In the Order, ALJ Gildea set October 17, 2011 as the date for the Markman hearing determining that “an early Markman hearing would be useful in this Investigation.”  ALJ Gildea’s Order also included a revised procedural schedule and the rules governing the Markman briefing and hearing.

By way of background, the Complainant in this investigation is Microsoft Corp. (“Microsoft”) and the Respondents are Motorola, Inc. and Motorola Mobility, Inc. (collectively, “Motorola”). According to the Order, ALJ Essex conducted a Markman hearing on March 7-8, 2011.

The ‘517 and ‘352 Patents

The parties disputed the meaning of three claim terms from the ‘517 and ‘352 patents: “short filename,” “long filename for the file,” and “location of the file.”

Microsoft alleged that “short filename” should be given its plain meaning or alternatively as “a filename that has at most the number of characters to which short filenames are limited, e.g., 11 in short filename directory entry or down level operating systems and applications.” Motorola argued that instead it should be interpreted as “a permissible filename that has a limit of characters that is less than the limit for the long filename.”  In the Order, ALJ Essex adopted Microsoft’s alternative construction, finding that the specification and claim language supported such a construction.

With regard to the phrase “long filename for the file,” Microsoft asserted that this phrase should be construed as “some or all of the name of a file with more characters than the maximum permitted for a short filename, e.g. by down level operating systems such as MS-DOS or applications written to run on that operating system.”  Motorola disagreed, arguing that the phrase should be construed as “a filename having more characters than its associated short filename.”  The ALJ sided with Microsoft, finding that its construction was supported by the specification and the claims.

As to the phrase “location of the file,” Microsoft argued that this phrase should be construed as “a pointer to the beginning of the data contained in the file.”  Motorola proposed that it be construed as “the information that specifies where all parts of the file are located.”  ALJ Essex agreed with Microsoft as to this term, relying on the specification and finding that Motorola’s proposed construction would exclude the preferred embodiment.

The ‘054 Patent

Four claim terms from the ‘054 patent were disputed by the parties: “while the client is on-line with the server,” “placing the client in an off-line condition with respect to the server,” “the synchronization being performed at least in part by transmitting to the server the copy or the resource stored at the client, and the resource state information,” and “the resource.”

Microsoft asserted that the phrase “while the client is on-line with the server” should be given its plain meaning.  Alternatively, Microsoft offered that it should be construed as “while the client is able to communicate with the server.”  Motorola, instead, asked that it be construed as “while the client is communicating with the server.”  ALJ Essex found that the specification provided a clear definition of “on-line,” and agreed with Motorola’s construction.

As to the phrase “placing the client in an off-line condition with respect to the server,” Microsoft similarly argued that it should be given its plain meaning, or alternatively be construed as “the client is unable to communicate with the server.”  Motorola opposed this definition, asking the ALJ to construe the phrase as “placing in [sic] the client in a state such that it is not communicating with the server.”  The ALJ found an express definition of “off-line” in the specification and accordingly construed the phrase as “placing the client in a state in which it is not immediately capable of actively communicating with a server.”

Next, with regard to the phrase “the synchronization being performed at least in part by transmitting to the server the copy or the resource stored at the client, and the resource state information,” Microsoft argued for plain meaning.  Motorola argued that the phrase be interpreted as “the synchronization of resources by the server being performed at least in part by transmitting to the server the copy or the resource stored at the client, and the resource state information.”  The ALJ agreed with Microsoft, giving the phrase its plain and ordinary meaning.

Finally, as to “the resource,” Microsoft, relying on a definition given in another U.S. patent application, argued that this term means “data, data objects, databases, folders, systems, programs, etc. that may be stored at the client.”  Motorola disagreed, asking the ALJ to construe the term as “a data object, such as a word processing document, email message, or spreadsheet.” ALJ Essex agreed with Microsoft and determined that the ‘054 patentees did not use the term in a manner consistent with only a single meaning.

The ‘746 Patent

The parties disagreed as to three terms from the ‘746 patent: “erase operation,” “physical sector,” and “block.”

As to “erase operation,” Microsoft argued that it should be given its plain meaning or alternatively interpreted as “erasing or clearing.”  Motorola asserted that the term should be interpreted as “setting all the bits of one or more blocks to logical 1.”  ALJ Essex found the term should be given its plain and ordinary meaning.

Microsoft alleged that the phrase “physical sector” should also be given its plain meaning, or alternatively be construed as “a portion of a block.”  Motorola asked that the term instead be interpreted as “the unit of memory on which read and write operations are performed.”  The ALJ found that the claim language supported Microsoft’s alternative definition, “a portion of a block.”

With regard to the term “block,” Microsoft asked the court to give it its plain meaning or construe it as “contiguous data on a data storage device.”  Motorola opposed Microsoft’s definition, asserting that the term should mean “the unit of memory on which the erase operation is performed, comprising a plurality of sectors.”  ALJ Essex found neither proposed definition appropriate.  Based on the claims and the specification, the ALJ interpreted the term as “contiguous units of memory organized into a larger collective unit.”

The ‘762 Patent

Three terms of the ‘762 patent were disputed by the parties: “without knowledge of the telephony radio or cellular network,” “proxy layer”/ “proxy,” and “driver layer”/ “radio driver.”

As to the phrase “without knowledge of the telephony radio or cellular network,” Microsoft asked that it be given its plain meaning, or be construed as “independent of a particular radio or a particular network.” Motorola asked the ALJ to construe the phrase as “with no knowledge of the underlying radio structure of the cellular telephone and with no knowledge of the cellular network in use.”  The ALJ agreed with Microsoft, giving the phrase its plain and ordinary meaning.

Microsoft argued that both “proxy layer” and “proxy” should be given their plain and ordinary meanings, “software that acts as an intermediary,” and “an intermediary.”  Motorola instead asserted that both terms should be construed as “all telephony function located just below the application modules that communicate with the driver layer.”  The ALJ adopted Microsoft’s proposed constructions.

With regard to the terms “driver layer” and “radio driver,” Microsoft asked for plain and ordinary meanings, or alternatively “software that communicates with hardware,” and “software that communicates with a radio.”  Motorola alleged that both terms should be construed as “all telephony functions located just below the proxy layer that communicate with the radio hardware.”  ALJ Essex sided with Microsoft, giving the terms their plain and ordinary meaning, “software that communicates with hardware,” and “software that communicates with a radio.”

The ‘376 Patent

Three claim terms were disputed by the parties with respect to the ‘376 patent: “data store,” “notification broker,” and “determine.”

Microsoft asked that “data store” be given its plain meaning or be construed as “something that stores data.”  Motorola asked that this same term be construed as “a central registry for storing state properties and a notification list.”  The ALJ agreed with Microsoft’s construction and determined that the plain and ordinary meaning of the term was “something that stores data.”

