Procon Analytics, LLC v. Spireon, Inc. (PLR2)

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TENNESSEE

KNOXVILLE DIVISION

)

PROCON ANALYTICS, LLC, )

)

Plaintiff, )

) 3:19-cv-00201

vs. )

)

SPIREON, INC., )

)

Defendant. )

______________________________________________________________________________

CLAIM CONSTRUCTION ORDER

The case is before the Court for claim construction pursuant to Markman v. Westview

Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995), aff'd, 517 U.S. 370, (1996). A Markman

hearing was held on November 9, 2020. (ECF No. 54.) Present were Seth Ogden and Ed Lanquist,

Jr., counsel for Plaintiff, and Matthew Google and Taylor Williams, counsel for Defendant.

I. BACKGROUND

A. Procedural Background

On April 2, 2019, Plaintiff Procon Analytics, LLC (“Procon”) was served with a letter from

Defendant Spireon, Inc. (“Spireon”), accusing it of infringement of U.S. Patent No. 10,089,598

(the “’598 Patent”). (ECF No. 1-1.) On April 25, 2019, Spireon followed up its first letter with a

cease and desist demand with respect to any products that allegedly infringe the ’598 Patent. On

June 3, 2019, Procon brought this claim for declaratory judgement of noninfringement and

invalidity of the ’598 Patent, and filed an Amended Complaint on August 6, 2019. (ECF No. 9.)

Spireon filed an Answer and Counterclaims on August 26, 2019. (ECF No. 10.)

Procon is a Tennessee limited liability company with a principal place of business in Irvine,

California (ECF No. 9 ¶ 1), and Defendant Spireon is a Tennessee corporation with offices in

Irvine, California and Knoxville, Tennessee (ECF No. 9 ¶ 2). Both parties are competitors in the

connected car and vehicle management fields. Procon “offers a suite of connected-car products

and services, including vehicle inventory management and service retention products, fleet-

management tools, and other aftermarket solutions packaged for automotive retailers.” These

products include both hardware and software solutions. (ECF No. 9 ¶¶ 22–26.) One such product

is a software that helps new car automotive dealerships manage their inventory. (Id. ¶ 23.) Another

product that Procon sells is a device that connects to the “on-board diagnostics (OBDII) port (or a

panel attached thereto) of a vehicle.” (Id. ¶ 25.) This device is enabled to “transmit information

to the cloud over a wireless network.” (Id.) Similarly, Spireon purports to be an “industry leader

in Mobile Resource Management, offering lot management solutions to [the] automotive dealer

industry.” (ECF No.1-1 at PageID 9.) Spireon asserts that it is a “leader in the field of connected

vehicle intelligence” and sells products that “facilitate[] the tracking, management, and protection

of vehicles in various commercial applications and industries.” (ECF No. 10 at PageID 197.) It

is Spireon’s contention that Procon continues “making, selling, and offering for sale products and

services for managing vehicle inventory for dealerships that infringe on certain claims of the ’598

Patent[.]” (ECF No. 10 at PageID 198.)

B. Post-Grant Proceeding

Procon filed a Petition requesting Post-Grant Review of Claims 1–14 of the ’598 Patent on

May 30, 2019. (ECF No. 12 ¶ 5). On November 22, 2019, the Patent Trial and Appeal Board

(“PTAB”) declined to institute proceedings against the challenged claims. (ECF No. 17-1.) The

parties did not dispute the meaning of any claim terms of the ’598 Patent in front of the PTAB and

did not propose specific constructions for any of the claim terms. (ECF No. 17-1 at PageID 239.)

The PTAB gave “the claim terms of the ’598 patent their ordinary and customary meaning, as

understood by one of ordinary skill in the art, and in view of the prosecution history of the ’598

patent.” (Id.) One of the key points in the PTAB’s decision was that the prior art failed to disclose

location devices “owned by the auto dealer,” and thus this is a key point of contention in the current

claim construction briefing. (ECF No. 38-6 at PageID 471.)

C. The ’598 Patent

The ’598 patent is entitled “Methods and Apparatus for Monitoring and Control of

Electronic Devices” and it primarily discloses a method for machine to machine telemetry. The

patent defines “telemetry” as “a technology that allows the remote measurement and reporting of

information of interest to the system designer or operator.” (’598 patent, col. 1 l. 19–21.)

At its heart, the ’598 Patent discloses an “inventory management system” that “may be

configured to provide machine-to-machine network connectivity” and “may be used in conjunction

with a location device configured to transmit a vehicle identification number (VIN) and a device

identifier of the location device.” ’598 Patent at Abstract. The technology in the ’598 Patent boils

down to methods of communicating and gathering information from vehicles. As described in the

abstract of the patent, “the inventory management system may be configured to: (1) track whether

the location device is located within a predetermined perimeter; (2) provide current inventory and

ownership status associated [with] the location device; and/or (3) place the location device in a

sleep and/or passive state with periodic check-ins.” ’598 Patent at Abstract. The disclosure and

claims also provide additional capabilities, such as receiving signals if the car’s battery is depleted

or storing additional information about the vehicle in the database. (See generally, ’598 patent at

15:28–32, 16:43–48.)

In this case, all of the independent claims begin with “[a] method for managing a vehicle

inventory.” (’598 patent, col. 27–28.) Claim 1 is the basis for most discussion on claim terms and

provides as follows:

1. A method for managing a vehicle inventory for a dealer implemented by a computer

having a processor and a memory, the method comprising:

while a location device is not communicatively coupled with a vehicle, associating

the location device with a dealer’s group of available location devices in the

memory, wherein the dealer’s group of available location devices comprises

location devices owned by the dealer that are not coupled with any vehicle;

communicatively coupling the location device with a vehicle;

in response to the location device becoming communicatively coupled with the

vehicle, the location device transmitting a connection notice over a network, the

connection notice comprising a vehicle identifier and a location device identifier;

receiving, by the computer, the connection notice from the location device over the

network;

in response to the connection notice received by the computer, the processor:

associating the location device identifier with the vehicle identifier in the

memory; and

disassociating the location device from the dealer’s group of available

location devices in the memory; and

receiving, by the computer, current location information from the location device.

