CLRB Hanson Industries, LLC et al v. Google Inc.

MEMORANDUM in Opposition

N.D. Cal.May 21, 2007

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PARTIES’ STIPULATED DEFINITIONS FOR CLAIM TERMS FROM THE ‘863 AND ‘720 PATENTS CASE NO. 05-CV-1114 JW sf-2159486 COUNSEL LISTED ON SIGNATURE PAGES UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION In re ACACIA MEDIA TECHNOLOGIES CORPORATION Case No. 05-CV-1114 JW PARTIES’ STIPULATED DEFINITIONS FOR CLAIM TERMS FROM THE '863 AND '720 PATENTS Date: September 7-8, 2006 Time: 9:00 a.m. Courtroom: 8, 4th Floor Judge: Hon. James Ware Case5:05-cv-03649-JW Document Filed12/01/08 Page1 of 13 CLRB Hanson Industries, LLC et al v. Google Inc. Doc. 187 Dockets.Justia.com 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PARTIES’ STIPULATED DEFINITIONS FOR CLAIM TERMS FROM THE ‘863 AND ‘720 PATENTS CASE NO. 05-CV-1114 JW sf-2159486 1 The parties1 to this action hereby submit the following constructions for claim terms of U.S. Patents 5,550,863 and 6,002,720 that are not disputed:2 1. The phrase “a plurality of subscriber (selectable) receiving stations coupled to the local distribution system”3 in Claims 14 and 17 of the ‘863 patent and Claims 8 and 11 of the ‘720 patent means that two or more “subscriber (selectable) receiving stations”4 must be “coupled to” the local distribution system. 1 For the purposes of the issues involving the ‘863 and ‘720 patents, the parties are the Round 2 Defendants, who are the Cable and Satellite defendants whom Acacia sued in the first two rounds of complaints, and the Round 3 defendants, who are two of the cable company defendants whom Acacia sued in New York in the third round of complaints: Time Warner Cable Inc. and CSC Holdings, Inc.. The Round 2 Defendants are: Comcast Cable Communications, LLC; The DIRECTV Group, Inc.; EchoStar Satellite LLC; EchoStar Technologies Corp.; Charter Communications, Inc.; Armstrong Group; Block Communications, Inc.; East Cleveland Cable TV and Communications LLC; Wide Open West Ohio LLC; Massillon Cable TV, Inc.; Mid- Continent Media, Inc.; US Cable Holdings LP; Savage Communications, Inc.; Sjoberg’s Cablevision, Inc.; Loretel Cablevision; Arvig Communications Systems; Cannon Valley Communications, Inc.; NPG Cable, Inc.; Cable One, Inc.; Mediacom Communications Corp.; Bresnan Communications; Cequel III Communications I, LLC (dba Cebridge Connections); Coxcom, Inc.; Hospitality Network, Inc., and Cable America, Inc. Although Defendants Insight Communications, Inc. and Bresnan Communications were sued in Round 3, they are joining the Rounds 1 and 2 Defendants’ proposed constructions. Acacia is not asserting the '863 and '720 patents against the Round 1 defendants (the Internet defendants), which includes New Destiny Internet Group LLC; Audio Communications, Inc.; VS Media Inc.; Ademia Multimedia LLC; Adult Entertainment Broadcast Network; Cyber Trend Inc.; Lightspeed Media Group, Inc.; Adult Revenue Services; Innovative Ideas International; Game Link Inc.; Club Jenna Inc.; Global AVS Inc.; ACMP LLC; Cybernet Ventures Inc.; National A-1 Advertising Inc.; and AEBN, Inc; International Web Innovations, Inc., Offendale Commercial BV, AskCS.com. Accordingly, the Internet defendants have not participated in the preparation of this chart and have no position on the construction of any claim terms that pertain only to '863 and '720 patents. Likewise, the Rounds 2 and 3 Cable Defendants take no position on the construction of any claim terms that pertain only to the ‘720 patent since that patent has not been asserted against those parties. 2 Each defendant stipulates to the construction of terms or limitations which are recited in claims asserted against it. Acacia and each defendant reserves the right to seek construction of additional claim terms, or propose a new construction of terms and limitations listed herein, should Acacia be permitted to assert additional claims against each defendant in the future. 