Emblaze Ltd. v. Apple Inc.

Filing 127

Brief re 111 REPLY CLAIM CONSTRUCTION BRIEF filed by Emblaze Ltd. (Attachments: # 1 Certificate/Proof of Service)(Related document(s) 111 ) (Pavane, Martin) (Filed on 7/31/2012) Modified on 8/1/2012 (cjl, COURT STAFF).

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MARTIN L. FINEMAN (CA State Bar No. 104413)
DAVIS WRIGHT TREMAINE LLP
505 Montgomery Street, Suite 800
San Francisco, California 94111
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]

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MARTIN B. PAVANE (Admitted Pro Hac Vice)
LISA A. FERRARI (Admitted Pro Hac Vice)
COZEN O’CONNOR
277 Park Avenue
New York, NY 10172
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Email: [e-mail]
Attorneys for Plaintiff
Emblaze Ltd.

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UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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OAKLAND DIVISION

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EMBLAZE LTD.,

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Plaintiff,

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CASE NO. 4:11-CV-01079 SBA

v.

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APPLE INC., a California Corporation,

EMBLAZE LTD.’S REPLY CLAIM
CONSTRUCTION BRIEF
Date: October 31, 2012
Time: 9:00 a.m.
Courtroom: 1

Defendant.
Before The Honorable Saundra Brown
Armstrong

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EMBLAZE LTD.’S REPLY CLAIM
CONSTRUCTION BRIEF

Emblaze Ltd. v. Apple Inc., 4:11-CV-01079 SBA

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TABLE OF CONTENTS

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I. 

OVERVIEW OF THE ‘473 PATENT ................................................................. 1 

II. 

THE PRIORITY DATE OF THE ‘473 PATENT IS IRRELEVANT TO

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CLAIM CONSTRUCTION ................................................................................. 2 

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III. 

ARGUMENTS ..................................................................................................... 2 

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APPLE’S “RESERVATION” OF 35 U.S.C. § 112 INVALIDITY

IV. 

THE DISPUTED CLAIM TERMS ...................................................................... 3 

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1. 

Term #1: “real-time broadcasting” [Claims 1, 25] ...................................... 3 

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2. 

Terms #2 and 3: “providing at the transmitting computer a data stream
having a given data rate” [Claim 1] ............................................................. 5 

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3. 

Term #4: slice [Claims 1, 11, 23, 25, 37] .................................................... 6 

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4. 

Term #5: each slice having a predetermined data size associated
therewith [Claims 1, 25] .............................................................................. 6 

5. 

Term #6: encoding the slices in a corresponding sequence of files
[Claim 1]
encodes the slices in a corresponding sequence of files [Claim 25] ........... 7 

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6. 

Term #7: sequence of files, each file having a respective index [Claims
1, 25] ............................................................................................................ 8 

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7. 

Term #8: uploading the sequence to a server at an upload rate generally
equal to the data rate of the stream [Claim 1]

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which uploads the sequence to a server at an upload rate generally
equal to the data rate [Claim 25] ................................................................. 9 

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8. 

Term #9: such that one or more client computers can download the
sequence over the network from the server at a download rate
generally equal to the data rate [Claims 1, 25] ............................................ 9 

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9. 

Term #10: decode the sequence [Claims 8, 26] ........................................ 11 

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10. 

Term #11: play back the data stream responsive to the indices of the
files [Claim 8]
play back the data stream responsive to the indices thereof [Claim 26] ... 12 

11. 

Term #12: at a replay rate generally equal to the data rate [Claim 8] ....... 13 

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at a data replay rate generally equal to the data rate [Claim 26] ............... 13 

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12. 

Term #13: uploading and updating an index file containing the index
of the file in the sequence that was most recently uploaded [Claim 9]..... 13 

13. 

Term #14: encoding slices at a plurality of different quality levels
[Claim 11]
slices are encoded at a plurality of different quality levels [Claim 40] .... 14 

14. 

Term #15: determining a data bandwidth of the network between the
server and the client computer [Claim 12] ................................................ 14 

15. 

Term #16: wherein dividing the stream into the sequence of slices
comprises dividing the stream into a sequence of time slices, each
having a predetermined duration associated therewith [Claim 23] ........... 15 

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wherein the predetermined data size of each of the slices corresponds
to a time duration of the slice [Claim 37] .................................................. 15 

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V. 

CONCLUSION................................................................................................... 15 

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CONSTRUCTION BRIEF

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TABLE OF AUTHORITIES

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Page(s)

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CASES

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3M Innovative Properties Co. v. Tredegar Corp., Civ. 09-3335 DWF/AJB, 2011 WL
6004023, at *24 (D. Minn. Nov. 30, 2011) ................................................................................4

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Anchor Wall Systems, Inc. v. Rockwood Retaining Walls, Inc.,
340 F.3d 1298 (Fed. Cir. 2003)..................................................................................................9
Atmel Corp. v. Information Storage Devices, Inc.,
198 F.3d 1374 (Fed. Cir. 1999)..................................................................................................2
Aventis Pharmaceuticals Inc. v. Impax Labs, Inc.,
Civ. A. 02-1322 GEB, 2011 WL 94188 (D.N.J. Jan. 11, 2011) ................................................3
BMC Resources, Inc. v. Paymentech, L.P.,
498 F.3d 1373 (Fed. Cir. 2007)................................................................................................10
CSB-System International Inc. v. SAP America, Inc.,
Civ. No. 10-2156, 2012 U.S. Dist. LEXIS 45847 (E.D. Pa. April 2, 2012) ............................10
Datamize, LLC v. Plumtree Software, Inc.,
417 F.3d 1342 (Fed. Cir. 2005)..................................................................................................2
Energizer Holdings, Inc. v. ITC,
435 F.3d 1366 (Fed. Cir. 2006)..................................................................................................3
Enzo Biochem, Inc. v. Applera Corp.,
599 F.3d 1325 (Fed. Cir. 2010)..................................................................................................4
General Am. Transp. Corp. v. Cryo-Trans., Inc.,
93 F.3d 766 (Fed. Cir. 1996)......................................................................................................8

