Cellcast Technologies, LLC v. United States ( 2020 )

In the United States Court of Federal Claims
No. 15-1307
(Filed: 29 October 2020 *)
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CELLCAST TECHNOLOGIES, *
LLC AND ENVISIONIT, LLC, *
*
Plaintiffs, *
*
v. *
* Patent infringement; claim construction;
THE UNITED STATES, * Markman hearing; plain and ordinary
* meaning; means-plus-function; 35 U.S.C
§ 112(f).
Defendant, *
*
and *
*
INTERNATIONAL BUSINESS *
MACHINES CORP., *
*
Third-party defendant. *
*
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Peter J. Chassman, with whom was Michael Forbes, both of Reed Smith LLP, of
Houston, TX, for plaintiffs.
Nicholas J. Kim, Trial Attorney, Commercial Litigation Branch, Civil Division,
Department of Justice, with whom were Chad A. Readler, Acting Assistant Attorney General,
and Gary L. Hausken, Director, all of Washington, DC, for defendant.
Mark Joseph Abate, with whom were Dietrich Brown, Calvin E. Wingfield Jr., Shaun de
Lacy, and Alexandra D. Valenti, all of Goodwin Procter, LLP, of New York, NY, for third-party
defendant.
CLAIM CONSTRUCTION OPINION AND ORDER
HOLTE, Judge.
*This opinion was originally filed under seal on 26 October 2020 pursuant to the protective order in this case. The
Court provided the parties 3 days to submit proposed redactions, if any, before the opinion was released for
publication. Neither party proposed redactions. This opinion is now reissued for publication in its original form.
EnvisionIT, LLC (“EnvisionIT”) and CellCast Technologies, LLC (“CellCast”),
collectively the “plaintiffs,” accuse the government of infringing five United States patents. The
government noticed the licensed developers of the technology, International Business Machines
Corporation (“IBM”), who join the government in defending the claims of patent infringement.
The parties filed claim construction briefs seeking to construe the meaning of various disputed
claim terms. A Markman hearing on claim construction was held. The parties resolved the
construction of certain terms amongst themselves, leaving six terms requiring construction by the
Court. Defendants argued invalidity of four claims for indefiniteness under 35 U.S.C. § 112(f).
This Claim Construction Opinion and Order construes the disputed terms and determines the
disputed terms under 35 U.S.C. § 112(f) are means-plus-function terms.
I. Background
A. Factual History
EnvisionIT is the assignee of five United States patents: 7,693,938 (“the '938 patent”);
8,103,719 (“the '719 patent” or “'719 Patent”); 8,438,221 (“the '221 patent”); 8,438,212 (“the
'212 patent”); and 9,136,954 (“the '954 patent”) (collectively, “the asserted patents”). Pls.’
Compl. ¶ 18. CellCast holds an exclusive license to each of the asserted patents. Id. ¶ 19.
Plaintiffs allege various government agencies infringe the asserted patents, including the Federal
Emergency Management Agency (“FEMA”), the United States Department of Homeland
Security (“DHS”), and the National Oceanic and Atmospheric Administration (“NOAA”). Id. ¶
5.
The Integrated Public Alert Warning System (“IPAWS”) is among the technology
alleged to infringe the asserted patents. Id. ¶ 20. According to the government, IBM developed
IPAWS under a government contract. See Gov.’s Unopp. Mot. To Notice Third Party at 2, ECF
No. 10. The government noticed IBM pursuant to Rule 14(b) of the Rules of the United States
Court of Federal Claims (“RCFC”) and IBM entered the case. See generally IBM’s Ans., ECF
No. 21. The government and IBM are hereinafter collectively referred to as “defendants.”
B. Procedural History
On 11 July 2016, the parties submitted a Joint Preliminary Status Report setting forth
certain rules and dates for the management of this patent case. See JPSR, ECF No. 28. A
scheduling conference was held 19 July 2016, and this Court issued a scheduling order on 20
July 2016. See Order, ECF No. 33. The 20 July 2016 scheduling order set the date for
submissions related to claim construction. See id. On 10 March 2017, the parties submitted a
first Joint Claim Construction Statement, ECF No. 48 (“First Joint Stmt.”). On 12 April 2017,
plaintiffs filed their Corrected Claim Construction Brief, ECF No. 53 (“Pls.’ Op. Cl. Constr.
Br.”), defendants filed their Opening Claim Construction Brief, ECF No. 54 (“Defs.’ Op. Cl.
Constr. Br.”), and the parties further filed an Updated Joint Claim Construction Statement, ECF
No. 55 (“Upd. Joint Stmt.”). 1
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Plaintiffs submitted two opening claim construction briefs on 12 April 2017: a first brief (ECF No. 52) and a
corrected brief (ECF No. 53). As noted in the Updated Joint Claim Construction Statement, the corrected brief
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On 24 May 2017, plaintiffs filed their Responsive Claim Construction Brief, ECF No. 62
(“Pls.’ Resp. Cl. Constr. Br.”) and defendants filed their Responsive Claim Construction Brief,
ECF No. 63 (“Defs.’ Resp. Cl. Constr. Br.”). A Markman hearing on claim construction was
held 13 September 2017. See Scheduling Order, ECF No. 71. On 1 June 2018, plaintiffs filed a
notice removing a single claim term from the Court’s pending construction based upon the
withdrawal of certain infringement contentions. See Pls.’ Notice of Withdrawal of Claim Term
for Construction, ECF No. 114 (“Pls.’ Notice”). Throughout the course of claim construction
proceedings, this Court further resolved a number of discovery-related disputes. See, e.g., Order,
ECF No. 58 (granting in part and denying in part plaintiffs’ motion to compel); Order, ECF No.
105 (denying plaintiffs’ motion to quash subpoenas); Order, ECF No. 131 (granting in part and
denying in part plaintiffs’ motion to compel); and Order, ECF No. 136 (granting defendants’
motion to compel and denying plaintiffs’ motion to quash).
This case was transferred to the undersigned Judge on 29 July 2019 pursuant to RCFC
40.1(c). See Order, ECF No. 149. On 28 August 2019, the Court held a status conference with
the parties discussing the timing of the outstanding claim construction order and two pending,
fully briefed discovery disputes. See generally Tr., ECF No. 153. On 30 October 2019, the
Court resolved the two discovery-related disputes, denying plaintiffs’ motion to strike and
granting defendants’ motion to reopen limited fact discovery. See Opinion and Order, ECF No.
155. Subsequent limited discovery pursuant to the Court’s 30 October 2019 Order concluded on
or about 6 March 2020. See Joint Proposal Regarding Additional Disc. Regarding Third-Party
Multi-Technical Systems, Inc. and Regarding NOAA Prior Art in Defs.’ Suppl. Invalidity
Contentions, ECF No. 156. The Court now resolves the parties claim construction dispute, as the
issue is fully briefed and a Markman hearing was previously held before case was transferred.
C. Technology Overview
The asserted patents fall into two patent families: the '938 family, which includes the
'938, '719, and '212 patents; and the '221 family, which includes the '221 and '954 patents. The
parties agree the '938 patent serves as a representative example of the technology associated with
the asserted patents. See Pls.’ Op. Cl. Constr. Br. at 4; Defs.’ Op. Cl. Constr. Br. 2–3. The
asserted patents generally relate to technology for authorizing and sending a broadcast message
to devices in a specified target area. See U.S. Pat. No. 7,693,938 to Weiser et. al, at Abstract.
For example, delivery of a message to the public during emergency events or otherwise
dangerous situations may be desired. Id. at col. 1:27–30. According to the '938 patent, the
message is only delivered to devices located within a specified geographic target area. Id. at col.
4:34-40. An admission control prevents unauthorized users from broadcasting messages. Id. at
col. 5:4–11.
Prior to development of the technology associated with the asserted patents,
telecommunication signaling networks were often comprised of a series of cells organized into a
“hierarchical network or cell structure system.” Id. at col. 32:42–45. The asserted patents
(ECF No. 53) updated defendants’ proposed change to the term “broadcast.” The Court thus treats plaintiffs second
submission, ECF No. 53, as the operative document in deciding claim construction.
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discuss two types of technology for delivering the messages via cellular telephone networks:
Short Message Service (“SMS”) and cell broadcast technology. See id.
SMS messaging requires the utilization of network components to “provide an SMS
message call set up for each individual SMS message recipient. In order to send a single SMS
message, all SMS message call processing procedures have to be repeated for each and every
message, one by one, for all intended recipients.” U.S. Prov. Pat. Appl. No. 60/544,739, to
Weiser et. al ¶ 5 (“'739 Appl.”). A telecommunication signaling network is used to deliver the
SMS message by querying a database known as the Home Location Register (“HLR”) to
determine “whether the intended SMS message recipient is currently attached to the network and
if so, to which network switch the user is attached.” Id. ¶ 6. When the recipient is attached to a
switch within the telecommunication signaling network, the particular network switch is signaled
“to set up the SMS message call.” Id. ¶ 7. Recipients located within a particular cell area are
paged. Id. As a result, “[e]ach queried cell requires paging and calling capacity resources for
each mobile unit which is attempted to be paged.” Id. SMS messaging therefore requires each
message to be generated and transmitted “to a particular telecommunication user or unit.” Id. ¶
10. When utilizing this technology for emergency messaging, an SMS message must be “created
and sent to each mobile unit even though the particular user phone is not located in the particular
area in which the emergency is located.” '739 Appl. ¶ 11. In other words, “SMS service is not
capable of position-specific messaging,” whereas the patented technology is a system “providing
a broadcast message to a broadcast target area.” Id. ¶ 11 and ¶ 22.
Alternatively, cell broadcast technology utilizes the broadcast channels of
telecommunication networks. '938 Patent at col. 32:27–32. The broadcast messages are sent “on
a per-cell basis over a location broadcast channel.” Id. at col. 31:36–44. A signal is sent to the
broadcast center and then transmitted to the station controller. See id. The message contains
crucial information including identification of “the cells in which the broadcast is to be made,
along with some other data such as how often and when the message is to be broadcast.” Id. As
cell broadcast technology does not require two-way communication with any target devices, it
therefore “does not require functionality or network resources from the mobile services provider
or from any portion of the mobile service provider’s mobility management resources.” Id. at col.
4:15–20; see also Pls.’ Op. Cl. Constr. Br. at 7. A mobile device “configured to receive location-
based broadcast messages, while in the idle mode and located in the predefined cell, receives the
broadcast message and displays the message on its screen.” '938 Patent at col. 4:10–14. This
results in cell broadcast technology capable of “the simultaneous sending of public service
messages to millions of subscribers with less impact on the supporting networks than a single
SMS-message.” Id. at col. 4:21–25.
The asserted patents discuss the use of cell broadcast technology for sending emergency
and public service messages to the general public. Id. at col. 4:26–33. “A public service
message location broadcasting system (PLBS) receives emergency or public service messaging
and identification of the target broadcast area from public service or government entities.” Id.
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Figure 1 of the '938 patent, reproduced below, provides a representative illustration of the
PLBS: 2
2
The '938 patent uses two different acronyms interchangeably to define the Public Service Location Broadcast
Service Bureau: “PSMBs” and “PLBS.” '938 Patent at col. 5:22–23. Throughout this Opinion and Order, the Court
refers to the Public Service Location Broadcast Service Bureau as the “PLBS.”
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'938 Patent at Fig. 1. Using a web interface to access and control the PLBS, an authorized
“agent” sends a message to target devices within a target area using cell broadcast technology.
See id. at col. 5:4–65.
D. Overview of Claims
Plaintiffs assert infringement of seven independent claims: claims 1 and 42 of the '938
patent; claims 14 and 23 of the '719 patent; claim 19 of the '221 patent; claim 17 of the '954
patent; and claim 13 of the '212 patent. Of these seven claims, claim 1 of the '938 patent is a
system claim; the remaining six independent claims are all method claims. While plaintiffs also
assert infringement of various dependent claims, all disputed claim terms appear in the
independent claims. Claims 1 and 42 of the '938 patent, reproduced below, provide a
representative example of the various disputed claim terms used in each of a system and method
claim.
Claim 1 of the '938 patent is provided below, with disputed claim terms indicated in
italics: 3
1. A message broadcasting system providing a broadcast message to a broadcast
target area, the system comprising:
a broadcast request interface configured for receiving a broadcast message
record having a broadcast message, a defined broadcast target area, and a
broadcast message originator identifier;
a broadcast admission control module configured for receiving the
broadcast message record, validating the broadcast message record as a
function one or more of the broadcast message originator identifier, the
broadcast target area, and a broadcast message transmission network
parameter associated with a broadcast transmission network adapted for
broadcasting the message to at least a portion of the broadcast target area,
said broadcast admission control module configured for generating a
validated broadcast message record as a function of the validating; and
a broadcast message distributor module configured for receiving the
validated broadcast message record and transmitting the broadcast message
and the broadcast target area, or a part thereof, to an output interface
configured for distributing the broadcast message to at least a portion of the
broadcast target area.
Claim 42 of the '938 patent:
3
As the term “broadcast” does not appear in isolation throughout the claims, but rather only in conjunction with
other terms, the Court does not isolate the term “broadcast” as used in the claims for illustrative purposes.
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42. A method of admission control for authorizing a submission of a broadcast
message to a broadcast target area, comprising:
receiving a broadcast message record including the broadcast message and
the broadcast target area for the broadcast message;
validating the authority of a broadcast message originator originating the
broadcast message record as a function of a broadcast message originator
parameter;
identifying a broadcast transmission network providing broadcast message
transmission to broadcast message receiving devices located within the
broadcast target area;
validating the broadcast transmission network against a broadcast
transmission network parameter; and
forwarding the broadcast message record to an output interface associated
with the broadcast transmission network for transmission to the broadcast
message receiving devices within the broadcast target area.
II. Construction of Disputed Claim Terms
A. Applicable Law
“[T]he interpretation and construction of patents claims, which define the scope of the
patentee’s rights under the patent, is a matter of law exclusively for the court.” Markman v.
Westview Instruments, Inc., 52 F.3d 967, 970–71 (Fed. Cir. 1995). “To construe a claim term,
the trial court must determine the meaning of any disputed words from the perspective of one of
ordinary skill in the pertinent art at the time of filing.” Chamberlain Grp. v. Lear Corp., 516
F.3d 1331, 1335 (Fed. Cir. 2008). “[T]he words of a claim ‘are generally given their ordinary
and customary meaning,’ . . . [and] the ordinary and customary meaning of a claim term 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.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (quoting
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “There are only two
exceptions to this general rule: (1) when a patentee sets out a definition and acts as his own
lexicographer, or (2) when the patentee disavows the full scope of a claim term either in the
specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362,
1365 (Fed. Cir. 2012) (citing Vitronics, 90 F.3d at 1580).
The analysis of any disputed claim terms begins with the intrinsic evidence of record, as
“intrinsic evidence is the most significant source of the legally operative meaning of disputed
claim language.” Vitronics, 90 F.3d at 1582. Additional claims, whether asserted or not, “can
also be valuable sources of enlightenment as to the meaning of a claim term.” Phillips, 415 F.3d
at 1314. This includes consistent use throughout the patent, differences amongst particular
terms, and various limitations added throughout the dependent claims. Id. The claims do not
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stand on their own; “they are part of ‘a fully integrated written instrument,’ consisting principally
of a specification that concludes with the claims.” Id. (quoting Markman, 52 F.3d at 978). The
claims are therefore “read in view of the specification.” Markman, 52 F.3d at 979. It is
important that limitations from preferred embodiments are not read “into the claims absent a
clear indication in the intrinsic record that the patentee intended the claims to be so limited.”
