Rotatable Technologies LLC v. Nokia Inc, No. 2:2012cv00265 - Document 101 (E.D. Tex. 2013)

Court Description: MEMORANDUM OPINION AND ORDER - Signed by Judge Rodney Gilstrap on 8/1/2013. (ch, )

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Rotatable Technologies LLC v. Nokia Inc Doc. 101 IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION ROTATABLE TECHNOLOGIES LLC, Plaintiff, v. NOKIA, ET AL., Defendants. § § § § § § § § CASE NO. 2:12-CV-265-JRG § § § § § § MEMORANDUM OPINION AND ORDER   1 Dockets.Justia.com TABLE OF CONTENTS I. BACKGROUND ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦... ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦..3 II. LEGAL PRINCIPLES ¦ ¦.. ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦.............3 III. U.S. PATENT NO. 6,326,978 ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦. ¦ ¦... ¦10 A. The Disclosure of the '978 Patent ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦..10 B. The Asserted Claims of the '978 Patent ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦.12 IV. CONSTRUCTION OF DISPUTED TERMS ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦. ¦ ¦ ¦ ¦ ¦ ¦13 A. Whether the Preamble Terms in Claims 9 and 14 Are Limitations ¦ ¦...13 1. "Computer Display Window" ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦15 2. "Selectively Rotating" ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦16 B. Selectively Rotating a Computer Display Window ¦ ¦ ¦ ¦ ¦ ¦ ¦...20 C. Computer Display Window/Window ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦....21 D. Display Portion ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦..23 E. A Frame Surrounding the Display Portion ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦24 F. Determining a Rotation Point ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦25 G. Rotation Point ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦....26 H. Rotating the Window About the Rotation Point at the Discretion of the User ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦..27 I. Means-Plus-Function Terms ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦.29 1. means for determining a rotation point ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦..29 2. means for rotating the window about the rotation point at the discretion of the user / means for rotating the window by predetermined increments / means for returning the window to a zero degree orientation ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦..30 V. CONCLUSION ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦.. ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦.. ¦ ¦...31   2 I. BACKGROUND Plaintiff, Rotatable Technologies LLC, (hereinafter RT ) filed suit against Defendants on May 1, 2012, asserting United States Patent No. 6,326,978, titled Display Method For Selectively Rotating Window On A Computer Display (hereinafter, the 978 patent or the patent-in-suit ). On July 15, 2013, the Court held a Markman hearing in the case (Dkt. 96.) This Memorandum and Order provides the Court s construction of the disputed claim terms at issue and the Court s determination of other disputed issues presented by the parties related to construction of the asserted claims of the 978 patent. II. LEGAL PRINCIPLES It is understood that [a] claim in a patent provides the metes and bounds of the right which the patent confers on the patentee to exclude others from making, using or selling the protected invention. Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed. Cir. 1999). Claim construction is clearly an issue of law for the court to decide. Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff d, 517 U.S. 370 (1996). To ascertain the meaning of claims, courts look to three primary sources: the claims themselves, the specification, and the prosecution history. Markman, 52 F.3d at 979. The specification must contain a written description of the invention that enables one of ordinary skill in the art to make and use the invention. Id. A patent s claims must be read in view of the specification, of which they are a part. Id. For claim construction purposes, the description may act as a sort of dictionary, which explains the invention and   3 may define terms used in the claims. Id. One purpose for examining the specification is to determine if the patentee has limited the scope of the claims. Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000). Nonetheless, it is the function of the claims, not the specification, to set forth the limits of the patentee s invention. Otherwise, there would be no need for claims. SRI Int l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). The patentee is free to be his own lexicographer, but any special definition given to a word must be clearly set forth in the specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992). Although the specification may indicate that certain embodiments are preferred, particular embodiments appearing in the specification will not be read into the claims when the claim language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994). This Court s claim construction analysis is substantially guided by the Federal Circuit s decision in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips, the court set forth several guideposts that courts should follow when construing claims. In particular, the court reiterated that the claims of a patent define the invention to which the patentee is entitled the right to exclude. 415 F.3d at 1312 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To that end, the words used in a claim are generally given their ordinary and customary meaning. Id. 