This action might not be possible to undo. Are you sure you want to continue?
SOUTHERN DISTRICT OF NEW YORK
On Track Innovations Ltd.
T-Mobile USA, Inc.
ALISON J. NATHAN, District Judge:
12 Civ. 2224 (AJN)
Plaintiff, On-Track Innovation ("OTI"), the current owner of U.S. Patent No. 6,045,043
("the '043 Patent"), alleges that defendant T-Mobile USA, Inc. ("T-Mobile") infringed upon its
patent. Following briefing, the Court held a technology tutorial on May 7,2013, and a Markman
hearing on May 9, 2013, to hear testimony and argument on the technology and the meaning of
the disputed terms in the patent at issue. See Markman v. Westview Instruments, Inc., 517 U.S.
370 (1996). As set forth below, the Court adopts Plaintiff s proposed constructions of all four
disputed terms. 1
I. CLAIM CONSTRUCTION STANDARD
"The claims of a patent are the numbered paragraphs at the end of the patent that define
the scope ofthe invention and thus the scope of the patentee's right to exclude others from
making, using or selling the patented invention." Plasmart Inc. v. Wincell Int'l Inc., 2007 WL
3355509, at *2 (S.D.N.Y. Nov. 8,2008) (citing Astrazeneca AB v. Mutual Pharm. Co., Inc., 384
F.3d 1333, 1336 (Fed Cir. 2004)). "Claim construction is the judicial statement of what is and is
I The parties originally disputed five terms, but informed the Court at the beginning of the Markman hearing that
they had settled upon Plaintiff's proposed construction of the fifth disputed term. (5/9/13 Tr. at 58:9-11,61:8-9).
Case 1:12-cv-02224-AJN Document 52 Filed 06/20/13 Page 1 of 26
not covered by the technical terms and other words of the claims." Netword, LLC v. Centraal
Corp., 242 F.3d 1347, 1352 (Fed. Cir. 2001) (citing United States Surgical Corp. v. Ethicon,
Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997» (internal quotation marks omitted). Courts should
give the words of a claim "their ordinary and customary meaning," Phillips v. AWH Corp., 415
F.3d 1303, 1312 (Fed Cir. 2005) (en banc) (citation omitted), which is 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." Id. at 1313.
In construing a claim, a court "should look first to the intrinsic evidence of record, i. e.,
the patent itself, including the claims, the specification and, if in evidence, the prosecution
history." PC Connector Solutions LLC v. SmartDisk Corp., 406 F.3d 1359, l362 (Fed. Cir.
2005) (citation omitted). A court may consider extrinsic evidence, such as expert and inventor
testimony, dictionaries, and treatises, but such extrinsic evidence is "less significant than the
intrinsic record in determining the legally operative meaning of claim language." Phillips, 415
F.3d at 1317 (citation omitted); see also id. at 1322-23 ("Judges are free to consult dictionaries
and technical treatises ... when construing claim terms, so long as the dictionary definition does
not contradict any definition found in or ascertained by a reading of the patent documents.")
(citation omitted). If the meaning of the claim is clear from the intrinsic evidence alone, resort to
extrinsic evidence is improper. Boss Control, Inc. v. Bombardier Inc., 410 F.3d l372, l377
(Fed. Cir. 2005). "Expert testimony can be useful to a court ... to provide background on the
technology at issue, ... or to establish that a particular term in the patent or the prior art has a
particular meaning in the pertinent field." Phillips, 415 F.3d at l318.
Case 1:12-cv-02224-AJN Document 52 Filed 06/20/13 Page 2 of 26
The Court assumes familiarity with the briefing and the background of the technology,
which was addressed in the expert affidavits of Alyssa Apsel and Jack H. Winter, and about
which the Court received presentations at the May 7, 2013 technology tutorial. Generally
speaking, the technology at issue involves devices employing both contact and contactless modes
of communication, such as so-called "hybrid" smart cards. These devices typically employ both
a wireless mode of operation-often in the form of a coil antenna wrapped around the edges of
the device enabling "Near Field Communication" (5/7/13 Tr. at 16:10-17: 10)-and a contact
mode of operation, by which the microprocessor communicates with a separate device through a
In particular, the '043 Patent deals with connecting a microprocessor with both the
contact and contactless modes of communication through separate, dedicated lines of connection.
The '043 patent obviates the need to use a switching device-as was employed in the older U.S.
Patent No. 5,206,495 ("Kreft '495 Patent") and, in a different manner, U.S. Patent No. 5,773,812
("Kreft' 812 Patent")-to connect the microprocessor with both the contact and contactless
sources of data. The use of separate, dedicated connections between the microprocessor and the
data entry points allows the microprocessor to (1) use different protocols for communicating
through contact and contactless mode and (2) alter its protocol capabilities through software
updates rather than hardware re-tooling. (5/7/13 Tr. at 29:4-12,30:7-20).
With this background in mind, the Court turns to the disputed terms of the '043 Patent.
A. "A . .. card having contact and contactless modes of operation."
The preamble to the '043 patent describes the invention as a "card having contact and
contactless modes of operation." (,043 Patent, Col. 13,38-39).
1. The Preamble Plainly Refers to a "Card"
Case 1:12-cv-02224-AJN Document 52 Filed 06/20/13 Page 3 of 26
As an initial matter, OTI argues that the preamble's reference to a "card" is a
typographical error and that the inventor clearly intended to obtain a patent for a "device." The
Court rejects Plaintiffs argument because both the intrinsic and extrinsic evidence indicates that
the word "card" was used as was intended in the patent.
Though the patent application was originally filed with the word "device" in the
preamble, (Yonay Decl. Ex. 2A), the word "device" was replaced by "card." (See, e.g., '043
Patent Col. 13,38-39). OTI argues that because this change was not marked as an amendment-
either by brackets or underlining-the obvious conclusion is that it was a typographicai error.
The Court disagrees.