Liebel-Flarsheim v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).
The prosecution history may serve as an additional source of intrinsic evidence.
Markman, 52 F.3d at 980. The prosecution history “consists of the complete record of the
proceedings before the [United States Patent and Trademark Office (“USPTO”)] and includes the
prior art cited during the examination of the patent.” Phillips, 415 F.3d at 1317. The
prosecution history “represents an ongoing negotiation between the USPTO and the applicant,
rather than the final product of that negotiation.” Id. This results in the prosecution history often
“lack[ing] the clarity of the specification,” making it “less useful for claim construction
purposes.” Id. After considering all intrinsic evidence of record, the court has discretion to
consider sources of extrinsic evidence, such as dictionaries, treatises, and expert and inventor
testimony, if they “deem[] it helpful in determining ‘the true meaning of language used in the
patent claims.’” Id. at 1317–18 (quoting Markman, 52 F.3d at 980). While sometimes helpful,
extrinsic evidence is “less significant than the intrinsic record in determining the legally
operative meaning of claim language.” Id. at 1317 (quoting C.R. Bard, Inc. v. U.S. Surgical
Corp., 388 F.3d 858, 862 (Fed Cir. 2004) (internal quotation marks and citations omitted)).
B. Terms Resolved by the Parties
In the parties’ first Joint Claim Construction Statement, eight claim terms were disputed.
See First Joint Stmt. Of these eight claim terms, the parties were able to reach an agreement
amongst themselves for the construction of one grouping of claim terms. The patents use three
phrases effectively interchangeably: “broadcast message record,” “broadcast request,” and
“broadcast message request.” Plaintiffs and defendants agree these three phrases “should all be
given the same meaning.” See Tr. at 95:7–11, ECF No. 75; see also First Joint Stmt. During the
Markman hearing, the parties agreed to the following construction for each of “broadcast
message record,” “broadcast request,” and “broadcast message request:” a group of related data
items treated as one unit that includes a broadcast message and associated information. Tr. at
106:20–107:19, ECF No. 75.
The parties further eliminated one additional claim term from the Court’s consideration.
On 1 June 2018, plaintiffs withdrew their infringement contentions for claim 20 of the '212
patent, thereby eliminating the phrase “Common Alerting Protocol,” or CAP, from any of the
asserted claims. See Pls.’ Notice. As the phrase is no longer present in any of the asserted
claims, the Court need not construe this claim term. See O2 Micro Int’l, 521 F.3d 1351, 1360
(Fed. Cir. 2008) (“The purpose of claim construction is to ‘determin[e] the meaning and scope of
the patent claims asserted to be infringed.’”) (quoting Markman, 52 F.3d at 976).
C. Disputed Claim Term #1: “Broadcast”
Plaintiffs’ Proposed Construction Defendants’ Proposed Construction
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transmission to all recipients within a target wide dissemination over a communications
area without targeting a specific recipient network including, but not limited to, cellular
carriers, digital private radio systems, private
radio systems, internet, wireline
telecommunications, satellite, and CATV
systems
The term “broadcast” appears numerous times throughout the asserted claims. For
example, in claim 1 of the '938 patent alone, the term “broadcast” appears 23 times. See '938
Patent at col. 39:21–44. The Court notes plaintiffs’ preference for the exclusion of construing
the term “broadcast” in isolation, arguing instead “that construing ‘broadcast’ in the context of
specific, key claim terms is more practical than an overarching construction of ‘broadcast’ for all
contexts with all terms.” Pls.’ Op. Cl. Constr. Br. at 10. The Court agrees with plaintiffs that,
because the term “broadcast” does not appear by itself in any of the claims, construction of the
term in isolation does not aid in interpreting the claims to the same extent as interpreting the term
as it is used in the context of other qualifying terms throughout the claims. Defendants,
however, present a proposed construction of the term “broadcast” in isolation that is unamenable
to plaintiffs. Id. at 13 (“Defendants proposed construction is erroneous . . . ”). “When 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, 521 F.3d at 1362. The Court must therefore construe the term
“broadcast” in isolation. To the extent the term “broadcast” requires construction to resolve any
dispute between the parties, the Court’s construction of broadcast carries through to all
subsequent claim terms incorporating “broadcast” as part of a larger term to ensure consistency
throughout all claim terms.
1. Parties Arguments
The parties dispute the breadth of dissemination covered by the term “broadcast.”
Plaintiffs argue dissemination is tied to the intended target area of dispersion, independent of
individual recipient identities. Pls.’ Op. Cl. Constr. Br. at 10. This is defined in the asserted
patents as a geographic target area: “a key aspect of the claimed inventions is that they solve the
need for geographically-targeted emergency alert messages.” Id. Plaintiffs also point to specific
passages in the patent specification disparaging the use of SMS messaging. Id. at 12. For
example, SMS-based systems face certain technical limitations resulting in delayed delivery of
messages. '938 Patent at col. 1:42–46 (“SMS systems and technology have significant technical
limitations and experience with such systems has been disappointing due to significant delays in
the delivery of SMS messages and negative impacts to the networks due to congestion.”).
Additionally, SMS-based systems generally do not send messages to a geographically defined
target area, but instead to individually selected devices. Id. at col. 1:65–2:2 (“Generally, existing
systems are not location-based and as such do not send messages to intended recipients located
within a defined geographic location and therefore do not provide an attractive solution to
location-based customer notification and other location-based broadcast services.”).
Defendants argue no target area should be attached to the meaning of “broadcast,” and
instead the breadth of dissemination should be tied to the various networks used. See Defs.’ Op.
Cl. Constr. Br. at 12. According to defendants, the term broadcast should be construed “with
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how the specifications of the asserted patents states broadcast messages are transmitted
according to the disclosed inventions.” Id. To support this position, defendants point to a single
line in the specification providing examples of how the message is transmitted: “[i]n most cases,
the message is transmitted to every known operator offering coverage of the area and may
include mobile carriers, digital private radio systems operators, private radio system operators,
internet service providers, wireline telecommunication service providers, satellite service
providers, CATV operators, etc.” Id. (quoting '938 Patent at col. 14:49–54). Defendants further
argue plaintiffs’ proposed construction seeks to limit the claims to the “purported purpose of the
claimed systems and methods,” which is using “broadcast technology to achieve efficient
geographically targeted emergency alert message delivery.” Defs.’ Resp. Cl. Constr. Br. at 6. .
Defendants acknowledge plaintiffs’ criticism of SMS-based systems in the patents,
arguing these statements amount to nothing more than “the kind of general statements about the
background of the invention that the Federal Circuit repeatedly has found to be insufficient to
narrow the common meaning of a claim term.” Defs. Op. Cl. Constr. Br. at 13. To support this
proposition, defendants cite to Ventana Med. Sys., Inc. v. Biogenx Labs, Inc., 473 F.3d 1173
(Fed. Cir. 2006), which “decline[d] to interpret [] general statements by the inventors to effect a
complete surrender” of claim scope. Defendants follow this argument by contending plaintiffs’
proposed construction “would render superfluous many other recited limitations of the asserted
claims.” Defs.’ Resp. Cl. Constr. Br. at 6.
The parties also offer extrinsic evidence in the form of competing dictionary definitions
in a final attempt to construe “broadcast.” Plaintiffs point to the 2002 Microsoft Computer
Dictionary, providing the following definition: “a broadcast message is one distributed to all
stations.” Pls.’ Op. Cl. Constr. Br. at 13. Defendants point to Newton’s Telecom Dictionary,
providing the following definition for “broadcast:” “[t]o send information to two or more
receiving devices simultaneously.” Defs.’ Op. Cl. Constr. Br. at 12.
2. Plain and Ordinary Meaning
The Court begins by giving claim terms “their ordinary and customary meaning” in view
of the intrinsic record. Phillips, 415 F.3d at 1312–13. The specification of the '938 patent
consistently refers to the geographic boundaries of a “broadcast.” For example, the message
location broadcasting system provides the “development, transmission, delivery and display of a
message that is an official government-to-citizen information broadcast to all compatible
telecommunication receiving devices in, or entering, a predefined at-risk geographic location or
area.” '938 Patent at col. 4:34–40 (emphasis added). “The . . . system uses cell-broadcast SMS
(C-BSMS) technology to provide a message or alert to a single cell geographic location . . . .”
Id. at col. 4:58–60 (emphasis added). See also '938 Patent at col. 4:8–14 (emphasis added) (“A
mobile unit . . . located in the predefined cell, receives the broadcast message and displays the
message on its screen.”). As opposed to SMS-based systems requiring the identity of target
devices, cell-broadcast technology does not require any “pre-event recipient action.” Id. at col.
4:50–57. The messages are instead delivered to a geographically defined target area. The
specification of the '938 patent therefore supports plaintiffs’ proposed construction of
“broadcast” incorporating a geographic component.
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In place of plaintiffs proposed geographic component, defendants advocate transmission-
based limitations recited in the specification be incorporated into the construction of “broadcast.”
See Defs.’ Op. Cl. Constr. Br. at 12. While the specification serves as a useful tool in
understanding specific claim limitations, the Court is “cautioned against limiting the claimed
invention to preferred embodiments or specific examples in the specification.” Williamson v.
Citrix Online, LLC, 792 F.3d 1339, 1346–47 (Fed. Cir. 2015) (quoting Teleflex, Inc. v. Ficosa N.
Am. Corp., 299 F.3d 1313, 1328 (Fed. Cir. 2002)). Defendants’ inclusion of specific examples
from the specification risks improperly narrowing the scope of the term “broadcast.”
After removing the specific examples defendants attempt to incorporate from the
specification, defendants’ proposed construction is left with only “wide dissemination over a
communications network.” Defendants do not provide any basis in the patents for defining the
phrase “wide dissemination.” Phillips, 415 F.3d at 1313 (“Importantly, the person of ordinary
skill in the art is deemed to read the claim term not only in the context of the particular claim in
which the disputed term appears, but in the context of the entire patent, including the
specification.”). As plaintiffs point out, “[i]f a target broadcast area were very large, it is not
clear whether ‘wide dissemination’ would reach the entire target broadcast area, a portion of it,
or none.” Pls. Op. Cl. Constr. Br. at 15. Accordingly, the Court finds no basis to construe the
term “broadcast” according to a vague definition not supported by the specification.
The claims further independently refer to a “broadcast target area.” See '938 Patent at
col. 39:22. According to defendants, it is therefore implied such a “target area” is not a part of
the term broadcast by itself. See Defs.’ Resp. Cl. Constr. Br. at 6. Defendants rely on Phillips
for supporting this proposition. Id. The term in question in Phillips, however, dealt with an
adjective describing the proposed material of construction, finding “the claim in this case refers
to ‘steel baffles,’ which strongly implies that the term ‘baffles’ does not inherently mean objects
made of steel.” Phillips, 415 F.3d at 1314. Here, the role of the terms is reversed. The
modifying term “broadcast” is subject to construction. In Phillips, it was the term being
modified, “baffles,” that was subject to construction: whether or not “baffles” by itself
incorporated the limitation of being manufactured of steal. See id. Thus, in Phillips the Federal
Circuit refused to read the material of construction as a limitation into the term “baffle.” Here,
the specification itself discusses the breadth of dissemination in terms of a geographic target
area, and the usage of the term “broadcast” within the claims themselves reinforces this use.
Using the term “broadcast” to modify the breadth of dissemination as a more narrowly defined
target area of a specific function does not render the phrase “target area” superfluous. For
example, claim 1 of the '938 patent states a “message broadcasting system providing a broadcast
message to a broadcast target area.” '938 Patent at col. 39:21–22. Claim 42 of the '938 patent
similarly states a “method of admission control for authorizing a submission of a broadcast
message to a broadcast target area.” Id. at col. 43:44–45.
Next, the Court evaluates whether plaintiffs attempt to limit the claims to “the purported
purpose of the claimed systems and methods.” Defs.’ Resp. Cl. Constr. Br. at 6. “[I]t is
generally not appropriate ‘to limit claim language to exclude particular devices because they do
not serve a perceived purpose of the invention.’” Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306,
1325 (Fed. Cir. 2008) (quoting E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1370 (Fed.
Cir. 2003)). Yet it is not merely the intended purpose of the invention which provides for the
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breadth of dissemination of the message. The specification provides the necessary foundation
for the breadth of dissemination tied to the term “broadcast,” which is further reinforced by the
usage of the term “broadcast” throughout the claims and in the context of further claim terms.
To the extent any particular devices or technologies are excluded from the construction of
“broadcast” by tying the breadth of dissemination to a target area, such exclusion is a result of
the inherent restrictions of any such devices or technology; not from any particular perceived
purpose of the invention supposedly imported into the definition of the term.
According to the intrinsic record, the plain and ordinary meaning of the term “broadcast”
requires tying the breadth of dissemination to a geographic limitation.
3. Disparagement of Other Technologies in the Specification
The Court next turns to alleged criticism of SMS-based systems in the patents in order to
determine whether plaintiffs proposed “without targeting a specific recipient” limitation should
be included in the construction of the term “broadcast.” “[T]he specification may define claim
terms by implication such that the meaning may be found in or ascertained by a reading of the
patent documents.” In re Abbot Diabetes Care, Inc., 696 F.3d 1142, 1149–50 (Fed. Cir. 2012)
(quoting Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004)).
Relevant considerations in this context include “disparaging remarks with respect to [the prior
art].” Id. Defendants rely on Ventana Med. Sys., Inc. v. Biogenx Labs, Inc., 473 F.3d 1173 (Fed.
Cir. 2006) for the premise that general statements are “insufficient to narrow the common
meaning of a claim term.” Defs.’ Op. Cl. Constr. Br. at 13. Ventana discusses whether claim
scope should be narrowed based upon “general statements by the inventors.” Ventana, 473 F.3d
at 1180–81 (“Moreover, this is not a case in which the inventor’s distinguishing the invention
over the prior art in the specification results in a disavowal of coverage by the inventor of
features in the prior art.”).
Here, the patents first point to general disadvantages of SMS-based prior art systems in
the “BACKGROUND.” See, e.g., '938 Patent at col. 1:36–2:2 (“SMS systems and technology
have significant technical limitations and experience with such systems has been disappointing
due to significant delays in the delivery of SMS messages and negative impacts to the networks
due to congestion.”). The patents then discuss the functionality of cell-broadcast technology in
view of the specific differences when contrasted with SMS-based systems in the “DETAILED
DESCRIPTION.” For example, the '938 patent states “[l]ocation-based message broadcasting is
transmitted from the predefined cell in a downlink only mode and therefore, unlike current SMS
services, does not require functionality or network resources from the mobile services provider.”
Id. at col 4:15–18. This configuration “provides for the simultaneous sending of public service
messages to millions of subscribers with less impact on the supporting networks than a single
SMS-message.” Id. at col 4:22–24. The '938 patent further contrasts cell broadcast technology
from SMS-based prior art systems by noting “[u]nlike other emergency messaging services that
require the recipient’s identity, a predetermined fixed delivery location, and usually the payment
of a service fee, the public service message location broadcasting system uses broadcast
messaging technology to reach an unlimited number of people in real time.” Id. at col. 4:50–55.
Lastly, the '938 patent discloses “minimal impact to participating telecommunication networks”
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by utilizing cell broadcast technology “to provide a message or alert to a single cell geographic
location.” Id. at col. 4:58–62.