As to “notification broker,” Microsoft also asked for plain meaning or alternatively a construction of “software that manages notifications.”  Motorola disagreed and asserted that the term means “an underlying driver responsible for adding, updating, and removing data from a data store.”  With regard to this term, ALJ Essex adopted Motorola’s definition, finding it was supported by the specification.

Microsoft alleged that the ALJ should construe the term “determine” according to its plain meaning or as “identify or receive notice of.”  In opposition, Motorola asked that ALJ Essex instead interpret it as “perform an operation to make a decision.”  The ALJ found that the term should be given its plain and ordinary meaning.

The ‘910 Patent

The claims of the ‘910 patent contained two disputed terms: “contact card” and “replacing the existing contact card in the contact database with the updated contact card”/ “an existing contact card is replaced with the updated contact card.”

Microsoft argued that “contact card” should have its plain meaning, or alternatively should be interpreted as “information related to a contact.”  Motorola alleged that the term means “a structure with data fields that can contain data related to a contact.”  Relying on the disclosure of the specification and the claims, the ALJ adopted Motorola’s definition.

As to the phrases “replacing the existing contact card in the contact database with the updated contact card” and “an existing contact card is replaced with the updated contact card,” Microsoft asserted that these terms should be given their plain meanings, or “saving updated information in the contact database for an existing contact card” and “changing information in a contact card,” respectively.  Instead, Motorola asked that both be construed as “deleting the existing contact card in the contact database and substituting the updated contact card.”  The ALJ found neither proposed construction satisfactory and determined that the plain language of the phrases were sufficiently clear.

The ‘133 Patent

Four claim terms were disputed as to the ‘133 patent: “a menu selection relating to a class of objects to which the selected computer resource belongs”/ “a menu selection related to the class of objects to which the selected object belongs,” “a menu selection associated with a container in which the selected computer resource belongs”/ “a menu selection that is associated with the container in which the selected object belongs,” “label,” and “file system object menu selection corresponding to a file system object.”

Microsoft alleged that the phrases “a menu selection relating to a class of objects to which the selected computer resource belongs” and “a menu selection, related to the class of objects to which the selected object belongs,” should be given their plain meanings.  Alternatively, Microsoft asserted that “menu selection” means “a choice of option in a menu” and that “a class of objects to which the selected resource belongs” means “a category of objects that includes selected computer resource.”  Motorola asked that the terms be interpreted as “a menu selection connected to a selected object’s class.”  The ALJ disagreed with both parties proposed constructions and construed the phrases as “a choice or option in a menu based upon or determined by the class of objects to which the selected computer resource belongs.”

As to the phrases “a menu selection associated with a container in which the selected computer resource belongs”and “a menu selection that is associated with the container in which the selected object belongs,” Microsoft asked for plain meaning.  As an alternative, Microsoft asked that “menus selection” be interpreted as “a choice or option in a menu” and “container” be interpreted as “environment that includes one or more items.”  Motorola construed both disputed phrases as “a menu selection provided by the container in which the selected object is located.” ALJ Essex disagreed with both parties and construed the disputed phrases as “a choice or option in a menu based upon or determined by the environment or context in which the selected computer resource resides.”

With regard to the term “label,” Microsoft asserted it should be given its plain meaning or be interpreted as “an identifier.”  Motorola argued that “label” should mean “a set of characters entered by a user in a document for which context menus are generated.”  Based on the prosecution history, the ALJ agreed with Motorola and adopted its construction.

Finally, as to the phrase “file system object menu selection corresponding to a file system object,” Microsoft alleged it should be given its plain meaning or be construed as “a menu selection corresponding to a file system object.”  Motorola instead argued that it should be construed as “menu selection representing a file system object.”  In the Order, ALJ Essex determined that the specification supported Motorola’s definition, and he adopted it.

By way of background, the Complainant in this investigation is Elan Microelectronics Corporation of Taiwan (“Elan”) and the Respondent is Apple Inc. (“Apple”).  The investigation was instituted on April 23, 2010, based on Elan’s complaint filed on March 29, 2010.  See our April 26, 2010 post for more details.  ALJ Luckern conducted a Markman hearing on August 18 and 19, 2010 with all parties participating, followed by claim construction submissions and replies.

The ‘352 patent is directed to a “Multiple Fingers Contact Sensing Method For Emulating Mouse Buttons and Mouse Operations on a Touch Sensor Pad.”  According to the Order, ALJ Luckern first determined that one of ordinary skill in the art for ‘352 patent would have an education equivalent to a bachelor’s degree in computer science, electrical engineering, or a similar technical degree, and three years of experience in touch-sensitive input devices.

With respect to three elements in claims 1 and 18 of the ‘352 patent, ALJ Luckern determined (1) that the disputed claim term “identify a first maxima in a signal corresponding to a first finger” means identify a first peak value in a finger profile taken on a straight line obtained from scanning the touch sensor, (2) that the disputed claim term “identify a minima following the first maxima” means identify the lowest value in the finger profile taken on said straight line that occurs after the first peak value, and before another peak value is identified,” and (3) that the disputed claim term “identify a second maxima in a signal corresponding to a second finger following said minima” means “after identifying the lowest value in the finger profile taken on said straight line, identify a second peak value in the finger profile taken on said straight line.”  The issue with the above terms was whether these steps could occur in any order, as advocated by Elan, or whether they must occur in the sequence suggested in the claims, as advocated by Apple and the Commission Investigative Staff (“OUII”).   According to the Order, based on the plain language of the claims, and statements and diagrams from the specification, ALJ Luckern agreed with Apple and OUII that claims 1 and 18 “include a temporal requirement to identify the first maxima, then later in time identify the minima following the first maxima, and still later in time identify the second maxima following said minima.”

ALJ Luckern determined that “control function” means “any function executed in response to the operative coupling of multiple fingers on a touch sensor,” thereby rejecting Apple’s and OUII’s argument for a more narrow definition that included only functions normally provided by the actuation of buttons or switches on a mouse.   According to the Order, although ALJ Luckern agreed that the specification supported a definition that included conventional mouse functions, there was nothing in the claims or specification that excluded additional functions.  However, ALJ Luckern also rejected Elan’s argument that “control function” should exclude cursor movement, since ALJ Luckern found that statements in the prosecution history supported the opposite conclusion.

ALJ Luckern next determined that the term “in response to” from claims 1 and 18 means “after and in reaction to,’ which further means “that the indication of the presence of two fingers must occur at some time after the identification of the claimed first and second maxima, and that said indication must occur in reaction to at least the claimed first and second maxima.”  At issue was (1) whether the “indication of the simultaneous presence of two fingers” must occur immediately after “identification of said first and second maxima” or if it could also occur after additional steps are executed; and (2) whether said identification must be the only factor used in triggering said indication, or if additional factors may also be considered.  ALJ Luckern determined that while the claim language states that the “indication” is in response to the “identification” and is listed as the next step, the claim does not affirmatively exclude intermediate steps between the identification and indication steps, nor do the claims indicate whether any other events may occur between the identification and indication steps.

