terface are not necessary components of the camera unit
itself. It describes two separate embodiments involving the
camera unit: one in which the described camera unit is
fixed on an insertable camera card separate from the per-
sonal communication device, and another where the cam-
era unit is integrated with the device.
In the first embodiment, “the camera unit (14) is fitted
on a PCMCIA card (15) which can be connected to the
PCMCIA card slot (16) of the device.” ’078 patent at Ab-
stract; see also
id. at 3:22–29, 4:25–29. The PCMCIA card
is an insertable, portable card that is connectable and de-
tachable from the mobile device itself. See
id. at 4:2–8. The
specification describes that, in this embodiment, “[b]attery
21 is mainly used to ensure that images are maintained in
the volatile memory units if the PCMCIA card is detached
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IRONWORKS PATENTS LLC v. SAMSUNG ELECS. CO., LTD. 9
from the card slot.” ’078 patent at 4:43–45. In that embod-
iment, the battery is a necessary component of the
PCMCIA card on which the camera unit is fitted because it
is necessary to ensure that images are not lost when the
camera card is detached from the personal communication
device. That embodiment further explains that “image in-
formation [from the camera card] is transmitted to proces-
sor 4 of the mobile organizer along PCMCIA interface 22 or
a corresponding interface.”
Id. at 4:59–61. It is the inter-
face which enables communication of information on the
card to the mobile device. However, the fact that the inter-
face may be necessary for operation of the card does not
necessitate that it be part of the construction for the cam-
era unit.
In the second embodiment, the camera unit is “placed
in the housing” or “integrated” with the device. ’078 patent
at Abstract; 3:6–21; 4:48–51. In this embodiment, because
the camera unit is integrated in the housing and not re-
movable, there is not the same technical need for the bat-
tery or the interface. The specification makes clear that
the battery is not a required component of such a camera
unit, which is integrated in the housing that includes its
own power source. The specification does, however, allow
for the option of a battery in this embodiment: “[b]attery
21 can be also used for the same purpose [i.e., to ensure
that images are maintained in the volatile memory units]
in camera unit 14.” ’078 patent at 4:46–47 (emphasis
added). Likewise, this second embodiment with a perma-
nently installed, non-portable camera unit does not need a
PCMCIA interface. The camera unit is directly integrated
into the mobile device. See
id. at 3:12–13 (“[c]amera unit
14 is connected via input/output controller 5 to data pro-
cessing unit 2”).
The camera unit 14 as consistently defined throughout
the specification consists of a camera, optics, and an image
processing unit. Given the consistent usage in the specifi-
cation and the technical differences between the two
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10 IRONWORKS PATENTS LLC v. SAMSUNG ELECS. CO., LTD.
embodiments disclosed, camera unit should not be con-
strued so as to require a battery and interface. Because the
district court erred in its construction of the term “camera
unit,” and that construction was the basis for the parties’
stipulation of noninfringement of the ’078 patent, we va-
cate and remand the district court’s judgment of nonin-
fringement of the asserted claims of the ’078 patent.
II. THE ’239 PATENT
Ironworks asserted infringement of claims 4, 10, 18,
and 27 of the ’239 patent. The district court issued a claim
construction order construing various terms of the ’239 pa-
tent. The parties stipulated to entry of judgment of nonin-
fringement and invalidity of the asserted claims of the ’239
patent based on the district court’s claim construction.
The ’239 patent relates to a method that allows a user
to make phone calls using voice commands by selecting, in
response to a spoken voice command, a telephone number
stored with an “identifier” in audio form, such as a person’s
name. See, e.g., ’239 patent at 1:5–15, 4:19–37. Ironworks
asserted infringement of claims 4, 10, 18, and 27 of the ’239
patent. Claims 4 and 10 are the only asserted independent
claims. Claim 4 recites:
4. A voice controlled device comprising:
means for storing the telephone numbers to be se-
lected,
means for storing at least one identifier for each
telephone number to be selected,
means for receiving an identifier given in a voice
form,
means for interpreting the received voice com-
mands,
means for selecting a telephone number in re-
sponse to a voice command,
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IRONWORKS PATENTS LLC v. SAMSUNG ELECS. CO., LTD. 11
wherein the identifier comprises a plurality of sub-
identifiers, and the voice controlled device com-
prises means for storing the sub-identifiers, and
means for selecting a telephone number in re-
sponse to a voice command comprising at least two
of the plurality of sub-identifiers including the sub-
identifier.
