Google Inc. v. Rockstar Consortium US LP et al

Filing 140

JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT CORRECTION OF DOCKET # 139 filed by Google Inc., Rockstar Consortium US LP, MobileStar Technologies. (Attachments: # 1 Exhibit Exhibit A, # 2 Exhibit Exhibit B)(Liu, Jason) (Filed on 10/27/2014) Modified on 10/28/2014 (cpS, COURT STAFF).

Exhibit A-1
Google’s Proposed Claim Constructions for U.S. Patent No. 5,838,551
Term
“extending across
substantially the whole area
within the confines of the
edges of the substrate”
[Google]

Proposed Construction(s)
Indefinite
If not indefinite: “extending across the substrate area
other than perforations to provide insulating
clearance”

Supporting Evidence
This term is indefinite. No portion of the
specification or file history renders it
definite. Google will rely on the entire
specification and file history to show that this
phrase is indefinite, and to rebut Rockstar’s
arguments regarding this phrase.

Antecedent basis constructions
“the board”
[Google & Rockstar]

Indefinite

This term is indefinite. No portion of the
specification or file history renders it
definite. Google will rely on the entire
specification and file history to show that this
phrase is indefinite, and to rebut Rockstar’s
arguments regarding this phrase.

CASE NO. 13-CV-5933-CW
-1JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Exhibit A-2
Google’s Proposed Claim Constructions for U.S. Patent No. 6,037,937
Term
“control tool function”
[Google]

Proposed Construction(s)
“navigation function”

Supporting Evidence
The specification of the ‘937 patent,
including the 1:15-17; 2:5-11, 2:18-30; 3:2225; 3:32-35; 4:50-53; 4:58-59; 5:9-6:38 and
Figs. 7A-11B and corresponding text.
The prosecution history of the ‘937 patent,
including Jan. 22, 1999 Amendment, June
16, 1999 Amendment, and prior art
references cited therein.
GOOG-NDCA-13-5933-CC-0000007700000081
GOOG-NDCA-13-5933-CC-0000010900000111
GOOG-NDCA-13-5933-CC-0000012500000144
GOOG-NDCA-13-5933-CC-0000014500000168

“physical viewing area”
[Rockstar]

“display area”

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘937
patent.
The specification of the ‘937 patent,
including the 3:25-31; 4:22-53; 4:56-5:12;
5:27-33 and Figs. 7A-11B and corresponding
text.
The prosecution history of the ‘937 patent,
including Jan. 22, 1999 Amendment, June
16, 1999 Amendment, and prior art

CASE NO. 13-CV-5933-CW
-2JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)

Supporting Evidence
references cited therein.
GOOG-NDCA-13-5933-CC-0000007700000081
GOOG-NDCA-13-5933-CC-0000010900000111
GOOG-NDCA-13-5933-CC-0000012500000144
GOOG-NDCA-13-5933-CC-0000014500000168

“manipulable area portion”
[Rockstar]

“portion of the physical viewing area where
displayed content information is subject to
manipulation”

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘937
patent.
The specification of the ‘937 patent,
including the 3:25-31; 4:50-60; 5:9-26; 5:2733 and Figs. 7A-11B and corresponding text.
The prosecution history of the ‘937 patent,
including Jan. 22, 1999 Amendment, June
16, 1999 Amendment, and prior art
references cited therein.
GOOG-NDCA-13-5933-CC-0000007700000081
GOOG-NDCA-13-5933-CC-0000010900000111
GOOG-NDCA-13-5933-CC-0000012500000144
GOOG-NDCA-13-5933-CC-0000014500000168

CASE NO. 13-CV-5933-CW
-3JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)

“determining if the user input
selects the control tool”
[Rockstar]

Plain meaning

Supporting Evidence
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘937
patent.
The specification of the ‘937 patent,
including the 5:14-19; 5:27-35; 6:35-38 and
Figs. 7A-11B and corresponding text.
The prosecution history of the ‘937 patent,
including Jan. 22, 1999 Amendment, June
16, 1999 Amendment, and prior art
references cited therein.
GOOG-NDCA-13-5933-CC-0000007700000081
GOOG-NDCA-13-5933-CC-0000010900000111
GOOG-NDCA-13-5933-CC-0000012500000144
GOOG-NDCA-13-5933-CC-0000014500000168

“permitting the at least one
control tool function to be
activated when the user input
does select the control tool”
[Google]

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘937
patent.
“enabling the at least one control tool function to be The specification of the ‘937 patent,
activated once the user input selects the control tool” including the 5:14-19; 5:27-35; 5:40-44 and
Figs. 7A-11B and corresponding text.
(“control tool function” used as construed above)
The prosecution history of the ‘937 patent,
including Jan. 22, 1999 Amendment, June
16, 1999 Amendment, and prior art
references cited therein.

CASE NO. 13-CV-5933-CW
-4JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)

Supporting Evidence
GOOG-NDCA-13-5933-CC-0000007700000081
GOOG-NDCA-13-5933-CC-0000010900000111
GOOG-NDCA-13-5933-CC-0000012500000144
GOOG-NDCA-13-5933-CC-0000014500000168

“user input”
[Rockstar]

Plain meaning
See below – antecedent basis for “user input” is
“user input” in the “receiving” limitation of claim 1,
or the “means for receiving” limitation of claim 13

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘937
patent.
The specification of the ‘937 patent,
including the 3:25-31; 4:22-40; 4:50-60; 5:912; 5:27-33 and Figs. 3A-11B and
corresponding text.
The prosecution history of the ‘937 patent,
including Jan. 22, 1999 Amendment, June
16, 1999 Amendment, and prior art
references cited therein.
GOOG-NDCA-13-5933-CC-0000007700000081
GOOG-NDCA-13-5933-CC-0000010900000111
GOOG-NDCA-13-5933-CC-0000012500000144
GOOG-NDCA-13-5933-CC-0000014500000168
Any additional documents cited or relied

CASE NO. 13-CV-5933-CW
-5JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)

“receiving a user input to the
physical viewing area
corresponding to the
manipulable area portion and
the representation of the
control tool”
[Rockstar]

“receiving a user input to the display area where the
representation of the control tool overlays the
manipulable area portion”

Supporting Evidence
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘937
patent.
The specification of the ‘937 patent,
including 3:25-31; 4:22-40; 4:50-60; 4:655:12; 5:27-33 and Figs. 3A-11B and
corresponding text.
The prosecution history of the ‘937 patent,
including Jan. 22, 1999 Amendment, June
16, 1999 Amendment, and prior art
references cited therein.
GOOG-NDCA-13-5933-CC-0000007700000081
GOOG-NDCA-13-5933-CC-0000010900000111
GOOG-NDCA-13-5933-CC-0000012500000144
GOOG-NDCA-13-5933-CC-0000014500000168

“means for providing a
manipulable area portion in a
physical viewing area, said
manipulable area portion
having at least one
manipulation function
associated therewith”
[Google & Rockstar]

Subject to § 112, ¶ 6
Function: providing a manipulable area portion in a
physical viewing area, said manipulable area portion
having at least one manipulation function associated
therewith
Structure: LCD 472 and memory 440 storing, and

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘937
patent.
The specification of the ‘937 patent,
including 5:9-14, 5:29-33, Figures 3A-3B, 8,
10A-10C and corresponding text.
The prosecution history of the ‘937 patent,
including Jan. 22, 1999 Amendment, June
16, 1999 Amendment, and prior art
references cited therein.

CASE NO. 13-CV-5933-CW
-6JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

“means for displaying a
representation of a control tool
overlaying the manipulable
area portion, said control tool
having at least one control tool
function associated therewith”
[Google & Rockstar]

Proposed Construction(s)
feature processor 430 executing, program 510 which
performs the algorithm disclosed at 5:9-14, 5:29-33,
Figures 3A-3B, 8, 10A-10C.

Subject to § 112, ¶ 6
Function: displaying a representation of a control
tool overlaying the manipulable area portion, said
control tool having at least one control tool function
associated therewith
Structure: LCD 472 and memory 440 storing, and
feature processor 430 executing, program 510 and
navigation program 530, which perform the
algorithm disclosed at 5:9-16; 5:40-6:34, Figures
7A-7B, 8, 9A-9C, 10A-10C, 11A-11B.

Supporting Evidence
GOOG-NDCA-13-5933-CC-0000007700000081
GOOG-NDCA-13-5933-CC-0000010900000111
GOOG-NDCA-13-5933-CC-0000012500000144
GOOG-NDCA-13-5933-CC-0000014500000168
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘937
patent.
The specification of the ‘937 patent,
including 5:9-16; 5:40-6:34, Figures 7A-7B,
8, 9A-9C, 10A-10C, 11A-11B and
corresponding text.
The prosecution history of the ‘937 patent,
including Jan. 22, 1999 Amendment, June
16, 1999 Amendment, and prior art
references cited therein.
GOOG-NDCA-13-5933-CC-0000007700000081
GOOG-NDCA-13-5933-CC-0000010900000111
GOOG-NDCA-13-5933-CC-0000012500000144
GOOG-NDCA-13-5933-CC-0000014500000168
Any additional documents cited or relied
upon by Rockstar in support of any

CASE NO. 13-CV-5933-CW
-7JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)

“means for receiving a user
input to the physical viewing
area corresponding to the
manipulable area portion and
the representation of the
control tool”
[Google & Rockstar]

Subject to § 112, ¶ 6

“means for determining if the
user input selects the control
tool”
[Google & Rockstar]

Function: receiving a user input to the physical
viewing area corresponding to the manipulable area
portion and the representation of the control tool
Structure: LCD 472 with an analog touch screen
panel 474 and analog controller 460, memory 440
and feature processor 430, where analog controller
460 scans touch screen overlay 474 while feature
processor 430 refreshes LCD 472 and memory 440
stores, and feature processor 430 executes, program
510 and touchscreen program 520, which perform
the algorithm disclosed at 4:65-5:8, Figures 3A-3B,
4, 6, 8, 10A-10C.

Subject to § 112, ¶ 6
Function: determining if the user input selects the
control tool
Structure: LCD 472 with an analog touch screen
panel 474 and analog controller 460, memory 440
and feature processor 430, where analog controller
460 scans touch screen overlay 474 while feature
processor 430 refreshes LCD 472 and memory 440

Supporting Evidence
contention of earlier conception or reduction
to practice of the asserted claims of the ‘937
patent.
The specification of the ‘937 patent,
including 4:65-5:8, Figures 3A-3B, 4, 6, 8,
10A-10C and corresponding text.
The prosecution history of the ‘937 patent,
including Jan. 22, 1999 Amendment, June
16, 1999 Amendment, and prior art
references cited therein.
GOOG-NDCA-13-5933-CC-0000007700000081
GOOG-NDCA-13-5933-CC-0000010900000111
GOOG-NDCA-13-5933-CC-0000012500000144
GOOG-NDCA-13-5933-CC-0000014500000168
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘937
patent.
The specification of the ‘937 patent,
including 5:16-19 and corresponding text.
The prosecution history of the ‘937 patent,
including Jan. 22, 1999 Amendment, June
16, 1999 Amendment, and prior art
references cited therein.
GOOG-NDCA-13-5933-CC-0000007700000081

CASE NO. 13-CV-5933-CW
-8JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

“means for activating the at
least one manipulation function
when the user input does not
select the control tool or
permitting the at least one
control tool function to be
activated when the user input
does select the control tool”
[Google & Rockstar]

“means for receiving a
subsequent user input selecting

Proposed Construction(s)
stores, and feature processor 430 executes, program
510 and touchscreen program 520, which perform
the algorithm disclosed at 5:16-19.

Subject to § 112, ¶ 6
Function: activating the at least one manipulation
function when the user input does not select the
control tool or permitting the at least one control
tool function to be activated when the user input
does select the control tool
Structure: Memory 440 storing, and feature
processor 430 executing, program 510 and
navigation program 530, which perform the
algorithm disclosed at 5:16-19, 5:27-33.

Subject to § 112, ¶ 6

Supporting Evidence
GOOG-NDCA-13-5933-CC-0000010900000111
GOOG-NDCA-13-5933-CC-0000012500000144
GOOG-NDCA-13-5933-CC-0000014500000168
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘937
patent.
The specification of the ‘937 patent,
including 5:16-19, 5:27-33.
The prosecution history of the ‘937 patent,
including Jan. 22, 1999 Amendment, June
16, 1999 Amendment, and prior art
references cited therein.
GOOG-NDCA-13-5933-CC-0000007700000081
GOOG-NDCA-13-5933-CC-0000010900000111
GOOG-NDCA-13-5933-CC-0000012500000144
GOOG-NDCA-13-5933-CC-0000014500000168
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘937
patent.
The specification of the ‘937 patent,
including 5:40-6:24, Figures 9A-9C, 10A-

CASE NO. 13-CV-5933-CW
-9JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term
a predetermined portion of the
control tool, after at least one
control tool function is
permitted to be activated”
[Rockstar]

Proposed Construction(s)
Function: receiving a subsequent user input
selecting a predetermined portion of the control tool,
after at least one control tool function is permitted to
be activated
Structure: LCD 472 with an analog touch screen
panel 474 and analog controller 460, memory 440
and feature processor 430, where analog controller
460 scans touch screen overlay 474 while feature
processor 430 refreshes LCD 472 and memory 440
stores, and feature processor 430 executes, program
510, touchscreen program 520 and navigation
program 530, which perform the algorithm disclosed
at 5:40-6:24, Figures 9A-9C, 10A-10C, 11A-11B.

“means for activating the
function of changing a display
of information in response to
the subsequent user input”
[Rockstar]

Subject to § 112, ¶ 6
Function: activating the function of changing a
display of information in response to the subsequent
user input
Structure: LCD 472 with an analog touch screen
panel 474 and analog controller 460, memory 440
and feature processor 430, where analog controller
460 scans touch screen overlay 474 while feature
processor 430 refreshes LCD 472 and memory 440
stores, and feature processor 430 executes, program
510, touchscreen program 520 and navigation
program 530, which perform the algorithm disclosed
at 5:40-6:24, Figures 9A-9C, 11A-11B.