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Haliburton Servs. v. Smith Int’l Inc.,
2004 WL 305722 (E.D. Tex. Feb. 13, 2004) ...........................................................................12
Hoffer v. Microsoft Corp.,
405 F.3d 1326 (Fed. Cir. 2005)................................................................................................10
In the Matter of Venezia,
530 F.2d 956 (CCPA 1976) .....................................................................................................10

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Janssen Pharmaceutica N.V. v. Eon Labs Mfg., Inc.,
2003 WL 25819555 (E.D. N.Y. Nov. 26, 2003)......................................................................12

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CONSTRUCTION BRIEF

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Johnson Worldwide Assocs, Inc. v. Zebco Corp.,
50 F. Supp.2d 863 (W.D. Wisc. 1998).....................................................................................12
KLA-Tencor Corp. v. Xitronix Corp.,
A-08-CA-723-SS, 2011 WL 318123 (W.D. Tex. Jan. 31, 2011) ..............................................4
Liebel-Flarsheim Co. v. Medrad, Inc.,
358 F.3d 898 (Fed. Cir. 2004)....................................................................................................8

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Novacor Chemicals, Inc. v. United States,
171 F.3d 1376 (Fed. Cir. 1999)................................................................................................12
Personalized Media Communs., L.L.C. v. ITC,
161 F.3d 696 (Fed. Cir. 1998)....................................................................................................2
Phillips v. AWH Corp.,
415 F.3d 1303 (Fed. Cir. 2005) (en banc), 546 U.S. 1170 (2006).............................................4

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PowerOasis, Inc. v. T-Mobile USA, Inc.,
522 F.3d 1299 (Fed. Cir. 2008)..................................................................................................2
Smithkline Beecham Corp. v. Apotex Corp.,
439 F.3d 1312 (Fed. Cir. 2006)..................................................................................................2
South Corp. v. U.S.,
690 F.2d 1368 (Fed. Cir. 1982)................................................................................................10

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Teleflex, Inc. v. Ficosa N. Am. Corp.,
299 F.3d 1313 (Fed. Cir. 2002)..................................................................................................3
Uniloc USA, Inc. v. Microsoft Corp.,
632 F.3d 1292 (Fed. Cir. 2011)................................................................................................11
Wang Labs., Inc. v. Am. Online, Inc.,
197 F.3d 1377 (Fed. Cir. 1999)..................................................................................................8
STATUTES

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35 U.S.C. § 112 ................................................................................................................................2
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35 U.S.C. § 112, ¶1 ..........................................................................................................................2
35 U.S.C. § 112 ¶2 ...........................................................................................................................2

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Pursuant to Patent L. R. 4-5 and Order Concerning September 15, 2011 Case Management

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Conference (DE 68), Plaintiff Emblaze Ltd. (“Emblaze”) submits this reply brief in support of its

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proposed construction of the disputed claim terms of U.S. Patent No. 6,389,473 (“‘473 Patent”).
I.

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OVERVIEW OF THE ‘473 PATENT
Apple’s overviews of the ‘473 Patent (Apple Br.1, pp. 2-4) and the disputed claim terms (Apple

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Br., 4-5) seek to confine Emblaze’s invention to preferred embodiments, an approach that has been

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repeatedly and consistently rejected by the Court of Appeals for the Federal Circuit. The description in

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the ‘473 Patent (Ex. 1)2 – not Apple’s narrowing characterizations – is the best source for understanding

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the patented invention.

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Before the ‘473 Patent, “high-cost, dedicated computer systems” were “required in order to ensure

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that the data stream [was] distributed and received by clients 30 in real time” (1:34-403). The inventors of

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the ‘473 Patent recognized that “real-time broadcasting [was] normally possible only for hosts having a

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suitable, dedicated encoder and broadcast server and [could not] be offered by Internet service providers

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(ISPs) to their general clientele.” (1:43-47). The inventors of the ‘473 Patent thus developed the ability to

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“remotely broadcast a multimedia program through an Internet service provider (ISP) using common,

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universally-supported Internet communication protocols” (1:64-67), such as HTTP (2:12-14). By dividing

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and encoding a data stream into a sequence of files, the ‘473 Patent places the data in an advantageous

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format for transmission over limited bandwidth connections, regardless of whether the data is compressed,

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and also accommodates the use of common, universally supported Internet communication protocols.
The solution of the ‘473 Patent is applicable not only to broadcasting multimedia data in real-time

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over the limited bandwidth networks of the late 1990s, but also overcomes today’s challenges of

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broadcasting multimedia data in real-time over the limited bandwidth of present day cellular and wifi

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networks and the challenges associated with broadcasting large format multimedia data, e.g., high

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definition (HD) streams. The invention of the ‘473 Patent -- providing “high-bandwidth data streaming

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Defendant Apple Inc.’s Response and Evidence in Support of its Proposed Claim Constructions (DE
118) is referred to herein as the “Apple Br.”.
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All exhibits referenced herein were attached to the Declaration of Lisa Ferrari (DE 112) submitted in
support of Emblaze’s Opening Claim Construction Brief (DE 111) (“Emblaze Opening Br.”).
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All references to the ‘473 Patent are in the form “column:line”, and unless otherwise stated, all
references in this form are to the ‘473 Patent.
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over a network using common, existing server and network infrastructure” (1:51:53) that may be used to

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broadcast a multimedia program, “for example, an interview program or an entertainment or sports event”

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(6:58-59) – is as relevant today as it was when the original application for patent was filed in the 1990s.

