EdiSync Systems, LLC v. Adobe Systems, Inc.
Filing
155
OPINION AND ORDER CONSTRUING CLAIMS: The Court construes the disputed terms as set forth herein. By Chief Judge Marcia S. Krieger on 6/16/17. (msklc2, )
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Honorable Marcia S. Krieger
Civil Action No. 12-cv-02231-MSK-MEH
EDISYNC SYSTEMS, LLC,
Plaintiff,
v.
ADOBE SYSTEMS, INC.,
Defendant.
______________________________________________________________________________
OPINION AND ORDER CONSTRUING CLAIMS1
______________________________________________________________________________
THIS MATTER comes before the Court pursuant to the parties’ Joint Amended Claim
Construction Chart (# 88), the parties initial claim construction briefs (# 93, 94), the parties’
responsive briefs (# 104, 105), and the parties’ reply briefs (# 108, 109).
BACKGROUND
The claims in this action concern U.S. Patent No. 5,799,320 (“the ‘320 Patent” or simply
“the Patent”), awarded to John Klug,2 which covers a “Remote Multiple-User Editing System
1
This Opinion and Order was initially prepared and approved for issuance in November
2016. Due to an oversight in chambers, it was not promptly sent to the Clerk’s Office for filing
and distribution at that time, and that error was only recently discovered. The Court humbly
apologizes to the parties for the undue delay that this has caused in the case.
2
At some point in time, Mr. Klug assigned his rights in the Patent to the Plaintiff here.
Rather than attempting to ascertain the precise date of that assignment for purposes of identifying
the party performing a given historical act, this Court’s narrative history will simply identify Mr.
Klug as the party defending the patent throughout the reexamination proceedings, then shift to
the Plaintiff as the party pursuing infringement cases in this District.
1
and Method.” It describes a group of interconnected personal computers, linked in such a way
that the users may share and simultaneously edit a file that is stored on only one of the
computers. In short, the method entails a “host” computer -- which holds the file and associated
application software – that repeatedly “polls” the remote computers for their input or other
functions to be performed on the file.
As discussed below, the Patent has been the subject of several proceedings. It has been
re-examined on three separate occasions by the U.S. Patent and Trademark Office. The first reexamination resulted in the cancellation of all original claims and the addition of new claims. A
second re-examination prompted Mr. Klug to amend some of the new claims, including those at
issue here, to avoid cancellation due to the existence of prior art. A third re-examination
confirmed the patentability of certain of the new claims and cancelled others.
In addition, the Plaintiff previously brought suit in this Court on the same Patent against a
different Defendant.
EdiSync Systems, Inc. v. Centra Software, Inc., D.C. Colo. Civ. Case No.
03-cv-01587-WYD-MEH. In that case a claim construction ruling was issued by Judge Daniel
in which he construed most of the same claim terms that are at issue in this action. Id. at Docket
# 258. Judge Daniel later re-construed one of the claim terms in light of a USPTO reexamination, significantly narrowing his prior construction of that term. Id. at Docket # 333.
Shortly thereafter, the parties reached a settlement of the dispute and the case was dismissed,
with no judgment having been entered by the Court.3
3
Because Judge Daniel’s findings were never embodied in a final judgment, the Court
rejects the Defendant’s argument here that the Plaintiff is bound by Judge Daniel’s constructions.
See e.g. Bobby v. Bies, 556 U.S. 825, 834-35 (2009) (preclusion arises only where judicial
determinations are reduced to a valid and final judgment that necessarily incorporates such
2
Pursuant to Markman v. Westview Instruments, 517 U.S. 370 (1996), the parties now
request construction of 29 terms used in the Patent.
ANALYSIS
A. Claim construction standards
The fundamental purpose of a patent is to give notice to others of that in which the
inventor claims exclusive rights. Oakley Inc. v. Sunglass Hut International, 316 F.3d 1331, 1340
(Fed. Cir. 2003). Thus, the focus of claim construction is ascertaining how a reasonable
competitor would interpret the actual claim language, not what the inventor subjectively intended
the language to mean. Id. at 1340-41. The words used in the patent are evaluated according to
their “ordinary and customary meaning,” as would be understood by a person of ordinary skill in
the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir.
