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Acqis, LLC v. EMC Corp.

United States District Court, D. Massachusetts

December 8, 2017

ACQIS, LLC, Plaintiff,
EMC CORPORATION, Defendant. ACQIS's Proposed Construction EMC's Proposed Construction Judge Davis's Construction [ECF No. 71] ACQIS's Proposed Construction EMC's Proposed Construction Judge Davis's Construction [ECF No. 711 ACQIS's Proposed Construction EMC's Proposed Construction Judge Davis's Construction [ECF No. 711



         Plaintiff ACQIS, LLC (“ACQIS”) alleges that certain computer storage products of Defendant EMC Corporation (“EMC”) infringe 22 claims of the following eleven patents owned by ACQIS: U.S. Patent Nos. 7, 363, 416 (the “‘416 Patent”), 7, 676, 624 (the “‘624 Patent”), 7, 818, 487 (the “‘487 Patent”), 8, 041, 873 (the “‘873 Patent”), RE41, 294 (the “‘294 Patent”), RE42, 814 (the “‘814 Patent”), RE43, 171 (the “‘171 Patent”), RE44, 468 (the “‘468 Patent”), RE42, 984 (the “‘984 Patent”), RE43, 119 (the “‘119 Patent”), and RE41, 961 (the “‘961 Patent”) (collectively, the “patents-in-suit”). [ECF No. 307 at ¶¶ 7-18]. The EMC products at issue are modular computer systems, and the patents-in-suit each describe and claim one or more computer modules that can be removed from one console and placed in another console. [ECF No. 102 at 1]. The console (e.g., keyboard, mouse, display, and disk drive) is a platform into which a module containing the core computing hardware (e.g., central processing unit (“CPU”), memory, input/output, and hard drive) can be inserted in order to form a complete personal computer. [ECF No. 71 at 2].

         The parties filed claim construction briefs concerning three disputed terms, and the Court conducted a hearing on July 27 and July 28, 2017 at which the parties presented their proposed constructions. [ECF Nos. 350, 352]. For the following reasons, the Court construes the terms as set forth below.

         I. BACKGROUND

         On September 9, 2013, ACQIS filed its initial complaint against EMC in the United States District Court for the Eastern District of Texas. [No. 13-00639, ECF No. 1]. On December 6, 2013, EMC moved to transfer the action to the District of Massachusetts pursuant to 28 U.S.C. § 1404(a). [No. 13-00639, ECF No. 21]. On April 30, 2014, before ruling on the motion to transfer, the court consolidated the action against EMC with three related lawsuits brought by ACQIS against other defendants in the Eastern District of Texas. [No. 13-00639, ECF No. 38]. On September 10, 2014, Judge Leonard Davis conditionally granted EMC's motion to transfer the action to the District of Massachusetts, retaining jurisdiction over EMC through the claim construction process and noting that the transfer would become effective upon the issuance of his claim construction opinion. [ECF No. 44]. On February 12, 2015, Judge Davis held a Markman hearing concerning the disputed claim terms. [ECF No. 76 at 1]. On April 13, 2015, he issued a claim construction opinion and an order transferring the case against EMC to this Court. [ECF Nos. 71, 72].

         On April 27, 2015, EMC filed a motion to stay the case pending Inter Partes Review (“IPR”) of two of the patents-in-suit. [ECF No. 80]. IPR is an expedited procedure for challenging the validity of a patent before the United States Patent and Trademark Office (“PTO”) and its Patent Trial and Appeal Board (“PTAB”). [ECF No. 102 at 4]; see 35 U.S.C. §§ 311-319. The IPRs involved 3 of the 22 claims asserted in the litigation: Claim 61 of the ‘873 Patent and Claims 24 and 31 of the ‘814 Patent. On June 10, 2015, the Court stayed the case in its entirety until a decision issued in the IPRs. [ECF No. 102]. On March 8, 2016, the PTAB issued final written decisions finding that EMC had not proven that the challenged claims were unpatentable. [ECF No. 140]. On August 10, 2016, this Court lifted the stay. Id. On February 22, 2017, the parties filed a Joint Claim Construction Statement identifying each party's interpretation of the following disputed terms: (1) “Peripheral Component Interconnect (PCI) bus transaction”; (2) “Encoded . . . serial bit stream of Peripheral Component Interconnect (PCI) bus transaction and related terms”; and (3) “communicating . . . PCI bus transaction.” [ECF No. 192]. A Markman hearing was then held on July 27 and July 28, 2017. [ECF Nos. 350, 352].


         Claim construction is the first stage of a patent infringement analysis, where “the scope and meaning of the patent claims asserted are determined” as a matter of law by the court. Clearstream Wastewater Sys., Inc. v. Hydro-Action, Inc., 206 F.3d 1440, 1444 (Fed. Cir. 2000); see Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996) (holding that “construction of a patent, including terms of art within its claim, is exclusively within the province of the court”). Although Judge Davis has issued a claim construction opinion in this matter, which is entitled to “reasoned deference, ” Iovate Health Sciences, Inc. v. Allmax Nutrition, Inc., 639 F.Supp.2d 115, 124 (D. Mass. 2009) (citation omitted), [1] the Court may “engage in a rolling claim construction, in which the court revisits and alters its interpretation of the claim terms as its understanding of the technology evolves.” Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308, 1316 (Fed. Cir. 2010) (quoting Pfizer, Inc. v. Teva Pharm., USA, Inc., 429 F.3d 1364, 1377 (Fed. Cir. 2005)); see Pfizer, Inc., 429 F.3d at 1377 (“[A] conclusion of law such as claim construction is subject to change upon the development of the record. . . .”).