3 Claims 14 and 17 of the ‘863 patent, and the construction thereof, use the phrase “subscriber receiving stations.” Claims 8 and 11 of the ‘720 patent, and the construction thereof, use the phrase “subscriber selectable receiving stations.” 4 The Round 2 Defendants contend that the phrase “subscriber receiving stations” is otherwise indefinite. Case5:05-cv-03649-JW Document Filed12/01/08 Page2 of 13 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PARTIES’ STIPULATED DEFINITIONS FOR CLAIM TERMS FROM THE ‘863 AND ‘720 PATENTS CASE NO. 05-CV-1114 JW sf-2159486 2 2. The term “remote from,” as used in the ‘863 and ‘720 patents, means “distant in space from.” 3. The term “non-real time rate” means a rate (described in terms of time) that is different than the actual rate (described in terms of time) during which a particular item (e.g., video or audio) is listened to or viewed. 4. The term “real time rate” is a rate (described in terms of time) that is the actual rate (described in terms of time) during which a particular item (e.g., video or audio) is listened to or viewed. 5. In Claim 14 of the ‘863 patent, the “transmitting step” includes, but is not limited to, the steps of: (a) “inputting an item having information into the transmission system;” (b) “assigning a unique identification code to the item having information;” (c) “formatting the item having information as a sequence of addressable data blocks;” (d) “compressing the formatted and sequenced data blocks;” (e) “storing, as a file, the compressed, formatted, and sequenced data blocks with the assigned unique identification code ;” and (f) “sending at least a portion of the file at the non-real time rate to the local distribution system.” These steps are part of the step of “transmitting compressed, digitized data representing a complete copy . . . from a central processing location.” While the parties disagree on the meaning of “central processing location,”5 the parties agree that the transmission system is located at the central processing location and that the transmitting steps, including steps (a) - (f) listed above, are performed by the transmission system. 5 The Round 2 Defendants contend that the phrase “central processing location” is indefinite. Case5:05-cv-03649-JW Document Filed12/01/08 Page3 of 13 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PARTIES’ STIPULATED DEFINITIONS FOR CLAIM TERMS FROM THE ‘863 AND ‘720 PATENTS CASE NO. 05-CV-1114 JW sf-2159486 3 6. In Claim 17 of the ‘863 patent, the “formatting step” includes, but is not limited to, the steps of: (a) “inputting an item having information into the transmission system;” (b) “assigning a unique identification code to the item having information;” (c) “formatting the item having information as a sequence of addressable data blocks;” (d) “compressing the formatted and sequenced data blocks.” These steps are part of the step of “formatting items of audio/video information as compressed digitized data at a central processing location.” While the parties disagree on the meaning of “central processing location,”6 the parties agree that the transmission system is located at the central processing location and that the formatting steps, including steps (a) - (d) listed above, are performed by the transmission system. 7. While the parties disagree on the construction of “local distribution system,” in Claims 14 and 17 of the ‘863 patent and Claims 8 and 11 of the ‘720 patent, the parties agree that the local distribution system is at a location that is distant in space from the location of the central processing location,7 and is distant in space from the locations of the plurality of subscriber receiving stations.8 8. The “means for receiving” in Claim 4 in the ‘720 patent recites the function of “receiving compressed, digitized data representing at least one item of audio/video information at a non-real time rate.” The specification discloses that this function is performed by transceiver 201. Therefore, the term “means for receiving” in claim 4 of the ‘720 patent shall be construed as transceiver 201, and its equivalents. 