Supporting Evidence
10C, 11A-11B and corresponding text.
The prosecution history of the ‘937 patent,
including Jan. 22, 1999 Amendment, June
16, 1999 Amendment, and prior art
references cited therein.
GOOG-NDCA-13-5933-CC-0000007700000081
GOOG-NDCA-13-5933-CC-0000010900000111
GOOG-NDCA-13-5933-CC-0000012500000144
GOOG-NDCA-13-5933-CC-0000014500000168
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘937
patent.
The specification of the ‘937 patent,
including 5:40-6:24, Figures 9A-9C, 11A11B and corresponding text.
The prosecution history of the ‘937 patent,
including Jan. 22, 1999 Amendment, June
16, 1999 Amendment, and prior art
references cited therein.
GOOG-NDCA-13-5933-CC-0000007700000081
GOOG-NDCA-13-5933-CC-0000010900000111
GOOG-NDCA-13-5933-CC-0000012500000144

CASE NO. 13-CV-5933-CW
-10JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

“wherein the means for
displaying a representation of
the control tool includes
displaying arrows indicating
direction”
[Rockstar]

Proposed Construction(s)

Subject to § 112, ¶ 6
Function: displaying arrows indicating direction
Structure: LCD 472 and memory 440 storing, and
feature processor 430 executing, program 510 and
navigation program 530, which perform the
algorithm disclosed at 5:40-63, 6:11-20, Figures 7A7B, 8, 9A-9C, 10A-10C, 11A-11B

Supporting Evidence
GOOG-NDCA-13-5933-CC-0000014500000168
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘937
patent.
The specification of the ‘937 patent,
including 5:40-63, 6:11-20, Figures 7A-7B,
8, 9A-9C, 10A-10C, 11A-11B and
corresponding text.
The prosecution history of the ‘937 patent,
including Jan. 22, 1999 Amendment, June
16, 1999 Amendment, and prior art
references cited therein.
GOOG-NDCA-13-5933-CC-0000007700000081
GOOG-NDCA-13-5933-CC-0000010900000111
GOOG-NDCA-13-5933-CC-0000012500000144
GOOG-NDCA-13-5933-CC-0000014500000168

“wherein the means for
Subject to § 112, ¶ 6
displaying the representation of
the control tool includes
Function: displaying an opaque representation of
displaying an opaque
the control tool

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘937
patent.
The specification of the ‘937 patent,
including 5:22-26, Figures 8, 10A-10C and
corresponding text.

CASE NO. 13-CV-5933-CW
-11JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term
representation of the control
tool”
[Rockstar]

Proposed Construction(s)
Structure: LCD 472 and memory 440 storing, and
feature processor 430 executing, program 510 and
navigation program 530, which perform the
algorithm disclosed at 5:22-26, Figures 8, 10A-10C.

Supporting Evidence
The prosecution history of the ‘937 patent,
including Jan. 22, 1999 Amendment, June
16, 1999 Amendment, and prior art
references cited therein.
GOOG-NDCA-13-5933-CC-0000007700000081
GOOG-NDCA-13-5933-CC-0000010900000111
GOOG-NDCA-13-5933-CC-0000012500000144
GOOG-NDCA-13-5933-CC-0000014500000168

“wherein the means for
displaying the representation of
the control tool includes
displaying a virtually
transparent representation of
the control tool”
[Rockstar]

Subject to § 112, ¶ 6
Function: displaying a virtually transparent of the
control tool
Structure: LCD 472 and memory 440 storing, and
feature processor 430 executing, program 510 and
navigation program 530, which perform the
algorithm disclosed at 5:19-22, 6:25-31.

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘937
patent.
The specification of the ‘937 patent,
including 5:19-22, 6:25-31.
The prosecution history of the ‘937 patent,
including Jan. 22, 1999 Amendment, June
16, 1999 Amendment, and prior art
references cited therein.
GOOG-NDCA-13-5933-CC-0000007700000081
GOOG-NDCA-13-5933-CC-0000010900000111
GOOG-NDCA-13-5933-CC-0000012500000144
GOOG-NDCA-13-5933-CC-0000014500000168

CASE NO. 13-CV-5933-CW
-12JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)

Supporting Evidence
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘937
patent.

CASE NO. 13-CV-5933-CW
-13JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Exhibit A-3
Google’s Proposed Claim Constructions for U.S. Patent No. 6,128,298
Term
“filter node”
[Google]

Proposed Construction(s)
“communications device which assigns its own
public IP address and a unique port value to each
concurrent IP session between public and private
nodes”

Supporting Evidence
The specification of the ‘298 patent,
including the Abstract; cols. 1:5-20; 1:26-67;
2:37-52; 2:65-3:50; 4:32-43; 4:57-6:28; 7:658:11; 8:21-65 and Figs. 1-2 and
accompanying text.
The prosecution history of the ‘298 patent,
including April 22, 1999 Office Action; July
15, 1999 Declaration and Exhibits; October
7, 1999 Office Action; February 25, 2000
Amendment and Reply, and prior art
references cited therein.
September 9, 2014 Deposition of Bruce
Wootton
September 10, 2014 Deposition of William
Colvin
RKS_NDCA_0160464-0160468
RKS_NDCA_0160512-0160514
RKS_NDCA_0001289-0001299
RKS_NDCA_0001285-0001288

“in correlation with”
[Google]

“indexed by”

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘298
patent.
The specification of the ‘298 patent,
including the Abstract; cols. 2:65-3:51; 2:3251; 4:32-44 and 5:37-6:28.
The prosecution history of the ‘298 patent,

CASE NO. 13-CV-5933-CW
-14JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)

Supporting Evidence
including April 22, 1999 Office Action; July
15, 1999 Declaration and Exhibits; October
7, 1999 Office Action; February 25,
Amendment and Reply, and prior art
references cited therein.
September 9, 2014 Deposition of Bruce
Wootton
September 10, 2014 Deposition of William
Colvin
RKS_NDCA_0160464-0160468
RKS_NDCA_0160512-0160514
RKS_NDCA_0001289-0001299
RKS_NDCA_0001285-0001288

“maintaining, by the filter
node”
[Google]

“storing, by the filter node, in a lookup table indexed
by filter node port value”

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘298
patent.
The specification of the ‘298 patent,
including the Abstract; cols. 2:65-3:51; 2:3251; 4:32-44 and 5:37-6:28.
The prosecution history of the ‘298 patent,
including April 22, 1999 Office Action; July
15, 1999 Declaration and Exhibits; October
7, 1999 Office Action; February 25, 2000
Amendment and Reply, and prior art
references cited therein.
September 9, 2014 Deposition of Bruce
Wootton
September 10, 2014 Deposition of William
Colvin

CASE NO. 13-CV-5933-CW
-15JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

“maintaining the source
information taken from the
outgoing data packet in
correlation with a unique value
representing a port of the filter
node”
[Google]

Proposed Construction(s)

“storing the source information taken from the
outgoing data packet in a lookup table indexed by
filter node port value”

Supporting Evidence
RKS_NDCA_0160464-0160468
RKS_NDCA_0160512-0160514
RKS_NDCA_0001289-0001299
RKS_NDCA_0001285-0001288
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘298
patent.
The specification of the ‘298 patent,
including the Abstract; cols. 2:65-3:51; 2:3251; 4:32-44 and 5:37-6:28.
The prosecution history of the ‘298 patent,
including April 22, 1999 Office Action; July
15, 1999 Declaration and Exhibits; October
7, 1999 Office Action; February 25, 2000
Amendment and Reply, and prior art
references cited therein.
September 9, 2014 Deposition of Bruce
Wootton
September 10, 2014 Deposition of William
Colvin
RKS_NDCA_0160464-0160468
RKS_NDCA_0160512-0160514
RKS_NDCA_0001289-0001299
RKS_NDCA_0001285-0001288
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘298
patent.

CASE NO. 13-CV-5933-CW
-16JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term
“maintaining the source
address taken from the data
packet”
[Google]

Proposed Construction(s)
“storing the source address taken from the data
packet in a lookup table indexed by filter node port
value”

Supporting Evidence
The specification of the ‘298 patent,
including the Abstract; cols. 2:65-3:51; 2:3251; 4:32-44 and 5:37-6:28.
The prosecution history of the ‘298 patent,
including April 22, 1999 Office Action; July
15, 1999 Declaration and Exhibits; October
7, 1999 Office Action; February 25, 2000
Amendment and Reply, and prior art
references cited therein.
September 9, 2014 Deposition of Bruce
Wootton
September 10, 2014 Deposition of William
Colvin
RKS_NDCA_0160464-0160468
RKS_NDCA_0160512-0160514
RKS_NDCA_0001289-0001299
RKS_NDCA_0001285-0001288

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘298
patent.
“means for receiving from the Subject to § 112, ¶ 6
This term is indefinite. No portion of the
first network, a data packet
specification or file history renders it
having destination information, This claim term is indefinite under 35 U.S.C. § 112 ¶ definite. Google will rely on the entire
which includes a destination
2.
specification and file history to show that this
address and a destination port,
phrase is indefinite, and to rebut Rockstar’s
corresponding to a node in the If the Court determines that the term is not
arguments regarding this phrase.
second network and having
indefinite, then the term should be construed as
source information, which
follows, in light of the disclosures in the
To the extent not indefinite, Google
includes a source address and a specification most closely related to the function
identifies the specification of the ‘298 patent,
source port, corresponding to a (which Google contends are insufficient to render
including 7:59–8:8, 8:52-60, Fig. 2 and
node in the first network”
the claim definite under 35 U.S.C. § 112 ¶ 2):
corresponding text.

CASE NO. 13-CV-5933-CW
-17JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term
(claim 27)
[Google & Rockstar]

Supporting Evidence

Function: receiving from the first network, a data
packet having destination information, which
includes a destination address and a destination port,
corresponding to a node in the second network and
having source information, which includes a source
address and a source port, corresponding to a node in
the first network.

To the extent not indefinite, Google
identifies the prosecution history of the ‘298
patent, including April 22, 1999 Office
Action; July 15, 1999 Declaration and
Exhibits; October 7, 1999 Office Action;
February 25, 2000 Amendment and Reply,
and prior art references cited therein.

Structure:
Ethernet hardware interfaces, packet drivers 30 and
32, and IP handler 38 of IP filter 12, as disclosed at
7:59–8:8, 8:52-60 and Fig. 2.

“means for receiving from the
first network, a data packet
having a destination address
corresponding to a node in the
second network” (claim 31)
[Google & Rockstar]

Proposed Construction(s)

September 9, 2014 Deposition of Bruce
Wootton
September 10, 2014 Deposition of William
Colvin
RKS_NDCA_0160464-0160468
RKS_NDCA_0160512-0160514
RKS_NDCA_0001289-0001299
RKS_NDCA_0001285-0001288

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘298
patent.
Subject to § 112, ¶ 6
This term is indefinite. No portion of the
specification or file history renders it
This claim term is indefinite under 35 U.S.C. § 112 ¶ definite. Google will rely on the entire
2.
specification and file history to show that this
phrase is indefinite, and to rebut Rockstar’s
If the Court determines that the term is not
arguments regarding this phrase.
indefinite, then the term should be construed as
follows, in light of the disclosures in the
To the extent not indefinite, Google
specification most closely related to the function
identifies the specification of the ‘298 patent,
(which Google contends are insufficient to render
including 7:59–8:8, 8:52-60, Fig. 2 and
the claim definite under 35 U.S.C. § 112 ¶ 2):
corresponding text.
Function: receiving from the first network, a data

To the extent not indefinite, Google

CASE NO. 13-CV-5933-CW
-18JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)
packet having a destination address corresponding to
a node in the second network.
Structure:
Ethernet hardware interfaces, packet drivers 30 and
32, and IP handler 38 software of IP filter 12, as
disclosed at 7:59–8:8, 8:52-60 and Fig. 2.

Supporting Evidence
identifies the prosecution history of the ‘298
patent, including April 22, 1999 Office
Action; July 15, 1999 Declaration and
Exhibits; October 7, 1999 Office Action;
February 25, 2000 Amendment and Reply,
and prior art references cited therein.
September 9, 2014 Deposition of Bruce
Wootton
September 10, 2014 Deposition of William
Colvin
RKS_NDCA_0160464-0160468
RKS_NDCA_0160512-0160514
RKS_NDCA_0001289-0001299
RKS_NDCA_0001285-0001288

“means for maintaining the
source information taken from
the outgoing data packet in
correlation with a unique value
representing a port of the filter
node” (claim 27)
[Google & Rockstar]

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘298
patent.
Subject to § 112, ¶ 6
This term is indefinite. No portion of the
specification or file history renders it
This claim term is indefinite under 35 U.S.C. § 112 ¶ definite. Google will rely on the entire
2.
specification and file history to show that this
phrase is indefinite, and to rebut Rockstar’s
If the Court determines that the term is not
arguments regarding this phrase.
indefinite, then the term should be construed as
follows, in light of the disclosures in the
To the extent not indefinite, Google
specification most closely related to the function
identifies the specification of the ‘298 patent,
(which Google contends are insufficient to render
including 2:65-3:2, 3:10-11, 3:33-37, 4:32-37
the claim definite under 35 U.S.C. § 112 ¶ 2):
and 5:38-6:23.
Function: maintaining source information taken
from the data packet with a unique port value.

To the extent not indefinite, Google
identifies the prosecution history of the ‘298
patent, including April 22, 1999 Office

CASE NO. 13-CV-5933-CW
-19JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

“means for maintaining the
source address taken from the
data packet” (claim 31)
[Google & Rockstar]

Proposed Construction(s)
Structure:
Address translation 40 software of IP filter 12, as
disclosed at 8:9-11 and Fig. 2. Within software,
lookup table for TCP packets indexed by filter node
port value and lookup table for UDP packets indexed
by filter node port value, as disclosed at 2:65-3:2,
3:10-11, 3:33-37, 4:32-37, 5:38-6:23.

Supporting Evidence
Action; July 15, 1999 Declaration and
Exhibits; October 7, 1999 Office Action;
February 25, 2000 Amendment and Reply,
and prior art references cited therein.
September 9, 2014 Deposition of Bruce
Wootton
September 10, 2014 Deposition of William
Colvin
RKS_NDCA_0160464-0160468
RKS_NDCA_0160512-0160514
RKS_NDCA_0001289-0001299
RKS_NDCA_0001285-0001288

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘298
patent.
Subject to § 112, ¶ 6
This term is indefinite. No portion of the
specification or file history renders it
This claim term is indefinite under 35 U.S.C. § 112 ¶ definite. Google will rely on the entire
2.
specification and file history to show that this
phrase is indefinite, and to rebut Rockstar’s
If the Court determines that the term is not
arguments regarding this phrase.
indefinite, then the term should be construed as
follows, in light of the disclosures in the
To the extent not indefinite, Google
specification most closely related to the function
identifies the specification of the ‘298 patent,
(which Google contends are insufficient to render
including 2:65-3:2, 3:10-11, 3:33-37, 4:32-37
the claim definite under 35 U.S.C. § 112 ¶ 2):
and 5:38-6:23.
Function: maintaining the source address taken
from the data packet.
Structure:
Address translation 40 software of IP filter 12, as

To the extent not indefinite, Google
identifies the prosecution history of the ‘298
patent, including April 22, 1999 Office
Action; July 15, 1999 Declaration and
Exhibits; October 7, 1999 Office Action;

CASE NO. 13-CV-5933-CW
-20JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

“means for replacing in the
data packet the source address
with an address of the filter
node and the source port with
the filter node port value”
(claim 27) / “means for
replacing, in the data packet,
the source address with an
address of the filter node,
wherein the source address
includes a source port number
and the address of the filter
node includes a port number of
the filter node” (claim 31)
[Google & Rockstar]

Proposed Construction(s)
disclosed at 8:9-11 and Fig. 2. Within software,
lookup table for TCP packets indexed by filter node
port value and lookup table for UDP packets indexed
by filter node port value, as disclosed at 2:65-3:2,
3:10-11, 3:33-37, 4:32-37, 5:38-6:23.

