Garmin Switzerland GMBH et al v. Navico, Inc. et alRESPONSE to 94 Markman BriefD. Kan.January 8, 2018IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF KANSAS Garmin Switzerland GmbH, and Garmin Corporation, Plaintiffs, v. Navico, Inc., C-MAP USA, Inc., and C-MAP/Commercial, Ltd. Defendants. Case No. 2:16-cv-2706-CM-GLR GARMIN’S ANSWERING CLAIM CONSTRUCTION BRIEF Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 1 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page ii) TABLE OF CONTENTS I. INTRODUCTION............................................................................................................. 1 II. DISPUTED TERMS—THE ‘703 PATENT ................................................................... 2 A. “NON-USER SELECTED WAYPOINTS” .............................................................................. 2 B. “CARTOGRAPHIC DATA” ................................................................................................ 4 C. “[MARINE] NAVIGATION” .............................................................................................. 5 D. “PRESELECTED CONDITIONS”......................................................................................... 7 E. “RE-ROUT[E/ING] THE COURSE TO AVOID THE PRESELECTED CONDITIONS” ................. 10 F. “RECEIVING AN INDICATION OF A MINIMUM WATER DEPTH FROM A USER”.................. 12 G. “MARINE ROUTE CALCULATION ALGORITHM” ............................................................. 14 H. “[IDENTIFYING A POTENTIAL WAYPOINT] UPON A FIRST EVENT”.................................. 18 III.DISPUTED TERMS—THE ‘987 PATENT ................................................................. 20 A. “A GLOBAL POSITIONING SYSTEM RECEIVER DEVICE” (PREAMBLE, CLAIMS 9 AND 14) 20 B. “SUBSET”..................................................................................................................... 22 C. “FORWARD PATH”........................................................................................................ 24 D. “BACKTRACK PATH”.................................................................................................... 25 E. “AUTOMATICALLY” ..................................................................................................... 26 IV. CONCLUSION ............................................................................................................... 28 Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 2 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page iii) TABLE OF AUTHORITIES Cases Accent Packaging, Inc. v. Leggett & Platt, Inc., 707 F.3d 1318 (Fed. Cir. 2013)................................................................................................... 9 ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312 (Fed. Cir. 2012)................................................................................................... 1 ArcelorMittal France v. AK Steel Corp., 700 F.3d 1314 (Fed. Cir. 2012)................................................................................................... 4 Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040 (Fed. Cir. 2016)................................................................................................. 23 Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339 (Fed. Cir. 2003)................................................................................................. 20 CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225 (Fed. Cir. 2005)........................................................................................... 27, 28 Cox Commc’ns, Inc. v. Sprint Commc’n Co. LP, 838 F.3d 1224 (Fed. Cir. 2016)................................................................................................. 15 CytoLogix Corp. v. Ventana Med. Sys., Inc., 424 F.3d 1168 (Fed. Cir. 2005)................................................................................................. 26 Dayco Products, Inc. v. Total Containment, Inc., 258 F.3d 1317 (Fed. Cir. 2001)................................................................................................... 3 Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349 (Fed. Cir. 2012)............................................................................................. 6, 21 Ecolab, Inc. v. FMC Corp., 569 F.3d 1335 (Fed. Cir. 2009)................................................................................................. 24 Epistar Corp. v. Int’l Trade Commc’n, 566 F.3d 1321 (Fed. Cir. 2009)................................................................................................. 25 Fitbit, Inc. v. AliphCom, No. 15-4073, 2017 WL 386257 (N.D. Cal. Jan. 27, 2017)................................................. 15, 19 Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352 (Fed. Cir. 2004)................................................................................................. 24 In re Gardner, 427 F.2d 786 (CCPA 1970) ...................................................................................................... 19 Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 3 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page iv) Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363 (Fed. Cir. 2008)................................................................................................... 9 Intel Corp. v. VIA Tech., Inc., 319 F.3d 1357 (Fed. Cir. 2003)........................................................................................... 14, 17 Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364 (Fed. Cir. 2014)................................................................................................. 20 Kaneka Corp. v. Xiamen Kingdomway Grp. Co., 790 F.3d 1298 (Fed. Cir. 2015)................................................................................................. 19 Lazare Kaplan Int'l, Inc. v. Photoscribe Techs., Inc., 628 F.3d 1359 (Fed. Cir. 2010)................................................................................................. 14 Lisle Corp. v. A.J. Mfg. Co., 398 F.3d 1306 (Fed. Cir. 2005)................................................................................................. 26 Lucent Techs., Inc. v. Gateway, Inc., 525 F.3d 1200 (Fed. Cir. 2008)................................................................................................. 23 Merck & Co., Inc. v. Teva Pharmaceuticals USA, Inc., 347 F.3d 1367 (Fed. Cir. 2003)................................................................................................... 7 Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014)............................................................................................................... 15 NeoMagic Corp. v. Trident Microsys., Inc., 287 F.3d 1062 (Fed. Cir. 2002)................................................................................................. 13 O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351 (Fed. Cir. 2008)................................................................................................... 1 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)................................................................................................... 9 Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298 (Fed. Cir. 1999)................................................................................................. 20 Poly-Am., L.P. v. GSE Lining Tech., Inc., 383 F.3d 1303 (Fed. Cir. 2004)................................................................................................... 6 Pragmatus AV, LLC v. Yahoo! Inc., No. 13-1176, 2014 WL 1922081 (N.D. Cal. May 13, 2014)...................................................... 6 Prima Tek II, L.L.C. v. Polypap, S.A.R.L., 318 F.3d 1143 (Fed. Cir. 2003)................................................................................................... 9 Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 4 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page v) Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296 (Fed. Cir. 2011)................................................................................................. 24 S3 Inc. v. NVIDIA Corp., 259 F.3d 1364 (Fed. Cir. 2001)................................................................................................. 17 Smith & Nephew, Inc. v. Ethicon, Inc., 276 F.3d 1304 (Fed. Cir. 2001)................................................................................................... 4 Sonix Tech. Co. v. Publications Int’l, Ltd., 844 F.3d 1370 (Fed. Cir. 2017)................................................................................................. 17 Sprint Commc’ns Co. L.P. v. Comcast Cable Commc’ns LLC, No. 11-2684, 2014 WL 5089402 (D. Kan. Oct. 9, 2014) ......................................................... 15 SRAM Corp. v. AD-II Eng’g, Inc., 465 F.3d 1351 (Fed. Cir. 2006)................................................................................................... 