6 The Round 2 Defendants contend that the phrase “central processing location” is indefinite. 7 The Round 2 Defendants contend that the phrase “central processing location” is otherwise indefinite. 8 The Round 2 Defendants contend that the phrase “subscriber receiving stations” is otherwise indefinite. Case5:05-cv-03649-JW Document Filed12/01/08 Page4 of 13 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PARTIES’ STIPULATED DEFINITIONS FOR CLAIM TERMS FROM THE ‘863 AND ‘720 PATENTS CASE NO. 05-CV-1114 JW sf-2159486 4 9. The “means for storing” in Claim 4 of the ‘720 patent recites the function of “storing a complete copy of the received compressed, digitized data.” The specification discloses that this function is performed by storage 203 and 200c. Therefore, the term “means for storing” in claim 4 of the ‘720 patent shall be construed as storage 203 or 200c, and their equivalents. 10. The “compression means” in Claim 7 of the ‘720 patent recites the function of “compressing the formatted data.” The specification discloses that this function is performed by compressor 116. Therefore, the term “compression means” in claim 7 of the ‘720 patent shall be construed as compressor 116, and its equivalents. 11. The “receiving means” in Claims 8 and 11 of the ‘720 patent recite the function of “receiving compressed, digitized data representing at least one item of audio/video information at a non-real time rate.” The specification discloses that this function is performed by transceiver 201. Therefore, the term “receiving means” in claims 8 and 11 of the ‘720 patent shall be construed as transceiver 201, and its equivalents. 12. The “storing means” in Claims 8 and 11 of the ‘720 patent recite the function of “storing a complete copy of the received compressed, digitized data.” The specification discloses that this function is performed by storage 203 and 200c. Therefore, the term “storing means” in claims 8 and 11 of the ‘720 patent shall be construed as storage 203 or 200c, and their equivalents. 13. The parties disagree as to whether the steps of Claims 14 and 17 of the ‘863 patent and Claims 8 and 11 of the ‘720 patent begin and occur only after a prior step or steps have been completed. This is the same issue that was argued to the Court during the last round of Markman briefing with respect to the steps of method claims in the ‘992 and ‘275 patents. 14. The parties disagree as to whether the “compressing the formatted and sequenced data blocks” step of Claims 14 and 17 of the ‘863 patent requires that the sequence of the formatted data blocks be maintained by the compression process. This is the same issue that was argued to the Court during the last round of Markman briefing with respect to the Case5:05-cv-03649-JW Document Filed12/01/08 Page5 of 13 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PARTIES’ STIPULATED DEFINITIONS FOR CLAIM TERMS FROM THE ‘863 AND ‘720 PATENTS CASE NO. 05-CV-1114 JW sf-2159486 5 “compressing the formatted and sequenced data blocks” step of claim 41 of the ‘992 patent. 15. The steps of Claim 14 of the ‘863 patent must be performed in the following order: 1) “transmitting compressed, digitized data representing a complete copy . . . from a central processing location”; 2) “receiving the transmitted compressed, digitized data . . .”; 3) “storing the received compressed digitized data representing the complete copy . . .”; 4) “decompressing the compressed, digitized data . . .” 5) “in response to the stored compressed, digitized data, transmitting a representation . . .” The steps which follow the clause “wherein the transmitting step comprises” are performed as part of the step of “transmitting compressed, digitized data ...”, and must be performed in the following sequential order with respect to each other: 1) “inputting an item . . .” 2) “assigning a unique identification code . . .” 3) “formatting the item . . .” 4) “compressing . . .” 5) “storing, as a file . . .” and 6) “sending at least a portion . . .” 