ALJ Luckern then determined that the term “identify” means “recognize a value to be,” which requires both (1) analysis of the touch sensor signal and (2) designation of the location of the claimed maxima and minima.  Elan had argued that identification requires establishing the position at which the maximum or minimum occurs, but no further analysis of the value was required.  Apple and OUII, on the other hand, argued that the claim term requires that the maxima, the minima, and the second maxima be definitively recognized as existing as defined values as compared to just being a collection of raw data from which one might extract a value.  ALJ Luckern determined that Apple and OUII’s interpretations were more persuasive, since the claims, specification, and prosecution history would cause one of ordinary skill in the art to understand that identification requires analysis of the profile information to detect the claimed maxima and minima.

ALJ Luckern also determined that in claim 18, the term “means for scanning the touch sensor to (a) identify a first maxima in a signal corresponding to a first finger, (b) identify a minima following the first maxima, and (c) identify a second maxima in a signal corresponding to a second finger following said minima” is written in means-plus-function format, and that the recited function is “scanning the touch sensor to (a) identify a first maxima in a signal corresponding to a first finger, (b) identify a minima following the first maxima, and (c) identify a second maxima in a signal corresponding to a second finger following said minima.”  ALJ Luckern further determined that the corresponding structure is an analog multiplexer, a circuit to measure changes in capacitance of sensor conductors, an analog to digital converter, a microcontroller, and Fig. 5 (items, 400-440) and Fig. 6-1 or Fig. 9-1 (items 200-278).

ALJ Luckern finally determined that in claim 18, the term “means for providing an indication of the simultaneous presence of two fingers in response to identification of said first and second maxima,” is a means-plus-function claim, that the corresponding function is “providing an indication of the simultaneous presence of two fingers,” and the corresponding structure is step 860 of Figure 8 where the value of the “Finger” variable is set to equal two.  ALJ Luckern dismissed Elan’s proposed corresponding structure (i.e., “firmware or software that provides data indicating the presence of two fingers in response to the identification of two maxima and equivalents thereof”) as improper as a matter of law because it did not contain an algorithm.

By way of background, the Complainant in this investigation is HTC Corp. of Taiwan (“HTC”).  HTC is alleging a violation of Section 337 in the importation into the U.S. and sale of certain portable electronic devices and related software that infringe certain claims of U.S. Patent Nos. 6,999,800 (“the ‘800 patent”), 7,716,505 (“the ‘505 patent”), 5,541,988 (“the ‘988 patent”) and 6,320,957 (“the ‘957 patent”) by Respondent Apple, Inc. (“Apple”).  A Markman hearing was held on October 25-26, 2010.

The ‘800 Patent

The ‘800 patent is titled “Method For Power Management Of A Smart Phone.”  Claims 1-4, 6, 10, 11, 14 and 15 are asserted against Apple.

The first disputed term was “smart phone,” which appears in claim 1.  Apple argued that the term should be construed to include a definition of “a power system.”  HTC and the Commission Investigative Staff (“OUII”) disagreed, contending that the “smart phone” as a device should not be confused with the power management technique(s) that it may implement.  ALJ Bullock agreed with HTC and the OUII, construing “smart phone” to mean “a device that includes a combination of a mobile phone subsystem and a PDA subsystem.”

The second disputed term was “mobile phone system,” which appears in claim 1.  HTC defined this term broadly to include any device that “establishes communications,” but at the same time limited the communications to “voice calls.”  Apple and the OUII had similar proposed constructions, although Apple’s definition was limited to a “cellular network.”  ALJ Bullock largely agreed with the OUII, and construed “mobile phone system” to mean “a smart phone subsystem that is used to make outgoing calls and to receive incoming calls.”

The third disputed term was “PDA system,” which appears in claims 1, 6, 11 and 15.  ALJ Bullock rejected HTC’s definition because it included the term “notifications,” which improperly inferred that only the PDA system can generate “notifications, and because HTC’s use of the term “user applications” was overly broad.  ALJ Bullock construed “PDA system” to mean “a smart phone subsystem that accesses, stores, and organizes information,” which is closer to Apple’s and the OUII’s proposed constructions.

The fourth disputed term was “standby mode,” which appears in claims 1, 4, 11 and 14.  ALJ Bullock rejected Apple’s argument that this term was indefinite, and instead agreed mainly with the OUII that “standby mode” is “an operational mode in which the network has been located and connected to but communication with a remote network has not been established.”

The fifth disputed term was “sleep mode,” which appears in claims 1-3 and 6.  ALJ Bullock similarly rejected Apple’s argument that this term is indefinite, agreeing mostly with the OUII that “sleep mode” is “an operational mode in which the amount of power supplied to the subsystem is less than any mode except for off mode.”

The sixth disputed term was “idle,” which appears in claim 1.  ALJ Bullock rejected HTC’s proposed construction as based in large part on a preferred embodiment, and chose instead to adopt Apple’s and the OUII’s definition of  “idle,” which is “unused or not in use.”

The seventh disputed term was “off mode,” which appears in claims 1, 11, 14 and 15.  Again, ALJ Bullock rejected Apple’s argument that this term was indefinite, and instead agreed largely with the OUII that “off mode” is “an operational mode in which the least amount of power is supplied to the subsystem compared to any other operational mode (e.g., normal, sleep, connection, or standby).”

The eighth disputed terms were “switching the mobile phone system to off mode when the detected amount is less than a first threshold” and “switching the PDA system to off mode when the detected amount is less than a second threshold,” which appear in claim 1.  HTC and Apple agreed that the OUII’s proposed constructions were acceptable provided that the first and second thresholds are set separately.  Accordingly, ALJ Bullock followed the OUII’s definitions and construed these phrases to mean, respectively, “switching the mobile phone system to off mode when the detected amount of power in the power source is less than a first value” and “switching the PDA system to off mode when the detected amount of power in the power source is less than a second value;” provided, however, “that the values of the first and second thresholds may be the same or different, and must be separately set.”

The last disputed term for the ‘800 patent was “searching for network service while the mobile phone system remains in sleep mode for a third period of time,” which appears in claim 3.  ALJ Bullock again rejected Apple’s argument that this term is indefinite, adopting HTC’s and the OUII’s proposed construction for this term, which is “searching for network service at the same time that the mobile phone system remains in sleep mode for a period of time.”

The ‘505 Patent

The ‘505 patent is entitled “Power Control Methods For A Portable Electronic Device.”  Claims 1 and 2 are asserted against Apple.