II. APPLICABLE LEGAL STANDARD

“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.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312

(Fed. Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381

F.3d 1111, 1115 (Fed. Cir. 2004)). Courts, as a matter of law, must construe the claims of a patent

in order to ascertain precisely what it is that is patented. See id.; see also Markman v. Westview

Instruments, Inc., 517 U.S. 370, 387 (1996).

In engaging in that exercise, the words in the claims are “generally given their ordinary

and customary meaning,” that is, “the meaning that the term would have to a person of ordinary

skill in the art in question at the time of the invention.” Phillips, 415 F.3d at 1312-13 (internal

citations and quotation marks omitted). This ordinary and customary meaning “may be readily

apparent even to lay judges,” and where that is the case, claim construction involves “little more

than the application of the widely accepted meaning of commonly understood

words.” Id. at 1314 (citing Brown v. 3M, 265 F.3d 1349, 1352 (Fed. Cir. 2001)).

However, as the ordinary and customary meaning is often not immediately apparent, courts

must look to other sources of evidence—“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. (citing Innova, 381 F.3d at

1116). In Phillips, the United States Court of Appeals for the Federal Circuit provided guidance

on the relative weight given to evidence from these various sources. Id.

First, “the claims themselves provide substantial guidance as to the meaning of particular

claim terms,” particularly the “context in which a term is used in the asserted claim.” Id. at 1314.

But because claims are also part of a “fully integrated written instrument,” they must “be read in

view of the specification, of which they are a part.” Markman, 52 F.3d at 978, 979 (citations

omitted). As the Federal Circuit has stressed, “[a] patent’s specification provides necessary

context for understanding the claims, and ‘is always highly relevant to the claim construction

analysis.’” Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir. 2009) (en banc in part)

(quoting Phillips, 415 F.3d at 1315). Further, “sometimes the specification offers practically

incontrovertible directions about claim meaning,” as when inventors “act as their own

lexicographers and give a specialized definition of claim terms,” or “intentionally disclaim, or

disavow, subject matter that would otherwise fall within the scope of the claim.” Id. (internal

citations and quotation marks omitted). But the Court must take care neither “to import limitations

into the claims from the specification,” nor to allow “the claims to enlarge what is patented beyond

what the inventor has described as the invention.” Id. at 1288 (internal citations and quotation

marks omitted). In addition, “a particular embodiment appearing in the written description may

not be read into a claim when the claim language is broader than the embodiment.” Resonate Inc.

v. Alteon Websystems, Inc., 338 F.3d 1360, 1364-65 (Fed. Cir. 2003).

The prosecution history of the patent is the other type of “intrinsic evidence,” along with

the specification, courts consider when determining the meaning of disputed terms. Phillips, 415

F.3d at 1317.

Finally, courts may consider extrinsic evidence—that is, “all evidence external to the

patent and prosecution history, including expert and inventor testimony, dictionaries, and learned

treatises.” Id. (quoting Markman, 52 F.3d at 980). Such evidence, however, is “less significant

than the intrinsic record in determining the legally operative meaning of claim

language.” Phillips, 415 F.3d at 1317 (internal quotations and citations omitted).

In engaging in a Markman analysis, a court is not required to “repeat or restate every claim

term in order to comply with the ruling that claim construction is for the court.” U.S. Surgical

Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). Rather, “[c]laim construction is a

matter of resolution of disputed meanings and technical scope, to clarify and when necessary to

explain what the patentee covered by the claims, for use in the determination of infringement.” Id.

During this Markman hearing, the Defendants advanced arguments that approximately 29

terms used in the patents are indefinite under Nautilus. Nautilus, Inc. v. Biosig Instruments, Inc.,

572 U.S. 898, 910 (2014). In Nautilus, the Supreme Court announced that 35 U.S.C. §112, ¶2

“require[s] that a patent’s claims, viewed in light of the specification and

prosecution history, inform those skilled in the art about the scope of the invention

with reasonable certainty. The definiteness requirement, so understood, mandates

clarity, while recognizing that absolute precision is unattainable. The standard we

adopt accords with opinions of this Court stating that the certainty which the law

requires in patents is not greater than is reasonable, having regard to their subject-

matter.”

Id. at 910 (internal quotations omitted).

The Court follows Federal Circuit precedent and considers indefiniteness to the extent that

“[i]ndefiniteness is a matter of claim construction, and the same principles that generally govern

claim construction are applicable to determining whether allegedly indefinite claim language is

subject to construction.” Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008) (citing

Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1348 (Fed. Cir. 2005)).

“[U]nder controlling precedent, the ultimate question of indefiniteness is one of law.” Dow

Chem. Co. v. NOVA Chems. Corp. (Can.), 809 F.3d 1223, 1224-25 (Fed. Cir. 2015). Under Teva,

the Supreme Court acknowledged that subsidiary factual determinations are made in the course of

claim construction. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 832 (2015). To the

extent that a definiteness analysis relies on factual issues as to the knowledge of the person having

ordinary skill in the art, it is an inquiry that “is amenable to resolution by the jury.… ” BJ Servs.

Co. v. Halliburton Energy Servs., Inc., 338 F.3d 1368, 1372 (Fed. Cir. 2003) (“[D]efiniteness …

is amenable to resolution by the jury where the issues are factual in nature.). Furthermore, the

analysis of indefiniteness can be assessed both at the claim term level during Markman briefing,

as well as at a claim level during summary judgment briefing. See, e.g., Cox Comm’s, Inc. v.

Spring Comm’n Co., 838 F.3d 1224, 1228 (“[T]he district court decided, among other things, that

the term ‘processing system’ was not indefinite, but did not warrant a construction.…[T]he district

court granted Cox’s motion [for partial summary judgment], finding that the claims were

indefinite.”). The Cox Court also shed light on the ultimate question of indefiniteness under 35

U.S.C. § 112, ¶ 2:

“To be sure, we have generally acknowledged that an indefiniteness analysis under

35 U.S.C. § 112, ¶ 3 is ‘inextricably intertwined with claim construction.’” Atmel

Corp v. Info. Storage Devices, Inc., 198 F.3d 1374, 1379 (Fed. Cir. 1999.)

