On July 23, 2012, ALJ E. James Gildea issued the public version of Order No. 57 (dated June 26, 2012) construing the disputed terms of the asserted claims in Certain Portable Electronic Devices and Related Software (Inv. No. 337-TA-797).

By way of background, the investigation is based on a July 8, 2011 complaint filed by Apple alleging violation of Section 337 in the importation into the U.S. and sale of certain portable electronic devices and related software that infringe certain claims of U.S. Patent Nos. 7,844,915 (the ‘915 patent), 7,469,381 (the ‘381 patent), 7,084,859 (the ‘859 patent), RE 42,738 (the ‘738 patent), and 7,920,129 (the ‘129 patent).  The respondents in this investigation are HTC Corp., HTC America, Inc., and Exedea, Inc.  (collectively, “HTC”).  See our July 11, 2011 post for more details.

The ‘915 Patent

The ‘915 patent discloses application programming interfaces that provide scrolling operations on touch-sensitive displays.  Claims 1-5, 7-12, and 14 are asserted in the investigation.  According to the Order, Apple, the Commission Investigative Staff (“OUII”), and HTC agreed to the following constructions of initially disputed terms: “view” (claims 1, 8, 10, and 11), “rubberbanding” (claims 2 and 9), “event object” (claims 1 and 8), and “window” (claims 1-4, 8-9, and 11).  After determining that the parties proposed constructions were consistent with the specification and the claims themselves, they were adopted by the ALJ.  Accordingly, “view”  was construed to mean “a portion of a display region that can display content,” “rubberbanding” was construed to mean “moving content on a display in a manner that appears elastic when the content reaches an edge, e.g., like a rubber band, so that at the end of a scroll the content slides back making the region outside of the content no longer visible on the display,” “event object” was construed to mean “an encapsulation of event data,” and “window” was construed to mean “a display region which may not have a border and may be the entire display region or area of a display.”

The ‘381 Patent

The ‘381 patent is directed to a computer-implemented method for use in conjunction with a touch-screen display for detecting movement on or near the display.  All 20 claims of the ‘381 patent are asserted in the investigation.  The parties agreed that the term “portion” (claims 1, 2, 19, and 20) should be construed to mean “area”.  The parties disputed the meaning of the terms “electronic document” (claims 1, 2, 6-9, and 17-20) and “instructions for” (claim 19).

As to the term “electronic document,” Apple argued that no construction was necessary as the term carries a consistent plain and ordinary meaning.  ALJ Gildea agreed with Apple, finding that no construction of the term was required because, inter alia, the specification merely lists common types of documents that fit within the broad genus of “electronic documents” and does not recite a definition different from the plain and ordinary meaning of the term.  

As to the term “instructions for [performing a various function],” which HTC and the OUII argued should be construed as a means-plus-function limitation under 35 U.S.C. § 112, ¶ 6, the ALJ determined that sufficient structure was recited in claim 19 (when read in light of the specification) and, therefore, § 112, ¶ 6 does not apply.  More specifically, the ALJ found that the term “instruction” carries a well understood structural meaning to one of ordinary skill in the art. 

The ‘859 Patent

The ‘859 patent claims a “method and system for interaction with touch screens including the use of touch screens for fine manipulation of data and using multiple fingers to perform actions on a touch screen.”  Claims 14-20, 25, and 28 are asserted against Respondents.  The parties agreed on proposed constructions for the following terms: “a desired control action” (claims 14, 25, and 28), “a signal to indicate the value of an action” (claim 20), and “wherein the desired control action is to indicate the value desired of a variable” (claims 25 and 28).  As ultimately adopted by the ALJ, each term was construed as follows: “a selected control function,” “feedback that indicates the value of an action,” and “wherein the selected control function is to set the value of a variable,” respectively. 

The parties disputed the meaning of the term “pinch or bracket displayed data,” as recited in claim 14.  Apple proposed that the term should be construed broadly to encompass general interaction with displayed data.  ALJ Gildea agreed with Apple, determining that the ‘859 patent’s specification provides multiple examples wherein a pinching action allows a user to interact with displayed data generally, such as by manipulating a virtual lever or turning a virtual knob.  Accordingly, the ALJ concluded that the term “pinch or bracket displayed data” means “move two fingers toward each other in a pinching motion, or bracket data, to interact with displayed data.”

The ‘738 Patent

The ‘738 patent discloses a “portable computer containing accelerometers capable of detecting movement of the computer and a microcontroller selecting a viewing mode based on movement of the computer.”  Claims 4, 28, 36, and 37 are asserted in the investigation. 

The first disputed terms are “acceleration detection means responsive to movement of the computer to produce an electrical output signal representative of such movement” (claim 4), and “movement detection means responsive to movement of the computer to produce an electrical output signal representative of such movement” (claims 28 and 36).  The parties agreed that these terms are governed by § 112, ¶ 6 and that the claimed function is “responsive to movement of the computer to produce an electrical output signal representative of such movement.”  Thus, the parties dispute concerned the disclosed structure, if any, corresponding to the claimed function.  After determining that Apple’s proposed structure improperly narrowed the claim’s scope by limiting the structure to one type of sensor, ALJ Gildea found the corresponding structure to be “one or more sensors (31, 32) as shown in Figures 3, 4a, and 17 capable of detecting movement or a change in position and providing a corresponding electrical output.”  