The first disputed term was “volatile memory,” which appears in claims 1 and 2.  ALJ Bullock rejected Apple’s argument that the construction of this term should state that the volatile memory “temporarily” stores data, and instead agreed more with HTC that “volatile memory” means “storage media that requires power to retain data.”

The second disputed term was “non-volatile memory,” which appears in claims 1 and 2.  The central issue was whether this term encompasses hard disks – HTC and the OUII asserted that it does not, whereas Apple argued that any disclaimer of hard disks in the prosecution history of a parent application does not apply to the claims of the ‘505 patent.  ALJ Bullock agreed with HTC and the OUII, construing “non-volatile memory” to mean “storage media that retains data in the absence of power, excluding hard disks.”

The third disputed term was “storing data from the volatile memory into the non-volatile memory and stopping supplying power to the volatile memory when the remaining power of the battery is less than a predetermined amount,” which appears in claim 1.  ALJ Bullock agreed with Apple and the OUII that this term refers to a cause-and-effect relationship between measuring the power of the battery and the data storing and power stopping actions, and construed this term to mean “in response to determining that the remaining power of the battery is less than a predetermined amount: (i) transferring data from the volatile memory into the non-volatile memory; and (ii) stopping supplying power to the volatile memory.”

The fourth disputed term was “maintaining only sufficient power to restore the device,” which appears in claim 1.  ALJ Bullock rejected Apple’s argument that this term was indefinite, as well as HTC’s and the OUII’s position that “only sufficient” means merely “enough.”  ALJ Bullock thus construed this phrase to mean “maintaining no more power than that sufficient to allow determination of whether: (1) the remaining power of the battery exceeds an amount required for a normal device operation; and (2) a specific input signal has been received by the portable electronic device.”

The fifth disputed term was “determining whether the remaining power of the battery exceeds an amount required for a normal device operation,” which appears in claim 1.  The issue here centered on “a normal device operation” – HTC argued that this language refers to one or more operations performed by the device, while Apple and the OUII asserted that the claimed determination must relate to the normal operation of the device as a whole.  ALJ Bullock agreed with HTC, construing this term as “determining whether the remaining power of the battery is greater than an amount required for performing one or more normal device operations.”

The sixth disputed claim term was “when the remaining power of the battery exceed [sic] the amount, supplying power to the volatile memory and accessing data from the non-volatile memory to initiate the normal device operation,” which appears in claim 1.   Again, ALJ Bullock construed “when” as “in response to,” and construed “the amount” and “the normal device operation” in a manner consistent with the disputed phrases described above.  In addition, ALJ Bullock agreed with HTC over Apple and the OUII that the data accessed from the non-volatile memory in this claim step need not be the same data that was stored in the non-volatile memory in an earlier claim step.  Thus, ALJ Bullock defined this term to mean “in response to determining that the remaining power of the battery is greater than the amount required for performing one or more normal device operations: (i) supplying power to the volatile memory; and (ii) accessing data from the non-volatile memory to allow the device to begin performing the one or more normal device operations.”

The seventh disputed term was “supplying power to the volatile memory upon receiving the specific input signal and accessing data from the non-volatile memory to initiate the normal device operation after initialization,” which appears in claim 1.  HTC argued that “initiate” means “to begin performing” and that “initialization” means “setting starting values that are used for the device’s configuration,” citing dictionary definitions.  The OUII agreed with the dictionary definitions proposed by HTC.  Apple contended that this term was indefinite.  ALJ Bullock mostly agreed with HTC, construing this term to mean “upon receipt of a predefined input signal, supplying power to the volatile memory and accessing data from the non-volatile memory to allow the device to perform one or more normal device operations after setting the device to a state in which it will work normally.”

The ‘988 and ‘957 Patents

The ‘988 patent is entitled “Telephone Dialler [sic] With A Personalized Page Organization Of Telephone Directory Memory.”  Claims 1 and 10 are asserted against Apple.  The ‘957 patent is entitled “Telephone Dialler [sic] With Easy Access Memory.”  Claims 8, 9, 39 and 42-44 are asserted against Apple.

The first disputed term was “keypad,” which appears in claims 1 and 10 of the ‘988 patent and claim 8 of the ‘957 patent.  ALJ Bullock found HTC’s and Apple’s (and to a lesser extent the OUII’s) constructions of this term problematic – Apple’s definition did not encompass “non-standard” buttons and was improperly limited to “push buttons,” while HTC’s construction was too broad, encompassing any keypad whatsoever.  Accordingly, ALJ Bullock construed “keypad” to mean a “data input device in which the keys are arranged in a manner similar to the numbers on a standard pushbutton telephone.”

The second disputed term was “page,” which appears in claim 1 of the ‘988 patent and claim 8 of the ‘957 patent.  The main issue here was whether a “page” is information (as HTC and the OUII argued) or a section of memory (as Apple asserted).  ALJ Bullock concluded that a “page” is indicia or information, and adopted HTC’s definition of this term, which is “a collection of information from a telephone directory.”

The third disputed term was “to scan indicia or said selected page on said display,” which appears in claim 1 of the ‘988 patent.  After reviewing the arguments and intrinsic evidence, ALJ Bullock agreed with Apple and the OUII that the telephone directories are displayed one at a time and only when the slider is moved to a new location.  Thus, ALJ Bullock adopted Apple’s and the OUII’s construction of this term, which is “to look through the telephone directory entries that are stored in the selected page that is displayed.”

The fourth disputed term was “to control the scanning of indicia [sic] of said selected page on said electronic display device,” which appears in claim 8 of the ‘957 patent.  The arguments related to this term mirrored those for the preceding disputed term.  ALJ Bullock again agreed with Apple’s and the OUII’s definition, construing this term as “to control the display of the telephone directory entries that are stored in the selected page.”

The fifth disputed term was “manually operable scanning device,” which appears in claim 1 of the ‘988 patent.  ALJ Bullock found the OUII’s arguments (as well as Apple’s arguments pertaining to its “alternative” construction) persuasive, and construed this term to mean “a sliding or rotary-type control used to choose information on a particular page.”

The sixth disputed term was “manually operable scanning control device,” which appears in claim 8 of the ‘957 patent.  This term is almost identical to the preceding disputed term in the ‘988 patent, except for the addition of the word “control.”  ALJ Bullock thus construed this and the preceding phrase in a consistent manner, defining “manually operable scanning control device” as “a sliding or rotary-type control used to look through information on a chosen page.”

The seventh disputed term was “page selection device,” which appears in claims 1 and 10 of the ‘988 patent and claims 8 and 9 of the ‘957 patent.  ALJ Bullock found that the OUII’s construction best comports with the intrinsic evidence, and construed this term to mean “a push button or other discrete part used to select a page.”

