on track innovations construction order

7/28/2019 On Track Innovations Construction Order

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UNITED STATES DISTRICT COURTSOUTHERN DISTRICT OF NEW YORK----------------------------------------------------------------------)(On Track Innovations Ltd.

Plaintiff,-v-

T-Mobile USA, Inc.Defendant.

----------------------------------------------------------------------)(ALISON J. NATHAN, District Judge:

U ~ s n N vDOCUME- NTEL':!CTRONICALLY FILED'DOC II:DATE F = I L = E i l . . . . . , . . J T t U ~ N : - - 2 - - - 0 - 2 t - g l . -

12 Civ. 2224 (AJN)MEMORANDUM

AND ORDER

Plaintiff, On-Track Innovation ("OTI"), the current owner of U.S. Patent No. 6,045,043("the '043 Patent"), alleges that defendant T-Mobile USA, Inc. ("T-Mobile") infringed upon itspatent. Following briefing, the Court held a technology tutorial on May 7,2013, and a Markmanhearing on May 9, 2013, to hear testimony and argument on the technology and the meaning ofthe disputed terms in the patent at issue. See Markman v. Westview Instruments, Inc., 517 U.S.370 (1996). As set forth below, the Court adopts Plaintiffs proposed constructions of all fourdisputed terms. 1

I. CLAIM CONSTRUCTION STANDARD"The claims of a patent are the numbered paragraphs at the end of the patent that define

the scope ofthe invention and thus the scope of the patentee's right to exclude others frommaking, using or selling the patented invention." Plasmart Inc. v. Wincell Int'l Inc., 2007 WL3355509, at *2 (S.D.N.Y. Nov. 8,2008) (citing AstrazenecaAB v. Mutual Pharm. Co., Inc., 384F.3d 1333, 1336 (Fed Cir. 2004)). "Claim construction is the judicial statement of what is and isI The parties originally disputed five terms, but informed the Court at the beginning of the Markman hearing thatthey had settled upon Plaintiff's proposed construction of the fifth disputed term. (5/9/13 Tr. at 58:9-11,61:8-9).

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Case 1:12-cv-02224-AJN Document 52 Filed 06/20/13 Page 1 of 26


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not covered by the technical terms and other words of the claims." Netword, LLC v. CentraalCorp., 242 F.3d 1347, 1352 (Fed. Cir. 2001) (citing United States Surgical Corp. v. Ethicon,Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997 (internal quotation marks omitted). Courts shouldgive the words of a claim "their ordinary and customary meaning," Phillips v. AWHCorp., 415F.3d 1303, 1312 (Fed Cir. 2005) (en banc) (citation omitted), which is defined as "the meaningthat the term would have to a person of ordinary skill in the art in question at the time of theinvention." Id. at 1313.

In construing a claim, a court "should look first to the intrinsic evidence of record, i. e.,

the patent itself, including the claims, the specification and, if in evidence, the prosecutionhistory." PC Connector Solutions LLC v. SmartDisk Corp., 406 F.3d 1359, l362 (Fed. Cir.2005) (citation omitted). A court may consider extrinsic evidence, such as expert and inventortestimony, dictionaries, and treatises, but such extrinsic evidence is "less significant than theintrinsic record in determining the legally operative meaning of claim language." Phillips, 415F.3d at 1317 (citation omitted); see also id. at 1322-23 ("Judges are free to consult dictionariesand technical treatises . . . when construing claim terms, so long as the dictionary definition doesnot contradict any definition found in or ascertained by a reading of the patent documents.")(citation omitted). If the meaning of the claim is clear from the intrinsic evidence alone, resort toextrinsic evidence is improper. Boss Control, Inc. v. Bombardier Inc., 410 F.3d l372, l377(Fed. Cir. 2005). "Expert testimony can be useful to a court . . . to provide background on thetechnology at issue, . . . or to establish that a particular term in the patent or the prior art has aparticular meaning in the pertinent field." Phillips, 415 F.3d at l318.

II. 'DISCUSSION

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The Court assumes familiarity with the briefing and the background of the technology,which was addressed in the expert affidavits ofAlyssa Apsel and Jack H. Winter, and aboutwhich the Court received presentations at the May 7, 2013 technology tutorial. Generallyspeaking, the technology at issue involves devices employing both contact and contactless modesof communication, such as so-called "hybrid" smart cards. These devices typically employ botha wireless mode of operation-often in the form of a coil antenna wrapped around the edges ofthe device enabling "Near Field Communication" (5/7/13 Tr. at 16:10-17: 10)-and a contactmode of operation, by which the microprocessor communicates with a separate device through adirect contact.

In particular, the '043 Patent deals with connecting a microprocessor with both thecontact and contactless modes of communication through separate, dedicated lines of connection.The '043 patent obviates the need to use a switching device-as was employed in the older U.S.Patent No. 5,206,495 ("Kreft '495 Patent") and, in a different manner, U.S. Patent No. 5,773,812("Kreft'812 Patent")-to connect the microprocessor with both the contact and contactlesssources of data. The use of separate, dedicated connections between the microprocessor and thedata entry points allows the microprocessor to (1) use different protocols for communicatingthrough contact and contactless mode and (2) alter its protocol capabilities through softwareupdates rather than hardware re-tooling. (5/7/13 Tr. at 29:4-12,30:7-20).