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II.

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THE PRIORITY DATE OF THE ‘473 PATENT IS IRRELEVANT TO CLAIM
CONSTRUCTION
In its overview of the parties’ claims construction positions (Apple Br., p. 5), and throughout its

brief, Apple asserts that for purposes of claim construction, Emblaze cannot rely upon “new matter” added
to the U.S. application for the ‘473 Patent that is not found in the Israeli priority document. That is wrong;
the priority date of the ‘473 Patent is irrelevant to the claim construction analysis. See PowerOasis, Inc. v.
T-Mobile USA, Inc., 522 F.3d 1299, 1302, 1310-11 (Fed. Cir. 2008) (affirming construction of the claim
term “customer interface” based on new matter added to a later-filed application).
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APPLE’S “RESERVATION” OF 35 U.S.C. § 112 INVALIDITY ARGUMENTS
Apple misstates Emblaze’s position when it “agrees with Emblaze that invalidity arguments under

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35 U.S.C. § 112 should not be addressed during the Markman proceeding” (Apple Br., p. 5). Emblaze

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argued only that “[a]lleged invalidity of patent claims for failure to satisfy the written description and

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enablement requirements of 35 U.S.C. § 112, ¶1” are not relevant to claim construction. (Emblaze Br., p.7

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(emphasis added)). Emblaze never asserted that invalidity for indefiniteness in violation of 35 U.S.C. §

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112 ¶2 need not be considered during claim construction; to the contrary, Emblaze correctly asserted that

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it should be. (Emblaze Br., pp. 6-7,13-14, 17-18 and 21-22). See Personalized Media Communs., L.L.C. v.

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ITC, 161 F.3d 696, 705 (Fed. Cir. 1998) (“A determination of claim indefiniteness is a legal conclusion

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that is drawn from the court's performance of its duty as the construer of patent claims.”); Atmel Corp. v.

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Information Storage Devices, Inc., 198 F.3d 1374, 1378 (Fed. Cir. 1999) (same); Datamize, LLC v.

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Plumtree Software, Inc., 417 F.3d 1342, 1347-48 (Fed. Cir. 2005) (same). Apple’s brief does not explain

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why any of the disputed terms is indefinite, and as a consequence Apple has waived any argument of

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invalidity based on an alleged failure to satisfy the definiteness requirement of 35 U.S.C. § 112 ¶2. See

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Smithkline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1319-1320 (Fed. Cir. 2006) (holding that

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arguments not raised in briefs are waived, and explaining that mere allusion to arguments is insufficient

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and that arguments raised in footnotes are not preserved).

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A claim cannot be held indefinite if it is amenable to claim construction. See Energizer Holdings,

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Inc. v. ITC, 435 F.3d 1366, 1371 (Fed. Cir. 2006) (“A claim that is amenable to construction is not invalid

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on the ground of indefiniteness.”). Because all of the claim terms in dispute are amenable to construction

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– as Apple itself recognizes by the constructions it proffers – there would have been no basis for Apple to

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assert indefiniteness even if Apple had not waived that argument.

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IV.

Apple’s proffered constructions of the disputed claim terms are addressed below in the order in

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which the terms appear in the Joint Claim Construction and Prehearing Statement (“JCCPS”, DE 97).
1. Term #1: “real-time broadcasting” [Claims 1, 25]

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Apple argues that real-time broadcasting requires receipt of a broadcast “simultaneously with

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minimal delay,” while Emblaze contends that it means that the broadcast is received “without
substantial delay”, with no requirement of “simultaneous” receipt. As explained in Emblaze’s opening
brief, the passage at 1:16-18 that Apple cites as support for importing its “simultaneously” limitation into
the claims refers to simultaneous transmission from a transmitting computer, not simultaneous reception
by the client computers. See also, Emblaze’s Opening Br., p. 8. Regardless, Apple does not argue that the
specification uses “words or expressions of manifest exclusion or restriction, representing a clear
disavowal of claim scope”, nor does Apple argue that the disputed term is expressly defined in the patent
to require simultaneous receipt, and in the absence of those circumstances it is improper to import Apple’s
“simultaneously” limitation into claims 1 and 25. See Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d
1313, 1327 (Fed. Cir. 2002).4
Apple’s “with minimal delay” limitation is also wrong because it would improperly restrict the

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THE DISPUTED CLAIM TERMS

claims to a preferred embodiment. See Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1342 (Fed.
Cir. 2010), rehearing denied by, rehearing en banc denied by, 605 F.3d 1347 (Fed. Cir. 2010), cert.

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Apple relies upon Aventis Pharmaceuticals Inc. v. Impax Labs, Inc., Civ. A. 02-1322 GEB, 2011 WL
94188, at *6-*7 (D.N.J. Jan. 11, 2011), but in that case the Court held that “the patent cannot be limited
to the problems and particular solutions disclosed in the Background of the Invention,” and because
there was no dispute that the claim term at issue, “suitable antiadherents”, included antiadherents that
resulted in improvements over the prior art, the Court accepted that as an interim definition, which may
be “further developed as the case progresses and evidence is presented that further defines or identifies
other ‘suitable antiadherents’”.
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denied on other grounds, 131 S.Ct. 3020 (2011). In Apple’s citations to the specification, the

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specification uses the modifier “preferably” to describe the “delay”, i.e., “preferably with only a minimal

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necessary transmission and decoding delay” (10:48-54) and “preferably with only a minimal lag” (8:1-7)