The '938 patent highlights specific technical differences between cell-broadcast
technology and SMS-based systems common in the prior art. The '938 patent contrasts the two
technologies based on their ability to distribute messages with or without an intended recipient,
pointing to specific technological drawbacks in conventional SMS-based systems. The cell
broadcast technology in the asserted patents is thus proposed as an alternative to traditional
SMS-based systems by distributing messages to any recipient within a target geographical area.
The disparaging remarks regarding SMS-based systems in the asserted patents are therefore more
than “mere general statements” as alleged by defendants. Defs.’ Op. Cl. Constr. Br. at 13. These
specific technical differences specifically show the inapplicability of using intended recipient-
reliant technologies, such as SMS-based systems, for practicing the asserted patents.
Accordingly, the term “broadcast” does not cover technology requiring an intended recipient for
dissemination.
4. Extrinsic Evidence
Finally, the Court has discretion to evaluate any extrinsic evidence presented by the
parties. Phillips, 415 F.3d at 1317. The parties present extrinsic evidence in the form of
competing dictionary definitions. “In most situations, an analysis of the intrinsic evidence alone
will resolve any ambiguity in a disputed claim term. In such circumstances, it is improper to rely
on extrinsic evidence.” Vitronics, 90 F.3d at 1583. Here, the Court finds the intrinsic evidence
of record sufficient to properly construe the term “broadcast.” Accordingly, the Court need not
rely on the party’s extrinsic evidence in construing the term “broadcast.”
5. Construction of “Broadcast”
The plain and ordinary meaning of the term “broadcast,” according to the intrinsic record,
is defined by a geographic limitation. In support of this plain and ordinary meaning, the patents
differentiate between SMS-based systems in the prior art and the cell-broadcast technology used
in the patents. When read in view of the various specifications, the term “broadcast” is not
directed to SMS-based delivery systems. Rather, “broadcast” is used in the context of delivering
geographically-targeted messages to all devices within the defined target area irrespective of the
identity of the device. The Court need not consult any extrinsic evidence in construing the term
“broadcast.” The Court therefore adopts plaintiffs’ proposed construction, which comports with
the plain and ordinary meaning of the claim term. The term “broadcast” means: “transmission
to all recipients within a target area without targeting a specific recipient.”
Plaintiffs’ Proposed Construction Defendants’ Proposed Construction
(as adopted by the Court)
transmission to all recipients within a target wide dissemination over a communications
area without targeting a specific recipient network including, but not limited to, cellular
carriers, digital private radio systems, private
radio systems, internet, wireline
- 13 -
telecommunications, satellite, and CATV
systems
D. Disputed Claim Term #2: “Broadcast Message”
Plaintiffs’ Proposed Construction Defendants’ Proposed Construction
message that is intended for distribution to all a message that is intended for distribution
recipients within a target area and is not
targeted to a specific recipient
Plaintiffs assert the proper construction of “broadcast message” retains the limitations set
forth in their construction of “broadcast” individually. Defendants seek to remove any additional
limitations from the term.
1. Parties Arguments
Plaintiffs argue their proposed construction “captures the geographic aspect that makes a
‘message’ a ‘broadcast message.’” Pls.’ Op. Cl. Constr. Br. at 16 (emphasis in original). The
exclusion of any limitations attached to the term “broadcast” individually “effectively reads out
the critical word at the center of the parties’ dispute—‘broadcast.’” Id. at 16. Defendants argue
the term “broadcast message” refers “only to the content of the message and does not include
Plaintiffs’ proposed ‘to all recipients within a target area and is not targeted to a specific
recipient’ limitation.” Defs.’ Op. Cl. Constr. Br. at 14. Defendants assert each claim reciting
“broadcast message” also recites a broadcast target area limitation, and the Court should “decline
to read into a term a limitation that already is expressly recited in the language of at least some
claims.” Id.
Similarly, defendants attempt to bifurcate the content of the “broadcast message” from
the intended target area. Id. at 15. Defendants cite to various passages from the specification
discussing the content of the “broadcast message,” including the length, number of characters,
and method of displaying the “broadcast message,” in addition to the pairing of the “broadcast
message” with “local delivery instructions.” Id. at 15–16. Defendants further cite to various
statements made during prosecution of the '221 patent discussing the systems’ receipt of both a
“broadcast message” and a “geographically defined target area.” Id. at 16. For example, the
system “receives the broadcast request with the particular message to be broadcast and the
geographically defined target area for that particular message to be broadcast into.” Defs.’ Op.
Cl. Constr. Br., Ex.14 at 14 (U.S. Patent App. No. 13/311,448 to Weiser et. al, Office Action
Resp. of Oct. 24, 2012); see also Defs.’ Op. Cl. Constr. Br. at 16 (“includes the broadcast
message to be sent and the target area from the broadcasting agent”); Defs.’ Op. Cl. Constr. Br.,
Ex. 15 at 12 (U.S. Patent App. No. 13/887,940 to Weiser et. al, Office Action Resp. of Feb. 2,
2015) (“each broadcast request . . . has a unique broadcast message and broadcast target area”).
Defendants further allege plaintiffs’ construction is erroneous because language in
additional claims, specifically claim 1 of the '938 patent and claim 19 of the '221 patent, contain
claim terms referencing either the distribution or transmission of the “broadcast message” “to at
least a portion of the broadcast target area.” Defs.’ Op. Cl. Constr. Br. at 15. Lastly, defendants
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make a passing reference to extrinsic evidence, referencing Newton’s Telecom Dictionary for the
following definition of “broadcast message:” “a message from one user sent to all users.” Id. at
14.
2. Plain and Ordinary meaning
The Court begins by analyzing whether intrinsic evidence supports construing “broadcast
message” to include a geographic component. “[C]laim construction that gives meaning to all
the terms of the claim is preferred over one that does not do so.” Merck & Co. v. Teva Pharms.
USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (citing Elekta Instrument S.A. v. O.U.R. Sci.
Int’l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000)). The Court has already construed the term
“broadcast” to include a geographic component. Similar to arguments presented for “broadcast”
in isolation, defendants’ assert any geographic limitation present in the claims is presented by
subsequent claim terms divorced from “broadcast message.” See Defs.’ Op. Cl. Constr. Br. at
14.
Defendants rely on Woods v. DeAngelo Marine Exhaust, Inc., 692 F.3d 1272 (Fed. Cir.
2012) for the proposition that “the Court should decline to read into a term a limitation that
already is expressly recited in the language of at least some claims.” Defs. Op. Cl. Constr. Br. at
14. In Woods, the technology involved “[w]ater jacketed marine exhaust systems” for cooling
exhaust upon exiting a marine vessel engine. Woods, 692 F.3d at 1275. The patents were
directed to “an apparatus that more efficiently cools exhaust by tapering the tail end of the outer
liner so it directs the cooling water into the exhaust stream, and prevents water migration and
corrosion by tapering the tail end of the inner liner to reduce the turbulence at the end of the
pipe.” Id. at 1275. The claims included a limitation directed to the disposition of the spacer
relative to the outer shell and inner liner of the jacketed exhaust.4 When construing the claims,
the court declined to read a specific angle into the claim term “angularly disposed” regarding the
orientation of the spacer. Id. at 1285. “The phrase ‘angularly disposed’ does not prescribe any
specific angle. The patentee never defined the term nor disavowed a broader meaning.
Furthermore, it is not necessary to read [defendant’s] proposed limitation into the term because
every claim that uses this term already limits the ring to being directed toward the outer wall.”
Id.
As plaintiffs indicate, the limitation from Woods is inapposite to plaintiffs’ proposed
construction. Pls.’ Resp. Cl. Constr. Br. at 9. In Woods, not only was a specific angle not
4 For purposes of a representative example of the technology from Woods, claim 9 of U.S. patent no. 5,740,670 is
reproduced below:
A water jacketed exhaust pipe for marine engines comprising:
an elongated inner liner, said liner having a tail end, said tail end defining an inwardly tapered section;
an elongated outer shell having a tail end, said shell surrounding said liner about an elongate axis of said
pipe;
said elongated inner liner being extended axially beyond said tail end of said elongated outer shell;
a spacer angularly disposed between said outer shell and said inner liner and separating said shell from said
liner and defining a volume therebetween, said spacer further defining at least one passageway thereby
fluidly communicating said volume with a second volume outside said exhaust pipe; and,
wherein fluid from said first volume is directed toward said outer shell by said at least one passageway.
U.S. Patent No. 5,740,670 to Woods at col. 6:54–7:4.
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prescribed in the claims, but each claim in which the claim term “angularly disposed” appeared
was accompanied by an express limitation regarding the direction of the water spray. Woods,
692 F.3d at 1285. Reading in a separate limitation for a particular angle not specifically recited
in the claims, in addition to importing an improper limitation based upon specific embodiments
from the specification in contravention of Phillips, 415 F.3d at 1323, would further render the
direction limitation superfluous. Woods, 692 F.3d at 1285. Here, plaintiffs propose the term
“broadcast message” should retain the geographic distribution characteristics which differentiate
the claim term from a standard “message.” Pls.’ Resp. Cl. Constr. Br. at 9. Such a reading of the
claims does not render the subsequent term “broadcast target area” superfluous, but instead
reinforces the nature of the message being distributed. The “broadcast message” is a message for
distribution to a geographic target area, and the “broadcast target area” provides the specific
geographic area. Id.
It is true the claim term “broadcast message” is discussed in conjunction with the
geographic target area for distribution on numerous occasions. See Defs.’ Op. Cl. Constr. Br. at
15–16. Yet this delineation is not at odds with plaintiffs’ proposed construction requiring the
term “broadcast message” to retain a geographic component. Similar to the above arguments,
because a “broadcast message” is intended for distribution to a geographic target area, it does not
necessarily follow that the message itself includes what the specific geographic target area is.
The inclusion of the geographic characteristic to the term “broadcast message” is better
understood as modifying the nature of the message. The system does not deal in any generic
message, but rather only those messages capable of transmission to all recipients within a target
area, rather than to a specific recipient: a “broadcast message.” The coupling of the broadcast
message with the particular intended geographic target area, whether by “local delivery
instructions” or otherwise, does not strip the claim term “broadcast message” of its geographic
component, nor does it render the respective geographic components superfluous. According to
the intrinsic evidence, the plain and ordinary meaning of a “broadcast message” retains a
geographic component.
3. Claim Differentiation
“The doctrine of claim differentiation ‘create[s] a presumption that each claim in a patent
has a different scope.’” Versa Corp. v. Ag-Bag Int’l, Ltd., 392 F.3d 1325, 1330 (Fed. Cir. 2004)
(quoting Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998)).
“Other claims of the patent in question, both asserted and unasserted, can also be valuable
sources of enlightenment as to the meaning of a claim term.” Phillips, 415 F.3d at 1314 (citing
Vitronics, 90 F.3d at 1582). “Differences among claims can also be a useful guide in
understanding the meaning of particular claim terms.” Id. (citing Laitram Corp. v. Rexnord, Inc.,
939 F.2d 1533, 1538 (Fed. Cir. 1991)).
Defendants attempt to invoke the theory of claim differentiation to exclude a geographic
component from the construction of “broadcast message.” Defendants look to the use of
“broadcast message” throughout the patents, such as in claim 1 of the '938 patent and claim 19 of
the '221 patent, where a “broadcast message” is transmitted “to at least a portion of the broadcast
target area.” Defs.’ Op. Cl. Constr. Br. at 15. Defendants argue the adoption of plaintiffs
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proposed construction of “broadcast message” is “inconsistent with the plain language” of these
claims. Id.
It is true “claim terms are normally used consistently throughout the patent.” Phillips,
415 F.3d at 1314. Defendants, however, fail to read the “at least a portion of the broadcast target
area” language as “part of a fully integrated written instrument.” Id. at 1315 (quoting Markman,
52 F.3d at 978). The claim language referencing “at least a portion of the broadcast target area”
is specifically tied to an output interface: “a broadcast message distributor module configured
for receiving the validated broadcast message record and transmitting the broadcast message and
the broadcast target area, or a part thereof, to an output interface configured for distributing the
broadcast message to at least a portion of the broadcast target area.” '938 Patent at col. 39:38–
43 (emphasis added). As plaintiffs point out, “the system may utilize one or more output
interfaces to get the message to the target geographic area.” Pls.’ Resp. Cl. Constr. Br. at 10
(emphasis in original); see also '938 Patent at col. 21:48–51 (“a first output interface associated
with a first broadcast transmission network and transmitting the second validated broadcast
message record to a second output interface associated with a second broadcast transmission
network”). It is a well-settled principle of claim construction that “an indefinite article ‘a’ or
‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claim containing the
transitional phrase ‘comprising.’” KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356
(Fed. Cir. 2000). The claims do not foreclose a system having more than one output interface for
distributing the “broadcast message” to the entire target area, with each output interface serving
only a portion thereof. The doctrine of claim differentiation therefore does not alter the plain and
ordinary meaning of “broadcast message.”
4. Extrinsic Evidence
Similar to the Court’s analysis regarding the presentation of intrinsic evidence for the
claim term “broadcast,” the Court finds the intrinsic evidence of record sufficient to construe the
term “broadcast message.” Accordingly, the Court need not consider the weight of any extrinsic
evidence in arriving at a final claim construction. Vitronics, 90 F.3d at 1583.
5. Construction of “Broadcast Message”
Adopting a construction of the term “broadcast message” which omits any geographic
component would effectively read the word “broadcast” out of the claim term entirely. Such a
construction is improper. Merck & Co., 395 F.3d at 1372 (“claim construction that gives
meaning to all the terms of the claim is preferred over one that does not do so.”). While the
“broadcast message” does not necessarily provide the system with the intended geographic area
of distribution, the message is still defined by its intended use for distribution to such a
geographic area. When read in view of the specification, as well as in view of the other claims
and claim terms of the asserted patents, the term “broadcast message” includes a geographic
component. The Court therefore adopts plaintiffs’ proposed construction: the term “broadcast
message” means a “message that is intended for distribution to all recipients within a target area
and is not targeted to a specific recipient.”
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Plaintiffs’ Proposed Construction Defendants’ Proposed Construction
(as adopted by the Court)
message that is intended for distribution to all a message that is intended for distribution
recipients within a target area and is not
targeted to a specific recipient
E. Disputed Claim Term #3: “Broadcast Message Originator/Broadcast Agent”
Plaintiffs’ Proposed Construction Defendants’ Proposed Construction
a person or entity that requests the a person who submitted a proposed broadcast
transmission of a broadcast message message
The parties agree both “broadcast message originator” and “broadcast agent” should be
given the same meaning. See Upd. Joint Stmt. at 4. For purposes of discussing the various
terms, the Court will hereinafter refer to the term “broadcast agent” as encompassing both
“broadcast agent” and “broadcast message originator.”
1. Parties Arguments
Plaintiffs assert “broadcast agent” should not be restricted to only a person, but further
encompass entities or departments within an organization. Pls.’ Op. Cl. Constr. Br. at 18–19.
Plaintiffs argue limiting a “broadcast agent” to only a person or individual unduly narrows the
claims by improperly attempting to “read additional limitations into the claim.” Id. at 18.
Defendants contend the terms are limited to only a person or individual. Defs.’ Op. Cl. Constr.