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, i.e., as of the effective filing date of the patent   4 application. Id. at 1313. This principle of patent law flows naturally from the recognition that inventors are usually persons who are skilled in the field of the invention and that patents are addressed to, and intended to be read by, others skilled in the particular art. Id. Despite the importance of claim terms, Phillips made clear that 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. Id. Although the claims themselves may provide guidance as to the meaning of particular terms, those terms are part of a fully integrated written instrument. Id. at 1315 (quoting Markman, 52 F.3d at 978). Thus, the Phillips court emphasized the specification as being the primary basis for construing the claims. Id. at 1314-17. As the Supreme Court stated long ago, in case of doubt or ambiguity it is proper in all cases to refer back to the descriptive portions of the specification to aid in solving the doubt or in ascertaining the true intent and meaning of the language employed in the claims. Bates v. Coe, 98 U.S. 31, 38 (1878). In addressing the role of the specification, the Phillips court quoted with approval its earlier observations from Renishaw PLC v. Marposs Societa per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998): Ultimately, the interpretation to be given a term can only be determined and confirmed with a full understanding of what the inventors actually invented and intended to envelop with the claim. The construction that stays true to the claim language and most naturally aligns with the patent s description of the invention will be, in the end, the correct construction. Phillips, 415 F.3d at 1316. Consequently, Phillips emphasized the important role the specification plays in the claim construction process.   5 The prosecution history also continues to play an important role in claim interpretation. Like the specification, the prosecution history helps to demonstrate how the inventor and the Patent and Trademark Office ( PTO ) understood the patent. Id. at 1317. Because the file history, however, represents an ongoing negotiation between the PTO and the applicant, it may lack the clarity of the specification and thus be less useful in claim construction proceedings. Id. Nevertheless, the prosecution history is intrinsic evidence that is relevant to the determination of how the inventor understood the invention and whether the inventor limited the invention during prosecution by narrowing the scope of the claims. Id.; see Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (noting that a patentee s statements during prosecution, whether relied on by the examiner or not, are relevant to claim interpretation ). Phillips rejected any claim construction approach that sacrificed the intrinsic record in favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc court condemned the suggestion made by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002), that a court should discern the ordinary meaning of the claim terms (through dictionaries or otherwise) before resorting to the specification for certain limited purposes. Phillips, 415 F.3d at 1319-24. According to Phillips, reliance on dictionary definitions at the expense of the specification had the effect of focus[ing] the inquiry on the abstract meaning of words rather than on the meaning of claim terms within the context of the patent. Id. at 1321. Phillips emphasized that the patent system is based on the proposition that the claims cover only the invented subject matter. Id.   6 Phillips does not preclude all uses of dictionaries in claim construction proceedings. Instead, the court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the court emphasized that claim construction issues are not resolved by any magic formula. The court did not impose any particular sequence of steps for a court to follow when it considers disputed claim language. Id. at 1323-25. Rather, Phillips held that a court must attach the appropriate weight to the intrinsic sources offered in support of a proposed claim construction, bearing in mind the general rule that the claims measure the scope of the patent grant. Where a claim limitation is expressed in means-plus-function language and does not recite definite structure in support of its function, the limitation is subject to 35 U.S.C. § 112 ¶ 6. B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). In relevant part, 35 U.S.C. § 112 ¶ 6 mandates that such a claim limitation be construed to cover the corresponding structure . . . described in the specification and equivalents thereof. Id. (quoting 35 U.S.C. § 112 ¶ 6). Accordingly, when faced with means-plus-function limitations, courts must turn to the written description of the patent to find the structure that corresponds to the means recited in the [limitations]. Id. Construing a means-plus-function limitation involves multiple inquiries. The first step in construing [a means-plus-function] limitation is a determination of the function of the means-plus-function limitation. Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001). Once a court has determined the limitation s function, [t]he next step is to determine the corresponding structure described in the specification and equivalents thereof. Id. A structure disclosed in the specification is corresponding structure only if the specification or   7 prosecution history clearly links or associates that structure to the function recited in the claim. Braun, 124 F.3d at 1424. While corresponding structure need not include all things necessary to enable the claimed invention to work, it must include all structure that actually performs the recited function. Default Proof Credit Card System, Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed. Cir. 2005). The question is not whether one of skill in the art would be capable of implementing a structure to perform the function, but whether that person would understand the written description itself to disclose such a structure. Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338 (Fed. Cir. 2008). Further, the identified structure needs to be more than a black box. See Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371, 1382-82 (Fed. Cir. 2009). The structure needs to be described in detail and not abstraction. See id. When a contention is made that a claim is invalid for indefiniteness under 35 U.S.C. § 112 ¶ 2, inquiry must be made as to whether the claim fails to particularly point out and distinctly claim the subject matter that the applicant regards as the invention. The party seeking to invalidate a claim under 35 U.S.C. § 112 ¶ 2 as indefinite must show by clear and convincing evidence that one skilled in the art would not understand the scope of the claim when read in light of the specification. Intellectual Prop. Dev., Inc. v. UAColumbia Cablevision of Westchester, Inc., 336 F.3d 1308, 1319 (Fed. Cir. 2003). Where computer-implemented inventions are at issue and claimed using meansplus-function limitations, the Federal Circuit has consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor. Aristocrat Techs. Australia Pty Ltd. v. Int l Game Tech., 521 F.3d 1328,   8 1333 (Fed. Cir. 2008). Rather, the patent must disclose sufficient algorithmic structure (or some other description) explaining how the computer performs the claimed function. See id. at 1332-37; Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371, 1383-84 (Fed. Cir. 2009); Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008). The term algorithm in computer systems has broad meaning and encompasses in essence a series of instructions for the computer to follow, In re Waldbaum, 457 F.2d 997, 998 (CCPA 1972), whether in mathematical formula, or a word description of the procedure to be implemented by a suitably programmed computer. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376 (Fed. Cir. 2011) ( i.e., ¦a step-by-step procedure for accomplishing a given result. ). The patentee may express that algorithm in any understandable way: a mathematical formula, in prose, as a flow chart, or in any other manner that provides sufficient structure. Id. But, simply reciting software without providing some detail about the means to accomplish the function is not enough. Id. at 1340-41. Further, even though the algorithm may be expressed in any understandable way, an algorithm is still a step-by-step procedure for accomplishing a given result. Ergo Licensing, 673 F.3d at 1365 (internal citations and quotations omitted). In limited circumstances, a general purpose computer may suffice as structure for a generic function (such as processing ) if the function is coextensive with the structure disclosed. Katz Interactive Call Processing Patent Litig. v. Am. Airlines, Inc. (In re Katz Interactive Call Processing Patent Litig.), 639 F.3d 1303, 1316 (Fed. Cir. 2011). However, a construction narrowing the functions to specific computerimplemented functions requires corresponding algorithms to be disclosed. Id. at 1317.   9 If the patentee fails to disclose in the patent any algorithmic structure corresponding to the claimed function, the claim is invalid for indefiniteness under 35 U.S.C. § 112 ¶ 2. The preamble of a claim is not limiting if a structurally complete definition of the invention is provided in the body of the claim and the preamble only states a purpose or intended use of the invention. However, a preamble term can be a limitation if a term in the preamble provides antecedent basis for a limitation appearing in the body of the claim or if a preamble term was used as a claim limitation to overcome prior art during prosecution. Catalina Mktg. Int l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808-810 (Fed. Cir. 2002). III. U.S. PATENT NO. 6,326,978 A. The Disclosure of the 978 Patent The 978 patent describes that the operating system of a computer through application programs running on the computer generate graphical user interfaces ( GUIs ) that are displayed on a monitor or screen of a computer system.1 Furthermore, the 978 patent identifies a GUI as being a window. Such a window, according to the 978 patent, includes a frame and a display portion surrounded by the frame.2 The 978 patent seeks to facilitate human interfacing with a computer by providing a method for selectively rotating windows on a computer display.3 Thus, the 978 patent is directed to a computer display method that allows a user to rotate                                                              1 978 patent at col. 1:21-30. 2 978 patent at col. 1:31-35. 3 978 patent at col. 2:18-29; col. 4:56-58.    10 wind dows on a computer dis c splay at will such that i information can be pres sented in an ny orien ntation desired by the user. In ac ccordance w with the 978 patent, w windows on a display can be rotated abou a preselec ut cted rotation point to a desired degree. Suc n any ch oper ration is depi icted in Figs 1 and 2. s. In Fig. 1, a window 10 is shown in a home position. U 1 e Using rotation button 28 8, the window 10 can be made to rotate aw from the home posit w c way e tion as show in Fig. 2 b wn by rotat tion about po 30.4 oint Specifical the 978 patent describes that w lly, 8 window 10 has a displa portion 1 ay 14 and a frame form by heade portion 12 vertical sc med er 2, croll bar 16, horizontal scroll bar 18 , 8, and line 10.5 Rot tation of win ndow 10 abo rotation p out point 30 is c controlled by the user vi y ia                                                              4 The 978 patent illu ustrates a comm monly used w window config guration by sho owing an Apple® Macintosh® ® windo and a Micro ow osoft® Window window. See, col. 3:1 an col. 4:1. ws® S nd 5   978 patent at col. 3:13-22. 