Pragmatus AV, LLC v. Yahoo!, Inc

Filing 55

ORDER - CLAIM CONSTRUCTION ORDER. Signed by Judge Edward M. Chen on 5/13/2014. (emcsec, COURT STAFF) (Filed on 5/13/2014)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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PRAGMATUS AV, LLC,

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No. C-13-1176 EMC

Plaintiff,
v.

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For the Northern District of California

United States District Court

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YAHOO! INC.,

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Defendant.
___________________________________/

CLAIM CONSTRUCTION ORDER

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Plaintiff Pragmatus AV, LLC has filed suit against Defendant Yahoo! Inc. for infringement

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of two patents, namely, the ‘470 and ‘921 patents. The patents share the same specification. Both

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patents concern real-time communication between plural users.

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Currently pending before the Court are the parties’ claim construction briefs. For the reasons
discussed below, the Court adopts the following constructions regarding the disputed terms.

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I.
A.

DISCUSSION

Legal Standard
Claim construction is a question of law to be determined by the Court. See Markman v.

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Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (“hold[ing] that in a case tried to a

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jury, the court has the power and obligation to construe as a matter of law the meaning of language

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used in the patent claim”). “The purpose of claim construction is to ‘determin[e] the meaning and

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scope of the patent claims asserted to be infringed.’” O2 Micro Int’l Ltd. v. Beyond Innovation

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Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008).

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Words of a claim are generally given their ordinary and customary
meaning, which is the meaning a term would have to a person of
ordinary skill in the art after reviewing the intrinsic record at the time
of the invention. “In some cases, the ordinary meaning of claim
language . . . may be readily apparent even to lay judges, and claim
construction in such cases involves little more than the application of
the widely accepted meaning of commonly understood words.”
However, in many cases, the meaning of a claim term as understood
by persons of skill in the art is not readily apparent.

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Id.
Because the meaning of a claim term as understood by persons of skill
in the art is often not immediately apparent, and because patentees
frequently use terms idiosyncratically, the court looks to “those
sources available to the public that show what a person of skill in the
art would have understood disputed claim language to mean.” Those
sources include “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.”

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For the Northern District of California

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Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005).

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The Federal Circuit has underscored that the specification of a patent “‘is always highly

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relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the

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meaning of a disputed term.’” Id.; see also id. at 1317-19 (noting that “extrinsic evidence may be

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useful to the court, but it is unlikely to result in a reliable interpretation of patent claim scope unless

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considered in the context of the intrinsic evidence”). However, the Federal Circuit has also

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cautioned that, “‘[w]hile claim terms are understood in light of the specification, a claim

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construction must not import limitations from the specification into the claims.’” Deere & Co. v.

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Bush Hog, LLC, 703 F.3d 1349, 1354 (Fed. Cir. 2012). In fact, “[e]ven when the specification

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describes only a single embodiment, the claims of the patent will not be read restrictively unless the

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patentee has demonstrated a claim intention to limit the claim scope using ‘words or expressions of

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manifest exclusion or restriction.’” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed.

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Cir. 2004).

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B.

“maintaining . . . [an] association”1

Pragmatus

Yahoo

Court

maintaining . . . a relationship

storing a persistent
relationship or link;

maintaining . . . a relationship

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or

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storing a persistent
relationship (see Resp. Br. at 6
(stating that Yahoo is willing
to drop “link”))

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For purposes of claim construction, claim 1 of the ‘470 patent is a representative claim for
the term “maintaining . . . [an] association.” Claim 1 of the ‘470 patent provides in relevant part as

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follows:

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1. A method comprising:

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maintaining a first association between a first user and corresponding
addressing information of a first communication device used by the
first user to log in;

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maintaining a second association between a second user and
corresponding addressing information of a second communication
device used by the second user to log in, wherein the second
communication device is separated from the first communication
device by a wide area network;

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wherein the first and second associations are dynamically changeable
by keeping track of client programs at the respective communication
devices so that the first and second users, if logged in, can be found no
matter where they are located . . . .

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‘470 patent, claim 1 (emphasis added).
The parties’ basic dispute here is whether “maintaining . . . [an] association” has a “store”
and/or “persist” requirement. Yahoo argues that it does; Pragmatus argues to the contrary.
Yahoo’s contention that there is a “persistent” association is problematic. According to
Yahoo, “persist” is appropriate because the term “maintain” inherently has a time component to it,

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‘470 patent: claims 1, 2, 16, 17, 29, 30, 43, 44.

‘921 patent: claims 1, 3, 13, 17, 25, 33.

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as supported by dictionary definitions of the term. See, e.g., Patariu Decl., Ex. E (Merriam

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Webster’s Collegiate Dictionary, 10th ed. (1995)) (defining “maintain” as, inter alia, “to keep in an

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existing state (as of repair, efficiency, or validity),” “to preserve from failure or decline,” and “to

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continue or persevere in”). While the term “maintain” does have a time component to it, “persist”

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seems to take that time component to an extreme; “persist” suggests that things cannot be changed

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and will continue indefinitely. As Pragmatus contends, that is contrary to the language of claim 1

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which states that “the first and second associations are dynamically changeable.” ‘470 patent, claim

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1. Furthermore, Yahoo’s responsive brief essentially admits that the association simply lasts “for a

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period of time” – not indefinitely. See Resp. Br. at 6 (“The claims require that the association be
stored for a period of time so that other users can be found and collaborated with ‘no matter where

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they are located.’”) (emphasis added).

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As for the “store” requirement, here, the Court is more sympathetic to Yahoo’s position.

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Parts of the specification do support the idea of storage – which makes sense because, in order for an

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association (between a user of a communication device and addressing information of that device) to

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be maintained, that information should be kept or stored somewhere. For example:

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In the section titled “Basic Two-Party Videoconferencing,” the specification notes as

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follows: “When a caller initiates a call (e.g., by selecting a user from the graphical rolodex

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and clicking the call button or by double-clicking the face icon of the callee on the quick-dial

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panel), the caller’s Collaboration Initiator responds by identifying the selected user and

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requesting that user’s address from Directory Service 66, as indicated by (2) in FIG. 23.

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Directory Service 66 looks up the callee’s address in the directory database, as indicated by

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(3) in FIG. 23, and then returns it to the caller’s Collaboration Initiator, as illustrated by (4)

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in FIG. 23.” ‘470 patent, col. 21:66-22:8 (emphasis added).

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In the abstract, the following statement is included: “Further, the method comprises

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maintaining service records for at least the first and second logged in users, the service

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records including user identification information and an associated location where each user

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is logged in.” ‘470 patent, abstract (emphasis added).

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Furthermore, in its reply brief, Pragmatus does not really take issue with the concept of

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storage per se; rather, its real beef is with the notion that the storage must be persistent or permanent

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instead of temporary. See, e.g., Reply at 1 (stating that “nothing in the specification or claims

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requires that this relationship be ‘stored’ in persistent storage, such as a hard disk, just that it be

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maintained during communication between the users”; also noting that “databases and the data

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stored within them are often temporary – not persistent”).

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Nevertheless, the Court finds that the concept of “store” is implicit in the term “maintain.”
The Court therefore deems it unnecessary to use the word “storing” in its construction.

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Because the Court rejects both Yahoo’s proposal of “storing” and “persistent,” it simply
construes the phrase “maintaining . . . [an] association” as maintaining a relationship.

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C.

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“addressing information”2

Pragmatus

Yahoo

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network location information

physical location

network location information

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Similar to above, claim 1 of the ‘470 patent is a representative claim for the term “addressing
information.” Claim 1 of the ‘470 patent provides in relevant part as follows:

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1. A method comprising:

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maintaining a first association between a first user and corresponding
addressing information of a first communication device used by the
first user to log in;

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maintaining a second association between a second user and
corresponding addressing information of a second communication
device used by the second user to log in, wherein the second
communication device is separated from the first communicaiton
device by a wide area network;

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wherein the first and second associations are dynamically changeable
by keeping track of client programs at the respective communication
devices so that the first and second users, if logged in, can be found no
matter where they are located . . . .