The word "card" is used all over the patent application, and not just in the disputed
preamble. The following are just a few examples:
• "It is further understood that whilst the invention has been described with
particular reference to a data transaction device in the form of a card, any other
suitable device is contemplated within the framework of the invention as defined
in the appended claims. Likewise, such a device need not be a standalone module
but may, if desired, be integrated with other hardware which mayor may not be
portable." ('043 Patent, Col. 13,30-37).
• "It is an object of the invention to provide a data transaction card having contact
and contactless modes of operation .... " ('043 patent, Col. 2,25-27)
• "In accordance with a broad aspect of the invention there is provided a data
transaction card having contact and contactless modes of operation." ('043
patent, Col. 2, 34-36).
• "Yet a further consideration associated with the increasing use of smart cards is
the need to customize each smart card for the particular application for with it was
destined. Obviously, the provision of both contact and contactless modes of data
transfer increases the card's versatility .... " ('043 patent, Col. 2,12-18).
Certainly the Court's conclusion that use of the word "card" was intentional is not
detracted from by the fact that OTI's applications in Israel (which was filed in English),
Case 1:12-cv-02224-AJN Document 52 Filed 06/20/13 Page 4 of 26
Australia, and Europe all referred to "cards." (T-Mobile Opp. Br. Exs. B, F-G; Lobenfeld Decl.
Ex. J). The Federal Circuit has advised that because "the theories and laws of patentability vary
from country to country, as do examination practices," Heidelberger Druckmaschinen AG v.
Hantscho Commercial Prods., Inc., 21 F.3d 1068,1072 n. 2 (Fed. Cir. 1994), "precedent
cautions against indiscriminate reliance on the prosecution of corresponding foreign applications
in the claim construction analysis." AlA Engineering Ltd. v. Magotteaux Int '! SIA, 657 F.3d
1264, 1279 (Fed. Cir. 2011). Plaintiff exaggerates these holdings, however, in asserting that "as
a matter of law, T -Mobile cannot rely on the prosecution history of Israeli and European
applications." (Reply at 4). The Court considers these foreign applications only in that they
further undermine OTI's ipse dixit that it wrote "card" when it really meant to write "device."
The Court further notes that on has presented no evidence that it sought to fix its
supposed typographical error during the course of prosecution, see 37 C.F.R. § 1.312, or that it
applied for a Certificate of Correction after the patent issued. See 35 U.S.c. § 355. At oral
argument, OTI conceded that it is not asking the Court to "correct" this supposed mistake.
(5/9/13 Tr. at 70:5-8). Instead, Plaintiff's counsel argued that "as part of claim construction, that
change should not be considered as an intent or as some reliance on that word for patentability,
because it was unintentional." (Id.). But it is long-established that the "inventor's subjective
intent in using a term is irrelevant" for claim construction purposes. See, e.g., Gen. Protecht
Grp., Inc. v. Int'! Trade Commc'n, 619 F.3d 1303, 1310 (Fed. Cir. 2010) (citing Howmedica
Osteonics v. Wright Med. Tech., 540 F.3d 1337,1347 & n.5 (Fed. Cir. 2008)).
In short, the Court concludes that the word "card" as used in the preamble means "card."
2. The Preamble Does Not Impose a Limition on the Scope ofthe Claim
Case 1:12-cv-02224-AJN Document 52 Filed 06/20/13 Page 5 of 26
Nonetheless, although rejecting OTI's argument that "card" should be read to mean
something other than what it says, the Court concludes that the preamble, including the use of the
word "card," poses no limitation on the scope of the claim.
A preamble "generally" does "not limit the claims." Am. Medical systems, Inc. v. Bioliec,
Inc., 618 F.3d 1354,1358 (Fed. Cir. 2010) (quoting Allen Eng'g Corp. v. Bartell Indus., Inc., 299
F.3d 1336, 1346 (Fed. Cir. 2002)). Whether to treat a preamble as a limitation is a determination
"resolved only on review of the entirety of the patent to gain an understanding of what the
inventors actually invented and intended to encompass by the claim." Catalina lvfktg. Int'l v.
Coolsavings.com, Inc., 289 F.3d 801,808 (Fed. Cir. 2002); see also Applied Materials, Inc. v.
Advanced Semiconductor Materials Am., Inc., 98 F.3d 1563, 1572-73 (Fed. Cir. 1996) ("Whether
a preamble stating the purpose and context of the invention constitutes a limitation of the
claimed process is determined on the facts of each case in light of the overall form of the claim,
and the invention as described in the specification and illuminated in the prosecution history.").
"In general, a preamble limits the claimed invention if it recites essential structure or steps, or if
it is necessary to give life, meaning, and vitality to the claim. Clear reliance on the preamble
during prosecution to distinguish the claimed invention from the prior art may indicate that the
preamble is a claim limitation because the preamble is used to define the claimed invention." In
re Cruciferous Sprout Litig., 301 F.3d 1343, 1347 (Fed. Cir. 2002) (internal citation and
quotation marks omitted). On the other hand, a preamble is not a claim limitation where it only
states a purpose or intended use for an invention that that is defined in a structurally complete
form in the claim body. Rowe v. Dror, 112 F.3d 473,478 (Fed. Cir. 1997). The Federal Circuit
has reminded that "[t]he inventor of a machine is entitled to the benefit of all the uses to which it
can be put, no matter whether he had conceived the idea of the use or not." Catlina Marketing
Case 1:12-cv-02224-AJN Document 52 Filed 06/20/13 Page 6 of 26
lnt'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801,809 (Fed. Cir. 2002) (quoting Roberts v. Ryer,
91 U.S. 150, 157 (1875)).
Defendant principally argues that the word "card" imposes a limitation on the claim
based on the rule that if a claim derives antecedent meaning from the preamble, then the
preamble may act as a necessary component of the claimed invention. See Highmark, Inc. v.
Allcare Health Mgt. Sys., Inc., 687 F.3d 1300, 1311 (Fed Cir. 2012).2
The preamble and Claim 1 begin as follows:
We claim: 1. A data transaction card having contact and contactless modes of
A semiconductor device for operating in said contact and contactless modes in
accordance with a respective contact or contactless data communications protocol
A contact field including contacts fixedly connected to the semiconductor device
during both said contact and contactless modes, and allowing data transmission
between the contacts and the semiconductor device ....
