1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 BELL NORTHERN RESEARCH, LLC, Case No.: 18-CV-2864-CAB-BLM

12 Plaintiff,

CLAIM CONSTRUCTION ORDER

13 v. AND ORDER ON MOTION FOR

SUMMARY JUDGMENT OF

14 LG ELECTRONICS INC., LG

INDEFINITENESS

ELECTRONICS U.S.A., INC., and 15 [Doc. 82]

LG ELECRONICS MOBILE

16 RESEARCH U.S.A., LLC, 17 Defendants. 18 19 20 On January 16, 2020, the Court held a hearing to construe certain disputed terms and 21 phrases of U.S. Patent No. 7,945,285 and U.S. Patent No. 6,549,792, at issue in this lawsuit. 22 The Court further heard argument on defendant’s motion for summary judgment that 23 certain claims of the ‘792 patent and U.S. Patent No. 7,039,435 are indefinite and therefore 24 invalid. Having considered the submissions of the parties, the arguments of counsel, and 25 for the reasons set forth at the hearing and summarized herein, the Court enters the claim 26 constructions listed below and denies the motion to summary judgment. 27 28 1 A. Claim Construction Order

2 1. U.S. Patent No. 7,945,2851 3 The ‘285 patent is for an apparatus and method of “Integrating a Digital Encoded- 4 Audio Bit Stream Player in a Radio-Frequency Telephone Handset.” The ‘285 patent is a 5 continuation of an application filed on October 7, 2004 which issued as U.S. Patent No. 6 7,702,363, which is a continuation of an application filed on November 23, 1999, which 7 issued as U.S. Patent No. 7,945,284. The patents are directed at cordless telephones and a 8 need to “expand the uses of a cordless telephone beyond that afforded by conventional 9 cordless telephones.” (Col. 1:56-57.) Specifically, integrating a digital audio bit stream 10 player within the remote handset or matching base unit of a cordless phone. (Col. 1:61- 11 65.) 12 During the prosecutions of the ‘284 and ‘363 patents, the applicants repeatedly 13 distinguished prior art references by stating the prior art related to cellular telephones 14 connected to cellular rely towers and not cordless telephones. The applicants emphatically 15 reiterated to the examiner that the remote handset and matched base unit of the invention 16 was not a cellular telephone and a cellular relay tower, and inventions within the “cellular 17 telephone art” did not apply to their invention. [Doc. No. 83-4 at 4-5; Doc. No. 83-5 at 4- 18 5; Doc. No. 83-12 at 4, 6.] 19 The claims of the ‘284 and ‘363 patents are for cordless telephones. In their February 20 16, 2010 application for the ‘285 patent, the applicants claimed the cordless telephone of 21 the invention as a “radio-frequency telephone handset.” The applicants however 22 represented to the patent examiner that no new matter was introduced in this application to 23 retain the 1999 priority filing date. Having previously, repeatedly and strenuously 24 represented that these patents are not in the cellular telephone arts and that the base unit of 25 the handset is not a cellular relay tower, the Court finds that by claiming the disclosed 26 27 28 1 cordless telephone of the invention as an RF telephone handset and an RF unit connected 2 to a network, the applicants cannot recapture that which they disclaimed. 3 The Court therefore construes: 4 1. RF telephone handset as the remote handset of a cordless telephone using 5 radio-frequency technology; and 6 2. RF unit connected to a network as the matching base unit of a cordless 7 telephone using radio-frequency technology. 8 In light of the construction limiting the RF telephone handset and base unit to a 9 cordless phone, the Court declined to reach the construction issue regarding the step of 10 “muting the digital encoded-audio bit stream music playing from the digital encoded-audio 11 bit stream player when the RF telephone handset received a telephone call,” as moot. 12 2. U.S. Patent No. 6,549,7922 13 The ‘792 patent is for an Accelerometer Influenced Communication Device. Filed 14 in 1999, the patent is directed at an apparatus and method for enhancing the operation of 15 wireless telephones. Claim 1 of the patent claims 16 A cordless telephone, comprising: a handset with an accelerometer; 17 a transceiver; 18 a controller; and a ring detection unit adapted to provide a ring indication to said controller; 19 wherein there is a transition of said cordless telephone between an on-hook state 20 and an off-hook state based on an output of said accelerometer showing an active movement of said handset. 21