Supporting Evidence
February 25, 2000 Amendment and Reply,
and prior art references cited therein.
September 9, 2014 Deposition of Bruce
Wootton
September 10, 2014 Deposition of William
Colvin
RKS_NDCA_0160464-0160468
RKS_NDCA_0160512-0160514
RKS_NDCA_0001289-0001299
RKS_NDCA_0001285-0001288

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘298
patent.
This term is indefinite. No portion of the
Subject to § 112, ¶ 6
specification or file history renders it
This claim term is indefinite under 35 U.S.C. § 112 ¶ definite. Google will rely on the entire
specification and file history to show that this
2.
phrase is indefinite, and to rebut Rockstar’s
arguments regarding this phrase.
If the Court determines that the term is not
indefinite, then the term should be construed as
To the extent not indefinite, Google
follows, in light of the disclosures in the
identifies the specification of the ‘298 patent,
specification most closely related to the function
including 2:65-3:2, 3:10-11, 3:33-37, 4:32-37
(which Google contends are insufficient to render
and 5:38-6:23.
the claim definite under 35 U.S.C. § 112 ¶ 2):
Function: replacing in the data packet the source
address with an address of the filter node and the
source port with the filter node port value.
Structure:
Address translation 40 software of IP filter 12, as
disclosed at 8:9-11 and Fig. 2. Within software,

To the extent not indefinite, Google
identifies the prosecution history of the ‘298
patent, including April 22, 1999 Office
Action; July 15, 1999 Declaration and
Exhibits; October 7, 1999 Office Action;
February 25, 2000 Amendment and Reply,
and prior art references cited therein.

CASE NO. 13-CV-5933-CW
-21JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)
lookup table for TCP packets indexed by filter node
port value and lookup table for UDP packets indexed
by filter node port value, as disclosed at 2:65-3:2,
3:10-11, 3:33-37, 4:32-37, 5:38-6:23.

Supporting Evidence
September 9, 2014 Deposition of Bruce
Wootton
September 10, 2014 Deposition of William
Colvin
RKS_NDCA_0160464-0160468
RKS_NDCA_0160512-0160514
RKS_NDCA_0001289-0001299
RKS_NDCA_0001285-0001288

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘298
patent.
This term is indefinite. No portion of the
Subject to § 112, ¶ 6
“means for sending to the
specification or file history renders it
second network, the data
This claim term is indefinite under 35 U.S.C. § 112 ¶ definite. Google will rely on the entire
packet having the replaced
specification and file history to show that this
2.
source information, whereby
phrase is indefinite, and to rebut Rockstar’s
that packet is routed according
arguments regarding this phrase.
If the Court determines that the term is not
to its destination information
indefinite, then the term should be construed as
to the corresponding second
To the extent not indefinite, Google
follows, in light of the disclosures in the
network node” (claim 27) /
identifies the specification of the ‘298 patent,
specification most closely related to the function
“means for sending to the
including 7:59–8:8, 8:52-60, Fig. 2 and
(which Google contends are insufficient to render
second network the data packet
accompanying text.
the claim definite under 35 U.S.C. § 112 ¶ 2):
having the replaced source
address, whereby that packet is
To the extent not indefinite, Google
Function: sending to the second network, the data
routed to the corresponding
identifies the prosecution history of the ‘298
packet having the replaced source information,
second network node” (claim
patent, including April 22, 1999 Office
whereby that packet is routed according to its
31)
destination information to the corresponding second Action; July 15, 1999 Declaration and
Exhibits; October 7, 1999 Office Action;
network node
[Google & Rockstar]
February 25, 2000 Amendment and Reply,
and prior art references cited therein.
Structure:
Ethernet hardware interfaces, packet drivers 30 and
September 9, 2014 Deposition of Bruce
32, and IP handler 38 software of IP filter 12, as

CASE NO. 13-CV-5933-CW
-22JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

“means for replacing, in the
data packet, the destination
information with the particular
source information”
(claim 28)
[Google & Rockstar]

Proposed Construction(s)
disclosed at 7:59–8:8, 8:52-60 and Fig. 2.

Supporting Evidence
Wootton
September 10, 2014 Deposition of William
Colvin
RKS_NDCA_0160464-0160468
RKS_NDCA_0160512-0160514
RKS_NDCA_0001289-0001299
RKS_NDCA_0001285-0001288

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘298
patent.
Subject to § 112, ¶ 6
This term is indefinite. No portion of the
specification or file history renders it
This claim term is indefinite under 35 U.S.C. § 112 ¶ definite. Google will rely on the entire
2.
specification and file history to show that this
phrase is indefinite, and to rebut Rockstar’s
If the Court determines that the term is not
arguments regarding this phrase.
indefinite, then the term should be construed as
follows, in light of the disclosures in the
To the extent not indefinite, Google
specification most closely related to the function
identifies the specification of the ‘298 patent,
(which Google contends are insufficient to render
including 2:65-3:2, 3:10-11, 3:33-37, 4:32-37
the claim definite under 35 U.S.C. § 112 ¶ 2):
and 5:38-6:23.
Function: replacing, in the data packet, the
destination information with the particular source
information.

To the extent not indefinite, Google
identifies the prosecution history of the ‘298
patent, including April 22, 1999 Office
Action; July 15, 1999 Declaration and
Exhibits; October 7, 1999 Office Action;
February 25, 2000 Amendment and Reply,
and prior art references cited therein.

Structure:
Address translation 40 software of IP filter 12, as
disclosed at 8:9-11 and Fig. 2. Within software,
lookup table for TCP packets indexed by filter node
port value and lookup table for UDP packets indexed September 9, 2014 Deposition of Bruce
by filter node port value, as disclosed at 2:65-3:2,
Wootton
3:10-11, 3:33-37, 4:32-37, 5:38-6:23.
September 10, 2014 Deposition of William

CASE NO. 13-CV-5933-CW
-23JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

“means for receiving from the
second network, a data packet
having the address of the filter
node as the destination
address”
(claim 28)
[Google & Rockstar]

Proposed Construction(s)

Supporting Evidence
Colvin
RKS_NDCA_0160464-0160468
RKS_NDCA_0160512-0160514
RKS_NDCA_0001289-0001299
RKS_NDCA_0001285-0001288

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘298
patent.
Subject to § 112, ¶ 6
This term is indefinite. No portion of the
specification or file history renders it
This claim term is indefinite under 35 U.S.C. § 112 ¶ definite. Google will rely on the entire
2.
specification and file history to show that this
phrase is indefinite, and to rebut Rockstar’s
If the Court determines that the term is not
arguments regarding this phrase.
indefinite, then the term should be construed as
follows, in light of the disclosures in the
To the extent not indefinite, Google
specification most closely related to the function
identifies the specification of the ‘298 patent,
(which Google contends are insufficient to render
including 7:59–8:8, 8:25-35, 8:61-65, Fig. 2
the claim definite under 35 U.S.C. § 112 ¶ 2):
and accompanying text.
Function: receiving from the second network, a
data packet having the address of the filter node as
the destination address.
Structure:
Ethernet hardware interfaces, packet drivers 30 and
32, and IP handler 38 software of IP filter 12, as
disclosed at 7:59–8:8, 8:25-35, 8:61-65 and Fig. 2.

To the extent not indefinite, Google
identifies the prosecution history of the ‘298
patent, including April 22, 1999 Office
Action; July 15, 1999 Declaration and
Exhibits; October 7, 1999 Office Action;
February 25, 2000 Amendment and Reply,
and prior art references cited therein.
September 9, 2014 Deposition of Bruce
Wootton
September 10, 2014 Deposition of William
Colvin
RKS_NDCA_0160464-0160468

CASE NO. 13-CV-5933-CW
-24JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

“means for correlating the
destination port of the
destination information in the
data packet to particular source
information being maintained”
(claim 28)
[Google & Rockstar]

Proposed Construction(s)

Supporting Evidence
RKS_NDCA_0160512-0160514
RKS_NDCA_0001289-0001299
RKS_NDCA_0001285-0001288

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘298
patent.
Subject to § 112, ¶ 6
This term is indefinite. No portion of the
specification or file history renders it
This claim term is indefinite under 35 U.S.C. § 112 ¶ definite. Google will rely on the entire
2.
specification and file history to show that this
phrase is indefinite, and to rebut Rockstar’s
If the Court determines that the term is not
arguments regarding this phrase.
indefinite, then the term should be construed as
follows, in light of the disclosures in the
To the extent not indefinite, Google
specification most closely related to the function
identifies the specification of the ‘298 patent,
(which Google contends are insufficient to render
including 2:65-3:2, 3:10-11, 3:33-37, 4:32-37
the claim definite under 35 U.S.C. § 112 ¶ 2):
and 5:38-6:23.
Function: correlating the destination port of the
destination information in the data packet to
particular source information being maintained.

To the extent not indefinite, Google
identifies the prosecution history of the ‘298
patent, including April 22, 1999 Office
Action; July 15, 1999 Declaration and
Exhibits; October 7, 1999 Office Action;
February 25, 2000 Amendment and Reply,
and prior art references cited therein.

Structure:
Address translation 40 software of IP filter 12, as
disclosed at 8:9-11 and Fig. 2. Within software,
lookup table for TCP packets indexed by filter node
port value and lookup table for UDP packets indexed September 9, 2014 Deposition of Bruce
by filter node port value, as disclosed at 2:65-3:2,
Wootton
3:10-11, 3:33-37, 4:32-37, 5:38-6:23.
September 10, 2014 Deposition of William
Colvin
RKS_NDCA_0160464-0160468
RKS_NDCA_0160512-0160514
RKS_NDCA_0001289-0001299

CASE NO. 13-CV-5933-CW
-25JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)

Supporting Evidence
RKS_NDCA_0001285-0001288

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘298
patent.
“means for sending to the first Subject to § 112, ¶ 6
This term is indefinite. No portion of the
network the data packet having
specification or file history renders it
the replaced destination
This claim term is indefinite under 35 U.S.C. § 112 ¶ definite. Google will rely on the entire
information, whereby that
2.
specification and file history to show that this
packet is routed according to
phrase is indefinite, and to rebut Rockstar’s
its destination information to
If the Court determines that the term is not
arguments regarding this phrase.
the corresponding first network indefinite, then the term should be construed as
node” (claim 28)
follows, in light of the disclosures in the
To the extent not indefinite, Google
[Google & Rockstar]
specification most closely related to the function
identifies the specification of the ‘298 patent,
(which Google contends are insufficient to render
including 7:59–8:8, 8:25-35, 8:61-65, Fig. 2
the claim definite under 35 U.S.C. § 112 ¶ 2):
and accompanying text.
Function: sending to the first network the data
packet having the replaced destination information,
whereby that packet is routed according to its
destination information to the corresponding first
network node.
Structure:
Ethernet hardware interfaces, packet drivers 30 and
32, and IP handler 38 software of IP filter 12, as
disclosed at 7:59–8:8, 8:25-35, 8:61-65 and Fig. 2.

To the extent not indefinite, Google
identifies the prosecution history of the ‘298
patent, including April 22, 1999 Office
Action; July 15, 1999 Declaration and
Exhibits; October 7, 1999 Office Action;
February 25, 2000 Amendment and Reply,
and prior art references cited therein.
September 9, 2014 Deposition of Bruce
Wootton
September 10, 2014 Deposition of William
Colvin
RKS_NDCA_0160464-0160468
RKS_NDCA_0160512-0160514
RKS_NDCA_0001289-0001299
RKS_NDCA_0001285-0001288

CASE NO. 13-CV-5933-CW
-26JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

“means for ignoring a data
packet received from the
second network, if the
destination port of the
destination information in that
data packet can not be
correlated to the maintained
source information” (claim 29)
[Google & Rockstar]

Proposed Construction(s)

Supporting Evidence
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘298
patent.
Subject to § 112, ¶ 6
This term is indefinite. No portion of the
specification or file history renders it
This claim term is indefinite under 35 U.S.C. § 112 ¶ definite. Google will rely on the entire
2.
specification and file history to show that this
phrase is indefinite, and to rebut Rockstar’s
If the Court determines that the term is not
arguments regarding this phrase.
indefinite, then the term should be construed as
follows, in light of the disclosures in the
To the extent not indefinite, Google
specification most closely related to the function
identifies the specification of the ‘298 patent,
(which Google contends are insufficient to render
including 6:19-23, 8:9-11, Fig. 2 and
the claim definite under 35 U.S.C. § 112 ¶ 2):
accompanying text.
Function: ignoring a data packet received from the
second network, if the destination port of the
destination information in that data packet can not be
correlated to the maintained source information.
Structure:
Address translation 40 software of IP filter 12, as
disclosed at 6:19-23, 8:9-11 and Fig. 2.

To the extent not indefinite, Google
identifies the prosecution history of the ‘298
patent, including April 22, 1999 Office
Action; July 15, 1999 Declaration and
Exhibits; October 7, 1999 Office Action;
February 25, 2000 Amendment and Reply,
and prior art references cited therein.
September 9, 2014 Deposition of Bruce
Wootton
September 10, 2014 Deposition of William
Colvin
RKS_NDCA_0160464-0160468
RKS_NDCA_0160512-0160514
RKS_NDCA_0001289-0001299
RKS_NDCA_0001285-0001288
Any additional documents cited or relied
upon by Rockstar in support of any

CASE NO. 13-CV-5933-CW
-27JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

“means for storing the source
information from the data
packet as an entry in a lookup
table, and wherein the filter
node port value correlating to
the source information
constitutes an index into the
table for that entry” (claim 30)
[Google]

Proposed Construction(s)

Supporting Evidence
contention of earlier conception or reduction
to practice of the asserted claims of the ‘298
patent.
Subject to § 112, ¶ 6
This term is indefinite. No portion of the
specification or file history renders it
This claim term is indefinite under 35 U.S.C. § 112 ¶ definite. Google will rely on the entire
2.
specification and file history to show that this
phrase is indefinite, and to rebut Rockstar’s
If the Court determines that the term is not
arguments regarding this phrase.
indefinite, then the term should be construed as
follows, in light of the disclosures in the
To the extent not indefinite, Google
specification most closely related to the function
identifies the specification of the ‘298 patent,
(which Google contends are insufficient to render
including 2:65-3:2, 3:10-11, 3:33-37, 4:32-37
the claim definite under 35 U.S.C. § 112 ¶ 2):
and 5:38-6:23.
Function: storing the source information from the
data packet as an entry in a lookup table, and
wherein the filter node port value correlating to the
source information constitutes an index into the table
for that entry.
Structure:
Address translation 40 software of IP filter 12, as
disclosed at 8:9-11 and Fig. 2. Within software,
lookup table for TCP packets indexed by filter node
port value and lookup table for UDP packets indexed
by filter node port value, as disclosed at 2:65-3:2,
3:10-11, 3:33-37, 4:32-37, 5:38-6:23.