6 SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107 (Fed. Cir. 1985)................................................................................................. 13 Toshiba Corp. v. Imation Corp., 681 F.3d 1358 (Fed. Cir. 2012)............................................................................................... 5, 9 TRIC Tools, Inc. v. TT Techs., Inc., No. 12-cv-3490, 2014 WL 2880028 (N.D. Cal. June 24, 2014)............................................... 19 Trivascular, Inc. v. Samuels, 812 F.3d 1056 (Fed. Cir. 2016)................................................................................................. 22 Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339 (Fed. Cir. 2009)................................................................................................. 19 Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295 (Fed. Cir. 2007)................................................................................................... 3 Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795 (Fed. Cir. 1999)..................................................................................................... 4 Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322 (Fed. Cir. 2006)............................................................................................. 8, 13 Wright Med. Tech., Inc. v. Osteonics Corp., 122 F.3d 1440 (Fed. Cir. 1997)................................................................................................. 24 Statutes 35 U.S.C. § 282............................................................................................................................. 16 Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 5 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page 1 of 28) I. INTRODUCTION Navico elected to launch its infringing products with full knowledge of the risk. Doc. 99 at ¶¶ 45-54. Now, Defendants seek to use the claim construction process as a vehicle to create non-infringement defenses where none would otherwise exist. In doing so, Defendants ask the Court to ignore two well-settled principles of claim construction. First, Defendants ignore the “heavy presumption” that the claims of a patent should be construed according to their plain and ordinary meaning. Defendants seek to justify their unwarranted constructions by casting them as disputes over scope, thus implicating “the Court’s duty” to adopt a construction. Doc. 94 at 1 (citing O2 Micro). But, as the O2 Micro court itself stated, “district courts are not (and should not be) required to construe every limitation present in a patent’s asserted claims.”1 Because Defendants’ proposed constructions are facially improper, rejecting those constructions in favor of the ordinary meaning is all that is required.2 Second, in almost every case where they have proposed a construction, Defendants do so in violation of the decades of Federal Circuit precedent proscribing importation of extraneous limitations into the claims. But “[t]he words of a claim are generally given their ordinary and customary meaning,” and Defendants have not furnished the “exacting” evidence necessary to establish either exception to this rule applies in this case.3 Because Defendants’ arguments are at odds with the intrinsic evidence and Federal Circuit precedent, their proposed constructions should be rejected, thereby resolving the disputes in favor of the plain and ordinary meaning of the claimed inventions. 1 O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) (emph. in original). 2 ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1326 (Fed. Cir. 2012) (“[The] proposed construction erroneously reads limitations into the claims and the district court properly rejected that construction and resolved the dispute....”). 3 Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (“[T]here are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term....”). Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 6 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page 2 of 28) II. DISPUTED TERMS—THE ‘703 PATENT A. “Non-user selected waypoints” Defendants argue that a non-user selected waypoint cannot be determined by any “combination of system calculation/suggestion and user action.” D.I. 94, at 23. There is no support for this position, as the patent expressly recognizes that the user will be involved in accepting or even altering the non-user waypoints identified by the route calculation algorithm: The additional waypoints 420 have been included to allow the course 403 to avoid the preselected conditions. The waypoints 420, in the present situation, are non-user waypoints. In other words, waypoints 420 were determined by the system, and not the user. Embodiments however are not so limited. In an additional embodiment, the user can indicate waypoints to be used and/or alter waypoints that are provided by the system. Doc. 95-2 (‘703 Patent) at 8:55-65 (emphasis added). This point is supported by a simple juxtaposition of the patent figures and claims:4 Illustrated Embodiments Steps 1. A preselected condition is received (e.g., land 416, shown in green); 2. A route destination is received (e.g., waypoint 414, shown in blue); and 3. Performing a marine route calculation algorithm while routing a course to the route destination (e.g., as shown in red). 4 Doc. 96-2 (‘703 Patent) at FIG. 4A, 4B, 8:40-9:8; Doc. 95-4 (Michalson Decl.) at ¶¶ 75-82. Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 7 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page 3 of 28) Illustrated Embodiments Steps 4. The routing algorithm includes analyzing cartographic data between the start and destination points on the course (e.g., data 420); and 5. The algorithm includes re-routing the course by “identifying one or more non-user selected waypoints” (e.g., waypoints 420, shown in orange) to avoid the preselected condition(s) (e.g., land 416, shown in green). If each of these steps occurs as claimed, that is a completed act of infringement. Notably, infringement occurs when the routing algorithm has identified non-user waypoints for the user that avoid the selected route condition. See, e.g., Doc. 95-2 (‘703 Patent) at Claim 1. Whatever the user chooses from this point is simply irrelevant, and certainly not prohibited by the claims. For example, the user is free to accept all of the non-user waypoints and travel along the re- routed course. Id. at 8:55-65. Or she may choose to alter one of the non-user waypoints identified by the algorithm to better suit her navigation needs. Id. The inventions thus permit (and, indeed, encourage) the user to analyze, alter, accept, or otherwise act on the waypoints identified by the route calculation algorithm.5 Despite the patent’s express disclosure of post-infringement user acts, this is precisely what Defendants seek to disallow. This is improper, and the Court should reject Defendants’ restrictive definition excluding disclosed embodiments of the invention. Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1305 (Fed. Cir. 2007) (“We normally do not interpret claim terms in a way that excludes disclosed examples in the specification.”); Smith & Nephew, 5 Common sense dictates that such post-infringement user activity is inevitable―a user must always accept or reject (i.e., follow or not follow) the points identified along the re-routed course. See Dayco Products, Inc. v. Total Containment, Inc., 258 F.3d 1317, 1324 (Fed. Cir. 2001) (courts do not construe claims from “the viewpoint of counsel or expert witnesses retained to offer creative arguments in infringement litigation”). Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 8 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page 4 of 28) Inc. v. Ethicon, Inc., 276 F.3d 1304, 1309-10 (Fed. Cir. 2001) (“A claim interpretation that would exclude the reasonable practice of the method taught in the patent is rarely the correct interpretation; such interpretation requires highly persuasive evidentiary support.” (quotation omitted)). This conclusion is particularly strong where, as here, all of the asserted claims make use of the legally operative transition phrase “comprising.” See, e.g., Doc. 95-2 (‘703 Patent) at Claim 1. Critically, the phrase “comprising” is “generally understood to signify that the claims do not exclude the presence in the accused apparatus or method of factors in addition to those explicitly recited.” Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 811 (Fed. Cir. 1999) (emphasis added). By seeking to exclude user acts after infringement has already occurred—e.g., a user accepting and following the waypoints identified by the route calculation algorithm—Defendants’ construction should be rejected as inconsistent with the open-ended nature of the claimed inventions. Id. (“[I]nfringement is not avoided by the presence of elements or steps in addition to those specifically recited in the claim.”); ArcelorMittal France v. AK Steel Corp., 700 F.3d 1314, 1320 (Fed. Cir. 2012) (“The transition ‘comprising’ creates a presumption ... that the claim does not exclude additional, unrecited elements.”). For these reasons, and those previously stated, Garmin respectfully requests the Court afford this term its ordinary meaning. B. “Cartographic data” Defendants cannot explain why “cartographic data” is limited to data presented “on a map.” Defendants’ sole support for this position comes from a single line in the specification discussing “cartographic data ... of a map.” Doc. 94 at 13 (citing Doc. 95-2 at 3:7-8). But, even here, the patent does not define cartographic data as information “of a map,” let alone as data Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 9 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page 5 of 28) that must be presented “on a map” as Defendants propose.6 Nor does this one line from the patent operate to disclaim or disavow cartographic data that is not presented on a map. Thorner, 669 F.3d at 1365 (“The words of a claim are generally given their ordinary and customary meaning.... There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.”); Toshiba Corp. v. Imation Corp., 681 F.3d 1358, 1369 (Fed. Cir. 2012) (“Absent disclaimer or lexicography, the plain meaning of the claim controls”). Where the inventors wanted “cartographic data” to be presented on a map, they said so explicitly and unmistakably. E.g., Doc. 95-2 at Claim 30 (“displaying marine cartographic data”). Elsewhere, the inventors make clear that cartographic data is not limited to data presentable on a map, but instead may refer to any data that can be acquired, received, stored, or analyzed for purposes of routing a course. Id. at 3:52-54, 4:29-30, 6:44-47, Claims 12 and 15. In view of these and other descriptions, one of ordinary skill in the art, including Garmin and Defendants’ own experts, would recognize that Defendants’ proposed construction is far too restrictive. Ex. 16 (Michalson Tr.) at 140:5-144:11 (the phrase “cartographic data” refers to data affecting the motion of the vessel, regardless of whether it is displayed); Doc. 97 (Locke Decl.) at ¶ 45 (cartographic data “could be shown on a map,” not that it must). C. “[Marine] navigation” Defendants criticize Garmin’s construction for two unsubstantiated reasons. First, Defendants argue that the term “[marine] navigation” is not a requirement of the invention because the phrase only appears in the preambles of the claims. Doc. 94 at 7-8. Second, even if 6 If anything, this passage clarifies that cartographic data is broader than data “of a map.” Otherwise the phrase “of a map” in this passage would be superfluous. Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 10 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page 6 of 28) it is a requirement, Defendants contend that navigation does not entail both planning and thereafter following a course. Id. at 8-9. On both issues, Defendants are wrong. A preamble is limiting where, as here, it recites limitations of the claim or it is “necessary to give life, meaning, and vitality” to the invention. Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1357 (Fed. Cir. 2012) (citation omitted). Here, the term “[marine] navigation” is a limitation on the invention because it describes a “fundamental characteristic of the claimed invention that is properly construed as a limitation of the claim itself.” Poly-Am., L.P. v. GSE Lining Tech., Inc., 383 F.3d 1303, 1310 (Fed. Cir. 2004) (quotation omitted). Indeed, course calculation and travel is the hallmark of the invention disclosed throughout the ‘703 Patent. See Doc. 95-2 (‘703 Patent) at 1:18-20 (“The boater can then use the information from these devices in planning and navigating a course for the boat”); 1:21-23 (“planning and navigating a course for the boat”); Abstract (“methods are provided for marine navigation and course calculation....”); 1:45-47 (“[M]arine navigational ... having course calculation and analysis capabilities.”). Travelling along a planned marine course is so enmeshed with the inventions, in fact, that the inventors chose to specify “[marine] navigation” at the outset of each asserted patent claim. Because the preambles are necessary to understand the navigation-centric characteristics of the inventions, they are limiting.7 See Deere & Co., 703 F.3d at 1358. As to the substance, Defendants tacitly concede that Garmin’s construction is correct. Doc. 94 at 9 (navigation “could include any or all of the steps” proposed by Garmin). Notwithstanding this concession, Defendants go on to argue that the term “navigation,” in a 7 Defendants’ reference to the PTAB’s decision on this term is unavailing. This Court “owes no deference to the PTAB’s claim construction done as part of an inter partes review.” Pragmatus AV, LLC v. Yahoo! Inc., No. 13- 1176, 2014 WL 1922081, at *4 (N.D. Cal. May 13, 2014); SRAM Corp. v. AD-II Eng’g, Inc., 465 F.3d 1351, 1359 (Fed. Cir. 2006) (“this court is not bound by the PTO’s claim interpretation”). And even the PTAB equivocated on this issue by inviting the parties to make further submissions on this issue under the broadest reasonable interpretation standard that applies in that forum. See Doc. 96-3 at 10, n.5. Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 11 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page 7 of 28) vacuum, does not “necessarily” require both “planning” and “directing” along a course, as proposed by Garmin. Id. In making this argument, however, Defendants ignore the “fundamental rule of claim construction” that the “claims must be construed so as to be consistent with the specification, of which they are a part.” Merck & Co., Inc. v. Teva Pharms. USA, Inc., 347 F.3d 1367, 1371 (Fed. Cir. 2003). Critically, as used in the ‘703 Patent, the term “[marine] navigation” contemplates two related activities—calculating a course and thereafter directing the user along that calculated course. Doc. 95-2 (‘703 Patent) at 6:23-28 (“[T]he dynamic analysis of cartographic data ... for preselected conditions allows for a user to be aware of preselected conditions ... not necessarily ... along the course which the device is traveling.”), 6:61-66 (“along the course which the device is traveling”); see also id. at 1:18-20, 1:21-23, 1:45- 47, Abstract; Doc. 95-4 (Michalson Decl.) at ¶ 92 (the ‘703 Patent “expressly differentiates between the planning of a route and navigating a route”). The feature of directing along a planned course is why the patent discloses positioning technologies, including GPS. Doc. 96-2 (‘703 Patent) at 2:24-43; 10:64-67; FIG. 1;Doc. 95-4 (Michalson Decl.) at ¶ 93 (GPS in the patent “provides the real-time position information needed to provide guidance” and “directing a marine craft along a marine route”). For these reasons, Garmin submits that the construction of the phrase “[marine] navigation” is “planning a marine route and directing a marine craft along the marine route.” D. “Preselected conditions” A “preselected condition” is simply a route condition that is selected before route calculation and thereafter used during route calculation. This straightforward definition is supported throughout the specification. See Doc. 95-2 (‘703 Patent) at 11:10-11 (“The course analysis is performed to avoid the preselected conditions.”), 11:44-48 (“The one or more Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 12 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page 8 of 28) preselected conditions identified in the analysis can be used ... in performing the marine route calculation algorithm to calculate the course....”); 11:11-16 (“routing and/or re-routing the course to avoid the preselected conditions when the marine route calculation algorithm identifies one or more preselected conditions....”); 4:29-67 (“[A] variety of preselected conditions that are also used in conjunction with the marine route calculation algorithm.”); 5:19-23 (“marine route calculation algorithm to analyze a course ... in view of preselected conditions of the cartographic data, including the marine craft data.”); 5:23-27 (a “route calculating algorithm ... to identify and avoid preselected conditions....”). In view of these and other8 descriptions in the patent, no further construction is necessary or warranted. Likewise, the patent’s expansive descriptions about “preselected conditions” reveal four fatal flaws with Defendants’ erroneous construction.9 First, the language from the ‘703 Patent to which Defendants refer is exemplary, not definitional. See Doc. 94 at 11-12 (quoting Doc. 95-2 (‘703 Patent) at 4:33-42). Of the many route conditions described in the patent, some “can include” parameters associated with geographical conditions. Doc. 95-2 (‘703 Patent) at 4:33-42. But there are many other listed “examples,” and even that listing was intended “to name only a few” of the many types of route conditions. Id. Such explanatory statements do not equate to definition or disavowal, and the Court should reject Defendants’ effort to rewrite the claimed “preselected conditions” as 8 See Doc. 95-2 (‘703 Patent) at 7:44-46 (“alert signal ... when a preselected condition is encountered during the analysis”); 8:49-51 (“calculate ... courses around the preselected condition”); 12:31-34 (“calculations provide a course that best avoids courses with preselected conditions”). 