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‘470 patent: claims 1, 16, 29, 43.

‘921 patent: claims 1, 13, 25.

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‘470 patent, claim 1 (emphasis added).
According to Yahoo, “addressing information” means physical location. According to

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Pragmatus, “‘network location information’ . . . is more technically precise and accurate” because,

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“[a]lthough network locations will inevitably correspond to physical locations, . . . it is the network

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location that is used to make and receive calls.” Reply at 2-3. At the hearing, Pragmatus stated that

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it would not object to Yahoo’s construction so long as it was understood that an IP address could be

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a physical location – i.e., because, even if a virtual address, an IP address ultimately corresponds to a

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physical location.

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In its papers, Yahoo argues that the Court should reject Pragmatus’s construction because
“nowhere in the specification does it state that ‘addressing information’ is ‘network location

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information.’” Resp. Br. at 7. But, at the hearing, Yahoo also admitted that nowhere in the

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specification is “addressing information” limited to a physical location either. Indeed, the fact that a

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communication device can be a wireless device makes it questionable whether there can be a precise

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physical location for that device, at least a permanent one. See, e.g., ‘470 patent, claim 5 (covering

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“[t]he method of claim 1, wherein the first communication device is a wireless device”). Given the

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nature of the invention, which facilitates connectivity among devices through the networks,

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including the Internet, and the fact that the invention acknowledges wireless devices, limiting

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“addressing information” to physical location rather than network location information makes no

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functional sense. Nor is such a limitation found in the claim language or specification.

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Yahoo nonetheless argues that “addressing information” must mean a physical location

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because of a 2013 decision issued by the Patent Trial and Appeal Board (“PTAB”) during a

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reexamination proceeding involving the ‘470 patent. See Docket No. 43-5 (Patariu Decl. ¶ 5 & Ex.

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D) (decision). The relevant part of the PTAB decision is as follows:

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We begin our analysis by first considering the scope and
meaning of the claim term “addressing information,” which must be
given its broadest reasonable interpretation consistent with the
disclosure in the ‘470 patent. See In re Trans Texas Holdings Corp.,
498 F.3d 1290, 1298 (Fed. Cir. 2007); see also In re Yamamoto, 740
F.2d 1569, 1571 (Fed. Cir. 1984) (during a reexamination proceeding,
claims are given their broadest reasonable interpretation consistent
with the specification and limitations from the specification are not
read into the claims). As support for the disputed claim term, both

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Appellant [Facebook] and Respondent [Pragmatus] direct us to
column 5, line 60 through column 6, line 13; column 21, lines 15-17;
and column 22, lines 13-16.4 App. Br. at 9; Respondent Br. at 10. The
relevant portions of the ‘470 Specification are reproduced below:

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The ‘470 Specification discloses “maintaining service records
for at least the first and second logged in users, the service
records including user identification information and an
associated location where each user is logged in.” Spec. 6:1-4.

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The ‘470 Specification discloses that “service records are
entered into the Service Server’s service database. The service
database thus keeps track of the location of client programs and
the types of collaborative sessions in which they can
participate. This allows the Collaboration Initiator to find
collaboration participants no matter where they are located.”
Spec. 21: 11-17.

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The ‘470 Specification discloses that “[t]his service record
identifies the location of the callee’s Collaboration Initiator as
well as the network ports that the callee is connected to.”
Spec. 22:13-16.

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Upon reviewing the relevant portions of the ‘470 Specification,
we conclude that the claim term “addressing information” may be
broadly, but reasonably construed as the physical location of a
communication device used by a prospective user to log in. Moreover,
during the oral argument, Respondent [Pragmatus] confirmed that
address information constitutes a physical location. Hearing Tr. at 30
(see, e.g., Respondent analogizes the address of a house to the claimed
“addressing information” of a device). That confirmation is consistent
with our construction of the claim term “addressing information.”

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Docket No. 43-5 (PTAB Decision at 9-10). According to Yahoo, because the PTAB concluded that

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the broadest definition of the term “addressing information” is physical location, network location

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information (such as an IP address) – which is broader in meaning than physical location – is

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necessarily an inappropriate construction.

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The problem for Yahoo is that this Court owes no deference to the PTAB’s claim

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construction done as part of an inter partes review. See Rensselaer Polytechnic Inst. v. Apple Inc.,

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No. 1:13-CV-0633 (DEP), 2014 U.S. Dist. LEXIS 5186, at *29 (N.D.N.Y. Jan. 15, 2014) (in case

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decided after America Invents Act (“AIA”) went into effect, stating that “[t]he focus of the PTAB in

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[inter partes review] is upon validity; even if an IPR is conducted, that administrative body will not

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engage in claim construction[;] [i]n making its determination, the PTAB is mandated to accord claim

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terms their broadest possible construction”); cf. SRAM Corp. v. AD-II Eng’g Inc., 465 F.3d 1351,

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1359 (Fed. Cir. 2006) (in case decided before AIA went into effect, stating that “this court is not

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bound by the PTO’s claim interpretation [in inter partes reexamination] because we review claim

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construction de novo”).3

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Ultimately, what is important here is not what the PTAB said about the claim term

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“addressing information” but rather what Pragmatus said about the term in the proceedings before

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the PTAB and whether any disavowal or estoppel argument may be asserted based thereon. Under

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Federal Circuit law, comments made by a patent holder during inter partes reexamination

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proceedings can limit claim scope. See Grober v. Mako Prods., 686 F.3d 1335, 1341 (Fed. Cir.

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2012) (“When a patentee makes a ‘clear and unmistakable disavowal of scope during prosecution,’ a
claim’s scope may be narrowed under the doctrine of prosecution disclaimer. Statements made

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during reexamination can also be considered in accordance with this doctrine. . . . [T]he doctrine of

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prosecution disclaimer only applies to unambiguous disavowals.”). The same should be true now

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that inter partes review, rather than inter partes reexamination, is in effect. See note 3, supra.

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During the PTAB proceeding, Pragmatus stated, inter alia, with respect to “addressing
information”:

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We agree that the addressing information can be expressed in
many forms. And really need only allow the system to direct
information to the destination computer. That is what the phrase,
addressing information means.

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However there are additional words in these claims. There’s a
specific type of addressing information and it is addressing
information of the device used by the user to log in.

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Those words have to mean something under the doctrines of
claim differentiation. The prior art uses information such as port
addresses of the server and dial-in phone numbers to allow
communications but it did not use addressing information of the
device.

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Characteristics of the device that allow the device to be
identified. Such as a Mac address, as an example, software on the
device, an internet address.

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“Effective September 16, 2012, the Leahy-Smith America Invents Act (‘AIA’) amended the
inter partes reexamination process and renamed it the inter partes review process. The AIA
converted the process from an examination to an adjudicative one.” Tas Energy, Inc. v. San Diego
Gas & Elec. Co., No. 12cv2777-GPC(BGS), 2014 U.S. Dist. LEXIS 26107, at *4 (S.D. Cal. Feb. 26,
2014).

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Docket No. 43-4 (Patariu Decl., Ex. C) (Tr. at 24-25) (emphasis added). None of what Pragmatus

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stated in this passage suggests that “addressing information” means a physical location.

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Moreover, later in the proceeding, Pragmatus indicated that an IP address could be
addressing information.
I think one important feature of the disclosed embodiment in
the specification, is that it operated across networks and Wide Area
Networks. . . .
Users work stations were accessed through data LAN hubs in
the disclosed embodiment. Now in order to route through a hub and
through a Wide Area Network or Local Area Network, various
information of the destination device is generally needed.

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It could be an IP address and current ITC IP address
networks. At this time there are many different network architectures
being used. But it was not a simple open connection that someone
connected to in this embodiment.
So this system, using the steps of Figure 23, would contact, the
user would contact the director server, would look up the addressing
information of the communication device used by another user to log
in. Then the system would use that addressing information to enable
communication between the users.