2005) (en banc). In some circumstances, the specification may reveal that the inventor
specifically – albeit idiosyncratically – defined a term in a way that might differ from the
meaning it would otherwise be given. If the intrinsic record clearly discloses that the inventor
resorted to his or her own peculiar lexicography, the Court gives effect to the inventor’s unique
idiom; however, if the inventor used particular words without giving a clear indication of an
intent to endow them with an unusual meaning, the Court will give those words their ordinary
and customary meaning in the art, notwithstanding the inventor’s subjective intent to invoke a
different definition. See e.g. Laryngeal Mask Co. v Ambu, 618 F.3d 1367, 1372 (Fed. Cir. 2010).
To give meaning to the inventor’s language, the Court “looks to those sources available
to the public that show what a person of skill in the art would have understood disputed claim
determinations). However, this Court often finds Judge Daniel’s reasoning and conclusions to be
persuasive, and acknowledges them accordingly.
3
language to mean.” Phillips, 415 F.3d at 1314. Among those sources are: (i) the words of the
claims themselves; (ii) the remainder of the patent’s specification; (iii) the prosecution history of
the patent; (iv) extrinsic evidence concerning relevant scientific principles; (v) the common
meanings of technical terms used; and (vi) the state of the art at the time of the invention. Id.
Terms must be construed in light of the entirety of the patent, not just in the context of the
particular claim(s) they appear in. Id. at 1313. In other words, claim language must be read in
conjunction with the more general and descriptive specification portion of the patent; indeed, the
specification is often “the single best guide to the meaning of a disputed term.” Id. at 1315.
Because the patent is examined as a whole, the Court assumes that claim terms will normally be
used consistently throughout the patent, and thus, the meaning of a term used in one claim can
illustrate the meaning of that same term used elsewhere in the patent. Id. at 1314.
As with the specification, evidence of the prosecution history of the patent can also be
considered as intrinsic evidence of how the USPTO and the inventor understood the patent. Id.
at 1317. The prosecution history reflects “an ongoing negotiation between the PTO and the
applicant,” and can sometimes demonstrate that the inventor limited or disclaimed some portion
of a claim. Id. At the same time, because the prosecution history predates the final patent
language, the prosecution history “often lacks the clarity of the specification and thus is less
useful for claim construction purposes.” Id.
Extrinsic evidence of disputed terms – that is, “all evidence external to the patent and
prosecution history, including expert and inventor testimony, dictionaries, and learned treatises”
– can also shed light on the proper construction to be given to those terms, but extrinsic evidence
“in general [is] less reliable than the patent and prosecution history in determining how to read
4
claim terms.” Id. at 1318. The court in Phillips articulated a variety of reasons why a court
construing a patent should be wary of relying too heavily on extrinsic evidence, and cautions
that, while admissible and potentially probative, courts “should keep in mind the flaws inherent
in each time of [extrinsic] evidence and assess that evidence accordingly.” Id. at 1318-19.
B. Particular claim terms
1. General description of invention
This patent describes a process by which a number of users of networked computers
jointly and simultaneously view and edit a document, database, or other computer file. The
process involves a “host” computer, on which the document or file physically resides, and the
host computer is electronically connected to one or more “remote” computers.4 As exemplified
by the flowchart shown as Figure 3A, the host computer begins by sending the first screen of the
file to all of the remote computers. Then the host computer “polls” – that is, contacts -- the first
remote computer to inquire whether the user of that remote computer has made a change to the
file. If so, the host computer makes the requested change to the file and sends any updated
display output to all of the connected computers. The host computer then polls the next remote
computer as to whether its user has made a change to the file, and if so, processes any change
and updates the output to all users. This process continues as to each remote computer, then
repeats. The patent further contemplates situations in which users are viewing and interacting
with different parts of the file, requiring that the host computer to monitor the portion of the
document that each remote user is viewing and editing and making appropriate changes to all
4
The patent anticipates that the users will all be in simultaneous voice contact as well,
either through a separate data channel carrying voice communications or via a conference call
over ordinary telephone lines.
5
remote users’ views when a change is made elsewhere in the file.
