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Marlowe Patent Holdings LLC v. Ford Motor Co.

United States District Court, D. New Jersey

January 20, 2015

MARLOWE PATENT HOLDINGS LLC, Plaintiff,
v.
FORD MOTOR COMPANY, Defendant.

OPINION

PETER G. SHERIDAN, District Judge.

INTRODUCTION

There are two cases wherein Marlowe alleges that several entities infringed upon the '786 patent. One is this case, and the other is Marlowe Patent Holdings, LLC v. Dice Electronics, LLC, No. 10-01199 (D.N.J.) (" Dice Electronics" ). As a result, a Markman [1]decision is rendered in each case. On July 31, 2014, the Court conducted a Markman hearing for disputed claim terms in U.S. Patent No. 7, 489, 786, titled "Audio Device Integration System" filed December 11, 2002 ("the '786 Patent"), between Marlowe Patent Holdings LLC (hereinafter "Marlowe") and Ford Motor Company (hereinafter "Ford"). Marlowe Patent Holdings, LLC v. Ford Motor Co., No. 11-07044 (D.N.J.) (" Ford Motor "), ECF No. 98. Thereafter, a draft opinion of the Markman Ruling was issued to the parties, and a telephone conference was conducted. Based upon all of the proceedings, the Court finalizes its Markman Ruling as follows.

In Ford Motor, Marlowe and Ford have filed the appropriate Markman claim construction briefs, presenting the disputed claim language and the meaning that one of ordinary skill in the art should employ in light of the specification, custom and usage. ( Ford Motor, ECF No. 90 and 93.) In Dice Electronics, LTI Enterprises, Inc. (hereinafter "LTI"), has filed supplemental Markman brief that disputes additional claim language in the '786 Patent. ( Dice Electronics, ECF No. 221.)

The '786 Patent, issued to inventor Ira Marlowe, pertains to an audio device integration system that enables after-market audio products such as a CD player, a CD changer, an MP3 player, and other auxiliary sources to be connected to, operate with, and be controlled from, an existing stereo system in an automobile. ( Ford Motor, ECF No. 93, Exhibit A).

This Court has considered the claim construction briefs filed by the parties, and made claim construction determinations for the claim terms that remain in dispute in light of the evidence and arguments presented.

I. STANDARDS FOR CLAIM CONSTRUCTION

There is a two-step analysis for determining patent infringement: "first, the court determines the meaning of the disputed claim terms, then the accused device is compared to the claims as construed to determine infringement." Acumed LLC v. Stryker Corp., 483 F.3d 800, 804 (Fed. Cir. 2007) (citation omitted). When the court engages in claim construction to determine the meaning of disputed claim terms, it is decided as a matter of law. Markman, 517 U.S. at 372. It is well established that "the construction of a patent, including terms of art within its claim, is exclusively within the province of the court." Id. When construing claims, the court must focus on the claim language. As explained by the Federal Circuit:

It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude. Attending this principle, a claim construction analysis must begin and remain centered on the claim language itself, for that is the language the patentee has chosen to particularly point out and distinctly claim the subject matter which the patentee regards as his invention.

Innova/Pure Water, Inc. v. Safari Water Filtration Sys., 381 F.3d 1111, 1115-16 (Fed. Cir. 2004) (citations omitted). When looking at the words of a claim, the words "are generally given their ordinary and customary meaning, " which has been defined as "the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005), cert. denied, 546 U.S. 1170 (2006). The Federal Circuit has counseled:

It is the person of ordinary skill in the field of the invention through whose eyes the claims are construed. Such person is deemed to read the words used in the patent documents with an understanding of their meaning in the field, and to have knowledge of any special meaning usage in the field. The inventor's words that are used to describe the invention - the inventor's lexicography - must be understood and interpreted by the court as they would be understood and interpreted by a person in that field of technology. Thus the court starts the decision making process by reviewing the same resources as would that person, viz., the patent specification and prosecution history.

Id. at 1313 (quoting Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998)). Those resources, called intrinsic evidence, include the claim language, the specification, and the prosecution history. See id. at 1314.