('043 patent, Col. 13 at 39-47) (emphasis added).
Ordinarily "said" refers to an antecedent, and the meaning is determined by referring
back to what was previously written. See Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d
1338, 1343 (Fed. Cir. 2008) ("In grammatical terms, the instances of 'said ' in the claim are
anaphoric phrases, referring to the initial antecedent phrase. ").
Here, the claim refers to "said contact and contactless modes," which the Court
understands to mean "the previously mentioned" contact and contactless modes or the
"aforesaid" modes. The Court agrees with Plaintiff that the word "said" adds nothing
substantive that changes the scope of the patent. The word "said" serves to limit a reader's
2 At oral argument, Defendant argued for the first time that the "card" must specifically be a "data transaction card."
(See, e.g., 5/9/13 Tr. at 87: 16-17; 88:5-7). The Court need not address this argument because it concludes that the
word "card" does not limit the scope of the claim.
Case 1:12-cv-02224-AJN Document 52 Filed 06/20/13 Page 7 of 26
confusion upon seeing the phrase "contact and contactless modes" repeated in consecutive lines.
To the extent that the word "said" imports any meaning from the preamble into the body of the
claim, such import is limited to "contact and contactless modes" and does not extend to
To adopt Defendant's preferred reading and include "card" within the ambit of what
"said" refers to in the body of the claim would, in effect, re-write the claim to state "a
semiconductor device for operating in said card's contact or contactless mode." But that is not
how the claim is written. For this reason, the Court rejects Defendanfs argument that the body
of the claim asserts that "the card itself' has two modes operation. Instead, the claim is clear that
it covers a semiconductor device capable of operating in two modes, not a card operating in two
modes. ('043 Patent, Col. 13,41-42).
Other intrinsic evidence found within the '043 Patent buttresses the Court's conclusion
that the term "said" would not be read by a reader ofthe patent skilled in the art as posing a
limitation on the scope of the claim. In particular, the patent states that "whilst the invention has
been described with particular reference to a data transaction device in the form of a card, any
other suitable device is contemplated within the framework of the invention as defined in the
appended claims. Such a device need not be a standalone module but may, if desired, be
integrated with other hardware which mayor may not be portable." ('043 Patent, Col. 13, lines
35-37). This intrinsic evidence indicates that the inventor contemplated and intended to claim a
device broader than merely a card. Any reader of the patent, having seen this language, would
have thereafter understood that the use of the word "card" in the preamble was not intended to
pose a limitation on the scope of the claim, and that the use of the word "said" in the claim was
not intended to narrow the scope of the claim to encompass only cards. Tellingly, at oral
Case 1:12-cv-02224-AJN Document 52 Filed 06/20/13 Page 8 of 26
argument, Defendant's counsel conceded that he could not effectively rebut the significance of
this passage in the patent. (5/9/13 Tr. at 79:20-80:18). Additionally, the "Background of the
Invention" section of the patent states that '" contact' and 'contactless' devices are known per se.
Generally, such devices are in the form of smart cards .... " ('043 Patent, Coli, 10-13). The
patent therefore makes clear, by way of negative implication, to anyone reading it in its entirety
that these devices sometimes come in forms other than smart cards. Thus, while, as T-Mobile
notes in its briefing (see, e.g., Def. Opp. Br. at 5), a card is a contemplated embodiment, it is not
the only embodiment that falls within the scope of the claim.
E-Pass Techs., Inc. v. 3eom
Corp., 343 F.3d 1364, 1370 (Fed. Cir. 2003) ("[T]he court's task is not to limit claim language to
exclude particular devices because they do not serve a perceived 'purpose' of the invention.").
The Court's conclusion that the preamble of the '043 Patent does not pose a limitation on
the scope of the claim is in accord with the Federal Circuit's decision in Am. Med. Sys., Inc. v.
Bioliec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010). In that case, a preamble was found to pose
no limitation because the supposedly limiting language was not used "in order to distinguish
the invention from the prior art," the term did not provide an antecedent basis for other
language within the scope of the claim, and the "descriptor" in the preamble did "not embody an
essential component of the invention." Id. at 1359. All of these factors are met in the present
case: "card" does not provide an antecedent basis for other language within the scope of the
claim, it does not embody an essential component of the invention, and, far from distinguishing
the invention from the prior ali, it would have made it more similar.
3 Because the Court concludes that the preamble does not pose a limitation on the scope of the claim, it rejects
Defendant's argument that Plaintiffs amending the preamble to cover a "card" instead of a "device" constituted a
"disavowal" or "surrender" of a broader claim in favor of a narrower one.
Case 1:12-cv-02224-AJN Document 52 Filed 06/20/13 Page 9 of 26
Finally, the Court's conclusion is not altered by language used by the Examiner in the
Notice of Allowability. (See Yonay Dec!. Ex. 2D). In its briefing, T -Mobile appeared to rely on
this language by the Examiner solely to bolster its argument that the word "card" was used
intentionally in the preamble, (Def. Opp. Br. at 9 n.7; Def. Reply at 3), a proposition with which
the Court agrees. In post-hearing letter briefing, T-Mobile appears to argue that use of the word
"card" by the Examiner lends support to T-Mobile's attempts to limit the claimed invention to a
card. (See Dkt. No. 42 at 2). But even the cases relied upon by T-Mobile state that "there is no
obligation to respond to an [E]xaminer's statement of Reason for Allowance, and the statement
of an examiner will not necessarily limit a claim." ACCO Brands, Inc. v. Micro Sec. Devices,
Inc., 346 F.3d 1075,1079 (Fed. Cir. 2003). In ACCO Brands, the Examiner "simply repeated
the arguments that the patentee had presented" and "the examiner and the applicant understood"
that the claim was so limited in scope. Id. (emphasis added). In this case, by contrast, the back
and forth between OTI and the Examiner does not indicate a clear mutual understanding that the
claim was limited in scope only to cards. Also distinguishable in Elkay Mfg. Co. v. Ebco Mfg.