The eighth disputed term was “page and inside page address selector devices,” which appears in claim 10 of the ‘988 patent.  ALJ Bullock agreed with Apple and the OUII that this term is a combination of the terms “page selection device” and “manually operable scanning device,” which were previously construed.  Accordingly, ALJ Bullock defined this term as “a push button or other physical part used to select a page and a sliding or rotary-type control used to choose information on a particular page.”

The ninth disputed term was “manually operable selector,” which appears in claim 1 of the ‘988 patent and claim 8 of the ‘957 patent.  ALJ Bullock rejected HTC’s and Apple’s constructions as unduly narrow because they limited this term to the disclosed embodiment of a “push button.”  Thus, ALJ Bullock agreed with the OUII, construing this term to mean “a part moveable by hand used [to select].”

The tenth disputed term was “electronic, alphanumeric display,” which appears in claim 39 of the ‘957 patent.  The question here was whether the claimed display must be “dedicated” to displaying alphanumeric characters (as Apple and the OUII asserted), or merely capable of displaying such characters (as HTC asserted).  ALJ Bullock agreed with Apple and the OUII that the display must be “dedicated,” and defined this term as “a device dedicated to displaying alphanumeric characters.”

The eleventh disputed term was “telephone directory memory i/o buffer,” which appears in claim 39 of the ‘957 patent.  The issue regarding this term was whether it referred to a memory location that is dedicated and sized to store a single telephone entry, as Apple asserted.  ALJ Bullock concluded that this term was no so limited, believing HTC’s and the OUII’s constructions to be faithful to the plain language of the claim.  However, ALJ Bullock found that HTC’s definition repeated language already recited in the claim, and thus adopted the OUII’s construction, which is “a data storage device for temporarily storing data comprising an entry in a telephone directory.”

The final disputed term was “telephone directory memory,” which appears in claim 39 of the ‘957 patent.  The dispute likewise centered on whether the telephone directory memory is dedicated memory space.  ALJ Bullock again disagreed with Apple, finding this term not so limited.  Since HTC’s and the OUII’s constructions bore immaterial differences with each other, and since neither party objected to the OUII’s definition, ALJ Bullock adopted the latter, which is “a data storage device for storing a telephone directory.”

By way of background, on November 20, 2008, Qimonda AG (“Qimonda”) filed a complaint with the ITC against LSI Corporation, Seagate Technology, Seagate Technology (US) Holdings, Inc., Seagate Technology LLC, Seagate Memory Products (US) Corporation, and Seagate (US) (collectively, “Respondents”) alleging violation of Section 337 by the importation, sale for importation, or sale after importation of chips and products containing chips that infringed seven patents, including U.S. Patent No. 5,851,899 (“the ‘899 patent”).  After the Commission instituted an investigation (337-TA-665) and an evidentiary hearing was held regarding four of the seven patents, ALJ Robert K. Rogers, Jr. issued an initial determination (“ID”) on October 14, 2009 in which he found no violation of Section 337 because the four asserted patents were either invalid or not infringed, and because no industries existed in the United States for any of the patents asserted at the hearing.  Qimonda petitioned for review with respect to the ‘899 patent and two other patents, and the Commission issued its determination not to review ALJ Rogers’ ID as to the ’899 patent on January 29, 2010.  Qimonda appealed the Commission’s decision only with respect to the ’899 patent.

According to Qimonda’s opening and reply briefs, the issues on appeal are: (1) whether the Commission erroneously construed the term “removing the exposed portion of the insulating material over the active regions” in independent claims 1 and 22 of the ’899 patent; (2) whether, under the correct construction of “removing the exposed portion of the insulating material over the active regions,” the Commission erred in finding that the processes used to fabricate the accused products do not infringe the ’899 patent; and (3) whether, under the correct construction of “removing the exposed portion of the insulating material over the active regions,” the Commission erred in finding that the process used to fabricate Qimonda’s domestic industry product does not practice the ’899 patent.  Specifically, Qimonda argues that the Commission incorrectly construed the term in question to require removal of all the insulating material covering the active regions not covered by the etching mask, when the claim language, specification, and prosecution history all demonstrate that only a portion of the insulating material need be removed at the etching step for the purpose of shortening the subsequent chemical-mechanical polishing step.

According to the Commission’s brief, the issue on appeal is whether the claim term “removing the exposed portion of the insulating material” requires, consonant with its ordinary meaning and the intrinsic record, that “the exposed portion of the insulating material” be removed, and not merely that “some of the exposed portion of the insulating material” be removed.  In particular, the Commission argues that: (1) the verb “remove” is a common English word with a generally understood meaning, namely, that its entire object is “removed;” and (2) the specification and prosecution history repudiate Qimonda’s proposed construction.

In the Intervenors’ brief, Respondents argue that Qimonda misstates the effect of the Commission’s claim construction, which does not require that all the insulating material over the active regions be removed.  Rather, Respondents contend that, following the claim language, specification, and prosecution history, the Commission’s claim construction properly requires removing only the exposed insulating material, i.e., “the insulating material from those areas not covered by the photoresist layer to expose the surface of the semiconductor substrate.”

According to the notice, ALJ Bullock scheduled the technology tutorial and Markman hearing to take place on October 25, 2010.

In the Order, ALJ Gildea set November 9, 2010 as the date for the Markman hearing determining that “an early Markman hearing will assist in streamlining the issues for the evidentiary hearing and final initial determination in this Investigation.”  ALJ Gildea further determined that since the schedule for the investigation requires rapid preparation, “[t]he parties should meet and confer in an effort to resolve the meaning of as much of the claim language at issue as possible, as the number of disputed patent claim terms to be addressed at the Markman hearing will not exceed 16 terms.”  (Emphasis in original).  ALJ Gildea’s Order also included a revised procedural schedule and the rules governing the Markman hearing.

By way of background, the Complainant in this investigation is Apple Inc. (“Apple”) and the Respondents are Nokia Corporation and Nokia Inc. (collectively, “Nokia”).  The investigation was instituted on February 18, 2010 based on Apple’s complaint of January 15, 2010.  See our February 22, 2010 post for more details.  On April 26, 2010, ALJ Bullock granted the Commission Investigative Staff’s (“OUII”) motion for partial consolidation of the investigation with Inv. No. 337-TA-710.

ALJ Bullock conducted a Markman hearing on June 14, 2010 regarding the interpretation of certain terms of the asserted claims of the ‘599, ‘431, ‘354, and ‘726 patents.  According to the Order, Apple, Nokia, and OUII met and conferred prior to the hearing in an effort to reduce the number of disputed claim terms to a minimum.  The parties also filed initial and reply claim construction briefs, wherein each party offered its construction for the claim terms in dispute along with support for its proposed interpretation.  According to the Order, the parties further conferred during the Markman hearing and, in some instances, modified or came to agreement regarding the construction of certain disputed claim terms.  After the hearing, the parties submitted an updated Joint Claim Construction Chart on June 21, 2010.