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(Apple Br., p. 8, emphasis added). “Preferably” clearly connotes a preferred embodiment, not a

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mandatory requirement of the invention. See Enzo Biochem, 599 F.3d at 142. (“[I]t is improper to read

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limitations from a preferred embodiment described in the specification — even if it is the only

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embodiment —into the claims absent a clear indication in the intrinsic record that the patentee intended

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the claims to be so limited.”) (internal quotation omitted). Neither can Apple use a dictionary definition to

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improperly import limitations into the claim (Apple’s Br., p. 8). See Phillips v. AWH Corp., 415 F.3d

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1303, 1321 (Fed. Cir. 2005) (en banc), cert. denied, 546 U.S. 1170 (2006) (“The main problem with

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elevating the dictionary to such prominence is that it focuses the inquiry on the abstract meaning of words

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rather than on the meaning of claim terms within the context of the patent.”). Regardless, there is nothing

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in Apple’s cited dictionary definition that references “minimal delay”.
Apple contends that the specification does not use the words “without substantial delay”.

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However, Apple does not dispute that the specification describes receipt of a real-time broadcast as

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occurring “substantially in real time” (7:5, 8:5), and “without substantial delay” correctly captures the

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meaning of that expression.5
Apple’s proffered construction also includes the word “communicating”, and Apple asserts that

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Emblaze’s proposed construction reads out the active verb “broadcasting,” and only requires “random

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reception”. Emblaze is not certain what Apple means by “random reception”, but in any event it is already

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clear from other portions of claims 1 and 25 that the broadcast data is intended for receipt by client

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computers (claim 1: “uploading the sequence to a server . . . such that one or more client computers can

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download the sequence over the network from the server . . . (14:28-31); claim 25: “which uploads the

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sequence to a server . . . such that one or more client computers can download the sequence over the

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Unlike the terms in the cases cited by Apple (Apple’s Br., p. 8 at n.5), “substantially intermittent
contact” in 3M Innovative Properties Co. v. Tredegar Corp., Civ. 09-3335 DWF/AJB, 2011 WL
6004023, at *24 (D. Minn. Nov. 30, 2011) and “substantially maximize the strength of the output
signal” in KLA-Tencor Corp. v. Xitronix Corp., A-08-CA-723-SS, 2011 WL 318123, at *3-*5 (W.D.
Tex. Jan. 31, 2011), Emblaze’s construction of “real time broadcasting” as being “without substantial
delay” is supported by the specification of the ‘473 Patent.
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network from the server . . . (16:4-7)). There is no need for a separate and undefined “communicating”

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addition to the meaning of “real-time broadcasting”.
2. Terms #2 and 3: “providing at the transmitting computer a data stream having a
given data rate” [Claim 1]

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Apple’s construction of “providing” as “inputting” is wrong because it ignores the portions of the
patent specification that expressly recognize that the data stream may be generated by the transmitting
computer rather than being “input” to the transmitting computer (“the data stream comprises multimedia
data captured or generated by the transmitting computer” (2:29-31, emphasis added); “although data
inputs of other types may be generated at or by computer 34 . . .” (6:33-34, emphasis added). The term
“providing” requires no construction; its ordinary meaning suffices. The term “providing” is not limited
to “transmitting” or “receiving”; rather it simply connotes that whether by input to or generation at the
transmitting computer, a data stream is “provided” at the transmitting computer. No further clarification is
necessary.

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Apple’s construction is also wrong because it reads the term “given” out of the claim.6 Apple
argues that the specification does not teach that the data rate is assigned (Apple Br., p. 10), but the patent
teaches “providing at the transmitting computer a data stream having a given data rate” (3:29-30, emphasis
added), whether it is the data rate at which the stream is generated or a data rate assigned by compression
of the stream.

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Apple also contends that “data rate” must be construed to include the “actual units of measure”
(i.e., in bits per second), because without units of measurement, the construction is “general” and will
“expand the meaning of ‘data rate’ beyond the bounds of what is actually contemplated by the ‘473
patent.” Apple Br., p. 10. But Apple does not explain why this is so. Apple’s insistence that data rate
include the “actual units of measure” would lead to a too narrow claim construction that would, for
example, exclude a data rate measured in other units, such as gigabytes per minute, when nothing in the
claim requires a specific unit of measurement. Emblaze’s construction, defining a data rate as “an amount

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The claim clause, “providing at the transmitting computer a data stream having a given data rate,” (see,
e.g., claim 1), allows the “given data rate” to be compressed, but does not require compression.
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of data per unit of time” generically, defines a data rate without confinement to any particular units of

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measurement.
3. Term #4: slice [Claims 1, 11, 23, 25, 37]

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Apple contends that a slice is “a discrete, individually distinct segment,” Apple Br., p. 11, whereas

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Emblaze contends it means “a segment of the data stream”. Apple now explains that by “discrete,

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individually distinct” it means that the slices must be “separate and distinct from one another” (Apple Br.,

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pp. 11-12), but that “clarification” is not helpful. Independent claims 1 and 25 expressly recite that the

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“stream is divided into a sequence of slices”, and there is no reason to repeat that concept in the definition

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of “slice”.

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4. Term #5: each slice having a predetermined data size associated therewith
[Claims 1, 25]

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Emblaze does not contend that a “time duration” is the same as a “predetermined data size;” rather,

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Emblaze contends that the ‘473 Patent specifically teaches that the data size may be established by setting

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a time duration (see Emblaze’s Opening Br., pp. 11-12). Apple seeks to exclude a predetermined time

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duration as a measure of data size, but the teaching of the ‘473 Patent is to the contrary, and dependent

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claims 23 and 37 also make clear that the predetermined data size of the slices may comprise a

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“predetermined duration.”

