1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 HONG KONG UCLOUDLINK Case No. 18-cv-05031-EMC NETWORK TECHNOLOGY LIMITED, et 8 al., ORDER RE CLAIM CONSTRUCTION 9 Plaintiffs, Docket Nos. 93, 102, 105 10 v.
11 SIMO HOLDINGS INC., et al.,
12 Defendants.
13 14 15 Plaintiffs (collectively, “UCL”) have sued Defendants (collectively, “SIMO”) for patent 16 infringement. The only patent at issue is UCL’s ‘780 patent. The Court held a Markman hearing 17 on March 10, 2020. This order memorializes the Court’s claim construction on the disputed 18 terms. 19 I. FACTUAL & PROCEDURAL BACKGROUND 20 The ‘780 patent is titled “Service sharing system and apparatus.” Context for the patent is 21 provided in the section of the patent titled “Background of the Invention.”
22 At present, almost all the communication terminals, such as mobile phones, data cards, and hotspot devices, are capable of establishing 23 connections with the corresponding service providers or networks using physical Subscriber Identity Module (SIM) cards inserted 24 thereon. SIM is a unique authentication ID issued by a service provider for controlling access of a user equipment. The SIM 25 enables the user equipment to enjoy data and voice services.
26 Typically, since the service provider is bound to the SIM in the device, one terminal may only use voice and data services provided 27 by a service provider specified by the SIM. This brings many signal strength and location information. When the subscriber is 1 roaming, the subscriber may only select services provided by a service provider signing a roaming service agreement with the 2 original service provider, and needs to pay service fees much more than a local subscriber. In addition, the package balance of the 3 subscriber cannot be shared or exchanged to another subscriber[,] but only wasted; and when the package broadband traffic is 4 insufficient, temporary services are very inconvenient for the subscriber. 5 Due to restriction of the tariff and package of the service provider, 6 on-demand use of bandwidth cannot be practically implemented, but the fees are paid based on traffic. It is difficult for the subscriber to 7 dynamically acquire desired services, for example, increased bandwidth and short message services, according to actual 8 requirements. 9 ‘780 patent, col. 1, ll. 22-50. 10 The ‘780 patent is directed to the above problem.
11 According to the embodiments of the present invention, a subscriber acquires appropriate subscriber identity information, for example, 12 SIM data, according to actual requirements, and implements sharing of services corresponding to individual or group subscriber identity 13 information, thereby acquiring an international, any-network, any- service provider, any-technology and mode, or any service (data, 14 voice, video, and the like) network access service. 15 ‘780 patent, col. 2, ll. 54-61. 16 A representative claim for the ‘780 patent is claim 1. Claim 1 states as follows (terms to 17 be construed are in bold):
18 1. A subscriber identity module (SIM)-based service sharing system, comprising: 19 at least one SIM card read-and-write device, configured to 20 simulate a read-and-write process performed by a local user equipment of a SIM card providing service sharing to a 21 physical SIM card, wherein at least one SIM card providing service is insertable in the at least one SIM card read-and- 22 write device;
23 a SIM scheduling management system configured to select appropriate SIM from the at least one SIM card inserted in the at 24 least one SIM card read-and-write device according to the location of a user equipment and the type of a service requested 25 by a subscriber, and assign the appropriate SIM to the subscriber; and 26 at least one multi-channel communication, configured to 27 communicate with the SIM scheduling management system to system corresponding to the appropriate SIM assigned by the 1 SIM scheduling management system to acquire the service requested by the subscriber; 2 wherein the appropriate SIM is a smart card having the SIM 3 function or SIM data;
4 the SIM scheduling management system comprises:
5 a SIM database configured to store SIM data on the at least one SIM card of the at least one SIM card read-and-write 6 device;
7 a subscriber access unit configured to receive a service request from the multi-channel communication device, return the SIM 8 card parameter assigned to the subscriber to the multi-channel communication device, receive an authentication data packet of 9 the SIM card parameter from the multi-channel communication device, and return a corresponding authentication result to the 10 multi-channel communication device;
11 a SIM scheduling unit, configured to search, according to the service request received by the subscriber access management 12 unit, in the SIM database data to select appropriate SIM, and return a corresponding SIM card parameter to the subscriber 13 access management unit; and
14 a SIM card read-and-write management unit, configured to transfer the authentication data packet of the SIM card parameter 15 received from the subscriber access management unit to the at least one SIM card read-and-write device, and return an 16 authentication result calculated by the at least one SIM card read-and-write device to the subscriber access management unit. 17 18 ‘780 patent, claim 1 (emphasis added). 19 II. DISCUSSION 20 A. Legal Standard 21 Claim construction is a question of law, although it may have factual underpinnings. See 22 Icon Health & Fitness, Inc. v. Polar Electro Oy, 656 Fed. App'x 1008, 1013 (Fed. Cir. 2016); see 23 also Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1357 24 (Fed. Cir. 2016). It "serves to define the scope of the patented invention and the patentee's right to 25 exclude." HTC Corp. v. Cellular Communs. Equip., LLC, 877 F.3d 1361, 1367 (Fed. Cir. 2017); 26 see also O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008) 27 (stating that “the purpose of claim construction is ‘to determin[e] the meaning and scope of the 1 Words of a claim are generally given their ordinary and customary meaning, which is the meaning a term would have to a person of 2 ordinary skill in the art after reviewing the intrinsic record at the time of the invention. "In some cases, the ordinary meaning of 3 claim language . . . may be readily apparent even to lay judges, and claim construction in such cases involves little more than the 4 application of the widely accepted meaning of commonly understood words." However, in many cases, the meaning of a 5 claim term as understood by persons of skill in the art is not readily apparent. 6 7 Id. (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005)).