3 11 rotation button 28. The user clicks and holds rotation button 28 with an input device until window 10 arrives at the desired orientation.6 The 978 patent describes two modes of selective rotation that allows a user to rotate window 10 within a 360 degree circle. In the first mode described, a user is able to choose any orientation (i.e., 0-360 degrees). For example, Fig. 2 shows rotation of 310 degrees. In the second mode, the user is limited to rotating window 10 to orientations of 0, 90, 180, and 270 degrees.7 As shown in Fig. 2, window 10 can be rotated about any of nine different rotation points 32, 34, 36, 38, 40, 42, 44, and 46. According to the 978 patent, any one of the nine points is user-selectable.8 B. The Asserted Claims of the 978 Patent RT asserts independent method claim 9. The claim reads as follows with the claim terms in dispute shown in bold: 9. A method of selectively rotating a computer display window having a display portion and a frame surrounding the display portion, the method comprising the steps of: determining a rotation point; and rotating the window about the rotation point at the discretion of the user; wherein the plane of the window, the plane of rotation, and the rotation point are coplanar. In addition, RT asserts dependent claims 11 and 13 as follows: 11. The method according to claim 9, wherein the step of rotating comprises the step of rotating the window by predetermined increments.                                                              6 978 patent at col. 3:39-44. 7 978 patent at col. 3:46-50. 8 978 patent at col. 4:22-31.   12 13. The method according to claim 9, wherein the step of rotating comprises the step of returning the window to a zero degree orientation. RT also asserts independent apparatus claim 14, which reads as follows with the disputed claim terms highlighted: 14. A system for selectively rotating a computer display window having a display portion and a frame surrounding the display portion, the system comprising: means for determining a rotation point; and means for rotating the window about the rotation point at the discretion of the user; wherein the plane of the window, the plane of rotation, and the rotation point are coplanar. In addition, RT asserts dependent claims 16 and 18 as follows: 16. The system according to claim 14, wherein means for rotating comprises means for rotating the window by predetermined increments. 18. The system according to claim 14, wherein means for rotating comprises means for returning the window to a zero degree orientation. IV. CONSTRUCTION OF DISPUTED TERMS A. Whether the Preamble Terms in Claims 9 and 14 Are Limitations According to RT, none of the preamble terms are limiting because the body of the claim defines a complete invention and the preambles merely state a purpose or intended use. Thus, RT contends, no construction of any term in the preamble is necessary. (Dkt. 80 at 5.) Defendants respond that the terms selectively rotating and computer display window are limitations and require construction. (Dkt. 84 at 8-10; Dkt. 85 at 2.) According to Defendants, the preamble term computer display window in the preamble provide antecedent basis for the window in the body of the claim, which requires the   13 preamble term to be limiting. Defendants further argue that clear reliance was placed on the preamble term selectively rotating during prosecution to define the claimed invention in distinguishing the prior art. (Id.) RT disputes that selectively rotating was relied upon in the prosecution to distinguish the invention over the prior art. Instead, reference to selectively rotating was an ancillary comment regarding the prior art made while refuting the legitimacy of the PTO s combination of two prior art references cited in a rejection of the pending claims. (Dkt. 87 at 4-5.) RT argues that computer display window in the preamble is not limiting because the body of the claim is structurally complete in reciting window and no reference to the preamble is necessary to understand the scope of the claim. (Dkt. 87 at 5-6.) Both parties rely upon Catalina Mktg. Int l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808-810 (Fed. Cir. 2002). (Dkt. 80 at 9; Dkt. 84 at 9.) In Catalina, the Court recognized that dependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention. See id. The Court further noted that clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention. See id. 1. computer display window As originally filed, claims 9 and 14 of application serial no. 09/295,164 contained the preamble language in question.9 In a final office action mailed June 12, 2001, the                                                              9   The 978 patent file history is appended to Apple Inc. s responsive Markman brief. 14 PTO rejected the claims as being obvious over a combination of Horvitz (US 6,016,145) and Jensen (US 5,956,043). In his Response After Final Office Action, on page 2, the applicant argued that Jensen used the term window to define a region of space, but [t]his is not the same as a computer display window as used by one of ordinary skill in the art and as used in the present claims. The PTO followed with an advisory action on July 20, 2001, stating that [a]s per claim 1, the computer display window is not part of the claim limitation. In responding to the advisory action on August 20, 2001, with a response titled Appeal Brief, the applicant stated: In response, the Advisory Action dated July 20, 2001, states that ¦the computer display window is not part of the claim limitation. However, independent claims 1, 9, and 14 contain a computer display window in the first line of each claim. This provides the antecedent basis for the window on line 4 of claim 1, on line 5 of claim 9, and on line 4 of claim 14 whereby the limitation is incorporated into the body of the claim. (Dkt. 84 at 8.) Accordingly, by the patentee s own admission, the preamble term computer display window provides necessary antecedent basis for window in the body of each of claims 9 and 14. Further, the applicant relied upon the preamble term as a limitation to distinguish the Jensen prior art. The Court finds that the preamble term computer display window is a limitation of the asserted claims. Further, because the preamble language of computer display window includes further defining structure of the limitation (i.e., having a display portion and a frame surrounding the display portion ), the Court finds that the entire preamble phrase relating to computer display window is a limitation of the asserted claims.   