Co., 192 F.3d 973, 979 (Fed. Cir. 1999), in which the patentee argued to the Examiner that the
scope of the patent ought to be limited and the Examiner then indicated that he granted the
application because of that limitation. No party in the present action contends that the '043
Patent was granted in whole or in part because the Examiner thought of it as a card. Nor would
confining the scope of the patent to cards alone distinguish the '043 application from prior art, as
did the argument adopted by the Examiner in Elkay.
In short, the Court concludes that neither the use of the word "card" in the preamble nor
the use of the word "said" in the body of the claim-either individually or in conjunction with
each other-limit the scope of the claims to only cards.
Case 1:12-cv-02224-AJN Document 52 Filed 06/20/13 Page 10 of 26
3. The "Contact and Contactless" Modes of the Invention Are Not Limited to
Those of a Card
As part of this same argument regarding the supposed limitations that the preamble
places on the scope of the claims-which the Court has rejected- T-Mobile submits that the
term "contact and contactless modes of operation" should be limited to those of a card. (Reply at
5-6). But because the use of the word "card" in the preamble does not limit the scope of the
claim, the Court rejects Defendant's argument that the "contact and contactless" modes must be
those of a card. Instead, "contact and contactless" as used in the patent refers to modes of
communication, not the set up of a card. (See, e.g., '043 Patent, Col. 2, lines 17-18).
For the same reason, the Court rejects Defendant's attempt to limit "contact mode" to
something that can "physically touch" a "reader." (See 5/9/13 Tr. at 95:16-96:1). There is
nothing in the claim that limits "contact mode" to a set of contacts that must involve a separate
object such as a "reader." Likewise, the Court rejects T-Mobile's argument that the antenna for
"contactless mode" "has to be at least in part in the data transaction card." (5/9/13 Tr. at 97:1-2)
(emphasis added). Again, the claim is not limited in scope solely to cards.
T-Mobile also argues that, beyond the words in the preamble, these card-based
limitations are properly imposed upon the claim because of references in the "Background of the
Invention" section of the '043 Patent to the structure of the Kreft '495, which was a card. T-
Mobile emphasizes the following passage in the patent:
Both "contact" and "contactless" devices are known per se.
Generally, such devices are in the form of smart cards provided
either with electrical contacts for effecting direct electrical contact
with a card reader; or else they are provided with a coil antenna for
effecting contactless bi-directional communication with a remote
card reader. U.S. Pat. No. 5,206,495 for a Chip Card in the name of
H.D. Kreft discloses a chip card allowing both contact and
contactless communication in a single smart card
Case 1:12-cv-02224-AJN Document 52 Filed 06/20/13 Page 11 of 26
(,043 Patent, Col. 1, 11-19). But all that this passage says is that generally these devices take
card form and that, when they do, direct electrical contacts form with a card reader. The passage
does not require that this invention must take the form of a card. Indeed, it leaves open the
possibility of covered devices that are not "in the form of smart cards."
Finally, the Court rejects T-Mobile's argument that OTI's construction is at odds with the
claim language because OTI's construction defines contact mode as an operation pursuant to
which data is exchanged with the microprocessor via the contact field "using contact data
communication protocol." T-Mobile asserts that this is somehow different from the language in
the patent claiming "a semiconductor device for operating in said contact and contactless modes
in accordance with a respective contact and contactless data communications protocol." (Def.
Opp. Br. at 14-15). The Court fails to see how the substitution of "with" for "uses" is
meaningful in this context.
In short, T-Mobile and Dr. Winter's attempt to impose specific structures into the
claimed device, such as an exposed contact that connects to a reader device-purportedly
through the claimed "contact and contactless modes" of communication-would be unduly
limiting. OTI's proposed construction more accurately captures the language used in the claim
viewed in light of all of the intrinsic evidence.
In sum, the Court rejects the argument that the use of the word "card" in the preamble
poses a limitation on the scope of the claim, rejects T-Mobile's proposed reading of the first
disputed term, and adopts OTI's proposed reading of that term.
B. "A semiconductor device for operating in said contact and contactless modes"
Case 1:12-cv-02224-AJN Document 52 Filed 06/20/13 Page 12 of 26
For the reasons discussed in Section "II.A.3" above, the Court rejects T-Mobile's
proposed reading of this term and adopts OTI's proposed reading. The use of the anaphoric
"said" does not limit the scope of the claimed contact and contactless modes of those of a card,
as T -Mobile argues. (See Def. Br. at 17-18; Def. Reply at 7). Because T -Mobile requests that,
for purposes of this disputed term, contact and contactless modes be construed the same as in the
prior term (See Claim Construction Chart at 2; Dkt. No. 19), and because the Court has rejected
T-Mobile's argument that "contact and contactless modes" should be defined in relation to a card
for purposes of the prior term, the Court correspondingly rejects T-Mobile's contention for
purposes of this term that "contact and contactless modes" should be defined as requiring a card.
At base, T-Mobile intends to take language-"contact and contactless modes"-that describes
modes of data communication, and use it to impose limitations on the physical design of the
device. This is not a proper construction of the claim.
C. "Contact Field"
1. The Court Agrees with Plaintiff s Proposed Reading of "Contact Field"
The Court agrees with OT! that "contact field" should be read as a subset of galvanic
connections allowing data transmission between the contacts and the semiconductor device in
accordance with the contact data communications protocol.
The relevant contacts are not described or depicted anywhere in the patent as having or
requiring particular structures or configurations in order to function, and T-Mobile has not
pointed to anything in the file history that limits the generality of the term as it is used in the
patent. The lines depicted in figure 2 are consistent with a card, but they are also consistent with
other forms of contacts, such as those exhibited in slide seven of Professor Apsel's May 7, 2013
presentation. (See Ct. Ex. 1 at 7).