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Docket No. 43-4 (Patariu Decl., Ex. C) (Tr. at 39-40) (emphasis added); see also ‘470 patent, col.

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8:38-44 (“Control of A/V Switching Circuitry 30, conference bridges 35 and WAN gateway 40 in

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FIG. 3 is provided by MLAN [multimedia local area network] Server 60 via lines 60b, 60c, and 60d,

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respectively. In a preferred embodiment, MLAN Server 60 supports the TCP/IP network protocol

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suite. Accordingly, software processes on CMWs [collaborative multimedia workstations] 12

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communicate with one another and MLAN Server 60 via MLAN 10 using these protocols.”).

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Yahoo claims, however, that the following exchange between a PTAB judge (Judge
Giannetti) and Pragmatus (Mr. Kaufman, counsel) supports its position:

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JUDGE GIANNETTI:

Can a port be an address information?

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MR. KAUFMAN:

Can a port be addressing information?

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JUDGE GIANNETTI:

In a dial-up system, for example, where
you dial from a particular port. Can’t
that port be an address for the device?

MR. KAUFMAN:

A port could be an address for the device
of which the port is one.

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MR. KAUFMAN:

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JUDGE GIANNETTI:

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MR. KAUFMAN:

Pardon me for really parsing words very
carefully here, because it is important. I
would say that these ports can be
addressing information of this device,
the server. Because they can be used to
locate that server.

JUDGE GIANNETTI:

It can be used to locate the device too,
can’t they?

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MR. KAUFMAN:

The device that the user uses to log in?

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JUDGE GIANNETTI:

Right.

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MR. KAUFMAN:

No they can’t.

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JUDGE GIANNETTI:

Why not?

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MR. KAUFMAN:

Because that port number there tells us
nothing about the device. The device
must reach out to that port by dialing in.

JUDGE GIANNETTI:

Once they’re dialed in, once they’re
logged in, if you send a message to that
particular port, isn’t that addressing it to
the device?

MR. KAUFMAN:

It is addressing it to the server.

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For the Northern District of California

Well let’s take your figure. I’m looking
at your chart. I think it’s the next slide
where it shows two users logged in to a
CompuServe server and one’s on one
port and the other’s on the other.
But why can’t the port, by which a
particular user logged into be an . . .
address of the device?

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United States District Court

So a port of the server, for example, I
think would fit the definition of
addressing information of the server.

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MR. KAUFMAN:
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[I]t is addressing information. That can
be used to find the device, but it does not
tell us anything about, it’s not of the
device because it’s not a characteristic
of the device.

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....

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JUDGE GIANNETTI:

Well the device is at one end of the
analog phone line and the port is at the
other end. So I’m sending to one end
and it’s going through the pipe, through
the analog line, to the device. Why am I
not addressing the device by sending it
to the line?

MR. KAUFMAN:

Well let me, it’s because the system
knows nothing about where that device
is and has no information. It’s not using
addressing information of the device to
make the communication.

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It [would] be very similar to if I would
like to deliver you a holiday card, Judge
Giannetti, I don’t need to know the
address of your house if I just reach out
and give it to you right now.

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JUDGE GIANNETTI:

What if –

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MR. KAUFMAN:

If I want to send it by mail, I have to
know the address of your house.

JUDGE GIANNETTI:

What if you send it to a Post Office
Box?

MR. KAUFMAN:

I would say that, that is not the address
of your house and that there must be
some other information to get to your
house.

JUDGE GIANNETTI:

But it’s my Postal Address. Isn’t that
analogous to the port?

MR. KAUFMAN:

It is your postal address, but I’m now
talking about, I’m analogizing the house
to the device. And I think that that is
reading out the words of the device.

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We’ve all agreed that addressing
information generally is information
sufficient to get from one end to the
other. But it’s not of the device.
Docket No. 43-4 (Patariu Decl., Ex. C) (Tr. at 25-29) (emphasis added).
But the above colloquy makes clear that Pragmatus was analogizing a house (a “physical

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location”) to a device simply to clarify that addressing information of a device has to be a

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characteristic of the device. By making this analogy, there was no clear “‘clear and unmistakable

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disavowal of scope’” – i.e., that “addressing information” must mean a physical location. Grober v.

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Mako Prods., 686 F.3d at 1341 (Fed. Cir. 2012) (emphasizing that “the doctrine of prosecution

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disclaimer only applies to unambiguous disavowals”). This is particularly so in light of other

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comments by Pragmatus quoted above which indicate addressing information is not a physical

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location.

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Finally, the Court notes it is far from clear (based on the record) that Pragmatus needed to

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disclaim anything but physical location as “addressing information” in order to avoid the prior art.

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That is, Yahoo has failed to adequately explain why Pragmatus needed to disavow an IP address as

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“addressing information” in order to avoid prior art when the prior art focused on the use of
telephone numbers, which are distinguishable from IP addresses. See Docket No. 43-5 (Patariu

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Decl., Ex. D) (PTAB Decision at 12) (“[W]e cannot say with certainty . . . that Bowen’s disclosure

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of accessing the CompuServe system by dialing in to a packet-switch network necessarily

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encompasses maintaining the physical location of a communication device used by a prospective

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user to log in. [¶] Moreover, while it may be possible to rely upon the local access numbers

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associated with Bowen’s packet-switch networks . . . to ascertain the physical location of the

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communication device used by a prospective user to log in to the CompuServe system, those local

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access numbers, at best, only provides the area code where the user is located.”).

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Accordingly, the Court rejects Yahoo’s proposal that “addressing information” must mean

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physical location. Instead, the Court adopts Pragmatus’s construction – i.e., network location

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information,” particularly as such a construction is consistent with the comments Pragmatus made to

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the PTAB.

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D.

“keeping track of client programs”4

Pragmatus

Yahoo

Court

keeping track of the location
of client programs

receiving and storing the
physical location information
and communication
capabilities from software that
controls physical input and
output connections

keeping track of the location
of client programs

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Similar to above, claim 1 of the ‘470 patent is a representative claim for the term “keeping
track of client programs.” Claim 1 provides in relevant part:
1. A method comprising:

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maintaining a first association between a first user and corresponding
addressing information of a first communication device used by the
first user to log in;

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maintaining a second association between a second user and
corresponding addressing information of a second communication
device used by the second user to log in, wherein the second
communication device is separated from the first communication
device by a wide area network;

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wherein the first and second associations are dynamically changeable
by keeping track of client programs at the respective communication
devices so that the first and second users, if logged in, can be found no
matter where they are located . . . .

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21

‘470 patent, claim 1 (emphasis added).
Pragmatus’s construction – i.e., keeping track of the location of client programs – is
supported by the specification for the ‘470 patent.
Before client programs can access audio/video resources
through the AVNM [Audio Video Network Manager], they must
register the collaborative services they provide with the Service Server
69. Examples of these services indicate “video call,” “snapshot
sharing,” “conference” and “video file sharing.” These service records
are entered into the Service Server’s service database. The service
database thus keeps track of the location of client programs and the
types of collaborative sessions in which they can participate. This

22
23
24
25
26
27
28

4

‘470 patent: claims 1, 16, 29, 43.

‘921 patent: claims 1, 13, 25.

13

1

allows the Collaboration Initiator to find collaboration participants no
matter where they are located.

2
3

‘470 patent, col. 21:7-17 (emphasis added). Yahoo argues that it is the physical location that is

4

tracked but, as discussed above in conjunction with “addressing information,” physical location is

5

not an appropriate limitation.