With this background in mind, the Court turns to the disputed terms of the '043 Patent.A. "A . . . card having contact and contactless modes ofoperation."The preamble to the '043 patent describes the invention as a "card having contact and

contactless modes of operation." (,043 Patent, Col. 13,38-39).1. The Preamble Plainly Refers to a "Card"

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As an initial matter, OTI argues that the preamble's reference to a "card" is atypographical error and that the inventor clearly intended to obtain a patent for a "device." TheCourt rejects Plaintiffs argument because both the intrinsic and extrinsic evidence indicates thatthe word "card" was used as was intended in the patent.

Though the patent application was originally filed with the word "device" in thepreamble, (Yonay Decl. Ex. 2A), the word "device" was replaced by "card." (See, e.g., '043Patent Col. 13,38-39). OTI argues that because this change was not marked as an amendment-either by brackets or underlining-the obvious conclusion is that it was a typographicai error.The Court disagrees.

The word "card" is used all over the patent application, and not just in the disputedpreamble. The following are just a few examples:

"It is further understood that whilst the invention has been described withparticular reference to a data transaction device in the form of a card, any othersuitable device is contemplated within the framework of the invention as definedin the appended claims. Likewise, such a device need not be a standalone modulebut may, if desired, be integrated with other hardware which mayor may not beportable." ('043 Patent, Col. 13,30-37). "It is an object of the invention to provide a data transaction card having contactand contactless modes of operation . . . ." ('043 patent, Col. 2,25-27) "In accordance with a broad aspect of the invention there is provided a datatransaction card having contact and contactless modes of operation." ('043patent, Col. 2, 34-36). "Yet a further consideration associated with the increasing use of smart cards isthe need to customize each smart card for the particular application for with it was

destined. Obviously, the provision of both contact and contactless modes of datatransfer increases the card's versatility . . . ." ('043 patent, Col. 2,12-18).Certainly the Court's conclusion that use of the word "card" was intentional is not

detracted from by the fact that OTI's applications in Israel (which was filed in English),

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Australia, and Europe all referred to "cards." (T-Mobile Opp. Br. Exs. B, F-G; Lobenfeld Decl.Ex. J). The Federal Circuit has advised that because "the theories and laws of patentability varyfrom country to country, as do examination practices," Heidelberger Druckmaschinen AG v.Hantscho Commercial Prods., Inc., 21 F.3d 1068,1072 n. 2 (Fed. Cir. 1994), "precedentcautions against indiscriminate reliance on the prosecution of corresponding foreign applicationsin the claim construction analysis." AlA Engineering Ltd. v. Magotteaux Int '! SIA, 657 F.3d1264, 1279 (Fed. Cir. 2011). Plaintiff exaggerates these holdings, however, in asserting that "asa matter of law, T -Mobile cannot rely on the prosecution history of Israeli and European

applications." (Reply at 4). The Court considers these foreign applications only in that theyfurther undermine OTI's ipse dixit that it wrote "card" when it really meant to write "device."

The Court further notes that on has presented no evidence that it sought to fix itssupposed typographical error during the course of prosecution, see 37 C.F.R. 1.312, or that itapplied for a Certificate ofCorrection after the patent issued. See 35 U.S.c. 355. At oralargument, OTI conceded that it is not asking the Court to "correct" this supposed mistake.(5/9/13 Tr. at 70:5-8). Instead, Plaintiff's counsel argued that "as part of claim construction, thatchange should not be considered as an intent or as some reliance on that word for patentability,because it was unintentional." (Id.). But it is long-established that the "inventor's subjectiveintent in using a term is irrelevant" for claim construction purposes. See, e.g., Gen. ProtechtGrp., Inc. v. Int'! Trade Commc'n, 619 F.3d 1303, 1310 (Fed. Cir. 2010) (citing HowmedicaOsteonics v. Wright Med. Tech., 540 F.3d 1337,1347 & n.5 (Fed. Cir. 2008)).

In short, the Court concludes that the word "card" as used in the preamble means "card."2. The Preamble Does Not Impose a Limition on the Scope ofthe Claim

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Nonetheless, although rejecting OTI's argument that "card" should be read to meansomething other than what it says, the Court concludes that the preamble, including the use of theword "card," poses no limitation on the scope of the claim.

A preamble "generally" does "not limit the claims." Am. Medical systems, Inc. v. Bioliec,Inc., 618 F.3d 1354,1358 (Fed. Cir. 2010) (quoting Allen Eng'g Corp. v. Bartell Indus., Inc., 299F.3d 1336, 1346 (Fed. Cir. 2002)). Whether to treat a preamble as a limitation is a determination"resolved only on review of the entirety of the patent to gain an understanding of what theinventors actually invented and intended to encompass by the claim." Catalina lvfktg. Int'l v.Coolsavings.com, Inc., 289 F.3d 801,808 (Fed. Cir. 2002); see also Applied Materials, Inc. v.Advanced Semiconductor Materials Am., Inc., 98 F.3d 1563, 1572-73 (Fed. Cir. 1996) ("Whethera preamble stating the purpose and context of the invention constitutes a limitation of theclaimed process is determined on the facts of each case in light of the overall form of the claim,and the invention as described in the specification and illuminated in the prosecution history.")."In general, a preamble limits the claimed invention if it recites essential structure or steps, or ifit is necessary to give life, meaning, and vitality to the claim. Clear reliance on the preambleduring prosecution to distinguish the claimed invention from the prior art may indicate that thepreamble is a claim limitation because the preamble is used to define the claimed invention." Inre Cruciferous Sprout Litig., 301 F.3d 1343, 1347 (Fed. Cir. 2002) (internal citation andquotation marks omitted). On the other hand, a preamble is not a claim limitation where it onlystates a purpose or intended use for an invention that that is defined in a structurally completeform in the claim body. Rowe v. Dror, 112 F.3d 473,478 (Fed. Cir. 1997). The Federal Circuithas reminded that "[t]he inventor of a machine is entitled to the benefit of all the uses to which itcan be put, no matter whether he had conceived the idea of the use or not." Catlina Marketing

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lnt'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801,809 (Fed. Cir. 2002) (quoting Roberts v. Ryer,91 U.S. 150, 157 (1875)).