8 Because the meaning of a claim term as understood by persons of skill in the art is often not immediately apparent, and because 9 patentees frequently use terms idiosyncratically, the court looks to "those sources available to the public that show what a person of 10 skill in the art would have understood disputed claim language to mean." Those sources include "the words of the claims themselves, 11 the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the 12 meaning of technical terms, and the state of the art." 13 Phillips, 415 F.3d at 1314. Although extrinsic evidence "can shed useful light on the relevant 14 art, . . . it is less significant than the intrinsic record in determining the legally operative meaning 15 of claim language." Id. at 1317 (internal quotation marks omitted). 16 B. Terms at Issue 17 1. “wherein at least one SIM card providing service is insertable in the at least one 18 SIM card read-and-write device” (claim 1) 19 20 UCL’s Proposed SIMO’s Proposed Court’s Construction 21 Construction Construction 22 wherein at least one SIM card wherein at least one SIM card wherein at least one SIM card 23 read-and-write device is that provides service is providing service is capable 24 configured to receive at least inserted in the at least one of being inserted in the at 25 one SIM card that provides SIM card read-and-write least one SIM card read-and- 26 service device write device 27 1 The dispute between the parties essentially concerns the term “insertable.” UCL argues 2 that “insertable” means capable of being inserted whereas SIMO argues that “insertable” must 3 mean actually inserted or the invention does not work, i.e., is not operable. UCL has the better 4 argument. 5 First, as UCL points out, the specification for the ‘780 patent (intrinsic evidence) uses 6 language stating that the SIM card “may” be inserted: 7 • “One or a plurality of SIM cards providing services may be inserted in each of the 8 at least one SIM card read-and-write device.” ‘780 patent, col. 5, ll. 31-33 9 (emphasis added). 10 • “In an embodiment of the present invention, during specific implementation, the 11 management channel establishing unit 431 comprises at least one SIM card slot and 12 a SIM card read-and-write chip connected to the at least one SIM card slot, wherein 13 a SIM card of the subscriber may be inserted into the SIM card slot.” ‘780 patent, 14 col. 9, ll. 36-41 (emphasis added). 15 Second, the dictionary definition (extrinsic evidence) for “-able” (the adjective suffix) is 16 “capable of, fit for, or worthy of (being so acted upon or toward) – chiefly in adjectives derived 17 from verbs.” https://www.merriam-webster.com/dictionary/-able (last visited March 10, 2020). 18 In response, SIMO contends that “Plaintiffs’ proposed ordinary meaning of ‘insertable’ as 19 the ‘capacity of being inserted’ should be rejected because it makes inserting a SIM card optional 20 and renders the entire claimed invention inoperable.” Resp. Br. at 4; see also AIA Eng’g Ltd. v. 21 Magotteaux Int’l S/A, 657 F.3d 1264, 1278 (Fed. Cir. 2011) (“[A] construction that renders the 22 claimed invention inoperable should be viewed with extreme skepticism.”). SIMO also points to 23 language from the patent specification using the term “inserted” without qualifications: 24 • “The SIM scheduling management 41 selects appropriate SIM from SIM cards 25 inserted in the SIM card read-and-write device 42 according to the location of a 26 user equipment and the type of a serviced requested by a subscriber, and in 27 consideration of a network environment of the subscriber and subscriber attributes; 1 (emphasis added). 2 • “The SIM card read-and-write chip 421, under control of a SIM card management 3 unit 423, implements read and write of a SIM card inserted in the SIM card slot 4 422.” ‘780 patent, col. 7, ll. 38-40 (emphasis added). 5 • “[T]he subscriber is registered in the SIM scheduling management system as a user 6 of the system, and one or a plurality of SIM cards are inserted sing the SIM card 7 read-and-write device 42 (SIM box) used by the individual subscriber.” ‘780 8 patent, col. 10, ll. 58-62 (emphasis added). 9 But SIMO’s argument is not persuasive because it fails to take into account UCL’s 10 concession that, at some point in time, a SIM card is inserted in order for the invention to work; 11 UCL’s point is simply that claim 1 is an apparatus claim, one that essentially describes the 12 structure of the claimed invention. See Reply at 4 (“[C]laim 1 does not require that a SIM card be 13 inserted at all times . . . ; it merely requires the various system components to be ‘configured to’ 14 perform the actions at the appropriate time.”). The claim is not confined to an operative state. 15 Moreover, UCL’s position is supported by the language in claim 1 itself:
16 1. A subscriber identity module (SIM)-based service sharing system comprising: 17 at least one SIM card read-and-write device, configured to simulate 18 a read-and-write process performed by a local user equipment of a SIM card providing service sharing to a physical SIM card, wherein 19 at least one SIM card providing service is insertable in the at least one SIM card read-and-write device; 20 a SIM scheduling management system configured to select 21 appropriate SIM from the at least one SIM card inserted in the at least one SIM card read-and-write device according to the location 22 of a user equipment and the type of a service requested by a subscriber, and assign the appropriate SIM to the subscriber . . . . 23 24 ‘780 patent, claim 1 (emphasis added). The above language makes clear that a SIM card does 25 have to be “inserted” in order for the invention to work; however, in the first element above, UCL 26 could have, but did not, use the term “inserted” but rather “insertable.” “[W]hen an applicant uses 27 different terms in a claim it is permissible to infer that he intended his choice of different terms to 1 Filtration Sys., 381 F.3d 1111, 1119 (Fed. Cir. 2004); see also Bancorp Servs., L.L.C. v. Hartford 2 Life Ins. Co., 359 F.3d 1367, 1373 (Fed. Cir. 2004) (stating that “the use of [different] terms [here, 3 ‘surrender value protected investment credit’ and ‘stable value protected investment credit’] in 4 close proximity in the same claim gives rise to an inference that a different meaning should be 5 assigned to each” – although adding that the inference “is not conclusive”). 6 Accordingly, “insertable” does not mean actually inserted. That being said, the Court does 7 not adopt the specific construction proposed by UCL. UCL suggests the following construction: 8 “wherein at least one SIM card read-and-write device is configured to receive at least one SIM 9 card that provides service.” But “insertable” is with reference to the SIM card whereas 10 “configured to receive” is with reference to the SIM card read-and-write device. Therefore, the 11 Court adopts following construction instead (which hews more closely to the claim language): 12 “wherein at least one SIM card providing service is capable of being inserted in the at least one 13 SIM card read-and-write device.” 14 2. “at least one SIM card read-and-write device, configured to simulate a read-and- 15 write process performed by a local user equipment of a SIM card providing service 16 sharing to a physical SIM card” (claim 1) 17 18 UCL’s Proposed SIMO’s Proposed Court’s Construction 19 Construction Construction 20 no construction necessary; or indefinite not indefinite 21 22 [alternatively] at least one at least one SIM card read- 23 SIM card read-and-write and-write device that is 24 device that is configured to configured to simulate a read- 25 simulate a read-and-write and-write process to a 26 process to a physical SIM physical SIM card as would 27 card as would be performed be performed by a local user 1 SIM card providing service providing service sharing 2 sharing 3 4 The above phrase in dispute comes from the first element of claim 1 of the ‘780 patent:
5 1. A subscriber identity module (SIM)-based service sharing system comprising: 6 at least one SIM card read-and-write device, configured to 7 simulate a read-and-write process performed by a local user equipment of a SIM card providing service sharing to a physical 8 SIM card, wherein at least one SIM card providing service is insertable in the at least one SIM card read-and-write device . . . . 9 10 ‘780 patent, claim 1 (emphasis added). SIMO contends that the above phrase is indefinite and 11 therefore claim 1 should be deemed invalid. 12 SIMO has
13 the burden of establishing indefiniteness by clear and convincing evidence. See TecSec v. Int'l Bus Machines Corp., 731 F.3d 1336, 14 1349 (Fed. Cir. 2013). Generally, "a patent is invalid for indefiniteness if its claims, read in light of the specification 15 delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of 16 the invention." Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014); see also Takeda Pharm. Co. v. Mylan Inc., No. 17 13-CV-04001-LHK, 2014 U.S. Dist. LEXIS 159527, at *13-14 (N.D. Cal. Nov. 11, 2014) (noting that, prior to Nautilus, "the 18 Federal Circuit applied an 'insolubly ambiguous' standard to indefiniteness questions" but "the Supreme Court rejected the 19 insolubly ambiguous standard and replaced it with a 'reasonable certainty' standard"). 20 Whether a claim is indefinite or definite is a question of law. See 21 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1260 (Fed. Cir. 2014). But while "[i]ndefiniteness is . . . a legal determination 22 arising out of the court's performance of its duty construing the claims," "[l]ike enablement, definiteness, too, is amenable to 23 resolution by the jury where the issues are factual in nature." BJ Servs. Co. v. Halliburton Energy Servs., 338 F.3d 1368, 1372 (Fed. 24 Cir. 2003). 25 Intri-Plex Techs., Inc. v. NHK Int'l Corp., No. 17-cv-01097-EMC, 2018 U.S. Dist. LEXIS 16877, 26 at *22-23 (N.D. Cal. Feb. 1, 2018). 27 In its papers, SIMO makes several arguments as to how different components of the phrase 1 a. What Provides the “service sharing”? 2 SIMO argues first that, with respect to the above phrase, it is not clear what exactly 3 provides the “service sharing” – e.g., is it a SIM card, the SIM card read-and-write device, or a 4 local user equipment? 5 The Court rejects SIMO’s argument. Arguably, the above phrase could have benefited 6 from the use of additional punctuation and is confusing if considered in isolation. However, when 7 the specification of the patent is taken into consideration, the phrase is understandable. This is 8 especially true give that “patents are ‘not addressed to lawyers, or even to the public generally,’ 9 but rather to those skilled in the art.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 909 10 (2014).1 11 The “Background of the Invention” provides important context.