Br. at 19. Defendants point to particular instances within the specification where the “broadcast
agent” is specifically referred to as an individual person, such as by a pronoun (he/his), a
descriptive term (man), or a title (manager or commander). Id. at 19–20; see, e.g., '938 Patent at
col. 7:64–8:4 (“Service may be automatically denied to a Broadcast Agent . . . who has exceeded
his quota”); id. at col. 12:33-35 (“The web portal [] provides a man-machine interface to a
Broadcast Agent”); id. at col. 7:23-25, 7:25–29, 33:64–67 (providing examples of a “broadcast
agent” including “a Coast Guard commander,” “a River Authority manager,” and a “disaster
manager”). The specification also refers to a “broadcast agent” separate from the organization to
which the “broadcast agent” belongs. See '938 Patent at col. 7:14–17 (“an Administrative
Operator checks and/or verifies the authenticity of the Broadcast Agent Administrator and
defines or validates the jurisdictional area of the Broadcast Agent’s organization”). Defendants
assert this “distinguish[es] between the broadcast agent and the organization of which he is a
member.” Defs.’ Op. Cl. Constr. Br. at 20.
Defendants further highlight passages from the specification setting forth the
“hierarchical authorization scheme” of the “‘admission control’ method.” Id. at 21. According
to defendants, this hierarchical scheme requires a “broadcast agent” to be recognized as an
individual. Id. at 21. Plaintiffs rebut this hierarchical authorization scheme, citing a particular
embodiment in the specification “clearly indicat[ing] that an agent can be an automated sensor
operated by an entity.” Pls.’ Resp. Cl. Constr. Br. at 13. Lastly, defendants offer various
dictionary definitions for the term “agent” in an attempt to lend support for their proposed
construction “comport[ing] with the plain and ordinary meaning of the word.” Defs.’ Op. Cl.
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Constr. Br. at 21. According to the Oxford English Dictionary, an “agent” is “one who does the
actual work of anything, as distinguished from the instigator or employer.” Id. at 21. According
to the American Heritage Dictionary of the English Language, an “agent” is “one that acts or has
the power or authority to act.” Id. at 21–22. And finally, according to Webster’s Third New
International Dictionary, an “agent” is “one who acts or exerts power or acts or performs an act
or alternatively as a person responsible for his act or acts.” Id. at 22.
2. Plain and Ordinary Meaning
The Court begins with the intrinsic evidence to determine whether the plain and ordinary
meaning of a “broadcast agent” can be anything other than an individual. “[I]t is improper to
read limitations from a preferred embodiment described in the specification . . . into the claims
absent a clear indication in the intrinsic record that the patentee intended the claims to be so
limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004). Here, the
asserted patents do not “explicitly state[] that a ‘broadcast agent’ is limited to a specific person.”
Pls.’ Op. Cl. Constr. Br. at 19. According to plaintiffs, such a limitation should not be read into
the claims. See Id. By way of example, plaintiffs illustrate how a “single set of credentials” may
be used by various individuals within a department or organization to submit a proposed
broadcast for dissemination to a particular geographic region. Id.
The claims require the “broadcast agent” to take specific actions when operating the
PLBS. For example, claim 42 of the '938 patent requires “validating the authority of a broadcast
message originator [broadcast agent] originating the broadcast message record.” '938 Patent at
col. 43:50–51 (emphasis added). Applying plaintiffs’ “single set of credentials” example to the
claim language makes it difficult to reconcile how the “broadcast agent” could be anything other
than an individual. Although the credentials themselves provide authorization, it is the broadcast
message record that must be “originated.” The act of originating the broadcast message record
therefore requires specific action. Plaintiffs do not provide an explanation for how an entity or
organization itself could take such action. This is reinforced by the myriad references in the
specification discussed by defendants where the “broadcast agent” is referred to in specific terms
as being an individual; not an entity, organization, or department. See Defs.’ Op. Cl. Constr. Br.
at 19–20. While the entity or organization may contribute to the determination of the identity of
the “broadcast agent,” a specific individual is required to carry out the functional requirements
necessitated by the claims. Put differently, an entity or organization cannot itself perform the
specific actions required by the claims.
Such an interpretation of “broadcast agent” is reinforced by the disclosure of a
hierarchical authorization scheme in the specification. The hierarchical authorization scheme is
organized as follows: an “administrative operator” sets parameters for the authorized
transmission of messages; a “broadcast agent administrator” controls various “broadcast agents;”
and a “broadcast agent” has delegated authority to transmit messages. Defs.’ Op. Cl. Constr. Br.
at 21; see also '938 Patent at col. 27:29–32, 7:9–12, 8:28–31, and 15:51–63. As the “broadcast
agent administrator” directly delegates the authority to transmit authorized messages to the
“broadcast agents,” this suggests the “broadcast agents” were intended to be individuals fitting
within this structured framework. Substituting the organization itself into this hierarchical
framework would render this particular example of a hierarchical authorization scheme
- 19 -
incomprehensible. As the delegation of authority flows downward, it eventually reaches the
lowest ranked authority in this limited framework. The lowest ranked authority cannot then
represent the entire organization itself.
The embodiment plaintiffs cite in rebutting defendants alleged hierarchical authorization
scheme does not refer to either a “broadcast agent” or a “broadcast message originator.” Instead,
this particular embodiment refers to a “broadcast agent administrators” ability to “predefine set
messages in the message library, so that some accounts may broadcast only predefined
messages.” '938 Patent at col. 9:44–46. The predefined set messages may then be triggered by
an automated input system, such as a sensor. Pls.’ Resp. Cl. Constr. Br. at 13. Nowhere in this
particular embodiment is either a “broadcast agent” or “broadcast message originator”
implicated. Instead, the broadcast event is “triggered by an automatic machine,” such as a
sensor. '938 Patent at col. 9:63–64. Thus, the sensor performs the function operated by the
“broadcast agent” in various other embodiments, including throughout the claims. Had plaintiffs
intended for such automated systems to be included within the claim language, the claims would
require usage of a term other than “broadcast agent” in order to cover such embodiments. The
performance of similar functions does not necessarily cause a sensor to become a “broadcast
agent” in much the same way as an answering machine’s ability to record messages does not
cause the machine to become a receptionist.
Though conveniently not cited by plaintiffs, the specification does in fact discuss how a
“broadcast agent” may utilize the predefined messages, further bifurcating the role of a
“broadcast agent” from that of a sensor (or the like). “Here, the Broadcast Agent has many more
options to control the messages. . . . [T]he Broadcast Agent selects from a Message Library of
standard messages available to this Broadcast Agent.” '938 Patent at col. 9:51–52, 56–58. The
claims do not recite the use of a sensor or similar technology; they refer to either a “broadcast
agent” or a “broadcast message originator.” “[W]hen an applicant uses different terms in a claim
it is permissible to infer that he intended his choice of different terms to reflect a differentiation
in the meaning of those terms.” Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
381 F.3d 1111, 1119 (Fed. Cir. 2004) (citing Bancorp Servs., L.L.C. v. Hartford Life Ins. Co.,
359 F.3d 1367, 1373 (Fed. Cir. 2004)). The specification discloses embodiments utilizing
something other than individuals for submitting a proposed broadcast message. Yet the claims
use only the phrases “broadcast agent” and “broadcast message originator” for performing this
function. According to the intrinsic record, the plain and ordinary meaning of these phrases
requires submission of a proposed broadcast message by an individual.
3. Extrinsic Evidence
Similar to the Court’s analysis for both “broadcast” and “broadcast message,” the Court
again finds the intrinsic evidence of record sufficient to construe the term “broadcast agent.”
Accordingly, the Court does not consider the weight of the extrinsic evidence in arriving at a
final claim construction. Vitronics, 90 F.3d at 1583.
4. Construction of “Broadcast Message Originator/Broadcast Agent”
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Viewed together with the numerous references of a “broadcast agent” by specific
pronouns, descriptive terms, or titles, the specifications of the asserted patents “repeatedly and
consistently” describe the “broadcast agent” as a particular individual. Microsoft Corp. v. Multi-
Tech Sys., Inc., 357 F.3d 1340, 1348 (Fed. Cir. 2004) ( “[T]he claims must be must be
interpreted in light of the specification, . . . which repeatedly and consistently describes [the
systems].”). While an automated system may perform a similar function to the “broadcast
agent,” the claims do not invoke language to include such systems under the gambit of the
“broadcast agent.” The specification provides specific examples which, when read in the context
of the claims, require a “broadcast agent” to be an individual. Accordingly, the Court adopts
defendants’ proposed construction of “broadcast agent.” Both a “broadcast agent” and
“broadcast message originator” shall mean “a person who submitted a proposed broadcast
message.”
Plaintiffs’ Proposed Construction Defendants’ Proposed Construction
(as adopted by the Court)
a person or entity that requests the a person who submitted a proposed broadcast
transmission of a broadcast message message
F. Disputed Claim Term #4: “Broadcast Message Originator Identifier”
Plaintiffs’ Proposed Construction Defendants’ Proposed Construction
information that identifies the broadcast a piece of information identifying the
message originator (as construed) broadcast message originator (as construed)
Here, the parties agree the “broadcast message originator identifier” constitutes
information which identifies the “broadcast message originator,” as construed. The parties
disagree, however, as to the magnitude of this information.
1. Parties Arguments
Plaintiffs propose a “broadcast message originator identifier” may be any information
identifying the “broadcast message originator.” Pls.’ Op. Cl. Constr. Br. at 19. “An originator
identifier could be formed by the combination of various information, such as information that
identifies the state in which the originator is located, the type of originator [], and specific office
in which the originator is located.” Id. Defendants argue a “broadcast message originator
identifier” is restricted to “one piece of information—specifically, a ‘User ID/Agent ID.’” Defs.’
Op. Cl. Constr. Br. at 22. According to defendants, “the Broadcast Agent’s user ID [is] the
single piece of information used by the disclosed systems and methods to identify the Broadcast
Agent. Nothing in the intrinsic evidence suggests that the ‘broadcast message originator
identifier’ is anything other than a single piece of information used to identify the broadcast
agent . . . .” Id. at 23. Plaintiffs rebut defendants proposed construction as “render[ing] the
claims vague and indefinite, because, it is not clear what would constitute a single piece of
information. Information is not a physical object.” Pls.’ Op. Cl. Constr. Br. at 20.
2. Plain and Ordinary Meaning
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The specification does not use the term “a piece of information.” Defendants, however,
use this term as a stand-in for a specific embodiment discussed in the specification—a “User
ID/Agent ID.” As support, defendants cite to a single passage in the specification of the '938
patent discussing the use of the “broadcast Agent’s user ID” as the source of providing
identification for the “broadcast agent.” Defs.’ Op. Cl. Constr. Br. at 22-23. As discussed
previously, “limitations from a preferred embodiment described in the specification” should not
be read into the claims “absent a clear indication in the intrinsic record that the patentee intended
the claims to be so limited.” Liebel-Flarsheim, 358 F.3d at 913. As plaintiffs note, “nothing in
the patent specifications would limit the identifier to a single ‘piece of information.’” Pls.’ Op.
Cl. Constr. Br. at 19. Defendants reference to only a single passage of the specification
discussing one particular embodiment is insufficient to impart such a limitation into the claims.
Liebel-Flarsheim, 358 F.3d at 913.
3. Construction of “Broadcast Message Originator Identifier”
There is nothing in the intrinsic record, and neither party offers any extrinsic evidence, to
warrant an interpretation of this claim term other than its plain and ordinary meaning. Here,
plaintiffs offer the ordinary meaning of the claim term, which is “readily apparent” and requires
“little more than the application of the widely accepted meaning of commonly understood
words.” Phillips, 415 F.3d at 1314. A “broadcast message originator identifier” shall therefore
mean “information that identifies the broadcast message originator.”
Plaintiffs’ Proposed Construction Defendants’ Proposed Construction
(as adopted by the Court)
information that identifies the broadcast a piece of information identifying the
message originator (as construed) broadcast message originator (as construed)
G. Disputed Claim Term #5: “Broadcast Message Originator Parameter”
Plaintiffs’ Proposed Construction Defendants’ Proposed Construction
information regarding the broadcast message information associated with the broadcast
originator (as construed) message originator (as construed)
The parties agree a “broadcast message originator parameter” is “broader than a
‘broadcast message originator identifier.’” Pls.’ Op. Cl. Constr. Br. at 20; Defs.’ Op. Cl. Constr.
Br. at 30. The parties dispute, however, the scope of the modifying term, “parameter.”
Curiously, both plaintiffs and defendants argue their respective proposed constructions are
narrower in scope. Tr. at 140:7–13 (Plaintiff argued a broadcast message originator parameter
“has to concern or regard the broadcast message originator and not be just associated with it in
some way.”); 148:5–9 (Defendant argued “associated with” is “the narrower one of [two
competing alternatives] better serv[ing] the public notice function of the claims.”).
1. Parties Arguments
Plaintiffs view their proposed construction as “more specific” than defendants, as the
“parameter at issue is one that concerns the broadcast message originator.” Pls.’ Resp. Cl.
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Constr. Br. at 15. Plaintiffs argue defendants’ proposed construction is not only vague but may
also “be interpreted . . . so broad as to subsume all other parts of the broadcast message record.”
Pls.’ Op. Cl. Constr. Br. at 20. In the alternative, plaintiffs offer two additional proposed
constructions illustrating the relationship between the “broadcast message originator” and the
“parameter:” “concerning” or “related to.” Pls.’ Resp. Cl. Constr. Br. at 15.
Conversely, defendants view their proposed construction as using “the more definite term
‘associated with’ to describe the relationship between the information and the broadcast message
originator.” Defs.’ Op. Cl. Constr. Br. at 24. Defendants provide a series of examples from the
specification discussing the parameters. See id. at 23–24. According to defendants, “the
specifications tie all these parameters to the Broadcast Agent.” Id. at 24. Defendants’ proposed
construction “‘associated with’ [] describe[s] the relationship between the information and the
broadcast message originator, while Plaintiffs’ proposal uses the looser term ‘regarding.’” Id.
Defendants further attempt to invoke the doctrine of claim differentiation to discredit plaintiffs’
proposed construction, arguing “Plaintiffs propose essentially the same construction for
‘broadcast message originator identifier’ [] and ‘broadcast message originator parameter.’” Id.
Defendants allege “the only meaningful difference between [claims 1 and 12 of the '938 patent]
is the additional ‘parameter’ limitation of claim 12, making the presumption that ‘identifier’ and
‘parameter’ have different meanings ‘especially strong.’” Id. at 25.
2. Plain and Ordinary Meaning
As both parties claim to be asserting the narrower construction, the parties seemingly
agree the disputed claim term should be given whichever construction the Court deems narrower.
This is in accordance with guidance provided by the Federal Circuit: “[w]here there is an equal
choice between a broader and a narrower meaning of a claim, and there is an enabling disclosure
that indicates that the applicant is at least entitled to a claim having the narrower meaning, we
consider the notice function of the claim to be best served by adopting the narrower meaning.”
Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1581 (Fed. Cir. 1996).
Here, the parties opposing constructions are nothing more than a preference for one word
over another. Neither party established a meaningful difference between the two proposed
constructions. What the parties do illustrate, however, is “broadcast message originator
parameter” must in some way be related to the “broadcast message originator.” For instance,
plaintiffs cite a passage from the specification referencing various examples of a “broadcast
message originator parameter.” Pls.’ Op. Cl. Constr. Br. at 21. These examples include a
password, a target geographic area, or a message profile or language text parameter. See '938
Patent at col. 19:3–14. The common theme amongst these examples is their relation to the
“broadcast message originator.” Pls.’ Op. Cl. Constr. Br. at 21. Similarly, defendants provide
additional examples from the specification explicitly tying the parameter to the “broadcast agent
originator.” Defs.’ Op. Cl. Constr. Br. at 23 (citing '938 Patent at col. 12:43–45) (“[t]he user
parameter can include authorizations or limitations related to the Broadcast Agent”); see also id.