To the extent not indefinite, Google
identifies the prosecution history of the ‘298
patent, including April 22, 1999 Office
Action; July 15, 1999 Declaration and
Exhibits; October 7, 1999 Office Action;
February 25, 2000 Amendment and Reply,
and prior art references cited therein.
September 9, 2014 Deposition of Bruce
Wootton
September 10, 2014 Deposition of William
Colvin
RKS_NDCA_0160464-0160468
RKS_NDCA_0160512-0160514
RKS_NDCA_0001289-0001299
RKS_NDCA_0001285-0001288
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘298

CASE NO. 13-CV-5933-CW
-28JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term
“means for receiving a return
packet from the second
network, responsive to the data
packet having the replaced
source information”
(claim 31)
[Google & Rockstar]

Proposed Construction(s)

Supporting Evidence
patent.
Subject to § 112, ¶ 6
This term is indefinite. No portion of the
specification or file history renders it
This claim term is indefinite under 35 U.S.C. § 112 ¶ definite. Google will rely on the entire
2.
specification and file history to show that this
phrase is indefinite, and to rebut Rockstar’s
If the Court determines that the term is not
arguments regarding this phrase.
indefinite, then the term should be construed as
follows, in light of the disclosures in the
To the extent not indefinite, Google
specification most closely related to the function
identifies the specification of the ‘298 patent,
(which Google contends are insufficient to render
including 7:59–8:8, 8:25-35, 8:61-65, Fig. 2
the claim definite under 35 U.S.C. § 112 ¶ 2):
and accompanying text.
Function: receiving a return packet from the second To the extent not indefinite, Google
network, responsive to the data packet having the
identifies the prosecution history of the ‘298
replaced source information.
patent, including April 22, 1999 Office
Action; July 15, 1999 Declaration and
Exhibits; October 7, 1999 Office Action;
Structure:
Ethernet hardware interfaces, packet drivers 30 and
February 25, 2000 Amendment and Reply,
32, and IP handler 38 software of IP filter 12, as
and prior art references cited therein.
disclosed at 7:59–8:8, 8:25-35, 8:61-65 and Fig. 2.
September 9, 2014 Deposition of Bruce
Wootton
September 10, 2014 Deposition of William
Colvin
RKS_NDCA_0160464-0160468
RKS_NDCA_0160512-0160514
RKS_NDCA_0001289-0001299
RKS_NDCA_0001285-0001288

“means for replacing, in the

Subject to § 112, ¶ 6

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘298
patent.
This term is indefinite. No portion of the

CASE NO. 13-CV-5933-CW
-29JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term
return packet, the destination
address with the maintained
source address”
(claim 31)
[Google & Rockstar]

Proposed Construction(s)

Supporting Evidence
specification or file history renders it
This claim term is indefinite under 35 U.S.C. § 112 ¶ definite. Google will rely on the entire
2.
specification and file history to show that this
phrase is indefinite, and to rebut Rockstar’s
If the Court determines that the term is not
arguments regarding this phrase.
indefinite, then the term should be construed as
follows, in light of the disclosures in the
To the extent not indefinite, Google
specification most closely related to the function
identifies the specification of the ‘298 patent,
(which Google contends are insufficient to render
including 2:65-3:2, 3:10-11, 3:33-37, 4:32-37
the claim definite under 35 U.S.C. § 112 ¶ 2):
and 5:38-6:23.
Function: replacing, in the return packet, the
destination address with the maintained source
address.

To the extent not indefinite, Google
identifies the prosecution history of the ‘298
patent, including April 22, 1999 Office
Action; July 15, 1999 Declaration and
Exhibits; October 7, 1999 Office Action;
February 25, 2000 Amendment and Reply,
and prior art references cited therein.

Structure:
Address translation 40 software of IP filter 12, as
disclosed at 8:9-11 and Fig. 2. Within software,
lookup table for TCP packets indexed by filter node
port value and lookup table for UDP packets indexed
September 9, 2014 Deposition of Bruce
by filter node port value, as disclosed at 2:65-3:2,
3:10-11, 3:33-37, 4:32-37, 5:38-6:23.
Wootton
September 10, 2014 Deposition of William
Colvin
RKS_NDCA_0160464-0160468
RKS_NDCA_0160512-0160514
RKS_NDCA_0001289-0001299
RKS_NDCA_0001285-0001288

“means for sending to the first
network the return packet

Subject to § 112, ¶ 6

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘298
patent.
This term is indefinite. No portion of the
specification or file history renders it

CASE NO. 13-CV-5933-CW
-30JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term
having the replaced destination
address, whereby that packet is
routed to the corresponding the
first network node”
(claim 31)
[Google & Rockstar]

Proposed Construction(s)
Supporting Evidence
This claim term is indefinite under 35 U.S.C. § 112 ¶ definite. Google will rely on the entire
2.
specification and file history to show that this
phrase is indefinite, and to rebut Rockstar’s
If the Court determines that the term is not
arguments regarding this phrase.
indefinite, then the term should be construed as
follows, in light of the disclosures in the
To the extent not indefinite, Google
specification most closely related to the function
identifies the specification of the ‘298 patent,
(which Google contends are insufficient to render
including 7:59–8:8, 8:25-35, 8:61-65, Fig. 2
the claim definite under 35 U.S.C. § 112 ¶ 2):
and accompanying text.
Function: sending to the first network the return
packet having the replaced destination address,
whereby that packet is routed to the corresponding
the first network node.
Structure:
Ethernet hardware interfaces, packet drivers 30 and
32, and IP handler 38 software of IP filter 12, as
disclosed at 7:59–8:8, 8:25-35, 8:61-65 and Fig. 2.

“means for buffering further
data packets received from the
first network while waiting for
the return packet”

To the extent not indefinite, Google
identifies the prosecution history of the ‘298
patent, including April 22, 1999 Office
Action; July 15, 1999 Declaration and
Exhibits; October 7, 1999 Office Action;
February 25, 2000 Amendment and Reply,
and prior art references cited therein.
September 9, 2014 Deposition of Bruce
Wootton
September 10, 2014 Deposition of William
Colvin
RKS_NDCA_0160464-0160468
RKS_NDCA_0160512-0160514
RKS_NDCA_0001289-0001299
RKS_NDCA_0001285-0001288

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘298
patent.
Subject to § 112, ¶ 6
This term is indefinite. No portion of the
specification or file history renders it
This claim term is indefinite under 35 U.S.C. § 112 ¶ definite. Google will rely on the entire
2.
specification and file history to show that this

CASE NO. 13-CV-5933-CW
-31JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term
(claim 32)
[Google & Rockstar]

Proposed Construction(s)
If the Court determines that the term is not
indefinite, then the term should be construed as
follows, in light of the disclosures in the
specification most closely related to the function
(which Google contends are insufficient to render
the claim definite under 35 U.S.C. § 112 ¶ 2):
Function: buffering further data packets received
from the first network while waiting for the return
packet.
Structure:
Address translation 40 software of IP filter 12, as
disclosed at 3:52-62, 8:9-11 and Fig. 2.

Supporting Evidence
phrase is indefinite, and to rebut Rockstar’s
arguments regarding this phrase.
To the extent not indefinite, Google
identifies the specification of the ‘298 patent,
including 3:52-62, 8:9-11, Fig. 2 and
accompanying text.
To the extent not indefinite, Google
identifies the prosecution history of the ‘298
patent, including April 22, 1999 Office
Action; July 15, 1999 Declaration and
Exhibits; October 7, 1999 Office Action;
February 25, 2000 Amendment and Reply,
and prior art references cited therein.
September 9, 2014 Deposition of Bruce
Wootton
September 10, 2014 Deposition of William
Colvin
RKS_NDCA_0160464-0160468
RKS_NDCA_0160512-0160514
RKS_NDCA_0001289-0001299
RKS_NDCA_0001285-0001288

“means for controlling means
(b) through (g) on an
individual basis for processing
the further packets, if any, that
were buffered”
(claim 32)

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘298
patent.
Subject to § 112, ¶ 6
This term is indefinite. No portion of the
specification or file history renders it
This claim term is indefinite under 35 U.S.C. § 112 ¶ definite. Google will rely on the entire
2.
specification and file history to show that this
phrase is indefinite, and to rebut Rockstar’s
arguments regarding this phrase.

CASE NO. 13-CV-5933-CW
-32JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term
[Google & Rockstar]

Proposed Construction(s)
If the Court determines that the term is not
indefinite, then the term should be construed as
follows, in light of the disclosures in the
specification most closely related to the function
(which Google contends are insufficient to render
the claim definite under 35 U.S.C. § 112 ¶ 2):
Function: controlling means (b) through (g) on an
individual basis for processing the further packets, if
any, that were buffered.
Structure:
Address translation 40 software of IP filter 12, as
disclosed at 3:52-62, 8:9-11 and Fig. 2.

Supporting Evidence
To the extent not indefinite, Google
identifies the specification of the ‘298 patent,
including 3:52-62, 8:9-11, Fig. 2 and
accompanying text.
To the extent not indefinite, Google
identifies the prosecution history of the ‘298
patent, including April 22, 1999 Office
Action; July 15, 1999 Declaration and
Exhibits; October 7, 1999 Office Action;
February 25, 2000 Amendment and Reply,
and prior art references cited therein.
September 9, 2014 Deposition of Bruce
Wootton
September 10, 2014 Deposition of William
Colvin
RKS_NDCA_0160464-0160468
RKS_NDCA_0160512-0160514
RKS_NDCA_0001289-0001299
RKS_NDCA_0001285-0001288

“ignoring”
[Google]

“dropping”

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘298
patent.
The specification of the ‘298 patent,
including cols. 2:53-57; 3:10-51; 5:30-6:61;
7:11-38; 8:25-35.
The prosecution history of the ‘298 patent,
including April 22, 1999 Office Action; July
15, 1999 Declaration and Exhibits; October
7, 1999 Office Action; February 25, 2000

CASE NO. 13-CV-5933-CW
-33JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)

Supporting Evidence
Amendment and Reply, and prior art
references cited therein.
September 9, 2014 Deposition of Bruce
Wootton
September 10, 2014 Deposition of William
Colvin
RKS_NDCA_0160464-0160468
RKS_NDCA_0160512-0160514
RKS_NDCA_0001289-0001299
RKS_NDCA_0001285-0001288
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘298
patent.

Antecedent basis constructions
“the source address taken from Indefinite
the data packet”
[Google]

“the public node network”
[Google]

Indefinite

Order of steps of method claims
Order of steps of claims 11,
11.1 must occur before 11.2.
14, 15, 19, 23, 24
11.2 must occur after 11.1 and before 11.3.
[Google]
11.3 must occur after 11.2 and before 11.4.

This term is indefinite. No portion of the
specification or file history renders it
definite. Google will rely on the entire
specification and file history to show that this
phrase is indefinite, and to rebut Rockstar’s
arguments regarding this phrase.
This term is indefinite. No portion of the
specification or file history renders it
definite. Google will rely on the entire
specification and file history to show that this
phrase is indefinite, and to rebut Rockstar’s
arguments regarding this phrase.
The specification of the ‘298 patent,
including Abstract; 1:26-35; 2:65-3:62; 5:17:36; 8:21-65.

CASE NO. 13-CV-5933-CW
-34JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)
11.5 must occur after 11.4 and before 11.6.
11.7 must occur after 11.6 and before 11.8.
11.8 must occur after 11.7.
14.1 must occur before 14.2.
14.2 must occur after 14.1 and before 14.3.
14.3 must occur after 14.2 and before 14.4.
14.4 must occur after 14.3 and before 14.5.
14.5 must occur after 14.
15.2 must occur before 15.3.
15.3 must occur after 15.2 and before 15.4.
15.4 must occur after 15.3 and before 15.5.
15.5 must occur after 15.4.
19.1 must occur before 19.2.
19.2 must occur after 19.1 and before 19.3.
19.3 must occur after 19.2 and before 19.4.
19.5 must occur after 19.4 and before 19.6.
19.7 must occur after 19.6 and before 19.8.
19.8 must occur after 19.7 and before 19.9.
19.9 must occur after 19.8 and before 19.10.
19.10 must occur after 19.9 and before 19.11.
19.11 must occur after 19.10 and before 19.12.
19.12 must occur after 19.11 and before 19.13.
19.13 must occur after 19.12 and before 19.14.
19.14 must occur after 19.13.

Supporting Evidence
The prosecution history of the ‘298 patent,
including April 22, 1999 Office Action; July
15, 1999 Declaration and Exhibits; October
7, 1999 Office Action; February 25, 2000
Amendment and Reply, and prior art
references cited therein.
September 9, 2014 Deposition of Bruce
Wootton
September 10, 2014 Deposition of William
Colvin
RKS_NDCA_0160464-0160468
RKS_NDCA_0160512-0160514
RKS_NDCA_0001289-0001299
RKS_NDCA_0001285-0001288
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘298
patent.

23.1 must occur before 23.2.
23.2 must occur after 23.1 and before 23.3.
23.3 must occur after 23.2 and before 23.4.
23.5 must occur after 23.4 and before 23.6.
23.7 must occur after 23.6 and before 23.8.
23.8 must occur after 23.7 and before 23.9.
23.9 must occur after 23.8 and before 23.10.
23.10 must occur after 23.9 and before 23.11.
23.11 must occur after 23.10 and before 23.12.

CASE NO. 13-CV-5933-CW
-35JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)
23.12 must occur after 23.11 and before 23.13.
23.13 must occur after 23.12.

Supporting Evidence

24.1 must occur before 24.2.
24.2 must occur after 24.1 and before 24.3.
24.3 must occur after 24.2 and before 24.4.
24.5 must occur after 24.4 and before 24.6.
24.7 must occur after 24.6 and before 24.8.
24.8 must occur after 24.7.

CASE NO. 13-CV-5933-CW
-36JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Exhibit A-4
Google’s Proposed Claim Constructions for U.S. Patent No. 6,333,973
Term
“pending message” [Google]

Proposed Construction(s)
message awaiting download from a network services
provider

Supporting Evidence
The specification of the ‘973 patent,
including cols. 2:7-23, 4:1-7, 7:7-8:10, 8:5265, claim 27, and Figs. 1, 3, 5-7 and
accompanying text.
The prosecution history of the ‘973 patent,
including February 11, 1999 Office Action,
May 7, 1999 Amendment & Remarks,
March 30, 2000 Office Action, June 29,
2000 Amendment & Remarks, September
11, 2000 Office Action, February 12, 2001
Amendment & Remarks, and prior art
references cited therein.
GOOG-NDCA-13-5933-CC-0000000100000003
GOOG-NDCA-13-5933-CC-0000000600000008
GOOG-NDCA-13-5933-CC-0000008500000091
GOOG-NDCA-13-5933-CC-0000009500000100
GOOG-NDCA-13-5933-CC-0000012200000124

“notification message” (as used
in the phrases “notification

message notifying the user of a pending message

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘973
patent.
The specification of the ‘973 patent,
including cols. 7:7-8:10, 8:27-45, and Figs.