Accordingly, the common practice of training questions of indefiniteness on

individual claim terms is a helpful tool. Indeed, if a person of ordinary skill in the

art cannot discern the scope of a claim with reasonable certainty, it may be because

one of several claim terms cannot be reasonably construed. See, e.g., Interval

Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1374 (Fed. Cir. 2014) (finding the

phrase ‘unobtrusive manner’ rendered claims indefinite because, even after

consulting the claims, specification, and prosecution history, a skilled artisan would

be left ‘to consult the unpredictable vagaries of any one person’s opinion”)

(citations and internal quotation marks omitted).

Nevertheless, indefiniteness under § 112, ¶ 2 must ultimately turn on the question

set forth by Nautilus: whether the ‘claims, read in light of the specification

delineating the patent, and the prosecution history, fail to inform, with reasonable

certainty, those skilled in the art about the scope of the invention.” Id. at 2129

(emphasis added).”

Cox Comm’s, Inc. v. Sprint Comm’n Co., 838 F.3d 1224, 1231–32 (Fed. Cir. 2016).

Per the guidance from the Cox Court, this Court will address indefiniteness at this phase to

the extent a specific claim term needs be construed to inform a person having ordinary skill in the

art as to the scope of the claims at issue.

III. TERMS AT ISSUE

A. Summary of Party’s Positions

Procon relies on the testimony of its expert, Dr. Wilhelm and proposes constructions for

most of the disputed claim terms. Furthermore, Procon argues that Spireon’s constructions are

logically inconsistent, noting that “[w]herever Spireon proposes plain and ordinary meaning, it

claims that Procon’s proposed constructions are unduly limiting by importing limitations. Yet,

wherever Spireon proposes that construction is necessary, it seeks to limit the claims by importing

limitations that are not recited in the disputed terms.” (ECF No. 44 at PageID 1686.) Procon’s

theory is that Spireon “seeks to narrow certain claim terms to avoid the prior art,” specifically the

prior art that was raised by Procon in its Petition for Post Grant Review. (Id.) The gist of Procon’s

argument to the Court is that it should construe the disputed terms now in order to reduce ambiguity

and not leave it up to the fact-finder to deliberate as to what a person having ordinary skill in the

art (“PHOSITA”) may think the terms mean. (ECF No. 47.) A further rationale for Procon’s

request for construction of many of these terms is that they may be dispositive of infringement,

particularly the “in response to” term. (ECF No. 47 at PageID 2536.)

Conversely, Spireon argues that Procon is attempting to use claim construction as a vehicle

to track its own litigation arguments, particularly after its failure in instituting a Post-Grant Review

at the PTAB. (ECF No. 48 at PageID 2550.) Furthermore, the crux of Spireon’s argument is that

Procon’s constructions attempt to import limitations into the claims in order to avoid infringement

or read prior art into the claims. (Id.) Spireon asks the Court to take a cautious approach with

respect to claim construction, so as not to resolve infringement questions now. (Id. at PageID

2551.) Furthermore, Spireon rebuts many of Procon’s assertions by arguing that they over-rely on

expert testimony as opposed to intrinsic evidence, such as the specification, prosecution history,

and claims. (Id.)

B. Procedural Background

Procon filed its Opening Claim Construction Brief on September 11, 2020. (ECF No. 44.)

Defendant filed its Responsive Claim Construction Brief on October 9, 2020. (ECF No. 48.) The

parties jointly filed a claim construction and prehearing statement on September 16, 2020. (ECF

No. 49.) A hearing to discuss the parties’ positions took place on November 9, 2020. (ECF No.

54.)

At the hearing, both parties provided alternative constructions for some of the terms in

dispute. The Court has adopted or utilized the parties’ suggested constructions where possible.

C. Agreed-Upon Terms

Term Agreed Construction

“partial vehicle identifier” Plain and ordinary meaning

Data that permits the computer to

“location device identifier”

uniquely identify a location device

D. Overview of Disputed Claim Terms

Procon’s Proposed Spireon’s Proposed Court’s

Disputed Term

Construction Construction Construction

Location devices

A device that can

owned and belonging A device owned by

determine and transmit

“location device to the dealer and the dealer that can

location information

owned by the available for determine and

and that is held as an

dealer” installation on a transmit location

asset by a vehicle

vehicle in the dealer’s information

dealer

vehicle inventory

“in response to

the location As a direct result of As a result of the

No construction

device being initial communication location device

necessary; plain and

communicatively between the location becoming connected

ordinary meaning.

coupled with the device and the vehicle with the vehicle.

vehicle”

A transmission that A transmission or

the computer series of

interprets as indicating No construction transmissions

“connection

an initial necessary; plain and indicating that the

notice”

communication ordinary meaning. location device is

between the location connected to the

device and the vehicle. vehicle.

As a direct result of No construction

receiving the necessary; plain and

“in response to connection notice ordinary meaning.

As a result of

the connection without requiring any

receiving the

notice received by additional Alternatively,

connection notice.

the computer” communications being As a result of

received by the receiving the

computer. connection notice

[associating/ Adding/removing the

[associating/

disassociating] location device [associating/

disassociating] the

the location to/from the dealer’s disassociating] the

location device

device group of location location device

[with/from] a group of

[with/from] a devices owned by the [with/from] a dealer’s

location devices that

dealer’s group of dealer and available group of location

are not presently

available location for installation in a devices present for

associated with a

devices in the vehicle in the dealer’s use in the memory.

vehicle in the memory

memory vehicle inventory.

A transmission that A transmission or

the computer series of

interprets as indicating No construction transmissions

“disconnect

that the location necessary; plain and indicating that the

notice”

device is no longer ordinary meaning. location device is no

communicating with longer connected to

the vehicle. the vehicle.