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Apple relies upon the disclosure in the ‘473 Patent at 11:56-59, but that disclosure supports

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Emblaze’s construction, not Apple’s. The beginning of that paragraph – which Apple does not cite –

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refers to a “set duration step” (11:53). The passage that Apple cites, “file 42 may be assigned a file size of

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10 Kbytes, with T1=5 sec” (11:58-59), does not relate to data size alone. Rather, the data size of the slices

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is being set by assigning a time duration to the slices. As the entirety of the paragraph makes clear, if each

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file is assigned a time duration of 5 seconds, and is uploaded at 2 Kbytes/sec, then the maximum data size

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per file is 10 Kbytes, though of course the amount of data in any individual file will depend on the content

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being streamed at the particular time that file is formed. Put another way, if the data rate is known – and

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both claims 1 and 25 specify that the data stream has a “given data rate” -- then setting the time duration

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also sets the data size.

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Relying on the word “predetermined”, Apple’s construction would improperly require that the data

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size of the slices be assigned in advance of the data stream being divided, but Apple’s supporting citation

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says nothing about when the data size of the slice is “predetermined”. Apple’s construction is also wrong

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because it excludes predetermining the data size as the slices are being prepared, as specifically

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contemplated by the ‘473 Patent. At 9:66 – 10:1, the ‘473 Patent explains that “[t]the data are compressed

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at step 80, and are then ‘sliced’ at step 82 into files . . . “, and reference to step 82 in Figure 7 shows that

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single step as including both setting the slice duration and preparing the slice, i.e., the data size is

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“predetermined” as the slice is being prepared. See also, 11:65 – 12:12. Nor is there any disavowal of

9

claim scope in the specification or prosecution history of the ‘473 Patent that mandates a construction that

10

requires assigning the data size of the slices before the data stream is divided.
5. Term #6: encoding the slices in a corresponding sequence of files [Claim 1]

11

encodes the slices in a corresponding sequence of files [Claim 25]

12

Apple’s construction improperly imports a “compression” limitation into claims 1 and 25, when

13
14

there is nothing in these claim terms that requires compression.7 Apple simply ignores the explicit

15

statement in the specification that compression is not required. See 6:54-56 (“Preferably, the data in the

16

sequence are compressed, although compression is not essential to implementation of the present

17

invention.” (emphasis added); see also, 2:1-28).8 As explained in Emblaze’s opening brief at 13-15,

18

“encoding” as used in claims 1 and 25 means “forming each slice as a file, wherein a file includes data

19

from a corresponding slice and a file descriptor”.
Apple contends that “the step of ‘encoding the slices’ must occur after the ‘dividing’ step” because

20
21

slices cannot be encoded until they are created. But that argument supports Emblaze’s construction of

22

“encoding”, not Apple’s, as compression – which Apple equates with encoding – takes place before the

23

data stream is sliced. See 9:62 – 10:5 and Figure 7. Indeed, the specification of the ‘473 Patent at 11:23 –

24
7

25
26
27
28

Apple relies upon evidence, 3:45-48, 11:26-28, and 11:23-24 (Apple’s Br., p. 14) that was not cited
for term #6 in the Joint Claim Construction and Prehearing Statement (DE 97, pp. 30-40), and those
references should be ignored.
8
Apple argues that real-time transmission of uncompressed multimedia data was impossible to achieve
in the 1990s when the application for the ‘473 Patent was filed. Apple Br., p. 4. But Apple does not
offer any expert testimony to support its contention of “impossibility”, and without expert testimony that
contention is worthless and should be ignored.
EMBLAZE LTD.’S REPLY CLAIM
7
Emblaze Ltd. v. Apple Inc., 4:11-CV-01079 SBA
CONSTRUCTION BRIEF

1

12:2 expressly teaches that after the data stream is compressed (11:39-44), the slices are “encoded” into

2

files, clearly indicating that encoding in this context is not referring to compression (12:1-2 (“at the same

3

time as file 44 (slice 2) is being encoded and prepared.”)(emphasis added)). Likewise, claims 1 and 25

4

recite encoding the slices in a corresponding sequence of files, which, as Apple correctly points out, can

5

only take place after the slices are formed, thus confirming that the reference to encoding in claims 1 and

6

25 is not a reference to compression.

7

All of Apple’s citations to the specification describe “encoding the stream,” not “encoding the

8

slices”, and as explained in Emblaze’s opening brief, encoding has different meanings in these different

9

contexts. See Emblaze’s opening brief at pages 14-15.
6. Term #7: sequence of files, each file having a respective index [Claims 1, 25]

10
11

Apple cites two cases, Wang Labs., Inc. v. Am. Online, Inc., 197 F.3d 1377 (Fed. Cir. 1999) and

12

General Am. Transp. Corp. v. Cryo-Trans., Inc., 93 F.3d 766, 770 (Fed. Cir. 1996), for the proposition

13

that it is appropriate to limit claims to a specific embodiment where only one embodiment is disclosed

14

(Apple Br., p. 17). But in a subsequent decision, Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906

15

(Fed. Cir. 2004), the Federal Circuit “expressly reject[ed] the contention that if a patent describes only a

16

single embodiment, the claims of the patent must be construed as being limited to that embodiment.”

17

Indeed, in Liebel, the Federal Circuit expressly distinguished both Wang Labs and General Am. Transp.:

18
19
20

Wang therefore does not stand for the proposition that if a patent specification describes only a
particular embodiment, the claims must be limited to that subject matter. We have never read
Wang Labs to stand for so broad a proposition.
. ..