CASE NO. 13-CV-5933-CW
-37JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term
messages corresponding to
pending messages”) (claims 1,
8, 21) [Google]

Proposed Construction(s)
(“pending message” as construed above)

Supporting Evidence
1-5, 7 and accompanying text.
The prosecution history of the ‘973 patent,
including February 11, 1999 Office Action,
May 7, 1999 Amendment & Remarks, July
16, 1999 Office Action, November 12, 1999
Amendment & Remarks, December 10, 1999
Office Action, March 30, 2000 Office
Action, June 29, 2000 Amendment &
Remarks, September 11, 2000 Office Action,
February 12, 2001 Amendment & Remarks,
and prior art references cited therein.
GOOG-NDCA-13-5933-CC-0000000100000003
GOOG-NDCA-13-5933-CC-0000000600000008
GOOG-NDCA-13-5933-CC-0000008500000091
GOOG-NDCA-13-5933-CC-0000009500000100
GOOG-NDCA-13-5933-CC-0000012200000124

“retrieving” [Google]

downloading from the network services provider

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘973
patent.
The specification of the ‘973 patent,
including cols. 1:40-46, 10:3-65, claim 27,
and Figs. 1-5, 7, 11-12 and accompanying
text.
The prosecution history of the ‘973 patent,
including February 11, 1999 Office Action,

CASE NO. 13-CV-5933-CW
-38JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)

Supporting Evidence
May 7, 1999 Amendment & Remarks,
March 30, 2000 Office Action, June 29,
2000 Amendment & Remarks, September
11, 2000 Office Action, February 12, 2001
Amendment & Remarks, and prior art
references cited therein.
GOOG-NDCA-13-5933-CC-0000000100000003
GOOG-NDCA-13-5933-CC-0000000600000008
GOOG-NDCA-13-5933-CC-0000008500000091
GOOG-NDCA-13-5933-CC-0000009500000100
GOOG-NDCA-13-5933-CC-0000012200000124

“wherein the notification
messages are received from an
interface with independent
connections with different
bandwidths for [the] different
types of pending messages”
[Google]

wherein the notification messages are received from
an element of the network services provider having
independent connections with different bandwidths
for the different types of pending messages
(“notification message” as construed above)

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘973
patent.
The specification of the ‘973 patent,
including cols. 3:48-5:8, 5:14-62, 7:7-8:10,
claim 27, and Figs. 1-5 and accompanying
text.
The prosecution history of the ‘973 patent,
including February 11, 1999 Office Action,
May 7, 1999 Amendment & Remarks, July
16, 1999 Office Action, November 12, 1999
Amendment & Remarks, December 10, 1999
Office Action, March 30, 2000 Office
Action, June 29, 2000 Amendment &
Remarks, September 11, 2000 Office Action,

CASE NO. 13-CV-5933-CW
-39JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)

Supporting Evidence
January 9, 2001 Interview Summary &
Attachment, February 12, 2001 Amendment
& Remarks, April 6, 2001 Office Action,
May 29, 2001 Amendment & Remarks, June
8, 2001 Notice of Allowability & Reasons
for Allowance, and prior art references cited
therein.
GOOG-NDCA-13-5933-CC-0000000100000003
GOOG-NDCA-13-5933-CC-0000000600000008
GOOG-NDCA-13-5933-CC-0000008500000091
GOOG-NDCA-13-5933-CC-0000009500000100
GOOG-NDCA-13-5933-CC-0000012200000124

“wherein the notification
messages are received from an
interface with independent
connections with different
bandwidths for the different
types of the plurality of
message senders” [Google]

wherein the notification messages are received from
an element of the network services provider having
independent connections with different bandwidths
for the different types of the plurality of message
senders
(“notification message” as construed above)

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘973
patent.
The specification of the ‘973 patent,
including cols. 3:48-5:8, 5:14-62, 7:7-8:10,
claim 27, and Figs. 1-5 and accompanying
text.
The prosecution history of the ‘973 patent,
including February 11, 1999 Office Action,
May 7, 1999 Amendment & Remarks, July
16, 1999 Office Action, November 12, 1999
Amendment & Remarks, December 10, 1999
Office Action, March 30, 2000 Office
Action, June 29, 2000 Amendment &

CASE NO. 13-CV-5933-CW
-40JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)

Supporting Evidence
Remarks, September 11, 2000 Office Action,
January 9, 2001 Interview Summary &
Attachment, February 12, 2001 Amendment
& Remarks, April 6, 2001 Office Action,
May 29, 2001 Amendment & Remarks, June
8, 2001 Notice of Allowability & Reasons
for Allowance, and prior art references cited
therein.
GOOG-NDCA-13-5933-CC-0000000100000003
GOOG-NDCA-13-5933-CC-0000000600000008
GOOG-NDCA-13-5933-CC-0000008500000091
GOOG-NDCA-13-5933-CC-0000009500000100
GOOG-NDCA-13-5933-CC-0000012200000124

“means for automatically
receiving notification messages
corresponding to pending
messages of different types, the
notification messages including
information regarding the
source of each of the pending
messages and the type of each
of the pending messages,
wherein each of the notification
messages is automatically sent

Governed by 35 U.S.C. § 112 ¶ 6
Function:
1) automatically receiving notification messages
corresponding to pending messages of different
types and including information regarding the source
of each of the pending messages and the type of each
of the pending messages, from an interface with
independent connections with different bandwidths
for the different types of pending messages; and
2) automatically sending each of the notification

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘973
patent.
The specification of the ‘973 patent,
including cols. 1:40-46, 2:7-23, 3:48-5:8,
5:14-62, 7:7-8:10, 8:27-45, 8:52-65, 10:3-65,
claim 27, and Figs. 1-5, 7, 11-12 and
accompanying text.
The prosecution history of the ‘973 patent,
including February 11, 1999 Office Action,
May 7, 1999 Amendment & Remarks, July
16, 1999 Office Action, November 12, 1999
Amendment & Remarks, December 10, 1999

CASE NO. 13-CV-5933-CW
-41JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term
to the user when one of the
pending messages is initially
received and wherein the
notification messages are
received from an interface with
independent connections with
different bandwidths for the
different types of pending
messages” [Google / Rockstar]

Proposed Construction(s)
messages to the user when one of the pending
messages is initially received
Structure:
Antenna 3100 and GSM radio 3210 of FIG. 3, the
Global System for Mobile Communication (GSM)
switching fabric in block 1800 of FIG. 1; and the
interface at the network service provider in block
5100 of FIG. 5 and elements connected to it, as
disclosed in 7:1-8:9.

Supporting Evidence
Office Action, March 30, 2000 Office
Action, June 29, 2000 Amendment &
Remarks, September 11, 2000 Office Action,
January 9, 2001 Interview Summary &
Attachment, February 12, 2001 Amendment
& Remarks, April 6, 2001 Office Action,
May 29, 2001 Amendment & Remarks, June
8, 2001 Notice of Allowability & Reasons
for Allowance, and prior art references cited
therein.
GOOG-NDCA-13-5933-CC-0000000100000003
GOOG-NDCA-13-5933-CC-0000000600000008
GOOG-NDCA-13-5933-CC-0000008500000091
GOOG-NDCA-13-5933-CC-0000009500000100
GOOG-NDCA-13-5933-CC-0000012200000124

“means for determining a
message type of the pending
messages from the information
corresponding to the received
notification messages” [Google
/ Rockstar]

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘973
patent.
Subject to § 112, ¶ 6
This term is indefinite. No portion of the
specification or file history renders it
This claim term is indefinite under 35 U.S.C. § 112 ¶ definite. Google will rely on the entire
2.
specification and file history to show that
this phrase is indefinite, and to rebut
If the Court determines that the term is not
Rockstar’s arguments regarding this phrase.
indefinite, then the term should be construed as
follows, in light of the disclosures in the
To the extent not indefinite, Google
specification most closely related to the function
identifies the specification of the ‘973 patent,

CASE NO. 13-CV-5933-CW
-42JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)
(which Google contends are insufficient to render
the claim definite under 35 U.S.C. § 112 ¶ 2):

Supporting Evidence
including cols. 5:50-6:2 and 8:27-35, and
Figs. 1-5, 7 and accompanying text.

GOOG-NDCA-13-5933-CC-0000000100000003
GOOG-NDCA-13-5933-CC-0000000600000008
GOOG-NDCA-13-5933-CC-00000085Structure:
Feature processor 3300, memory 3400, and Message 00000091
Center 6100 software of Device 1100 performing the GOOG-NDCA-13-5933-CC-00000095alleged algorithm as disclosed in 5:50-6:2 and 8:27- 00000100
35.
GOOG-NDCA-13-5933-CC-0000012200000124
Function:
determining a message type of the pending messages
from the information corresponding to the received
notification messages

“means for associating a
message type indicator with
each of the received
notification messages based on
the determined message type”
[Google / Rockstar]

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘973
patent.
Subject to § 112, ¶ 6
This term is indefinite. No portion of the
specification or file history renders it
This claim term is indefinite under 35 U.S.C. § 112 ¶ definite. Google will rely on the entire
2.
specification and file history to show that
this phrase is indefinite, and to rebut
If the Court determines that the term is not
Rockstar’s arguments regarding this phrase.
indefinite, then the term should be construed as
follows, in light of the disclosures in the
To the extent not indefinite, Google
specification most closely related to the function
identifies the specification of the ‘973 patent,
(which Google contends are insufficient to render
including cols. 5:50-6:2, 8:27-35, and 8:40the claim definite under 35 U.S.C. § 112 ¶ 2):
45, and Figs. 1-5, 7 and accompanying text.
Function:
associating a message type indicator with each of the
received notification messages based on the
determined message type

GOOG-NDCA-13-5933-CC-0000000100000003
GOOG-NDCA-13-5933-CC-0000000600000008

CASE NO. 13-CV-5933-CW
-43JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

“means for receiving a
selection of one of the pending
messages based on the entries
in the single selectable list”
[Google / Rockstar]

“means for retrieving
[manipulating] the selected
pending message for viewing

Proposed Construction(s)
Structure:
Feature processor 3300, memory 3400, and Message
Center 6100 software of Device 1100 performing the
alleged algorithm as disclosed in 5:50-6:2 and 8:2735, and 8:40-45.

Governed by 35 U.S.C. § 112 ¶ 6
Function:
receiving a selection of one of the pending messages
based on the entries in the single selectable list

Supporting Evidence
GOOG-NDCA-13-5933-CC-0000008500000091
GOOG-NDCA-13-5933-CC-0000009500000100
GOOG-NDCA-13-5933-CC-0000012200000124
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘973
patent.
The specification of the ‘973 patent,
including cols. 5:50-6:54, 8:27-65, and Figs.
1-5, 7 and accompanying text.

GOOG-NDCA-13-5933-CC-0000000100000003
Structure:
GOOG-NDCA-13-5933-CC-00000006Feature processor 3300, memory 3400, display
00000008
module 3700 with an analog touch screen overlay or
GOOG-NDCA-13-5933-CC-00000085hard keys, analog controller 3600, and Message
Center 6100 software of Device 1100 performing the 00000091
GOOG-NDCA-13-5933-CC-00000095algorithm as disclosed in 5:50-6:54 and 8:27-65.
00000100
GOOG-NDCA-13-5933-CC-0000012200000124

Governed by 35 U.S.C. § 112 ¶ 6
Function:

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘973
patent.
The specification of the ‘973 patent,
including cols. 1:40-46, 2:7-23, 3:48-5:8,
5:14-62, 7:7-8:10, 8:27-45, 8:52-65, 10:3-65,

CASE NO. 13-CV-5933-CW
-44JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term
and manipulation by the user.”
[Google / Rockstar]

Proposed Construction(s)
retrieving the selected pending message for viewing
and manipulation by the user

Supporting Evidence
claim 27, and Figs. 1-5, 7, 11-12 and
accompanying text.

Structure:
Antenna 3100 and GSM radio 3210 of FIG. 3, as
disclosed in 9:54-60, 10:18-25, and 10:48-56.

The prosecution history of the ‘973 patent,
including February 11, 1999 Office Action,
May 7, 1999 Amendment & Remarks, July
16, 1999 Office Action, November 12, 1999
Amendment & Remarks, December 10, 1999
Office Action, March 30, 2000 Office
Action, June 29, 2000 Amendment &
Remarks, September 11, 2000 Office Action,
January 9, 2001 Interview Summary &
Attachment, February 12, 2001 Amendment
& Remarks, April 6, 2001 Office Action,
May 29, 2001 Amendment & Remarks, June
8, 2001 Notice of Allowability & Reasons
for Allowance, and prior art references cited
therein.
GOOG-NDCA-13-5933-CC-0000000100000003
GOOG-NDCA-13-5933-CC-0000000600000008
GOOG-NDCA-13-5933-CC-0000008500000091
GOOG-NDCA-13-5933-CC-0000009500000100
GOOG-NDCA-13-5933-CC-0000012200000124

“means for accessing an

Governed by 35 U.S.C. § 112 ¶ 6

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘973
patent.
The specification of the ‘973 patent,

CASE NO. 13-CV-5933-CW
-45JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term
Proposed Construction(s)
external mail server” [Google /
Rockstar]
Function:
accessing an external mail server

Supporting Evidence
including cols. 1:40-46, 2:7-23, 3:48-5:8,
5:14-62, 7:7-8:10, 8:27-45, 8:52-65, 10:3-65,
claim 27, and Figs. 1-5, 7, 11-12 and
accompanying text.

Structure:
Antenna in block 3100 and GSM radio 3210 of FIG. The prosecution history of the ‘973 patent,
3 performing the algorithm as disclosed in 9:54including February 11, 1999 Office Action,
10:2, 10:18-30, and 10:48-56.
May 7, 1999 Amendment & Remarks, July
16, 1999 Office Action, November 12, 1999
Amendment & Remarks, December 10, 1999
Office Action, March 30, 2000 Office
Action, June 29, 2000 Amendment &
Remarks, September 11, 2000 Office Action,
January 9, 2001 Interview Summary &
Attachment, February 12, 2001 Amendment
& Remarks, April 6, 2001 Office Action,
May 29, 2001 Amendment & Remarks, June
8, 2001 Notice of Allowability & Reasons
for Allowance, and prior art references cited
therein.
GOOG-NDCA-13-5933-CC-0000000100000003
GOOG-NDCA-13-5933-CC-0000000600000008
GOOG-NDCA-13-5933-CC-0000008500000091
GOOG-NDCA-13-5933-CC-0000009500000100
GOOG-NDCA-13-5933-CC-0000012200000124
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘973

CASE NO. 13-CV-5933-CW
-46JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)

Supporting Evidence
patent.

“means for retrieving the
selected pending message from
the external mail server”
[Google / Rockstar]

Governed by 35 U.S.C. § 112 ¶ 6

The specification of the ‘973 patent,
including cols. 31:40-46, 2:7-23, 3:48-5:8,
5:14-62, 7:7-8:10, 8:27-45, 8:52-65, 10:3-65,
claim 27, and Figs. 1-5, 7, 11-12 and
accompanying text.