Defendant principally argues that the word "card" imposes a limitation on the claimbased on the rule that if a claim derives antecedent meaning from the preamble, then thepreamble may act as a necessary component of the claimed invention. See Highmark, Inc. v.Allcare Health Mgt. Sys., Inc., 687 F.3d 1300, 1311 (Fed Cir. 2012).2

The preamble and Claim 1 begin as follows:We claim: 1. A data transaction card having contact and contactless modes ofoperation, comprising:A semiconductor device for operating in said contact and contactless modes inaccordance with a respective contact or contactless data communications protocolA contact field including contacts fixedly connected to the semiconductor deviceduring both said contact and contactless modes, and allowing data transmissionbetween the contacts and the semiconductor device . . . .

('043 patent, Col. 13 at 39-47) (emphasis added).Ordinarily "said" refers to an antecedent, and the meaning is determined by referring

back to what was previously written. See Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d1338, 1343 (Fed. Cir. 2008) ("In grammatical terms, the instances of 'said []' in the claim areanaphoric phrases, referring to the initial antecedent phrase. ").

Here, the claim refers to "said contact and contactless modes," which the Courtunderstands to mean "the previously mentioned" contact and contactless modes or the"aforesaid" modes. The Court agrees with Plaintiff that the word "said" adds nothingsubstantive that changes the scope of the patent. The word "said" serves to limit a reader' s2 At oral argument, Defendant argued for the first time that the "card" must specifically be a "data transaction card."(See, e.g., 5/9/13 Tr. at 87: 16-17; 88:5-7). The Court need not address this argument because it concludes that theword "card" does not limit the scope of the claim.

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confusion upon seeing the phrase "contact and contactless modes" repeated in consecutive lines.To the extent that the word "said" imports any meaning from the preamble into the body of theclaim, such import is limited to "contact and contactless modes" and does not extend to"card[ s]."

To adopt Defendant's preferred reading and include "card" within the ambit of what"said" refers to in the body of the claim would, in effect, re-write the claim to state "asemiconductor device for operating in said card's contact or contactless mode." But that is nothow the claim is written. For this reason, the Court rejects Defendanfs argument that the body

of the claim asserts that "the card itself' has two modes operation. Instead, the claim is clear thatit covers a semiconductor device capable of operating in two modes, not a card operating in twomodes. ('043 Patent, Col. 13,41-42).

Other intrinsic evidence found within the '043 Patent buttresses the Court's conclusionthat the term "said" would not be read by a reader ofthe patent skilled in the art as posing alimitation on the scope of the claim. In particular, the patent states that "whilst the invention hasbeen described with particular reference to a data transaction device in the form of a card, anyother suitable device is contemplated within the framework of the invention as defined in theappended claims. Such a device need not be a standalone module but may, if desired, beintegrated with other hardware which mayor may not be portable." ('043 Patent, Col. 13, lines35-37). This intrinsic evidence indicates that the inventor contemplated and intended to claim adevice broader than merely a card. Any reader of the patent, having seen this language, wouldhave thereafter understood that the use of the word "card" in the preamble was not intended topose a limitation on the scope of the claim, and that the use of the word "said" in the claim wasnot intended to narrow the scope of the claim to encompass only cards. Tellingly, at oral

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argument, Defendant 's counsel conceded that he could not effectively rebut the significance ofthis passage in the patent. (5/9/13 Tr. at 79:20-80:18). Additionally, the "Background of theInvention" section of the patent states that '" contact' and 'contactless' devices are known per se.Generally, such devices are in the form of smart cards . . . . " ('043 Patent, Coli, 10-13). Thepatent therefore makes clear, by way of negative implication, to anyone reading it in its entiretythat these devices sometimes come in forms other than smart cards. Thus, while, as T-Mobilenotes in its briefing (see, e.g., Def. Opp. Br. at 5), a card is a contemplated embodiment, it is notthe only embodiment that falls within the scope of the claim.3 E-Pass Techs., Inc. v. 3eom

Corp., 343 F.3d 1364, 1370 (Fed. Cir. 2003) ("[T]he court's task is not to limit claim language toexclude particular devices because they do not serve a perceived 'purpose ' of the invention.").

The Court's conclusion that the preamble of the '043 Patent does not pose a limitation onthe scope of the claim is in accord with the Federal Circuit's decision in Am. Med. Sys., Inc. v.Bioliec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010). In that case, a preamble was found to poseno limitation because the supposedly limiting language was not used "in order to distinguishthe[] invention from the prior art," the term did not provide an antecedent basis for otherlanguage within the scope of the claim, and the "descriptor" in the preamble did "not embody anessential component of the invention." Id. at 1359. All of these factors are met in the presentcase: "card" does not provide an antecedent basis for other language within the scope of theclaim, it does not embody an essential component of the invention, and, far from distinguishingthe invention from the prior ali, it would have made it more similar.

3 Because the Court concludes that the preamble does not pose a limitation on the scope of the claim, it rejectsDefendant's argument that Plaintiffs amending the preamble to cover a "card" instead of a "device" constituted a"disavowal" or "surrender" of a broader claim in favor of a narrower one.