(citing '938 Patent at col. 13:16–18) (“[a]n account data database can also provide stored
information related to one or more accounts or Broadcast Agents”) (internal reference numerals
omitted).
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In their responsive claim construction brief, plaintiffs most accurately stated this
relationship: “[t]he parameter at issue is one that concerns the broadcast message originator.
‘Concerning’ or ‘related to’ also would be acceptable to Plaintiffs.” Pls. Resp. Cl. Constr. Br. at
15 (emphasis omitted). The Court finds plaintiffs proposed alternative construction, “related to,”
best illustrates the relationship between the “broadcast message originator” and the “parameter”
(as opposed to either “regarding” or “associated with”). Id. at 15. As shown in the above
examples used throughout the specification, the “parameter” “relates to” the “broadcast agent
originator.”
3. Claim Differentiation
“The doctrine of claim differentiation ‘create[s] a presumption that each claim in a patent
has a different scope.’” Versa Corp., 392 F.3d at 1330 (quoting Comark Commc’ns, 156 F.3d at
1187). This tool of claim construction “works best in the relationship between independent and
dependent claims.” Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1380
(Fed. Cir. 2006). Defendants assert the adoption of plaintiffs proposed construction,
“regarding,” renders “claim 1 of the '938 patent redundant of the language of dependent claim 12
in the same patent.” Defs.’ Op. Cl. Constr. Br. at 24. The Court, however, interprets the plain
and ordinary meaning of the “parameter” to be any information “relating to” the “broadcast
message originator.”
During the Markman hearing, this Court elicited defendants’ views regarding use of the
phrase “relating to” for illustrating the relationship between the “broadcast message originator”
and the “parameter:”
THE COURT: What about, like, “related to”? Is it information related to the
originator?
DEFENDANTS’ COUNSEL: “Related to,” again, just to my ears, hearing it for
the first time, sounds more like “regarding” in that it seems to suggest some
identifying [] information about the originator . . . .
Tr. at 147:12–17, ECF No. 75. Accordingly, as defendants seemingly interpret “regarding” and
“related to” in a similar manner, defendants’ arguments presented against the use of “regarding”
to illustrate the relationship between the “broadcast message originator” and the “parameter” are
equally applicable to the phrase “relating to.”
Information can “relate to” something, such as an object or a person, without
“identifying” the object or person. Substituting the Court’s construction of “related to” for
“regarding,” plaintiffs illustrate this point in their responsive claim construction brief: “A
significant difference exists between ‘information that identifies’ and ‘information [relating to].’
[As an] example: a Social Security Number is information that identifies a person, but the fact
that person resides in Virginia is information [relating to] the person. Residence in Virginia does
not identify the person.” Pls.’ Resp. Cl. Constr. Br. at 16. Invocation of the doctrine of claim
differentiation therefore does not support defendants’ argument attributing the same meaning to
both the “identifier” and the “parameter.” Rather, claim differentiation further reinforces the
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differences between these two terms, with a “parameter” interpreted as the broader of the two
descriptors.
4. Construction of “Broadcast Message Originator Parameter”
According to its usage in the claims of the asserted patents, in addition to the consistent
use throughout the specification, the “broadcast message originator parameter” is distinctly tied
to the “broadcast message originator.” Plaintiffs and defendants originally proposed
constructions for the “parameter” are effectively indistinguishable. Further, the parties originally
proposed constructions are equally ineffective to convey the proper relationship between what
constitutes a “parameter” and the “broadcast message originator.” Accordingly, the Court adopts
an interpretation, raised in the alternative by plaintiffs, properly illustrating the relationship
between the “parameter” and the “broadcast message originator.” A “broadcast message
originator parameter” shall mean “information relating to the broadcast message originator.”
Plaintiffs’ Proposed Construction Defendants’ Proposed Construction
information regarding the broadcast message information associated with the broadcast
originator (as construed) message originator (as construed)
Court’s Construction
information relating to the broadcast message originator
H. Disputed Claim Term #6: “Generating a Validated Broadcast Message
Record”
Plaintiffs’ Proposed Construction Defendants’ Proposed Construction
creating a broadcast message record (as after validating, creating a broadcast message
construed) which the system or method has record (as construed) that further includes
determined to be valid data indicating successful validation
The sixth and final claim term disputed by the parties is: “generating a validated
broadcast message record.” The parties agree the claim term “generating a validated broadcast
message record” is not concerned with validation of the record itself. Rather, this “generating”
step occurs post-validation and relates to creation of the validated “broadcast message record.”
See Pls.’ Op. Cl. Constr. Br. at 22-23; Defs.’ Op. Cl. Constr. Br. at 27. The parties dispute,
however, the content of this “generated” record.
1. Parties Arguments
Plaintiffs argue the mere existence of a copy of the validated “broadcast message record”
indicates successful validation: “in the event that validation fails, no copy is made.” Pls.’ Op.
Cl. Constr. Br. at 23. Plaintiffs point to a particular embodiment discussed in the specification
where “generation” is accomplished by copying the “broadcast message record” to a distributor
module. Id. “[I]f the broadcast message has not been declined for the particular network, then
the message is passed on to [process 342]. In [process 342] a copy of all or the relevant parts of
the Broadcast Request is sent to the Broadcast Distributor or placed in a queue.” '938 Patent at
col. 25:55–61 (internal reference numerals omitted). Plaintiffs rely on this embodiment for
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supporting their contention that the “validated broadcast message record” “generated” by the
“broadcast admission control module” is not required to include any additional data indicating
successful validation. See Pls.’ Op. Cl. Constr. Br. at 23. A construction requiring the
“generated” record to include such additional data, according to plaintiffs, “attempts to add an
additional limitation into the claim language.” Id. at 22.
Defendants argue generation of the validated “broadcast message record” is for tracking
the status of the requests, and therefore “generation” of the validated record requires
incorporating “the creation of data indicating whether validation has occurred.” Defs.’ Op. Cl.
Constr. Br. at 28. Defendants focus on the disclosure of the “broadcast admission control
module’s” ability to “generate[] reports regarding the broadcast messages sent via the system,”
including reports including validation data. Id. Defendants use this particular embodiment to
conclude “the purpose of generating the validated broadcast message record is to enable tracking
of the status of each broadcast message request.” Id.
2. Plain and Ordinary Meaning
According to the claims, the “broadcast admission control module” is responsible for
“generating” the “validated broadcast message record.” See, e.g., '938 Patent at col. 39:34–37
(“said broadcast admission control module configured for generating a validated broadcast
message record as a function of the validating”). The claims do not require the “generated”
record to contain any additional data. There is no support in the claims themselves for adding an
additional limitation to the “generated” record following validation not present in the “broadcast
message record” pre-validation. See Phillips, 415 F.3d at 1314 (“the claims themselves provide
substantial guidance as to the meaning of particular claim terms”). Defendants sole argument for
incorporation of such additional data into the meaning of this claim term stems from the
specification’s disclosure of a report generating function; an embodiment discussing a different
functional aspect of the “admission control module.” See Defs.’ Op. Cl. Constr. Br. at 28.
The claim language does not require the “admission control module” to generate such
reports. Limitations from the specification are not to be read into the claims. Liebel-Flarsheim,
358 F.3d at 913. Additionally, the indication of such functionality for the “broadcast admission
control module” in one embodiment does not require the presence of such functionality in all
embodiments of the invention. Hill-Rom Servs, Inc. v. Stryker Corp., 755 F.3d 1367, 1377 (Fed.
Cir. 2014) (“The fact that the specification indicates that in one embodiment, messages are sent
to the wall interface unit ‘in accordance with the present invention,’ does not mean that a wall
interface unit must be present in all embodiments of the invention.”). The claims only require
the “broadcast message record” to be “generated” “as a function of the validating.” '938 Patent
at col. 39:34–37. Thus, “generation” of a “broadcast message record” itself serves as indication
of the validation. See Pls.’ Op. Cl. Constr. Br. at 23; Pls.’ Resp. Cl. Constr. Br. at 18.
The functionality discussed in the independent claim therefore only requires “generation”
of the “validated broadcast message record.” Pls.’ Resp. Cl. Constr. Br. at 19. The dependent
claims expressly discuss alternative functionality of the “admission control module.” Baxalta
Inc. v. Genentech, Inc., No. 19-1527, 2020 WL 5048435, at *3 (Fed. Cir. Aug. 27, 2020) (“The
district court’s construction which excludes these explicitly claimed embodiments [in the
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dependent claims] is inconsistent with the plain language of the claims.”). Further, “[u]nder
principles of claim differentiation, we presume that the claims without this limitation do not
require it.” Hill-Rom, 755 F.3d at 1377. For example, dependent claim 22 discusses “initiating
the reporting and sending of the subsequent broadcast message record.” '938 Patent at col.
41:46–47. Claim 22 depends from claim 21, which configures the “broadcast admission control
module” to validate a “subsequent broadcast message record indicating that all broadcast
transmission network’s decline the transmission of the subsequent broadcast message.” '938
Patent at col. 41–44. The “broadcast admission control module” is thus specifically configured
to allow for this alternative functionality in the dependent claims. The remaining dependent
claims do not use the “validated broadcast message record” for the report functionality. See '938
Patent at col. 42:43–44 (“further comprising transmitting a report containing the broadcast
message”); id. at col. 43:40–43 (“declining the transmission of the validated broadcast message
record, and initiating the reporting of the declined broadcast message record”); id. at col. 44:31–
34 (“generating a decline report in response to a success in the comparing to the broadcast
transmission network decline parameter”); id. at col. 44:38–40 (“generating a security report in
response to a failure of the validating of the broadcast message record”); id. at col. 46:15–17
(“generating a security report in response to a failure of validating the broadcast message
record”).
According to the intrinsic record, the plain and ordinary meaning of “generating a
validated broadcast message record” requires only creation of the broadcast message record
following successful validation.
3. Construction of “Generating a Validated Broadcast Message Record”
The “validated broadcast message record” “generated” by the “broadcast admission
control module” need not include any additional information not present prior to validation.
Accordingly, as plaintiffs proposed, “generating a validated broadcast message record” shall
mean “creating a broadcast message record (as construed) which the system or method has
determined to be valid.”
Plaintiffs’ Proposed Construction Defendants’ Proposed Construction
(as adopted by the Court)
creating a broadcast message record (as after validating, creating a broadcast message
construed) which the system or method has record (as construed) that further includes
determined to be valid data indicating successful validation
III. Means-Plus-Function Claim Terms Under 35 U.S.C. § 112(f)
Defendants argued claims 1 and 11-13 of the ‘938 patent are invalid as indefinite because
the “module” terms, “broadcast admission control module” and “broadcast message distributor
module,” are subject to 35 U.S.C. § 112(f) and lack the necessary corresponding structure. See
Defs.’ Op. Cl. Constr. Br at 31–36. Plaintiffs argued the terms challenged by defendants are not
means-plus-function terms, and “even if they were, the patent specification discloses sufficient
corresponding structure.” Pls.’ Resp. Cl. Constr. Br. at 34.
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A. Applicable Law
The requirements for the specification of a patent application are governed by 35 U.S.C.
§ 112. When the patent claims are directed to a combination comprising a series of elements, the
patentee may invoke § 112(f)5 as a unique claim drafting technique. See 35 U.S.C. § 112(f). “A
patentee may express an ‘element in a claim for a combination’ ‘as a means or step for
performing a specified function without the recital of structure, material, or acts in support
thereof.’” HTC Corp. v. IPCom Gmbh & Co., KG, 667 F.3d 1270, 1278 (Fed. Cir. 2012)
(quoting 35 U.S.C. § 112(f)). Known as “means-plus-function” claiming, this drafting technique
results in a claim construction covering “the corresponding structure, material, or acts described
in the specification and equivalents thereof.” Id. As stated by one scholar, “[a] means-plus-
function claim element is not interpreted to cover every means of performing the function.
Instead, the courts apply a different rule of claim construction, limiting the scope of these claims
by reading in the particular technologies described in the patent specification.” Mark A. Lemley,
Software Patents and the Return of Functional Claiming, 2013 Wis. L. Rev. 905, 916–17 (2013).
“The standard is whether the words of the claim are understood by persons of ordinary
skill in the art to have a sufficiently definite meaning as the name for structure.” Williamson v.
Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed Cir. 2015). Determining whether § 112(f) applies
to a particular claim limitation utilizes a series of rebuttable presumptions. When the phrase
“means for” is used in a claim element, there is a rebuttable presumption § 112(f) applies. Id.
Conversely, “the failure to use the word ‘means’ also creates a rebuttable presumption—this time
that [§ 112(f)] does not apply.” Id. at 1348. Thus, a party asserting the applicability of § 112(f)
in the absence of the word “means” must “demonstrate[] that the claim term fails to ‘recite
sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for
performing that function.’” Id. at 1349 (quoting Personalized Media Commc’ns, LLC v. Int’l
Trade Comm'n, 161 F.3d 696, 705 (Fed. Cir. 1998)).
If § 112(f) is applicable, the Federal Circuit prescribes a two-part test to determine
whether a means-plus-function limitation is definite: first, identification of the particular
claimed function; and second, identification of the corresponding structure, material, or acts
performing the function as recited in the specification. HTC Corp., 667 F.3d at 1278. When the
claims are directed to software, step one requires “that the specification ‘disclose an algorithm
for performing the claimed function.’” Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1312 (Fed.
Cir. 2012) (quoting Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008)).
As a result, claims directed to software fall into one of two categories: “cases in which the
specification discloses no algorithm” and “cases in which the specification does disclose an
algorithm but a defendant contends that disclosure is inadequate.” Id. at 1313. “[I]n a situation
in which the specification discloses no algorithm, ‘[§ 112(f)] . . . has no application.’” Id.
5
Prior to revision as part of the America Invents Act (“AIA”) in September 2012, 35 U.S.C. § 112 was organized
according to a series of numbered paragraphs. What is currently 35 U.S.C. § 112(f) was previously identified as §
112(6) or § 112 sixth paragraph. The text of the pre and post-AIA provisions are identical, and both identifications
of the statute are still in frequent use, as evidenced in both the parties’ briefs and case law. While the Court will use
the current codification as § 112(f) where possible, the terms may be used interchangeably.
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The algorithmic structure need not be the operative source code itself. See Typhoon
Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1385–86 (Fed. Cir. 2011). “For computer-
implemented procedures, the computer code is not required . . . . A description of the function in
words may ‘disclose, at least to the satisfaction of one of ordinary skill in the art, enough of an
algorithm to provide the necessary structure under § 112, ¶ 6.’” Id. (quoting Finisar Corp. v.
DirecTV Grp, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008)). At step two, “[w]hether a
specification adequately sets forth structure corresponding to a claimed function is viewed from
the perspective of one skilled in the art.” HTC Corp., 667 F.3d at 1279. The standard used for
evaluating the disclosure is not a “lofty standard in [] indefiniteness case[s].” Finisar, 523 F.3d
at 1341. Thus, “[t]he party alleging that the specification fails to disclose sufficient
corresponding structure must make that showing by clear and convincing evidence.” TecSec,
Inc. v. Int’l Bus. Machs. Corp., 731 F.3d 1336, 1349 (Fed. Cir. 2013) (citing Budde v. Harley–
Davidson, Inc., 250 F.3d 1369, 1380–81 (Fed.Cir.2001)).
