United States District Court, D. Massachusetts
MEMORANDUM AND ORDER ON CLAIM CONSTRUCTION
ALLISON D. BURROUGHS U.S. DISTRICT COURT JUDGE.
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].
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
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].
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].
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),  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. . .
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.
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).
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
ACQIS's Proposed Construction
EMC's Proposed Construction
Judge Davis's Construction [ECF No.
"information, in accordance with the PCI
Standard, for communicating with an interconnected
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
"information, in accordance with the PCI
standard, for commimication with an interconnected
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].
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