12 At present, almost all the communication terminals, such as mobile phones, data cards, and hotspot devices, are capable of establishing 13 connections with the corresponding service providers or networks using physical Subscriber Identity Module (SIM) cards inserted 14 thereon. SIM is a unique authentication ID issued by a service provider for controlling access of a user equipment. The SIM 15 enables the user equipment to enjoy data and voice services.
16 Typically, since the service provider is bound to the SIM in the device, one terminal may only use voice and data services provided 17 by a service provider specified by the SIM. This brings many inconveniences to a subscriber. The subscriber cannot select 18 services provided by an appropriate service provider according to 19 20 1 In Nautilus,
21 [t]he parties differ[ed] . . . in their articulations of just how much imprecision §112, ¶ 2 tolerates. In [the alleged infringer] Nautilus’ 22 view, a patent is invalid when a claim is ‘ambiguous, such that readers could reasonably interpret the claim’s scope differently.’ 23 Biosig [the patent holder] and the Solicitor General would require only that the patent provide reasonable notice of the scope of the 24 claimed invention.
25 Nautilus, 572 U.S. at 908. “Although the Supreme Court did not state its holding in these terms, its decision in Nautilus is closer to Biosig's position than to Nautilus' position” as “[t]he Court 26 expressed primary concern with the public-notice function of a patent's claims, and never accepted Nautilus' position that a claim subject to more than one reasonable interpretation must be 27 indefinite.” In re Maxim Integrated Prods., Inc., No. 12-244, 2014 U.S. Dist. LEXIS 100448, at *35 n.2 (W.D. Pa. July 23, 2014). A contrary interpretation would suggest claim constructions signal strength and location information. When the subscriber is 1 roaming, the subscriber may only select services provided by a service provider signing a roaming service agreement with the 2 original service provider, and needs to pay service fees much more than a local subscriber. In addition, the package balance of the 3 subscriber cannot be shared or exchanged to another subscriber[,] but only wasted; and when the package broadband traffic is 4 insufficient, temporary services are very inconvenient for the subscriber. 5 Due to restriction of the tariff and package of the service provider, 6 on-demand use of bandwidth cannot be practically implemented, but the fees are paid based on traffic. It is difficult for the subscriber to 7 dynamically acquire desired services, for example, increased bandwidth and short message services, according to actual 8 requirements. 9 ‘780 patent, col. 1, ll. 22-50. 10 As indicated by the above, the prior art involved use of a SIM card on local user equipment 11 to get data and voice services. The invention improves on that prior art as follows: 12 • “One or a plurality of SIM cards providing services may be inserted in each of the 13 at least one SIM card read-and-write device 42.” ‘780 patent, col. 5, ll. 31-33. 14 • “[T]he SIM card read-and-write device 42 may be subject to three types of different 15 specifications and capacities in terms of hardware” – (1) “a SIM rack of a large 16 group [which] supports read, write, and storage of several to tens of SIM cards,” (2) 17 “a SIM array of a small group [which] supports read, write and storage of tends of 18 SIM cards,” and (3) “a SIM box of an individual [which] supports read, write and 19 storage of one or a plurality of SIM cards.” ‘780 patent, col. 5, ll. 34-53. 20 • “The SIM scheduling management 41 selects appropriate SIM from SIM cards 21 inserted in the SIM card read-and-write device 42 according to the location of a 22 user equipment and the type of service requested by a subscriber, and in 23 consideration of a network environment of the subscriber and subscriber attributes; 24 and assigns the selected SIM to the subscriber, thereby implementing an 25 international, any-network (any-service provider), any technology and mode, any- 26 service network access service for the subscriber, and implementing sharing of the 27 services corresponding to individual or a group SIM.” ‘780 patent, col. 6, ll. 1-11. 1 Because the SIM card read-and-write device may be, for example, a SIM rack, SIM array, or SIM box, the physical SIM card need not 2 actually be located on the local user equipment. Thus, the SIM card read-and-write device “simulates” the read-and-write processes to a 3 physical SIM card located, for example, in the SIM rack, SIM array, or SIM box, as would be performed by a local user equipment of a 4 SIM card providing service sharing. 5 Docket No. 79-1 (Feuerstein Decl. ¶ 59).2 6 Thus, when SIMO asks what exactly provides the service sharing, the response is that 7 “providing service sharing” – as used in the above phrase – modifies the noun “SIM card.” In 8 other words, it is a SIM card that provides service sharing. This makes grammatical sense in that 9 the noun closest to the modifier “providing service sharing” is “SIM card.” Thus, the above 10 phrase could have been more clearly written as follows: “at least one SIM card read-and-write 11 device, configured to simulate a read-and-write process (performed by a local user equipment of a 12 SIM card providing service sharing) to a physical SIM card.” 13 That being said, the Court notes that, even though “providing service sharing” modifies 14 “SIM card,” the SIM card is associated with “local user equipment” and, in that respect, the “local 15 user equipment” also provides service sharing. Moreover, the “SIM card read-and-write device” 16 emulates the read-and-write process performed by the “local user equipment” and thus is also 17 designed to provide service sharing. 18 b. What is the Meaning of “service sharing” 19 As noted above, the disputed phrase is as follows (in bold):
