Image Processing Technologies LLC v. Lg Electronics Inc., Lg Electronics USA, Inc.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IMAGE PROCESSING TECHNOLOGIES LLC,
Plaintiff-Appellant
v.
LG ELECTRONICS INC., LG ELECTRONICS USA,
INC.,
Defendants-Appellees
______________________
2023-2136
______________________
Appeal from the United States District Court for the
Eastern District of Texas in No. 2:22-cv-00077-JRG-RSP,
Chief Judge J. Rodney Gilstrap.
______________________
Decided: January 29, 2025
______________________
MICHAEL K ARSON, Winstead PC, Dallas, TX, argued for
plaintiff-appellant. Also represented by D AVID WILLIAM
HIGER, J AMIE HERBERT MCD OLE, P HILLIP B. P HILBIN.
MARK L IANG, O’Melveny & Myers LLP, San Francisco,
CA, argued for defendants-appellees. Also represented by
D AVID ALMELING, CLARENCE R OWLAND; G RANT G IBSON,
Dallas, TX.
______________________
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IMAGE PROCESSING TECHS. LLC v.
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Before H UGHES , MAYER , and STARK, Circuit Judges.
STARK, Circuit Judge.
Image Processing Technologies, Inc. (“IPT”) sued LG
Electronics, Inc. (“LG”) in the United States District Court
for the Eastern District of Texas for infringement of U.S.
Patent No. 6,959,293 (“’293 patent”). The district court
conducted claim construction and, thereafter, the parties
entered into a stipulated final judgment of invalidity. IPT
appeals, arguing that the district court’s construction was
erroneous. Specifically, IPT contends that the construction
was improperly broader than the broadest reasonable in-
terpretation (“BRI”) that the United States Patent and
Trademark Office (“PTO”) applied when it construed the
same claim term. As we agree with the district court’s con-
struction, we affirm.
I
The ’293 patent, entitled “Method and Device for Auto-
matic Visual Perception,” generally relates to visual per-
ception devices and devices for image processing using
histogram calculation units (“HCUs”). ’293 patent at 1:6-
10. Claim 1 recites:
A visual perception processor for automatically de-
tecting an event occurring in a multidimensional
space (i, j) evolving over time with respect to at
least one digitized parameter in the form of a digi-
tal signal on a data bus, said digital signal being in
the form of a succession a ijT of binary numbers as-
sociated with synchronization signals enabling to
define a given instant (T) of the multidimensional
space and the position (i, j) in this space, the visual
perception processor comprising:
the data bus;
a control unit
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a time coincidences bus carrying at least a
time coincidence signal; and
at least two histogram calculation units for
the treatment of the at least one parame-
ter,
the histogram calculation units being con-
figured to form a histogram representative
of the parameter as a function of a valida-
tion signal and to determine by classifica-
tion a binary classification signal resulting
from a comparison of the parameter and a
selection criterion C, wherein the classifi-
cation signal is sent to the time coinci-
dences bus, and wherein the validation
signal is produced from time coincidences
signals from the time coincidence bus so
that the calculation of the histogram de-
pends on the classification signals carried
by the time coincidence bus.
Id. at 26:34-59 (emphasis added).
The claim term at issue in this appeal – “the histogram
calculation units being configured to form a histogram rep-
resentative of the parameter” (the “Disputed Term”) – was
construed in proceedings that occurred before IPT sued LG.
The first construction was provided by the PTO’s Patent
Trial and Appeal Board (“Board”) in an inter partes review
(“IPR”) proceeding in 2017. There, after noting that the
petitioner implicitly agreed with IPT’s proposed construc-
tion, the Board adopted it, construing the Disputed Term
as “at least two histogram calculation units being config-
ured to each form a histogram representative of at least one
common parameter.” J.A. 2362 (Samsung Elecs. Co. v. Im-
age Processing Techs. LLC, IPR2017-00336 (PTAB May 9,
2018)) (internal quotation marks and emphasis omitted).
The Board applied this same construction in two subse-
quent proceedings: an appeal of an ex parte reexamination
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and another IPR, this one initiated by LG. In LG’s IPR
petition, LG noted it did not agree with the Board’s prior
construction of the Disputed Term, but added there was “no
need” to dispute the construction because the prior art LG
was asserting “discloses [c]laim 1 [of the ’293 patent] even
under the Board’s narrow ‘common parameter’ construc-
tion,” which LG applied in its petition “for the purposes of
this proceeding only.” J.A. 3350.