15 2. selectively rotatin ng Original independent claims 1, 9, and 14 wer rejected i an office a i , re in action maile ed ch a vious from Horvitz. In t office ac H the ction, at pag 4, the PTO ge O Marc 8, 2001, as being obv chara acterized Ho orvitz as dis sclosing a method and a system of selective rotating a m d ely comp puter display window by inherently determinin a rotatio point and rotating th y b y ng on d he window at the dis scretion of th user. he The PTO examiner s characteriz O s zation of Ho orvitz can b seen from Figure 3 o be m of vitz -4 hich es n r Horv (Dkt. 84- at 16), wh illustrate rotatable windows on a computer screen: w r out ical as y ut The windows 52 and 58 are rotatable abo the verti Y axis a desired by the user, bu such rotation is limited to pr l reselected or rientations o 0 degrees (shown) an 90 degree of s nd es ndow is in a planar view and not in a perspective view (i.e., 3-D) a as wherein the win wn. show   16 In response, on May 19, 2001, the applicant amended claims 9 and 14 to recite the additional limitation of wherein the plane of the window, the plane of rotation, and the rotation point are coplanar. In remarks, the applicant characterized Horvitz as providing a virtual three-dimensional workspace wherein rotation of each of the windows 52 and 58 is about a line, and the window edges remain parallel to two axes (i.e., Y-Z or Y-X). Further, the applicant said amendments to the claims made explicit, in contrast to Horvitz, that the geometry of window rotation is two-dimensional and coplanar. In the final office action, the PTO asserted new grounds and rejected the claims as being obvious from a combination of Horvitz and Jensen. At page 3 of the final office action, the PTO examiner noted that Horvitz does not disclose the claimed twodimensional, coplanar geometry. But, the PTO examiner advanced Jensen as disclosing window rotation with such geometry and the contention that it would have been obvious to one of skill in the art to incorporate the teaching of coplanar rotation in Jensen into Horvitz. An illustration of the PTO examiner s characterization of Jensen in seen in Figs. 13 and 14 of Jensen (Dkt. 85-9):   17 As can be seen, Jense shows two e en o-dimension coplanar rotation about a point o nal, r of rotati to any de ion esired angle of θ + Î (i.e 0-360 deg e., grees) in satisfaction of the coplana ar rotati ion limitatio in claims 9 and 14. on In the R Response Aft Final Off Action, applicant t ter fice traversed th rejection i he in sever ways. (Dk 85-10 at 4-6.) ral kt. 4 First, app plicant chara acterized Jen nsen as not disclosing rotation of a compute t er displa window. That is, applicant sa Jensen s tiled imag was not a window. ay a aid s ge cause Horv Howe ever, such characteriza ation was of no conse o equence bec vitz disclose ed rotati of a com ion mputer display window. Second, applicant dis a sputed that Horvitz s di H isclosure of limited win ndow rotatio on made obvious us of any for of rotatio including Jensen s co e se rm on g oplanar, two o-dimensiona al rotati ion. Third, app plicant said there was no motivation for one of skill to com n f mbine Horvit tz and Jensen as con J ntended by the examiner t r.   18 Fourth, and finally, applicant said that because selectively rotating a window to any desired angle, as in Jensen, is not limited only to angles of rotation of 0, 90, 180, 270, and 360 degrees, the window edges will not be maintained parallel to the x, y, and z axes, which according to applicant is a principle of operation of Horvitz. The applicant stated: As noted in the Amendment dated May 19, 2001, "[i]n all instances [as taught by Horvitz], the edges of the window always remain parallel to two of the three X-, y-, and z-axes." By contrast, a window that has been selectively rotated to an angle, other than 0, 90, 180, 270, and 360 degrees, as claimed will have none of its edges parallel to the three x-, y-, and z-axes. Thus, the suggested modification would result in a change to the principle of operation of Horvitz. As a result, the teachings of the references are not sufficient to render the claims prima facie obvious. (emphasis added) (Dkt. 85-10 at 6.) In this statement, the applicant distinguished Horvitz on the basis of the as claimed rotation (i.e., selectively rotating in the preamble), which is not limited to angles of rotation of 0, 90, 180, 270, and 360 degrees but extends to any angle of rotation within the full range of 0-360 degrees. Applicant did so as a predicate to his argument that despite Jensen showing selectively rotating in a coplanar, two-dimensional geometry, as recited in the claims, so modifying Horvitz would defeat Horvitz s threedimensional workspace capability purpose. The Court finds that the applicant relied upon the preamble term selectively rotating to distinguish Horvitz and provide the underpinning for his argument that combining Horvitz and Jensen in an obviousness rejection was improper. Doing so transformed the preamble term into a claim limitation because, as stated by applicant, it defines, in part, the claimed invention.   19 Accordingly, the Court finds that the preamble term selectively rotating is a limitation of the asserted claims. B. Selectively Rotating a Computer Display Window Having determined that the preamble term selectively rotating is a claim limitation, the Court must determine what construction, if any, is necessary. The Parties positions are: RT s Proposed Construction No construction necessary. Defendants Proposed Construction Rotating a computer display window such that any angle of orientation may be chosen, including an angle other than 0, 90, 180, 270, and 360 degrees. RT argues that the term needs no construction because it is not a limitation. RT further argues that Defendants construction ignores preferred embodiments in the specification that do limit rotation to 90 degree increments. (Dkt. 87 at 6-8.) Defendants argue that the scope of the specification permits a user to select the amount of window rotation in any amount. (Dkt. 84 at 10.) Further, Defendants contend, the problem being addressed by the 978 patent