9 In their brief, Defendants appear to suggest that Garmin’s construction seeks to give it an advantage on the issue of infringement. Doc. 94 at 11. Not so. It was Defendants, not Garmin, who proposed that this term for construction, not Garmin. And it was Defendants, not Garmin, who based a proposed construction on issues involving infringement. See Doc. 94 at 11-12. For this reason alone, the Court should reject Defendants’ construction as improperly seeking to bias the claim construction process to exclude features of the accused products. See Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322, 1330-1331 (Fed. Cir. 2006) (“[T]he the rule forbids a court from ... biasing the claim construction process to exclude or include specific features of the accused product or process.”). Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 13 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page 9 of 28) “geographical conditions.” See Toshiba, 681 F.3d at 1369 (“Absent disclaimer or lexicography, the plain meaning of the claim controls.”); Prima Tek II, L.L.C. v. Polypap, S.A.R.L., 318 F.3d 1143, 1150-51 (Fed. Cir. 2003) (“Varied use of a disputed term in the written description demonstrates the breadth of the term rather than providing a limited definition”). Second, the examples listed in the specification are not universally limited to “geographical conditions.” For instance, the patent discusses a variety of transient conditions that can be used during route calculation, such as wind, weather, and tide. Doc. 95-2 (‘703 Patent) at 4:33-42; Ex. 16 (Michalson Tr.) at 140:5-141:3. None of these fleeting conditions are fairly characterized as geographic in nature—a fact that, standing alone, belies Defendants’ absolutist claim that “all of the ‘preselected conditions’ identified in the specification refer to geographical conditions....” Doc. 94 at 12.10 Because “a claim interpretation that excludes a preferred embodiment from the scope of the claim is rarely, if ever, correct[,]” the Court should reject Defendants’ effort to exclude the disclosed non-geographic conditions from the claims. Accent Packaging, Inc. v. Leggett & Platt, Inc., 707 F.3d 1318, 1326 (Fed. Cir. 2013). Third, Defendants’ definition ignores the fact that the preselected conditions “can include ... any values associated with the parameters[.]” Doc. 95-2 (‘703 Patent) at 4:33-35. Thus, even if the examples listed in the specification are limited to “geographical conditions,” the term “preselected conditions” is not so limited and includes any values “associated” with those geographical conditions—e.g., “vessel information” such as a boat’s depth. See Doc. 95-2 (‘703 Patent) at 4:38; Ex. 16 (Michalson Tr.) at 109:13-24. 10 And even if all of the disclosed conditions were geographic, that is still not a basis to limit the claims. See Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (“[W]e have expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment.”); Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1370-71 (Fed. Cir. 2008) (“[A]s is well established, an applicant is not required to describe in the specification every conceivable and possible future embodiment of his invention.”). Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 14 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page 10 of 28) Fourth, and final, Defendants’ arguments regarding disavowal are wildly off-base. Disavowal requires a “clear and unmistakable disclaimer.” Thorner, 669 F.3d at 1366-67. And the standard for establishing “disavowal of claim scope is [] exacting.” Id. The isolated statement identified by Defendants falls far short of this standard, as the inventors merely explaining that the invention “analyzes a course for one or more preselected conditions, such as conditions” like those listed in the specification and discussed.11 Compare Doc. 96-6 at 16 with Doc. 95-2 at 4:36-42. Further, the statement was made in connection with then-pending claim 10, which expressly listed a number of specific types of preselected conditions. See Doc. 96-6 at 5 (“receiving preselected conditions selected from the group consisting of” (emphasis added)). The claims at-issue here do not include any similar listing of specific types of preselected condition, and this statement is thus inapposite. E. “Re-rout[e/ing] the course to avoid the preselected conditions” According to Defendants, “re-routing the course” somehow excludes “methods in which a singular route is calculated and drawn.” Doc. 94 at 14. There is no support for Defendants’ construction. On the contrary, the claims and specification make clear that “re-routing” refers to the concept of making certain corrections during course analysis and routing—namely, “performing a marine route calculation algorithm to analyze a course” and, based on that analysis, “re-routing the course” through “one or more non-user selected waypoints” in order “to avoid the preselected conditions.” See Doc. 95-2 (‘703 Patent) at Claim 1. Garmin starts, as it must, with reference to the text of the claims. First, in relevant part, the claims require “performing a marine route calculation algorithm to analyze a course between a first location and the potential waypoint avoiding the preselected conditions[.]” Doc. 95-2 11 Immediately following this statement, the inventors made it clear that the invention includes situations where “the user may simply select a water depth greater than the ship’s draft, thereby avoiding any possible grounding problems.” Doc. 95-6 at 17. Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 15 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page 11 of 28) (‘703 Patent) at Claim 1. In other words, performance of the route calculation algorithm results in a course avoiding preselected conditions. Second, the claims continue to explain how to route a course avoiding preselected conditions, “including analyzing cartographic data ... and re- routing the course to avoid the preselected conditions by identifying one or more non-user selected waypoints.” Id. While re-routing inherently implies some iteration to the process, there is no requirement that the routing start over “again” every time, as Defendants argue. The specification confirms these aspects of the claimed inventions. For example, the patent explains, “In re-routing the course calculated by the marine route calculation algorithm, the algorithm can further include identifying one or more non-user waypoints between the first location and the potential waypoint. These non-user waypoints represent the waypoints identified by the device in re-routing the course.” Id. at 11:17-222 (emphasis added). “That is, calculating the re-route can include calculating the re-route with a preference for avoiding one or more preselected conditions in any previous course” through non-user waypoints. Id. at 12:27- 30. Indeed, a “singular route,” Doc. 94 at 14, results from the embodiments illustrated through the patent figures. Doc. 95-2 (‘703 Patent) at FIGS. 4A, 4B, 8:25-65.12 Importantly, only the portions of the course that encounter a preselected condition are re-routed. Far from excluding devices “in which a singular route is calculated,” the claims and specification embrace them. This is even reflected in the passages cited by Defendants, which explain that the process of route calculation “can be repeated as many times as necessary, without limitation, in order to achieve a desired course.” Id. at 12:16-25 (emphasis added). And, as depicted in Figures 4A and 4B (discussed above), the specification discloses routing a single course avoiding a preselected route condition (e.g., land). 12 Apparently Defendants’ expert agrees with Garmin, not Defendants. See Doc. 97 (Locke Decl.) at ¶ 51 (“the first ‘route’ calculated by the marine route calculation algorithm is not intended to avoid any preselected conditions, while the second or subsequent ... will avoid preselected conditions.” (emphasis added)). Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 16 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page 12 of 28) These aspects of “re-routing” to avoid preselected conditions are entirely consistent with the extrinsic evidence. First, Defendants’ dictionary evidence defines “re-route” as “to send by a new or different route.” Doc. 96-10 at 5 (emphasis added). In the context of the ‘703 Patent, “new or different” refers to a route that travels through “one or more non-user selected waypoints,” thereby avoiding the preselected route conditions. And as Garmin’s expert explained, the entirety of the course need not be re-routed to route a “new or different” course. See Ex. 16, Michalson Dep. at 151:16-153:6. Both the intrinsic and extrinsic evidence confirm Garmin’s position, and Garmin respectfully requests that this term be given its ordinary meaning. F. “Receiving an indication of a minimum water depth from a user” Claim 28 of the ‘703 Patent requires “receiving an indication of a minimum water depth from a user” and subsequently “performing a marine route calculation algorithm to route a course ... avoiding water depth less than the minimum water depth[.]” Doc. 95-2 (‘703 Patent) at Claim 28. The claim is clear on its face and, as such, does not require any construction. Undeterred, Defendants propose rewriting the claim to replace “indication of” with “a parameter showing.” Doc. 94 at 19. All three of the reasons advanced by Defendants for their construction lack merit. First, Defendants assert that “a jury would not understand this term.” Id. What is missing from Defendants’ argument, of course, is any explanation of why the jury will lack the mental capacity to understand something as basic as “indicating” a minimum water depth. If Defendants believe further explanation is required, they will be entitled to offer such explanation through percipient or expert witnesses as a matter of fact. Because the claim text is facially clear, Garmin respectfully asks that the Court decline Defendants’ invitation to rewrite the claims Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 17 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page 13 of 28) to suit their litigation theories. Second, Defendants concoct an elaborate argument centering on preselected conditions and their associated values. Doc. 94 at 19. While it is unclear what, exactly, Defendants intend by that argument, it is clear the argument rests on several flawed assumptions. For starters, claim 28 does not require “preselected conditions,” so Defendants focus on the same is inapposite. Next, without any intrinsic support, Defendants assert that an “indication of a minimum water depth” must refer to some “associated value or parameter showing (i.e., reading) the value of the minimum water depth.” Doc. 94 at 19. But Defendants’ assertion only underscores why their proposal is inadequate. Specifically, Defendants argue, on the one hand, that an indication of a minimum water depth is an “associated value or parameter,” while, on the other, proposing a construction that only permits a “parameter.” See id. Third, Defendants impermissibly refer to Garmin’s infringement contentions and the accused products to argue that Garmin’s requested “plain and ordinary meaning” is inadequate. Id. at 20. That type of argument is improper. NeoMagic Corp. v. Trident Microsys., Inc., 287 F.3d 1062, 1074 (Fed. Cir. 2002) (“[C]laims may not be construed with reference to the accused device.”); SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1118 (Fed. Cir. 1985) (en banc) (“A claim is construed in light of the [intrinsic evidence], not in light of the accused device.” (emphasis in original)); Wilson Sporting Goods, 442 F.3d at 1330-1331. Defendants’ argument is unpersuasive for other reasons, too. In particular, Defendants admit that a boat’s draught, as Garmin agrees and the specification states, is a factor that can be used to calculate or determine (i.e., serve as an “indication of”) a minimum water depth. Doc. 94 at 20. The specification does not require, as Defendants seem to suggest, that “indication of” means “uniquely defining” or “uniquely showing.” Had the inventors intended such a meaning, they Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 18 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page 14 of 28) would have removed the phrase “indication of” from the claim altogether (i.e., “receiving a minimum water depth from a user”). But that is not how the inventors chose to define their invention. At best, whether a boat’s draught indicates a minimum water depth (e.g., a depth greater than the boat’s draught) raises a question of fact concerning infringement for the jury to address, not a matter of claim construction. See Lazare Kaplan Int'l, Inc. v. Photoscribe Techs., Inc., 628 F.3d 1359, 1376 (Fed. Cir. 2010) (“[T]he parties’ dispute concerns factual questions relating to the test for infringement and not the legal inquiry of the appropriate scope of the [disputed] limitation.”). Defendants’ proposal is a thinly veiled attempt to rewrite otherwise unambiguous claim language, which the Court should disregard in favor of the plain and ordinary meaning. G. “Marine route calculation algorithm” Indefiniteness In less than two pages of doubled-spaced text, Defendants ask the Court to invalidate all 50 claims from the ‘703 Patent as allegedly lacking reasonably clarity to a skilled marine- navigation artisan. Doc. 94 at 9-10. But Defendants’ argument falls far short of rebutting the presumption of validity with the “clear and convincing” proof the law demands. See 35 U.S.C. § 282 (“A patent shall be presumed valid.”); Intel Corp. v. VIA Tech., Inc., 319 F.3d 1357, 1366 (Fed. Cir. 2003) (“Any fact critical to a holding on indefiniteness, moreover, must be proven by the challenger by clear and convincing evidence.”). Even if Defendants’ challenge is not rejected on its face, it fails on the facts and the law. Under the Supreme Court’s test in Nautilus a patent is only invalid for indefiniteness “if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 19 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page 15 of 28) Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2124 (2014). The Federal Circuit has cautioned that “the dispositive question in an indefiniteness inquiry is whether the ‘claims,’ not particular claim terms” fail this test. Cox Commc’ns, Inc. v. Sprint Commc’n Co. L.P., 838 F.3d 1224, 1231 (Fed. Cir. 2016); Sprint Commc’ns Co. L.P. v. Comcast Cable Commc’ns LLC, No. 11-2684, 2014 WL 5089402, at *6-*7 (D. Kan. Oct. 9, 2014) (Lungstrum, J.) (“Nautilus only requires that ‘a patent be precise enough to afford clear notice of what is claimed, thereby apprising the public of what is still open to them.’”). Here, Defendants’ entire theory rests on a single incorrect premise—that “the ‘703 Patent does not disclose any [] algorithm” for “calculat[ing] the course ... to best avoid preselected conditions.” Doc. 94 at 9. For three reasons, Defendants’ argument fails to carry their heavy burden of clear and convincing proof. First, the claim text itself discloses an algorithm for calculating a route that avoids preselected conditions. See Fitbit, Inc. v. AliphCom, No. 15-4073, 2017 WL 386257, at *17-*18 (N.D. Cal. Jan. 27, 2017) (rejecting argument that claim term was indefinite where, as here, “[t]he claims themselves set forth a detailed procedure ... that sufficiently bound the algorithm(s) by which this client software can operate.”). Indeed, the algorithmic steps are specifically set forth in the “analyzing,” “re-routing,” and “identifying” limitations of the claims, which Defendants conveniently ignore: Defendants’ Premise About Claim Actual Claim Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 20 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page 16 of 28) As the claims themselves show, these step-by-step processes of calculating marine routes include: 1) analyzing cartographic data between two points on the course for preselected route conditions (step shown above in green); 2) identifying non-user waypoints if preselected conditions are identified as a result of the analysis (step shown in blue); and 3) re-routing the course through the identified non-user waypoints to avoid the identified preselected conditions (step shown in red). Id. As explained by Garmin’s expert, these steps delineate some of the many novel marine route calculation processes set forth in the ‘703 Patent. Doc. 95-4 (Michalson Decl.) at ¶¶ 75-82 (discussing the improved processes of the asserted claims); see also id. at ¶¶ 83-89 (discussing other improved route calculation algorithms in the ‘703 Patent); Ex. 16 (Michalson Tr.) at 138:23-140:4. Second, the dependent claims further recite additional steps of the marine route calculation algorithm: Analyzing cartographic data for area around a GPS-determined location. In dependent claim 2, the step of “analyzing” includes “determining the first location on the course based on a signal from a global positioning system (GPS)” and “analyzing cartographic data for a predetermined area around the first location for preselected conditions.” Doc. 95-2 at Claim 2; see id. at 9:24-33; Doc. 95-4 at ¶¶ 83-86; Acquiring the cartographic data for analysis from a GPS system. Similarly, in claim 15, the step of analyzing cartographic data includes “acquiring cartographic data from a global positioning system (GPS),” e.g., GPS position information. Doc. 95-2 at 14:7-9; see id. at 2:8-43, FIG. 1; and Receiving a user-defined graphical filter area and route based on analyzing that area for preselected conditions. In claim 24, the step of analyzing and calculating the route includes “receiv[ing] a user defined graphical filter area” and “operat[ing] on the marine route calculation