Function:
retrieving the selected pending message from the
external mail server
Structure:
Antenna 3100 and GSM radio 3210 of FIG. 3
performing the algorithm as disclosed in 9:54-10:2,
10:18-30, and 10:48-56

The prosecution history of the ‘973 patent,
including February 11, 1999 Office Action,
May 7, 1999 Amendment & Remarks, July
16, 1999 Office Action, November 12, 1999
Amendment & Remarks, December 10, 1999
Office Action, March 30, 2000 Office
Action, June 29, 2000 Amendment &
Remarks, September 11, 2000 Office Action,
January 9, 2001 Interview Summary &
Attachment, February 12, 2001 Amendment
& Remarks, April 6, 2001 Office Action,
May 29, 2001 Amendment & Remarks, June
8, 2001 Notice of Allowability & Reasons
for Allowance, and prior art references cited
therein.
GOOG-NDCA-13-5933-CC-0000000100000003
GOOG-NDCA-13-5933-CC-0000000600000008
GOOG-NDCA-13-5933-CC-0000008500000091
GOOG-NDCA-13-5933-CC-0000009500000100
GOOG-NDCA-13-5933-CC-0000012200000124

CASE NO. 13-CV-5933-CW
-47JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

“means for associating a
message type indicator with
each of the received
notification messages based on
the message type of the
corresponding pending
message” [Google / Rockstar]

Proposed Construction(s)

Supporting Evidence
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘973
patent.
Subject to § 112, ¶ 6
This term is indefinite. No portion of the
specification or file history renders it
This claim term is indefinite under 35 U.S.C. § 112 ¶ definite. Google will rely on the entire
2.
specification and file history to show that
this phrase is indefinite, and to rebut
If the Court determines that the term is not
Rockstar’s arguments regarding this phrase.
indefinite, then the term should be construed as
follows, in light of the disclosures in the
To the extent not indefinite, Google
specification most closely related to the function
identifies the specification of the ‘973 patent,
(which Google contends are insufficient to render
including cols. 5:50-6:2, 8:27-35, and 8:40the claim definite under 35 U.S.C. § 112 ¶ 2):
45, and Figs. 1-5, 7 and accompanying text.
GOOG-NDCA-13-5933-CC-0000000100000003
GOOG-NDCA-13-5933-CC-0000000600000008
GOOG-NDCA-13-5933-CC-00000085Structure:
Feature processor 3300, memory 3400, and Message 00000091
Center 6100 software of Device 1100 performing the GOOG-NDCA-13-5933-CC-00000095alleged algorithm as disclosed in 5:50-6:2 and 8:27- 00000100
35, and 8:40-45.
GOOG-NDCA-13-5933-CC-0000012200000124
Function:
associating a message type indicator with each of the
received notification messages based on the message
type of the corresponding pending message

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘973
patent.
Order of steps of method claims
Order of steps of claim 8
8.1 must occur before 8.2.

The specification of the ‘973 patent,
including 7:30-8:10, 8:35-9:5, 9:54-10:2,

CASE NO. 13-CV-5933-CW
-48JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)
8.2 must occur before 8.3.

Supporting Evidence
10:18-30, 10:48-56, and Figs. 1-12 and
accompanying text.

8.3 must occur before 8.4.
8.4 must occur before 8.5.
8.5 must occur before 8.6.

GOOG-NDCA-13-5933-CC-0000000100000003
GOOG-NDCA-13-5933-CC-0000000600000008
GOOG-NDCA-13-5933-CC-0000008500000091
GOOG-NDCA-13-5933-CC-0000009500000100
GOOG-NDCA-13-5933-CC-0000012200000124
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘973
patent.

Order of steps of claim 13

13.1 must occur before 13.2.

The specification of the ‘973 patent,
including 7:30-8:10, 8:35-9:5, 9:54-10:2,
10:18-30, 10:48-56, and Figs. 1-12 and
accompanying text.
GOOG-NDCA-13-5933-CC-0000000100000003
GOOG-NDCA-13-5933-CC-0000000600000008
GOOG-NDCA-13-5933-CC-0000008500000091
GOOG-NDCA-13-5933-CC-0000009500000100
GOOG-NDCA-13-5933-CC-00000122-

CASE NO. 13-CV-5933-CW
-49JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)

Supporting Evidence
00000124
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘973
patent.

Order of steps of claim 33

33.1 must occur before 33.2.
33.2 must occur before 33.3.

The specification of the ‘973 patent,
including 7:30-8:10, 8:35-9:5, 9:54-10:2,
10:18-30, 10:48-56, and Figs. 1-12 and
accompanying text.
GOOG-NDCA-13-5933-CC-0000000100000003
GOOG-NDCA-13-5933-CC-0000000600000008
GOOG-NDCA-13-5933-CC-0000008500000091
GOOG-NDCA-13-5933-CC-0000009500000100
GOOG-NDCA-13-5933-CC-0000012200000124
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘973
patent.

CASE NO. 13-CV-5933-CW
-50JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Exhibit A-5
Preliminary Claim Constructions for U.S. Patent No. 6,463,131
Term
“communication event”
[Rockstar]

Proposed Construction(s)
voice or data

Supporting Evidence
The specification of the ‘131 patent,
including cols. 1:14-18, 1:62-2:6, 2:20-40,
3:19-4:47, 6:23-7:31, 7:48-8:12, and Figs. 13 and accompanying text.
The prosecution history of the ‘131 patent,
including September 11, 2001 Office
Action, December 11, 2001 Amendment &
Remarks, and prior art references cited
therein.
The prosecution history of U.S. Patent No.
6,122,348, including September 3, 1999
Office Action, November 9, 1999
Amendment & Remarks, and prior art
references cited therein.
September 24, 2014 Deposition of Marilyn
French-St. George
RKS_NDCA_0199589-0199593
GOOG-NDCA-13-5933-CC-0000008500000091
GOOG-NDCA-13-5933-CC-0000009500000100
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘131
patent.

CASE NO. 13-CV-5933-CW
-51JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term
“incoming communication
event” [Google]

Proposed Construction(s)
voice or data to be transferred to a user’s terminal
device

Supporting Evidence
The specification of the ‘131 patent,
including cols. 1:14-18, 1:62-2:6, 2:20-40,
3:19-4:47, 6:23-7:31, 7:48-8:12, and Figs. 13 and accompanying text.
The prosecution history of the ‘131 patent,
including September 11, 2001 Office
Action, December 11, 2001 Amendment &
Remarks, and prior art references cited
therein.
The prosecution history of U.S. Patent No.
6,122,348, including September 3, 1999
Office Action, November 9, 1999
Amendment & Remarks, and prior art
references cited therein.
September 24, 2014 Deposition of Marilyn
French-St. George
RKS_NDCA_0199589-0199593
GOOG-NDCA-13-5933-CC-0000008500000091
GOOG-NDCA-13-5933-CC-0000009500000100

“sending the user” / “to be sent
to the user” [Google]

transferring to the user’s terminal device / to be
transferred to the user’s terminal device

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘131
patent.
The specification of the ‘131 patent,
including Abstract, 1:14-18, 1:39-50, 1:622:6, 2:20-40, 3:19-4:32, 4:49-5:13, 6:168:41, and Figs. 1-3 and accompanying text.
The prosecution history of the ‘131 patent,

CASE NO. 13-CV-5933-CW
-52JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)

Supporting Evidence
including September 11, 2001 Office
Action, December 11, 2001 Amendment &
Remarks, and prior art references cited
therein.
The prosecution history of U.S. Patent No.
6,122,348, including September 3, 1999
Office Action, November 9, 1999
Amendment & Remarks, and prior art
references cited therein.
September 24, 2014 Deposition of Marilyn
French-St. George
RKS_NDCA_0199589-0199593
GOOG-NDCA-13-5933-CC-0000008500000091
GOOG-NDCA-13-5933-CC-0000009500000100

“notification” (as used in the
phrases “selecting a notification
based on the characteristic” and
“the selected notification”)
(claims 1, 3, 4, 5, 7, 8)
[Google]

an alert before transferring the incoming
communication event
(“an incoming communication event” as construed
above)

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘131
patent.
The specification of the ‘131 patent,
including cols. 6:16-8:41, and Figs. 2-3 and
accompanying text.
September 24, 2014 Deposition of Marilyn
French-St. George
RKS_NDCA_0199589-0199593
GOOG-NDCA-13-5933-CC-0000008500000091
GOOG-NDCA-13-5933-CC-0000009500000100

CASE NO. 13-CV-5933-CW
-53JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

“further notification
information” [Google]

Proposed Construction(s)

more information that is not the actual message or
further message information

Supporting Evidence
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘131
patent.
The specification of the ‘131 patent,
including cols. 6:16-8:41, and Figs. 2-3 and
accompanying text.
The prosecution history of the ‘131 patent,
including December 11, 2001 Amendment
& Remarks, January 29, 2002 Office Action,
April 29, 2002 Amendment & Remarks, and
May 14, 2002 Notice of Allowability and
Reasons for Allowance, and prior art
references cited therein.
September 24, 2014 Deposition of Marilyn
French-St. George
RKS_NDCA_0199589-0199593
GOOG-NDCA-13-5933-CC-0000008500000091
GOOG-NDCA-13-5933-CC-0000009500000100

“receiving a selection from the
user indicating a format for
delivery of further notification
information” [Google]

receiving from the user a choice from among two or
more formats for the transmission of further
notification information to a terminal device

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘131
patent.
The specification of the ‘131 patent,
including 2:33-36, 3:55-64, 4:19-32, 5:4-8,
6:16-8:41, and Figs. 2-3 and accompanying
text.

(“further notification information” as construed

CASE NO. 13-CV-5933-CW
-54JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)
above)

Supporting Evidence
The prosecution history of the ‘131 patent,
including December 11, 2001 Amendment
& Remarks, January 29, 2002 Office Action,
April 29, 2002 Amendment & Remarks, and
May 14, 2002 Notice of Allowability and
Reasons for Allowance, and prior art
references cited therein.
The prosecution history of U.S. Patent No.
6,122,348, including September 3, 1999
Office Action, November 9, 1999
Amendment & Remarks, and prior art
references cited therein.
September 24, 2014 Deposition of Marilyn
French-St. George
RKS_NDCA_0199589-0199593
GOOG-NDCA-13-5933-CC-0000008500000091
GOOG-NDCA-13-5933-CC-0000009500000100

“means for determining a
characteristic of the
communication event”
[Google]

Subject to § 112, ¶ 6
This claim term is indefinite under 35 U.S.C. § 112
¶ 2.
If the Court determines that the term is not
indefinite, then the term should be construed as
follows, in light of the disclosures in the
specification most closely related to the function

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘131
patent.
This term is indefinite. No portion of the
specification or file history renders it
definite. Google will rely on the entire
specification and file history to show that
this phrase is indefinite, and to rebut
Rockstar’s arguments regarding this phrase.
To the extent not indefinite, Google
identifies the specification of the ‘131

CASE NO. 13-CV-5933-CW
-55JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)
(which Google contends are insufficient to render
the claim definite under 35 U.S.C. § 112 ¶ 2):
Function: determining a characteristic of a
communication event

Supporting Evidence
patent, including 1:14-18, 1:62-2:6, 2:20-40,
3:19-4:47, 4:60-5:21, 6:16-47, 6:23-7:31,
7:48-8:12 and Figs. 1-3 and accompanying
text.

The prosecution history of the ‘131 patent,
Structure: Server 115 executing alleged algorithms including September 11, 2001 Office
of communication software 170 in FIG. 1 as
Action, December 11, 2001 Amendment &
disclosed in 6:22-32.
Remarks, and prior art references cited
therein.
The prosecution history of U.S. Patent No.
6,122,348, including September 3, 1999
Office Action, November 9, 1999
Amendment & Remarks, and prior art
references cited therein.
September 24, 2014 Deposition of Marilyn
French-St. George
RKS_NDCA_0199589-0199593
GOOG-NDCA-13-5933-CC-0000008500000091
GOOG-NDCA-13-5933-CC-0000009500000100

“means for selecting a
notification based on the
characteristic” [Google]

Subject to § 112, ¶ 6
This claim term is indefinite under 35 U.S.C. § 112
¶ 2.

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘131
patent.
This term is indefinite. No portion of the
specification or file history renders it
definite. Google will rely on the entire
specification and file history to show that
this phrase is indefinite, and to rebut
Rockstar’s arguments regarding this phrase.

CASE NO. 13-CV-5933-CW
-56JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)
If the Court determines that the term is not
indefinite, then the term should be construed as
follows, in light of the disclosures in the
specification most closely related to the function
(which Google contends are insufficient to render
the claim definite under 35 U.S.C. § 112 ¶ 2):

Supporting Evidence
To the extent not indefinite, Google
identifies the specification of the ‘131
patent, including 3:24-37, 4:60-5:21, 6:1647, and Figs. 1-2 and accompanying text.

September 24, 2014 Deposition of Marilyn
Function: selecting a notification based on the
French-St. George
characteristic
RKS_NDCA_0199589-0199593
GOOG-NDCA-13-5933-CC-00000085Structure: Server 115 executing alleged algorithms
00000091
of communication software 170 in FIG. 1 as
GOOG-NDCA-13-5933-CC-00000095disclosed in 6:22-32.
00000100

“means for sending the user the
selected notification” [Google /
Rockstar]

Governed by 35 U.S.C. § 112 ¶ 6
Function: sending the user the selected notification
Structure: Server 115 and communication
software 170 in FIG. 1 as disclosed in 6:22-32.

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘131
patent.
The specification of the ‘131 patent,
including 1:14-18, 1:39-50, 1:62-2:6, 2:2040, 3:19-4:32, 4:49-5:21, 6:16-8:41, and
Figs. 1-3 and accompanying text.
The prosecution history of the ‘131 patent,
including September 11, 2001 Office
Action, December 11, 2001 Amendment &
Remarks, and prior art references cited
therein.
The prosecution history of U.S. Patent No.
6,122,348, including September 3, 1999
Office Action, November 9, 1999
Amendment & Remarks, and prior art
references cited therein.

CASE NO. 13-CV-5933-CW
-57JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)

“means for receiving a selection
from the user indicating a
format for delivery of further
notification information
regarding the communication
event” [Google / Rockstar]

Governed by 35 U.S.C. § 112 ¶ 6
Function: receiving a selection from the user
indicating a format for delivery of further
notification information regarding the
communication event
Structure: Server 115 executing algorithms of
communication software 170 in FIG. 1 as disclosed
in 6:39-7:10.

Supporting Evidence
September 24, 2014 Deposition of Marilyn
French-St. George
RKS_NDCA_0199589-0199593
GOOG-NDCA-13-5933-CC-0000008500000091
GOOG-NDCA-13-5933-CC-0000009500000100
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘131
patent.
The specification of the ‘131 patent,
including 2:33-36, 3:24-37, 3:55-64, 4:1932, 4:60-5:21, 6:16-8:41, and Figs. 1-3 and
accompanying text.
The prosecution history of the ‘131 patent,
including December 11, 2001 Amendment
& Remarks, January 29, 2002 Office Action,
April 29, 2002 Amendment & Remarks, and
May 14, 2002 Notice of Allowability and
Reasons for Allowance, and prior art
references cited therein.
The prosecution history of U.S. Patent No.
6,122,348, including September 3, 1999
Office Action, November 9, 1999
Amendment & Remarks, and prior art
references cited therein.
September 24, 2014 Deposition of Marilyn
French-St. George
RKS_NDCA_0199589-0199593
GOOG-NDCA-13-5933-CC-00000085-

CASE NO. 13-CV-5933-CW
-58JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

“means for allowing the further
notification information
regarding the communication
event to be sent to the user in
the selected format” [Google /
Rockstar]

Proposed Construction(s)

Subject to § 112, ¶ 6
This claim term is indefinite under 35 U.S.C. § 112
¶ 2.
If the Court determines that the term is not
indefinite, then the term should be construed as
follows, in light of the disclosures in the
specification most closely related to the function
(which Google contends are insufficient to render
the claim definite under 35 U.S.C. § 112 ¶ 2):
Function: allowing the further notification
information regarding the communication event to
be sent to the user in the selected format
Structure: Server 115 in FIG. 1 executing the
alleged software algorithm disclosed in 5:42-50 and
7:12-19.