Information that

indicates a party has No construction

“ownership Plain and ordinary

an ownership interest necessary; plain and

information” meaning.

in the vehicle or holds ordinary meaning.

the vehicle as an asset.

Software, hardware,

firmware, or a

No construction

An input/output combination thereof

“user interface” necessary; plain and

mechanism. that allows for input

ordinary meaning.

and output of

information.

1) “location device owned by the dealer”

Procon’s Proposed Spireon’s Proposed Court’s

Disputed Term

Construction Construction Construction

Location devices

A device that can owned and belonging A device owned by

“location device determine and transmit to the dealer and the dealer that can

owned by the location information and available for determine and

dealer” that is held as an asset installation on a transmit location

by a vehicle dealer vehicle in the dealer’s information.

vehicle inventory

The key disputed portion of this claim term is “owned by the dealer.” Procon argues for a

two-part construction of this term—first construing “location device” and then construing “owned

by the dealer.” (ECF No. 44 at PageID 1687.) Procon argues that “location device” means “a

device that can determine and transmit location information,” citing to both the testimony of its

expert Dr. Wilhelm, as well as the testimony of Defendant’s expert, Mr. Nranian. (Id.) The second

half of Procon’s construction posits that “owned by the dealer” means “held as an asset by a vehicle

dealer.” (Id. at PageID 1688.) In particular, Procon asserts that Spireon is attempting to avoid

invalidity arguments at play due to a prior art reference (ECF No. 44-1, “Boling Reference”),

which discusses ownership by banks or lenders. Furthermore, Procon says that the critical inquiry

here is what constitutes being “owned by” and purports to put forward a construction that answers

this question—a PHOSITA would understand “owned by” to mean being held as an asset without

any specific numerical ownership interest. (ECF No. 44 at PageID 1688, ECF No. 44-3, ¶¶ 55–

57.) Procon’s expert, Dr. Wilhelm, also explains that “regarding vehicle ownership, a POSITA

would have understood that all the vehicles are held as assets by the dealers.…This understanding

would have applied equally to location device ownership.” (ECF Nos. 44-3, ¶¶ 55–56; 44-4, ¶¶

58–60.)

To support this proposition, Procon also points to the dictionary definitions provided by

Spireon; specifically, the transitive form of “own” is to “own or hold as property: POSSESS” or

“to have power or mastery over.” (ECF No. 44 at PageID 1689.) Procon utilizes this to argue that

the “owned by dealer” portion of the term can entail having multiple parties holding the location

devices as an interest.

For its arguments, Spireon points to the intrinsic evidence in the ’598 patent, citing to the

preamble of Claim: “A method for managing a vehicle inventory for a dealer.” (ECF No. 38 at

PageID 352.) Furthermore, Spireon argues that the claims should be construed in the context of a

“dealer’s group of available location devices.” Spireon also points to figures 10, 11, and 12

showing vehicles that are in the dealer’s vehicle inventory, as well as a portion of the specification

that notes “[t]he inventory management system 100 may be configured to automatically associate

and/or disassociate a vehicle and/or device with the dealer’s vehicle inventory.” (ECF No. 38 at

PageID 353.) Furthermore, Spireon rejects any arguments made by Procon regarding the

prosecution history of the ’598 patent, noting that “location devices owned by the dealer” was only

added to Claim 1 in the Amendment and Response to the Office Action dated May 16, 2018 to

clarify the term, not to avoid the prior art. (Id. at PageID 354.) Spireon also points to the PTAB’s

decision not to institute Post-Grant Review, in which it found that the “ownership” requirement

was not found in the prior art, or that this requirement would have been obvious. (Id.) Notably,

the PTAB found that, with respect to the Boling prior art reference, Procon did not provide an

“explanation of why it would matter in managing the inventories whether the location devices are

owned by a third party and leased to the bank or auto dealer, and [] no evidence concerning

ownership of location devices by the auto dealer.” (ECF No. 38-6 at PageID 473–474.) Procon

asks the Court to not give weight to the PTAB, while Spireon argues that the Court should defer

to the PTAB’s express findings. Procon also takes issue with Spireon’s construction for

improperly importing “available for installation on a vehicle in the dealer’s vehicle inventory” into

“owned by the dealer.” (ECF No. 44 at PageID 1689.)

With this term, the Court finds it necessary to at least construe “location device.” As

iterated by Procon, “it is not readily apparent what a location device is unless that’s read in the

context of the specification and claim language.” (Hearing Tr. at 18:21–19:1). The ’598 Patent

provides that a “location device may comprise any suitable system for determining a physical

location of the location device and communicating the position to the inventory management

system.” ’598 Patent, 6:55–58. While Spireon asserts that this definition would be merely

“rewriting this term”, Spireon did not otherwise take issue with defining location device as a device

that can determine and transmit location information. (Hearing Tr. at 27:12–30:24.) Regarding

the second portion of the term —“owned by the dealer”— the Court finds that any additional

construction beyond the plain and ordinary meaning would be unnecessarily confusing to the jury.

2) “in response to the location device being communicatively coupled with the

vehicle”

Procon’s Proposed Spireon’s Proposed Court’s

Disputed Term

Construction Construction Construction

“in response to

the location As a direct result of As a result of the

No construction

device being initial communication location device

necessary; plain and

communicatively between the location becoming connected

ordinary meaning.

coupled with the device and the vehicle with the vehicle.

vehicle”

Procon seeks to construe this term in order to establish a “cause-and-effect relationship” as

part of the coupling process. (ECF No. 44 at PageID 1691.) For example, Procon points to the

language of Claim 1, which recites an ordered set of steps requiring functions performed by the

location device and computer. (ECF No. 44 at PageID 1691.) For effect, Procon adds “first”,

“next”, and “in response” to the language of Claim 1 below:

First: communicatively coupling the location device with a vehicle. In response:

the location device transmitting a connection notice over a network. Next:

receiving, by the computer the connection notice from the location device over the

network. In response, the processor: associating the location device identifier with

the vehicle identifier in the memory; and disassociation the location device from

the dealer’s group of available location devices in the memory.