is to provide a user with an ability to rotate a window as needed or desired. (Id.) Defendants argue that the prosecution history demonstrates a definitional meaning given to the term in order to obtain allowance and specifically to distinguish the Horvitz prior art. (Dkt. 84 at 7-9.) RT is correct that the specification describes two modes of window rotation. In one mode, the user is able to choose any degree of rotation within a 360 degree circle. In the other mode, a user s choice of rotation is limited to preselected degrees of rotation such as 0, 90, 180, and 270 degrees. Applied in its broadest sense, selectively rotating could include either mode. However, applicant s statement in his response to the final   20 office action rejection concerning the alleged improper combination of Horvitz and Jensen, as set forth above, demonstrates that applicant ascribed a particular meaning to selectively rotating and put one of skill in the art on notice as to that particular meaning. In contrast to Horvitz s limited rotation to 0, 90, 180, 270, and 360 degrees, the selectively rotating as claimed is, like in Jensen, rotation to any angle of rotation desired. That is to any angle from 0 degrees to 360 degrees including, for example, rotation to 310 degrees as illustrated in Fig. 2. The recitation in Defendants construction of any orientation captures the limitation of any degree of rotation within a 360 degree circle. Thus, the portion including an angle other than 0, 90, 180, 270, and 360 degrees is superfluous and unnecessary. Accordingly, the Court construes selectively rotating a computer display window to mean rotating a computer display window such that any angle of orientation may be chosen. C. Computer Display Window/Window Having determined that the preamble term computer display window is a claim limitation, the Court must determine what construction, if any, is necessary for the term window that appears in the body of each asserted claim. The Parties positions are: RT s Proposed Construction Defendants Proposed Construction No construction necessary, in the A GUI that is displayed on the display alternative only: a graphical user interface monitor or screen where the GUI may be window. sized to display all or only a portion of total information made available for viewing by a program.   21 RT relies upon its contention the preamble term computer display window is not limiting. As to the term window used in the body of each claim, RT says it is easily understood as a GUI and no construction is necessary. However, if construction is necessary, RT alternatively proposes graphical user interface window. RT also disputes Defendants construction as being overly limited to one disclosed embodiment. (Dkt. 80 at 12-13.) Defendants contend that the applicant during prosecution used the term in a manner that defined it to be a displayed GUI that can be resized. (Dkt. 85 at 9.) Further, the patent specification defines a window according to its inherent characteristics, which includes resizing (Dkt. 85 at 10.) Finally, Defendants point to both Apple s OS window and Microsoft s OS window, which are resizable, as examples of a window in the specification. As the parties agree, the specification defines computer display window and window as being a GUI. While a fundamental characteristic of a typical GUI at the time of filing for the 978 patent may have been a characteristic of being resizable, nowhere does the patented invention implicate such a requirement as Defendants suggest. Conversely, RT s alternative construction merely states the agreement of the party that a window is a GUI and then restates window. Accordingly, the Court construes computer display window and window to mean a GUI displayable on a monitor or a screen.   22 D. Display Portion As indicated above, because the preamble term computer display window is a limitation, so is the term display portion. The Court must determine whether construction is necessary and if so what that construction should be. The Parties positions are: RT s Proposed Construction No construction necessary. Defendants Proposed Construction The visible/viewable portion of the total information that a program makes available for viewing. RT contends that the term is one of common usage and needs no construction. Further, RT says, Defendants impose unfounded limitations. (Dkt. 80 at 13-14.) Defendants point to what they contend to be a specific definition in the specification in support of their construction. (Dkt. 85 at 14.) Specifically, Defendants identify: a window may be sized to display all or only a portion of the total information made available for viewing by the program. If the window displays only a portion of the total information, then the user is provided with one or more scroll bars that allow the user to move the display portion to view other portions of the total information 1:44-49 (emphasis added). Defendants further argue that inclusion of visible/viewable in the construction clarifies that the term does not refer to program portions that are obscured from the user. (Id.) The import of such definition in the specification is that a display portion is where information is viewed. In terms of the patent s objective of facilitating human interfacing with a computer, in the context of rotating windows on a computer display, only the portion where information is viewed is of consequence. That a program is what makes information available for viewing is ancillary to that objective.   