Supporting Evidence
00000091
GOOG-NDCA-13-5933-CC-0000009500000100
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘131
patent.
This term is indefinite. No portion of the
specification or file history renders it
definite. Google will rely on the entire
specification and file history to show that
this phrase is indefinite, and to rebut
Rockstar’s arguments regarding this phrase.
To the extent not indefinite, Google
identifies the specification of the ‘131
patent, including 2:33-36, 3:24-37, 3:55-64,
4:19-32, 4:60-5:21, 5:42-50 and 6:16-8:41,
and Figs. 1-3 and accompanying text.
The prosecution history of the ‘131 patent,
including December 11, 2001 Amendment
& Remarks, January 29, 2002 Office Action,
April 29, 2002 Amendment & Remarks, and
May 14, 2002 Notice of Allowability and
Reasons for Allowance, and prior art
references cited therein.
The prosecution history of U.S. Patent No.
6,122,348, including September 3, 1999
Office Action, November 9, 1999
Amendment & Remarks, and prior art
references cited therein.
September 24, 2014 Deposition of Marilyn

CASE NO. 13-CV-5933-CW
-59JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

“means for selecting includes a
choice between at least a tactile
alert and a nontactile alert”
[Rockstar]

Proposed Construction(s)

Subject to § 112, ¶ 6
This claim term is indefinite under 35 U.S.C. § 112
¶ 2.
If the Court determines that the term is not
indefinite, then the term should be construed as
follows, in light of the disclosures in the
specification most closely related to the function
(which Google contends are insufficient to render
the claim definite under 35 U.S.C. § 112 ¶ 2):

Supporting Evidence
French-St. George
RKS_NDCA_0199589-0199593
GOOG-NDCA-13-5933-CC-0000008500000091
GOOG-NDCA-13-5933-CC-0000009500000100
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘131
patent.
This term is indefinite. No portion of the
specification or file history renders it
definite. Google will rely on the entire
specification and file history to show that
this phrase is indefinite, and to rebut
Rockstar’s arguments regarding this phrase.
To the extent not indefinite, Google
identifies the specification of the ‘131
patent, including 3:24-37, 4:60-5:21, 6:1647, and Figs. 1-2 and accompanying text.

Function: selecting a notification from amongst the September 24, 2014 Deposition of Marilyn
choices of at least a tactile alert and a nontactile
French-St. George
alert, based on the characteristic
RKS_NDCA_0199589-0199593
GOOG-NDCA-13-5933-CC-00000085Structure: Server 115 executing alleged algorithms
00000091
of communication software 170 in FIG. 1 as
GOOG-NDCA-13-5933-CC-00000095disclosed in 6:22-32.
00000100
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction

CASE NO. 13-CV-5933-CW
-60JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)

Supporting Evidence
to practice of the asserted claims of the ‘131
patent.

5.1 must occur before 5.2.

The specification of the ‘131 patent,
including 6:16-7:41 and accompanying text.

Order of steps of method claims
Order of steps of claim 5

5.2 must occur before 5.3.
5.3 must occur before 5.4.
5.4 must occur before 5.5.

September 24, 2014 Deposition of Marilyn
French-St. George
RKS_NDCA_0199589-0199593
GOOG-NDCA-13-5933-CC-0000008500000091
GOOG-NDCA-13-5933-CC-0000009500000100
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘131
patent.

CASE NO. 13-CV-5933-CW
-61JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Exhibit A-6
Google’s Proposed Claim Constructions for U.S. Patent No. 6,765,591
Term
“a collection of palettes”
[Google]

Proposed Construction(s)
a collection of displayed ranges of VPN subelements that are made available for each selected
VPN element without requiring user input or
preprogrammed series of dialogs

Supporting Evidence
Google identifies the specification of the
’591 patent, including cols. 2:32-35; 8:3-36;
8:37-41; 9:23-25; 10:49-67 and Figs. 21-24,
28, 30, 31 and corresponding text.
The prosecution history of the ’591 patent,
including October 10, 2001 Office Action,
April 9, 2002 Response and Amendment,
and July 8, 2002 Allowance, and prior art
references cited therein.
Sept. 9, 2014 Deposition of James Milillo
Sept. 30, 2013 Deposition of Matthew
Poisson
Oct. 4, 2014 Deposition of Melissa
Desroches
U.S. Ser. No. 09/285,133, entitled “Bulk
Configuring a Virtual Private Network”,
filed Apr. 2, 1999, U.S. Ser. No.
09/285,558, entitled “Links for Configuring
a Virtual Private Network”, filed Apr. 2,
1999; and U.S. Ser. No. 09/285,550, entitled
“Monitoring a Virtual Private Network”,
filed Apr. 2, 1999.
Configuring and Maintaining Networks with
Optivity NET Configurator 2.1 Manual, Bay
Networks, October 1998.
The New Oak™ Communications Extranet
Access Switch Administrator’s Guide
PRIORART-00141808-00142265

CASE NO. 13-CV-5933-CW
-62JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)

Supporting Evidence
PRIORART-00142280-00142569
PRIORART-00119124-00120153
PRIORART-00118560-00119123
POISSON_EDTX_0000001-0000017
POISSON_EDTX_0000018-0000041
POISSON_EDTX_0000042-0000066
POISSON_EDTX_0000067-0000091
POISSON_EDTX_0000092-0000103
POISSON_EDTX_0000104-0000173
POISSON_EDTX_0000253-0000260
POISSON_EDTX_0000352-0000368
POISSON_EDTX_0000369-0000389
POISSON_EDTX_0000390-0000410
POISSON_EDTX_0000411-0000432
POISSON_EDTX_0001237-0001242
POISSON_EDTX_0024843-0024859
GOOG-NDCA-13-5933-CC-0000016900000484
GOOG-NDCA-13-5933-CC-0000048500000934
GOOG-NDCA-13-5933-CC-0000093500001361
GOOG-NDCA-13-5933-CC-0000136900001412

“properties dialogs”

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘591
patent.
Google identifies the specification of the

CASE NO. 13-CV-5933-CW
-63JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term
[Google]

Proposed Construction(s)
Displays based on one selected virtual private
network element that receives user input to alter the
properties of the selected element

Supporting Evidence
’591 patent, including cols. 2:24-29; 8:3-17,
10:49-67 and Figs. 21-27, 29 and
corresponding text.
The prosecution history of the ’591 patent,
including October 10, 2001 Office Action,
April 9, 2002 Response and Amendment,
and July 8, 2002 Allowance, and prior art
references cited therein.
Sept. 9, 2014 Deposition of James Milillo
Sept. 30, 2013 Deposition of Matthew
Poisson
Oct. 4, 2014 Deposition of Melissa
Desroches
U.S. Ser. No. 09/285,133, entitled “Bulk
Configuring a Virtual Private Network”,
filed Apr. 2, 1999, U.S. Ser. No.
09/285,558, entitled “Links for Configuring
a Virtual Private Network”, filed Apr. 2,
1999; and U.S. Ser. No. 09/285,550, entitled
“Monitoring a Virtual Private Network”,
filed Apr. 2, 1999.
Configuring and Maintaining Networks with
Optivity NET Configurator 2.1 Manual, Bay
Networks, October 1998.
The New Oak™ Communications Extranet
Access Switch Administrator’s Guide
PRIORART-00141808-00142265
PRIORART-00142280-00142569
PRIORART-00119124-00120153
PRIORART-00118560-00119123
POISSON_EDTX_0000001-0000017
POISSON_EDTX_0000018-0000041

CASE NO. 13-CV-5933-CW
-64JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)

Supporting Evidence
POISSON_EDTX_0000042-0000066
POISSON_EDTX_0000067-0000091
POISSON_EDTX_0000092-0000103
POISSON_EDTX_0000104-0000173
POISSON_EDTX_0000253-0000260
POISSON_EDTX_0000352-0000368
POISSON_EDTX_0000369-0000389
POISSON_EDTX_0000390-0000410
POISSON_EDTX_0000411-0000432
POISSON_EDTX_0001237-0001242
POISSON_EDTX_0024843-0024859
GOOG-NDCA-13-5933-CC-0000016900000484
GOOG-NDCA-13-5933-CC-0000048500000934
GOOG-NDCA-13-5933-CC-0000093500001361
GOOG-NDCA-13-5933-CC-0000136900001412

“wizard”
[Google]

Dialogs that guide the user through a process in
order to perform a task

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘591
patent.
Google identifies the specification of the
’591 patent, including cols. 2:55-56; 5:1517; 5:18-21; 8:3-17; 10:49-67; Figs. 5-13
and corresponding text.
The prosecution history of the ’591 patent,

CASE NO. 13-CV-5933-CW
-65JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)

Supporting Evidence
including October 10, 2001 Office Action,
April 9, 2002 Response and Amendment,
and July 8, 2002 Allowance, and prior art
references cited therein.
Sept. 9, 2014 Deposition of James Milillo
Sept. 30, 2013 Deposition of Matthew
Poisson
Oct. 4, 2014 Deposition of Melissa
Desroches
U.S. Ser. No. 09/285,133, entitled “Bulk
Configuring a Virtual Private Network”,
filed Apr. 2, 1999, U.S. Ser. No.
09/285,558, entitled “Links for Configuring
a Virtual Private Network”, filed Apr. 2,
1999; and U.S. Ser. No. 09/285,550, entitled
“Monitoring a Virtual Private Network”,
filed Apr. 2, 1999.
Configuring and Maintaining Networks with
Optivity NET Configurator 2.1 Manual, Bay
Networks, October 1998.
The New Oak™ Communications Extranet
Access Switch Administrator’s Guide
PRIORART-00141808-00142265
PRIORART-00142280-00142569
PRIORART-00119124-00120153
PRIORART-00118560-00119123
POISSON_EDTX_0000001-0000017
POISSON_EDTX_0000018-0000041
POISSON_EDTX_0000042-0000066
POISSON_EDTX_0000067-0000091
POISSON_EDTX_0000092-0000103
POISSON_EDTX_0000104-0000173
POISSON_EDTX_0000253-0000260

CASE NO. 13-CV-5933-CW
-66JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)

Supporting Evidence
POISSON_EDTX_0000352-0000368
POISSON_EDTX_0000369-0000389
POISSON_EDTX_0000390-0000410
POISSON_EDTX_0000411-0000432
POISSON_EDTX_0001237-0001242
POISSON_EDTX_0024843-0024859
GOOG-NDCA-13-5933-CC-0000016900000484
GOOG-NDCA-13-5933-CC-0000048500000934
GOOG-NDCA-13-5933-CC-0000093500001361
GOOG-NDCA-13-5933-CC-0000136900001412

“managing a virtual private
network”
[Google]

Administering a virtual private network

Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘591
patent.
Google identifies the specification of the
’591 patent, including Abstract; cols. 1:3454; 2:30-41; 2:63-64; 3:6-20; 3:37-42; 5:1829; 5:42-60; 6:43-48; 6:49-52; 7:51-66; 8:329; 10:49-67 and Figs. 1, 5-13, 14-15, 32, 39
and corresponding text.
The prosecution history of the ’591 patent,
including October 10, 2001 Office Action,
April 9, 2002 Response and Amendment,
and July 8, 2002 Allowance, and prior art

CASE NO. 13-CV-5933-CW
-67JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)

Supporting Evidence
references cited therein.
Sept. 9, 2014 Deposition of James Milillo
Sept. 30, 2013 Deposition of Matthew
Poisson
Oct. 4, 2014 Deposition of Melissa
Desroches
U.S. Ser. No. 09/285,133, entitled “Bulk
Configuring a Virtual Private Network”,
filed Apr. 2, 1999, U.S. Ser. No.
09/285,558, entitled “Links for Configuring
a Virtual Private Network”, filed Apr. 2,
1999; and U.S. Ser. No. 09/285,550, entitled
“Monitoring a Virtual Private Network”,
filed Apr. 2, 1999.
Configuring and Maintaining Networks with
Optivity NET Configurator 2.1 Manual, Bay
Networks, October 1998.
The New Oak™ Communications Extranet
Access Switch Administrator’s Guide
PRIORART-00141808-00142265
PRIORART-00142280-00142569
PRIORART-00119124-00120153
PRIORART-00118560-00119123
POISSON_EDTX_0000001-0000017
POISSON_EDTX_0000018-0000041
POISSON_EDTX_0000042-0000066
POISSON_EDTX_0000067-0000091
POISSON_EDTX_0000092-0000103
POISSON_EDTX_0000104-0000173
POISSON_EDTX_0000253-0000260
POISSON_EDTX_0000352-0000368
POISSON_EDTX_0000369-0000389
POISSON_EDTX_0000390-0000410

CASE NO. 13-CV-5933-CW
-68JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)

Supporting Evidence
POISSON_EDTX_0000411-0000432
POISSON_EDTX_0001237-0001242
POISSON_EDTX_0024843-0024859
GOOG-NDCA-13-5933-CC-0000016900000484
GOOG-NDCA-13-5933-CC-0000048500000934
GOOG-NDCA-13-5933-CC-0000093500001361
GOOG-NDCA-13-5933-CC-0000136900001412
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘591
patent.

CASE NO. 13-CV-5933-CW
-69JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Exhibit A-7
Google’s Proposed Claim Constructions for U.S. Patent No. 6,937,572
Term
“call”
[Google]

Proposed Construction(s)
a telephony session such as a voice, video, or chat
session

Supporting Evidence
The specification of the ‘572 patent,
including the Abstract; cols. 1:7-67; 2:3-27;
2:45-4:38 and Fig. 1 and accompanying text..
The prosecution history of the ‘572 patent,
including May 24, 2004 Office Action;
September 23, 2004 Interview Request;
October 1, 2004 Amendment & Response to
Office Action; November 24, 2004 Office
Action; March 2, 2005 Amendment and
Response after Final Office Action; February
28, 2005 Examiner Interview Summary
Record, and prior art references cited therein.
September 13, 2014 Deposition of Brian
Egan
EGAN_NDCA_0000023-0000029
EGAN_EDTX_0000018-0000022
RKS_NDCA_0161248-0161249
EGAN_NDCA_0000001-0000004
GOOG-NDCA-13-5933-CC-0000000900000023
GOOG-NDCA-13-5933-CC-0000002400000032
GOOG-NDCA-13-5933-CC-0000003300000044
GOOG-NDCA-13-5933-CC-0000004500000055
GOOG-NDCA-13-5933-CC-0000005600000070
GOOG-NDCA-13-5933-CC-00000082-

CASE NO. 13-CV-5933-CW
-70JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)

Supporting Evidence
00000084
GOOG-NDCA-13-5933-CC-0000009200000094
GOOG-NDCA-13-5933-CC-0000011200000114
GOOG-NDCA-13-5933-CC-0000011500000117
GOOG-NDCA-13-5933-CC-0000011800000121
GOOG-NDCA-13-5933-CC-0000136200001365
GOOG-NDCA-13-5933-CC-0000136600001368
GOOG-NDCA-13-5933-CC-0000141300001417
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘572
patent.