algorithm to analyze cartographic data within the defined graphical filter area for preselected conditions....” Doc. 95-2 at 14:57-64; see id. at 10:3-15; Doc. 95-4 at ¶¶ 87-89. Third, the scope of the term “marine route calculation algorithm” is sufficiently defined by the specification. The meaning of the term “marine route calculation algorithm” is apparent Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 21 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page 17 of 28) in view of its well-established meaning in the art. Indeed, Dr. Michalson has explained that the term “would be understood by a skilled artisan to be a route calculation algorithm applied in a marine environment” because there are a finite number of routing algorithms available in the marine context, including the A* and Dykstra algorithms that were known in the navigation arts (discussed in references cited on the face of the ‘703 Patent).13 Doc. 94-5 (Michalson Decl.) at ¶¶ 95-104; see also Ex. 16 (Michalson Tr.) at 134:9-136:5, 182:3-15. “In other words, ‘marine route calculation algorithm[]’ refers to a class of route calculation algorithms, which itself had a well-defined and reasonable understood meaning based on numerous known examples as of 2003.” Doc. 94-5 (Michalson Decl.) at ¶ 98; see also id. at ¶¶ 97, 99-100; S3 Inc. v. NVIDIA Corp., 259 F.3d 1364, 1371 (Fed. Cir. 2001) (“The law is clear that patent documents need not include subject matter that is known in the field of the invention and is in the prior art, for patents are written for persons experienced in the field of the invention.”) (citation omitted). Likewise, during prosecution the examiner who is also one of skill in the art was able to cite many references that disclose “marine route calculation algorithms.” See, e.g., Doc. 95-9 at 23:64-67, 24:33-66; Doc. 95-10 at 3:2-12, 4:9-20; Doc. 95-11 at ¶¶ 0076-0078. The fact “the examiner was able to understand and apply the term in performing a search for prior art” shows the term “marine route calculation algorithm” is not indefinite. See Sonix Tech. Co. v. Publications Int’l, Ltd., 844 F.3d 1370, 1379 (Fed. Cir. 2017).14 Navico’s feigned confusion over how to analyze cartographic data using a marine route 13 Defendants’ expert was tellingly silent on the issue despite Defendants’ lofty burden. See 35 U.S.C. § 282; Intel, 319 F.3d at 1366 (“Any fact critical to a holding on indefiniteness [] must be proven by the challenger by clear and convincing evidence.”). 14 Indeed, Navico itself apparently had no difficulty understanding “marine route calculation algorithm” when it affirmatively used the phrase to describe the invention to the Patent Office long before this suit was filed. Doc. 99- 16 at 8 (“Rather, [the ‘703 patent] discloses routes that are calculated in real time, based on dynamic analysis of cartographic data and using marine route calculation algorithms....”). And Defendants’ own documents confirm that those working in this field routinely refer to route creation procedures as route calculation or routing algorithms. See Ex. 17 (C-MAP MAX Premier Specification) at CMAP_01_0001071; Ex. 18 (Quick Guide to MAX Premier WinPlot Demonstrator) at CMAP_01_0001087. Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 22 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page 18 of 28) calculation algorithm is merely a litigation-inspired tactic and the Court should disregard it. Garmin’s Alternative Construction Defendants also criticize Garmin’s alternative construction. See Doc. 94 at 9-10. This criticism is unfounded. Defendants concede that an algorithm is a “step-by-step process.” Doc. 94 at 10. And Garmin has shown why the intrinsic evidence is consistent with the balance of Garmin’s alternative construction. See Doc. 95 at 18-19. Quite tellingly, neither Defendants nor their expert expressed any disagreement as to the substance of Garmin’s proposed alternative construction.15 To the extent construction of this term is necessary, it should be construed to mean “a computer-implemented set of rules for performing a step-by-step process to calculate marine routes.” H. “[Identifying a potential waypoint] upon a first event” Claim 12 of the ‘703 Patent, which recites the claim term “upon a first event,” is valid. Doc. 95-2 (‘703 Patent) at Claim 12. First, the claim is definite because its requirements are reasonably certain. Specifically, the waypoint must be identified in response to some triggering event—that is, there is a cause- and-effect relationship between the two that occurs non-randomly. Doc. 95-4 (Michalson Decl.) at ¶¶ 107-111. And the patent is replete with exemplary “events” that trigger identification of the claimed waypoint.16 For example, an event can be a selection from a touch screen display (Doc. 95-2 (‘703 Patent) at 3:13-15, 10:57-61), selection through a data entry button (id. at 4:46-54), reception of a GPS position signal (id. at 6:48-60, 10:64-67), and so on. These examples combined with the plain and ordinary meaning of the word “upon” define with reasonable certainty the claim term at issue. Kaneka Corp. v. Xiamen Kingdomway Grp. Co., 790 F.3d 15 In fact, Defendants criticize terms that are not even part of Garmin’s proposed construction. See Doc. 94 at 10 (referencing “unambiguous rules”); Doc. 97 (Locke Decl.) at ¶ 33 (same). 16 See Doc. 95 at 20-21; see also Doc. 95-4 (Michalson Decl.) at ¶ 107-111. Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 23 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page 19 of 28) 1298, 1305 (Fed. Cir. 2015) (“word-for-word alignment of disclosed embodiments ... with claim language is unnecessary when the meaning of a claim term can be ascertained from the intrinsic record.”). Defendants nonetheless argue that because the exact claim language does not appear verbatim in the specification, the claim term must be indefinite. However, courts routinely reject this argument. For example, in TRIC Tools, Inc. v. TT Techs., Inc., No. 12-cv-3490, 2014 WL 2880028, at *14 (N.D. Cal. June 24, 2014), the accused infringer “argue[d] that ‘retention feature’ is indefinite because it appears only in the claims but not in the specification.” Id. The district court disagreed and held that, although the claim language did not appear in the specification, the scope of the claim term was certain because its meaning derived from an element in a figure of the patent. Id. at *15. Second, contrary again to Defendants’ argument, the breadth of the term “event” does not render it indefinite.17 In re Gardner, 427 F.2d 786, 788 (CCPA 1970) (‘Breadth is not indefiniteness.”); Fitbit, 2017 WL 386257, at *17-*18 (same). Nor does “claiming broadly” somehow “render a claim insolubly ambiguous” or otherwise “prevent the public from understanding the scope of the patent.” Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1352 (Fed. Cir. 2009). That “upon a first event” may, to Defendants, be broad says nothing about the skilled artisan’s ability to understand the boundaries of that broad scope with reasonable certainty. See Doc. 95-4 (Michalson Decl.) at ¶¶ 107-111. For these reasons, Defendants have not shown indefiniteness by clear and convincing 17 Even if breadth were relevant to the inquiry (which it is not), the flaw in Defendants’ position is obvious when claim 12 is compared against other asserted claims, such as claims 1 and 27. Compare Doc. 95-2 (‘703 Patent) at 13:57 (claim 12: “identifying a potential waypoint upon a first event”) with id at 13:4, 15:5 (claims 1 and 27: “identifying a potential waypoint”). Thus, this limitation of claim 12 is actually narrower than claims 1 and 27 (which are not alleged to be invalid on these grounds). Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 24 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page 20 of 28) evidence, and Garmin respectfully requests the Court afford this term its plain meaning.18 III. DISPUTED TERMS—THE ‘987 PATENT A. “A global positioning system receiver device” (preamble, claims 9 and 14) The preambles of claims 9-11 and 14-16 are limiting because a GPS receiver device is necessary to understand the scope and meaning of the inventions and claims. Specifically, the ‘987 patent reinforces over and over that the invention refers to a GPS device. For example, the patent describes the “object” of the invention as “[providing] a GPS system which will provide a means for backtracking a path that has been traveled.” Doc. 95-3 (‘987 Patent) at 2:11-13 (emphasis added). In addition, the patent describes the invention as “a GPS system which reduces the amount of memory and computational power required to process a return path based upon a traveled path.” Id. at 2:14-16 (emphasis added). Every embodiment of this invention seeks “to provide a safe, reliable and inexpensive GPS system....” Id. at 2:32-34 (emphasis added). Defendants, on the other hand, argue that “these preambles are non-limiting” because they are unnecessary to understand the body of claims. See Doc. 94 at 27. But Defendants’ own authority compels a different result. For example, in Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003), the Federal Circuit affirmed a limiting construction of the preamble because the terms “‘growing’ and ‘isolating’ are not merely circumstances in which the method may be useful, but instead are the raison d’etre of the claimed method itself.” Likewise, in Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1306 (Fed. Cir. 1999), the Federal Circuit reversed summary judgment of non-infringement and 18 Defendants’ citation to Interval Licensing LLC v. AOL, Inc. is inapposite. See Doc. 94 at 18 (citing 766 F.3d 1364 (Fed. Cir. 2014)). That case dealt with a patent claim that recited subjective limitations in order to infringe— namely, displaying something “in an unobtrusive manner” so as to “not distract a user.” Interval Licensing, 766 F.3d at 1367-1368. Unlike those claims, the claims at-issue here are defined objectively, not subjectively. Tellingly, Defendants do not argue otherwise. Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 25 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page 21 of 28) held a preamble limiting where a term of the preamble referred to elements that together “ma[de] up” a later claimed element. Finally, in Deere & Co., 703 F.3d at 1357-1358, the Federal Circuit held that recitation of “rotary cutter deck” made a preamble limiting because it “inform[ed] one of skill in the art as to the structure required by the claim.” These cases support Garmin’s position, not Defendants’. As in Deere & Co., so too, here, does the preamble inform one of skill in the art as to the structure required by the claim. For instance, as illustrated in Figure 1 (copied below), the invention entails three necessary structures—a “global positioning system receiver device” [red], a “memory” [blue], and a “processor” [green]. Doc. 95-3 (‘987 Patent) at 3:34-36. The “global positioning system receiver device” [red] is responsible for receiving the GPS signals corresponding to the user’s location along the forward path. Id. at 3:56-63; id. at Claim 9 (“corresponding to a geographic position on a forward path”). Once the backtrack function is activated, the processor [green] selects a subset of the locations “stored in a memory of a Global Positioning System” [blue] to “generat[e] a backtrack[.]” Id. at 2:39-42; id. at Claim 9.19 Because the patent claims and patent specification are clear that the “global system positioning receiver device” features are “necessary to give life, meaning, and vitality to the claim[s],” these “preamble[s] should be construed as if in the balance of the claim.” Pitney 19 Unlike these three structures, the other components illustrated in Figure 1 are optional. Id. at 4:6-32. Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 26 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page 22 of 28) Bowes, 182 F.3d at 1305. B. “Subset” Defendants admit that “the ordinary meaning of the term ‘subset’ of any set ... could include all of the points in the original set of points.” Doc. 94 at 23. Echoing this admission, Defendants’ expert, Dr. Locke, similarly explains that “[t]he ordinary mathematical meaning of the term ‘subset’ ... would be the original set with zero or more elements removed. This means that the extremes for any subset size using the ordinary mathematical meaning would be, at largest, the same elements as the original set....” Doc. 97 (Locke Decl.) at ¶ 78 (emphasis added). In other words, “subset” refers to the source of the data—it says nothing about the size of the subset or the scope of data that it must exclude. For these reasons, the Court should reject Defendants’ construction in favor of the ordinary meaning of the term “subset,” which a jury will readily appreciate based on the anticipated evidence at trial. Thorner, 669 F.3d at 1367. Despite otherwise agreeing with the plain and ordinary meaning of the term, Defendants’ nevertheless argue that the Court should eschew that meaning because of prosecution history estoppel. Doc. 94 at 23. As the party seeking to invoke disclaimer, Defendants carry the heavy burden of proving “the existence of a ‘clear and unmistakable’ disclaimer that would have been evident to one skilled in the art.” Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1063-64 (Fed. Cir. 2016). This is a heavy burden Defendants simply cannot meet. First, Defendants rely on statements made in March 1999 in response to an examiner rejection in view of U.S. Patent No. 3,502,640 (“Yagyu”). Garmin distinguished Yagyu by stating that it “analyzes and organizes the set of forward data points into a smaller subset by excluding points found physically within a specific range of each other.” Doc. 94 at 23 (citing Doc. 96-11 at 3-4). This statement, however, was directed at an entirely different aspect of the Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 27 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page 23 of 28) invention than the necessary size of the subject. Instead, Garmin’s statement focused on the procedures the GPS system uses to store positions while traversing a forward path. See Doc. 96- 11 at 3-5.20 In particular, as Garmin argued, Yagyu did not disclose storing points corresponding to the user’s travel along a forward path in “real time”—rather, Yagyu relied on “pre-established paths.” Id. at 3-4.21 Thus, Garmin’s prior arguments which at the very least are “amenable to multiple reasonable interpretations” fail to rise to the level of “clear and unmistakable” disclaimer. Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040, 1045 (Fed. Cir. 2016) (“W]here the alleged disavowal is ambiguous, or even ‘amenable to multiple reasonable interpretations,’ [courts] have declined to find prosecution disclaimer.”); Lucent Techs., Inc. v. Gateway, Inc., 525 F.3d 1200, 1211-12 (Fed. Cir. 2008) (“[T]he arguments made by the applicants during prosecution clearly distinguish the claimed method from that of [the prior art], but do not constrain the definition of [the disputed claim term] as urged by the defendants.”). Second, Defendants refer to an equally unhelpful statement made in connection with U.S. Patent No. 5,543,802 (“Villevielle”). Doc. 94 at 23. There, the inventors noted that Villevielle failed to disclose selecting or storing a subset of forward path points, as Villevielle “makes it very clear that the waypoints of the set are reversed, as a group, without designating individual waypoints, to form a route indicative of prior position movement and for creating a reverse route.” Doc. 96-13 at 3. And because Villevielle did not disclose designation of individual waypoints, it also failed to disclose a “subset of data points [which] comprises at least one less 20 These statements referred to the disclosed processes to weed out insignificant position changes when travelling along a forward path—a distinction the patent describes as “steady” and “non-steady” state. Doc. 95-3 (‘987 Patent) at 2:11-13. While traveling the forward path, the system compares the most recent GPS position to the last two stored in memory. Id. at 4:37-40. If the distance is small (i.e., “below a particular threshold”), the device is in steady state and the recent GPS position is discarded. Id. at 4:43-45. If the distance is larger (i.e., “above the threshold”), the device is operating in non-steady state and the recent GPS position stored as part of the forward path. Id. at 4:45-48. 21 Doc. 96-11 at 3 (“Data points ... are points corresponding to geographic positions on a forward path.... Migration points, as taught in Yagyu, are not points ... on a forward path.”). Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 28 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page 24 of 28) data point than is comprised in said set of data points,” as required by certain dependent claims. Id. at 4. (noting that dependent claim 15 requires “the data points on the backtrack path are less than (by at least one) the data points on the forward path. ... [F]or this additional reason, claim 15 is allowable.” (emphasis added)). These inventor statements, again, say nothing about the required size of the subset for the independent claims, which are presumed to be broader in scope than the dependent claims specifying that the subset contains fewer than all of the points. Wright Med. Tech., Inc. v. Osteonics Corp., 122 F.3d 1440, 1445 (Fed. Cir. 1997) (courts “must not interpret an independent claim in a way that is inconsistent with a claim which depends from it”). In view of the prosecution history as a whole, including the less-than-all dependent claims contemporaneously discussed with the examiner, Defendants cannot show the required “clear and unmistakable” disavowal of the admittedly ordinary meaning of “subset.” Ecolab, Inc. v. FMC Corp., 569 F.3d 1335, 1342 (Fed. Cir. 2009) (“Even if an isolated statement appears to disclaim subject matter, the prosecution history as a whole may demonstrate that the patentee committed no clear and unmistakable