However, when intrinsic evidence alone does not resolve the ambiguities in a disputed claim term, extrinsic evidence - evidence that is outside the patent and prosecution history - may also be used to construe a claim. See id. at 1317; Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582-83 (Fed. Cir. 1996). "[E]xtrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art" may be consulted; for example, expert testimony, dictionaries, and treatises. Phillips, 415 F.3d at 1314. However, when a court relies on extrinsic evidence to construe a claim, it is guided by the principle that extrinsic evidence may never conflict with intrinsic evidence. Id. at 1319. Courts "have viewed extrinsic evidence in general as less reliable than the patent and its prosecution history in determining how to read claim terms." Id. Thus, a court should take care to "attach the appropriate weight to be assigned to those sources." Id. at 1322-24.

II. THE DISPUTED CLAIM TERMS - '786 PATENT

A. "Interface"

The '786 Patent relates to an audio device integration system, wherein one or more aftermarket audio devices such as CD player, CD changer, MP3 player, satellite receiver, digital audio broadcast (DAB) receiver, or the like, (hereinafter "after-market audio device"), can be integrated with factory-installed or after-market car stereo systems. ('786 Patent, col. 1, ll. 5-12; col. 4, ll. 26-32.) The '786 Patent explains that the whole objective of the invention is to "achieve[] integration of various audio devices that are alien to a given OEM[2] or after-market stereo system." ('786 Patent, col. 1, ll. 60-64; Ford Motor, Def. Br. at 11.) The disputed claim term is described in all independent device claims, which provides "an interface " connected between said first and second electrical connectors.

an interface connected between said first and second electrical connectors for channeling audio signals to the car stereo from the after-market audio device, said interface including a microcontroller in electrical communication with said first and second electrical connectors, said microcontroller pre-programmed to execute

('786 Patent, claim 1, l. 8; claim 25, l. 5; claim 44, l. 10; claim 57, l. 5; claim 66, l. 5; claim 76, l. 5; claim 86, l. 6; claim 92, l. 4; claim 99, l. 7 (emphasis added).) The disputed term is also found in the method claims, which recites the step of "providing an interface having a first electrical connector connectable to a car stereo..." ('786 Patent, claim 33, l. 3; claim 49, l. 4.)

Marlowe's proposed construction for the disputed term is - "a device including a microcontroller." ( Ford Motor, Pl. Br. at 5.) Ford's proposed construction for the disputed term is - "a device separate from the vehicle and car stereo." ( Ford Motor, Def. Br. at 7 (emphasis added).) The main dispute between the parties as to this term is whether the interface can be part of the OEM or after-market stereo system, or whether it is separate. ( Ford Motor, Def. Br. at 8.)

Marlowe argues that if an interface is integrated to a car stereo, the interface becomes a part of the "car stereo, " based on the definition of the "car stereo" of the '786 Patent. ( Ford Motor, Pl. Br. at 6 (emphasis added).) The "car stereo" of the '786 Patent is defined such that its configuration determines whether an interface is part of the car stereo. The '786 Patent defines "car stereo" as follows:

Also, as used herein, the terms "car stereo" and "car radio" are used interchangeably and are intended to include all presently existing car stereos and radios, such as physical devices that are present at any location within a vehicle, in addition to software and/or graphically-or display-driven receivers. An example of such a receiver is a software-driven receiver that operates on a universal LCD panel within a vehicle and is operable by a user via a graphical user interface displayed on the universal LCD panel. Further, any future receiver, whether a hardwired or a software/graphical receiver operable on one or more displays, is considered within the definition of the terms "car stereo" and "car radio, " as used herein, and is within the spirit and scope of the present invention.

('786 Patent, col. 5, ll. 1-14 (emphasis added); see also Supp. Joint Claim Construction at 2.) From this disclosure, it is evident that "car stereo" is a physical device present within a vehicle that is a software-driven receiver operating on a universal LCD panel and is operable by a user via a graphical user interface displayed on the universal LCD panel.

In further support of its position that the after-market device becomes a part of the carstereo, Marlowe points to the definition of "integration" or "integrated" discussed in the specification:

As used herein, the term "integration" or "integrated" is intended to mean connecting one or more external devices or inputs to an existing car radio or stereo via an interface, processing and handling signals and audio channels, allowing a user to control the devices via the car stereo, and displaying data from the devices on the radio. Thus, for example, integration of a CD player with a car stereo system allows for the CD player to be remotely controlled via the control panel of the stereo system, and data from the CD player to be sent to the display of the stereo.

