Barnes & Noble, Inc. v. LSI Corp.

BARNES & NOBLE, INC., et al., Plaintiffs, v. LSI CORPORATION, et al., Defendants.

No. C-11-2709 EMC

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA

Dated: April 7, 2014

ORDER RE CLAIM CONSTRUCTION

I. INTRODUCTION

Plaintiff Barnes & Noble Inc. ("Barnes & Noble") initiated this action against Defendants LSI Corporation and Agere Systems LLC ("LSI") seeking a declaratory judgment that the Barnes & Noble "Nook" line of products do not infringe a number of patents. LSI, the assignee of the patents at issue in this case, answered the complaint and asserted counterclaims (and eventually, amended counterclaims) against Barnes & Noble alleging patent infringement. LSI asserts that the Nook product line infringes nine patents - i.e., the '730 patent,'087 patent,'663 patent,'006 patent, '867 patent, '958 patent, '394 patent, '420 patent, and the '552 patent. The parties have presented the Court with 34 terms to be construed. This order construes thirteen of those terms - the terms identified as the most significant by the parties.

II. LEGAL STANDARD

Claim construction is a question of law to be determined by the Court. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) ("We therefore settle inconsistencies in our precedent and hold that in a case tried to a jury, the court has the power and obligation to construe as a matter of law the meaning of language used in the patent claim."). "The purpose ofclaim construction is to 'determin[e] the meaning and scope of the patent claims asserted to be infringed.'" O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351 (Fed. Cir. 2008) (quoting Markman, 52 F.3d at 976).

Claim construction "begins with the language of the claims themselves" and "claim language 'generally carries the ordinary meaning of the words in their normal usage in the field of invention.'" Apio, Inc. v. Mann Packing Co., Inc., No. C07-5628 JF, 2008 WL 4571558 (N.D. Cal. Oct. 14, 2008) (quoting Invitrogen Corp. v. Bicrest Mfg., L.P., 327 F.3d 1364, 1367 (Fed. Cir. 2003)). Thus, "[i]n some cases, the ordinary meaning of claim language . . . may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words." Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc). However,

[b]ecause the meaning of a claim term as understood by persons of skill in the art is often not immediately apparent, and because patentees frequently use terms idiosyncratically, the court looks to "those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean." Those sources include "the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art."

Id. (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)).

"[T]he specification 'is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.'" Id. at 1315 (quoting Vitrionics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). "It is therefore entirely appropriate for a court, when conducting claim construction, to rely heavily on the written description for guidance as to the meaning of the claims." Id. at 1317. On the other hand, courts must avoid "importing limitations from the specification into the claim." Id. at 1323. In particular, "although the specification often describes very specific embodiments of the invention," courts must not "confin[e] the claims to those embodiments." Id.

As a general matter, extrinsic evidence such as dictionaries and expert testimony is considered less reliable than intrinsic evidence (i.e., the patent and its prosecution history). See id.at 1317-19 (noting that "extrinsic evidence may be useful to the court, but it is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence").

III. '730 PATENT

A. Background and General Description of Patent

The '730 Patent is entitled "Data Protocol and Method for Segmenting Memory for a Music Chip." It explains a protocol "for labeling various types of data contained in a music chip" which "includes a hierarchical arrangement of headers for storing information about selections on the chip and the method in which they were coded in the memory of the chip." '730 Patent, Col. 1, 47-51. The "hierarchical arrangement of headers" includes global headers, "located at the very start of memory" which provide information that is necessary to decode the content of the music chip. Examples of that information include "the necessary bit rate, as well as information pertaining to the specific encoding algorithm employed in recording audio on the chip." Id., Col. 1, 54-56. In addition to the global header, each chip will have a "table of contents" that will "include information on play times, song titles, music category and artist" through "individual headers." Id., Col. 1, 57-62. The benefit of the header arrangement over prior art is that it permits the user to easily find and select the pre-recorded music located on the music chip. Id., Col. 1, 38-44.

B. Representative Claims

Claims 1 and 18 are representative claims for the '730 patent and contain the terms the parties have indicated are most significant as to this patent. Claim 1 provides (with terms to be construed in bold):

1. A data format for use in an audio system wherein pre-recorded music is digitally encoded in memory of an integrated circuit music chip, and said music is decoded and reproduced by means of an associated audio player, said data format for storing information pertaining to the contents of said music chip, wherein individual tracks of audio are stored in designated locations in said music chip, said data format including:

first header having parameters stored therein for use by said audio player in decoding said digitally encoded music stored in said memory; andat least one second header, said second header including selectable categorical information relating to said individual tracks of audio stored in said memory.

730 Patent, Col. 6:14-27. Claim 18 provides (with claims to be construed in bold):

18. A data protocol for use in storing pre-recorded audio in memory of an integrated circuit chip, said integrated circuit chip being adapted for use with an audio player, said data protocol comprising:

global header having parameters stored therein corresponding to an encoding technique used for storing said pre-recorded audio in memory and used by said audio player in decoding said audio; and

at least one individual header having multiple data fields, said data fields including general description information about individual tracks of said pre-recorded audio.

Id., Col. 7:19-29.

C. "First Header" / "Global Header"

As to the term beginning "first header having parameters . . ." the parties have provided the following competing constructions:

Barnes & Noble

LSI

Court

"a single data structure that includes information used by the audio player to decode the collection of individual tracks of audio stored in memory."

Plain and ordinary meaning, or "a data structure on a music chip which includes information relating to the way the music tracks were encoded in the memory of the music chip for use by the audio player in decoding the stored music."

"a single data structure that includes information used by the audio player to decode the collection of individual tracks of audio stored in memory."

Similarly, for the term beginning "global header having parameters . . ." the parties have provided the following competing constructions:

Barnes & Noble

LSI

Court

"a single data structure that includes information used by the audio player to decode the collection of individual tracks of audio stored in memory."

Plain and ordinary meaning, or "a data structure that includes information about how the prerecorded audio was encoded and is used during decoding."

"a single data structure that includes information used by the audio player to decode the collection of individual tracks of audio stored in memory."

The central dispute is whether the "first" and "global" headers are limited to a "single data structure," and whether this limitation applies to both terms. Barnes & Noble argues that both terms are limited to a "single data structure," while LSI contends neither term is so limited.

These terms have been construed previously on two separate occasions. First, in Agere Systems, Inc. v. Sony Corp., No. 2:06-CV-079, 2008 WL 2078308 (E.D. Tex. May 15, 2008), Sony - like Barnes & Noble does here - argued that the term should be construed as referring to a "single data structure" in which "all pre-recorded audio tracks are encoded for storage in memory, which is used by the audio player to decode all tracks for playback." Id. at *15. By contrast, LSI asserted the same construction it advances in this case. Id.. Despite the parties treating "global" and "first" headers identically, the court construed them separately. As to the "global header" term, the court concluded that it "includes information common to all of the music on the chip." Id. at *16. As to the "first header" term, however, the court found the term had a "broader scope." Id. Accordingly, the court construed "global header" as "a single data structure that contains information corresponding to the way in which all pre-recorded audio tracks are encoded for storage in memory, which is used by the audio player to decode all tracks for playback." Id. It construed "first header" to mean "a data structure on a music chip which includes information relating to the way the music tracks...