At the district court, in the suit presently before us, IPT
and LG advanced competing constructions of the Disputed
Term. IPT urged the district court to apply the Board’s
construction; LG countered that the court should apply the
term’s plain and ordinary meaning, which it contended
“[d]oes not include a requirement that all of the at least two
histogram calculation units form a histogram representa-
tive of the same (or a common) parameter.” J.A. 723. After
briefing and a hearing, the district court construed the Dis-
puted Term as “the histogram calculation units being con-
figured to form one or more histograms representative of
the at least one parameter.” J.A. 726, 744. Unlike the
Board’s construction, the district court’s construction does
not limit the claimed “at least one parameter” to “at least
one common parameter.”
Based on the district court’s construction, IPT condi-
tionally stipulated that claim 1 of the ’293 patent is invalid,
and the district court entered final judgment for LG. IPT
then timely filed this appeal. The district court had juris-
diction under 28 U.S.C. §§ 1331 and 1338(a). We have ju-
risdiction pursuant to 28 U.S.C. §§ 1292(c)(2) and
1295(a)(1).
II
Claim construction is a matter of law that, when con-
ducted solely with intrinsic evidence, we review de novo.
See Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318,
332-33 (2015). Generally, the words of a claim carry the
plain and ordinary meaning that they would have to a
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person of ordinary skill in the art, looking at the patent, at
the relevant time. See Phillips v. AWH Corp., 415 F.3d
1303, 1312 (Fed. Cir. 2005) (en banc). The claims, however,
do not stand alone. The patent’s specification, which is re-
quired to contain a written description of the invention in
“full, clear, concise, and exact terms,” is always relevant
and often dispositive. Id. at 1315-16 (internal quotation
marks and citation omitted); see also 35 U.S.C. § 112(a).
When placed in evidence, the patent’s prosecution history
should be considered as well. See Phillips, 415 F.3d at
1317. When, as here, the proper construction can be deter-
mined using only intrinsic evidence, there is no need to con-
sider extrinsic evidence. See id. at 1318-19.
III
This appeal involves a single claim construction dis-
pute. The district court construed the Disputed Term, “the
histogram calculation units being configured to form a his-
togram representative of the parameter,” as “the histogram
calculation units being configured to form one or more his-
tograms representative of the at least one parameter.” J.A.
728 (emphasis added). IPT contends that, instead, the
proper construction is the one the Board has consistently
applied: the at least two histogram calculation units being
configured to each form a histogram representative of at
least one common parameter. The only dispute is whether,
as IPT advocates, the construction should require that at
least two HCUs, each of which forms a single histogram (at
any moment in time), must have histograms that are rep-
resentative of a common parameter. Our review of the
claim language, specification, and prosecution history
leads us to the same conclusion as the district court, which
rejected IPT’s “common parameter” limitation as unduly
narrow.
A
We agree with the district court that a person of ordi-
nary skill in the art would have understood “the
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parameter” of the Disputed Term to refer back to the “at
least one parameter” recited earlier in the claim and would
not have limited the claimed “two or more histogram calcu-
lation units” to a common parameter, given the teachings
of the patent as a whole. Rather, as the district court ac-
curately explained, “the claim covers embodiments in
which two or more HCUs together form a histogram repre-
sentative of only one parameter, but it is not limited to such
embodiments.” J.A. 725 (emphasis added).
In arguing for its preferred construction, IPT asserts
that the histograms permitted by the district court’s con-
struction are “a technical impossibility that would render
the invention of claim 1 of the ’293 Patent inoperable.”
Open. Br. 26-27. IPT insists that the parameter referred
to in the Disputed Term must be singular, as “a single HCU
forming a single histogram of multiple parameters is a
technical impossibility.” Id. Even if IPT were correct,
which it largely is not (as we explain below), these issues
would not necessarily render the court’s construction
wrong. See Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d
1371, 1374 (Fed. Cir. 2004) (“[C]ourts may not redraft
claims, whether to make them operable or to sustain their
validity.”).
In any event, IPT has failed to show that our construc-
tion brings inoperable embodiments into the claims. It is
true that “a single HCU can only create a single histogram
of a single parameter at a time.” Open. Br. 26 (citing ’293
patent at 1:59-60). It does not follow, however, that multi-
ple HCUs are limited to forming histograms of a single (i.e.,
common) parameter. Nothing in the claims precludes, for
example, a first HCU forming a first histogram of a first
parameter, and a second HCU forming a second histogram
of a second parameter. Likewise, nothing precludes a first
and second HCU from forming first and second histograms
of a first parameter while a third HCU forms a histogram
of a second parameter.
