Intellectual Ventures I LLC v. Ubiquiti, Inc.
1:23-cv-00865
| D. Del. | Jun 10, 2025Background
- Intellectual Ventures I LLC sued Ubiquiti, Inc. for allegedly infringing U.S. Patent No. 8,594,122, which covers a communication protocol for transmitting frames between devices.
- The patent concerns a two-part transmission system, where the first frame announces a second frame, which omits addressing information, thereby streamlining communication.
- The main dispute concerns the meaning of specific claim phrases: whether the second communication frame must follow immediately after the first or may be separated by an intervening response.
- Plaintiff contended that the claim phrases require the second frame to follow “substantially immediately” (i.e., SIFS) after the first without any intervening frames.
- Defendant argued that the plain and ordinary meaning of the language allows for possible intervening responses between the two frames, referencing embodiments in the patent itself.
- The court reviewed intrinsic evidence (claims, specification, prosecution history) and held a claim construction hearing without expert testimony.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the claim phrases require no intervening response | "Follows" means substantially immediate, with no other frames intervening (based on patent description and PTAB adoption) | Plain and ordinary meaning permits intervening responses; claim language doesn’t require immediacy | Claim phrases have plain meaning; intervening responses allowed |
| Effect of patent prosecution history on claim meaning | Prosecution history (cancellation of claim 3) disavows scope that allows intervening frames | Prosecution history isn’t clear or unmistakable; claims are broad | No clear disavowal; prosecution history doesn’t limit plain scope |
| Whether specification’s language (using “i.e.”) redefines scope | “i.e.” in specification is definitional and limits claims to immediate following frames | Specification’s “i.e.” is unclear, shouldn’t override preferred embodiments with responses | “i.e.” usage not dispositive; reading out embodiments is improper |
| Implication of embodiments with intervening responses | Embodiments with intervening frames are not covered | Patent figures show intervening responses permitted | Construction must cover such embodiments |
Key Cases Cited
- Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (claim construction is a question of law for the court)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claims are construed in light of the specification and prosecution history)
- Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314 (Fed. Cir. 2003) (heavy presumption of plain and ordinary meaning for claim terms barring clear disclaimer)
- SynQor, Inc. v. Artesyn Techs., Inc., 709 F.3d 1365 (Fed. Cir. 2013) (claim construction should not exclude preferred embodiments)
- GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304 (Fed. Cir. 2014) (doctrine of claim differentiation and not reading limitations from specs into claims)