         In claim construction, a court generally must give claim terms their ordinary and accustomed meaning as understood by one of ordinary skill in the art in question at the time of the invention and in the context of the entire patent. See Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc). “[W]here the ordinary meaning of claim language as understood by a person of skill in the art is not readily apparent, ” courts generally consider a “hierarchy of sources to aid in claim construction.” Skyline Software Sys., Inc. v. Keyhole, Inc., 421 F.Supp.2d 371, 375 (D. Mass. 2006). First, the claim language itself is where claim construction “must begin and remain centered” because “the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d at 1111, 1115-16 (Fed. Cir. 2004). Second, the specification “is always highly relevant to the claim construction analysis” and “[u]sually . . . is dispositive.” Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). In the specification, a patentee may define his own terms, give a claim term a different meaning than the term would otherwise possess, or disavow certain meanings. Id. at 1316. That being said, the Federal Circuit has “warned against importing limitations from the specification into the claims absent a clear disclaimer of claim scope.” Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1373 (Fed. Cir. 2007). Third, the prosecution history can provide additional insight into how the inventor and the PTO understood the patent. See Phillips, 415 F.3d at 1317. Finally, district courts may consider extrinsic evidence, such as inventor testimony, dictionaries, or learned treatises, but must “keep in mind the flaws inherent in each type of [extrinsic] evidence and assess that evidence accordingly.” Id at 1317, 1319.

         Here, a central issue is whether and how IPRs that took place after Judge Davis's claim construction order should impact this Court's interpretation. The doctrine of prosecution disclaimer precludes patentees from recapturing, through claim construction, specific meanings disclaimed during the prosecution of a patent, including in IPR proceedings. See Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1359-60 (Fed. Cir. 2017) (“Extending the prosecution disclaimer doctrine to IPR proceedings will ensure that claims are not argued one way in order to maintain their patentability and in a different way against accused infringers.”). “Thus, when the patentee unequivocally and unambiguously disavows a certain meaning to obtain a patent, the doctrine of [prosecution] disclaimer narrows the meaning of the claim consistent with the scope of the claim surrendered.” Id. (quoting Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1095 (Fed. Cir. 2013)). Prosecution disclaimer thereby “‘protects the public's reliance on definitive statements made during prosecution' by ‘precluding patentees from recapturing through claim interpretation specific meanings [clearly and unmistakably] disclaimed during prosecution.'” Computer Docking Station Corp. v. Dell Inc., 519 F.3d 1366, 1374-75 (Fed. Cir. 2008) (quoting Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323-24 (Fed. Cir. 2003)). “[Statements giving rise to a disclaimer may be made in response to a rejection over the prior art, but they may also take place in other contexts.” Uship Intellectual Props., LLC v. United States, 714 F.3d 1311, 1315 (Fed. Cir. 2013); see id. (Federal Circuit cases “broadly state that an applicant's statements to the PTO characterizing its invention may give rise to prosecution disclaimer”). Prosecution disclaimer may “occur through amendment or argument, ” Aylus, 856 F.3d at 1359, and is binding even if the PTAB does not adopt the amendment or argument. See Springs Window Fashions LP v. Novo Indus.. LP. 323 F.3d 989, 995 (Fed. Cir. 2003).

         The standard for prosecution disclaimer is "exacting." Poly-America. LP v. API Indust.. Inc.. 839 F.3d 1131, 1136 (Fed. Cir. 2016). In order to overcome the "heavy presumption" that "claim terms cany their full ordinary and customary meaning, " Plantronics. Inc. v. Aliph. Inc., 724 F.3d 1343, 1350 (Fed. Cir. 2013) (citation omitted), the "alleged disavowing actions or statements made dining prosecution" must be both "clear and unmistakable." Avlus. 856 F.3d at 1359 (quoting Omega Eng'g, Inc.. 334 F.3d at 1323). "If the challenged statements are ambiguous or amenable to multiple reasonable interpretations, prosecution disclaimer is not established." Tech. Props. Ltd. LLC v. Huawei Techs. Co.. Ltd.. 849 F.3d 1349, 1358 (Fed. Cir. 2017).


          A. "Peripheral Component Interconnect (PCI) bus transaction"

ACQIS's Proposed Construction
EMC's Proposed Construction
Judge Davis's Construction [ECF No. 71]
"information, in accordance with the PCI Standard, for communicating with an interconnected peripheral component"
In the alternative, "a transaction, in accordance with the PCI Standard, for communicating with an interconnected peripheral component"
"a transaction, as defined by the industry standard PCI Local Bus Specification, involving a PCI bus"
"information, in accordance with the PCI standard, for commimication with an interconnected peripheral component"

         Judge Davis construed "Peripheral Component Interconnect (PCI) bus transaction" ("PCI bus transaction") as "information, in accordance with the PCI standard, for communication with an interconnected peripheral component.” [ECF No. 71 at 10]. During this Court's Markman hearing, the parties agreed on the use of the word “transaction” and they had already agreed to include the relevant industry standard, the PCI Local Bus Specification. [ECF No. 350 at 27:9-28:20; ECF No. 189 at 19].

         The central dispute remaining is whether the term requires the presence of a PCI bus. Before Judge Davis, EMC interpreted PCI bus transaction as “signals communicated over a PCI bus, ” but ultimately “failed to show that a PCI bus ‘transaction' necessarily implies the presence of a PCI ‘bus.'” [ECF No. 71 at 8]. Using Claim 24 of the ‘171 Patent as an example, Judge Davis showed that the claim language described “an integrated interface controller and bridge unit to output an encoded serial bit stream of address and data bits of [a] Peripheral Component Interconnect (PCI) bus transaction, the integrated interface controller and bridge unit coupled to the central processing unit without any intervening PCI ...

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