(Id. (emphasis in original).)

Spireon’s expert, Mr. Nranian addresses the amendments made in prosecution (i.e., the

addition of “in response to”) by arguing this language was only added to clarify the order of steps.

(ECF No. 44-1, ¶ 48.) He further points to the specification’s use of “may” in order to show a

broad construction of any claim term, asserting that a POSITA “would understand that Procon’s

and Dr. Wilhelm’s proposed construction that include the terms ‘direct’ and ‘initial’ are wrong,

because the specification does not specifically limit the response as occurring as a direct and initial

result contradicts governing claim construction principles.” (ECF No. 44-5, ¶ 35.) However, the

plain language “in response to” is not readily explained away. Procon correctly notes that

specifications do not provide the bounds of claims, the claims do. (ECF No. 44 at PageID 1693.)

The crux of Spireon’s argument here is that “[p]ortions of this term are used throughout the

specification of the ’598 Patent in a diverse manner” and thus “the specification refers to the phrase

‘communicative coupling’ as an act that could be distinct from actually communicating data or an

act that occurs along with communicating data.” (ECF No. 38 at PageID 357.) Spireon admits

that the term “in response to” was added to Claim 1 in an amendment to overcome § 112 and

indefiniteness, but states this was “solely for the purpose of clarifying the order of steps listed in

Claim 1.” (Id. at PageID 357.) Spireon also argues that the “specification of the ’598 Patent

describes numerous actions, steps, or procedures that may occur immediately, concurrently with

other steps, after other steps, or that may not occur at all.” (Id. at PageID 358.)

The parties also dispute whether there was a disclaimer in the prosecution history. Procon

asserts that the Applicants amended the claims to move the limitation from the preamble to the

body to overcome Shaytovich prior art reference. (ECF No. 44 at PageID 1694.) Spireon argued

that the Shaytovich reference did not disclose that Shaytovich’s RFID device transmits a

connection notice “based on the location device being connected with the vehicle communication

interface.” (ECF No. 44-3, ¶ 76.) Specifically, at the Patent Office, Spireon argued:

“The RFID device of the Shaytovich system is not a location device that determines

a physical location, it is not selectably connectable with a vehicle communication

interface. Although the Shaytovich telematics device transmits a message when it

detects the RFID device, it does not transmit a message based on the telematics

device being connected with a vehicle communication interface.”

(ECF No. 44-3, ¶ 76 (emphasis added).)

Procon points to the inherent inconsistency between Spireon’s arguments at the Patent

Office and its current argument for claim construction. Spireon now argues that the “in response

to” language was merely a clarification and was not necessary to overcome an Obviousness

rejection over the Shaytovich reference. For example, Mr. Nranian states that a POSITA “would

understand that the claims of the ’598 patent are distinguished over Shaytovich because Shaytovich

does not disclose the telematics device being connected to the vehicle.” (ECF No. 44-5, ¶ 36.)

However, as pointed out by Procon, “[a]pplicants explicitly stated that the ‘in response to the

location device being communicatively coupled with the vehicle’ overcame Shaytovich because

Shaytovich did not ‘transmit a connection notice based on being connected with a vehicle

communication interface.’” (ECF No. 44 at PageID 1695.) Furthermore, the Examiner’s notice

of allowance states that “the cited art does not explicitly disclose the disassociate of a location

device from an inventory predicated upon communicative coupling to a vehicle and a connection

notice.” (ECF No. 44-7 at 19.) Spireon asserts that it “never clearly and unmistakably disavowed

scope during the prosecution history of the ’597 Patent.” (ECF No. 38 at PageID 358.)

This particular term has also been at least partially addressed by the Federal Circuit in

American Calcar, Inc. v. American Honda Motor Co., Inc., 651 F.3d 1318 (Fed. Cir. 2011)

(Finding that the term “in response to” connotes that the second events occurs in reaction to the

first event.”) Procon points to additional district court cases construing similar constructions for

“in response to.” See, e.g., Keen, Inc. v. InfoRocket.com, Inc., No. 01-cv-8226 (S.D.N.Y. July 26,

2002) (“The plain meaning of the words in claim 1 is that clicking on or selecting a displayed icon

corresponding to an expert results in an immediate telephone connection between the expert and

the consumer, without a series of intervening manual steps.”); see also Fujitsu Ltd. V. Belkin

International, Inc., No. 10-cv-03972 (N.D. Cal. Sept. 28, 2012) (Concluding that “in response to”

connotes a “cause-and-effect relationship rather than a straight temporal sequence.…[T]he

information is transferred ‘in response’ its receipt.”)

Spireon spends a large portion of its rebuttal briefing on this term. For one, it argues that

the term is clear on its face and does not need construction. (ECF No. 48 at PageID 2556.) It goes

on to say that “Procon goes beyond just a mere cause-and-effect relationship” and “urges the Court

to adopt a construction that limits this term to [sic] the effect of only a single cause and not allowing

any other causes — a narrow position that is directly contradicted by the intrinsic evidence. (ECF

No. 48 at PageID 2557.) Spireon asserts that “[n]othing in the claims requires that communicative

coupling of the location device alone be ‘necessary and sufficient’…to transmit a connection

notice over a network.” (Id. at PageID 2558.) The gist of Spireon’s argument is that “[n]o portion

of the claim language or specification expressly excludes the occurrence of other steps that would

lead to the location device transmitting the connection notice” and that “no portion of the claim

language or specification suggests that the only requirement for transmitting the connection notice

must be that the location device is communicatively coupled with the vehicle.” (Id.) Entering

Procon’s construction would, according to Spireon, be an impermissible importation of a limitation

from the written description into the claims. (Id.)

Spireon reiterated these arguments at the Markman hearing, but conceded that it is “not

suggesting that the term ‘in response to’ is not in this claim, and [is] not really arguing that there’s

not some relationship between or relationship that’s conveyed by using ‘in response to,’ but [does]

disagree that [it] [has] to limit this term to exclude any other events that may be required to occur.”