6

Yahoo protests still that Pragmatus’s construction is deficient because it does not define what

7

a client program is or does. According to Yahoo, there should be language in the construction

8

indicating that client programs “control the physical input and output connections for audio

9

devices.” Resp. Br. at 8. Yahoo relies on the following part of the specification in support:

15

In response to client program requests, the AVNM provides
connectivity between audio/video devices by connecting their ports.
Connecting ports is achieved by switching one port’s physical input
connections to the other port’s physical output connections (for both
audio and video) and vice-versa. Client programs can specify which
of the 4 physical connections on its ports should be switched. This
allows client programs to establish unidirectional calls (e.g., by
specifying that only the port’s input connections should be switched
and not the port’s output connection) and audio-only or video-only
calls (by specifying audio connections only or video connections
only”).

16

‘470 patent, col. 20:59-21:3. But the fact that client programs “can specify which of the 4 physical

17

connections on its ports should be switched” (emphasis added) indicates that Yahoo’s language is

18

too strong; the specification does not say the client programs “must” control physical input and

19

output connections.

11
For the Northern District of California

United States District Court

10

12
13
14

20
21
22
23
24
25
26

Pragmatus further argues that the physical requirement desired by Yahoo is misplaced
because
the patents-in-suit are not limited to ‘physical . . . connections’
between the communication devices. . . . [T]he patents-in-suit
expressly disclose the use of the invention in the context of wireless
devices and the Internet where no physical connection exists between
a caller and callee. Indeed, Yahoo!’s proposal that a physical
connection is required has been considered and rejected multiple times
by judges in the Northern District of California when analyzing U.S.
Patent No. 5,896,500, which is related to and shares the same
specification as the patents-in-suit.

27

Op. Br. at 8 (citing Docket Nos. 42-4 and-5) (Belloli Decl., Exs. D-E) (orders from Judge Chesney

28

and Judge Patel regarding, inter alia, the ‘500 patent). Here, the Court does not find Pragmatus’s

14

1

reliance on the Judge Chesney and Judge Patel orders convincing (e.g., those orders focus on a

2

completely different term, “AV path”). Nonetheless, Yahoo’s position remains problematic because

3

the fact that client programs “can specify which of the 4 physical connections on its ports should be

4

switched,” 470 patent, col. 20:59-21:3 (emphasis added), does not establish that there must always

5

be physical connections.

6
7
8
9

E.

“active communication”/“existing communication”5

Pragmatus

Yahoo

Court

plain and ordinary meaning;
no construction necessary

communication where the call
handle is in the active state

plain and ordinary meaning

11
For the Northern District of California

United States District Court

10

The Court therefore adopts Pragmatus’s construction.

12

For the terms “active communication” and “existing communication,” claims 1 and 13 of the

13

‘470 patent are representative claims. Claim 1 provides:

14

1. A method comprising:

15

maintaining a first association between a first user and corresponding
addressing information of a first communication device used by the
first user to log in;

16
17

maintaining a second association between a second user and
corresponding addressing information of a second communication
device used by the second user to log in, wherein the second
communication device is separated from the first communication
device by a wide area network;

18
19
20

wherein the first and second associations are dynamically changeable
by keeping track of client programs at the respective communication
devices so that the first and second users, if logged in, can be found no
matter where they are located;

21
22

presenting a user interface on a display associated with the first
communication device, the user interface including at least one of a
scrollable list of identifiers of a plurality of users and a dial panel of
identifiers for at least a subset of users from the scrollable list, wherein
at least one of the scrollable list and the dial panel includes an
identifier for the second user;

23
24
25
26
27
28

5

‘470 patent: claims 1, 10, 13, 16, 24, 27, 29, 36, 37, 43, 48.

‘921 patent: claims 1, 6, 7, 13, 21, 22, 25, 30, 31.

15

1

if the second user is not logged in, indicating to the first user
that the second user is not logged in;

2
3
4
5
6

allowing the first user to select from the user interface the
identifier of the second user;
in response to the first user selecting the identifier of the
second user and if the second user is logged in, using the addressing
information of the second communication device to allow
communication between the first and second users, the communication
being established using either a communication type selected by the
first user or a default communication type;

7
8

detecting an incoming request for communication, from at least
a third user, at the first communication device of the first user during
an active communication with the second user;

9
indicating to the first user the third user; and
11
For the Northern District of California

United States District Court

10

12
13
14

providing the first user with an option of accepting the
incoming request for communication with the third user.
‘470 patent, claim 1 (emphasis added).
Claim 13 provides:
13. The method of claim 1, further comprising allowing the
first user to:

15
16

select one or more users from among the plurality of users by
selecting corresponding identifiers associated with the selected one or
more users; and

17
18
19
20

add the selected one or more users to an existing
communication.
‘470 patent, claim 13 (emphasis added).
The Court rejects Yahoo’s proposed construction of “active communication”/“existing

21

communication.” First, Yahoo’s construction contains a confusing term itself – i.e., “callhandle.”

22

Callhandle appears nowhere in the claims themselves; rather, it is a term that is used in the

23

specification only.

24
25
26
27

Second, it is true that callhandles are expressly called out in the specification. For example:
[T]he AVNM [Audio Video Network Manager] manages the switches
in the A/V Switching Circuitry 30 in FIG. 3 to provide port-to-port
connections in response to connection requests from clients. The
primary data structure used by the AVNM for managing these
connections will be referred to as a callhandle, which is comprised of
a plurality of bits, including state bits.

28

16

1

Each port-to-port connection managed by the AVNM
comprises two callhandles, one associated with each end of the
connection. The callhandle at the client port of the connection
permits the client to manage the client’s end of the connection. The
callhandle mode bits determine the current state of the callhandle and
which of a port’s four switch connections (video in, video out, audio
in, audio out) are involved in a call.

2
3
4
5

AVNM clients send call requests to the AVNM whenever they
want to initiate a call. As part of a call request, the client specifies the
local service in which the call will be involved, the name of the
specific port to use for the call, identifying information as to the
callee, and the call mode. In response, the AVNM creates a callhandle
of the caller’s port.

6
7
8

All callhandles are created in the “idle” state. The AVNM
then puts the caller’s callhandle in the “active” state. The AVNM next
creates a callhandle for the callee and sends it a call event, which
places the callee’s callhandle in the “ringing” state. When the callee
accepts the call, its callhandle is placed in the “active” state, which
results in a physical connection between the caller and the callee.
Each port can have an arbitrary number of callhandles bound to it, but
typically only one of these callhandles can be active at the same time.

9

11
For the Northern District of California

United States District Court

10

12
13

‘470 patent, col. 22:54-64 (emphasis added). However, the above discussion refers only to the

14

preferred embodiment of the invention, see ‘470 patent, col. 6:15-16, and “[a]n accused infringer

15

cannot overcome the plain meaning of a claim term ‘simply by pointing to the preferred embodiment

16

or other structures or steps disclosed in the specification or prosecution history.’” Toshiba Corp. v.

17

Imation Corp., 681 F.3d 1358, 1369 (Fed. Cir. 2012). Pragmatus did not disavow or disclaim an

18

active/existing communication except through a callhandle in the active state. See DealerTrack, Inc.

19

v. Huber, 674 F.3d 1315, 1327 (Fed. Cir. 2012) (stating that “‘it is improper to read limitations from

20

a preferred embodiment described in the specification – even if it is the only embodiment – into the

21

claims absent a clear indication in the intrinsic record that the patentee intended the claims to be so

22

limited”).

23

Finally, because the meaning of “active/existing communication” is obvious on its face, the

24

Court need not construe the term beyond its plain and ordinary meaning.

25

///

26

///

27

///

28

///

17

1
2
3
4
5

F.