('786 Patent, col. 4, ll. 47-56 (emphasis added).) From this disclosure, it is evident that upon connecting one or more after-market devices to a car stereo, the after-market device becomes part of the car stereo, or integrated with the car stereo, as it allows a user to control the devices via the car stereo. In essence, connecting the after-market device to the car-stereo results in an extension of car radio, as a user can operate the after-market device using the car stereo.

Ford argues that the disputed term "interface" is not part of the "car stereo" because independent claim 1 recites said terms as different terms, as they are physically separated by "first" and "second" "connectors." ( Ford Motor, Def. Br. at 8 (emphasis added).) In support of its argument, Ford cites to Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1579 (Fed. Cir. 1996), which held that it was improper to construe two different terms in the same claim as synonyms.

Ford further asserts the point that "interface" is separate from "car stereo" by relying on Figure 2A of the '786 Patent. Ford argues that because Figure 2A of the specification illustrates the "interface" and the "car stereo" in different blocks, the "interface" represented by block (20) and the "car stereo" as block (10), the two components represent different structural elements that are separate from each other. ( Ford Motor, Def. Br. at 9.) As a result of such structural separation, Ford argues that the "interface" is not integrated into the "car stereo." (Id. )

Ford draws such inference by relying in particular upon the continuation-in-part application filed by Marlowe, Application No. 11/071, 667, filed Mar. 3, 2005, (hereinafter " '667 CIP"), where Figure 10 of said '667 CIP application has interface, represented by block 630, integrated or built into the car stereo system, represented by block 610. ( Ford Motor, Def. Br. at 9; see also PG Pub ¶ [0127] of '667 CIP; Ford Motor, LeRoy Dec., ECF No. 90, Exhibit B.) Ford alleges that "[t]he fact that Marlow added an example in which the interface is part of the car stereo in a later patent application confirms that such a configuration was not part of the earlier '786 Patent." ( Ford Motor, Def. Br. at 9-10.)

Ford has also brought to this Court's attention the PCT application prosecuted in Singapore, which has the same disclosure as the '786 Patent, where during examination in order to overcome a rejection, Marlowe argued that the PCT application did not disclose positioning the interface within the car stereo system. ( Ford Motor, Def. Br. at 10-11.)

Claim Construction

The Court adopts the claim construction for the disputed term "interface" to be construed as "a microcontroller that is a functionally and structurally separate component from the car stereo, which integrates an after-market device with a car stereo." The primary purpose and objective of the '786 Patent is to achieve integration of various after-market devices with the car stereo system such that information can be exchanged between the after-market device and the car stereo. ('786 Patent, col. 1, ll. 5-12; col. 1, ll. 60-64; col. 4, ll. 26-32; see also Ford Motor, Def. Br. at 11.)

In construing the claims of a patent, the Court must look to three sources known as the "intrinsic evidence": the claim language, the patent specification and the prosecution history of the patent. Markman v. Westview Instruments, Inc., 52 F.3d 967, 977 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996); Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001).

The claim terms are to be given their ordinary meaning as would be apparent to a person of ordinary skill in the art unless it is clear from the patent itself that the inventor intended to use certain terms differently. See Phillips, 415 F.3d at 1313 (citing Vitronics Corp., 90 F.3d at 1582). The inventor's words that are used to describe the invention - the inventor's lexicography - must be understood and interpreted by the court as they would be understood and interpreted by a person in that field of technology. Phillips, 415 F.3d at 1313 (citing Multiform Desiccants, Inc., 133 F.3d at 1477). The specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor's lexicography governs. Phillips, 415 F.3d at 1313 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)).

Here, the intrinsic evidence of claim language, clearly illustrates the "interface" to be defined as: a microcontroller, functionally separate from the car stereo, that integrates an aftermarket device with the car stereo.[3] From the specification, it is evident that "interface" is synonymous with "integration, "[4] as the interface, represented by block 20 in Fig. 1A, integrates the after-market devices with the car stereo form a "device integration system." ('786 Patent, col. 5, ll. 17-19.) As noted above, the inventor, being his own lexicographer, has defined and given special meaning to the term integration: "connecting one or more external devices or inputs to an existing car radio or stereo via an interface, processing and handling signals and audio channels, allowing a user to control the devices via the car stereo, and displaying data from the devices on the radio." ('786 Patent, col. 4, ll. 47-56.)