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Before us, IPT argued that the Disputed Term, which
is contained in the last limitation of claim 1, would be rec-
ognized by a person of ordinary skill in the art as signaling
a “shift in focus,” such that “the parameter” of the Disputed
Term is not the same “parameter” referred to in the pream-
ble of the claim as the “at least one digitized parameter.”
Oral Arg. at 2:50-3:59. We are unpersuaded. “Parameter”
appears four times in claim 1. After the preamble recites
“at least one digitized parameter,” the subsequent three
references are to “the parameter” (emphasis added), indi-
cating that the patentee is referring back to the “at least
one digitized parameter.” See, e.g., Energizer Holdings,
Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1371 (Fed. Cir.
2006) (concluding that “anode gel” provided implied ante-
cedent basis for “said zinc anode”); see also Baldwin
Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1343 (Fed.
2008) (“[I]f two different levers are recited earlier in the
claim, the recitation of said lever in the same or subsequent
claim would be unclear where it is uncertain which of the
two levers was intended.”) (internal quotation marks and
citation omitted).
In sum, the claim language strongly supports the con-
struction adopted by the district court, not IPT’s alterna-
tive proposed construction.
B
The specification, which discloses embodiments that
would be excluded from the scope of the claims under IPT’s
construction, further supports our construction. See
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583
(Fed. Cir. 1996) (explaining it “is rarely, if ever, correct” to
construe a claim to omit the preferred embodiment, and
such a construction “would require highly persuasive evi-
dentiary support”).
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For example, Figure 30 of the ’293 patent discloses an
embodiment in which five HCUs (labelled 1A, 1B, 1C, 1D,
and 1E) form histograms of five different parameters
(DATA(A), DATA(B), DATA(C), DATA(D), and DATA(E)),
as shown below:
’293 patent at Figure 30 (as annotated at Resp. Br. 7); see
also ’293 patent at 20:26-30. In this embodiment, then,
each of five HCUs forms a histogram of a single parameter
but no two of these histograms represent the same param-
eter. Rather, HCU 1A creates histograms of parameter
DATA(A), HCU 1B creates histograms of parameter
DATA(B), and so on, without any of the two or more HCUs
being required to create histograms of a common parame-
ter.
IPT insists that the Figure 30 embodiment is captured
by claim 3 and not claim 1, pointing out that claim 3 uses
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parameter names (“DATA(A), DATA(B), . . . DATA(E)”)
while claim 1 does not. But we see no reason to conclude
that a person of ordinary skill would read claim 1 as not
encompassing the Figure 30 embodiment.
IPT argues that the embodiment shown in Figure 32 is
“particularly important” to the claim construction dispute.
Open. Br. 30-31 (citing ’293 patent at Fig. 32 and col. 21:44-
47). That may be so, but it does not help IPT. Figure 32,
shown below (as annotated at Resp. Br. 9), depicts numer-
ous HCUs (1a 00, 1a 01, . . . 1a 33), each of which may process
any of numerous parameters (L, S, T, L, p0, p1, . . . p15).
’293 patent at Figure 32; see also id. at 21:37-47. Like Fig-
ure 30, Figure 32 does not require its HCUs to process a
common parameter. Rather, the embodiment shown in
Figure 32 depicts HCUs that may process the same param-
eters, different parameters, or even multiple parameters
over time (by processing a first parameter for a first
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amount of time and then processing a second parameter for
a second amount of time).
IPT’s additional references to the specification estab-
lish nothing more than the undisputed fact that an HCU
can only create a histogram of a single parameter at any
particular moment in time. The district court’s construc-
tion is entirely consistent with this reality; it simply estab-
lishes, further, that each HCU may create a histogram for
a different single parameter, at any one time. Thus, as we
have explained, the specification supports our construc-
tion.
C
Finally, we turn to the prosecution history, which IPT
characterizes as largely dispositive of the claim construc-
tion dispute. We do not agree.
IPT points first to the original prosecution of the appli-
cation that led to the ’293 patent. IPT cites the applicant’s
amendments and response to the patent examiner’s non-
final rejection as purported support for its contention that
the “common parameter” requirement was “an important
novelty distinction in view of the prior art and thus neces-
sary for patentability.” Open. Br. 34-35 (citing J.A. 1310,
1319-20). IPT goes so far as to characterize a claim amend-
ment made during prosecution as a “disclaimer” of claim
scope, which the “district court’s construction eviscerated.”
Open. Br. 37.
IPT’s arguments fail for multiple reasons. Most im-
portantly, IPT forfeited its prosecution history disclaimer
contentions by failing to raise them before the district
court. See, e.g., Sage Prods., Inc. v. Devon Indus., Inc., 126
F.3d 1420, 1426 (Fed. Cir. 1997) (“[T]his court does not ‘re-
view’ that which was not presented to the district court.”).