16. The steps of Claim 17 of the ‘863 patent must be performed in the following order: 1) “formatting items . . . at a central processing location.” 2) “transmitting . . . from the central processing location”; 3) “receiving the transmitted compressed, digitized data. . .”; 4) “storing the received compressed, digitized data representing the complete copy. . .”; and 5) “using the stored compressed, digitized data to transmit . . .” Case5:05-cv-03649-JW Document Filed12/01/08 Page6 of 13 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PARTIES’ STIPULATED DEFINITIONS FOR CLAIM TERMS FROM THE ‘863 AND ‘720 PATENTS CASE NO. 05-CV-1114 JW sf-2159486 6 The steps which follow the clause “wherein the formatting step comprises” are performed as part of the step of “formatting items ... at a central processing location” and must be performed in the following sequential order with respect to each other: 1) “inputting an item. . .” 2) “assigning a unique identification code. . .” 3) “formatting the item . . .” and 4) “compressing . . .” 17. The steps of Claim 8 of the ‘720 patent must be performed in the following order: 1. “transmitting compressed, digitized data . . .”; 2. “receiving, into a receiving means, . . .”; 3. “storing, in a storing means, . . .”; and 4. “. . . transmitting, using a transmitting means, . . .” 18. The steps of Claim 11 of the ‘720 patent must be performed in the following order: 1. “formatting items of audio/visual information. . . .” 2. “transmitting compressed, digitized data . . .”; 3. “receiving, into a receiving means, . . .”; 4. “storing, in a storing means, . . .”; and 5. “using the stored compressed, digitized data to transmit, using a transmitting means, . . .” 19. The term “sending” in claim 14 of the ‘863 patent and Claim 7 of the ‘720 patent, as well as in claims 2 and 5 of the ‘275 patent, means “transmitting electronically or optically.”9 6 The stipulated construction of “sending” in claims 2 and 5 of the ‘275 patent was inadvertently omitted from the stipulation filed on April 17, 2006. Case5:05-cv-03649-JW Document Filed12/01/08 Page7 of 13 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PARTIES’ STIPULATED DEFINITIONS FOR CLAIM TERMS FROM THE ‘863 AND ‘720 PATENTS CASE NO. 05-CV-1114 JW sf-2159486 7 Dated: July 21, 2006 RODERICK G. DORMAN (CA SBN 96908) ALAN P. BLOCK (CA SBN 143783) KEVIN I. SHENKMAN (CA SBN 223315) HENNIGAN, BENNETT & DORMAN LLP 601 South Figueroa Street, Suite 3300 Los Angeles, California 90017 BY: /s/ __________ Alan P. Block ATTORNEYS FOR PLAINTIFF ACACIA MEDIA TECHNOLOGIES CORPORATION Dated: July 21, 2006 VICTOR G. SAVIKAS (CA SBN 145658) KEVIN G. McBRIDE (CA SBN 195866) MARSHA E. MULLIN (CA SBN 93709) MARIA K. NELSON (CA SBN 155608) JONES DAY 555 West Fifth Street, Suite 4600 Los Angeles, California 90013-1025 By: /s/ Attorneys for Defendant THE DIRECTV GROUP, INC. Dated: July 21, 2006 HAROLD J. McELHINNY (CA SBN 66781) RACHEL KREVANS (CA SBN 116421) MATTHEW I. KREEGER (CA SBN 153793) JASON A. CROTTY (CA SBN 196036) DAVID M. HYMAS (CA SBN 226202) MORRISON & FOERSTER LLP 425 Market Street San Francisco, California 94105-2482 By: /s/ David M. Hymas Attorneys for Defendants ECHOSTAR SATELLITE LLC and ECHOSTAR TECHNOLOGIES CORPORATION Case5:05-cv-03649-JW Document Filed12/01/08 Page8 of 13 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PARTIES’ STIPULATED DEFINITIONS FOR CLAIM TERMS FROM THE ‘863 AND ‘720 PATENTS CASE NO. 05-CV-1114 JW sf-2159486 8 Dated: July 21, 2006 DARALYN J. DURIE (CA SBN 169825) DAVID J. SILBERT (CA SBN 173128) KEKER & VAN NEST LLP 710 Sansome Street San Francisco, California 94111-1704 By: /s/ David Silbert Attorneys for Defendants COMCAST CABLE COMMUNICATIONS, LLC and INSIGHT COMMUNICATIONS, INC. Dated: July 21, 2006 ANNAMARIE A. DALEY (pro hac vice) TARA D. SUTTON (pro hac vice) STEPHEN P. SAFRANSKI (pro hac vice) ROBINS, KAPLAN, MILLER & CIRESI LLP 2800 LaSalle Plaza, 800 LaSalle Avenue Minneapolis, Minnesota 55402 RICHARD R. PATCH (CA SBN 88049) J. TIMOTHY