“indicating”/“indication”6

Pragmatus

Yahoo

Court

providing notice visually or by
sound

providing notice visually and
by sound

providing notice visually
and/or by sound

a notice provided visually or
by sound

a notice provided visually and
by sound

a notice provided visually
and/or by sound

6
7
8

Once again, claim 1 of the ‘470 patent is a representative claim, this time for the term
“indicating”/“indication.” Claim 1 provides:

9

1. A method comprising:
maintaining a first association between a first user and corresponding
addressing information of a first communication device used by the
first user to log in;

11
For the Northern District of California

United States District Court

10

12

maintaining a second association between a second user and
corresponding addressing information of a second communication
device used by the second user to log in, wherein the second
communication device is separated from the first communication
device by a wide area network;

13
14
15

wherein the first and second associations are dynamically changeable
by keeping track of client programs at the respective communication
devices so that the first and second users, if logged in, can be found no
matter where they are located;

16
17

presenting a user interface on a display associated with the first
communication device, the user interface including at least one of a
scrollable list of identifiers of a plurality of users and a dial panel of
identifiers for at least a subset of users from the scrollable list, wherein
at least one of the scrollable list and the dial panel includes an
identifier for the second user;

18
19
20
21

if the second user is not logged in, indicating to the first user
that the second user is not logged in;

22
allowing the first user to select from the user interface the
identifier of the second user;

23
24

in response to the first user selecting the identifier of the
second user and if the second user is logged in, using the addressing
information of the second communication device to allow
communication between the first and second users, the communication

25
26
27
28

6

‘470 patent: claims 1, 16, 29, 43.

‘921 patent: claims 1, 13, 25, 32.

18

1

being established using either a communication type selected by the
first user or a default communication type;

2
3

detecting an incoming request for communication, from at least
a third user, at the first communication device of the first user during
an active communication with the second user;

4
indicating to the first user the third user; and
5
6
7
8

providing the first user with an option of accepting the
incoming request for communication with the third user.
‘470 patent, claim 1 (emphasis added).
As a preliminary matter, the Court takes note that Pragmatus’s proposed construction of

opening brief, Pragmatus’s actual position is that “‘indication’ can be a visual, a sound, or both. It

11
For the Northern District of California

“indicating”/“indication” does not accurately reflect its position on the merits. As evidenced in its

10

United States District Court

9

just does not have to be both.” Op. Br. at 12. Thus, what Pragmatus should have provided as a

12

construction for “indicating” is “providing notice visually and/or by sound.”

13

In its papers, Yahoo argues that there must always be both visual and aural notice (i.e., visual

14

notice alone or aural notice alone would not be enough) based on excerpts from the ‘470

15

specification found in columns 35-38. See Resp. Br. at 10-11. See, e.g., ‘470 patent, col. 36:60-64

16

(“While discussing the Expert’s advice, field representative 201 makes annotations 222 to image

17

220 in order to illustrate his concerns. While responding to the concerns of the field representative

18

201, the Expert hears a beep and receives a visual notice (New Call window 223) on his screen (not

19

visible to the field representative and his client), indicating the existence of a new incoming call and

20

identifying the caller.”). But Yahoo’s problem, once again, is that it relies on a preferred

21

embodiment, and there is no clear indication in the specification that the patentee intended the

22

preferred embodiment to be the exclusive embodiment, thereby disclaiming any claim scope. See

23

‘470 patent, col. 35:15-24 (“In order to illustrate how the present invention may be implemented and

24

operated, an exemplary preferred embodiment will be described having features applicable to the

25

aforementioned scenario involving remote access to expertise. It is to be understood that this

26

exemplary embodiment is merely illustrative, and is not to be considered as limiting the scope of the

27

invention, since the invention may be adapted for other applications (such as in engineering and

28

manufacturing) or uses having more or less hardware, software and operating features and combined

19

1

in various ways.”).

2
3

Moreover, Pragmatus points to a part of the specification which reflects that an “indication”
can be made by visual notice alone.

4

After a call has been set up, AVNM clients can send requests
to the AVNM to change the state of the call [i.e., active or not], which
can advantageously be accomplished by controlling the callhandle
states. For example, during a call, a call request from another party
could arrive. This arrival could be signaled to the user by providing
an alert indication in a dialogue box on the user’s CMW
[Collaborative Multimedia Workstation] screen. The user could refuse
the call by clicking on a refuse button in the dialogue box, or by
clicking on a “hold” button on the active call window to put the
current call on hold and allow the incoming call to be accepted.

5
6
7
8
9

‘470 patent, col. 23:13-22. In its brief, Yahoo argues that the above excerpt is not on point because

11
For the Northern District of California

United States District Court

10

“the focus is on describing call state changes that happen during a teleconference, not describing the

12

alert indications.” Resp. Br. at 11. But that argument is not persuasive because the text above

13

clearly refers to “an alert indication in a dialogue box on the user’s screen.”

14
15
16
17
18

The Court therefore construes “indicating” as providing notice visually and/or by sound.
G.

“revealing a corresponding identifier”7

Pragmatus

Yahoo

Court

making known or showing the
corresponding identifier

displaying previously hidden
identifier

making known or showing the
corresponding identifier

19
20

For this claim term, a representative claim is claim 16 of the ‘470 patent.

21

16. A method comprising:

22

maintaining a first association between a first user and corresponding
addressing information of a first communication device used by the
first user to log in, wherein the first communication device is a
wireless device;

23
24

maintaining a second association between a second user and
corresponding addressing information of a second communication
device used by the second user to log in, wherein the second
communication device is separated from the first communication
device by a wide area network;

25
26
27
28

7

‘470 patent: claims 16, 29.

20

1
2
3
4
5
6
7
8
9

wherein the first and second associations are dynamically changeable
by keeping track of client programs at the respective communication
devices so that the first and second users, if logged in, can be found no
matter where they are located;
presenting a user interface on a display associated with the first
communication device, the user interface including identifiers of a
plurality of users including an identifier for the second user, wherein
information associated with at least the second user is retrieved from
at least one server;
allowing the first user to request communication with the
second user by selecting the identifier of the second user from the user
interface;
if the second user is not logged in, indicating to the first user
that the second user is not logged in;

11
For the Northern District of California

United States District Court

10
if the second user is logged in, indicating to the second user
that the first user requested communication with the second user
including revealing a corresponding identifier for the first user;

12
13
14
15
16

in response to the first user selecting the identifier of the
second user and if the second user is logged in, using the addressing
information of the second communication device to allow
communication between the first and second users . . . .
‘470 patent, claim 16 (emphasis added).
As the parties note, their dispute regarding “revealing a corresponding identifier” is really

17

over the specific term “revealing.” According to Yahoo, “‘revealing’ means the identifier

18

previously existed but was hidden,” Resp. Br. at 11, while Pragmatus argues that “revealing” simply

19

means making known or shown.

20

Yahoo premises its argument largely on a dictionary definition. But, as Pragmatus points

21

out, not all of the dictionary definitions of “reveal” require that something be hidden. Indeed, the

22

dictionary excerpt provided by Yahoo provides the following definitions for “reveal”:

23
24

1: to make known through divine inspiration 2: to make (something
secret or hidden) publicly or generally known +-a secret, 3: to open up
to view: DISPLAY +the uncurtained window -ed a cluttered room,

25

Docket No. 43-6 (Palariu Decl., Ex. E) (Merriam Webster’s Collegiate Dictionary, 10th ed. (1995)).

26
27
28

Pragmatus also makes a legitimate point in its reply brief that,
as anyone who has used such technology is aware, when you log in to
a telecommunications system you will ordinarily see a list of who is
online and who is not as well as an icon for each person. And then,

21

1

when you get a request for communication, the identity of the person
wishing to communicate with you as well as an icon related to the
person will be communicated to you. But nothing requires the
“corresponding identifiers” to be “hidden” before the request for
communication is made.

2
3
4

Reply at 8.

5
6
7
8
9

Accordingly, the Court rejects Yahoo’s construction and adopt Pragmatus’s.
H.