(Hearing Tr. at 44:15–20.) Furthermore, Spireon asserted at the hearing that while the claim can

be construed to establish a causal relationship in accordance with American Calcar, the court

should not unduly limit the claim such that “no other event may intervene or have any impact

whatsoever on the occurrence of the second event.” (Hearing Tr. at 48:16–20.) The Court agrees

and construes this term so as to establish a causal link between the steps without unnecessarily

limiting the claim more so than what is provided by the intrinsic evidence. Conversely, the Court

agrees with Procon that “communicatively coupling” is not a term that would be readily apparent

to a jury and should be defined so as to establish that the location device and the vehicle are now

able to communicate with one another. Accordingly, the Court construes the term “in response to

the location device being communicatively coupled with the vehicle” to mean “as a result of the

location device becoming connected with the vehicle.”

3) “connection notice”

Procon’s Proposed Spireon’s Proposed Court’s

Disputed Term

Construction Construction Construction

A transmission or

A transmission that the

series of

computer interprets as

No construction transmissions

“connection indicating an initial

necessary; plain and indicating that the

notice” communication between

ordinary meaning. location device is

the location device and

connected to the

the vehicle.

vehicle.

Procon points the Court to Claim 1, which states that the location device transmits the

connection notice “in response to the location device becoming communicatively coupled with the

vehicle.” (ECF No. 44 at PageID 1699.) Procon argues this “connection” for which “notice” is

being provided is the communicative coupling of the location device with the vehicle, and that no

other type of connection is contemplated by the claim. (Id.) Procon further adds that its

construction of this term is consistent with the specification, which it argues contemplates only

“one way for the location device to determine that it has been connected to the vehicle—

communicative coupling.” (ECF No. 44-4, ¶ 81.)

Spireon proposes that this be construed according to its plain and ordinary meaning, and

its expert argues that a “connection notice” “may just mean that systems or devices are or have

become connected,” or “may mean notice that devices are connected across the network.” (ECF

No. 44-5, ¶ 41.) Claim 1 includes “transmitting a connection notice over a network.” ’598 patent

at cl. 1. Mr. Nranian’s assertion that “connection notice” may describe “notice of a connection

over a network” thus does not follow logically based on principles of claim differentiation. In its

rebuttal, Procon also pointed out that the “purpose of transmitting the connection notice is to tell

the computer that the location device has just connected to a vehicle and should be associated with

that vehicle in the database. It would make no sense for the computer to transmit the connection

notice and perform the association and disassociation steps again after doing so the first time the

location device connected to the vehicle.” (ECF No. 47 at PageID 2540.) In a way, this is an

inherency argument—a connection notice must inherently be a transmission. Procon posits this as

the following question: “How else would the claimed computer receive a ‘connection notice’ other

than by receiving a transmission other than by receiving a transmission that it interprets as a

connection notice?” (ECF No. 47 at PageID 2540.)

Spireon argues that this term is “one that has a meaning that would be readily apparent to

a jury, namely that a connection notice is notice of a connection.” (ECF No. 38 at PageID 359.)

This is a circular argument that does not inform the jury of what type of information is

encompassed in a connection notice. Spireon also asserts that Procon seeks to unduly limit the

claim term, and that the term is “not narrowly defined to include only a single transmission that

the computer interprets as indicating an initial communication between the location device and the

vehicle. The ’598 Patent describes that information from the location device may be reviewed and

that it may be determined if a notification needs to be sent, if a command needs to be sent to the

location device, etc.” (Id. at PageID 360.)

At the hearing, Procon pointed out that “connection notice is not used in the specification”,

but that the specification does provide that “the location device may be programmed or otherwise

configured to retrieve the VIN of a vehicle when it is coupled with the vehicle and to transmit to

the inventory management system the VIN and its own identifier.” (Hearing Tr. at 54:12–17.)

Additionally, “disconnect notice” is used in the specification. See ’598 Patent at 17:16–62. In

other words, the location device sends a transmission indicating that it can now communicate with

the vehicle. The Court agrees with Procon’s position that the connection notice is a “transmission

of data” over a network. Spireon indicated that its main issue with Procon’s suggested language

is not that “the fact that connection notice is transmitted”, but that “a transmission’ might imply

just a singular transmission or a discrete transmission that takes place.” (Hearing Tr. at 55:10–

14.) The Court agrees that the connection notice may be via a series of transmissions, and not

necessarily be limited to one discrete transmission of data. However, the Court disagrees with

Spireon’s continued assertion that “connection notice” is merely a “notice of connection” and does

not need to be defined. (Id. at 56:14–18.) The Court finds this to be insufficient because of the

testimony by Spireon’s expert, Mr. Nranian, who argues that connection notice “may just mean

that systems or devices are or have become connected” or “may mean notice that devices are

connected across the network.” (ECF No. 44-5 ¶ 41.) Accordingly, the Court construes

“connection notice” to mean “a transmission or series of transmissions indicating that the location

device has been connected to the vehicle.”

4) “in response to the connection notice received by the computer”

Procon’s Proposed Spireon’s Proposed Court’s

Disputed Term

Construction Construction Construction

No construction

As a direct result of

necessary; plain and

receiving the connection

“in response to ordinary meaning.

notice without requiring As a result of

the connection

any additional receiving the

notice received Alternatively,

communications being connection notice.

by the computer” As a result of

received by the

receiving the

computer.

connection notice

The Court adopts a construction that establishes the cause and effect relationship

envisioned by the term limitation “in response to”, as discussed in Section IV.D.2 in this Order.

At the Hearing, Spireon agreed that if the Court needs to construe the term, then “as a result of

receiving the connection notice” would be adequate without importing a negative limitation.

(Hearing Tr. at 60:19–61:6.)