In the July 30 Order, ALJ Bullock stated that “[h]ereafter, discovery and briefing in this Investigation shall be governed by this construction of the claim terms.  All other claim terms shall be deemed undisputed and shall be interpreted by the undersigned in accordance with ‘their ordinary meaning as viewed by one of ordinary skill in the art.’”  (Emphasis in original; citation omitted).

The ‘599 Patent

The ‘599 patent is directed to an “Object-Oriented Graphic System.”  The parties disputed the constructions of the following claim terms:  (a) “grafport object,” (b) “graphic object,” (c) “means for connecting the graphic device object to the grafport object to output graphic information on the one of the one or more graphic devices under the control of the graphic object,” (d) “geometric object,” (e) “modeling layer object,” (f) “state information,” and (g) “rendering information.”

ALJ Bullock construed “grafport object” as “an object that stores graphic state information (e.g. an attribute bundle, transformation matrix, etc.) and that translates draw functions to render calls of at least one graphic device object, thereby allowing a graphic object to dump its contents into the graphic device object.”  In doing so, the ALJ adopted OUII’s proposed construction of the term, which was narrower than Apple’s proposed construction but broader than Nokia’s proposed construction.  Apple had argued that the term should be construed simply as “an object that stores graphic state information and allows a graphic object to convey its contents to a graphic device object.”  According to the Order, ALJ Bullock chose OUII’s proposed construction over Apple’s because OUII’s “contains exemplary language and more clearly comports with the claim language and the specification.”  Also, based on certain examples in the specification and Apple’s alleged disclaimer of a broader claim scope during prosecution, Nokia had wanted to limit the term to an object that contains a method that takes a “geometric primitive.”   However, ALJ Bullock found Nokia’s arguments unpersuasive because the examples in the specification were not all limited to methods requiring “geometric primitives,” and Apple had not made a clear disavowal of claim scope during prosecution.

ALJ Bullock construed the term “graphic object” as “an object that contains graphic data and at least one method to generate a draw call to the grafport object.”  Again, the dispute was over whether the graphic data had to be limited to definitions of geometric primitives — Nokia argued for a narrow construction with the “geometric primitives” limitation and Apple argued for a broad construction without that limitation.  As with his construction of “grafport object,” ALJ Bullock found Nokia’s arguments unpersuasive here and construed “graphic object” without the “geometric primitives” limitation.

With respect to “means for connecting the graphic device object to the grafport object to output graphic information on the one of the one or more graphic devices under the control of the graphic object,” ALJ Bullock determined that a corresponding structure for this mean-plus-function term was not sufficiently disclosed in the specification.  In particular, while there were references in the specification to connecting a grafport object to a graphic device, ALJ Bullock could find no support for connecting the grafport object to a graphic device object as claimed. Accordingly, ALJ Bullock found the means-plus-function term indefinite and held that claim 1 of the ‘599 patent was invalid.  ALJ Bullock then declined to construe “geometric object,” because that term only appeared in claims that depended on claim 1.

ALJ Bullock construed “modeling layer object” to mean “a graphic object in the modeling layer that encapsulates both geometry and appearance.”  Again, Nokia had asked that additional limitations be read into the term by proposing “an object that contains geometric primitives, a set of transformation methods, and has associated attribute bundles defining the representation of the geometric primitives” as the proper construction.  However, ALJ Bullock found that “Nokia has not persuasively demonstrated that the claim term modeling object should be limited in the manner it suggests.”

With respect to “state information,” ALJ Bullock construed the term as “information including at least the current transform, appearance, or clipping.”  Nokia had initially argued for the term to be construed as “the current transform, appearance, and clipping” (emphasis added), but according to the Order had backed away from that position in its reply brief and at oral argument.

Finally, with respect to “rendering information,” ALJ Bullock construed the term as “the drawing sequence of a graphic object.”  As with other terms in the ‘599 patent, Nokia had argued for a “geometric primitives” limitation — but ALJ Bullock again rejected that argument.

The ‘431 Patent

The ‘431 patent is directed to a “Boot Framework Architecture For Dynamic Staged Initial Program Load.”  In the ‘431 patent, the parties disputed the construction of the single claim term “to configure.”  Apple argued that the term was readily understood in the industry and therefore did not require construction.  Nokia argued for a construction of “to find, identify, and instantiate the storage, input/output, and other peripheral devices of the computer system.”  OUII argued for a construction of “to find, identify, and tailor or customize devices of.”

In the Order, ALJ Bullock rejected Apple’s plain meaning argument because “it fails to adequately capture the dynamic requirement of the invention.”  Instead, the ALJ accepted Nokia’s and OUII’s limitation of “to configure” to “to find and identify…”  However, ALJ Bullock disagreed with Nokia’s and OUII’s use of “devices,” because the specification indicated that “to configure” applied to both hardware (“devices”) and software.  Accordingly, ALJ Bullock construed the term as “to find, identify, and tailor or customize components of.”

The ‘354 Patent

The ‘354 patent is directed to an “Object-Oriented Event Notification System With Listener Registration Of Both Interests and Methods.”  In the ‘354 patent, the parties disputed the constructions of the following claim terms:  (a) “associated object method,” (b) connection information representing the first/receiver object’s interest in, and an associated object method for, receiving notification of a change to a second/source object,” (c) “connection object,” (d) “registering the connection information with/using a connection object,” (e) “creating an event representing a change in the second/source object,” (f) “notifying the first/receiver object of the event by invoking the associated object method for receiving notification registered with/using the connection object,” and (g) “each of a notification type plurality corresponds to a unique connection object method.”

According to the Order, the prosecution history played a large part in ALJ Bullock’s construction of the disputed terms in the ‘354 patent.  In particular, the Order notes that during prosecution, “the Examiner posed two distinct sets of questions to the applicants, namely ‘what is’ a given claim element and ‘where in’ the specification and drawings can certain claim elements be found.”  ALJ Bullock found that the applicants’ answers to the “what is” questions constituted disclaimers that limited claim scope, but that the applicants’ answers to the “where in” questions did not constitute limiting disclaimers.

With respect to “associated object method,” ALJ Bullock construed the term as “a method of the receiver object.”  This was Nokia’s and OUII’s proposed construction, and was supported by the applicants’ responses to a “what is” question during prosecution.  Apple had unsuccessfully argued for the term to be construed in accordance with its plain meaning.

As to “connection information representing the first/receiver object’s interest in, and an associated object method for, receiving notification of a change to a second/source object,” ALJ Bullock again limited the term in accordance with the prosecution history as advocated by Nokia and OUII.  The term was construed as “information, stored in a connection object, indicating specific source object events in which a receiver object is interested and the receiver object method that should receive notification.”