“[audio/video] communication”8

Pragmatus

Yahoo

Court

an exchange of [audio/video]
information

synchronized, bidirectional
exchange of [audio/video]
information

a real-time exchange of
[audio/video] information
generally shared by
participants

11
For the Northern District of California

United States District Court

10

12

For the term “[audio/video] communication,” a representative claim is claim 6 of the ‘470
patent. Claim 6 is dependent on claim 1. Claim 1 provides as follows:

13

1. A method comprising:

14

maintaining a first association between a first user and corresponding
addressing information of a first communication device used by the
first user to log in;

15

maintaining a second association between a second user and
corresponding addressing information of a second communication
device used by the second user to log in, wherein the second
communication device is separated from the first communication
device by a wide area network;

16
17
18

wherein the first and second associations are dynamically changeable
by keeping track of client programs at the respective communication
devices so that the first and second users, if logged in, can be found no
matter where they are located;

19
20
21

presenting a user interface on a display associated with the first
communication device, the user interface including at least one of a
scrollable list of identifiers of a plurality of users and a dial panel of
identifiers for at least a subset of users from the scrollable list, wherein
at least one of the scrollable list and the dial panel includes an
identifier for the second user;

22
23
24

if the second user is not logged in, indicating to the first user
that the second user is not logged in;

25
26
27
28

8

‘470 patent: claims 6, 8, 20, 23, 33, 39, 42, 49.

‘921 patent: claims 16 and 27.

22

1
allowing the first user to select from the user interface the
identifier of the second user;

2
3

in response to the first user selecting the identifier of the
second user and if the second user is logged in, using the addressing
information of the second communication device to allow
communication between the first and second users, the communication
being established using either a communication type selected by the
first user or a default communication type;

4
5
6

detecting an incoming request for communication, from at least
a third user, at the first communication device of the first user during
an active communication with the second user;

7
8

indicating to the first user the third user; and
9
providing the first user with an option of accepting the
incoming request for communication with the third user.

11
For the Northern District of California

United States District Court

10

12

‘470 patent, claim 1 (emphasis added).
Claim 6, in turn, provides as follows.

13

6. The method of claim 1, wherein the communication between the
first and second users includes at least one of a set consisting of audio
communications, video communications, snapshot sharing, and data
conferencing.

14
15
16
17

‘470 patent, claim 6 (emphasis added).
As Pragmatus notes, the parties are in agreement that an audio/video communication is an

18

exchange of information; the only dispute is whether the communication has to be both bidirectional

19

and synchronized, as Yahoo contends. See Op. Br. at 14.

20

Regarding synchronization, Pragmatus clarified at the hearing that it did not take issue with

21

Yahoo’s construction to the extent Yahoo simply meant that the communication must be in real

22

time. Rather, Pragmatus was more concerned that the use of the specific term “synchronized” would

23

be confusing to the jury. Although parts of the patent indicate that the opposite of real time is

24

“asynchronous”9 – and thus, Yahoo chose to use the word “synchronized” – the word

25
9

26
27
28

See ‘470 patent, col. 5:23-27 (stating that, “[i]n a preferred embodiment, the system
architecture employs separate real-time and asynchronous networks”); ‘470 patent, col. 5:34-42
(stating that “[t]he system architecture also accommodates the situation in which the user’s desktop
computing and/or communications equipment provides varying levels of media-handling
capability[;] [f]or example, a collaboration session – whether real-time or asynchronous – may
include participants whose equipment provides [various] capabilities”).

23

1

“synchronization” appears in other parts of the patent in a different context. For example, in the

2

specification of the ‘470 patent, there is a section titled “Media Synchronization.” That section

3

provides, inter alia:

4
5
6
7
8
9

11
For the Northern District of California

United States District Court

10

12
13

A preferred manner for providing multimedia synchronization
in the preferred embodiment will next be considered. Only
multimedia documents with real-time material need include
synchronization functions and information. Synchronization for such
situations may be provided as described below.
Audio or video segments can exist without being accompanied
by the other. If audio and video are recorded simultaneously (“corecorded”), the preferred embodiment allows the case where their
streams are recorded and played back with automatic synchronization
– as would result from conventional VCRs, laserdisks, or timedivision multiplexed (“interleaved”) audio/video streams. This
excludes the need to tightly synchronize (i.e., “lip-sync”) separate
audio and video sequences. Rather, reliance is on the co-recording
capability of the Real-Time Audio/Video Storage Server 502 to
deliver all closely synchronized audio and video directly at its signal
outputs.
‘470 patent, col. 29:23-40.

14

The Court acknowledges that the excerpt above concerns a different kind of synchronization

15

– i.e., synchronization of audio and video – and that there need not be such synchronization of audio

16

and video if, e.g., a communication consists of audio only or video only, which is contemplated by

17

the patent (as Yahoo admitted at the hearing). See also ‘470 patent, claim 6. Because of the

18

potential for confusion, the Court shall use the term “real time” instead of “synchronized” to convey

19

the idea that a communication must approximate a face-to-face communication in terms of time – in

20

particular, that there is not a significant gap in time between the time that the communication is

21

made to the time that the communication is received. See ‘470 patent, col. 2:4-9 (stating that “[o]ne

22

or more of these other experts may be in a meeting, on another call, or otherwise temporarily

23

unavailable[;] [i]n this event, the expert must communicate ‘asynchronously’ – to bridge time as

24

well as distance”); ‘470 patent, col. 2:15-20 (stating that “telephone answering machines, voice mail,

25

fax machines and conventional electronic mail systems provide incomplete solutions to the problems

26

presented by deferred (asynchronous) collaboration”).

27

At the hearing, Pragmatus did not object to the use of the term “real time” in lieu of

28

“synchronized.” As for Yahoo, it did not object to the use of the term “real time” per se. However,

24

1

it did express concern that a construction that included only the “real time” requirement would be

2

deficient. In other words, according to Yahoo, the addition of the term “bidirectional” was critical

3

because it conveyed something more. As Yahoo stated at the hearing, under the invention claimed,

4

information does not simply have to be transmitted; it also has to be received and utilized so that

5

participants in the communication will all be “on the same page.”

6

But the term “bidirectional” on its face is not particularly informative. Moreover, the term

7

could be misleading because, even though the patent clearly contemplates an exchange of

8

information between parties, that does not necessarily mean that all information is exchanged. See

9

‘470 patent, col. 38-43-64 (discussing “one-way digital video” because of technological constraints).
Therefore, the Court shall address Yahoo’s concern but shall use language different from that

11
For the Northern District of California

United States District Court

10

proposed by Yahoo. At the hearing, the Court proposed that the phrase “generally shared by

12

participants” be added to the construction. Yahoo did not dispute that inclusion of this phrase would

13

largely take care of its concern. Furthermore, Pragmatus stated that this additional language was

14

acceptable.

15

Accordingly, the Court construes “[audio/video] communication” to mean “a real-time

16

exchange of [audio/video] information generally shared by participants.”

17

I.

18
19
20
21

“data conferencing”10

Pragmatus

Yahoo

Court

a communication session
among two or more
participants sharing computer
data in real time

a synchronized, bidirectional
communication session among
two or more participants that
includes: (I) sharing a
snapshot of a computer screen
or (ii) sharing both the display
and control of a running
application; and may also
include annotating the share
data

a communication session
among two or more
participants sharing computer
data in real time, including
snapshot sharing (sharing of
“snapshots” or selected
regions of the user’s screen),
application sharing (shared
control of running
applications), shared
whiteboard (equivalent to
sharing a “blank” window),
and associated telepointing
and annotation capabilities

22
23
24
25
26
27
28

10

‘470 patent: claims 6, 7, 42.

25

1
2

For the term “data conferencing,” claim 6 of the ‘470 patent is a representative claim. Claim
6 provides:

3

6. The method of claim 1, wherein the communication between the
first and second users includes at least one of a set consisting of audio
communications, video communications, snapshot sharing, and data
conferencing.

4
5
6
7

‘470 patent, claim 6 (emphasis added).
Here, the dispute over the term “data conferencing” has two components: (1) whether the

8

communication session must be synchronized and bidirectional and (2) whether the communication

9

session must include either snapshot sharing or application sharing (i.e., sharing both the control and
display of running applications). Yahoo argues that the answer is yes; Pragmatus asserts to the

11
For the Northern District of California

United States District Court

10

contrary.

12

1.