To increase efficiency, the patent contemplates that some remote users (and, during
certain operations that tax the host computer’s capabilities, all users) will not be involved in
active editing, but rather, will be spectators for a period of time. It anticipates that these such
computers will be placed in a “locked out” status by the host, by which they are no longer polled
for changes and are merely provided updates of the file’s output when other users make
changes.5 When appropriate, users who are locked out can have their ability to access reinstated
upon submission of the appropriate command, at which point the polling of their computer
resumes.
The specification also describes embodiments in which there are no mechanisms for
polling the remote computers or storing edit commands in a buffer; these more anarchic
embodiments contemplate that all user input is provided directly to the host computer in realtime, raising the distinct possibility of conflicting editing commands, overwritten edits, and
generalized chaos that, Mr. Klug suggests, can be prevented only through careful external
coordination among the users themselves.
2. Primary disputed claims
The parties’ Joint Claim Construction Chart (# 88) lists more than two dozen claim terms
to construe. However, the claim construction briefs focus on a subset of nine key terms. For
purposes of economy and due to the parties’ priortization, the Court limits its construction to
those nine key terms.
a. “multi-tasking processing means”
5
The Patent does not offer details as to how the lockout process works – e.g. who initiates
the lockout or how a signal to begin or end a lockout is given and received.
6
All of the claims at issue in this litigation require the host computer to have “multitasking processing means” (hereafter “MPM”). The MPM serves two purposes: “coordinating
the execution of . . . file editing operations” and “coordinating the transfer of data” to and from
the host computer. The parties agree in most respects as to the construction to be given to this
term; they disagree only in two particulars: (i) whether the MPM requirement necessarily
requires the host computer to be running a multi-tasking operating system, or whether any
operating system that may be supplemented by software that effectively simulates a multitasking environment can suffice; and (ii) whether all of the steps discussed in Fig. 3A (namely,
“establishing voice communication,” “polling,” sending the first screen of the file to all displays,
and transferring the completed file to the remote computers) are necessarily part of the software
component of the MPM, or whether some functions may be omitted in certain situations or
embodiments.
(i) operating system
Turning first to the question of whether the MPM requires an operating system capable of
multi-tasking or merely a single-tasking operating system enhanced by software that simulates a
multi-tasking environment, the Court finds that the specification contemplates that the functions
described can be performed by a single-task operating system supplemented with mutli-tasking
software. It explains that “Multi-tasking can be implemented through the PC’s . . . operating
system, the application software, the operating software, or some combination thereof.” (7:2729). It goes on to state:
Software is also available that can effectively convert a singletasking personal computer into a multi-tasking machine. In this
way, a single-tasking personal computer is able to run a plurality of
different tasks or programs simultaneously. Until recently,
7
however, few presently available personal computers were
powerful enough to perform effective multi-tasking through the
use of software. . . Within a relatively short period of time, it is
expected that personal computers will be widely available that
operate at many times [the necessary] speed. (7:51-66).
The Plaintiff concedes that the patent itself contemplates the possibility of a single-task
operating system, supplemented by multi-tasking software, but argues that Mr. Klug disclaimed
that alternative on two occasions during the patent reexamination process. Although a patent
may be unambiguous in its terms, the patentee may choose to disclaim or disavow certain claims
during the course of prosecuting the patent before the Patent & Trademark Office. Poly-America
v. API Industries, Inc., ___ F.3d ___, 2016 WL 5956745 (Fed. Cir. Oct. 14, 2016). A disavowal
requires the patentee to make clear, by unequivocal evidence, that the claimed invention includes
or does not include a particular feature. Id. Here, the Plaintiff points to two items of evidence
that, it contends, demonstrate that Mr. Klug disavowed any claim to the invention running on a
single-task operating system using multi-tasking software.