21
22
23
24
25

In [General Am. Transp. and other cases], this court interpreted the pertinent claim language
narrowly, not merely because the specification did not describe a broader embodiment, but because
the specification, claim, or prosecution history made clear that the invention was limited to a
particular structure.
358 F.3d at 907-908.
Apple does not argue – nor could it – that there is an express disavowal in the specification or

26

prosecution history that warrants its proposed narrow construction. There is nothing in the specification

27

or prosecution history of the ‘473 Patent that supports limiting the “index” to an “alphanumeric indicator”,

28

EMBLAZE LTD.’S REPLY CLAIM
CONSTRUCTION BRIEF

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Emblaze Ltd. v. Apple Inc., 4:11-CV-01079 SBA

1

or to an index representing the slice’s “location” in the sequence, or to an index “contained” in the file.

2

The specification only requires that the “index” differentiate one file from another, but does not require

3

the index to be an alphanumeric indicator or to be “contain[ed]” in the file. The index may be part of the

4

file name and need not be “contained” within the file. See 7:59-64; 7:66-8:1.

5
6
7

7. Term #8: uploading the sequence to a server at an upload rate generally equal to the
data rate of the stream [Claim 1]
which uploads the sequence to a server at an upload rate generally equal to the data
rate [Claim 25]

8
Apple’s proposed construction incorporates the same erroneous interpretation of the term “rate” as
9
Apple proposes for claim terms #2 and #3 above. Apple’s argument that Emblaze has not offered a claim
10
construction of “data rate” is wrong, and the Court is referred to Emblaze’s discussion of claim terms #2
11
and #3 above and in its opening brief for the reasons that “rate”, whether an “upload rate,” “download
12
rate” or “data rate,” should be construed as an amount of data per unit of time, and not as “speed, as
13
measured in bits per second” as Apple proposes.
14
Apple states that “the claim language mandates equality between ‘the upload rate’ and ‘the data
15
rate,’” (Apple Br., p. 17), but in fact the claim language only requires that these rates be “generally equal”
16
(see, e.g., 14:29). Apple would construe “generally equal” as “closely matches,” but Apple never
17
explains how that construction would aid the trier of fact when “closely matches” is no more precise than
18
“generally equal”. The ordinary meaning of “generally equal” is clear and sufficient --- it means
19
approximately, but not necessarily exactly, equal. See Anchor Wall Systems, Inc. v. Rockwood Retaining
20
Walls, Inc., 340 F.3d 1298, 1311 (Fed. Cir. 2003) (“‘generally parallel’ envisions some amount of
21
deviation from exactly parallel”).
22
23
24
25
26
27
28

8. Term #9: such that one or more client computers can download the sequence
over the network from the server at a download rate generally equal to the data
rate [Claims 1, 25]
Apple contends that Emblaze’s construction fails to construe “at a download rate generally equal to
the data rate”. But as explained in Emblaze’s opening brief, that claim phrase is readily understood and
does not require construction. As regards Apple’s contention that “generally equal” should be construed
as “closely matches”, see Emblaze’s discussion of claim term #8 immediately above.
EMBLAZE LTD.’S REPLY CLAIM
CONSTRUCTION BRIEF

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Emblaze Ltd. v. Apple Inc., 4:11-CV-01079 SBA

Relying on Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329 (Fed. Cir. 2005), Apple contends that

1
2

Emblaze’s construction changes the “actual ‘download’ of the multimedia by the client computers to an

3

optional ‘capability’ that contradicts the claims’ ‘real-time broadcasting’ limitation.” Apple misconstrues

4

Hoffer. There was no dispute in Hoffer concerning whether the “whereas” clause required only the

5

capability as contrasted with the actual performance of interactive data messaging – all agreed that

6

capability was sufficient. Here, all that the “such that” clause in claims 1 and 25 requires is that the client

7

computers have the recited capability, not that the client computers actually perform that capability. The

8

disputed claim language uses the term “can”, indicating only that the “one or more client computers can

9

download the sequence …”, not that they must do so (emphasis added). Simply put, there is no

10

requirement in the claim language that any particular client computer actually performs the step of

11

downloading the sequence of files. See In the Matter of Venezia, 530 F.2d 956, 958 (CCPA 1976)9

12

(holding claim to “connector kit having component parts capable of being assembled” does not require the

13

interrelated parts to actually be assembled) (emphasis added); CSB-System International Inc. v. SAP

14

America, Inc., Civ. No. 10-2156, 2012 U.S. Dist. LEXIS 45847, *32 (E.D. Pa. April 2, 2012) (“Notably,

15

nothing [in the claims] requires that the functions actually be used.”).
Apple’s proposed construction would require at least two independent actors (one operating the

16
17

transmitting computer, and one operating the client computer) for infringement, whereas Emblaze’s

18

construction requires only one actor operating the transmitting computer to establish infringement. The

19

Federal Circuit has recognized that a “patentee can usually structure a claim to capture infringement by a

20

single party.” See BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373, 1381 (Fed. Cir. 2007) (“In

21

this case, for example, BMC could have drafted its claims to focus on one entity”; see also, Uniloc USA,

22

Inc. v. Microsoft Corp., 632 F.3d 1292, 1309 (Fed. Cir. 2011) (“[a] patentee can usually structure a claim

23

to capture infringement by a single party, by focusing on one entity.”) (internal quotation omitted).

24

Apple also makes the conclusory assertion that “the receipt of multimedia data by the client

25

computers is material to patentability and is a requirement of the fundamental invention” (Apple Br., p.