13

The Court shall resolve the dispute regarding synchronized and bidirectional consistent with

Synchronized and Bidirectional

14

its analysis above. That is, the Court shall use the term “real time” instead of “synchronized,” and

15

the Court shall address Yahoo’s “bidirectional” concern by using, in its construction of the term

16

“data conferencing,” words related to sharing.

17

2.

18

At the hearing, Pragmatus clarified that it did not have a problem per se with Yahoo’s

Snapshot or Application Sharing

19

reference to snapshot sharing or application sharing in its proposed construction. Rather, its

20

problem was that Yahoo included only these examples of dataconferencing in its construction but

21

not others, namely, a shared whiteboard. Pragmatus points out that the specification talks about all

22

three kinds of sharing as data conferencing:

23
24
25
26
27
28

As used herein, desk-top teleconferencing includes real-time audio
and/or video teleconferencing, as well as data conferencing. Data
conferencing, in turn, includes snapshot sharing (sharing of
“snapshots” of selected regions of the user’s screen), application
sharing (shared control of running applications), shared whiteboard
(equivalent to sharing a “blank” window), and associated telepointing
and annotation capabilities.
‘470 patent, col. 4:61-5:1.
At the hearing, Yahoo did not object to inclusion of a shared whiteboard. Accordingly, the

26

1

Court adopts the above construction which refers to all three kinds of data sharing.

2

J.

3

“text communications”/“text”11

Pragmatus

5

Court

communications involving
characters

4

Yahoo
synchronized, bidirectional
character transmission

communications involving
characters

6
7

For the term “text communications”/“text,” there are several representative claims from the

8

‘470 patent.

9

•

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For the Northern District of California

United States District Court

10

‘470 patent, claim 7.
•

12
13

“7. The method of claim 6, wherein the data conferencing includes text communications.”

“21. The method of claim 16, wherein the communication includes text.” ‘470 patent, claim
21.

•

“34. The method of claim 29, wherein the communication includes real-time text.” ‘470

14

patent, claim 34.

15

The primary dispute regarding “text communications”/“text” is whether there is a

16

synchronized and bidirectional requirement. As indicated above, in the context of evaluating audio

17

and video communications, the Court did not use the terms “synchronized” and “bidirectional” in its

18

construction; however, it did include language to convey similar concepts – e.g., real time and

19

sharing.

20

With regard to real time, the Court finds that such a limitation is appropriate for audio/video

21

communication but not for text communication/text. First, the specification clearly contemplates

22

that text need not be in real time: “In a preferred embodiment, the system architecture employs

23

separate real-time and asynchronous networks – the former for real-time audio and video, and the

24

latter for non-real-time audio and video, text, graphics and other data, as well as control signals.”

25

‘470 patent, col. 5:23-27 (emphasis added). Second, the doctrine of claim differentiation also

26
27
28

11

‘470 patent: claims 7, 21, 34, 50.

‘921 patent: claims 2, 24, 26.

27

1

supports the conclusion that text need not be in real time. See Starhome GmbH v. AT&T Mobility

2

LLC, 743 F.3d 849, 857-58 (9th Cir. 2014) (stating that “[t]he doctrine of claim differentiation is

3

‘based on the common sense notion that different words or phrases used in separate claims are

4

presumed to indicate that the claims have different meanings and scope’”). For example, the ‘470

5

patent specifically contemplates when real-time text is required and when it is not:

6

•

7
8

21 (emphasis added).
•

9

“34. The method of claim 29, wherein the communication includes real-time text.” ‘470
patent, claim 34 (emphasis added).

10

As for the notion of sharing, that is already subsumed within the claims which refer to a

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For the Northern District of California

United States District Court

“21. The method of claim 16, wherein the communication includes text.” ‘470 patent, claim

communication that includes text. To the extent Yahoo further suggests (as it did at the hearing) that

12

a text communication takes place only in the context of data conferencing, that is not supported by

13

the language of the claims. For example, claim 21 of the ‘470 patent states: “The method of claim

14

16, wherein the communication includes text.” ‘470 patent, claim 21. No reference is made to data

15

conferencing at all. In contrast, claim 7 of the ‘470 patent states: “The method of claim 6, wherein

16

the data conferencing includes text communications.” ‘470 patent, claim 7. The principle of claim

17

differentiation underscores that text communication can but need not take place in the context of

18

data conferencing. While Yahoo argues that the only embodiment of text communication in the

19

specification is within the context of data conferencing, that ignores the well-established Federal

20

Circuit law that, “[e]ven when the specification describes only a single embodiment, the claims of

21

the patent will not be read restrictively unless the patentee has demonstrated a claim intention to

22

limit the claim scope using ‘words or expressions of manifest exclusion or restriction.’” Liebel-

23

Flarsheim, 358 F.3d at 906.

24

The Court therefore simply defines “text communications”/“text” as communications

25

involving characters.

26

///

27

///

28

///

28

1
2
3
4

K.

“establishing communication”/“communication being established”12

Pragmatus

Yahoo

Court

plain and ordinary meaning;
no construction necessary

setting up the necessary
communication paths between
the caller and callee;

plain and ordinary meaning

5

the necessary communication
paths between the caller and
the callee having been set up

6
7
8
9

A representative claim for the term “establishing communication”/“communication being
established” is claim 1 of the ‘470 patent. Claim 1 provides:
1. A method comprising:

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For the Northern District of California

United States District Court

10

maintaining a first association between a first user and corresponding
addressing information of a first communication device used by the
first user to log in;

12

maintaining a second association between a second user and
corresponding addressing information of a second communication
device used by the second user to log in, wherein the second
communication device is separated from the first communication
device by a wide area network;

13
14
15

wherein the first and second associations are dynamically changeable
by keeping track of client programs at the respective communication
devices so that the first and second users, if logged in, can be found no
matter where they are located;

16
17
18

presenting a user interface on a display associated with the first
communication device, the user interface including at least one of a
scrollable list of identifiers of a plurality of users and a dial panel of
identifiers for at least a subset of users from the scrollable list, wherein
at least one of the scrollable list and the dial panel includes an
identifier for the second user;

19
20
21

if the second user is not logged in, indicating to the first user
that the second user is not logged in;

22
23

allowing the first user to select from the user interface the
identifier of the second user;

24

in response to the first user selecting the identifier of the
second user and if the second user is logged in, using the addressing

25
26
27
28

12

‘470 patent: claims 1, 16, 29, 43.

‘921 patent: claim 13.

29

1
2

information of the second communication device to allow
communication between the first and second users, the communication
being established using either a communication type selected by the
first user or a default communication type;

3
4

detecting an incoming request for communication, from at least
a third user, at the first communication device of the first user during
an active communication with the second user;

5
indicating to the first user the third user; and
6
7
8
9

providing the first user with an option of accepting the
incoming request for communication with the third user.
‘470 patent, claim 1 (emphasis added).
The Court agrees with Pragmatus that it can simply rest on plain and ordinary meaning with
respect to the above term. While Yahoo argues that the term here has “a more specific meaning”

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For the Northern District of California

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10

than the “ordinary meaning outside of the context of these claims and patents,” Resp. Br. at 17, that

12

argument is not persuasive – especially because Yahoo’s proposed construction uses language that is

13

very similar to the term language itself.

14

The main difference between Yahoo’s proposed construction and the term on its face is that

15

Yahoo’s proposed construction refers to “communication paths.” But here Pragmatus brings up a

16

valid point – i.e., that Yahoo’s construction requires multiple paths (i.e., plural) when in fact “the

17

preferred embodiment discloses using a single direct path between caller and callee.” Op. Br. at 17.

18

Next to be described in connection with FIG. 4 is the
advantageous manner in which the present invention provides for realtime audio/video/data communication among geographically dispersed
MLANs [Multimedia Local Area Networks] 10 via WAN [Wide Area
Network] 15 (FIG. 1), whereby communication delays, cost and
degradation of video quality are significantly minimized from what
would otherwise be expected.