Expert discovery has not yet been conducted in this case. The parties have not been
afforded the opportunity to present evidence regarding how a person of ordinary skill in the art
would view the disclosure of the asserted patents. As a result, for purposes of claim
construction, the Court need only determine whether the claims are interpreted as means-plus-
function claims pursuant to the provisions of § 112(f). See Triton Tech. of Tex., LLC v. Nintendo
of Am., Inc., 753 F.3d 1375, 1378 (Fed. Cir. 2014) (affirming the district court’s claim
construction order finding certain claims indefinite under § 112(f) for failure to “disclose an
algorithm for performing the claimed [] function”); Ergo Licensing, LLC v. CareFusion 303,
Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012) (affirming the district court’s claim construction order
finding certain claims indefinite under § 112 because “there is no algorithm described in any
form for the [claimed] function”).
The Court must therefore only determine whether the specification of the '938 patent falls
into the first category of “no disclosed algorithm” cases, or the second category of “some
disclosed algorithm” cases. EON Corp. IP Holdings v. AT&T Mobility LLC, 785 F.3d 616, 623–
24 (Fed. Cir. 2015) (“Where the specification discloses no algorithm, the skilled artisan’s
knowledge is irrelevant. Where the specification discloses an algorithm that the accused
infringer contends is inadequate, we judge the disclosure’s sufficiency based on the skilled
artisan’s perspective.”); see also Noah Sys., 675 F.3d at 1313 (quoting Aristocrat Techs. Austl.
Pty v. Int’l Game Tech., 521 F.3d 1328, 1337 (Fed. Cir. 2008)) (“Where no structure appears, the
question is ‘not whether the algorithm that was disclosed was described with sufficient
specificity, but whether an algorithm was disclosed at all.’ When the specification discloses
some algorithm, on the other hand, the question is whether the disclosed algorithm, from the
viewpoint of a person of ordinary skill, is sufficient to define the structure and make the bounds
of the claim understandable.”).
If the claims fall into the first category of “no disclosed algorithm,” the inquiry is
complete and the claims are indefinite pursuant to § 112(f). See EON Corp., 785 F.3d at 624
(finding claims classified in the first category of “no disclosed algorithm” cases indefinite). If
the claims fall into the second category of “some disclosed algorithm,” arguments regarding the
sufficiency of the disclosed algorithms must be evaluated according to expert testimony “based
on a skilled artisan’s perspective.” Id. Such evaluations are best left for summary judgment,
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allowing the parties the ability to conduct expert discovery proceedings and present all necessary
arguments and evidence.
B. First Claim Term Disputed Under § 112(f): “Broadcast Admission Control
Module”
The first claim term defendants seek to invalidate as indefinite under § 112(f) is
“broadcast admission control module.” Defs.’ Op. Cl. Constr. Br. at 29. The claim term appears
in independent claim 1 of the '938 patent, which is a system claim.
1. Rebuttable Presumption Under § 112(f)
Initially, the Court must determine whether § 112(f) applies to this claim term.
Williamson, 792 F.3d at 1348. The phrase “means for” does not appear in this claim term. Thus,
a presumption exists that § 112(f) does not apply. Id. The burden is therefore on defendants to
show the applicability of § 112(f) by establishing the failure to recite definite structure, or the
recitation of function without reciting sufficient structure for performing said function. Id.
According to defendants, “the ‘broadcast admission control module’ is a black box, defined
entirely by function with no structure whatsoever.” Defs. Op. Cl. Constr. Br. at 31. Defendants
rely on Williamson in rebutting the presumption: “‘Module’ is a well-known nonce [single-use]
word that can operate as a substitute for ‘means’ in the context of § 112, ¶ 6.” Williamson, 792
F.3d at 1350. Defendants view claim 1 as “silent on the structure that achieves the functions of
the ‘broadcast admission control [module]’ limitation.” Defs. Op. Cl. Constr. Br. at 32.
Plaintiffs respond to defendants’ attempts to overcome the presumption that § 112(f) does
not apply by arguing the claim limitation “recite[s] sufficiently definite structure, including
structure for performing the recited functions.” Pls.’ Op. Cl. Constr. Br. at 24. Specifically,
plaintiffs allege the words preceding module, namely, that the module is a “broadcast admission
control” module, directs the claim limitation itself to structure. Id. at 25. The recited functions
following the module, “in the form of specific software and specific steps for the software to
perform,” represent limitations in the form of specific structure recited in the claim language
itself. Id. at 25–26.
Similar to use of the word “module” in Williamson, the term is used in claim 1 to replace
the word “means,” followed by a recitation of various functions performed by the “broadcast
admission control module.” Williamson, 792 F.3d at 1350 (“It replaces the term ‘means’ with
the term ‘module’ and recites three functions performed by the ‘distributed learning control
module.’”). In Williamson, the Federal Circuit directly addressed whether words preceding the
term “module” could supply the necessary structure in the claim limitation itself: “While [the
patentee] is correct that the presence of modifiers can change the meaning of ‘module,’ the
presence of these particular terms does not provide any structural significance to the term
‘module’ in this case.” Williamson, 792 F.3d at 1351. Here, there is no structure provided by
the term “module” in claim 1. The modifying terms preceding the term “module” describe only
the intended function of the module. Much the same way as words preceding “module” were
insufficient to supply the necessary structure in Williamson, the significance of the “module”
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being that of a “broadcast admission control” module does not supply the necessary structure
here.
Just as with the functions themselves, the specific limitations constraining the functions
do not provide structure. The “broadcast admission control module” validates a “broadcast
message record” “as a function [of] one or more” software components. '938 Patent at col.
39:28–30. The “broadcast admission control module” further generates a broadcast message “as
a function of the validating,” Id. at col. 39:35–37. The limitations provided for the validation
and generation functions do not themselves impart structure. In Williamson, the Federal Circuit
addressed similar high-level functional limitations:
While portions of the claim do describe certain inputs and outputs at a very high
level (e.g., communications between the presenter and audience member computer
systems), the claim does not describe how the ‘distributed learning control module’
interacts with other components in the distributed learning control server in a way
that might inform the structural character of the limitation-in-question or otherwise
impart structure to the ‘distributed learning control module’ as recited in the claim.
Williamson, 792 F.3d at 1351. The claim language here similarly “fail[s] to recite sufficiently
definite structure.” Id.
Defendants successfully rebut the presumption of § 112(f)’s applicability in the absence
of the phrase “means for.” The Court concludes the claim term “broadcast admission control
module” is subject to the provisions of § 112(f). The Court need not reach defendants’
remaining arguments regarding plaintiffs’ possible conflation of means-plus-function vs. step-
plus-function doctrine. See Defs.’ Resp. Cl. Constr. Br. at 20.
2. Function
The Court next turns to the first step in analyzing a claim term subject to the provisions
of § 112(f): identifying the claimed function. HTC Corp., 667 F.3d at 1278. The parties agree
the corresponding functions of the “broadcast admission control module” are as follows: (1)
receiving the broadcast message record; (2) validating the broadcast message record as a
function [of] one or more of the broadcast message originator identifier, the broadcast target
area, and a broadcast message transmission network parameter associated with a broadcast
transmission network adapted for broadcasting the message to at least a portion of the broadcast
target area (“validating the broadcast message record”); and (3) generating a validated broadcast
message record as a function of the validating (“generating a validated broadcast message
record”). See Pls.’ Op. Cl. Constr. Br. at 27 6; Defs.’ Op. Cl. Constr. Br. at 32; First Joint Stmt. at
4.
6
Plaintiffs opening claim construction brief lists the third function as follows: “generating a validated broadcast
message record generating a validated broadcast message record.” Pls.’ Op. Cl. Constr. Br. at 27. The Court
assumes the repetition of this phrase was inadvertent and plaintiffs intended to recite the function from claim 1 of
the '938 patent: “generating a validated broadcast message record as a function of the validating.” '938 Patent at
col. 39:35–37 (emphasis added).
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3. Corresponding Structure
After establishing the claimed functions, step two identifies the corresponding structure,
material, or acts performing the function as recited in the specification. HTC Corp., 667 F.3d at
1278. The parties agree to the extent claim 1 of the '938 patent is directed to software the
specification must disclose the corresponding structure in the form of algorithms. Pls.’ Resp. Cl.
Constr. Br. at 20 (“The parties agree that these elements are met by software that executes on a
specifically identified server . . . . Accordingly, the only issue before this Court is whether the
specification discloses sufficient structure in the form of an algorithm, to perform the identified
functions.”); Defs.’ Op. Cl. Constr. Br. at 33 (“Although Defendants generally agree that any
corresponding structure would be implemented in ‘software,’ disclosing software is not enough;
the '938 patent specification must disclose an algorithm for performing each of the recited
functions of the term.”) (footnotes omitted).
The parties identified three claimed functions: “receiving the broadcast message record,”
“validating the broadcast message record,” and “generating a validated broadcast message
record.” See First Joint Stmt. at 4. “Where there are multiple claimed functions, . . . the patentee
must disclose adequate corresponding structure to perform all of the claimed functions.” Media
Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1374 (Fed. Cir. 2015); see also
Noah Sys., 675 F.3d at 1319 (“We cannot allow disclosure as to one function to fill the gaps in a
specification as to a different, albeit related, function.”). As stated previously for software
functions, the disclosed algorithmic structure need not be the operative source code itself. See
Typhoon Touch, 659 F.3d at 1385–86. “[W]here a disclosed algorithm supports some, but not
all, of the functions associated with a means-plus-function limitation, we treat the specification
as if no algorithm has been disclosed at all,” placing such disclosures in the first category of “no
disclosed algorithm” cases. Noah Sys., 675 F.3d at 1318.
a. Parties Arguments
While the disclosed algorithmic structure need not be the operative source code itself,
defendants dispute whether there is any disclosure of algorithms at all. “None of the passages
Plaintiffs cite from the specification disclose any structure for performing these functions
because they fail to describe the steps the software implemented by the broadcast admission
control module would take to perform those functions, which is tantamount to disclosing no
algorithm at all.” Defs.’ Op. Cl. Constr. Br. at 33. Defendants thus argue the asserted patents
fall into the first category of cases discussed in Noah Systems, or the “no disclosed algorithm”
cases. See Noah Sys, 675 F.3d at 1313. Plaintiffs attribute the corresponding structure to the
process steps provided in the specification for the “admission control module.” Pls.’ Op. Cl.
Constr. Br. at 26. Specifically, plaintiffs rely on Figure 3 of the '938 patent, reproduced below,
for illustrating the “specific steps performed by the admission control module.” Id. at 26. 7
7 Although the specification of the '938 patent makes passing references to each of the “Presswood” and
“Haslemere” algorithms, the specification does not further define the steps associated with such algorithms.
Plaintiffs also do not attempt to substantively rely on these alleged “algorithms” as a means of providing the
corresponding structure to the associated functions. Accordingly, the Court will address the various algorithms
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'938 Patent at Fig. 3.
Plaintiffs then turn to the specification of the '938 patent for “[t]he algorithm used to
perform these functions.” Pls.’ Op. Cl. Constr. Br. at 33. “Specifically, steps 302 through 342 in
Figure 3 show the specific steps performed by the admission control module, which is software
associated with the functions of claim 1 based upon the discrete steps provided in the specification, as opposed to
either of the so-called “Presswood” or “Haslemere” algorithms.
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running on the Broadcast Broker server (element 102 of Figure 1). The algorithm used to
perform these functions is described in detail in the specification of the '938 patent at 24:1–
25:58.” Id. at 26.
b. Receiving the Broadcast Message Record
The Court begins with the first claimed function: the “receiving” function. In
Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371 (Fed. Cir. 2009), the Federal Circuit
addressed the sufficiency of similarly disclosed corresponding structure for means-plus-function
software claims. The technology at issue in Blackboard involved claims directed to an “Internet-
based educational support system and related methods.” 574 F.3d at 1373. Claim 1 of the patent
at issue in Blackboard involved “a plurality of user computers” and “a server computer in
communication with each of the user computers over a network.”8 Id. at 1376, 1382. The server
computer contained numerous means-plus-function limitations, including a “means for assigning
a level of access to and control of each data file based on a user of the system’s predetermined
role in a course” (the “means for assigning”). Id. at 1382.
The patentee in Blackboard attributed the structure performing the “means for assigning”
to “a server computer with an access control manager and equivalents thereof.” Id. The only
description of the “access control manger” provided in the specification was as follows:
Access control manager creates an access control list (ACL) for one or more
subsystems in response to a request from a subsystem to have its resources
protected through adherence to an ACL. Education support system provides
multiple levels of access restrictions to enable different types of users to effectively
interact with the system (e.g. access web pages, upload or download files, view
grade information) while preserving confidentiality of information.
Id. (internal reference numerals omitted). The Federal Circuit found this description of the
corresponding structure to be “simply an abstraction that describes the function of controlling
8
The entirety of claim 1 from the patent at issue in Blackboard is as follows:
A course-based system for providing to an educational community of users access to a plurality of
online courses, comprising:
a) a plurality of user computers, with each user computer being associated with a user of the
system and with each user being capable of having predefined characteristics indicative of
multiple predetermined roles in the system, each role providing a level of access to a plurality
of data files associated with a particular course and a level of control over the data files
associated with the course with the multiple predetermined user roles comprising at least two
user’s predetermined roles selected from the group consisting of a student role in one or more
course associated with a student user, an instructor role in one or more courses associated with
an instructor user and an administrator role associated with an administrator user, and
b) a server computer in communication with each of the user computers over a network, the server
computer comprising: means for storing a plurality of data files associated with a course, means
for assigning a level of access to and control of each data file based on a user of the system’s
predetermined role in a course; means for determining whether access to a data file associated
with the course is authorized; means for allowing access to and control of the data associated
with the course if authorization is granted based on the access level of the user of the system.
U.S. Patent No. 6,988,138 to Alcorn et al. at col. 30:18–48.
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access . . . , which is performed by some undefined component of the system. . . . The
specification contains no description of the structure or the process that the access control
manager uses to perform the ‘assigning’ function.” Id. at 1383. “[L]anguage simply
describe[ing] the function to be performed” is insufficient, as it merely “describes an outcome,
not a means for achieving that outcome.” Blackboard, 574 F.3d at 1384. In order to provide the
necessary corresponding structure, the specification must include language regarding how the
software ensures performance of the functions, rather than simply describing the outcome. See
id. at 1384 (“[The specification] says nothing about how the access control manager ensures that
those functions are performed. As such, the language ‘describes an outcome, not a means for
achieving that outcome.’”) (quoting Aristocrat Techs., 521 F.3d at 1334).
Returning to claim 1 of the '938 patent, the specification describes the process of the
“admission control module” receiving the “broadcast message request.” The message requests
are held in a queue, where they are “sequenced by predefined message priority codes that are
included within the submitted broadcast message request.” '938 Patent at col. 24:1–7. The
“admission control module” then receives message requests from the queue either from
“broadcast agents on site or from a remote Broadcast Agent System.” Id. Unlike the “black
box” discussed in Blackboard, the specification of the '938 patent specifically describes the
process of where the message requests come from, as well as how the message requests are
ordered prior to receipt. Rather than “simply describe[ing] the function to be performed,” this
portion of the specification specifically addresses how the software determines which message
request will be received, as well as how the message will be received. Blackboard, 574 F.3d at
1384. This does not simply describe the outcome; the specification discusses a means for
achieving that outcome. See id. at 1384. The specification of the '938 patent therefore more
closely resembles that in Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376 (Fed. Cir.
2011).