NARDELL (CA SBN 184444) COBLENTZ, PATCH, DUFFY & BASS, LLP One Ferry Building, Suite 200 San Francisco, California 94111-4213 By: /s/ Annamarie A. Daley Attorneys for Defendants COXCOM, INC. and HOSPITALITY NETWORK, INC. Case5:05-cv-03649-JW Document Filed12/01/08 Page9 of 13 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PARTIES’ STIPULATED DEFINITIONS FOR CLAIM TERMS FROM THE ‘863 AND ‘720 PATENTS CASE NO. 05-CV-1114 JW sf-2159486 9 Dated: July __, 2006 BRADFORD LYERLA (pro hac vice app. pending) KEVIN HOGG (pro hac vice app. pending) JEFFREY DEAN (pro hac vice app. pending) MARSHALL, GERSTEIN & BORUN LLP 6300 Sears Tower 233 South Wacker Drive Chicago, Illinois 60606-6357 MORGAN W. TOVEY (CA SBN 136242) WILLIAM R. OVEREND (CA SBN 180209) REED SMITH LLP Two Embarcadero Center, Suite 2000 San Francisco, CA 94111 By: /s/ Jeffrey Dean Attorneys for Defendant CHARTER COMMUNICATIONS, INC., WIDE OPEN WEST, ARMSTRONG UTILITIES, MASSILON CABLE TV, INC., EAST CLEVELAND CABLE TV, MID-CONTINENT MEDIA, INC., CANNON VALLEY COMMUNICATIONS, US CABLE HOLDINGS, LP, ARVIG ENTERPRISES, SJOBERG CABLE, LORETEL SYSTEMS, INC., NPG CABLE, INC. Dated: July __, 2006 REBECCA ANNE BORTOLOTTI JOHN CHRITOPHER REICH ALBERT L. UNDERHILL MERCHANT & GOULD 80 S. 8th Street, Suite 3200 Minneapolis, Minnesota 55402 By______________________________ Rebecca Anne Bortolotti Attorneys for Defendants MID-CONTINENT MEDIA, INC., SAVAGE COMMUNICATIONS, INC., CANNON VALLEY COMMUNICATIONS, US CABLE HOLDINGS, LP, ARVIG ENTERPRISES, SJOBERG’S CABLE, LORETEL SYSTEMS, INC., Case5:05-cv-03649-JW Document Filed12/01/08 Page10 of 13 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PARTIES’ STIPULATED DEFINITIONS FOR CLAIM TERMS FROM THE ‘863 AND ‘720 PATENTS CASE NO. 05-CV-1114 JW sf-2159486 10 Dated: July 21, 2006 MITCHELL D. LUKIN BAKER BOTTS LLP One Shell Plaza 910 Louisiana Houston, Texas 77022 JEFFREY D. SULLIVAN BAKER BOTTS LLP 30 Rockefeller Plaza New York, New York 10112 By_______ __/s/______ Mitchell D. Lukin Attorneys for Defendant MEDIACOM COMMUNICATIONS CORPORATION, CABLE ONE, INC., CEQUEL III COMMUNICATIONS I, LLC (dba CEBRIDGE CONNECTIONS), and BRESNAN COMMUNICATIONS Dated: July __, 2006 SEAN DAVID GARRISON ROBERT FRANCIS COPPLE LEWIS & ROCA LLP 40 N. Central Avenue Phoenix, Arizona 85004-4429 By______________ Sean David Garrison Attorneys for Defendant CABLE AMERICA CORP. Dated: July __, 2006 PATRICK J. WHALEN SPENCER FAN BRITT & BROWN LLP 1000 Walnut Street, Suite 1400 Kansas City, Missouri 64106 By______________________________ Patrick J. Whalen Attorneys for Defendants NPG CABLE INC. Case5:05-cv-03649-JW Document Filed12/01/08 Page11 of 13 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PARTIES’ STIPULATED DEFINITIONS FOR CLAIM TERMS FROM THE ‘863 AND ‘720 PATENTS CASE NO. 05-CV-1114 JW sf-2159486 11 Dated: July __, 2006 FRITZ BYERS 520 Madison Avenue Toledo, Ohio 43604 By______________________________ Fritz Byers Attorneys for Defendants BLOCK COMMUNICATIONS, INC. Dated: July __, 2006 CHRISTOPHER B. FAGAN FAY SHARPE FAGAN MINNICH & MCKEE 1100 Superior Avenue, Seventh Floor Cleveland, Ohio 44114-2518 By______________________________ Christopher B. Fagan Attorneys for Defendants ARMSTRONG GROUP; EAST CLEVELAND TV AND COMMUNICATIONS LLC; MASSILLON CABLE TV, INC.; WIDE OPEN WEST, LLC. Dated: July 21, 2006 DAVID S. BENYACAR DANIEL REISNER KAYE SCHOLER LLP 425 Park Avenue New York, NY 10022-3598 By_____________/s/_________________ David S. Benyacar Attorneys for Defendant TIME WARNER CABLE, INC. Case5:05-cv-03649-JW Document Filed12/01/08 Page12 of 13 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PARTIES’ STIPULATED DEFINITIONS FOR CLAIM TERMS FROM THE ‘863 AND ‘720 PATENTS CASE NO. 05-CV-1114 JW sf-2159486 12 Dated: July __, 2006 BENJAMIN HERSHKOWITZ JOHN PETRSORIC GOODWIN PROCTER LLP 599 Lexington Avenue New York, NY 10022 By______________________________ Benjamin Hershkowitz Attorneys for Defendant CSC HOLDINGS, INC. Case5:05-cv-03649-JW Document Filed12/01/08 Page13 of 13