In any event, a disclaimer of claim scope must be clear and
unmistakable. See SanDisk Corp. v. Memorex Prods., Inc.,
415 F.3d 1278, 1286-87 (Fed. Cir. 2005). The prosecution
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statements IPT points to do not meet this exacting stand-
ard; they do not even mention the “common parameter”
claim element or do anything more than tout the inven-
tion’s purported advances over the prior art. J.A. 1319 (ap-
plicant stating that prior art “fails to teach or suggest two
or more [HCUs] . . . configured to form a histogram repre-
sentative of the parameter as a function of a validation sig-
nal”); J.A. 1320 (“Advantageously, in the present invention,
the use of a time coincidences bus, which is shared between
the histogram calculation units, allows for a time depend-
ent amplification effect.”).
The claim amendments do not further IPT’s argument
either. IPT amended nearly every word of its claim, draw-
ing no particular attention to the Disputed Limitation or
even to the term “parameter.” J.A. 1310. We see no clear
and unmistakable disavowal of claim scope.
IPT also points to the positions it advanced in the var-
ious post-issuance proceedings before the Board, where, it
contends, it disclaimed “claim scope to which it has never
been entitled and which it has always disclaimed.” Open.
Br. 38-40. “[S]tatements made by a patent owner during
an IPR proceeding, whether before or after an institution
decision, can be considered for claim construction and re-
lied upon to support a finding of prosecution disclaimer.”
Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1362
(Fed. Cir. 2017); see also Krippelz v. Ford Motor Co., 667
F.3d 1261, 1266 (Fed. Cir. 2012) (same for reexamination
proceedings). This argument, too, is forfeited, as IPT did
not present it to the district court. Even had IPT preserved
this issue for appeal, the post-issuance prosecution history
reflects only that IPT pressed claim construction positions
it believed would aid its effort to survive invalidity chal-
lenges. While post-issuance prosecution history can be use-
ful to understanding claims, it “cannot enlarge, diminish,
or vary the limitations in the claims,” as IPT is attempting
to do. Markman v. Westview Instruments, Inc., 52 F.3d 967,
980 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996) (internal
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quotation marks and citations omitted; emphasis added).
A patentee does not meet the high burden for a disclaimer
by merely proposing a narrowing construction during an
IPR. See CUPP Computing AS v. Trend Micro Inc., 53
F.4th 1376, 1383 (Fed. Cir. 2022) (“A rule permitting a pa-
tentee to tailor its claims in an IPR through argument
alone would substantially undermine the IPR process.”).
Rather, Congress has “created a specialized process for pa-
tentees to amend their claims in an IPR.” Id. IPT never
moved for the Board to amend its claims and never clearly
and unmistakably stated it was disclaiming all claim scope
that falls outside the scope of the claims as it proposed they
be construed. See id. (“If patentees could shapeshift their
claims through argument in an IPR, they would frustrate
the [PTO]’s power to ‘revisit’ the claims it granted, and re-
quire focus on claims the patentee now wishes it had se-
cured.”).
***
In sum, based on the intrinsic evidence, we agree with
the district court. The correct construction of the Disputed
Term, “the histogram calculation units being configured to
form a histogram representative of the parameter,” is, as
the district court held, “the histogram calculation units be-
ing configured to form a histogram representative of the at
least one parameter.”
IV
IPT argues that the district court’s construction of the
Disputed Term is broader than the Board’s construction,
which must make the court’s construction wrong because
the Board’s construction is necessarily the broadest reason-
able interpretation. IPT is right that, in district court liti-
gation, the proper construction cannot be broader than the
BRI, as such a construction would not be reasonable. See,
e.g., TF3 Ltd. v. Tre Milano, LLC, 894 F.3d 1366, 1371
(Fed. Cir. 2018) (explaining that BRI cannot be so broad as
to be unreasonable in view of claim language and patent
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disclosure). But, for all the reasons we have explained, the
district court’s construction of the Disputed Term is en-
tirely consistent with the patent’s claims, specification, and
prosecution history. IPT’s narrower construction, which –
like the Board’s construction – reads into the claims a “com-
mon parameter” requirement that is not supported by the
intrinsic evidence. As the district court was right to recog-
nize, there is nothing improper about a construction that is
broader than an incorrect BRI.
V
We have considered IPT’s remaining arguments and
find they lack merit. Accordingly, for the reasons given
above, the district court’s judgment is affirmed.
AFFIRMED
COSTS
Costs awarded to LG.
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