In Typhoon Touch, the technology related to advantages provided by portable computer
systems utilizing a touch screen display rather than a physical keyboard for data entry. See id. at
1380. Among the claim limitations for the portable, “keyboardless” computer were an
“application generator further comprising means for cross-referencing responses,” or the “means
for cross-referencing.”9 Id. at 1380. The patentee focused on the following algorithm provided
in the specification of the patent at issue for providing the necessary corresponding structure:
9
Claim 12, the representative claim of the technology at issue in Typhoon Touch, is as follows:
A portable, keyboardless, computer comprising:
an input/output device for displaying inquiries on a touch-sensitive screen, said screen
configured for entry of responses to said inquiries;
a memory for storing at least one data collection application configured to determine contents
and formats of said inquiries displayed on said screen;
a processor coupled to said memory and said input/output device for executing said data
collection application; and
an application generator for generating said data collection application and for creating different
functional libraries relating to said contents and said formats displayed on said screen, said
application generator further comprising means for cross-referencing responses to said
inquiries with possible responses from one of said libraries; and
a run-time utility operating in conjunction with said processor to execute said application and
said libraries to facilitate data collection operations.
Typhoon Touch, 659 F.3d at 1379–80.
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“Cross-referencing entails the matching of entered responses with a library of possible responses,
and, if a match is encountered, displaying the fact of the match, otherwise alerting the user, or
displaying information stored in memory fields associated with that library entry.” Id. at 1385.
The patentee asserted this disclosure contained “sufficient algorithmic structure for the routine
programmatic procedures needed to provide cross-referencing responses to inquiries.” Id.
In the ‘938 patent, the step-by-step process for the “receiving” function discloses placing
the “broadcast message request” in a queue, sequencing the messages within the queue based
upon “predefined message priority codes that are included within the submitted broadcast
message request,” and then retrieving the next broadcast message request from the queue. '938
patent at 24:1–7. All defendants offer to combat the “receiving” function is what appears to be
an incomplete thought: “For example, as to the ‘receiving’ function, although the method begins
at a ‘Next Broadcast Agent Message Request (BR) Process 302’ in which ‘BR messages are held
in a message queue 346 and may be received from broadcast agents on site or from a remote
Broadcast Agent System.’” Defs.’ Op. Cl. Constr. Br. at 35–36 (quoting '938 Patent at col. 24:1–
4). Defendants do not offer any further explanation regarding the “receiving” function in their
opening claim construction brief. In their responsive claim construction brief, defendants state
only that “the portions of the '938 patent that allegedly correspond to the first function of
‘receiving the broadcast record’ entirely overlap with the portions of the specification allegedly
corresponding to the second and third functions.” Defs. Resp. Cl. Constr. Br. at 27. These
statements are insufficient to overcome the step-by-step algorithmic process set forth in the
specification.
The specification of the '938 patent therefore discloses an algorithm in the form of a step-
by-step process for the “broadcast admission control module’s” performance of the “receiving
function.”
c. Validating the Broadcast Message Record
Next, the Court evaluates the “validating” function. The “validating” function, however,
is comprised of three separate sub-functions. The “validating” function validates the “broadcast
message record” as a function of one or more of: (1) the broadcast message originator identifier;
(2) the broadcast target area; and (3) a broadcast message transmission network parameter
associated with a broadcast transmission network adapted for broadcasting the message to at
least a portion of the broadcast target area. '938 Patent at col. 39:28–34.
The Court finds the Federal Circuit’s discussion from Noah Systems helpful in
determining whether the disclosure in the specification constitutes any algorithm at all. In Noah
Systems, the patent at issue related to an “automated accounting system include[ing] a financial
accounting computer, a financial transaction computer, a communication means, and an access
means.” 10 Noah Systems, 675 F.3d at 1305. The parties agreed the claim term “access means”
10
Claim 12, the representative independent claim at issue in Noah Systems, is reproduced below:
A financial accounting system for a first entity such as an individual or a business, said system
comprising:
a financial accounting computer having at least one file;
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was subject to § 112(f). Id. at 1307. The parties also agreed the function performed by the
“access means” was “providing access to the file of the financial accounting computer for the
first entity and/or agents of the first entity so that the first entity and/or the agent can perform one
or more of the activities selected from the group consisting of entering, deleting, reviewing,
adjusting and processing the data inputs.” Id. The parties disputed, however, “what structure
perform[ed] this function.” Id. The patentee argued that “[t]he structure includes the financial
accounting computer . . . which is programmed to allow access to files on the computer upon
entry of a passcode.” Id. The defendant argued “the structure was indefinite because the
specification disclosed no algorithm by which the computer was programmed to perform the
function asserted in the claims.” Id.
The Federal Circuit recognized two functions in the claim limitation: (1) providing
access to the file; and (2) once access is provided, enabling the performance of delineated
operations. Noah Systems, 675 F.3d at 1314. The Court found sufficient disclosure in the
specification for the function of providing access to the file: “an algorithm for the passcode
function associated with the ‘access means.’” Id. at 1313. Specifically, the specification was
found to disclose “authorized agents are provided with passcodes and that agents cannot enter,
delete, review, adjust or process data inputs within the master ledger unless the passcode is
verified.” Id. While not dispositive of whether this disclosed algorithm was sufficient to supply
necessary structure under § 112(f), it was “sufficient to clearly link this structure with the ‘access
means’ limitation” for purposes of satisfying the disclosure of at least some algorithm. Id.
As the claim limitation involved “two distinct functional components,” the Court required
the disclosure of at least some algorithm for each function. Id. When turning to the second
function for performing delineated operations, the specification “only describe[ed] how
passcodes are issued to authorized agents, and how the system prevents entries to the master
ledger from being processed unless the passcode is verified.” Id. at 1314 (internal citations
omitted). The delineated operations were deemed “specialized functions which cannot be
accomplished absent specialized programming.” Noah Systems, 675 F.3d at 1315. While the
patentee attempted to point to specific software for performing the operations, those “portions of
the specification that describe what occurs [in the specified software], however, merely recite
functional, not structural, language.” Id. at 1316–17. “This type of purely functional language,
which simply restates the function associated with the means-plus-function limitation, is
insufficient to provide the required corresponding structure.” Id. at 1317.
Returning to claim 1 of the '938 patent, the “validating” function, similar to the “access
means” discussed in Noah Systems, is comprised of three separate sub-functions validating the
a financial transaction computer for receiving data inputs, said data inputs including
electronically recorded financial transactions made between said first entity and a second
entity;
first communication means for transferring said data inputs from said financial transaction
computer to said file of said financial accounting computer; and
means for providing access to said file of said financial accounting computer for said first entity
and/or agents of said first entity so that said first entity and/or said agent can perform one
or more activities selected from the group consisting of entering, deleting, reviewing,
adjusting and processing said data inputs.
Noah Systems, 357 F.3d at 1306–07.
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“broadcast message record” as a function of one or more of: (1) the broadcast message
originator identifier; (2) the broadcast target area; and (3) a broadcast message transmission
network parameter associated with a broadcast transmission network adapted for broadcasting
the message to at least a portion of the broadcast target area. See '938 Patent at col. 39:28–34.
For validating as a function of the broadcast message originator identifier, the specification
discloses a “Security Fail process” which includes the steps of checking the User ID “against the
password and authentication key entered in the database.” Id. at col. 24:12–14.
The specification provides the following steps for validating as a function of the
broadcast target area: “[T]he Admission Control Subsystem fetches a Broadcast Agent profile
from the account data database. It checks all the parameters of the Broadcast Agent and message
to determine if the message will be admitted or declined.” Id. at col. 16:7–11 (internal reference
numerals omitted). Of the parameters checked, the Admission Control checks “the Broadcast
Target Area/Footprint against the profile. If not within the Jurisdiction the message will be
declined.” Id. at col. 16:21–24 (internal reference numerals omitted).
Finally, when validating as a function of broadcast message transmission network
parameters, the specification provides the following:
The networks requested are checked against the account data database. The Web
Portal may have participating networks that the account data database has defined,
however in some cases some networks may accept some channels while others do
not. If so, the broadcast may continue on the allowed networks and declined on
others, or it may be declined altogether. If Admission Control is satisfied that the
Broadcast Request if valid, then it is sent to the Distributor.
Id. at col. 16:42–48 (internal reference numerals omitted).
For each of the three “validating functions” prescribed in claim 1, the specification
provides an algorithm, in prose form, detailing the specific steps involved in the particular
validation process with respect to the admission control module. These disclosures are
“sufficient to clearly link this structure with the [means-plus-function] limitation.” Noah Sys.,
675 F.3d at 1313. Defendants only attempt to rebut this link to structure is that the “generating”
function “does not describe how ‘a validated broadcast message record’ is generated ‘as a
function of the validating.’” Defs.’ Op. Cl. Constr. Br. at 36 (quoting '938 Patent at col. 25:56–
65). Defendants argument misses the mark at this stage. Rather than challenging whether any
algorithm is disclosed, which is what defendants initially stated their argument was directed to,
defendants shift gears and attempt to focus on the sufficiency of the disclosed algorithm. Absent
the expert reports, declarations, and testimony necessary to evaluate the sufficiency of any
disclosed algorithms, the Court is unable to make such a determination at this stage “based on
the skilled artisan’s perspective.” EON Corp, 785 F.3d at 624. Such arguments are better
reserved for summary judgment in this case, after the parties are afforded the opportunity to
submit expert evidence regarding a person having ordinary skill in the art. Noah Sys., 675 F.3d
at 1313 (“When the specification discloses some algorithm, on the other hand, the question is
whether the disclosed algorithm, from the viewpoint of a person of ordinary skill, is sufficient to
define the structure and make the bounds of the claim understandable.”).
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The present inquiry is concerned only with whether the disclosed algorithm provides a
“step-by-step procedure for accomplishing a given result.” Ergo Licensing, 673 F.3d at 1365.
The fact that the algorithms are disclosed in prose is of no consequence to their applicability.
Noah Sys., 675 F.3d at 1312 (“The specification can express the algorithm ‘in any
understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any
other manner that provides sufficient structure.’”) (quoting Finisar, 523 F.3d at 1340).11 The
“validating” function is comprised of several sub-functions, therefore requiring the disclosure of
an algorithm to satisfy each sub-function. The specification of the '938 patent contains a step-
by-step procedure for performing each of the various “validating” sub-functions sufficient to
constitute the disclosure of an algorithm.
d. Generating a Validated Broadcast Message Record
Lastly, the Court turns to the third and final function of the “admission control module,”
the “generating” function. The specification of the '938 patent states the following:
[I]f the broadcast message has not been declined for the particular network, then
the message is passed on to a Copy to Broadcast Request Distributor process. In
[this] process a copy of all or the relevant parts of the Broadcast Request is sent to
the Broadcast Distributor or placed in a queue. The Broadcast Distributor may
reformat the data according to one or more predefined parameters, formats or
protocol associated with the transmission facility or link for communicating to the
Carrier or the Carrier Broadcast center (CBC).
'938 Patent at col. 25:56–61. This algorithm provides the steps for generating the “validated
broadcast message record,” which only reaches this step after passing the previous steps outlined
for the various validation processes. That is, a “validated broadcast message record” is only
generated at this step after successful validation; if the “broadcast message record” is declined at
one of the previous steps in the validating process, the “validated broadcast message record” is
never “generated.” See id. The algorithm further discloses the content of the generated message
record as “a copy of all or the relevant parts” of the message record. This “generating” function
is not an overly complex function and accordingly need not be accompanied by any elaborate
disclosure regarding the corresponding structure in the specification. This is particularly true in
the present case, where all that is required is the disclosure of some algorithm.
Defendants attempt to group the “generating” function with the “validating” function,
arguing “this function falls with the ‘validating’ function, which as discussed previously, is not
11
Defendants further suggest the phrasing of claim 1 with regards to the “one or more of . . . and” language requires
the specification to disclose algorithms for validating based upon each function discussed individually. See Defs.’
Op. Cl. Constr. Br. at 35. Defendants then point to the portion of the specification discussing validation of the
broadcast message record as a function of a “combination of factors.” Id. According to defendants, because there is
no disclosure of validating “only based on one item,” the specification is insufficient to disclose sufficient structure
of an algorithm for validating. Id. Despite defendants’ lack of authority for this proposition, plaintiffs adequately
dispose of this argument by identifying the “Security Fail process” as an example of a validation function disclosed
individually. See Pls.’ Resp. Cl. Constr. Br. at 26.
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described in the specification.” Defs. Op. Cl. Constr. Br. at 36. As evidenced by the portions of
the specification reproduced above, the '938 patent does disclose at least some step-by-step
process for the “generating” function. As with the “validating” function, whether the algorithm
in prose is a sufficient algorithm cannot be answered on the current record before the Court.
The Court therefore finds the disclosure of an algorithm for each of the various functions,
and sub-functions, performed by the “broadcast admission control module” of claim 1 of the '938
patent. Accordingly, although the “broadcast admission control module” is subject to § 112(f),
this particular claim limitation falls into the second category of disclosed algorithm cases, or the
“some disclosed algorithm” cases discussed in Noah Systems. The sufficiency of the disclosed
algorithms, however, cannot be determined at this stage of proceedings based upon the evidence
currently before the Court. Noah Sys., 675 F.3d at 1314 (To decide if the disclosure of an
algorithm is sufficient in “some disclosed algorithm” cases “require[s] consideration of what one
skilled in the art would understand from that disclosure, whether by way of expert testimony or
otherwise.” ). Nothing in this Opinion and Order shall be seen to prohibit the parties from
raising the sufficiency of the disclosed algorithms on summary judgment. The Court holds only
that the “broadcast admission control module” is a means-plus-function claim limitation pursuant
to § 112(f) for which an algorithm is disclosed.
C. Second Claim Term Disputed Under § 112(f): “Broadcast Message
Distributor Module”
The second term defendants seek to invalidate as indefinite under § 112(f) is “broadcast
message distributor module.” Defs.’ Op. Cl. Constr. Br. at 36. This claim term, like the
“broadcast admission control module,” appears in independent claim 1 of the '938 patent.
1. Rebuttable Presumption Under § 112(f)
Like the “broadcast admission control module,” the phrase “means for” does not appear
in this claim term. '938 Patent at col. 39:38. A presumption therefore exists that § 112(f) does
not apply. Williamson, 792 F.3d at 1348. The burden is on defendants to show the applicability
of § 112(f) by establishing the failure to recite definite structure, or the recitation of function
without reciting sufficient structure for performing said function. Id. at 1348. In much the same
was as for the “broadcast admission control module,” defendants rely on Williamson in rebutting
the presumption. “‘Module’ is a well-known nonce [single-use] word that can operate as a
substitute for ‘means’ in the context of § 112, ¶ 6.” Id. at 1350.
Similar to use of the word “module” in Williamson, “module” is used in claim 1 to
replace the word “means,” followed by recitation of various functions performed by the
“broadcast message distributor module.” See id. at 1350. While the parties disagree on the
precise functions performed by the “broadcast message distributor module,” the parties agree to
the extent the distributor module at least “receiv[es] the validated broadcast message record” and
“transmit[s] the broadcast message and the broadcast target area, or a part thereof, to an output
interface.” See Defs.’ Op. Cl. Constr. Br. at 36.
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Similar to the discussion above regarding the “broadcast admission control module,”
there is no structure provided by “module” in the claim term “broadcast message distributor
module” as used in claim 1. In the same manner as the words preceding “module” are
insufficient to supply the necessary structure in either Williamson or for the “broadcast
admission control module” above, the significance of the “module” being a “broadcast message
distributor” module does not supply the necessary structure. See Williamson, 792 F.3d at 1351.