(emphases added). Claim 10 recites:
10. A voice controlled device comprising:
means for storing telephone numbers to be se-
lected,
means for storing at least one identifier for each
telephone number to be selected,
means for receiving an identifier given in a voice
form,
means for interpreting received voice commands,
means for selecting a telephone number in re-
sponse to a voice command,
wherein the identifier comprises several sub-iden-
tifiers, and the voice controlled device comprises
means for storing the sub-identifiers, and
means for selecting a telephone number in re-
sponse to a voice command comprising a combina-
tion of several sub-identifiers.
(emphases added).
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12 IRONWORKS PATENTS LLC v. SAMSUNG ELECS. CO., LTD.
1. “means for interpreting the received voice commands”
The district court construed the term “means for inter-
preting the received voice commands” 2 as a means-plus-
function term having the function of “interpreting the re-
ceived voice commands” and lacking corresponding struc-
ture in the specification, resulting in the term being
indefinite under § 112. J.A. 56–60, 64. Based on the court’s
holding that the term was indefinite under § 112, the par-
ties stipulated that the asserted claims of the ’239 patent
were invalid. J.A. 3450–51.
Ironworks argues that the district court erred to the
extent that it held that “means for interpreting the re-
ceived voice commands” lacks definite corresponding struc-
ture in the specification. Ironworks argues the ’239 patent
discloses that the voice-control unit, including its subcom-
ponents and associated programming, is the structure that
interprets received voice commands. And Ironworks ar-
gues that the specification expressly discloses an algorithm
for operation of the voice-control unit. We agree. The spec-
ification states that, “voice-control unit 2 comprises advan-
tageously a voice-recognition means 3, a voice pattern
memory 4, a controller unit 5, read-only memory 6, random
access memory 7, speech synthesizer 8 and a interface 9.”
’239 patent at 3:26–30. It further discloses structure for
the voice-control unit by describing the algorithm per-
formed by the voice-control unit and its components.
Id. at
5:9–25. The district court recognized that “column 5:9–25
could set forth a sufficiently specific step-by-step procedure
for the operation of the voice-control unit.” J.A. 58. The
specification includes sufficient structure for the voice-
2 Claims 4 and 10 of the ’239 patent recite a “means
for interpreting the received voice commands” and “means
for interpreting voice commands,” respectively. As used in
this opinion the term “means for interpreting the received
voice commands” refers to both terms.
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IRONWORKS PATENTS LLC v. SAMSUNG ELECS. CO., LTD. 13
control unit of which the voice-recognition means is a com-
ponent. ’239 patent at 3:26–30 (“voice-control unit 2 com-
prises advantageously a voice-recognition means 3”
(emphasis added)).
Samsung recognizes that the “voice recognition means
3” is a component of the larger “voice-control unit 2” and
admits column 5:9–25 could set forth a sufficiently specific
algorithm for the operation of the voice-control unit. But
Samsung argues the district court correctly concluded that
Ironworks’ statement in its claim construction reply brief
that, “the proposed structure is not limited to the ‘voice-
control unit’” forecloses reliance on an algorithm associated
with the voice-control unit 2. J.A. 58 (citing J.A. 3437).
Samsung also argues that the district court’s construction
of the separate “means for selecting” terms relies on por-
tions of the specification that overlap with Ironworks’ pro-
posed construction here, and the specification does not
support a construction in which the same structures sup-
port both functions.
Not only did Ironworks not disclaim an argument that
column 5 provides an algorithm based on the relationship
between voice recognition means 3 and voice-control unit
2, the fact that the algorithm overlaps with the undisputed
algorithm associated with other terms is not unexpected.
Indeed, an algorithm can support more than one function.
See Oral Arg. at 13:37–50 (Judge: Isn’t it the case in elec-
trical systems that the same software can perform multiple
functions? Doesn’t it happen . . . all the time? A: Yes.