As noted from Figures 1, 2A, and 2B, for instance, the "interface" (20), acts as an extension to the car radio or car stereo's (10) circuitry such that an after-market device can be connected and integrated to the car stereo (10) via the interface. After all, the '786 Patent clearly states "it would be desirable to provide an integration system that... achieves integration of various audio devices that are alien to a given OEM or after-market stereo system." ('786 Patent, col. 1, ll. 60-63.) As a result, the after-market device in connection with the car stereo via the interface, results in a "device integration system." ('786 Patent, Claim 1 preamble.)

Therefore, based on the intrinsic evidence provided in the'786 Patent, Marlowe's argument that the interface becomes a part of the "car stereo" is found to be persuasive, as the connecting of the after-market device with the car stereo, via the interface, forms an extension to the car stereo as said after-market devices are inter-operable with the car stereo, and capable of exchanging commands and data via the interface. ('786 Patent, col. 3, ll. 1-5.)

A further question to consider regarding "interface" is whether it is: (i) physically separate; and/or (ii) functionally separate from the car stereo. Here, based on the intrinsic evidence, "interface" is considered functionally separate, rather than physically separate from the car stereo.

The "interface" is used as a communicator or signal converter between the car stereo and the after-market device. ('786 Patent, col. 5, ll. 41-45.) The "interface" allows a user to control the after-market device from control panel buttons (14) on the car stereo (10), and accordingly process and format information from the after-market device and send it to the car stereo (10). ('786 Patent, Figure 2A col. 5, ll. 45-55; see also Ford Motor, Def. Br. at 4-5 ("[T]he '786 patent discloses and claims an interface which outputs to the car stereo a CD player presence signal' that the car stereo understands. Upon receiving this presence signal, ' the car stereo enters the CD player mode, enabling control of the after-market CD player using the car stereo").)

Representing the "car stereo" and "interface" in separate blocks in Figure 2A illustrates two components that represent different structural elements that perform different function; and not necessarily physical separation per se. ( Ford Motor, Def. Br. at 9-10.) Figure 2A of '786 Patent is directed to "audio device interface system, " wherein the different structural components comprise: "car stereo, " "interface, " "CD player, " "display, " and "control panel buttons." ('786 Patent, col. 5, ll. 38-41.) All the different structural components are integrated together to form an "audio device interface system." (Id. )

Taking Ford's position that "interface" and "car stereo" are two components that are physically separated, or separated by distance, from each other would be contrary to the understanding and interpretation by a person in this field of technology. If this Court takes Ford's interpretation of structural separation with regards to "interface" and "car stereo, " then interpretation of display (13) and control panel buttons (14), would run afoul, as persuasively argued by Marlowe. ( Ford Motor, Pl. Br. at 6-7.)

Therefore, the block diagram represented in Figure 2A, illustrating car stereo as (10) and interface as (20), represents different structural components that perform different function, which therein work together in unison to form an "audio device integration system." The block diagram of Figure 2A should not be construed to interpret physical separation from each other. Rather, it should be inferred as the representation of the "audio device interface system" as collectively formed by the different components. ('786 Patent, col. 5, ll. 38-40.)

Ford's argument as to structural separation between "interface" and "car stereo" based upon the '667 CIP application is persuasive in light of the claim construction of "interface" adopted by this Court. Figure 10 of '667 CIP application has "interface, " represented by block 630, integrated or built into the car stereo system, as represented by block 610. The specification of the '667 application recites:

FIG. 10 is a block diagram showing an alternate embodiment of the multimedia device integration system of the present invention, indicated generally at 600, wherein the interface 630 is incorporated within a car stereo or car video system 610. The interface 630 is in electrical communication with the control panel buttons 620, display 615, and associated control circuitry 625 of the car stereo or video system 610. The interface 630 could be manufactured on a separate printed circuit board positioned within the stereo or video system 610, or on one or more existing circuit boards of the stereo or video system 610. An after-market device 635 can be put into electrical communication with the interface 630 via a port or connection on the car stereo or video system 610, and integrated for use with the car stereo or video system 610.

(PG Pub ¶ [0127] of '667 CIP application; Ford Motor, LeRoy Dec., ECF No. 90, Exhibit B.) Based on the disclosure of the '667 CIP application it would be evident to one of ordinary skill in this field of technology that during manufacturing process the interface (630) could be placed on a separate or an existing circuit board of the car stereo or video system (610).