26

19). But it is the capability of the client computers to receive the broadcast, not the actual performance of

27

9

28

In South Corp. v. U.S., 690 F.2d 1368, 1370 (Fed. Cir. 1982), the Federal Circuit adopted as precedent
decisions of its predecessor court, the Court of Customs and Patent Appeals.
EMBLAZE LTD.’S REPLY CLAIM
10
Emblaze Ltd. v. Apple Inc., 4:11-CV-01079 SBA
CONSTRUCTION BRIEF

1

that capability, which is required by the invention, as the claim language itself makes clear. “Real-time

2

broadcasting” occurs regardless of whether any client computer actually receives the data stream. For

3

example, a radio station may broadcast in real time all day long, regardless of whether anyone has tuned

4

into the radio station to listen. Emblaze’s proposed claim construction does not “read out” the “such that”

5

clause, but rather correctly construes that clause consistent with its plain meaning.
Apple also argues (Apple’s Br., p. 19, n. 12) that Emblaze’s claim construction is illogical in view

6
7

of the claim language. But to the contrary the claim language supports Emblaze’s construction, not

8

Apple’s. Claim 1 calls for “uploading the sequence to a server”, but when it comes to the download side,

9

the claim does not say “downloading the sequence over the network from the server” – which would

10

require actual performance of the act of downloading – but rather says “such that the one or more client

11

computers can download the sequence over the network”, thereby only requiring the capability of

12

downloading but not the actual act of downloading. Furthermore, claims 2 and 26, which depend from

13

claims 1 and 25, respectively, do add a limitation requiring actual downloading of the sequence, further

14

evidencing that there is no such requirement in the independent claims (“2. A method according to claim

15

1, and comprising downloading the sequence . . .” (14:33-34); “26. Apparatus according to claim 25,

16

wherein the one or more client computes decode the sequence and play back the data stream . . .” (16:10-

17

11)).

18
19

9. Term #10: decode the sequence [Claims 8, 26]
Apple improperly construes “decode” in this claim term to mean “decompress”, but as explained

20

with respect to claim term #6, the meaning of “decode” depends on the context in which it is used, and

21

like claim term #6, there is nothing in the claim language at issue here that limits “decode” to

22

“decompress”. Rather, as used in claims 8 and 26, decode only requires extracting playable data from the

23

sequence, regardless of whether the data were compressed. And as noted above and in Emblaze’s opening

24

brief, the ‘473 Patent expressly states that compression is not required. See, e.g., 6:54-56 (“Preferably, the

25

data in the sequence are compressed, although compression is not essential to implementation of the

26

present invention.”).

27
28

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CONSTRUCTION BRIEF

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1

Apple cites Johnson Worldwide Assocs, Inc. v. Zebco Corp., 50 F. Supp.2d 863, 867-68 (W.D.

2

Wisc. 1998), Janssen Pharmaceutica N.V. v. Eon Labs Mfg., Inc., 2003 WL 25819555, at *8 (E.D. N.Y.

3

Nov. 26, 2003) and Haliburton Servs. v. Smith Int’l Inc., 2004 WL 305722, at *5 (E.D. Tex. Feb. 13,

4

2004) as supporting its construction (Apple’s Br., pp. 19-20), but the courts in those cases did not rely

5

solely on a parenthetical to construe a claim term, but rather in each case the court considered the entirety

6

of the specifications and the language of the claims. See, e.g., Johnson, 50 F. Supp.2d at 867 (the

7

parenthetical reference supported the Court’s claim construction analysis that relied on other portions of

8

the specification that limited the “trolling motor” to a “thrust motor”); Haliburton, 2004 WL 305722 at *6

9

(“The Court does not find that Column 8's distinction is clear enough to contradict the construction

10

suggested by the abstract, claim language, and patent teachings.”). Apple only cites the Magistrate

11

Judge’s claim construction order in Janssen, 2003 WL 25819555, at *10, failing to mention the reversal of

12

that claim construction order by the District Court, and the modification of the District Court’s

13

construction by the Federal Circuit. Furthermore, none of the three opinions in Janssen defined the

14

disputed claim term solely by a parenthetical expression.

15

Emblaze is aware of no Federal Circuit case holding as a principle of claim construction that a

16

parenthetical expression following a claim term defines that term, and the Federal Circuit, construing

17

parenthetical expressions outside of Markman proceedings, has recognized that a parenthetical may be

18

illustrative and not definitional. Novacor Chemicals, Inc. v. United States, 171 F.3d 1376, 1381 (Fed. Cir.

19

1999) (“Therefore, in this case, Customs's argument that the parenthetical is merely an illustrative example

20

makes sense. We, therefore, conclude that no definition is provided by the parenthetical for the term

21

‘supplemental duties.’").

22
23
24
25
26
27
28

10. Term #11: play back the data stream responsive to the indices of the files [Claim 8]
play back the data stream responsive to the indices thereof [Claim 26]
Apple’s construction is wrong because it suggests that the client must play back the entire data
stream (“play back the data stream in the order of the indices”). But this ignores the express teaching in
the specification that “a user can decide and indicate at which slice of data stream 40 to begin
downloading. Responsive to a user input, client 30 selects an appropriate starting slice and begins to
EMBLAZE LTD.’S REPLY CLAIM
CONSTRUCTION BRIEF

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Emblaze Ltd. v. Apple Inc., 4:11-CV-01079 SBA

1

download and decode (decompress) files 42, 44, 46, etc.” 10:43-48 (emphasis added). The highlighted

2

language makes clear that the client computer need not play back the entire data stream, but rather may

3

play back only part of the data stream. Apple asserts that its construction is consistent with the Summary

4

of the Invention at 2:15-21, but nothing in that passage requires that all of the files be played back, and as

5

noted, the specification makes clear that they need not be.
Apple also contends, without support, that Emblaze’s construction of “responsive to the indices” as

6
7

“based on the indices” does not require a “responsive connection” between the file indices and the

8

playback and is too vague and general. But “based on” has the same meaning as “responsive to” in the

9

disputed claim language. Contrary to Apple’s conclusory argument, Emblaze’s construction – “based on”

10

– does not render the term “responsive to the indices” superfluous, vague or too general.
Apple also argues that Emblaze’s claim construction fails to capture the “real-time” requirement of

11
12

the claims, but the “real-time” requirement of claims 8 and 26 is already captured by the term “real-time

13

broadcasting” in independent claims 1 and 25 from which these claims respectively depend.
Apple’s construction of these terms would also improperly import a term, “in the order of”, into

14
15

the disputed terms. But there is nothing in the claim that requires Apple’s “in the order of” limitation, nor

16

is there an express disavowal of claim scope in the specification or prosecution history of the ‘473 Patent

17

that would justify importing such a limitation into the claims.