5) [associating/disassociating] the location device [with/from] a dealer’s group of

available location devices in the memory

Procon’s Proposed Spireon’s Proposed Court’s

Disputed Term

Construction Construction Construction

Adding/removing the

[associating/disa

[associating/disassociati location device [associating/disassoci

ssociating] the

ng] the location device to/from the dealer’s ating] the location

location device

[with/from] a group of group of location device [with/from] a

[with/from] a

location devices that are devices owned by the dealer’s group of

dealer’s group of

not presently associated dealer and available location devices

available

with a vehicle in the for installation in a present for use in the

location devices

memory vehicle in the dealer’s memory.

in the memory

vehicle inventory.

The dispute in this term revolves around defining the term “available.” Spireon argues that

the plain and ordinary meaning of this term necessarily means that “location devices are owned by

the dealer and are available for installation on vehicles in the dealer’s vehicle inventory.” (ECF

No. 38 at PageID 366.) Spireon’s expert argues that because the specification “states that the

location device may be [1] coupled to a vehicle owned by a car dealer, [2] within the dealer’s

vehicle inventory, or [3] configured with a zone comprising the car dealer’s lot,” a PHOSITA

would understand the term to be for a device owned by the dealer and in its inventory. (ECF No.

44-5, ¶ 65.) Procon, on the other hand, argues that the “specification is teaching three alternative

embodiments, none of which are referenced in the disputed claim term,” and that the use of the

term “comprises” in the wherein clause necessarily means that the dealer’s group of location

devices “may include both location devices owned by the dealer and those that are not owned by

the dealer.” (ECF No. 44 at PageID 1702.) At the Markman hearing, Procon reiterated its assertion

that Spireon seeks to import two limitations with its proposed construction. (Hearing Tr. at 62:7–

64:15.) Conversely, Spireon asserted that there was no reason to depart from the plain and ordinary

meaning. (Hearing Tr. at 65:10–22.)

The Court does not see a reason to remove the use of the term “dealer” from “dealer’s

group of available devices”, but also rejects Spireon’s proposed construction, which appears to

import additional term limitations into the term limitation “available.” Because both parties

purport to be defining the plain and ordinary meaning of the claim term, the Court finds that a

construction is necessary to avoid jury confusion. In C-Cation Techs., LLC v. Time Warner Cable,

Inc., the district court discussed a dispute over the term “available” in U.S. Patent 5,563,883,

entitled “Dynamic Channel Management and Signalling Method and Apparatus.” 2015 WL

1849014 (E.D. Tex. Apr. 20, 2015). In C-Cation, Defendants asserted that the term “available”

was “highly subjective” and one that “different persons skilled in the art may come to different

conclusions about.” C-Cation Techs., 2015 WL 1849014 at *8. Conversely, Plaintiffs asserted

that the term was “clear on its face.” Id. The court cited to intrinsic evidence which showed that

the availability of a channel to carry traffic was “based on a determination of a number of factors

including the number of terminals using the signaling data channel, the traffic requirements, past

collision counts, channel error status and bandwidth of the signaling data channel.” Id.

Accordingly, it found that “availability” was not limited to being only “capable of carrying

signaling data” as suggested by Defendants and was “used in the context of merely being present

for use.” Id. The court’s decision and analysis in C-Cation is helpful to the Court in this instance.

Here, availability is used in the context of the “memory” and should be construed within the

confines of that context. Thus, being available necessarily means that the location device is present

for use in the memory. The Court adopts that definition of “available” and construes this term as

“[associating/disassociating] the location device [with/from] a dealer’s group of location devices

present for use in the memory.”

6) “disconnect notice”

Procon’s Proposed Spireon’s Proposed Court’s

Disputed Term

Construction Construction Construction

A transmission or

A transmission that the

series of

computer interprets as

No construction transmissions

“disconnect indicating that the

necessary; plain and indicating that the

notice” location device is no

ordinary meaning. location device is no

longer communicating

longer connected to

with the vehicle.

the vehicle.

The Court construes this term consistent with its analysis under III.D.3.

7) “ownership information”

Procon’s Proposed Spireon’s Proposed Court’s

Disputed Term

Construction Construction Construction

Information that

indicates a party has an

No construction

“ownership ownership interest in the Plain and ordinary

necessary; plain and

information” vehicle or holds the meaning.

ordinary meaning.

vehicle as an asset.

At the hearing, the parties indicated that they were not too far apart on this construction,

and Spireon indicated that its main goal with this term is to express “information about the owner

of the vehicle.” (Hearing Tr. at 69:21–23.) Procon agreed with this alternative construction and

stated that it may be easier for a jury to understand “information related to ownership” instead of

“ownership information.” (Hearing Tr. at 70:11–17.) Spireon did not take issue with this

construction, but argued that such a construction was merely rewriting the term. (Hearing Tr. at

70:20–72:1.) As noted by Spireon, the term “ownership information” is “used throughout the

dependent claims, including ‘querying a dealer management system associated with the vehicle

for ownership information of the vehicle’ and ‘receiving the ownership information.’” (ECF No.

38 at PageID 368.) The Court does not see a reason to depart from the plain and ordinary meaning

and rewrite the term in this instance.

8) “user interface”

Procon’s Proposed Spireon’s Proposed Court’s

Disputed Term

Construction Construction Construction

Software or hardware

No construction or a combination

An input/output

“user interface” necessary; plain and thereof that allows

mechanism.

ordinary meaning. for input and output

of information.

To support its construction, Procon points to the patent specification, which states that

“[t]he interface 220 may represent any desired data input/output mechanism.” ’598 patent at Col.

8, ll. 49–50. Figure 1 in the patent also “depicts the user interface as providing an input/output

pathway between the database and the user.” (ECF No. 44 at PageID 1706.) At the hearing,

Procon reiterated that the patent specification envisions “any desired data input-output

mechanism” and provides examples of these mechanisms, including “all user interfaces, a web

application, a software application, a PDA, a mobile communication device.” (Hearing Tr. at

72:19–23.) Procon added that its goal in this construction was that the “jury understands that it

doesn’t have to be … someone on the computer logging in” and that “it could be right at the

terminal of the database” or just “a monitor and keyboard[.]” (Hearing Tr. at 73:10–15.) Spireon

argues for plain and ordinary meaning, but suggests that the term could be construed as an

“application or something that’s presented to the user that the user can input or output through[.]”