Case 1:12-cv-02224-AJN Document 52 Filed 06/20/13 Page 13 of 26
Furthermore, Dr. Apsel persuasively explains that in the field of microelectronics,
contacts are regularly used to describe any electrical connection between components. (Apsel
Supp. Decl. ~ 22; see also 5/7/13 Tr. at 10:24-11: 15 ("In the field of electronics, a contact refers
to a direct electrical galvanic connection. That means I can transfer current or voltage directly
through this electrical connection." "Direct" contact means "physically touching" so that "the
current can pass directly from one wire to another wire, for instance, without necessarily going
through some kind ofconversion.,,)).4 A reader skilled in the art would not understand the term
contact field as necessarily involving a card reader. (Apsel Supp. Decl. ~ ~ 22-26).5 Thus, a field
for such contacts could readily be understood by a reader skilled in the art to mean something
more than just a tool for a card and a card reader. (ld.).
T-Mobile argues that because the prior art involved a card, and because "contact field" is
a term borrowed from the prior art, the "contact field" described in the '043 Patent is necessarily
limited to one that functions as part of a card and allows a reader data device's contacts to bear,
or rest, upon it. (T-Mobile Opp. Br. at 19). In further support ofthis position, T-Mobile points
to deposition testimony from the inventor of the '043 Patent, Mr. Itay, that the term "contact
field" was "borrowed" from Kreft. (See 5/9/13 Tr. at 100: 19-24).
4 "While claim construction primarily relies on intrinsic evidence, extrinsic evidence, such as expert testimony, may
also be used when given the appropriate weight by the trial court." Amkor Tech., Inc. v. Int'! Trade Commc'n, 692
F.2d 1250, 1259 (Fed. Cir. 2012) (quoting Spansion Inc. v. Int'l Trade Commc'n, 629 F.3d 1331 (Fed. Cir. 2010».
As the claim is construed through the eyes of someone skilled in the art, Generation II Orthotics Inc. v. Med Tech.
Inc., 263 F.3d 1356, 1366 (Fed. Cir. 2001), the Federal Circuit has advised that it is "entirely appropriate, perhaps
even preferable, for a court to consult trustworthy extrinsic evidence to ensure that the claim construction it is
tending to from the patent file is not inconsistent with clearly expressed, plainly apposite, and widely held
understandings in the pertinent technical field." Honeywell Int'l, Inc. v. United States, 66 F.3d 400, 426 (Fed. Cir.
5 T-Mobile argues that Dr. Apsel improperly relies on an unrelated patent. However, Dr. Apsel simply uses that
patent to illustrate what terms mean to readers skilled in the art. Dr. Winter does exactly the same thing. (Winter
Supp. Dec!. ~ 41; Dkt. No. 26).
Case 1:12-cv-02224-AJN Document 52 Filed 06/20/13 Page 14 of 26
Even assuming arguendo that the Court could accept T-Mobile's position that importing
a term from another prior patent necessarily imports various limitations deriving from the
broader structure of that prior patent, which it does not,6 T-Mobile's construction of contact field
would still be inappropriate because the language that T-Mobile points to does not require that
contact fields, by their definition, operate between cards and card readers. In the '043 Patent, the
"Background of the Invention" section refers to previously patented cards, including the Kreft
'495 Patent, where "there is provided a so-called 'contact field' having a plurality of contacts,
each of which is connected to the micro-computer by means of a respective electrical
connection." (,043 Patent, Col. 1, lines 37-39). The next sentence states that "[d]ata
transmission with an external reader is then effected by contacts which bear on respective
contacts in the contact field of the chip card." ('043 Patent, Col. 1, lines 40-43). T-Mobile
would have the Court read that second sentence into the definition of "contact field." But that
second sentence only describes how the contact field makes a contact with a separate device in
certain prior inventions. It does not describe the way that a "contact field" must be used.
T-Mobile also points to the preferred embodiment in arguing that "contact field" requires
the contact field make a physical and electrical connection with a separate reader device that is
not contained in the "card." (See, e.g., Def. Opp. Br. at 18). However, there is nothing in the
claim that so limits the scope of "contact field." And T-Mobile concedes that it would be
6 T-Mobile relies on Arthur A. Collings, Inc. v. Northern Telecom Ltd., 216 F.3d 1042, 1045 (Fed. Cir. 2000), for the
proposition that "[ w ]hen prior art that sheds light on the meaning of a term is cited by the patentee, it can have
particular value as a guide to the proper construction of the term." But Collings is factually distinguishable. In
Collings, the patent stated that the pOition of the claimed invention with a disputed meaning had previously been
"described and claimed in" several other patents listed therein. Id. Thus, the concession on the face of the patent at
issue in Collings that the disputed terms were "described and claimed in" the previous patents naturally led to the
conclusion that the definition of those disputed terms in the prior patents would be helpful in determining what an
individual skilled in the art would have understood the patentee to be claiming. In Collings, the patent essentially
incorporated by reference the definitions from a prior patents. Such facts are not present in this case.
Case 1:12-cv-02224-AJN Document 52 Filed 06/20/13 Page 15 of 26
improper to limit the claim to the preferred embodiment described in the specification (Opp. Br.
at 18 n.9); see also Phillips, 415 F.3d at 1323 ("[A]lthough the specification often describes very
specific embodiments of the invention, we have repeatedly warned against confining the claims
to those embodiments. ").
Pointing to figure 2 in the '043 Patent, T-Mobile argues that OTI's proposed reading of
this term is too broad, as it would apply to numerous elements on the device beyond what is
labeled as the "contact field." (Def. Br. at 20; Hr'g Ex. D at 51). However, the Court agrees
with OTI that, read in its context, the "contact field" is "a particular subset of galvanic
connections of the device, namely, those that allow data transmission between the contacts and
the semiconductor device in accordance with the contact data communications protocol." (PI.
Reply at 7-8). That is, read in its context, OTI's construction is not so broad as T-Mobile
2. References to the ISO 7816 Protocol Do Not Indicate that the Claimed Invention
Was a Card or that the Contact Field Must Be Part of a Card
In a related argument, T-Mobile asserts that references in the '043 Patent to a 7816
protocol indicate that the claim only covers cards and that the "contact field" therefore must be
that of a card. (See Def. Br. at 20-21; 5/9/13 Tr. at 100:5-7). The Court disagrees.