The next disputed term is “processing means responsive to the output of said at least one acceleration detection means to determine detected movement data defining a user’s intention” (claim 4), and “processing means responsive to the output of said at least one movement detection means to determine detected movement data defining a user’s intention” (claims 28 and 36).  Again, the parties agreed that the terms are means-plus-function terms with a function as explicitly recited by the claim, but disagreed as to the appropriate structure corresponding to the recited function.  First, ALJ Gildea noted that the “processing means” of the disputed claim limitation is computer-implemented and, thus, the corresponding structure must include a sufficient algorithm for accomplishing the recited function.  The ALJ agreed with Apple that the algorithm in Figure 8 of the ‘738 patent is properly included in the corresponding structure and defined that structure as follows: “microcontroller or processor (30) with software for performing the algorithms depicted in element 110 of Figure 6 as described in the ‘738 patent specification at col. 6:6-9 and elements 200 and 205 of Figure 8 as described in the specification at col. 7:38-40.”

The next disputed term is “the processing means using said data to provide a mode response selected from a multiplicity of stored possible modes” (claim 4).  The parties agreed that the limitation is a means-plus-function term, but disagreed as to the scope of the claimed function and corresponding structure.  As to the scope of the claimed function, the parties disagreed over whether the patentee disavowed claim scope during prosecution.  Ultimately, the ALJ determined that the patentee did not clearly and unambiguously disclaim alternative modes for displaying information as asserted by HTC and found the claimed function to be “using said data to provide a mode response selected from a multiplicity of stored possible modes.”  Regarding the corresponding structure, ALJ Gildea concluded that a person of ordinary skill in the art would understand the corresponding structure to be as follows:  “microcontroller or processor 30 with software for performing the algorithms depicted in element 115 of Figure 6 as described in the ‘738 patent specification at col. 6:26-44 and Figure 18 and elements 210 and 215 and the ‘Yes’ or ‘No’ output of element 205 of Figure 8 as described in the specification at col. 7:40-45.”

The last disputed term of the ‘738 patent is “in which a relative lateral tilting movement causes the display of information as to one or other side of currently displayed information” (claim 28).  The parties disagreed as to whether this term should be construed as a means-plus-function limitation subject to the requirements of § 112, ¶ 6.  Because the term refers back to all of the previously recited elements in the claim, ALJ Gildea determined that sufficient structure is included and that § 112, ¶ 6 does not apply.  The ALJ concluded that no construction is necessary as the term carries a consistent plain and ordinary meaning to a person of ordinary skill in the art. 

The ‘129 Patent

The ‘129 patent discloses a multi-touch capacitive touch sensor panel for portable electronic devices.  Claims 1-3, 5-12, 14-19, 21, 22, and 24-28 are asserted against Respondents.  The parties disputed the meaning of the terms “capacitive touch sensor panel” (claims 1-3, 5-12, 14-17, 21, and 24-25), “sensor[s]” (claims 1, 8-10, 17, 21, and 24-26), “substantially electrically isolate” (claims 3, 12, 19, 22, and 24-26), “drive traces” (claims 10-12, 17-19, 22, and 24-26), and “sense traces” (claims 10-12, 17-19, and 24-26).  The parties and the ALJ agreed that the term “intersect(s)” (claims 1, 8-10, 17, 21, and 24-26) means “cross while passing above and below each other.”

The term “capacitive touch sensor panel” is found in the preamble of asserted claims 1-3, 5-12, 14-17, 21, and 24-25.  Apple asserted that the preamble is limiting and the disputed phrase should be given its plain and ordinary meaning.  HTC asserted that the preamble is not limiting but, if it was found to be limiting, HTC agreed with Apple that the term should be given its plain and ordinary meaning.  ALJ Gildea concluded that the preamble is limiting because it provides antecedent basis for certain claim terms and provides structure to the invention that is necessary to understand the layout and arrangement of the elements found in the body of the claim.

As to the term “sensors,” the ALJ adopted his own construction of “elements for measuring or detecting capacitance” after finding that Apple’s and HTC’s proposed constructions were too broad and ignored the limiting effect of the term “capacitive touch sensor” in the preamble.

As to the term “substantially electrically isolate,” the parties disputed whether the term “substantially” renders the claim indefinite.  HTC argues that the claims, specification, and prosecution history of the ‘129 patent fail to provide any objective standard by which to measure the scope of “substantially electrically isolate” and, therefore, the claim is invalid.  Apple argued that the word “substantially” has a plain and well-understood English meaning, which is “considerably” or “largely but not wholly,” and that the Federal Circuit routinely rejects arguments that expressions of degree or approximation, including the term “substantially,” are indefinite.  ALJ Gildea agreed with Apple, finding that the phrase is not insolubly ambiguous and that the specification provides objective standards by which electrical isolation can be accomplished.

Lastly, as to the terms “drive traces” and “sense traces,” the ALJ concluded that a construction which linked the terms together was unnecessary, because a person of ordinary skill in the art would understand the spatial relationship between the two elements.  Thus, ALJ Gildea construed the terms to mean “traces that receive an electrical stimulus signal” and “traces that receive a charge through capacitive coupling,” respectively.