The modifying terms preceding the term “module” describe only the intended function of the
module. The significance of the “module” being that of a “broadcast message distributor”
module does not supply the necessary structure. Just as with the functions themselves, the
specific limitations constraining the functions do not provide structure. The “broadcast message
distributor module” receives the validated “broadcast message record” and transmits the
broadcast message and broadcast target area to an output interface for distribution to the
broadcast target area. '938 Patent at col. 39:39–43. These limitations do not themselves impart
any structure to the claims. See Williamson, 792 F.3d at 1351.
Defendants successfully rebut § 112(f)’s presumption for the claim term “broadcast
message distributor module” in the absence of the phrase “means for.” The claim term
“broadcast message distributor module” is subject to the provisions of § 112(f).
2. Function
The Court next turns to the first step in analyzing a claim term subject to § 112(f):
identifying the claimed function. HTC Corp., 667 F.3d at 1278. Here, the parties disagree as to
the corresponding functions of the “broadcast message distributor module.” Plaintiffs argue the
“broadcast message distributor module” performs the following functions: (1) receiving the
validated broadcast message record; and (2) transmitting the broadcast message and the
broadcast target area, or a part thereof, to an output interface. Pls.’ Op. Cl. Constr. Br. at 28.
Defendants argue the “broadcast message distributor module” performs the following functions:
(1) receiving the validated broadcast message record; and (2) transmitting the broadcast message
and the broadcast target area, or a part thereof, to an output interface configured for distributing
the broadcast message to at least a portion of the broadcast target area. Defs.’ Op. Cl. Constr.
Br. at 36 (emphasis added).
The primary difference between the parties’ arguments is whether the function of the
“broadcast message distributor module” requires the output interface to which the broadcast
message is transmitted be specifically configured. “Once a court establishes that a means-plus-
function limitation is at issue, it must identify and construe that limitation, thereby determining
what the claimed function is.” Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308,
1319 (Fed. Cir. 2003). Identification of the claimed function must not improperly narrow or
limit “beyond the scope of the claim language.” Id. The function must also not be “improperly
broadened by ignoring the clear limitations contained in the claim language.” Id. The Court
construes the function “to include the limitations contained in the claim language.” Id. The
Court must therefore determine whether the “output interface” must be configured “for
distributing the broadcast message to at least a portion of the broadcast target area” as a claimed
function of the “broadcast message distributor module.”
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In Computer Docking Station Corp. v. Dell, Inc., the United States District Court for the
Western District of Wisconsin analyzed a means-plus-function limitation wherein one of the
parties similarly attempted to narrow the scope of the claims by expanding the definition of the
claimed function. No. 06-32, 2006 WL 5999613 (W.D. Wis., Aug. 16, 2006), aff’d, 519 F.3d
1366 (Fed. Cir. 2008). At issue in Computer Docking Station was U.S. Patent No. 5,157,645
(“the '645 patent”) for “a portable computer with a docking connector and a method of
connecting the computer to multiple peripheral devices through the docking connector.” Id. at
*1. Independent claim 20 of the '645 patent contained the following claim element: “a docking
connection means in which the housing rests for connecting the microprocessor with computer
peripheral devices, said docking connection means comprising a single connector which mates
with the single connector on the housing.” Id. at *3. 12 The parties disputed whether the “‘in
which the housing rests’ limitation should be included in the claimed function.” Id. at *21.
In evaluating the functionality of the “in which the housing rests” limitation, the District
Court for the Western District of Wisconsin found:
The present case is distinguishable from Lockheed Martin because the phrase “in
which the housing rests” is not a functional limitation. In Lockheed Martin, the
portion of the claim not included in the claimed function by the district court limited
the function of “rotating the wheel” to rotating it “in accordance with a
predetermined rate schedule which varies sinusoidally over the orbit at the orbital
frequency of the satellite.” In the present case, “in which the housing rests” does
not expand or limit the function of the docking connection means, which is to
connect the microprocessor to the peripheral devices.
Id. at *21.
12
The entirety of claim 20 of the '645 patent is reproduced below:
A portable computer microprocessing system comprising:
a) a microprocessor for processing instructions;
b) a housing containing the microprocessor;
c) a plurality of computer-peripheral-device-specific connectors in electrical communication
with the microprocessor such that each of said plurality of computer-peripheral-device-
specific connectors provides a computer-peripheral-device-specific data link to said
microprocessor, said connectors for connecting the microprocessor to specific computer
peripheral devices and being mounted on the housing; and
d) another single connector on the housing, said single connector comprising a set of pins, said
set further comprising a plurality of subsets of computer-peripheral-device-specific pins
being in electrical communication with said microprocessor such that one of each of said
subsets of computer-peripheral-device-specific pins provides the same computer-
peripheral-device-specific data link as said each of said plurality of computer-peripheral-
device-specific connectors, said single connector for making all connections from the
microprocessor to said specific computer peripheral devices; and
e) a docking connection means in which the housing rests for connecting the microprocessor
with computer peripheral devices, said docking connection means comprising a single
connector which mates with the single connector on the housing.
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Similarly here, reading the means-plus-function limitation to include the configuration of
the “output interface” would improperly narrow the scope of the claim language. See Lockheed,
324 F.3d at 1319; Computer Docking Station, 2006 WL at *21. The language of claim 1 requires
the “broadcast message distributor module” to be configured for both “receiving” and
“transmitting” the “broadcast message.” '938 Patent at col. 39:38–41. The functional aspect of
this means-plus-function limitation ends with transmission to the “output interface.” While the
“output interface” may itself perform some additional function, such as distribution of the
“broadcast message,” any such functionality is separate and apart from the function associated
with the “broadcast message distributor module.” Any specific configuration of the “output
interface” is not a function of the “broadcast message distributor module.” The Court recognizes
the claimed function of the “broadcast message distributor module” to be: (1) receiving the
validated broadcast message record; and (2) transmitting the broadcast message and the
broadcast target area, or a part thereof, to an output interface.
3. Corresponding Structure
After establishing the claimed functions, step two identifies the corresponding structure,
material, or acts performing the function as recited in the specification. HTC Corp., 667 F.3d at
1278. As the “broadcast message distributor module” of claim 1 is directed to software, the
specification must disclose the corresponding structure in the form of algorithms. See Pls.’ Resp.
Cl. Constr. Br. at 20; Defs.’ Op. Cl. Constr. Br. at 33. Pursuant to the above discussion of Noah
Systems, the specification must contain a disclosed algorithm for each of the two claimed
functions. Noah Sys., 675 F.3d at 1318.
a. Parties Arguments
While the disclosed algorithmic structure need not be the operative source code itself,
defendants again dispute whether any algorithm is disclosed at all. “Contrary to Plaintiffs’
assertions, however, the '938 patent fails to describe how the software performs all of the
claimed functions of the broadcast message distributor module, which is tantamount to
disclosing no algorithm at all.” Defs.’ Op. Cl. Constr. Br. at 37-38. Plaintiffs turn to a flow
chart containing the “broadcast distributor module” as shown in Figure 2, reproduced below, in
addition to a large swath of the specification of the '938 patent at col. 13:33–14:65 for the
corresponding structure.
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'938 Patent at Fig. 2; Pls.’ Op. Cl. Constr. Br. at 28.
Defendants argue the flow chart from Figure 2 does note “describe[] the operation of the
distributor module” in anything but “general terms.” Defs.’ Op. Cl. Constr. Br. at 38. According
to defendants, the “specification lacks any disclosure of how the software . . . uses the desired
target area for a message to identify which networks or service providers to transmit the message
to.” Id. at 38–39. 13 Plaintiffs again refer to the distributor of Figure 2, reference numeral 224, as
13
Defendants additional arguments relate to the configuration of the “output interface,” which the Court determined
is not a function of the “broadcast message distributor module.” Defs.’ Op. Cl. Constr. Br. at 39. Accordingly, the
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well as the following disclosure in the specification discussing the process dictating transmission
of the broadcast request following submission to the distributor:
If the carrier has provided its facility, network addresses or location coverage area
data to the PLBS[], the Distributor converts the target area map parameters entered
by the Broadcast Agent into [] network addresses and transmits the message
parameters and associated network addresses to the carrier via the carrier’s Carrier
Broadcast Center. For carriers that elect not to provide the [PLBS] the details of
the networks including the network facility addresses, the Distributor transmits the
message and the target broadcast area coordinates of the target broadcast area to the
carrier. The carrier performs the required conversions of target broadcast area to
network or location addresses, such as cell site identifiers.
'938 Patent at col. 17:21–34 (internal reference numerals omitted); Pls.’ Op. Cl. Constr. Br. at 28.
b. Receiving the Validated Broadcast Message Record
Similar to the “broadcast admission control module” discussed above, the first function
of the “broadcast message distributor module” is a “receiving” function. “If Admission Control
is satisfied that the Broadcast Request is valid, then it is sent to the Distributor.” '938 Patent at
col. 16:49–50 (internal reference numerals omitted). This process is illustrated in Figure 2
above, where following the “generating” step of the “broadcast admission control module,” the
“broadcast request” is “sent to the Broadcast Distributor or placed in a queue.” Id. at col. 25:56–
61. The specification further states: “[a] Distributor receives the broadcast message request and
maps the Broadcast Agent’s broadcast target area to determine which broadcast distribution
networks or network service providers have networks providing broadcast distribution systems
serving the broadcast target area.” Id. at col. 13:33–43 (internal reference numerals omitted).
Defendants assert “[t]he specification does not describe how the broadcast message
request or message profile is received.” Defs.’ Op. Cl. Constr. Br. at 39–40. Plaintiffs argue the
“broadcast message distributor module” either “receives the validated broadcast record directly
from the admission control module, or it reads it from the queue.” Pls. Resp. Cl. Constr. Br. at
27 (citing '938 Patent at col. 25:56–61). The specification “‘describes an outcome, not a means
for achieving that outcome.’” Blackboard, 574 F.3d at 1384 (quoting Aristocrat Techs., 521
F.3d at 1334). When a broadcast message request is deemed valid by admission control, the
“broadcast message distributor module” receives the validated broadcast message record. '938
Patent at col. 16:49–50. When the broadcast message request is not valid, the request is placed
in a queue. Id. at col. 25:56–61. Accordingly, the specification does provide the process by
which the broadcast message request is received by the “broadcast message distributor module.”
The present inquiry looks only to whether any algorithm at all is disclosed; not the sufficiency of
said algorithm for supplying the corresponding structure to the claimed function. See EON
Corp., 785 F.3d at 623–24.
Court does not address these additional arguments when looking to the corresponding structure disclosed in the
specification.
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The specification of the '938 patent therefore discloses an algorithm sufficient to provide
the corresponding structure necessary under § 112(f) for the “receiving” function of the
“broadcast message distributor module.”
c. Transmitting the Broadcast Message Record
Second, the Court evaluates the “transmitting” function of the “broadcast message
distributor module” for the presence of any disclosed algorithm. The specification of the '938
patent provides discrete steps for transmitting the broadcast request according to two different
factual scenarios. Where the carrier supplies sufficient information, the distributor performs a
conversion process to enable transmission of the already-converted message to the carrier via an
already-established pathway. See '938 Patent at col. 17:21–27. Where the carrier does not
supply sufficient information, the distributor transmits the message and associated information
directly to the carrier, whereby the carrier then performs the necessary conversions. Id. at col.
17:28–34.
The specification further states:
A Distributor receives the broadcast message request and maps the Broadcast
Agent’s broadcast target area to determine which broadcast distribution networks
or network service providers have networks providing distribution systems serving
the broadcast target area. Once the Distributor has identified the broadcast
distribution networks for the broadcast target area, it determines whether the
broadcast distribution network has its own Cell Broadcast Center and an associated
service Bureau . . . to Cell Broadcast Center . . . interface.
Id. at col. 13:33–43 (internal reference numerals omitted). Defendants argue the specification
fails to “describe how the distributor ‘maps’ the target area or ‘determines’ which networks or
service providers serve the target area.” Defs. Op. Cl. Constr. Br. at 38. Similar to the
“validating” and “generating” functions for the “broadcast admission control module,”
defendants again conflate the sufficiency of the disclosed algorithm with whether any algorithm
is disclosed: “the specification lacks any disclosure of how the software (of the distributor
module or otherwise) uses the desired target area for a message to identify which networks or
service providers to transmit the message to.” Defs. Op. Cl. Constr. Br. at 38–39. Such a high
level of detail is not required to satisfy the disclosure of some algorithm so as to avoid
classification into the “no disclosed algorithm” class of cases; all that is required is disclosure
“sufficient to clearly link this structure with the [means-plus-function] limitation.” Noah Sys.,
675 F.3d at 1313.
For example, in Triton Tech of Tex., LLC v. Nintendo of Am., Inc., the patentee argued the
specification’s disclosure of the term “numerical integration” provided an algorithm for
performing the “integrator means” function. 753 F.3d 1375, 1378–79 (Fed. Cir. 2014). The
Federal Circuit affirmed the district court’s finding that “numerical integration is not an
algorithm but is instead an entire class of different possible algorithms used to perform
integration. Disclosing the broad class of ‘numerical integration’ does not limit the scope of the
claim to the ‘corresponding structure, material, or acts’ that perform the function, as required by
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Section 112.” Id. at 1379. Here, the specification discloses more than merely “an entire class of
different possible algorithms.” Rather, the specification traces a step-by-step procedure for
accomplishing the “transmitting” function, which is more than merely a “restatement of the
[]function itself.” See '938 Patent at col. 17:21–27, col. 17:28–34, and col. 13:33–43.
Defendants further attempt to focus on passing references made to the “Presswood
Algorithm” in the specification of the '938 patent. See Defs. Op. Cl. Constr. Br. at 39 (“But there
is no disclosure of the “Presswood Algorithm,” nor any suggestion that this algorithm would be
well-known to one of ordinary skill in the art at the time.”). The disclosure or content of the so-
called “Presswood Algorithm” is immaterial given the '938 patent’s disclosure of the above
algorithm for the “transmitting” function.
The Court therefore finds the disclosure of an algorithm for each of the various functions,
performed by the “broadcast message distributor module” of claim 1 of the '938 patent.
Accordingly, although the “broadcast message distributor module” is subject to § 112(f), this
particular claim limitation falls into the second category of disclosed algorithm cases, or the
“some disclosed algorithm” cases discussed in Noah Systems. The sufficiency of the disclosed
algorithms, however, cannot be determined at this stage of proceedings based upon the evidence
currently before the Court.
D. Conclusion Regarding 35 U.S.C. § 112(f)
Defendants successfully rebut the presumption against the invocation of § 112(f) for
claims 1 and 11–13 of the '938 patent. The specification of the '938 patent discloses an
algorithm for each of the claimed functions. Accordingly, the Court determines the “module”
terms, “broadcast admission control module” and “broadcast message distributor module,” are
means-plus-function terms. Nothing in this Opinion and Order shall be seen to prohibit the
parties from raising the sufficiency of the disclosed algorithms on summary judgment. The
Court holds only that “broadcast admission control module” and “broadcast message distributor
module” are means-plus-function terms pursuant to § 112(f).
V. Conclusion
The disputed terms of the patents are interpreted by the Court in this Claim Construction
Opinion and Order. The Court adopts the construction of the terms as set forth herein. The
Court also finds the disputed terms in claims 1 and 11–13 of the '938 patent are means-plus-
function terms pursuant to 35 U.S.C. § 112(f). The parties shall follow the schedule set forth in
the 17 August 2018 Scheduling Order, ECF 131 for post claim construction proceedings.
IT IS SO ORDERED.
s/ Ryan T. Holte
RYAN T. HOLTE
Judge
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