This Court acknowledges the distinction between Figure 10 of the '667 CIP application, and Figure 2A of '786 Patent. Figure 10 of the '667 CIP application explicitly illustrates the interface being built-in or manufactured into the car stereo system, making the system a single physical entity, wherein physical separation between "interface" and "car stereo" has been eliminated or reduced to none. In contrast, Figure 2A of '786 Patent illustrates the unified functioning of the different structural components - "interface" (20), "car stereo" (10), "CD player" (15), "display" (13), and "control panel buttons" (14) - to form an "audio device integration system. " Figure 2A does not illustrate the physical separation or placement of the "interface" with respect to the "car stereo." Interpreting Figure 2A as illustrating distance or separation between the different components would be contrary to the understanding and interpretation of the specification by a person in this field of technology. Figure 2A, instead, illustrates the integration of an after-market device with a car stereo, via an interface, which therein collectively forms an "audio device integration system. " ('786 Patent, col. 5, ll. 38-55.)

As to the issue of physical and/or structural separation between the interface and the car stereo, based upon the claim language presented in independent claim 1 along with the response to Patent Office action, it is evident to one of ordinary skill in the art that the interface is a structurally separate device from the car stereo. ( Ford Motor, ECF No. 102, Exhibit 2, Amendment to Claims & Remarks, 29-30.) In order to overcome prior art reference, Miyazaki et al. (U.S. Patent No. 6, 613, 079 (filed Dec. 19, 2000)), Mr. Marlowe amended the claim language to add, inter alia, a first connector, a second connector, and a third connector, wherein said connectors electrically connected the after-market device to the car stereo via the interface. ( Ford Motor, ECF No. 102, at 2, 9, and 31.) Moreover, in its remarks, Mr. Marlowe differentiated the patented invention over the prior art reference by stating:

wherein a code portion is executed by the microcontroller for receiving an incompatible control command issued a car stereo through a first electrical connector connected to the interface, processing the incompatible control command into a formatted control command compatible with an aftermarket audio device, and transmitting the formatted control command to an after-market audio device through a second electrical connector connected to the interface, as required by Claim 1.

(Id. at 32.) Having such first, second, and third electrical connectors between the interface, car stereo, and an after-market device indicates to one of ordinary skill in this field of technology the physical and structural separation between the interface and the car stereo.

Marlowe's argument as to Ford's attempt to confusing the issue in bringing Miyazaki reference, used by examiner during prosecution, is not found to be persuasive. ( Ford Motor, ECF No. 106, at 1-2.) In construing the claims of a patent, the Court must look to three sources known as the "intrinsic evidence": the claim language, the patent specification and the prosecution history of the patent. Markman, 52 F.3d at 977. Here, the reference to the Miyazaki patent was applied by the examiner during prosecution, is part of the file wrapper and prosecution history, and is therefore considered intrinsic evidence. Thus, it is imperative for the Court to consider the Miyazaki reference, and the remarks and claim amendments made by Mr. Marlowe in his applications in order to define its claimed invention over the prior art reference.

As noted above, and persuasively pointed out by Ford, Mr. Marlowe amended the claim language to add separate structural features, inter alia, a first connector, a second connector, and a third connector, wherein said connectors electrically connected the after-market device to the car stereo via the interface.

Therefore, based on the intrinsic evidence presented, "interface" is interpreted as a device containing a microcontroller that is a functionally and structurally separate component from a "car stereo." Upon connecting an after-market device with the "car stereo, " via the "interface, " the "interface" becomes part of the "car stereo, " as the "interface" is used as a communicator or signal converter between the "car stereo" and the after-market device. ('786 Patent, col. 5, ll. 41-45.)

B. "Device Presence Signal"

The disputed term, "device presence signal" is recited in claims of the '786 Patent, for maintaining the car stereo in a state responsive to processed data and audio signals.

The apparatus of claim 1, wherein said interface generates a device presence signal for maintaining the car stereo in a state responsive to processed data and audio signals.

('786 Patent, claim 6 (emphasis added); see also claims 49, 57, 66, 76, 86, 92, and 99.)

This Court construes the disputed term "Device Presence Signal" as "transmission of a continuous signal indicating an audio device is present." The specification of the '786 Patent states, when a patented interface is connected to the car stereo's CD input port, the car stereo sends out a signal to the patented interface through the CD input port and the patented interface sends a CD changer device presence signal back to the car stereo to maintain the car stereo in an operational state and responsive to external data and signals.[5] ( Ford Motor, Pl. Br. at 9 n.9.) When an after-market device is ...


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