In the 1980's, a contact communication standard was developed and became known as
the ISO 7816-3 protocol. (See 5/7/13 Tr. at 14:21-15:14; 46:23-48:16). This standard remains a
common contact communication protocol. (5/7/13 Tr. at 15: 12-15).
At the same time, the international standards organization issued a standard that "defined
the number, the shape, the size, and the location of exposed contacts on a smart card." (5/7/13
Tr. at 47:2-4). This standard, known as ISO 7816-2, does not relate to the mode of
Case 1:12-cv-02224-AJN Document 52 Filed 06/20/13 Page 16 of 26
communications. Indeed, communication using the ISO 7816-3 protocol can be accomplished
using a device with or without the ISO 7816-2 standard. (5/7/13 Tr. at 48:6-8). Thus, while the
physical standard and the communication protocol are labeled 7816-2 and 7816-3, respectively,
those labels only indicate that the two were created around the same time, not that one
necessarily has to do with the other. (5/7/13 Tr. at 47:21-25).
Most of the references in the '043 Patent to the 7816 protocol refer to 7816-3, the
communication protocol, and do not involve the standardized layout for smart cards. The
possible reference to a 7816-2 protocol for smart cards in the preferred embodiment does not
limit the scope of the claim. (See Section "II.C.1 " above). Similarly, that some of the figures in
the '043 Patent are consistent with the 7816-2 standard, (5/9/13 Tr. at 108:21-109:3), does not in
and ofitselflimit the scope of the claim to cards. For these reasons, the Court rejects the notion
that references to the ISO 7816 protocol in the Patent indicate that the claimed invention only
In short, the Court is not persuaded that the term "contact field," as written in the claim,
is limited to a protruding or exposed field upon which a reader may bear or rest. As a result, the
Court rejects T-Mobile's proposed construction and adopts OTI's proposed construction of
(D) "Allowing data transmission between the contacts and the semiconductor device in
accordance with said contact data communications protocol only during said contact
T-Mobile argues that statements made by on during the prosecution history limit the
scope of the claim to a device that disables the contact field during contactless mode.
"Prosecution history disclaimer[s] play an important role in the patent system." Biogen Idec,
Case 1:12-cv-02224-AJN Document 52 Filed 06/20/13 Page 17 of 26
Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090,1095 (Fed. Cir. 2013). "Competitors are entitled
to rely on those representations when determining a course of lawful conduct, such as launching
a new product or designing-around a patented invention." Id. It also "provides evidence of how
the [PTO] and the inventor understood the patent." Edwards Lifesciences LLC v. Cook Inc., 582
F.3d 1322, 1327 (Fed. Cir. 2009)(quoting Phillips, 415 F.3d at 1317)(alteration in original).
As discussed below, the Court concludes that a reader skilled in the art would not have
concluded, based on statements in the prosecution history, that on clearly and unmistakably
disclaimed a device that has connectivity between the contact field and the microprocessor
during contactless mode. The Court therefore concludes that Plaintiff's proposed construction is
correct and Defendant's proposed construction is incorrect.
l. OTI's September 1999 Submission to the PTO
T-Mobile argues that on disavowed claim scope in its September 22, 1999 letter to the
Examiner explaining why the '043 application was an improvement upon and distinguishable
from U.S. Patent 5,773,812 (Def. Ex. M) ("Kreft '812 Patent"). The Kreft '812 Patent, like
Kreft's' 495 Patent, contained a switching element. (See Def. Ex. M; '812 Patent, Col. 7, line
58-60). Upon review of on's '043 application, the Examiner initially rejected the '043
application on the basis that it was not distinguishable from Kreft's '812 patent, explaining that
"Kreft discloses a chip card comprising a chip 1, electrical contacts 2, and coil winding 5 for
contactless communication. As can be seen, Kreft discloses the claimed invention." (Def. Ex.
OTI's patent advocate responded to this rejection by (1) amending the claim language to
its present contested form regarding "allowing data transmission between the contacts and the
semiconductor device in accordance with said contact data communications protocol only during
Case 1:12-cv-02224-AJN Document 52 Filed 06/20/13 Page 18 of 26
said contact mode,,,7 and (2) argued that the Examiner misinterpreted the claim by failing to note
that the "improvement" over the prior Kreft inventions was in that "no switching element is
required for electing whether contact or contactless modes of operation are required." (Def. Ex.
N) (emphasis in original). OTI's patent advocate continued that "[t]his distinction, which is
fundamental to an understanding of the invention, is expressed by the statement that the contact
field includes contacts fIXedly connected to the semiconductor device during both modes, but
transmit data only in contact mode." (Def. Ex. N) (emphasis in original).
OTI's patent advocate "respectfully submitted that the Examiner misinterpret[ed] the
claim because the invention as claimed resides not in the mere collocation of common
components which are admittedly to be found in all smart cards having both contact and
contactless interfaces." (Def. Ex. N) (emphasis in original). In other words, OTI's patent
advocate was not asserting that the Examiner mistakenly found the '043 application
indistinguishable from the '812 Patent because the '043 application claimed a device that
involved contact communications during contactless mode. To the contrary, OTI's September
1999 submission to the PTO indicates that it did not believe that the Examiner appreciated that
the '043 application involved more than just a claim to a jumble of objects-e.g., an antenna, a
contact field, and contact lines-that are found in all smart cards. OTI sought to make clear that
it was seeking to patent a specific layout for a device, one that did not involve a switching
mechanism-as had existed in both Kreft's '495 and '812 Patents. (Id.).
To this effect, in its September 22, 1999 response to the PTO, OTI's patent advocate
went on to make the following representations:
7 The original language was: "a contact field including contacts fixedly connected to the semiconductor device for
allowing data transmission between the contacts and the semiconductor device in accordance with said contact data
communications protocol." (Winters Decl. Ex. Kat 25).