The first item is the August 2005 affidavit of Gary Nutt, submitted in conjunction with a
2004 reexamination of the Patent. This reexamination focused, among other things, on the
Patent’s reference to a “single-user application” that the host computer uses to perform editing of
the document or file. Items of alleged prior art described a similar process being performed by a
“multi-user application.” Mr. Nutt’s affidavit makes clear that “multi-tasking is fundamentally
different from multi-user,” and takes the position that the Patent necessarily describes a singleuser application “because it specifically requires the use of multi-tasking to accomplish
interactivity.” (In other words, an application specifically designed for multiple simultaneous
users would not require a “multi-tasking” environment to run in, because, Mr. Klug noted, “the
8
multi-user application program would already have facilitated and supported the desired
interactivity” [JA445].6) Although Mr. Nutt’s affidavit makes a passing comment that “the ‘320
Patent discloses that “interactivity is accomplished, in part, by using a multi-tasking operating
system” (emphasis added), the context of the statement makes clear that Mr. Nutt is intending to
distinguish a single-user application in a multi-tasking environment from a multi-user
application, not disavowing the Patent’s explicit reference to the possibility that the required
multi-tasking environment could be created by multi-tasking software instead of a multi-tasking
operating system. Accordingly, the Court finds that Mr. Nutt’s statement cannot be understood
to be an unambiguous disavowal of the specification’s suggestion that an appropriate multitasking environment can be created by a single-task operating system running multi-tasking
software.
The second item of evidence is more supportive of disavowal, although some context is
necessary. The Patent was reexamined a second time in 2009, when third parties alleged that
prior art -- namely, U.S. Patent No. 4,939,509 (“the Bartholomew patent”), among others –
anticipated Mr. Klug’s invention. The Bartholomew patent appears to contemplate a host
computer running a single-user application “such as a spread sheet or an editor,” plus software
that “enables [the host] to function as a time-sharing computer system” that receives commands
from other networked computers. In essence, then, it appears that the Bartholomew patent
anticipated Mr. Klug’s notion of a host computer using multi-tasking software to enable it to
interact with other computers, but does not necessarily contemplate a multi-tasking operating
6
Citations to [JA___] reference the appropriate page of the parties’ Joint Appendix, found
at Docket # 92.
9
system performing that task.7 In response, Mr. Klug argued that the Bartholomew patent did not
describe an actual “multi-tasking” environment, but rather, described a single-tasking
environment where the host computer was either performing edits to the file or document or
receiving instructions from the remote computers, but never both simultaneously. Notably, this
Court does not understand Mr. Klug to have drawn any differentiation at that time between
Bartholomew’s “multi-tasking via software” arrangement and a “multi-tasking via operating
system” arrangement. The Patent Office eventually concluded that the Bartholomew patent did
not anticipate Mr. Klug’s patent, but based that decision on different grounds, leaving the
operating system question unaddressed.
The third reexamination proceeding occurred in 2012, ostensibly as a result of the
proceedings before Judge Daniel. The party requesting reexamination argued that the Plaintiff’s
submissions to Judge Daniel advocated a construction of the Patent that was at odds with the
reasoning of the Patent Office in upholding the claims during the 2009 reexamination. The
reexamination request also appeared to incorporate arguments raised in 2009, including the
contention that the Bartholomew patent also taught the use of a multi-tasking environment via
software. In May 2013, Mr. Klug submitted a lengthy brief addressing the various issues raised
in the reexamination, and it is a portion of that brief that the Plaintiff relies upon here to assert
that Mr. Klug disavowed the creation of a multi-tasking environment via a single-tasking
operating system augmented by multi-tasking software. Specifically, the brief states:
7
In this regard, as the Plaintiff points out in its claim construction brief, the parties’
dispute here over the operating system issue is one that bears on the validity of the Klug patent
relative to prior art, not on the question of infringement by the Defendant. The parties appear to
agree that the Defendant’s accused devices all involved the use of a multi-tasking operating
system.
10
In short, the hardware for the [MPM] functions . . . across all of
Klug’s embodiments include, at a minimum, . . . a multi-tasking
operating system.