ALJ Bullock construed “connection object” as “object containing a method for dispatching notifications from the notifier to the specific receiver objects that have identified to the connection object an interest in specific source object events.”  Again, ALJ Bullock limited the term in accordance with the prosecution history.  Here, however, he disagreed with Nokia’s attempt to further limit the scope of the term by arguing for a requirement that the “notifier” be in object form, since this was not a limitation apparent from the prosecution history.  Accordingly, instead of Nokia’s proposed use of “notifier object,” ALJ Bullock used “notifier” in his construction of “connection object.”

With respect to “registering the connection information with/using a connection object,” ALJ Bullock construed the term according to its plain meaning, as requested by Apple.  Unlike other terms in the ‘354 patent, this one was not limited by the prosecution history because the applicants’ had only discussed it in response to a “where in” question as opposed to a “what is” question.  Accordingly, ALJ Bullock did not limit the term based on the prosecution history and instead simply relied on the plain meaning.

Similarly, with respect to “creating an event representing a change in the second/source object,” ALJ Bullock chose not to limit the term based on the prosecution history as advocated by Nokia and instead adopted Apple’s broad proposed construction:  “generating notification information representing a change in the second object.”  Again, the discussion of the term in the prosecution history was based on a “where in” question rather than a “what is” question.

As for “notifying the first/receiver object of the event by invoking the associated object method for receiving notification registered with/using the connection object,” ALJ Bullock again declined to limit the term based on “where in” questions in the prosecution history and adopted Apple’s and OUII’s proposed construction:  “sending the notification information to the first object by calling the associated object method for receiving that notification.”

Finally, with respect to “each of a notification type plurality corresponds to a unique connection object method,” the issue centered on whether the patent required notification objects in all cases.  Nokia argued that the term should be limited to notification objects, while Apple and OUII argued against such a limitation.  As with his construction of “connection object,” ALJ Bullock declined to limit the term to notification objects and instead construed the term broadly as “each of the notification types corresponds to a unique connection object method.”

The ‘726 Patent

The ‘726 patent is directed to a “System And Method For Managing Power Conditions Within A Digital Camera Device.”  The parties disputed the constructions of the following claim terms:  (a) “digital camera device,” (b) “power manager,” (c) “status information,” (d) “interrupt information,” (e) “control information,” and (f) “for managing said digital camera device.”

The construction of “digital camera device” centered on the prosecution history of the ‘726 patent and specifically on whether the applicant had disclaimed a digital camera that was attached to a “general purpose computer system architecture or a uniform power management system geared to a computer system including software layer and add-in components.”  ALJ Bullock examined the prosecution history and stated that he was “not convinced that the file history evidences a ‘clear disavowal’ of claim scope, as Nokia alleges.”  According to the Order, “[t]he applicant distinguished the prior art as not teaching power management of a digital camera device, not based on the definition or scope of the claimed digital camera device.”  Thus, ALJ Bullock construed the term as simply “a device specifically adapted to capture images for digital processing and storage.”

With respect to “power manager,” ALJ Bullock adopted Nokia’s and OUII’s proposed construction of the term as “a device specifically adapted to detect and handle power failures and to manage the supply of backup power in a digital camera.”  Apple had argued for a plain meaning interpretation of the term, but ALJ Bullock found that references in the specification and a disclaimer during prosecution led to the narrower construction.  Specifically, the specification repeatedly refers to “a power manager for detecting and handling power failures” and during prosecution, the applicants had distinguished their invention from the prior art by stating that “[t]he system includes a power low condition wherein a backup power supply provides power to critical systems…”  Accordingly, ALJ Bullock rejected Apple’s plain meaning argument and adopted the more limited construction for the term.

As for “status information,” ALJ Bullock construed the term as “information indicating the state of conditions affecting the operation of the digital camera device.”  This was OUII’s proposed construction and was based on certain statements in the prosecution history limiting “status information” to the digital camera context.  Nokia had argued for additional limitations based on the preferred embodiment described in the specification, but ALJ Bullock rejected Nokia’s arguments.  ALJ Bullock also rejected Apple’s proposed plain meaning construction, as such a construction would not have limited the term to digital cameras as required by the prosecution history.

ALJ Bullock construed “interrupt information” as “information relating to an interrupt signal affecting the operation of the digital camera device.”  As with “status information,” ALJ Bullock here adopted OUII’s proposed construction because Apple’s plain meaning argument did not limit the term to the digital camera context as required by the prosecution history and Nokia was improperly attempting to read in additional limitations from an embodiment in the specification.

ALJ Bullock construed “control information” as “information relating to settings of the digital camera device.”  Once again, ALJ Bullock adopted OUII’s proposed construction because Apple’s plain meaning argument did not limit the term to the digital camera context and Nokia was improperly attempting to narrow the term in a way not supported by the intrinsic evidence.

Finally, with respect to “for managing said digital camera device,” ALJ Bullock construed the term to mean “for preserving the integrity of captured image data and for assisting the camera to recover from an intervening power failure.”  The claim construction dispute here was essentially the same as that for the “power manager” term, and the result was analogous.  ALJ Bullock rejected Apple’s plain meaning argument and adopted Nokia’s and OUII’s more limited construction based on the specification and prosecution history.  According to the Order, “the specification repeatedly describes the claimed invention as being directed at preserving the integrity of captured image data and assisting the camera to recover from intervening power failure.”  Also, during prosecution, “the patentee did indeed disclaim forms of control that are not either preserving the integrity of captured image data or for assisting the camera to recover from an intervening power failure.”  Accordingly, ALJ Bullock adopted his narrow construction for the term.

In the Order, ALJ Luckern set the procedural schedule for the investigation and included provisions for the early exchange of claim construction terms and proposed constructions.  ALJ Luckern did not include a separate Markman hearing in the procedural schedule but indicated that he remains open to considering motions for such a hearing.

In stating his view on whether a Markman hearing should be held, ALJ Luckern quoted extensively from the transcript of the July 12, 2010 preliminary conference in the investigation.  At that conference, ALJ Luckern had explained how he was doubtful as to the value of Markman hearings due to the fact that the Commission has the ability to overturn an ALJ’s claim construction findings at any time during the proceeding.

In particular, ALJ Luckern pointed to his recent initial determination on claim construction in Inv. No. 337-TA-703 (see our July 21, 2010 post for more details) and explained how the Commission’s delay in reviewing that determination could potentially cause some difficulty.  “I think that it would be helpful to know, but I have no idea what the Commission is going to do…And until I know what they are doing, and there has only been one Markman decision that I have issued so far, but the Commission may have good reasons not to do anything about it…And if that is the case, then I really don’t see much value in Markman hearings here, because I can’t see bringing parties here for a hearing, and turning away claims undetermined, and not know what the Commission is going to do.”