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Finally, the Court's conclusion is not altered by language used by the Examiner in theNotice of Allowability. (See Yonay Dec!. Ex. 2D). In its briefing, T -Mobile appeared to rely onthis language by the Examiner solely to bolster its argument that the word "card" was usedintentionally in the preamble, (Def. Opp. Br. at 9 n.7; Def. Reply at 3), a proposition with whichthe Court agrees. In post-hearing letter briefing, T-Mobile appears to argue that use of the word"card" by the Examiner lends support to T-Mobile's attempts to limit the claimed invention to acard. (See Dkt. No. 42 at 2). But even the cases relied upon by T-Mobile state that "there is noobligation to respond to an [E]xaminer's statement of Reason for Allowance, and the statementof an examiner will not necessarily limit a claim." ACCO Brands, Inc. v. Micro Sec. Devices,Inc., 346 F.3d 1075,1079 (Fed. Cir. 2003). In ACCO Brands, the Examiner "simply repeatedthe arguments that the patentee had presented" and "the examiner and the applicant understood"that the claim was so limited in scope. Id. (emphasis added). In this case, by contrast, the backand forth between OTI and the Examiner does not indicate a clear mutual understanding that theclaim was limited in scope only to cards. Also distinguishable in Elkay Mfg. Co. v. Ebco Mfg.Co., 192 F.3d 973, 979 (Fed. Cir. 1999), in which the patentee argued to the Examiner that thescope of the patent ought to be limited and the Examiner then indicated that he granted theapplication because of that limitation. No party in the present action contends that the '043Patent was granted in whole or in part because the Examiner thought of it as a card. Nor wouldconfining the scope of the patent to cards alone distinguish the '043 application from prior art, asdid the argument adopted by the Examiner in Elkay.

In short, the Court concludes that neither the use of the word "card" in the preamble northe use of the word "said" in the body of the claim-either individually or in conjunction witheach other-limit the scope of the claims to only cards.

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(,043 Patent, Col. 1, 11-19). But all that this passage says is that generally these devices takecard form and that, when they do, direct electrical contacts form with a card reader. The passagedoes not require that this invention must take the form of a card. Indeed, it leaves open thepossibility of covered devices that are not "in the form of smart cards."

Finally, the Court rejects T-Mobile's argument that OTI's construction is at odds with theclaim language because OTI 's construction defines contact mode as an operation pursuant towhich data is exchanged with the microprocessor via the contact field "using contact data

communication protocol." T-Mobile asserts that this is somehow different from the language inthe patent claiming "a semiconductor device for operating in said contact and contactless modesin accordance with a respective contact and contactless data communications protocol." (Def.Opp. Br. at 14-15). The Court fails to see how the substitution of "with" for "uses" ismeaningful in this context.

In short, T-Mobile and Dr. Winter's attempt to impose specific structures into theclaimed device, such as an exposed contact that connects to a reader device-purportedlythrough the claimed "contact and contactless modes" of communication-would be undulylimiting. OTI 's proposed construction more accurately captures the language used in the claimviewed in light of all of the intrinsic evidence.

****In sum, the Court rejects the argument that the use of the word "card" in the preamble

poses a limitation on the scope of the claim, rejects T-Mobile's proposed reading of the firstdisputed term, and adopts OTI's proposed reading of that term.

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For the reasons discussed in Section "II.A.3" above, the Court rejects T-Mobile'sproposed reading of this term and adopts OTI's proposed reading. The use of the anaphoric"said" does not limit the scope of the claimed contact and contactless modes of those of a card,as T -Mobile argues. (See Def. Br. at 17-18; Def. Reply at 7). Because T -Mobile requests that,for purposes of this disputed term, contact and contactless modes be construed the same as in theprior term (See Claim Construction Chart at 2; Dkt. No. 19), and because the Court has rejectedT-Mobile's argument that "contact and contactless modes" should be defined in relation to a cardfor purposes of the prior term, the Court correspondingly rejects T-Mobile's contention for

purposes of this term that "contact and contactless modes" should be defined as requiring a card.At base, T-Mobile intends to take language-"contact and contactless modes"-that describesmodes of data communication, and use it to impose limitations on the physical design of thedevice. This is not a proper construction of the claim.

C. "Contact Field"1. The Court Agrees with Plaintiffs Proposed Reading of "Contact Field"

The Court agrees with OT! that "contact field" should be read as a subset of galvanicconnections allowing data transmission between the contacts and the semiconductor device inaccordance with the contact data communications protocol.

The relevant contacts are not described or depicted anywhere in the patent as having orrequiring particular structures or configurations in order to function, and T-Mobile has notpointed to anything in the file history that limits the generality of the term as it is used in thepatent. The lines depicted in figure 2 are consistent with a card, but they are also consistent withother forms of contacts, such as those exhibited in slide seven of Professor Apsel 's May 7, 2013presentation. (See Ct. Ex. 1 at 7).

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Furthermore, Dr. Apsel persuasively explains that in the field of microelectronics,contacts are regularly used to describe any electrical connection between components. (ApselSupp. Decl. 22; see also 5/7/13 Tr. at 10:24-11: 15 ("In the field of electronics, a contact refersto a direct electrical galvanic connection. That means I can transfer current or voltage directlythrough this electrical connection." "Direct" contact means "physically touching" so that "thecurrent can pass directly from one wire to another wire, for instance, without necessarily goingthrough some kind ofconversion.,,)).4 A reader skilled in the art would not understand the termcontact field as necessarily involving a card reader. (Apsel Supp. Decl. 22-26).5 Thus, a field

for such contacts could readily be understood by a reader skilled in the art to mean somethingmore than just a tool for a card and a card reader. (ld.).