More specifically, each of Klug’s independent claims recite and
require as part of the MPM, the use of a multi-tasking operating
system, such as OS/2, and not some other form of “effective multitasking.” Notably, this position has been consistent throughout the
prosecution of the ‘320 Patent [as he] previously argued that Klug
required a multi-tasking operating system when discussing why a
POSITA would recognize Klug as teaching use of a single user
application program versus multi-user application programs, as
discussed during the 1st Reexamination. [JA2073-74]
The final sentence of the quoted text was supported by a footnote that referred back to Mr. Nutt’s
affidavit, discussed above, and further added that Mr. Klug “clearly and unequivocally argued
that Klug requires use of a multi-tasking operating system and thereby clearly disavowed the use
of any other techniques for accomplishing ‘effective’ multi-tasking.”8
This Court finds no merit in the Plaintiff’s contention that it “clearly and unequivocally”
disavowed the Patent’s claim to software-based multi-tasking as early as the 2004 reexamination,
nor in its contention that it has “consistent[ly]” maintained that position since. As noted above,
the only authority the 2013 brief cites for that proposition is Mr. Nutt’s affidavit, which does not
disclaim software-based multi-tasking, much less do so in clear and unequivocal terms.
Moreover, the Plaintiff has not pointed the Court to any other instance(s) of such “consistent”
disavowals anywhere else in the lengthy reexamination record.
8
It appears that the Patent Examiner was not swayed by this argument. In an August 2013
ruling deeming Mr. Klug’s remaining claims patentable, the Patent Examiner appears to reject
the notion that Mr. Klug disavowed software-based multi-tasking. In doing so, the Patent
Examiner simply examined the specification language and found, as quoted above, that it clearly
contemplated multi-tasking at either the operating system or software level. Thus, it appears to
this Court that the Patent Examiner did not squarely consider, much less resolve, Mr. Klug’s
argument that he had since disavowed the specification’s reference to software-based multitasking.
11
At the same time, this Court is prepared to find that the 2013 brief is itself sufficiently
clear and unambiguous in its disavowal of software-based multi-tasking. Although the statement
that Mr. Klug “clearly and unequivocally . . . requires use of a multi-tasking operating system
[and] disavow[s] the use of any other techniques for accomplishing effective multi-tasking” is
yoked to an erroneous argument that Mr. Klug had asserted that position previously, the error
does not diminish the language’s clear intention to reflect disavowal now. Indeed, the disavowal
of software-based multi-tasking at this time appears to be a cagey defensive move by Mr. Klug,
as he seeks to preclude the possibility of invalidation of the Patent due to the prior art of
Bartholomew. The Court might be reluctant to permit such a disavowal at this time if there was
evidence that Mr. Klug had invoked the Patent’s reference to software-based multi-tasking in
threatening or pursuing a claim against another alleged infringer – essentially imposing a form of
judicial estoppel upon Mr. Klug -- but the Defendant here has not identified any such instances
of Mr. Klug doing so.
Accordingly, although the Court finds that the plain language of the Patent itself makes
clear that an MPM could consist of either a multi-tasking operating system or a single-tasking
operating system supplemented by multi-tasking software, Mr. Klug clearly and unequivocally
disavowed any reliance on the latter via his September 2013 briefing in the reexamination
proceedings. Thus, for purposes of claim construction at this time, the Court finds that the MPM
described in the Patent requires the use of a multi-tasking operating system.
(ii) software algorithm
The second issue in construing the term “MPM” is whether the software structure that
performs the functions of “coordinating editing” and “coordinating data transfer” consists of all
12
of the steps disclosed in the algorithm shown in Fig 3A of the patent, or whether some of the
steps disclosed in that algorithm may be skipped in certain embodiments. Figure 3A depicts the
following:
13
14
Both the Patent Examiner, at the conclusion of the 2012 reexamination, and Judge Daniel
have previously concluded that it is necessary that the MPM perform all of the steps of the
algorithm set forth in Fig. 3A. See JA2165 (“the Examiner concludes that the minimum
corresponding structure for the MPM includes the algorithm of FIG 3A for all embodiments”);
D.C. Colo. Civ. Case No. 03-cv-01587-WYD-MEH at # 333. Whether the Plaintiff is
attempting to distinguish or undo those outcomes is somewhat unclear.
On the one hand, most of the argument in the Plaintiff’s initial claim construction brief
appears to focus on the notion that “polling of locked-out PCs [is not] part of the structure.”
Docket # 104 at 13. Thus, it appears that the Plaintiff is arguing that an MPM need not perform
steps such as 104, 106, or 108 if the PC in question is locked out. See also id. at 15 (MPM “must
only include the capabilities of ‘polling’ for inputs from any then-activated remote PC (if any)
and locking-out all other (if any) remote PCs”).