The ALJ further explained that “as you all know, this is an administrative procedure type of hearing, and the Commission can make new findings of fact based on the record, and send it back to me, and we could start all over again…And you can imagine what the expenses would be for the parties if we have to have a second evidentiary hearing based on the fact that the Commission would not agree with me.”

Accordingly, ALJ Luckern stated at the preliminary conference that “I am not going to do anything with respect to a Markman hearing.  If the Commission decides something to what I have filed [in the 703 investigation], then I may do it.”  Thus, while the procedural schedule does not currently include a date for a Markman hearing, it appears that ALJ Luckern has not completely foreclosed the possibility of conducting one, particularly if the Commission moves quickly in reviewing his Markman determination in the 703 investigation.

Lastly, according to the Order, the evidentiary hearing in the 720 investigation will commence on March 7, 2011.

By way of background, the Complainant in this investigation is Eastman Kodak Company (“Kodak”) and Respondents are Research In Motion, Ltd. and Research In Motion Corporation (collectively, “RIM”) and Apple Inc. (“Apple”).

The Commission instituted an investigation of this matter on February 17, 2010.  See our February 18, 2010 post for more details.  On April 26, 2010, ALJ Luckern issued an order granting Respondents motion requesting a Markman hearing.  See our April 28, 2010 post for more details.  Accordingly, a Markman hearing was conducted on May 24–25, 2010.

According to the ID, ALJ Luckern construed the following terms of the ‘218 patent:

“Motion Processor” and “Still Processor”

At dispute with regard to these terms was (1) whether “motion processor” and “still processor” required any particular circuitry, (2) whether the invention required simpler “motion processing” and more complex “still processing” and (3) whether the invention required digital processing.

In reaching his conclusion, ALJ Luckern took into consideration both intrinsic and extrinsic evidence including the claims of the ‘218 patent, the specification and drawings of the ‘218 patent, the prosecution history of the ‘218 patent, expert testimony from the Markman hearing, and similar terms in prior art patents.

With regard to the first issue, ALJ Luckern agreed with Respondents that the two terms required different and distinct circuitry.

In connection with the second issue, Apple argued that the words “simpler” and “more complex” were frequently used in the specification to describe features of the preferred embodiment.  However, ALJ Luckern cited language in the ‘218 patent and examiner statements in the ‘218 patent prosecution history indicating that the claims were not required to be restricted to a simpler “motion processor” and a more complex “still processor.”  Thus, ALJ Luckern determined that one of ordinary skill in the art would not be reasonably apprised of the scope of the invention by using such terms.

Finally, with respect to the third issue, ALJ Luckern determined that the image processing in both the motion processor and still processor was digital.

Ultimately, ALJ Luckern construed the claim term “motion processor” as “a processor that processes a series of motion images using digital image processing that is different and distinct in circuitry from the digital image processing of the still processor.”  The ALJ construed the claim term “still processor” as “a processor that processes a captured still image using digital image processing that is different and distinct in circuitry from the digital image processing of the motion processor.”

“At Least Three Different Colors”

With regard to this term, in the ID, ALJ Luckern first construed the word “color.”  The ALJ noted that the parties proposed no specific definition for color, nor was one given in the specification, thus ALJ Luckern determined that one skilled in the art would look to extrinsic evidence such as a dictionary.  In doing so, the ALJ construed “color” as “a phenomenon of light (as red, brown, pink, or gray) or visual perception that enables one to differentiate otherwise identical objects.”  ALJ Luckern found that this definition was supported by the testimony of experts, by the claims of the ‘218 patent, by the specification of the ‘218 patent, and by the prosecution history of the ‘218 patent.  Using a similar analysis, ALJ Luckern construed “different” by looking to a dictionary definition.  The ALJ determined that one skilled in the art would conclude “different” meant “not the same, distinct.”

Thus, ALJ Luckern construed the claim term “at least three different colors” as referring to “three or more distinct colors, for example red, blue and green, where each color is a phenomenon of light or visual perception that enables one to differentiate otherwise identical objects.”  The ALJ determined that this definition did not include YCC data having as its three components: luminance, Chroma-B, and Chroma-Y.

“Capture Button”

According to the ID, the parties disagreed as to whether the term “capture button” required only a “user control” or whether it was limited to a “mechanical element.”  ALJ Luckern determined that the language of the ‘218 patent’s claims and specification described only the button’s purpose and not the manner of it’s operation.  Thus, the ALJ determined a “capture button” need not be a “mechanical element.”

In response to allegations of amendment-based prosecution disclaimer, the ALJ looked to the purpose of the amendment and determined that one skilled in the art would not infer a “mechanical element” limitation based on the prosecution history.

Consequently, ALJ Luckern construed the claim term “capture button” as “a user control physically located on the camera, though it need not be a mechanical element.”

“Initiating Capture of a Still Image While Previewing the Motion Images”

Looking to the claims and the specification of the ‘218 patent, the ALJ determined that the term “initiating capture of a still image while previewing the motion images” meant “sending a signal from the capture button to the timing and controls section, said signal starting the still image capture process and being sent during the display of motion images.”  In doing so, ALJ Luckern again rejected Respondents’ argument of prosecution disclaimer.

“Each Captured Image Having a First Number of Color Pixel Value Provided in a First Color Pattern”

To interpret this phrase, ALJ Luckern construed three separate terms: “captured image,” “first number of color pixel values,” and “first color pattern.”  In construing these terms, the ALJ looked to the claims of the ‘218 patent, the specification of the ‘218 patent and expert testimony from the Markman hearing.

The ALJ construed “captured image” to be “an image of a scene received by the image sensor.”  ALJ Luckern next construed “first number of color pixel values” as “the number of color pixel values generated by the image sensor, where a color pixel value is a measure of the intensity of one color.” Finally, the ALJ construed “first color pattern” as “the arrangement of the color pixel values generated by the image sensor.”

Thus, ultimately, ALJ Luckern construed the phrase “each captured image having a first number of color pixel values provided in a first color pattern” as “each image of a scene received by the image sensor having a first number of color pixel values generated by the image sensor, provided in an arrangement of the color pixel values generated by the image sensor, where a color pixel value is a measurement of the intensity of one color of light.”

* * * * * *

While certifying the ID to the Commission, ALJ Luckern stated that an evidentiary hearing on violation is set to commence on September 1, 2010.   He therefore determined that “a final determination on claim construction on all claim language, or at least certain of the claim language, treated in said determination, before the commencement of the evidentiary hearing on violation on September 1, would lead to efficiencies at the violation hearing.”  ALJ Luckern accordingly requested an early decision by the Commission on this ID.