22 Claim 9 of the patent claims 23 A wireless handset, comprising: 24 a wireless transceiver; a controller; and 25 an accelerometer, 26 27 28 1 wherein the controller is adapted to receive an output from the accelerometer showing an active movement of said wireless telephone and affect a state of said 2 wireless transceiver based on a change in a motion history. 3 4 Based on the plain language of the claim and the specification, the Court construed 5 cordless telephone as a telephone comprising a remote handset and corresponding 6 matched base unit. 7 Also based on the plain language of the claim and the specification, the Court 8 construed motion history as a stored pattern of movement or lack of movement. 9 B. Motion for Summary Judgment of Indefiniteness 10 Defendant contended that certain terms of the ‘792 patent and the ‘435 patent fail to 11 inform those skilled in the art about the scope of the invention with reasonable certainty as 12 required by 35 U.S.C. § 112, therefore rendering the claim indefinite and invalid. Nautilius 13 Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014). 14 1. The ‘792 Patent 15 Defendant argued that the ring detection unit of claims 1 and 4 of the ‘792 patent 16 is a “means plus function” element, pursuant to § 112 ¶ 6, and no corresponding structure 17 for this unit is provide in the specification thereby rendering the claims indefinite. Plaintiff 18 argued that “ring detection” provides sufficient structural information for the unit to apprise 19 one of skill in the art that it is an integrated circuit or portion thereof in the handset and 20 such circuitry was well known in the art at the time the patent was filed. The Court was 21 not persuaded, considering the totality of the specification, that § 112 ¶ 6 applied to this 22 element. Defendant did not establish by clear and convincing evidence that these claims 23 are indefinite. 24 Defendant also argued that the term active movement that appears in claims 1, 9 25 and 15 of the ‘792 patent is indefinite because no one of skill in the art can ascertain from 26 the patent what level of movement meets the requirement of “active.” The Court however 27 concluded in the context of the invention a person of skill would understand active, not as 28 a level of movement, but a temporal qualifier, meaning current or present movement. 1 Defendant did not establish by clear and convincing evidence that these claims are 2 indefinite. 3 Defendant also argued that the terms to affect the state or influencing a transition, 4 found in claims 4, 9, and 14 of the ‘792 patent are indefinite. The Court found in the 5 context of the invention and the specification as a whole a person of skill in the art would 6 understand these terms to mean changing the state of the handset from on-hook to off-hook 7 or vice versa depending on information received from components of the handset. 8 Defendant did not establish by clear and convincing evidence that these claims are 9 indefinite. 10 2. The ‘435 Patent3 11 The ‘435 patent is for a Proximity Regulation System for use with a portable cell 12 phone and a method of operation thereof. Filed in 2001, the patent is directed at increased 13 health concerns regarding the power used to transmit the radio frequency of cell phones 14 when operated close to the body of the cell phone user. “For example, when held close to 15 the ear, many users have health concerns about the high level of radio frequency energy 16 causing damage to brain cells.” [Col. 1:14-40.] The patent claims a system and method to 17 automatically reduce the transmit power level of a portable cell phone when located near a 18 human body thereby decreasing the perception of health risks associated with the use 19 thereof. [Col. 1:63-67.] 20 Claim 1 of the ’435 patent claims 21 A portable cell phone, comprising: a power circuit that provides a network adjusted transmit power level as a function 22 of a position to a communications tower; and 23 a proximity regulation system including: a location sensing subsystem that determines a location of said portable cell phone 24 proximate a user; and 25 a power governing subsystem, coupled to said location sensing subsystem, that determines a proximity transmit power level of said portable cell phone based on 26 27 28 1 said location and determines a transmit power level for said portable cell phone 7 based on said network adjusted power level and said proximity transmit power level. [Col. 8:2-15.] 3 The defendant argued that the patent provides no limitations or ranges for what 4 would constitute proximate a user and claim | is therefore indefinite. The Court is not persuaded. In the context of the invention, considering the entirety of the claim, proximate 6 a user does not require a particular distance from a user, but rather is a reference point for a measurement. The location sensing subsystem determines the location (1.e., distance) of 8 the phone from the user. Based on that location and the power level based on the position ? of the phone to a communications tower, the power governing subsystem adjusts the power 10 level for the phone. Proximate a user describes a variable used to determine the location of the phone, where it is in relation to the user to obtain a distance. The defendant also argued that designated sensor in dependent claim 8 is indefinite. IS As a matter of judicial economy and to avoid unnecessary claim construction, the Court declined to reach this argument and deemed it withdrawn without prejudice. If plaintiff 15 pursues infringement of Claim 8 of the ‘435 patent, defendant may renew this argument. 16 It is SO ORDERED. M7 Dated: January 21, 2020 18 ( 19 Hon. Cathy Ann Bencivengo United States District Judge 21 22 23 24 25 26 27 28