T-Mobile argues that because the prior art involved a card, and because "contact field" isa term borrowed from the prior art, the "contact field" described in the '043 Patent is necessarilylimited to one that functions as part of a card and allows a reader data device's contacts to bear,or rest, upon it. (T-Mobile Opp. Br. at 19). In further support ofthis position, T-Mobile pointsto deposition testimony from the inventor of the '043 Patent, Mr. Itay, that the term "contactfield" was "borrowed" from Kreft. (See 5/9/13 Tr. at 100: 19-24).

4 "While claim construction primarily relies on intrinsic evidence, extrinsic evidence, such as expert testimony, mayalso be used when given the appropriate weight by the trial court." Amkor Tech., Inc. v. Int'! Trade Commc'n, 692F.2d 1250, 1259 (Fed. Cir. 2012) (quoting Spansion Inc. v. Int'l Trade Commc'n, 629 F.3d 1331 (Fed. Cir. 2010.As the claim is construed through the eyes of someone skilled in the art, Generation II Orthotics Inc. v. Med Tech.Inc., 263 F.3d 1356, 1366 (Fed. Cir. 2001), the Federal Circuit has advised that it is "entirely appropriate, perhapseven preferable, for a court to consult trustworthy extrinsic evidence to ensure that the claim construction it istending to from the patent file is not inconsistent with clearly expressed, plainly apposite, and widely heldunderstandings in the pertinent technical field." Honeywell Int'l, Inc. v. United States, 66 F.3d 400, 426 (Fed. Cir.2005).5 T-Mobile argues that Dr. Apsel improperly relies on an unrelated patent. However, Dr. Apsel simply uses thatpatent to illustrate what terms mean to readers skilled in the art. Dr. Winter does exactly the same thing. (WinterSupp. Dec!. 41; Dkt. No. 26).

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Even assuming arguendo that the Court could accept T-Mobile's position that importinga term from another prior patent necessarily imports various limitations deriving from thebroader structure of that prior patent, which it does not,6 T-Mobile's construction of contact fieldwould still be inappropriate because the language that T-Mobile points to does not require thatcontact fields, by their definition, operate between cards and card readers. In the '043 Patent, the"Background of the Invention" section refers to previously patented cards, including the Kreft'495 Patent, where "there is provided a so-called 'contact field' having a plurality of contacts,each of which is connected to the micro-computer by means of a respective electrical

connection." (,043 Patent, Col. 1, lines 37-39). The next sentence states that "[d]atatransmission with an external reader is then effected by contacts which bear on respectivecontacts in the contact field of the chip card." ('043 Patent, Col. 1, lines 40-43). T-Mobilewould have the Court read that second sentence into the definition of "contact field." But thatsecond sentence only describes how the contact field makes a contact with a separate device incertain prior inventions. It does not describe the way that a "contact field" must be used.

T-Mobile also points to the preferred embodiment in arguing that "contact field" requiresthe contact field make a physical and electrical connection with a separate reader device that isnot contained in the "card." (See, e.g., Def. Opp. Br. at 18). However, there is nothing in theclaim that so limits the scope of "contact field." And T-Mobile concedes that it would be

6 T-Mobile relies on Arthur A. Collings, Inc. v. Northern Telecom Ltd., 216 F.3d 1042, 1045 (Fed. Cir. 2000), for theproposition that "[w ]hen prior art that sheds light on the meaning of a term is cited by the patentee, it can haveparticular value as a guide to the proper construction of the term." But Collings is factually distinguishable. InCollings, the patent stated that the pOition of the claimed invention with a disputed meaning had previously been"described and claimed in" several other patents listed therein. Id. Thus, the concession on the face of the patent atissue in Collings that the disputed terms were "described and claimed in" the previous patents naturally led to theconclusion that the definition of those disputed terms in the prior patents would be helpful in determining what anindividual skilled in the art would have understood the patentee to be claiming. In Collings, the patent essentiallyincorporated by reference the definitions from a prior patents. Such facts are not present in this case.

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improper to limit the claim to the preferred embodiment described in the specification (Opp. Br.at 18 n.9); see also Phillips, 415 F.3d at 1323 ("[A]lthough the specification often describes veryspecific embodiments of the invention, we have repeatedly warned against confining the claimsto those embodiments. ").

Pointing to figure 2 in the '043 Patent, T-Mobile argues that OTI's proposed reading ofthis term is too broad, as it would apply to numerous elements on the device beyond what islabeled as the "contact field." (Def. Br. at 20; Hr'g Ex. D at 51). However, the Court agreeswith OTI that, read in its context, the "contact field" is "a particular subset of galvanic

connections of the device, namely, those that allow data transmission between the contacts andthe semiconductor device in accordance with the contact data communications protocol." (PI.Reply at 7-8). That is, read in its context, OTI's construction is not so broad as T-Mobilecontends.

2. References to the ISO 7816 Protocol Do Not Indicate that the Claimed InventionWas a Card or that the Contact Field Must Be Part of a Card

In a related argument, T-Mobile asserts that references in the '043 Patent to a 7816protocol indicate that the claim only covers cards and that the "contact field" therefore must bethat of a card. (See Def. Br. at 20-21; 5/9/13 Tr. at 100:5-7). The Court disagrees.