Judge: Can’t the same algorithm achieve two different
parts? A: Yes. Judge: Isn’t that a pretty regular occur-
rence? A: Yes, Your Honor.). Because the algorithm is suf-
ficiently disclosed in the specification itself, and voice
recognition means 3 is included within the voice-control
unit 2, we hold the appropriate structure is “voice-control
unit implementing the algorithm at Figure 3, col. 5:9–25,
or col. 6:1–57.”
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14 IRONWORKS PATENTS LLC v. SAMSUNG ELECS. CO., LTD.
Because we conclude that the district court erred in
holding that the term “means for interpreting the received
voice commands” was indefinite, we vacate and remand the
judgment of invalidity of the ’239 patent.
2. “means for storing the sub-identifiers”
The district court construed the term “means for stor-
ing sub-identifiers” as having the function of “storing sub-
identifiers” and the structure of “voice pattern and voice-
equivalent memory, and the control circuitry and program-
ming for storing sub-identifiers in memory executing the
algorithms disclosed in columns 4:19–54 [of the ’239 pa-
tent’s specification].” J.A. 64. Under that construction, the
parties stipulated to noninfringement of the claims of the
’239 patent. J.A. 3451.
Ironworks argues that the district court erred in its re-
quirement that the specification disclose an algorithm.
Ironworks contends that this term falls within the excep-
tion set forth in In re Katz Interactive Call Processing Pa-
tent Litigation that a specification need not disclose
algorithmic structure for a computer-implemented means-
plus-function claim when the function “can be achieved by
any general purpose computer without special program-
ming.”
639 F.3d 1303, 1316 (Fed. Cir. 2011).
We do not agree. Katz “identified a narrow exception
to the requirement that an algorithm must be disclosed for
a general-purpose computer to satisfy the disclosure re-
quirement.” Ergo Licensing, LLC v. CareFusion 303, Inc.,
673 F.3d 1361, 1364–65 (Fed. Cir. 2012). “It is only in the
rare circumstances where any general-purpose computer
without any special programming can perform the function
that an algorithm need not be disclosed.” Id.; see also EON
Corp. IP Holdings LLC v. AT&T Mobility LLC,
785 F.3d
616, 621–22 (Fed. Cir. 2015) (“a microprocessor can serve
as structure for a computer-implemented function only
where the claimed function is ‘coextensive’ with a micro-
processor itself”). The function of storing sub-identifiers
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IRONWORKS PATENTS LLC v. SAMSUNG ELECS. CO., LTD. 15
“requires more than merely plugging in a general-purpose
computer.” Ergo
Licensing, 673 F.3d at 1365. The specifi-
cation describes that storing the identifier (which is com-
prised of a plurality of sub-identifiers) requires that the
voice-control unit be set into a particular function mode,
then perform several intervening steps, after which each
sub-identifier is stored into the voice-equivalent memory.
’239 patent at Figure 2, 4:19–54. We see no error in the
district court’s construction and likewise agree that the
Katz exception does not apply. Accordingly, we affirm the
district court’s judgment of noninfringement of the ’239 pa-
tent’s claims.
Ironworks contends that “all equivalents thereof”
should be added to the district court’s constructions of
“means for storing the sub-identifiers” and “means for se-
lecting a telephone number . . . .” Samsung appears to
agree that the district court’s constructions include “equiv-
alents.”
CONCLUSION
For the foregoing reasons, we vacate and remand the
judgment of noninfringement of the claims of the ’078 pa-
tent because it depends on the district court’s erroneous
construction of the term “camera unit.” We further vacate
and remand the judgment of invalidity of the claims of the
’239 patent because the district court erroneously con-
strued “means for interpreting the received voice com-
mands” as not having a definite structure. We affirm the
judgment of noninfringement of the claims of the ’239 pa-
tent because the district court correctly construed the term
“means for storing the sub-identifiers.” We have consid-
ered the appellants remaining arguments and conclude
they are without merit.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
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16 IRONWORKS PATENTS LLC v. SAMSUNG ELECS. CO., LTD.
COSTS
The parties shall bear their own costs.