23 Accordingly, the Court construes display portion to mean portion of the window for viewing information. E. A Frame Surrounding the Display Portion As indicated above, because the preamble term computer display window is a limitation, the term a frame surrounding the display portion is also a limitation. The Court must determine whether construction is necessary and if so what that construction should be. The Parties positions are: RT s Proposed Construction No construction necessary. Defendants Proposed Construction A border displayed on the graphical user interface surrounding the display portion. RT argues that the term is a common one that is well understood and, thus, no construction is necessary. RT criticizes Defendants construction as including extraneous limitations. (Dkt. 80 at 14-15.) Defendants advance the position that the term designates a border on every side of the display portion and relies upon the plain and ordinary meaning of the term. According to Defendants, consistent with the plain and ordinary meaning, the specification uses the term frame to mean that there is a surrounding that encircles and encloses the display portion. (Dkt. 84 at 13.) Further, Defendants argue the frame must be visibly displayed because it is specified to be part of the computer display window. (Dkt. 84 at 14.) The parties appear to agree that the term is well understood and has a plain and ordinary meaning. However, only Defendants propose what that meaning should be. Their belief that the term frame carries a plain and ordinary meaning of being a border is consistent with what is described and exemplified in the specification. Their   24 construction, however, includes a superfluous limitation of displayed on the graphical user interface. Moreover, including surrounding the display portion in the construction, which is language found in the claim itself, is unnecessary. The term surrounding requires no construction. The term display portion is otherwise construed and that construction is adopted. Accordingly, the Court construes a frame to mean a border. F. Determining a Rotation Point The Parties positions are: RT s Proposed Construction No construction necessary. Defendants Proposed Construction Rotation point is determined by the user. RT contends that Defendants improperly narrow claim scope to only one embodiment with their construction. Specifically, RT points to a description in the specification of an alleged embodiment providing a preselection routine for determining rotation points. (Dkt. 80 at 15-16.) Defendants argue the specification teaches only that the user determines the rotation point. (Dkt. 84 at 15.) They say what RT points to is the preselection routine presented to the user before rotation begins where default rotation points are shown to the user and the user determines which rotation point is to be applied. (Dkt. 84 at 16.) The Court finds that Defendants proposed construction fails to address the term itself. Defendants proposed construction simply restates the words of the claim in a rearranged order and then appends an extraneous limitation that is without support in the claims. The Court rejects Defendants attempt to so limit the claims. Accordingly, the Court concludes that no construction is necessary.   25 G. Rotation Point The Parties positions are: RT s Proposed Construction Defendants Proposed Construction No construction necessary, in the Center of rotation. alternative only: a point about which a window is rotated. RT contends that its alternative construction follows the plain and ordinary meaning of the term. (Dkt. 80 at 16-17.) According to Defendants, the plain and ordinary meaning of the term rotation is to turn around a center point or turn in a circle as illustrated in the specification where rotation point 30 is shown in Figure 2. (Dkt. 85 at 7.) Defendants further argue that RT s alternative construction leaves the rotation point untethered from the rotating window. (Id.) Both parties constructions give the essence of the plain and ordinary meaning of the term. One of skill would readily understand such meaning and scope. Further, Defendants construction and their arguments in support of it do not, as RT contends, seek to limit the term to only one embodiment where rotation point 30 in Fig. 2 is in the center of the window. Nevertheless, Defendants contention is vague as to RT s proposed construction permitting a rotating window to be untethered from its rotation point. Clear to one of skill is that, because the window is rotating about its rotation point, the rotation point is necessarily on or within the window, although not necessarily at the center of the window. Accordingly, the Court finds that no construction is necessary.   26 H. Rotating the Window About the Rotation Point at the Discretion of the User The Parties positions are: RT s Proposed Construction No construction necessary, in the alternative only: rotating the window about the rotation point upon receipt of a user input. Defendants Proposed Construction Apple: moving each part of the window in a circular path about the rotation point such that the user chooses the window orientation. Samsung & Motorola: turning the window about a rotation point in a circular path, where the user may select any amount of rotation. Alternatively: this term is indefinite under 35 U.S.C. § 112, second paragraph. The parties first dispute whether rotating the window about the rotation point requires the window to follow a circular path as it rotates about the rotation point. RT contends that a limitation requiring in a circular path is unwarranted because the specification does not restrict window rotation to a specific path. (Dkt. 80 at 19.) Defendants respond that the specification that rotation of the window is based on a 360 degree circle and thus mandates a circular path about the rotation point. (Dkt. 84 at 17; Dkt. 85 at 15-17.) Defendants specifically point to col. 3:7-12: [d]egrees of rotation will be based on a 360 degree circle measured in a counter-clockwise manner about a rotation point (not shown) with 0 degrees to the right, 90 degrees above, 180 degrees to the left, and 270 degrees below the rotation point. (Dkt. 85 at 16.) RT attempts to deflect the importance of this description by saying that the specification s reference to degrees of rotation is merely stating that a user can select a   27 new orientation but says nothing about the path taken to get there. (Dkt. 87 at 13.) In fact, argues RT, the specification never discusses any specific path for the