19
20
21
22

Four MLANs 10 are illustrated at locations A, B, C and D. . . .

23

....

24
25
26

The system also provides optimal routes for audio/video
signals through the WAN. For example, in FIG. 4, location A can
either take a direct route to location D via path 47, or a two-hop route
through location C via paths 48 and 49. If the direct path 47 linking
location A and D is unavailable, the multipath route via location C and
paths 48 and 49 could be used.

27
28

470 patent, col. 10:35-11:16.

30

1

Notably, in its responsive brief, Yahoo fails to address this excerpt from the ‘470

2

specification. Admittedly, Yahoo does point to other parts of the ‘470 specification that suggest

3

multiple paths.

4

•

“For example, to provide multi-party teleconferencing, an initiating CMW 12 signals MLAN

5

Server 60 via Data LAN hub 25 identifying the desired conference participants. After

6

determining which of these conferees will accept the call, MLAN Server 60 controls A/V

7

Switching Circuitry 30 (and CMW software via the data network) to set up the required

8

audio/video and data paths to conferees at the same location as the initiating CMW.” ‘470

9

patent, col. 9:19-26 (emphasis added).
•

“The callee’s Collaboration Initiator then notifies the AVNM as to whether the call will be

11
For the Northern District of California

United States District Court

10

accepted or refused. If the call is accepted (7), the AVNM sets up the necessary

12

communication paths between the caller and the callee required to establish the call. The

13

AVNM then notifies the caller’s Collaboration Initiator that the call has been established by

14

sending it an accept event (8). If the caller and callee are at different sites, their AVNMs will

15

coordinate in setting up the communication paths at both sites, as required by the call.” ‘470

16

patent, col. 22:37-46 (emphasis added).

17

But that there can be multiple communication paths does not necessarily mean that a single

18

communication path is foreclosed.

19

L.

20
21
22

“service programs”13

Pragmatus

Yahoo

Court

set of instructions that tell a
computer to perform a service

indefinite

set of instructions that tell a
computer to perform a service

23
24
25

The dispute over the term “service programs” is really a dispute over whether the term is
indefinite. Under Federal Circuit law, “‘[a] claim is indefinite only when it is not amenable to

26
27
28

13

‘921 patent: claims 1, 6, 7, 8, 9, 13, 21, 22, 23, 25, 29, 30, 31, 32.

31

1

construction or insolubly ambiguous.’”14 Teva Pharms. USA, Inc. v. Sandoz, Inc., 723 F.3d 1363,

2

1368 (Fed. Cir. 2013).

3
4

Claim 1 of the ‘921 patent is a representative claim for the term “service programs”. Claim 1
provides in relevant part:

5

1. A system for use in communication between a plurality of users:

6

one or more service programs; and

7

one or more collaboration initiation programs;

8

wherein at least one of the one or more service programs and one or
more collaboration programs are for:

9
maintaining a first association between a first user and corresponding
addressing information of a second communication device used by the
second user to log in, wherein the second communication device is
separated from the first communication device by a wide area
network; wherein the first and second associations are dynamically
changeable by keeping track of client programs at the respective
communication devices so that the first and second users, if logged in,
can be found no matter where they are located;

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For the Northern District of California

United States District Court

10

12
13
14

presenting a user interface on a display associated with the first
communication device, the user interface including at least one of a
scrollable list of identifiers of the plurality of users and a dial panel of
identifiers for at least a subset of users from the scrollable list, wherein
at least one of the scrollable list and the dial panel includes an
identifier for the second user;

15
16
17

allowing the first user to select the identifier of the second user
from the user interface;

18
19

if the second user is not logged in, indicating to the first user
that the second user is not logged in;

20
in response to the first user selecting the identifier of the
second user and if the second user is logged in, using the addressing
information of the second communication device to allow
communication between the first and second users, the communication
being established using either a communication type selected by the
first user or a default communication type;

21
22
23
24

detecting an incoming request for communication, from at least
a third user, at the first communication device of the first user during
an active communication with the second user;

25
26
14

27
28

The Court notes that “[t]here is some ambiguity in the case law as to whether a finding of
indefiniteness should occur during claim construction, or whether it should occur at a later step.”
ASM Am., Inc. v. Genus, Inc., No. C-01-2190 EDL, 2002 U.S. Dist. LEXIS 15348, at *42 (N.D. Cal.
Aug. 15, 2002).

32

1
indicating to the first user the third user; and
2
providing the first user with an option of accepting the
incoming request for communication with the third user.

3
4

‘921 patent, claim 1 (emphasis added).

5
6

Yahoo argues indefiniteness in large part because the term “service programs” – though used
in some of the ‘921 patent claims – does not appear anywhere in the specification.

7

In response, Pragmatus argues that, although not specifically defined in the specification, the

8

term “service programs” can readily be understood by a person of ordinary skill in the art as

9

programs that provide services. A “program,” according to Pragmatus, is “a set of instructions that
tell a computer to perform a series of actions or a particular type of work.” Op. Br. at 18. In

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For the Northern District of California

United States District Court

10

support, Pragmatus points to a Microsoft Computer Dictionary. The dictionary definition offered by

12

Pragmatus is consistent with the use of the word “program” in the ‘921 specification.15 For

13

example:

14

•

“Also present on the Expert’s screen is a standard desktop window 206 containing icons

15

from which other programs (whether or not part of ths invention) can be launched.” ‘921

16

patent, col. 36:21-24.

17

•

“The Expert composes a new multimedia mail message, recording his image and audio

18

synchronized (as described above) to the screen displays resulting from his simultaneous

19

interaction with his CMW (e.g., running a program that performs certain calculations and

20

displays a graph while the Expert illustrates certain points by telepointing on the screen,

21

during which time his image and spoke words are also captured).” ‘921 patent, col. 39:59-

22

66.

23

Yahoo protests, however, that the term at issue here is not “program” but rather “service

24

program.” The question thus becomes whether it would be reasonable for a person of ordinary skill

25
26
27
28

15

Yahoo challenges Pragmatus’s reliance on the dictionary because it was published in 2002
and, here, the patent dates back to a priority filing of October 1, 1993 (even though the application
itself was technically filed in 2003. This argument elevates form over substance because, as noted
above, the specification for the ‘921 patent uses the word “program” in the same way as the
dictionary definition.

33

1

in the art to understand that a “service program” would be a program that provides services. That is,

2

needless to say, a logical inference. Moreover, claim 1 on its face indicates the types of services that

3

a service program would provide – i.e., the service program is part of “[a] system for use in

4

communication between a plurality of users” and, among other things, it “maintain[s] a first

5

association between a first user and corresponding addressing information of a first communication

6

device used by the first user to log in.” ‘921 patent, claim 1. The specification for the ‘970 patent

7

also indicates the types of services:

8

The central component of the Collaborative Multimedia Workstation
software is the Collaboration Initiator 161. All collaborative functions
can be accessed through this module. When the Collaboration
Initiator is started, it exchanges initial configuration information with
the Audio Video Network Manager (AVNM) 60 (shown in FIG. 3)
through Data Network 902. Information is also sent from the
Collaboration Initiator to the AVNM indicating the location of the
user, the types of services available on that workstation (e.g., videoconferencing, data conferencing, telephony, etc.) and other relevant
initialization information.

9

11
For the Northern District of California

United States District Court

10

12
13
14

‘970 patent, col. 18:57-67 (emphasis added).

15

The Court, therefore, rejects Yahoo’s contention that the term “service programs” is not

16

amenable to construction or is insolubly ambiguous. The Court adopts the construction proposed by

17

Pragmatus. With such a construction, the term is not indefinite.

18

II.

19
20

CONCLUSION

For the foregoing reasons, the Court adopts the above constructions for the disputed terms at
issue.

21
22

IT IS SO ORDERED.

23
24

Dated: May 13, 2014

25

_________________________
EDWARD M. CHEN
United States District Judge

26
27
28

34