disclaimer.”); Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1358 (Fed. Cir. 2004) (“Absent a clear disavowal ... the patentee is entitled to the full scope of its claim language.”). C. “Forward path” Claim 11 of the Defendants refer to just a single statement from the ‘987 Patent as supporting their “entire” path construction. Doc. 94 at 21. But even here the inventors were discussing the prior art, not the invention. See Doc. 95-3 (‘987 Patent) at 1:11, 1:45-48. This fact is fatal to any alleged disavowal of the plain meaning of “forward path.” See Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1306 (Fed. Cir. 2011) (“[S]tatements about the difficulties and failures in the prior art, without more, do not act to disclaim claim Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 29 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page 25 of 28) scope.”); Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1335-36 (Fed. Cir. 2009) (“A patentee’s discussion of the shortcomings of certain techniques is not a disavowal of the use of those techniques in a manner consistent with the claimed invention.”). Far from disclaiming scope, the specification refers to an “entire path” when describing just one advantage of the claimed invention—while traveling along the forward path, only storing GPS positions that reflect a significant position change and discarding the rest. This mode of operation is described as non-steady state in the patent, and further minimizes burdens on the device. Doc. 95-3 (‘987 Patent) at 4:49-51 (“[T]he distance along path 100 that may be stored is greatly increased since only non-steady state data points 110 are stored.”). But an advantage of the invention is not the invention itself, as the adjacent statements about the prior art make clear. Id. at 1:55-58 (“Additionally, even if one would store every minute detail of a path, the user would not want to know about each minor change in path stored and replayed.”). For these reasons, Defendants have not met their “exacting” burden to show that one of the two exceptions in favor of a term’s ordinary meaning applies. D. “Backtrack path” The term “backtrack path” has a readily understood meaning, and no further construction is required. Defendants’ contention that this ordinary term would somehow be incomprehensible to a lay juror, see Doc. 94 at 26, is baseless. Defendants’ proposed construction confuses the thing itself for the process used to create it. See, e.g., Doc. 94 at 26 (conflating “backtrack path” with “a method”). Specifically, Defendants argue that the “backtrack path” should be “defined by the ‘subset’ for retracing the ‘forward path.’” See Doc. 94 at 24 (emphasis added). The backtrack path itself is simply a backward or return path. See, e.g., Doc 95-3 (‘987 Patent) at 2:11-13; id. at 2:14-16. The Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 30 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page 26 of 28) specification does not require that the backtrack path be a “retracing” of the forward path, let alone the “entire” forward path. The backtrack paths of the ‘987 Patent cannot “retrace” the entire forward path, since the whole point is to create point-reduced return paths (which may involve deviations from the original path). The specification also does not require that the path be defined by a subset of points from the forward path. But how the backtrack path is created―including selecting a subset of points from a set of geographic positions on the forward path―is different than the path itself. See, e.g., Doc. 95-3 (‘987 Patent) at Claim 7; id. at 2:39-3:11, 4:29-52, 4:65-6:25. Given this context, it would be improper to import limitations into the term “backtrack path” because it is the claims themselves that define the applicable process. Moreover, dependent claim 10 expressly states that the “subset of data points comprises at least one less data point than is comprised in said set of data points.” Doc. 95-3 (‘987 Patent) at Claim 10. Because Defendants’ construction would render this claim meaningless, it should be rejected. CytoLogix Corp. v. Ventana Med. Sys., Inc., 424 F.3d 1168, 1173 (Fed. Cir. 2005) (“An interpretation of one claim that renders another claim meaningless is disfavored.”). For these reasons, the Court should reject Defendants’ “hyper-technical reading of the limitation” and instead apply the “common-sense meaning” as proposed by Garmin. Lisle Corp. v. A.J. Mfg. Co., 398 F.3d 1306, 1314 (Fed. Cir. 2005). E. “Automatically” Claims 12 and 14 of the ‘987 Patent require, among other things, that certain acts be performed “automatically.” In particular, the claims require “automatically” selecting and storing points as the backtrack path.” Doc. 95-3 (‘987 Patent) at Claims 12 and 14. The dispute here is very narrow—whether, and to what extent, the invention excludes a user’s activation of Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 31 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page 27 of 28) these automatic functions. As explained below, Defendants’ construction runs afoul of the plain meaning of the word “automatically” as used in the claims and specification. For these reasons, Garmin submits that the term “automatically” should not be construed to exclude user activation of the “automatic” steps of storing and selecting data points. The specification explicitly states that the “automatic” steps are activated by the user. And, “[a]s would be expected, the user would activate system 10 at the beginning of path 100....” Id. at 4:27-29 (emphasis added). Elsewhere, the patent explains that “the user would activate the backtrack method disclosed below.” Id. at 4:29-30 (emphasis added).22 In addition to user activation, both of these steps can be “automatically” executed based on a values “entered” or “input by the user”—i.e., user activation. Id. at 4:51-53, 5:7-9.23 Because the ‘987 Patent expressly embraces a user’s activation of these and other automatically-executed functions, Defendants proposed construction is improper. CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1235 (Fed. Cir. 2005) (“[T]he use of ‘comprising’ suggests that additional, unrecited elements are not excluded. Such elements could include human actions to expressly initiate the automatic storing or inserting, or to interrupt such functions.”). Defendants’ only argument in favor of their construction is that it is required to distinguish claims 12 and 14 from claims 7 and 9, which “recite nearly the exact same claim language, but without use of the word ‘automatically.’” Doc. 94 at 28. Thus, Defendants argue exclusion of any user control is necessary to avoid rendering the term automatically “superfluous.” Id. Not so. Under Garmin’s proposed construction, the steps of storing and 22 Defendants try to distinguish these permissive statements by arguing that they do not “necessarily requir[e] any specific activation to occur before [these claim steps] are performed.” Doc. 94 at 29. But this distinction sidesteps the actual dispute. Garmin does not argue that the claims require user activation, only that the claims do not exclude it. Only Garmin’s construction embraces both. 23 See Doc. 95-3 (‘987 Patent) at Abstract (“The method begins ... using GPS technology and a user-selected point recording algorithm into a forward-track route.”). Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 32 of 34 Garmin’s Answering Claim Construction Brief (Case No. 16-cv-2706) (Page 28 of 28) selecting are “completed without user involvement” once they are activated by the user. Nothing else is required to distinguish claims 12 and 14 from claims 7 and 9. CollegeNet, 418 F.3d at 1235 (“This construction does not read ‘automatically’ out of the claims, as [the defendant] suggests, because a machine still performs the claimed functions without manual operation, even though a human may initiate or interrupt the process.”). IV. CONCLUSION For the foregoing reasons, Garmin respectfully requests that the Court adopt Garmin’s claim constructions. Dated: January 8, 2018 Respectfully Submitted, /s/ Aaron Hankel B. Trent Webb (KS No. 15965) Aaron Hankel (D. Kan No. 78458) Beth Larigan (KS No. 20169) Ryan Schletzbaum (pro hac vice) Lauren Douville (pro hac vice) Colman McCarthy (pro hac vice) Shook, Hardy & Bacon L.L.P. 2555 Grand Boulevard Kansas City, Missouri 64108-2613 816-474-6550 Telephone 816-421-5547 Facsimile bwebb@shb.com ahankel@shb.com blarigan@shb.com rschletzbaum@shb.com ldouville@shb.com cdmccarthy@shb.com Attorneys for Plaintiffs Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 33 of 34 CERTIFICATE OF SERVICE I hereby certify that a true and accurate copy of the foregoing GARMIN’S ANSWERING CLAIM CONSTRUCTION BRIEF was electronically filed on this 8th day of January, 2018, with the Clerk of the Court using the CM/ECF system, which sent notification of filing to all attorneys of record. /s/ Aaron Hankel Attorney for Plaintiffs Case 2:16-cv-02706-CM-GLR Document 130 Filed 01/08/18 Page 34 of 34
