Order Granting Motion For Preliminary Injunction - United States ...

United States District Court
For the Northern District of California
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Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370
(1996). In the second step, the trier of fact must “determine[] whether every claim limitation, or its
equivalent, is found in the accused device.” Roche Palo Alto LLC v. Apotex, Inc., 531 F.3d 1372,
1377 (Fed. Cir. 2008) (citation omitted).
i. Claim Construction
Here, the parties disagree as to the meaning of two claim terms that appear in claims 6 and
19: (1) “each” of a plurality of heuristic modules; and (2) “heuristic algorithm.” Where the parties
dispute the scope of a claim term, the court has a duty to construe the term. O2 Micro Int’l Ltd. v.
Beyond Innovation Tech. Co., 521 F.3d 1351, 1361-62 (Fed. Cir. 2008). A claim term is generally
given its “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 v. AWH Corp.,
415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc). In construing disputed terms, the court looks
first to the claims themselves, read in context, for “[i]t 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.’”
Id. at 1312 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111,
1115 (Fed. Cir. 2004)). Importantly, however, “the person of ordinary skill in the art is deemed to
read the claim term not only in the context of the particular claim in which the disputed term
appears, but in the context of the entire patent, including the specification.” Id. at 1313; see also
Markman, 52 F.3d at 979 (claims must be read “in view of the specification, of which they are a
part”). Because the specification must contain a description of the invention sufficiently clear “to
teach and enable those of skill in the art to make and use the invention,” Phillips, 415 F.3d at 1323,
the specification is “‘always highly relevant’” and “‘[u]sually [] dispositive; it is the single best
guide to the meaning of a disputed term,’” id. at 1315 (quoting Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); accord Eon-Net LP v. Flagstar Bancorp, 653 F.3d
1314, 1320 (Fed. Cir. 2011).
The court should also consider, if it is in evidence, the patent’s prosecution history, which
consists of the complete record of proceedings before the United States Patent and Trademark
Office (“PTO”) and includes the prior art references cited during the examination. Phillips, 415
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Case No.: 12-cv-00630-LHK
ORDER GRANTING MOTION FOR PRELIMINARY INJUNCTION