Case 1:12-cv-02224-AJN Document 52 Filed 06/20/13 Page 19 of 26
• "Rather the presence of an electromagnetic field on the antenna coil automatically
enables contactless operation of the smart card and, by the same token, disables
the contact field - even though, in the invention, the contact field remains
fIXedly connected to the semiconductor chip." (Ex. N at 3) (emphasis supplied in
• "Herein claim 1 was amended to emphasize that the contacts are fixedly
connected to the semiconductor device during both modes, contact or contactless,
of data transmission. However, the contacts perform on a selective basis, that
is, only in the contact mode. This is described in the originally filed application.
New matter was not added." (Ex N. at 2) (emphasis supplied in part).
The Court understands this language to be explaining that the contact field remains
connected to the microprocessor through a dedicated line-as accounted for in OTI's proposed
construction-and that the contact field's dedicated line is not essential for and, in fact, is not
even relevant to the operation of contactless mode. To the extent that these statements in the
prosecution history may be read more broadly, they become, as discussed below, inherently
ambiguous and therefore do not limit claim scope in this case.
2. OTI's Statements to the Examiner Did Not Constitute Clear and Unambiguous
Disavowal of Claim Scope
"[PJrosecution history ... cannot be used to limit the scope of a claim unless the
application took a position before the PTO that would lead a competitor to believe that the
applicant had disavowed coverage of the relevant subject matter." Schwing GmbH v.
Putzmeister AktiengesellschaJt, 305 F.3d 1318, 1324-25 (Fed. Cir. 2002). In consideration of
"the importance of public notice and the right of patentees to seek broad patent coverage," the
Federal Circuit has required that allegedly "disavowing statements to be both so clear as to show
reasonable clarity and deliberateness and so unmistakable as to be unambiguous evidence of
disclaimer." Omega Engineering, Inc. v. Raytek Corp., 334 F.3d 1314, 1325 (Fed. Cir. 2003)
(internal citations omitted). For the reasons that follow, the Court concludes that the way T-
Case 1:12-cv-02224-AJN Document 52 Filed 06/20/13 Page 20 of 26
Mobile construes OTI's statements in the September 22, 1999 statement renders them
contradictory and inherently ambiguous, and such a construction therefore cannot constitute clear
disavowal of claim scope. See id.
Adopting T-Mobile's preferred understanding of the statements in OTI's 1999 letter to
the Examiner would result in contradictory assertions within the same document and thereby
render it inherently ambiguous. For example, T-Mobile argues that OTI limited its claim to a
device that does not permit communication between the contact field and the microprocessor
during contactless mode. (Def. Reply at 10). But Dr. Apsel explains that in the context of
microelectronics, disconnections are typically caused by switching mechanisms. (Apsel Suppl.
Decl. ~ ~ 3-7, 29-31 ). Yet the specification provides for no switching mechanism and OTI's
letter to the Examiner was clear that (1) the device did not have a switching mechanism and (2)
the amendment did not add "new matter." (Def. Ex. N).8 T-Mobile appears to argue that its
proposed construction requires "disablement" without "disconnection" (Def. Reply at 10), but it
is not clear how one would be possible without the other or where the distinction lies. As a
result, T-Mobile's interpretation of these statements during the prosecution history renders the
statements inherently confusing, nonsensical, and ambiguous.
Additionally, the Kreft '812 device involved switches that disconnect certain lines from
other lines. (See Def. Ex. M; Kreft '812 Patent). T-Mobile asserts that the 1999 letter
distinguishes the '043 Patent over the '812 Patent by promising "disable[ment]" of the contact
field during contactless mode. But, again, in order for that to be a distinction over the' 812
8 Moreover, Kreft's prior art already employed switches between the contacts and the microprocessor, so such an
addition would have provided no basis for differentiation.
Case 1:12-cv-02224-AJN Document 52 Filed 06/20/13 Page 21 of 26
Patent, there would need to be a distinction between "disabling,,9 and "disconnecting." In this
context, it is not clear how such a distinction would make any sense.
Further ambiguity is found in the passage in the 1999 letter discussing contacts
performing on a "selective basis," even though the same document disclaims switching devices.
T-Mobile's own expert was not able to describe how such a device would work without
switching mechanisms. (Winters Depo. at 123:17-24,124:8-126:16).10 Thus, T-Mobile's
reading of the statements in the prosecution history would render the '043 device inoperable
absent the possible addition of a separate device that is not disclosed as part ofthis element of
the patent. 11
The Federal Circuit's decision in Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d
1366 (Fed. Cir. 2007), is instructive. In Elbex, the Federal Circuit held that an inventor did not
clearly and unmistakably surrender any of its claims during the prosecution stage in light of a
"unique amalgamation of facts," including (1) that the statement in the prosecution was
unsupported by evidence from the specification, (2) "the ambiguity created by other statements
in the same prosecution document," (3) that the opposing party's own expert could not explain
how the device would operate consistent with the supposedly disavowing statements, and (4) that
9 T-Mobile also phrases this as saying that connections are "not permitted" between the contact field and the
semiconductor device during contactless mode.
10 Dr. Winters testified that it might be possible using a so-called "tri-state device," but he was not able to describe
how such a device would be employed in this aspect of the invention and stated that it was not in any ofthe
embodiments. (Winters Depo. at 123 :21-126: 16). At the Markman hearing, T -Mobile's counsel did not disagree
with the assertion that there was no way described to achieve this in the patent. T-Mobile's counsel said that such a
mechanism was "undescribed" and added that "[t]here may be a way of doing it. I suppose the experts can sit down
and try to figure that out, but they don't actually describe a way of doing it in the patent." (5/9/13 Tr. at 120:6-22).
11 Additionally, if the contact field was completely disabled and disconnected from the microprocessor during
contactless mode, no power or ground line would be available for the antenna, and contactless communication
would therefore be impossible. (5/7/13 Tr. at 34:17-35:11).