In the 1980's, a contact communication standard was developed and became known asthe ISO 7816-3 protocol. (See 5/7/13 Tr. at 14:21-15:14; 46:23-48:16). This standard remains acommon contact communication protocol. (5/7/13 Tr. at 15: 12-15).

At the same time, the international standards organization issued a standard that "definedthe number, the shape, the size, and the location of exposed contacts on a smart card." (5/7/13Tr. at 47:2-4). This standard, known as ISO 7816-2, does not relate to the mode of

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communications. Indeed, communication using the ISO 7816-3 protocol can be accomplishedusing a device with or without the ISO 7816-2 standard. (5/7/13 Tr. at 48:6-8). Thus, while thephysical standard and the communication protocol are labeled 7816-2 and 7816-3, respectively,those labels only indicate that the two were created around the same time, not that onenecessarily has to do with the other. (5/7/13 Tr. at 47:21-25).

Most of the references in the '043 Patent to the 7816 protocol refer to 7816-3, thecommunication protocol, and do not involve the standardized layout for smart cards. Thepossible reference to a 7816-2 protocol for smart cards in the preferred embodiment does not

limit the scope of the claim. (See Section "II.C.1 " above). Similarly, that some of the figures inthe '043 Patent are consistent with the 7816-2 standard, (5/9/13 Tr. at 108:21-109:3), does not inand ofitselflimit the scope of the claim to cards. For these reasons, the Court rejects the notionthat references to the ISO 7816 protocol in the Patent indicate that the claimed invention onlycovers cards.

****

In short, the Court is not persuaded that the term "contact field," as written in the claim,is limited to a protruding or exposed field upon which a reader may bear or rest. As a result, theCourt rejects T-Mobile's proposed construction and adopts OTI's proposed construction of"contact field."

(D) "Allowing data transmission between the contacts and the semiconductor device inaccordance with said contact data communications protocol only during said contactmode"T-Mobile argues that statements made by on during the prosecution history limit the

scope of the claim to a device that disables the contact field during contactless mode."Prosecution history disclaimer[s] play[] an important role in the patent system." Biogen Idec,

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Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090,1095 (Fed. Cir. 2013). "Competitors are entitledto rely on those representations when determining a course of lawful conduct, such as launchinga new product or designing-around a patented invention." Id. It also "provides evidence of howthe [PTO] and the inventor understood the patent." Edwards Lifesciences LLC v. Cook Inc., 582F.3d 1322, 1327 (Fed. Cir. 2009)(quoting Phillips, 415 F.3d at 1317)(alteration in original).

As discussed below, the Court concludes that a reader skilled in the art would not haveconcluded, based on statements in the prosecution history, that o n clearly and unmistakablydisclaimed a device that has connectivity between the contact field and the microprocessor

during contactless mode. The Court therefore concludes that Plaintiff's proposed construction iscorrect and Defendant's proposed construction is incorrect.

l. OTI's September 1999 Submission to the PTOT-Mobile argues that o n disavowed claim scope in its September 22, 1999 letter to the

Examiner explaining why the '043 application was an improvement upon and distinguishablefrom U.S. Patent 5,773,812 (Def. Ex. M) ("Kreft '812 Patent"). The Kreft '812 Patent, likeKreft's'495 Patent, contained a switching element. (See Def. Ex. M; '812 Patent, Col. 7, line58-60). Upon review of on ' s '043 application, the Examiner initially rejected the '043application on the basis that it was not distinguishable from Kreft 's '812 patent, explaining that"Kreft discloses a chip card comprising a chip 1, electrical contacts 2, and coil winding 5 forcontactless communication. As can be seen, Kreft discloses the claimed invention." (Def. Ex.L).

OTI's patent advocate responded to this rejection by (1) amending the claim language toits present contested form regarding "allowing data transmission between the contacts and thesemiconductor device in accordance with said contact data communications protocol only during

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said contact mode,,,7 and (2) argued that the Examiner misinterpreted the claim by failing to notethat the "improvement" over the prior Kreft inventions was in that "no switching element isrequired for electing whether contact or contactless modes of operation are required." (Def. Ex.N) (emphasis in original). OTI's patent advocate continued that "[t]his distinction, which isfundamental to an understanding of the invention, is expressed by the statement that the contactfield includes contacts fIXedly connected to the semiconductor device during both modes, buttransmit data only in contact mode." (Def. Ex. N) (emphasis in original).

OTI's patent advocate "respectfully submitted that the Examiner misinterpret[ed] the

claim because the invention as claimed resides not in the mere collocation of commoncomponents which are admittedly to be found in all smart cards having both contact andcontactless interfaces." (Def. Ex. N) (emphasis in original). In other words, OTI 's patentadvocate was not asserting that the Examiner mistakenly found the '043 applicationindistinguishable from the '812 Patent because the '043 application claimed a device thatinvolved contact communications during contactless mode. To the contrary, OTI's September1999 submission to the PTO indicates that it did not believe that the Examiner appreciated thatthe '043 application involved more than just a claim to a jumble of objects-e.g., an antenna, acontact field, and contact lines-that are found in all smart cards. OTI sought to make clear thatit was seeking to patent a specific layout for a device, one that did not involve a switchingmechanism-as had existed in both Kreft's '495 and '812 Patents. (Id.).

To this effect, in its September 22, 1999 response to the PTO, OTI's patent advocatewent on to make the following representations:7 The original language was: "a contact field including contacts fixedly connected to the semiconductor device forallowing data transmission between the contacts and the semiconductor device in accordance with said contact datacommunications protocol." (Winters Decl. Ex. Kat 25).