(Hearing Tr. at 75:2–5.) The issue Procon takes with this construction is that it would create

situations in which the jury would be deciding questions of scope by having to determine whether

the “user interface” is limited to a web application, or if it is broader than that, including items

from prior art before mobile phones and PDAs were available. (Hearing Tr. at 75:14–76:11.)

Spireon argues that Procon’s construction is at odds with the plain and ordinary meaning

and the intrinsic evidence. (ECF No. 38 at PageID 369.) For example, it cites to the specification,

which provides that an interface “may comprise the user interface and an input device, allowing

the users to manipulate the inventory management system 100, and an output allowing the system

to indicate the effects of the users’ manipulation.” ’598 patent, col. 9, ll. 55–59. Thus, “the ’598

Patent refers to a ‘user interface’ as separate from an input or output mechanism in at least one

embodiment.” (ECF No. 38 at PageID 369.) Other portions of the specification and claims are

helpful for the context in which “user interface” is used. Claim 6 provides that the retrieved

location information is presented “by the user interface.” ’598 Patent at cl. 6. The specification

discusses the “user interface” at length:

The user interface may comprise any suitable system or device such as a web

application interface. This user interface may assist users in interacting with the

inventory management system 100 configured to provide machine-to-machine

connectivity, retrieve data, and/or control a particular machine, device, computer

program, or other complex tool. The interface 220 may comprise the user interface

and an input device, allowing the users to manipulate the inventory management

system 100, and an output, allowing the system to indicate the effects of the users’

manipulation. For example, the interface 220 may comprise a graphical user

interface (GUI), a web-based user interface and/or web user interface, command

line interface, tactile interface, touch interface attentive user interface, batch

interface, conversational interface agent, crossing-based interface, device control

panel interface, gesture interface, intelligent user interface, multi-screen interface,

noncommand user interface, object-oriented user interface (OOUI), reflexive

user interface, tangible user interface, text user interface, voice user interface,

natural-language interface, zero-input interface, and/or zooming user interface.

’598 Patent at 9:49–10:2 (emphasis added).

The context for “user interface” is therefore exceedingly broad and goes beyond the web-

based application suggested by Spireon at the Markman hearing. Spireon also suggested “input-

output interface” as an alternative construction. (Hearing Tr. at 74:7–9.) The Court seeks to adopt

the “input-output” characteristics envisioned by the intrinsic evidence without reusing the term

“interface” in construing the claim.

In Convolve, Inc. v. Compaq Computer Corp., the Federal Circuit reviewed a grant of

summary judgment that hinged on a construction of “user interface”. 812 F.3d 1313, 1317–18

(Fed. Cir. 2016). The Federal Circuit reiterated the Southern District of New York’s construction

of “user interface” as “software, hardware, firmware, or a combination thereof that allows a person,

directly or indirectly, to alter parameters.” Id. at 1317–18 (internal citations and quotations

omitted). “In construing the term, the court determined that a ‘user interface’ is not limited to a

graphical user interface or mechanical switches, which were both disclosed in the specification.”

Id. at 1318.

The Federal Circuit affirmed the district court’s findings with respect to user interface:

We find that both the district court’s construction of the term ‘user interface’ and

its application of that construction were proper. The language of the claim supports

the district court’s construction of ‘user interface’ as ‘the site at which a user

actually selects an operating mode.’ The claim term is ‘user interface’, not just

‘interface.’ The word ‘user’ therefore must distinguish between different

kinds of interfaces. In the claimed method, the only action that a user takes is

selecting an operating mode. The ‘user interface’ is thus the interface that the user

interacts with to select an operating mode—not subsequent interfaces or

components that merely execute the user’s selection.…The specification discloses

several embodiments of a ‘user interface’, all of which the user interacts with

directly to select an operation mode. The specification discloses five graphical

user interfaces, shown in the figures as computer screen images with arrows or a

sliding bar that a person manipulates with a mouse to select seek speed. It also

describes a mechanical switch on the hard drive itself that a user physically pushes

to change the operation mode. Although the claims are not limited to these

particular embodiments, the nature of these embodiments confirms that a

‘user interface’ must be the site at which the user actually selects an operation

mode.

Convolve, Inc., 812 F.3d 1318–19.

Here, the Court is similarly presented with a broad disclosure in the specification that lists

several embodiments of a user interface—the nature of which suggests that the “user interface”

must be such that allows for input and output between the user and the system. Accordingly, the

Court borrows in material part the language used by the Federal Circuit to construe “user interface”

as “software or hardware or a combination thereof that allows for input and output of information.”

The Court’s construction should assist the fact-finder in understanding the broad scope of the term

while defining what an “interface” may be in the context of the ’598 Patent.

IV. Summary of Construction

Disputed Term Court’s Construction

A device owned by the dealer that can

“location device owned by the

determine and transmit location

dealer”

information

“in response to the location device

As a result of the location device

being communicatively coupled with

becoming connected with the vehicle.

the vehicle”

A transmission or series of

transmissions indicating that the

“connection notice”

location device is connected to the

vehicle.

“in response to the connection notice As a result of receiving the connection

received by the computer” notice.

[associating/disassociating] the [associating/disassociating] the location

location device [with/from] a device [with/from] a dealer’s group of

dealer’s group of available location location devices present for use in the

devices in the memory memory.

A transmission or series of

transmissions indicating that the

“disconnect notice”

location device is no longer connected

to the vehicle.

“ownership information” Plain and ordinary meaning.

Software or hardware or a combination

“user interface” thereof that allows for input and output

of information.

It is SO ORDERED, this 19th Day of February, 2021.

/s/ Jon P. McCalla

JON P. McCALLA

UNITED STATES DISTRICT JUDGE