20 at least one SIM card read-and-write device, configured to simulate a read-and-write process performed by a local user 21 equipment of a SIM card providing service sharing to a physical SIM card, wherein at least one SIM card providing service is 22 insertable in the at least one SIM card read-and-write device . . . . 23 ‘780 patent, claim 1 (emphasis added). According to SIMO, there is an indefiniteness problem 24 with the above phrase because it is not clear what “service sharing” means above. SIMO contends 25
26 2 Dr. Feuerstein opines as to how one skilled in the art would understand the above phrase. SIMO 27 has offered no expert testimony to the contrary, simply relying – as it acknowledged at the hearing – on linguistics alone. While SIMO was not required to offer any expert testimony, patents are not 1 that “service sharing” could be interpreted either as: 2 (1) a noun – i.e., “providing service[-]sharing”; or 3 (2) a noun followed by a gerund – i.e., “providing service[,] sharing to a physical SIM 4 card.” 5 See Resp. Br. at 10. SIMO defends the latter interpretation on the basis that the patent 6 specification at times refers to a SIM card providing service only – and not service sharing. See, 7 e.g., ‘780 patent, col. 5, ll. 31-33 (“One of a plurality of SIM cards providing services may be 8 inserted in each of the at least one SIM card read-and-write device.”); ‘780 patent, col. 12, ll. 4-6 9 (“The SIM scheduling management system returns SIM providing services of the service provider 10 2 to the multi-channel communication device.”). SIMO notes that this is also consistent with 11 claim 1 which refers (in the first element above) to the following: “wherein at least one SIM card 12 providing service is insertable in the at least one SIM card read-and-write device.” ‘780 patent, 13 claim 1. 14 SIMO’s interpretation is far fetched. Notably, nothing in the patent (including the 15 specification) talks about “sharing to a physical SIM card,” which is what the SIMO’s 16 interpretation requires. Furthermore, SIMO’s interpretation would be grammatically awkward – 17 i.e., “at least one SIM card read-and-write device, configured to simulate a read-and-write process 18 performed by a local user equipment of a SIM card providing service[,] sharing to a physical SIM 19 card.” Sharing what to a physical SIM card? 20 SIMO is correct that different words in the same claim are usually afforded different 21 meanings (i.e., “service[-]sharing” and “service”). But SIMO ignores the fact that “service[- 22 ]sharing” is a kind of service; furthermore, it is clear from the patent as a whole (including the 23 specification) that the service to be provided by the invention is service sharing specifically. See, 24 e.g., ‘780 patent, col. 6, ll. 1-12 (“The SIM scheduling management 41 selects appropriate SIM 25 from SIM cards inserted in the SIM card read-and-write device 42 according to the location of a 26 user equipment and the type of service requested by a subscriber, and in consideration of a 27 network environment of the subscriber and subscriber attributes; and assigns the selected SIM to 1 technology and mode, implementing sharing of the services corresponding to individual or a group 2 SIM.”). 3 SIMO protests that the prosecution history (intrinsic evidence) supports its position. But 4 the argument is not well taken. For example, it is true that the claim as originally drafted (then- 5 known as claim 12) did refer to “at least one SIM card read-and-write device, configured to 6 simulate a read-and-write process performed by local user equipment of a SIM card providing 7 service sharing a physical SIM card.” Docket No. 93-2, at 34 (prosecution history). That is, the 8 claim as originally drafted referred to “a SIM card providing service sharing a physical SIM card,” 9 and not “a SIM card providing service sharing to a physical SIM card” (as stated in current claim 10 1). However, the omission of “to” appears to have been an administrative-type of mistake that 11 UCL corrected or at least an error addressed after the patent examiner determined that the claim 12 was “subject to restriction and/or election requirement.” Docket No. 93-2, at 121. 13 SIMO points out that, during the prosecution of the patent, UCL also made another change 14 to the claim then-known as claim 12:
15 at least one SIM card read-and-write device, configured to simulate a read-and-write process performed by a local user equipment of a 16 SIM card providing service sharing to a physical SIM card, wherein at least one SIM card providing service sharing are is insertable in 17 the at least one SIM card read-and-write device. 18 Docket No. 93-2, at 162-63 (prosecution history) (strike out and emphasis in original). But this is 19 not a clear disavowal of claim scope. See Poly-America, L.P. v. API Indus., Inc., 839 F.3d 1131, 20 1136 (Fed. Cir. 2016) (noting that a “disavowal need not be explicit” but it “must be clear and 21 unequivocal”; “the standard for disavowal is exacting, requiring clear and unequivocal evidence 22 that the claimed invention includes or does not include a particular feature” – notably, 23 “[a]mbiguous language cannot support disavowal”). “Service” does not necessarily exclude 24 service sharing which can be a kind of “service.” 25 Accordingly, the Court rejects SIMO’s contention that there is indefiniteness based on a 26 lack of clarity about what “service sharing” means. 27 c. What is the Meaning of “simulate”? 1 at least one SIM card read-and-write device, configured to simulate a read-and-write process performed by a local user equipment of a 2 SIM card providing service sharing to a physical SIM card, wherein at least one SIM card providing service is insertable in the at least 3 one SIM card read-and-write device . . . . 4 ‘780 patent, claim 1 (emphasis added). According to SIMO, “simulate” must be given its plain 5 and ordinary meaning as the term is not defined in the specification, and UCL is construing 6 “simulate” to mean the “complete opposite.” Resp. Br. at 13. SIMO maintains that “something 7 simulated is a representation of an action but not the real action,” and, “[b]ecause ‘simulate’ 8 means to imitate but not do the same thing as, the claim language ‘simulate a read and write 9 process’ is indefinite. It is not clear what kind of read-and-write process would be imitated, but 10 not actually performed . . . .” Resp. Br. at 15 (emphasis added). 11 SIMO’s argument is not persuasive. There is no real dispute between the parties that 12 “simulate” means something along the lines of “imitate.” See Resp. Br. at 15 (SIMO’s position) 13 (stating that “‘simulate’ means to imitate”); Docket No. 79-1 (UCL’s position) (Feuerstein Decl. ¶ 14 60) (testifying that “a POSITA [person of ordinary skill in the art] at the time of the invention 15 would understand to ‘simulate’ means to imitate or emulate the way in which another system or 16 process works”). SIMO assumes, however, that something is not “imitated” when the same result 17 is achieved. But the invention at issue has clearly been designed to achieve the same result as the 18 prior art (i.e., service sharing); it is simply the way of accomplishing the result that makes the 19 invention different. This is consistent with the claim language, namely, that a “process” is being 20 simulated or imitated, not the end result. 21 d. Interpreting “to” to mean “of” 22 SIMO’s next argument is not entirely clear but appears to be related to its argument in Part 23 II.C.1, supra. Below is the phrase at issue from claim 1:
24 at least one SIM card read-and-write device, configured to simulate a read-and-write process performed by a local user equipment of a 25 SIM card providing service sharing to a physical SIM card, wherein at least one SIM card providing service is insertable in the 26 at least one SIM card read-and-write device . . . . 27 ‘780 patent, claim 1 (emphasis added). According to SIMO, UCL takes the position that the SIM 1 SIM card” (i.e., the language bolded above) – reading out entirely the nonbolded language in 2 between. See Resp. Br. at 17 (arguing that UCL lacks support for moving ‘to a physical SIM card’ 3 from the end of the phrase to directly after ‘configured to simulate a read-and-write process”). 4 SIMO also argues that this interpretation cannot be accepted because the specification of the 5 patent talks about reading and writing of a SIM card, not to. See, e.g., ‘780 patent, col. 7, ll. 38-40 6 (“The SIM card read-and-write chip 421, under control of a SIM card management unit 423, 7 implements read and write of a SIM card inserted in the SIM card slot 422.”) (emphasis added); 8 ‘780 patent, col. 6, ll. 17-19 (“In the embodiments of the present invention, the multi-channel 9 communication device 43 may support read and write of one or a plurality of physical SIM cards”) 10 (emphasis added). 11 As indicated above, see Part II.C.1, the Court agrees with UCL that the SIM card read-and- 12 write device is configured to simulate a read-and-write process (performed by a local user 13 equipment) to a physical SIM card. Furthermore, the excerpts above from the patent specification 14 – referring to reading and writing of a SIM card – ultimately supports UCL’s interpretation that 15 the nonbolded language between “configured to simulate a read-and-write process” and “to a 16 physical SIM card” should effectively be put in a parenthetical (i.e., so as to modify “read-and- 17 write process”). Finally, the Court is not troubled by the fact that the claim uses “to” while the 18 patent specification uses “of.” The claim uses the word “to” because it is talking about a “read- 19 and-write process.” In contrast, the patent specification simply references reading and writing, 20 and not a process specifically. 21 e. “to a physical SIM card” 22 Finally, SIMO argues that “to a physical SIM card” lacks any written description3: “[T]he 23 specification lacks any support for read-and-write process being performed ‘to a physical SIM 24 card.’ Plaintiffs completely ignore this point, and seek to resolve this discrepancy by redefining 25 ‘to’ as ‘of.’” Resp. Br. at 18. This argument is simply a variant of the one directly above, and 26 therefore is rejected. As indicated above, SIMO argues that the specification of the patent refers to 27 1 reading and writing of a SIM card, not to. But the claim may use the term “to” because it is 2 talking about a read-and-write process. 3 f. Summary 4 For the foregoing reasons, the Court does not find indefiniteness and adopts UCL’s 5 construction, and not SIMO’s. 6 3. “a SIM database configured to store SIM data on the at least one SIM card of the at 7 least one SIM card read-and-write device” (claim 1) 8 9 UCL’s Proposed SIMO’s Proposed Court’s Construction 10 Construction Construction 11 a SIM database configured to a SIM database configured to a SIM database configured to 12 store SIM data of the at least store SIM data on the at least store SIM data of the at least 13 one SIM card stored in the at one SIM card of the at least one SIM card stored in the at 14 least one SIM card read-and- one SIM card read-and-write least one SIM card read-and- 15 write device device write device 16 17 The parties’ dispute concerning the above phrase is about the word “on.” SIMO argues 18 that “on” must be interpreted to mean a physical location – i.e., a SIM database is configured to 19 store SIM data physically on the SIM card. UCL argues in response that “on” is a word that can 20 mean “of” or “about” – e.g., a book “on” minerals is a book “about” minerals. See Docket No. 79- 21 1, at 21 (definition of “on” provided in Merriam Webster) (providing as the twelfth definition (out 22 of twelve): “ABOUT, CONCERNING ”). 23 The Court agrees with UCL that “on,” as used in the above phrase, does not implicate 24 physical location. Most tellingly, the patent specification contains the following language: “The 25 SIM database 411 stores SIM data of the SIM card inserted on the SIM card read-and-write device 26 . . . .” ‘780 patent, col. 8, ll. 5-6. In addition, other parts of the patent specification indicate that 27 SIM data would not be pinned to a physical location on the SIM card. See, e.g., ‘780 patent, col. 1 communication modes in different regions and of different service providers”) (emphasis added). 2 Finally, it would make little sense for “on” to mean a physical limitation when that would mean 3 embodiments disclosed in the patent specification would be excluded from claim 1. See Resp. Br. 4 at 22 (SIMO not disputing that its construction “would exclude the preferred embodiments”). As 5 UCL points out, the Federal Circuit has stated that “[a] claim construction that excludes a 6 preferred embodiment is ‘rarely, if ever, correct.’ A construction that excludes all disclosed 7 embodiments . . . is especially disfavored.” Kaneka Corp. v. Xiamen Kingdomway Grp. Co., 790 8 F.3d 1298, 1304 (Fed. Cir. 2015) (emphasis in original). SIMO, in response, cites Lucent 9 Technologies, Inc. v. Gateway, Inc., 525 F.3d 1200 (Fed. Cir. 2008), where the Federal Circuit 10 stated: “[W]here we conclude that the claim language is unambiguous, we have construed the 11 claims to exclude all disclosed embodiments.” Id. at 1215-16. But, in the instant case, there is 12 ambiguity, if only by virtue of the language in the patent specification using the word “of.” See 13 ‘780 patent, col. 8, ll. 5-6 (“The SIM database 411 stores SIM data of the SIM card inserted on the 14 SIM card read-and-write device . . . .”) (emphasis added). 15 SIMO protests still that it was the use of the word “on” – i.e., the limitation it placed – that 16 prompted the patent examiner to give approval to the invention over the prior art. See Resp. Br. at 17 19 (arguing that, “in the notice of allowance, the examiner repeated and emphasized the ‘on’ 18 limitation in his reasons for allowing the patent over the prior art”). But contrary to what SIMO 19 suggests, the notice of allowance does not specifically call out the word “on”. Moreover, nothing 20 in the notice of allowance indicates an understanding of “on” to implicate physical location. 21 Accordingly, the Court adopts UCL’s proposed construction over SIMO’s. 22 /// 23 /// 24 /// 25 /// 26 /// 27 /// 1 4. “SIM function” 2 3 UCL’s Proposed SIMO’s Proposed Court’s Construction 4 Construction Construction 5 no construction necessary; or indefinite not indefinite; 6 [alternatively] functions of a the function of a SIM, i.e., a 7 SIM means by which a service 8 provider authenticates a 9 subscriber, thus enabling the 10 subscriber to use her user 11 equipment to enjoy services 12 provided by the service 13 provider 14 15 Below is the broader context for the term “the SIM function”:
16 1. A subscriber identity module (SIM)-based service sharing system, comprising: 17 at least one SIM card read-and-write device, configured to 18 simulate a read-and-write process performed by a local user equipment of a SIM card providing service sharing to a physical 19 SIM card, wherein at least one SIM card providing service is insertable in the at least one SIM card read-and-write device; 20 a SIM scheduling management system configured to select 21 appropriate SIM from the at least one SIM card inserted in the at least one SIM card read-and-write device according to the 22 location of a user equipment and the type of a service requested by a subscriber, and assign the appropriate SIM to the 23 subscriber; and