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"Rather the presence of an electromagnetic field on the antenna coil automaticallyenables contactless operation of the smart card and, by the same token, disablesthe contact field - even though, in the invention, the contact field remainsfIXedly connected to the semiconductor chip." (Ex. N at 3) (emphasis supplied inpart).

"Herein claim 1 was amended to emphasize that the contacts are fixedlyconnected to the semiconductor device during both modes, contact or contactless,of data transmission. However, the contacts perform on a selective basis, thatis, only in the contact mode. This is described in the originally filed application.New matter was not added." (Ex N. at 2) (emphasis supplied in part).

The Court understands this language to be explaining that the contact field remainsconnected to the microprocessor through a dedicated line-as accounted for in OTI's proposedconstruction-and that the contact field's dedicated line is not essential for and, in fact, is noteven relevant to the operation of contactless mode. To the extent that these statements in theprosecution history may be read more broadly, they become, as discussed below, inherentlyambiguous and therefore do not limit claim scope in this case.

2. OTI's Statements to the Examiner Did Not Constitute Clear and UnambiguousDisavowal of Claim Scope

"[PJrosecution history . . . cannot be used to limit the scope of a claim unless theapplication took a position before the PTO that would lead a competitor to believe that theapplicant had disavowed coverage of the relevant subject matter." Schwing GmbH v.Putzmeister AktiengesellschaJt, 305 F.3d 1318, 1324-25 (Fed. Cir. 2002). In consideration of"the importance of public notice and the right of patentees to seek broad patent coverage," theFederal Circuit has required that allegedly "disavowing statements to be both so clear as to showreasonable clarity and deliberateness and so unmistakable as to be unambiguous evidence ofdisclaimer." Omega Engineering, Inc. v. Raytek Corp., 334 F.3d 1314, 1325 (Fed. Cir. 2003)(internal citations omitted). For the reasons that follow, the Court concludes that the way T-

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Mobile construes OTI's statements in the September 22, 1999 statement renders themcontradictory and inherently ambiguous, and such a construction therefore cannot constitute cleardisavowal of claim scope. See id.

Adopting T-Mobile's preferred understanding of the statements in OTI's 1999 letter tothe Examiner would result in contradictory assertions within the same document and therebyrender it inherently ambiguous. For example, T-Mobile argues that OTI limited its claim to adevice that does not permit communication between the contact field and the microprocessorduring contactless mode. (Def. Reply at 10). But Dr. Apsel explains that in the context of

microelectronics, disconnections are typically caused by switching mechanisms. (Apsel Suppl.Decl. 3-7, 29-31 ). Yet the specification provides for no switching mechanism and OTI'sletter to the Examiner was clear that (1) the device did not have a switching mechanism and (2)the amendment did not add "new matter." (Def. Ex. N).8 T-Mobile appears to argue that itsproposed construction requires "disablement" without "disconnection" (Def. Reply at 10), but itis not clear how one would be possible without the other or where the distinction lies. As aresult, T-Mobile's interpretation of these statements during the prosecution history renders thestatements inherently confusing, nonsensical, and ambiguous.

Additionally, the Kreft '812 device involved switches that disconnect certain lines fromother lines. (See Def. Ex. M; Kreft '812 Patent). T-Mobile asserts that the 1999 letterdistinguishes the '043 Patent over the '812 Patent by promising "disable[ment]" of the contactfield during contactless mode. But, again, in order for that to be a distinction over the' 812

8 Moreover, Kreft's prior art already employed switches between the contacts and the microprocessor, so such anaddition would have provided no basis for differentiation.

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Patent, there would need to be a distinction between "disabling,,9 and "disconnecting." In thiscontext, it is not clear how such a distinction would make any sense.

Further ambiguity is found in the passage in the 1999 letter discussing contactsperforming on a "selective basis," even though the same document disclaims switching devices.T-Mobile's own expert was not able to describe how such a device would work withoutswitching mechanisms. (Winters Depo. at 123:17-24,124:8-126:16).10 Thus, T-Mobile'sreading of the statements in the prosecution history would render the '043 device inoperableabsent the possible addition of a separate device that is not disclosed as part ofthis element of

the patent. 11The Federal Circuit's decision in Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d

1366 (Fed. Cir. 2007), is instructive. In Elbex, the Federal Circuit held that an inventor did notclearly and unmistakably surrender any of its claims during the prosecution stage in light of a"unique amalgamation of facts," including (1) that the statement in the prosecution wasunsupported by evidence from the specification, (2) "the ambiguity created by other statementsin the same prosecution document," (3) that the opposing party's own expert could not explainhow the device would operate consistent with the supposedly disavowing statements, and (4) that

9 T-Mobile also phrases this as saying that connections are "not permitted" between the contact field and thesemiconductor device during contactless mode.10 Dr. Winters testified that it might be possible using a so-called "tri-state device," but he was not able to describehow such a device would be employed in this aspect of the invention and stated that it was not in any oftheembodiments. (Winters Depo. at 123 :21-126: 16). At the Markman hearing, T -Mobi le's counsel did not disagreewith the assertion that there was no way described to achieve this in the patent. T-Mobile's counsel said that such amechanism was "undescribed" and added that "[t]here may be a way of doing it. I suppose the experts can sit downand try to figure that out, but they don't actually describe a way of doing it in the patent." (5/9/13 Tr. at 120:6-22).11 Additionally, if the contact field was completely disabled and disconnected from the microprocessor duringcontactless mode, no power or ground line would be available for the antenna, and contactless communicationwould therefore be impossible. (5/7/13 Tr. at 34:17-35:11).