“call trace”
[Google]

feature permitting tracing of a call (path/route that
call takes place on)

The specification of the ‘572 patent,
including the Abstract; cols. 1:7-67; 2:3-27;
2:45-4:38 and Fig. 1 and accompanying text..

(“call” used as construed above)
The prosecution history of the ‘572 patent,
including May 24, 2004 Office Action;
September 23, 2004 Interview Request;
October 1, 2004 Amendment & Response to
Office Action; November 24, 2004 Office
Action; March 2, 2005 Amendment and
Response after Final Office Action; February
28, 2005 Examiner Interview Summary
Record, and prior art references cited therein.

CASE NO. 13-CV-5933-CW
-71JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)

Supporting Evidence
September 13, 2014 Deposition of Brian
Egan
EGAN_NDCA_0000023-0000029
EGAN_EDTX_0000018-0000022
RKS_NDCA_0161248-0161249
EGAN_NDCA_0000001-0000004
GOOG-NDCA-13-5933-CC-0000000900000023
GOOG-NDCA-13-5933-CC-0000002400000032
GOOG-NDCA-13-5933-CC-0000003300000044
GOOG-NDCA-13-5933-CC-0000004500000055
GOOG-NDCA-13-5933-CC-0000005600000070
GOOG-NDCA-13-5933-CC-0000008200000084
GOOG-NDCA-13-5933-CC-0000009200000094
GOOG-NDCA-13-5933-CC-0000011200000114
GOOG-NDCA-13-5933-CC-0000011500000117
GOOG-NDCA-13-5933-CC-0000011800000121
GOOG-NDCA-13-5933-CC-0000136200001365
GOOG-NDCA-13-5933-CC-0000136600001368
GOOG-NDCA-13-5933-CC-0000141300001417

CASE NO. 13-CV-5933-CW
-72JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

“call trace information”
[Google]

Proposed Construction(s)

information provided by a call trace
(“call trace” and “call” used as construed above)

Supporting Evidence
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘572
patent.
The specification of the ‘572 patent,
including the Abstract; cols. 1:7-67; 2:3-27;
2:45-4:38 and Fig. 1 and accompanying text..
The prosecution history of the ‘572 patent,
including May 24, 2004 Office Action;
September 23, 2004 Interview Request;
October 1, 2004 Amendment & Response to
Office Action; November 24, 2004 Office
Action; March 2, 2005 Amendment and
Response after Final Office Action; February
28, 2005 Examiner Interview Summary
Record, and prior art references cited therein.
September 13, 2014 Deposition of Brian
Egan
EGAN_NDCA_0000023-0000029
EGAN_EDTX_0000018-0000022
RKS_NDCA_0161248-0161249
EGAN_NDCA_0000001-0000004
GOOG-NDCA-13-5933-CC-0000000900000023
GOOG-NDCA-13-5933-CC-0000002400000032
GOOG-NDCA-13-5933-CC-0000003300000044
GOOG-NDCA-13-5933-CC-0000004500000055
GOOG-NDCA-13-5933-CC-00000056-

CASE NO. 13-CV-5933-CW
-73JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

“network compatible device”
[Google & Rockstar]

Proposed Construction(s)

device capable of making or receiving a call on a
packet-switched network

Supporting Evidence
00000070
GOOG-NDCA-13-5933-CC-0000008200000084
GOOG-NDCA-13-5933-CC-0000009200000094
GOOG-NDCA-13-5933-CC-0000011200000114
GOOG-NDCA-13-5933-CC-0000011500000117
GOOG-NDCA-13-5933-CC-0000011800000121
GOOG-NDCA-13-5933-CC-0000136200001365
GOOG-NDCA-13-5933-CC-0000136600001368
GOOG-NDCA-13-5933-CC-0000141300001417
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘572
patent.
The specification of the ‘572 patent,
including the Abstract; cols. 1:7-67; 2:3-27;
2:45-4:38 and Fig. 1 and accompanying text..

(“call” used as construed above)
The prosecution history of the ‘572 patent,
including May 24, 2004 Office Action;
September 23, 2004 Interview Request;
October 1, 2004 Amendment & Response to
Office Action; November 24, 2004 Office
Action; March 2, 2005 Amendment and
Response after Final Office Action; February
28, 2005 Examiner Interview Summary

CASE NO. 13-CV-5933-CW
-74JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)

Supporting Evidence
Record, and prior art references cited therein.
September 13, 2014 Deposition of Brian
Egan
EGAN_NDCA_0000023-0000029
EGAN_EDTX_0000018-0000022
RKS_NDCA_0161248-0161249
EGAN_NDCA_0000001-0000004
GOOG-NDCA-13-5933-CC-0000000900000023
GOOG-NDCA-13-5933-CC-0000002400000032
GOOG-NDCA-13-5933-CC-0000003300000044
GOOG-NDCA-13-5933-CC-0000004500000055
GOOG-NDCA-13-5933-CC-0000005600000070
GOOG-NDCA-13-5933-CC-0000008200000084
GOOG-NDCA-13-5933-CC-0000009200000094
GOOG-NDCA-13-5933-CC-0000011200000114
GOOG-NDCA-13-5933-CC-0000011500000117
GOOG-NDCA-13-5933-CC-0000011800000121
GOOG-NDCA-13-5933-CC-0000136200001365
GOOG-NDCA-13-5933-CC-0000136600001368
GOOG-NDCA-13-5933-CC-00001413-

CASE NO. 13-CV-5933-CW
-75JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

“end point device”
[Google & Rockstar]

Proposed Construction(s)

device being traced by the network-compatible
device

Supporting Evidence
00001417
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘572
patent.
The specification of the ‘572 patent,
including the Abstract; cols. 1:7-67; 2:3-27;
2:45-4:38 and Fig. 1 and accompanying text..
The prosecution history of the ‘572 patent,
including May 24, 2004 Office Action;
September 23, 2004 Interview Request;
October 1, 2004 Amendment & Response to
Office Action; November 24, 2004 Office
Action; March 2, 2005 Amendment and
Response after Final Office Action; February
28, 2005 Examiner Interview Summary
Record, and prior art references cited therein.
September 13, 2014 Deposition of Brian
Egan
EGAN_NDCA_0000023-0000029
EGAN_EDTX_0000018-0000022
RKS_NDCA_0161248-0161249
EGAN_NDCA_0000001-0000004
GOOG-NDCA-13-5933-CC-0000000900000023
GOOG-NDCA-13-5933-CC-0000002400000032
GOOG-NDCA-13-5933-CC-0000003300000044
GOOG-NDCA-13-5933-CC-0000004500000055

CASE NO. 13-CV-5933-CW
-76JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

“logging the call trace
information”
[Rockstar]

Proposed Construction(s)

“recording call trace information over time”

Supporting Evidence
GOOG-NDCA-13-5933-CC-0000005600000070
GOOG-NDCA-13-5933-CC-0000008200000084
GOOG-NDCA-13-5933-CC-0000009200000094
GOOG-NDCA-13-5933-CC-0000011200000114
GOOG-NDCA-13-5933-CC-0000011500000117
GOOG-NDCA-13-5933-CC-0000011800000121
GOOG-NDCA-13-5933-CC-0000136200001365
GOOG-NDCA-13-5933-CC-0000136600001368
GOOG-NDCA-13-5933-CC-0000141300001417
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘572
patent.
The specification of the ‘572 patent,
including cols. 1:47-50; 3:26-28 and 3:46-52.
The prosecution history of the ‘572 patent,
including May 24, 2004 Office Action;
September 23, 2004 Interview Request;
October 1, 2004 Amendment & Response to
Office Action; November 24, 2004 Office
Action; March 2, 2005 Amendment and
Response after Final Office Action; February

CASE NO. 13-CV-5933-CW
-77JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)

Supporting Evidence
28, 2005 Examiner Interview Summary
Record, and prior art references cited therein.
September 13, 2014 Deposition of Brian
Egan
EGAN_NDCA_0000023-0000029
EGAN_EDTX_0000018-0000022
RKS_NDCA_0161248-0161249
EGAN_NDCA_0000001-0000004
GOOG-NDCA-13-5933-CC-0000000900000023
GOOG-NDCA-13-5933-CC-0000002400000032
GOOG-NDCA-13-5933-CC-0000003300000044
GOOG-NDCA-13-5933-CC-0000004500000055
GOOG-NDCA-13-5933-CC-0000005600000070
GOOG-NDCA-13-5933-CC-0000008200000084
GOOG-NDCA-13-5933-CC-0000009200000094
GOOG-NDCA-13-5933-CC-0000011200000114
GOOG-NDCA-13-5933-CC-0000011500000117
GOOG-NDCA-13-5933-CC-0000011800000121
GOOG-NDCA-13-5933-CC-0000136200001365
GOOG-NDCA-13-5933-CC-0000136600001368

CASE NO. 13-CV-5933-CW
-78JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

“storing the call trace
information”
[Rockstar]

Proposed Construction(s)

Plain meaning

Supporting Evidence
GOOG-NDCA-13-5933-CC-0000141300001417
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘572
patent.
The specification of the ‘572 patent,
including cols. 1:47-50; 3:26-28; 3; 46-52;
4:8-32 and Fig. 1 and accompanying text.
The prosecution history of the ‘572 patent,
including May 24, 2004 Office Action;
September 23, 2004 Interview Request;
October 1, 2004 Amendment & Response to
Office Action; November 24, 2004 Office
Action; March 2, 2005 Amendment and
Response after Final Office Action; February
28, 2005 Examiner Interview Summary
Record, and prior art references cited therein.
September 13, 2014 Deposition of Brian
Egan
EGAN_NDCA_0000023-0000029
EGAN_EDTX_0000018-0000022
RKS_NDCA_0161248-0161249
EGAN_NDCA_0000001-0000004
GOOG-NDCA-13-5933-CC-0000000900000023
GOOG-NDCA-13-5933-CC-0000002400000032
GOOG-NDCA-13-5933-CC-0000003300000044
GOOG-NDCA-13-5933-CC-00000045-

CASE NO. 13-CV-5933-CW
-79JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

“generating a request for call
trace information”
[Google]

Proposed Construction(s)

making a query for call trace information by a
network compatible device
(“call,” “call trace,” and “call trace information”
used as construed above)

Supporting Evidence
00000055
GOOG-NDCA-13-5933-CC-0000005600000070
GOOG-NDCA-13-5933-CC-0000008200000084
GOOG-NDCA-13-5933-CC-0000009200000094
GOOG-NDCA-13-5933-CC-0000011200000114
GOOG-NDCA-13-5933-CC-0000011500000117
GOOG-NDCA-13-5933-CC-0000011800000121
GOOG-NDCA-13-5933-CC-0000136200001365
GOOG-NDCA-13-5933-CC-0000136600001368
GOOG-NDCA-13-5933-CC-0000141300001417
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘572
patent.
The specification of the ‘572 patent,
including the Abstract; cols. 1:7-67; 2:3-27;
2:45-4:38 and Fig. 1 and accompanying text.
The prosecution history of the ‘572 patent,
including May 24, 2004 Office Action;
September 23, 2004 Interview Request;
October 1, 2004 Amendment & Response to
Office Action; November 24, 2004 Office

CASE NO. 13-CV-5933-CW
-80JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)

Supporting Evidence
Action; March 2, 2005 Amendment and
Response after Final Office Action; February
28, 2005 Examiner Interview Summary
Record, and prior art references cited therein.
September 13, 2014 Deposition of Brian
Egan
EGAN_NDCA_0000023-0000029
EGAN_EDTX_0000018-0000022
RKS_NDCA_0161248-0161249
EGAN_NDCA_0000001-0000004
GOOG-NDCA-13-5933-CC-0000000900000023
GOOG-NDCA-13-5933-CC-0000002400000032
GOOG-NDCA-13-5933-CC-0000003300000044
GOOG-NDCA-13-5933-CC-0000004500000055
GOOG-NDCA-13-5933-CC-0000005600000070
GOOG-NDCA-13-5933-CC-0000008200000084
GOOG-NDCA-13-5933-CC-0000009200000094
GOOG-NDCA-13-5933-CC-0000011200000114
GOOG-NDCA-13-5933-CC-0000011500000117
GOOG-NDCA-13-5933-CC-0000011800000121
GOOG-NDCA-13-5933-CC-0000136200001365

CASE NO. 13-CV-5933-CW
-81JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)

Supporting Evidence
GOOG-NDCA-13-5933-CC-0000136600001368
GOOG-NDCA-13-5933-CC-0000141300001417
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘572
patent.

Order of steps of method claims
Order of steps of claim 17
17.1 must occur before 17.2
17.2 must occur before 17.3
17.3 must occur before 17.4
17.4 must occur before 17.5

The specification of the ‘572 patent,
including the Abstract; 2:3-28; 3:10-25;
3:40-52; 4:25-38.
The prosecution history of the ‘572 patent,
including May 24, 2004 Office Action;
September 23, 2004 Interview Request;
October 1, 2004 Amendment & Response to
Office Action; November 24, 2004 Office
Action; March 2, 2005 Amendment and
Response after Final Office Action, and prior
art references cited therein.
September 13, 2014 Deposition of Brian
Egan
EGAN_NDCA_0000023-0000029
EGAN_EDTX_0000018-0000022
RKS_NDCA_0161248-0161249
EGAN_NDCA_0000001-0000004
GOOG-NDCA-13-5933-CC-0000000900000023
GOOG-NDCA-13-5933-CC-0000002400000032
GOOG-NDCA-13-5933-CC-00000033-

CASE NO. 13-CV-5933-CW
-82JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A

Term

Proposed Construction(s)

Supporting Evidence
00000044
GOOG-NDCA-13-5933-CC-0000004500000055
GOOG-NDCA-13-5933-CC-0000005600000070
GOOG-NDCA-13-5933-CC-0000008200000084
GOOG-NDCA-13-5933-CC-0000009200000094
GOOG-NDCA-13-5933-CC-0000011200000114
GOOG-NDCA-13-5933-CC-0000011500000117
GOOG-NDCA-13-5933-CC-0000011800000121
GOOG-NDCA-13-5933-CC-0000136200001365
GOOG-NDCA-13-5933-CC-0000136600001368
GOOG-NDCA-13-5933-CC-0000141300001417
Any additional documents cited or relied
upon by Rockstar in support of any
contention of earlier conception or reduction
to practice of the asserted claims of the ‘572
patent.

CASE NO. 13-CV-5933-CW
-83JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT UNDER PATENT LOCAL RULE 4-3—EXHIBIT A