18

11. Term #12: at a replay rate generally equal to the data rate [Claim 8]

19

at a data replay rate generally equal to the data rate [Claim 26]

20
21

Apple’s construction is wrong for the same reasons discussed above with respect to claim term #2,
#3, #8 and #9.
12. Term #13: uploading and updating an index file containing the index of the file
in the sequence that was most recently uploaded [Claim 9]

22
23

Apple does not provide any support for importing into the claims a “single . . . variable” limitation
24
with respect to the index file. And for the same reasons explained for claim term #7, and because there is
25
no express disavowal in the specification or the prosecution history of the ‘473 Patent, it would be wrong
26
to adopt Apple’s construction and limit the “index file” to a preferred embodiment described in the ‘473
27
Patent.
28

EMBLAZE LTD.’S REPLY CLAIM
CONSTRUCTION BRIEF

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Emblaze Ltd. v. Apple Inc., 4:11-CV-01079 SBA

1
2
3

13. Term #14: encoding slices at a plurality of different quality levels [Claim 11]
slices are encoded at a plurality of different quality levels [Claim 40]
There is nothing in the language of these claim terms that requires that “encoding” or “encoded” to

4

be limited to “compressing,” and the Court is referred to Emblaze’s discussion with respect to claim term

5

#6 concerning the meaning of “encoding”.

6

Compression is one way to achieve a quality level, but is not required to achieve a quality level. A

7

multimedia stream of data, even without compression, inherently has a quality level. A plurality of

8

different quality levels may be achieved without compression, such as by providing plural data streams,

9

each one with a different data rate. As with “encoding”, Apple improperly seeks to limit “quality levels”

10

as referring only to compression levels, but there is no express disavowal in the specification or

11

prosecution history of the ‘473 Patent mandating that construction.

12

Apple complains that Emblaze has not defined the term quality level, but that term is well

13

understood as referring to the degree of resolution, as the ‘473 Patent makes clear (3:5-6; “In other

14

preferred embodiments the slices are provided by the server at multiple resolution or quality levels”.).

15
16

14. Term #15: determining a data bandwidth of the network between the server and
the client computer [Claim 12]
Apple contends that Emblaze’s construction of “bandwidth” is too general, as it incorporates

17

Emblaze’s construction of the term “data rate.” But for reasons similar to those explained above with

18

respect to claim terms #2 and #3, nothing in this claim term restricts the determination of a bandwidth to a

19

measurement in bits per second.

20

Apple’s proposed construction would also require that the client “measure[] the data transfer

21

capacity” of the network connection, but there is nothing in the claim language that requires a

22

“measurement”, or that the “data transfer capacity” be measured. For example, “determining a data

23

bandwidth” (see, e.g., Fig 6B (“determine link rate”); 9:6-9; 10:64-11:22) may be achieved by simply

24

querying the server. Nor is there an express disavowal in the specification or prosecution history of the

25

‘473 Patent that would justify importing a “measurement” limitation into the claim, much less a

26

measurement in any particular units of measurement.

27
28

EMBLAZE LTD.’S REPLY CLAIM
CONSTRUCTION BRIEF

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Emblaze Ltd. v. Apple Inc., 4:11-CV-01079 SBA

15. Term #16: wherein dividing the stream into the sequence of slices comprises
dividing the stream into a sequence of time slices, each having a predetermined
duration associated therewith [Claim 23]

1
2

wherein the predetermined data size of each of the slices corresponds to a time
duration of the slice [Claim 37]

3
4
5

As explained in connection with claim term #5, Apple’s proposed construction is wrong because

6

there is no requirement in the claim language that there be separate assignments of data size and time

7

duration for each slice, or that the time duration be assigned “in advance of the stream being divided”, nor

8

is there any basis for reading those limitations into the claims. Apple’s argument that Emblaze does not

9

cite any “support from the ‘473 Patent establishing that the ‘predetermined data size’ of a slice . . . can be

10

determined based solely on a preset time duration in advance of the dividing step” (Apple Br., p. 25)

11

mischaracterizes Emblaze’s claim construction for the reason stated above with respect to claim term #5

12

and ignores the citations on page 12 of Emblaze’s opening brief which explain that setting the time

13

duration of a slice may serve to establish the data size of the slice.

14
15
16

V.

CONCLUSION
For the reasons set forth above and in Emblaze’s opening brief, Emblaze respectfully requests that

the Court adopt its proposed claim constructions.
Respectfully Submitted,

17
18

DATED: July 31, 2012

19

COZEN O’CONNOR
DAVIS WRIGHT TREMAINE LLP

20

By /s/ Martin B. Pavane
Martin B. Pavane

21

Attorneys for Plaintiff Emblaze Ltd.

22
23
24
25
26
27
28

EMBLAZE LTD.’S REPLY CLAIM
CONSTRUCTION BRIEF

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Emblaze Ltd. v. Apple Inc., 4:11-CV-01079 SBA