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a reader skilled in the art would not have understood the inventor to be making a disclaimer afterreading the intrinsic record as a whole since the supposed disclaimer would result in aninoperable system. Id at 1373.

All of these facts exist in the present case. First, the statement during the prosecution isinconsistent with the specifications and with Claim 25. Second, other statements in the same1999 letter render the passages that T-Mobile highlights ambiguous. Third, as Professor Apselexplained, the '043 Patent's antenna and contact field use the same lines of connection toconnect with the microprocessor and to receive power. (5/7/13 Tr. at 34:17-35:1 i). Even Dr.

Winter could not explain how the device would function as described without a switchingdevice, which the record makes clear is absent from the '043 Patent, or a "tri-state" device that isnot described in the claims and not shown in the embodiment in relation to this aspect of theinvention. (Winters Depo. At 123:17-24,124:8-126:16). Thus, adopting T-Mobile's proposedconstruction would render the device inoperable, if not impossible. And a reader skilled in theart, reading the intrinsic evidence in its entirety, would not have understood OT! to havedisclaimed a device that allows for connectivity, or interaction, between the contact field and themicroprocessor during contactless mode.

Finally, T-Mobile criticizes OTI's proposed construction of this term as unduly limitingbecause it limits the claims to dedicated input/output ports. But that is exactly what the languagein the 1999 letter-including its reference to "fixedly" connected lines and a "allowing datatransmission . . . in accordance with said contact data communications protocol only during saidcontact mode"-conveys. Moreover, the input/output ports, which were discussed in theprosecution history when OT! referred to the "fixedly" limitation in the claim, are described inthe specifications.

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T-Mobile also argues OTI's reading would "contradict claim 2." (Def. Opp. at 24). TheCourt disagrees. First, contrary to T-Mobile's assertion (Def. Opp. Br. at 24), OTI's proposedreading would not be entirely duplicative of claim 2. Claim 2 states that "the semiconductordevice has separate contact and contactless i/o ports for effecting data transmission in accordancewith said contact and contactless data communications protocol, respectively." Thus, claim 2approaches the invention from the perspective of the semiconductor device, and thesemiconductor device's i/o ports, whereas claim 1 addresses the invention from the signalperspective, and proscribes how signals traverse the elements of the system. Whiie the two

concepts are intricately related, they are not identical.Second, even if OTI's proposed construction causes claim 1 to overlap with claim 2 to

some extent, the Court still concludes that it is the proper construction. Pursuant to the doctrineof claim differentiation, there exists a rebuttable presumption that an independent claim shouldnot include a limitation imposed by a dependent claim. Biogen Idec, Inc. v. GlaxoSmithKlineLLC, 713 F.3d 1090, 1097 (Fed. Cir. 2013). The presumption may be overcome by prosecutionhistory or the written description and the teachings of the specifications. Marine Polymor Tech.,Inc. v. Hemcon, Inc., 672 F.3d 1350, 1359, 1368 (Fed. Cir. 2012); Retractable Tech., Inc. v.Becton, Dickinson and Co., 653 F.3d 1296,1305 (Fed. Cir. 2011) ("Claim language must alwaysbe read in view of the written description, and any presumption created by the doctrine of claimdifferentiation will be overcome by a contrary construction dictated by the written description orprosecution history.") (internal citation and quotation marks omitted). Indeed, the RetractableTechnologies court opined that while "[t]here is a fine line between construing the claims in lightof the specification and improperly importing a limitation from the specification into the claims, .. . . [i]n reviewing the intrinsic record to construe the claims, we strive to capture the scope of the

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actual invention, rather than strictly limit the scope of claims to disclosed embodiments or allowthe claim language to become divorced from what the specification conveys is the invention."Retractable Tech., 653 F.3d at 1305.

All of the relevant embodiments described in the specification have separate lines forcontact and contactless data, and none have shared lines. Indeed, T-Mobile's own expert did notdispute this point. (Winters Depo. at 187:5-88:13). As in Retractable Technologies, limiting theclaim as urged by OTI "is required to tether the claims to what the specifications indicate theinventor actually invented." Retractable Tech., 653 F.3d at 1305.

Moreover, T-Mobile's proposed construction would contradict claim 25, anotherdependent claim. T-Mobile, relying on ERBE Elektromedizin GmbH v. Canady Tech. LLC, 629F.3d 1278, 1286 (Fed. Cir. 2010), argues that the presumption of claim differentiation isovercome in the instance of claim 25 because of express statements made by OTI during theprosecution history that limit claim scope. But, as discussed, the Court concludes that OTI didnot clearly disclaim claim scope during the prosecution. As a result, the doctrine of claimdifferentiation actually weighs in favor of rejecting T-Mobile's proposed construction in favor ofOTI's.

****

In short, the Court concludes that OTI did not unambiguously disavow claim scopeduring prosecution and that its proposed construction accurately captures the invention as

claimed in the patent. The Court therefore rejects T-Mobile's proposed reading ofthe fourthterm and adopts OTI's proposed reading.

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CONCLUSIONFor the foregoing reasons, the Court agrees with Plaintiffs proposed constructions of the

four disputed terms. The parties shall abide by the schedule set forth in the August 10,2012scheduling order. (Dkt. No. 14). Specifically, all fact discovery shall be completed within 10weeks of the date of this order, all expert discovery shall be completed within 14 weeks, and anydispositive motions shall be filed within 18 weeks. A conference with the Court is scheduled forAugust 28,2013, at 10:00 AM.

SO ORDERED.

Dated: June__ 2013New York, New York

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