United States District Court, E.D. Virginia, Richmond Division
MEMORANDUM OPINION (CLAIM CONSTRUCTION)
E. Hudson United States District Judge
a patent infringement action filed by Plaintiff ORBCOMM, Inc.
against Defendant CalAmp Corp. It is before the Court for the
construction of the disputed claim terms in the
patent-in-suit. Both parties have filed memoranda of law in
support of their respective positions, and the Court
conducted a claim construction hearing on January 5, 2017.
Upon careful consideration of the entire record, the
Court's construction of the disputed terms follows.
is one patent in suit: United States Patent No. 6, 611,
686 (filed May 24, 1999) ("the '686
Patent" or "the Patent"). The '686
Patent is titled "Tracking Control and Logistics System
and Method." It relates to remote tracking, monitoring,
and controlling of a variety of targets such as cars, trucks,
ships, and cargo. ORBCOMM alleges that CalAmp has been and is
engaged in making, using, selling, offering for sale, and/or
importing into the United States, a combination of products
that incorporate ORBCOMM's patented system.
parties contend that there are five terms contained in the
Patent that require construction by the Court.
STAMENT OF THE LAW
construction is a question of law for the Court to decide.
Markman v. Westview Instruments, Inc., 517 U.S. 370,
372 (1996). Generally, claim terms are given their
"ordinary and customary meaning." Phillips v.
AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en
banc) (internal quotations omitted). "[T]he 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 application."
Id. at 1313. The Court may "depart from the
plain and ordinary meaning in only two instances": when
the patentee acts as his own lexicographer or when the
patentee disavows the full scope of the claim term in the
specification or during prosecution. Poly-America, L.P.
v. API Indus., Inc., 839 F.3d 1131, 1136 (Fed. Cir.
2016) (citing Hill-Rom Servs., Inc. v. Stryker
Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014)).
the disputed terms begins with a review of the intrinsic
evidence, including the language of the disputed claim, the
other claims, the specification, and the prosecution history.
Phillips, 415 F.3d at 1312; see also Medrad,
Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed.
Cir. 2005). The specification has been characterized as the
"single best guide to the meaning of a disputed
term" and is usually "dispositive."
Phillips, 415 F.3d at 1315; see also United
States v. Adams, 383 U.S. 39, 49 (1966) ("It is
fundamental that claims are to be construed in the light of
the specifications and both are to be read with a view to
ascertaining the invention."). Thus, "[t]he
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
(quoting Renishaw PLC v. Marposs Societa'per
Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)). "A
claim construction that excludes a preferred embodiment,
moreover, Ms rarely, if ever, correct.'" Sandisk
Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1285 (Fed.
Cir. 2005) (quoting Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996)).
considered less reliable than intrinsic evidence, extrinsic
evidence, including dictionaries, learned treatises, and
expert testimony, can help the Court determine what a person
of ordinary skill in the art would understand claim terms to
mean, but it should not be used to support a construction
that contradicts the intrinsic evidence. Phillips,
415 F.3d at 1317-19, 1322-23.
the above principles in mind, the Court will now turn to the
terms in dispute.
network" is one of the central terms at issue in this
case, as it is used in every asserted claim of the '686
Patent. ORBCOMM contends that "wireless network"
has an ordinary meaning and thus no further construction is
required by the Court. CalAmp, however, submits that the
Court should construe "wireless network" to mean
"wireless pager network." Put simply, this
dispute is about whether the patent encompasses all forms of
wireless communication networks or is constrained to pager
networks alone. Because the patent specification disavows
other types of wireless networks, the Court will adopt Cal
Amp's position that the term "wireless network"
means "wireless pager network." To disavow the full
scope of a claim term, the specification must contain
"clear and unequivocal evidence that the claimed
invention includes or does not include a particular
feature." Poly-America, 839 F.3d at 1136. While
this is an "exacting" standard, the disavowal
"need not be explicit." Id. Here, the
specification contains clear and unequivocal evidence that
the invention is limited to pager networks.
invention claimed in the '686 Patent responded to the
need for a low-cost asset monitoring system. The
specification states that "the present invention
provides a device which costs a fraction of presently
available devices and also operates at a fraction of the cost
of presently available services that allow for monitoring,
controlling, and logistics." '686 Patent Bl col. 11.
66-col. 2 1. 2. The lowest cost system in the prior art used
a "cellular telephone-based modem" which implies
the use of a cellular telephone wireless network.
Id. col. 111. 36-39. But with this invention,
"because a pager network is used ... costs for usage are
kept much lower as compared with cellular telephone
networks." Id. col. 6 11. 53-55. Furthermore,
the specification is riddled with references to the invention
using a pager network, pager modem, and pager antenna.
However there is not a single reference in the specification
to a generic "wireless network" outside of the
context of pager communication. In the aggregate, the
persistent classification of the invention as taking
advantage of the cost-savings of a pager network, coupled
with the repeated disparagement of more expensive cellular
telephone networks, constitutes clear and unequivocal
evidence of a disavowal of non-pager networks.
the repeated references to pager networks throughout the
specification, ORBCOMM argues that there cannot be a
disavowal of all non-pager wireless networks because of a
single instance where the specification expressly mentions
communications through pocket radio modems and satellite
communication transceivers. However, the section of the
specification to which ORBCOMM references only states that
the patented system is "operable for communication with
other types of transmission, " such as radio modems and
satellite communications. Id. col. 14 11. 20-28.
Merely because the system may be compatible with
these other types of communications does not change the fact
that the system itself must make use of a pager
ORBCOMM cites the doctrine of claim differentiation as
another reason why "wireless network" should be
construed broadly. This doctrine is "based on the common
sense notion that different words or phrases used in separate
claims are presumed to indicate that the claims have
different meanings and scope." Starhome GmbHv.
AT& T Mobility LLC, 743 F.3d 849, 857-58 (Fed. Cir.
2014) (quoting Karlin Tech, Inc. v. Surgical Dynamics,
Inc., Ill. F.3d 968, 971-72 (Fed. Cir. 1999)). ORBCOMM
argues that because some claims use the term "wireless
network" while others use the term "pager wireless
communication network" those terms should be given
support of this assertion, ORBCOMM urges the Court to compare
Claim 15 with Claim 29 and claim 48 with claim 50 to find
that the inclusion of a pager network is the only meaningful
distinction. However, that is simply not the case. And where
the contrasted claims differ in more ways than only the
disputed term, the claim differentiation argument is
"weak at best." GPNE Corp, v. Apple Inc.,830 F.3d 1365, 1371 (Fed. Cir. 2016). Here, there are
multiple distinctions between the claims indicated by
ORBCOMM. While Claim 15 requires the use of GPS for location
information, Claim 29 only requires a more generic
"position sensor." Compare '686 Patent
CI col. 3 11. 17-18, with '686 Patent Bl col. 18
1. 24. And Claim 15 requires the computer network to
communicate "through an Internet connection, "
while Claim 29 does not. Compare '686 Patent CI
col. 3 11. 5-7, with '686 Patent Bl col. 18 ...