24 at least one multi-channel communication, configured to communicate with the SIM scheduling management system to 25 acquire the appropriate SIM assigned by the SIM scheduling management system, and communicate with a service provider 26 system corresponding to the appropriate SIM assigned by the SIM scheduling management system to acquire the service 27 requested by the subscriber; function or SIM data; 1 . . . . 2 3 ‘780 patent, claim 1 (emphasis added). According to SIMO, “the SIM function” is indefinite 4 because it lacks an antecedent basis in claim 1 (i.e., “a SIM function”), and nothing in the patent, 5 including the specification, sets “the outer boundaries of ‘the SIM function.’” Resp. Br. at 24. In 6 short, what SIMO means here is that there are many functions of a SIM and, without further 7 clarity as to which function is implicated, there is an indefiniteness problem. 8 The lack of an antecedent basis for “the SIM function” is not dispositive. As the Federal 9 Circuit has noted: “The Manual of Patent Examining Procedure (‘MPEP’) states: ‘the failure to 10 provide explicit antecedent basis for terms does not always render a claim indefinite. If the scope 11 of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not 12 indefinite.’” Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1359 (Fed. Cir. 2001).4 For example, in In 13 re Downing, 754 F. App'x 988 (Fed. Cir. 2018), the Federal Circuit did not find the absence of an 14 antecedent basis for “the end user” a problem because it was, in essence, obvious what was meant 15 by the term:
16 In this case, the "business information relevant to the end user" limitation introduces the term "the end user" without an antecedent 17 basis. However, claim 1 only references one "end user." While the specification discloses many different end users, claim 1's recitation 18 of one end user could only refer to the end user using the product. Who else could the end user be? 19 Id. at 996. 20
21 4 In Bose itself, the Federal Circuit effectively found an antecedent basis for a term – “an ellipse 22 having a major diameter” – by implication. See Fisher-Price, Inc. v. Graco Children's Prods., 154 F. App'x 903, 909 (Fed. Cir. 2005) (“A claim is not invalid for indefiniteness if its antecedent 23 basis is present by implication.”). It explained:
24 [M]athematically an inherent characteristic of an ellipse is a major diameter. The prior recitation of "an ellipse" therefore, provides the 25 antecedent basis for "an ellipse having a major diameter." "Inherent components of elements recited have antecedent basis in the 26 recitation of the components themselves." MPEP § 2173.05(e). The MPEP provides an analogous example: "the limitation 'the outer 27 surface of said sphere' would not require an antecedent recitation that the sphere have an outer surface." 1 The instant case is not quite like Downing in that claim 1 of the ‘780 patent does not, in 2 and of itself, make obvious what is meant by “the SIM function.” On the other hand, the patent 3 specification does shed light on what “the SIM function” means. There are at least two places in 4 the specification that talk about what function a SIM provides: 5 • “SIM is a unique authentication ID issued by a service provider for controlling 6 access of a user equipment. The SIM enables the user equipment to enjoy data and 7 voice services.” ‘780 patent, col. 1, ll. 26-29. 8 • “In the embodiments of the present invention, the subscriber identity information is 9 used for a service provider to authenticate a subscriber, wherein the subscriber 10 identity information comprises SIM data of a subscriber serviced by a mobile 11 service provider, [etc].” ‘780 patent, col. 3, ll. 55-59. 12 Admittedly, the patent specification does not expressly define “the SIM function” as a means by 13 which a service provider authenticates a subscriber, thus enabling the subscriber to use her user 14 equipment to get services provided by the service provider. However, implicitly, that is how the 15 functioning of a SIM is described. And because that is how the functioning of a SIM is described, 16 the fact that a SIM could provide other additional functions does not render the term indefinite in 17 this context. (In its papers, SIMO did not identify other such functions; however, it identified at 18 least one other function at the claim construction hearing.). 19 Accordingly, the Court rejects SIMO’s contention that “the SIM function” is indefinite. 20 That being said, the construction that UCL provides is also problematic – e.g., referring to 21 “functions” (plural) rather than “function” (singular) and failing to provide any specificity on what 22 the function actually is. The Court adopts the following construction instead: “the function of a 23 SIM, i.e., a means by which a service provider authenticates a subscriber, thus enabling the 24 subscriber to use her user equipment to enjoy services provided by the service provider.” 25 /// 26 /// 27 /// 1 Il. CONCLUSION 2 For the foregoing reasons, the Court adopts the above claim constructions. 3 4 IT IS SO ORDERED. 5 6 Dated: March 19, 2020 7 LL 8 | : fr ED M. CHEN 9 United States District Judge 10 11 g 12
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