Case 1:12-cv-02224-AJN Document 52 Filed 06/20/13 Page 22 of 26
a reader skilled in the art would not have understood the inventor to be making a disclaimer after
reading the intrinsic record as a whole since the supposed disclaimer would result in an
inoperable system. Id at 1373.
All of these facts exist in the present case. First, the statement during the prosecution is
inconsistent with the specifications and with Claim 25. Second, other statements in the same
1999 letter render the passages that T-Mobile highlights ambiguous. Third, as Professor Apsel
explained, the '043 Patent's antenna and contact field use the same lines of connection to
connect with the microprocessor and to receive power. (5/7/13 Tr. at 34:17-35:1 i). Even Dr.
Winter could not explain how the device would function as described without a switching
device, which the record makes clear is absent from the '043 Patent, or a "tri-state" device that is
not described in the claims and not shown in the embodiment in relation to this aspect of the
invention. (Winters Depo. At 123:17-24,124:8-126:16). Thus, adopting T-Mobile's proposed
construction would render the device inoperable, if not impossible. And a reader skilled in the
art, reading the intrinsic evidence in its entirety, would not have understood OT! to have
disclaimed a device that allows for connectivity, or interaction, between the contact field and the
microprocessor during contactless mode.
Finally, T-Mobile criticizes OTI's proposed construction of this term as unduly limiting
because it limits the claims to dedicated input/output ports. But that is exactly what the language
in the 1999 letter-including its reference to "fixedly" connected lines and a "allowing data
transmission ... in accordance with said contact data communications protocol only during said
contact mode"-conveys. Moreover, the input/output ports, which were discussed in the
prosecution history when OT! referred to the "fixedly" limitation in the claim, are described in
Case 1:12-cv-02224-AJN Document 52 Filed 06/20/13 Page 23 of 26
T-Mobile also argues OTI's reading would "contradict claim 2." (Def. Opp. at 24). The
Court disagrees. First, contrary to T-Mobile's assertion (Def. Opp. Br. at 24), OTI's proposed
reading would not be entirely duplicative of claim 2. Claim 2 states that "the semiconductor
device has separate contact and contactless i/o ports for effecting data transmission in accordance
with said contact and contactless data communications protocol, respectively." Thus, claim 2
approaches the invention from the perspective of the semiconductor device, and the
semiconductor device's i/o ports, whereas claim 1 addresses the invention from the signal
perspective, and proscribes how signals traverse the elements of the system. Whiie the two
concepts are intricately related, they are not identical.
Second, even if OTI's proposed construction causes claim 1 to overlap with claim 2 to
some extent, the Court still concludes that it is the proper construction. Pursuant to the doctrine
of claim differentiation, there exists a rebuttable presumption that an independent claim should
not include a limitation imposed by a dependent claim. Biogen Idec, Inc. v. GlaxoSmithKline
LLC, 713 F.3d 1090, 1097 (Fed. Cir. 2013). The presumption may be overcome by prosecution
history or the written description and the teachings of the specifications. Marine Polymor Tech.,
Inc. v. Hemcon, Inc., 672 F.3d 1350, 1359, 1368 (Fed. Cir. 2012); Retractable Tech., Inc. v.
Becton, Dickinson and Co., 653 F.3d 1296,1305 (Fed. Cir. 2011) ("Claim language must always
be read in view of the written description, and any presumption created by the doctrine of claim
differentiation will be overcome by a contrary construction dictated by the written description or
prosecution history.") (internal citation and quotation marks omitted). Indeed, the Retractable
Technologies court opined that while "[t]here is a fine line between construing the claims in light
of the specification and improperly importing a limitation from the specification into the claims, .
. . . [i]n reviewing the intrinsic record to construe the claims, we strive to capture the scope of the
Case 1:12-cv-02224-AJN Document 52 Filed 06/20/13 Page 24 of 26
actual invention, rather than strictly limit the scope of claims to disclosed embodiments or allow
the claim language to become divorced from what the specification conveys is the invention."
Retractable Tech., 653 F.3d at 1305.
All of the relevant embodiments described in the specification have separate lines for
contact and contactless data, and none have shared lines. Indeed, T-Mobile's own expert did not
dispute this point. (Winters Depo. at 187:5-88:13). As in Retractable Technologies, limiting the
claim as urged by OTI "is required to tether the claims to what the specifications indicate the
inventor actually invented." Retractable Tech., 653 F.3d at 1305.
Moreover, T-Mobile's proposed construction would contradict claim 25, another
dependent claim. T-Mobile, relying on ERBE Elektromedizin GmbH v. Canady Tech. LLC, 629
F.3d 1278, 1286 (Fed. Cir. 2010), argues that the presumption of claim differentiation is
overcome in the instance of claim 25 because of express statements made by OTI during the
prosecution history that limit claim scope. But, as discussed, the Court concludes that OTI did
not clearly disclaim claim scope during the prosecution. As a result, the doctrine of claim
differentiation actually weighs in favor of rejecting T-Mobile's proposed construction in favor of
In short, the Court concludes that OTI did not unambiguously disavow claim scope
during prosecution and that its proposed construction accurately captures the invention as
claimed in the patent. The Court therefore rejects T-Mobile's proposed reading ofthe fourth
term and adopts OTI's proposed reading.
Case 1:12-cv-02224-AJN Document 52 Filed 06/20/13 Page 25 of 26
For the foregoing reasons, the Court agrees with Plaintiffs proposed constructions of the
four disputed terms. The parties shall abide by the schedule set forth in the August 10,2012
scheduling order. (Dkt. No. 14). Specifically, all fact discovery shall be completed within 10
weeks of the date of this order, all expert discovery shall be completed within 14 weeks, and any
dispositive motions shall be filed within 18 weeks. A conference with the Court is scheduled for
August 28,2013, at 10:00 AM.
Dated: June __ ,2013
New York, New York
Case 1:12-cv-02224-AJN Document 52 Filed 06/20/13 Page 26 of 26
This action might not be possible to undo. Are you sure you want to continue?
We've moved you to where you read on your other device.
Get the full title to continue reading from where you left off, or restart the preview.