rotation. (Id.) However, to one of skill in the art, the specification is replete with descriptions and illustrations of rotating the window in a circular path. The illustration of window rotation presented in Figs. 1 and 2 shows movement of the window around rotation point 30 in a circular path. As Defendants contend, one of skill would read and understand rotating the window about the rotation point in a mathematical sense, which is rotation in a circular path. (Dkt. 84 at 17.) The Court finds that Defendants are correct that rotating the window about the rotation point means in a circular path. The parties also dispute the meaning of at the discretion of the user. RT contends that this portion of the claim term means that rotation occurs upon receipt of a user input. RT cites the specification in support, but such cite only discloses the user manipulating the rotation button 28. (Dkt. 87 at 14.) As Defendants suggest, what RT proposes adds a conditional or temporal limitation that is not present in the claims as written, the specification, or the prosecution history. (Dkt. 84 at 17.) The Defendants argue that at the discretion of the user means that the user chooses the window orientation or that the user may select any amount of rotation. In support, Defendants point to the specification describing a user s ability to choose any orientation using the rotation button. (Dkt. 84 at 17; Dkt. 85 at 18.) The Court agrees with Defendants. The rotation of the window about the rotation point is a matter of user choice. Thus, the user determines to what extent the window is   28 rotated. This determination is necessarily a matter of user discretion since it is based on user choice. Accordingly, the Court construes the term rotating the window about the rotation point at the discretion of the user to mean at the user s determination, turning the window in a circular path about a rotation point. I. Means-Plus-Function The parties agree that the following terms are written in a means-plus-function format and are to be construed according to §112, ¶ 6. (Dkt. 80 at 22-27; Dkt. 84 at 2023; Dkt. 85 at 19-23.) 1. means for determining a rotation point The Parties positions are: RT s Proposed Construction Function: determining a rotation point Defendants Proposed Construction Function: determining a rotation point Structure: a computer program that selects Structure: not disclosed (i) a default rotation point, or (ii) a userselected rotation point for a window, and equivalents thereof. RT contends that the specification discloses that a program allows the user to select a rotation point and that such is sufficient disclosure of structure. (Dkt. 80 at 24.) Specifically, RT argues that the preselection routine described is a computer program that carries out a step of determining a rotation point. (Dkt. 87 at 16.) Defendants respond that for a computer-related invention, the law does not permit the disclosure of software alone to structurally support a means-plus-function limitation.   29 Rather, an algorithm expressed in some fashion by a step-by-step procedure must be disclosed. (Dkt. 85 at 21-22.) Defendants contend that nowhere does the specification clearly link or associate any structure to the function recited in the claim as is required of the means-plus-function claim format. (Dkt. 85 at 20.) Next, Defendants contend that the specification does not disclose an algorithm capable of performing the function recited in the claim. (Dkt. 85 at 20-21.) The Court agrees with Defendants. Under applicable legal authority, when the specification simply restates the function to be performed, there is no sufficient structure under § 112, ¶ 6. See, e.g., Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008). Accordingly, the Court finds that claim 14 is invalid for indefiniteness because no corresponding structure is disclosed in support of the means for determining a rotation point limitation. 2. means for rotating the window about the rotation point at the discretion of the user / means for rotating the window by predetermined increments / means for returning the window to a zero degree orientation The Court having determined that Claim 14 is invalid for indefiniteness finds that the terms means for rotating the window about the rotation point at the discretion of the user, means for rotating the window by predetermined increments and means for returning the window to a zero degree orientation as found in Claim 14 and in Claims 16 and 18, which depend upon Claim 14, need not be reached by the Court. The Court,   30 because Claim 14 is held invalid as indefinite, declines to construe such other terms as found within Claim 14 or those other claims that depend from it. V. CONCLUSION The Court adopts the constructions set forth in this opinion for the disputed terms of the patent-in-suit. The parties are ORDERED that they may not refer, directly or indirectly, to each other s claim construction positions in the presence of the jury. Likewise, the parties are ORDERED to refrain from mentioning any portion of this opinion, other than the actual definitions adopted by the Court, in the presence of the jury. Any reference to claim construction proceedings is limited to informing the jury of the definitions adopted by the Court. Within thirty (30) days of the issuance of this Memorandum Opinion and Order, the parties are hereby ORDERED, in good faith, to mediate this case with the mediator agreed upon by the parties. As a part of such mediation, each party shall appear by counsel and by at least one corporate officer possessing sufficient authority and control to unilaterally make binding decisions for the corporation adequate to address any good faith offer or counteroffer of settlement that might arise during such mediation. Failure to do so shall be deemed by the Court as a failure to mediate in good faith and may subject that party to such sanctions as the Court deems appropriate.   31 So Ordered and Signed on this Aug 1, 2013   32

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