On the other hand, the parties’ Joint Claim Construction Chart seems to suggest that the
Plaintiff’s position is that the appropriate software structure for carrying out the MPM’s
functions consists of all of the steps shown in Fig. 3A except the “establish voice
communication” portion of step 100; the “create buffer in memory” portion of step 102; and
steps 111 and 112 (determining whether to transfer the completed file to other users at the
completion of the session and making such a transfer). Docket # 88 at 4-5. But specific
argument about the voice communication, memory buffer, and file transfer steps are nowhere to
be found in the pertinent portion of the Plaintiff’s initial brief. The Plaintiff’s response brief
addresses the voice communication issue in slight detail, but that document also makes
15
arguments that are inconsistent with the Plaintiff’s assertions in the Joint Claim Chart. Compare
e.g. Docket # 88 at 5 (conceding that “Fig. 3A, Operations 103, ‘Send first screen of file to all
displays’” is a required component for the task of “coordinating data transfer”) with Docket #
104 at 29 (“Step 103, ‘Send[ing] First Screen of File to All Displays’ is also not corresponding
structure for the MPM”). Curiously, it is the Plaintiff’s reply brief that addresses the software
algorithm issues most completely, raising several arguments not previously made in the
Plaintiff’s prior filings.
This Court exercises its discretion to decline to address arguments that are effectively
raised for the first time in a reply brief. See Norman v. U.S., 429 F.3d 1081, 1091 n. 5 (Fed. Cir.
2005). Thus, the Court does not consider the Plaintiff’s argument that the software component
of the MPM excludes the voice communication, memory buffer, and file transfer portions of Fig.
3A. The Court considers only the question that the parties have consistently briefed: whether the
multi-computer polling process of Steps 104, 106, and 108 are a necessary component of the
MPM.
In this regard, the Court finds that the Patent necessarily requires that the MPM contain a
software structure that is designed to poll multiple computers. The Plaintiff’s argument appears
to suggest that there may be certain times when only one computer is active, and that may very
well be true. But the Patent necessarily describes an invention’s entire design, not how it might
operate at a discrete moment and under certain specific conditions. To fulfill the description
found in the Patent, any embodiment of the invention that entails the use of polling must be
designed to poll, at least at some points, all of the computers participating in the session. It may,
in practice, skip that polling if certain conditions are met, but the embodiment must nevertheless
16
be capable of performing that polling. In this regard, then, the Court agrees with the Patent
Examiner and Judge Daniel, finding that the software portion of the MPM necessarily requires
the performance of all steps shown in Fig 3A.
As best the Court understands, the Plaintiff primarily argues that the Patent describes
embodiments where, for various reasons, the host computer will sometimes only receive input
from a single PC – that is, where all other PCs involved in the session have been “locked out” or
are otherwise not “active.” In such circumstances, the Plaintiff appears to suggest, the algorithm
shown in Fig. 3A need not attempt to poll the inactive PCs, and need only receive input from the
sole active PC. Thus, the Plaintiff argues, the algorithm need not perform all of the steps shown
in Fig. 3A, but merely the polling steps that are pertinent in a given situation.
Such an argument is somewhat inconsistent with what Fig. 3A depicts. The Plaintiff’s
argument suggests that there is an extra, undisclosed step to the algorithm shown in Fig. 3A –
one in which the host PC, before performing the polling loop of steps 104, 106, and 108, pauses
to query which (if any) PCs are locked out and acts to entirely bypass the polling step involving
that/those PC(s). Tthere are multiple instances in the Patent that suggest that the host computer
polls locked-out remote computers, but simply ignores what they have to say. For example, step
118 explicitly states “do not accept input from” a locked out PC, suggesting that the algorithm
continues to poll every PC, regardless of its locked-out status, but proceeds to simply reject or
disregard the input from PCs that are designated as locked out. See also 6: 4-5 (“input by a
locked out user will not be considered”).
However, the Court generally agrees with the Plaintiff that the specification itself
describes situations in which, in the course of carrying out the algorithm, locked-out PCs will
17
not be polled at certain times. Mr. Klug explains that, when a large number of users are
involved, “the polling of all the users would take a relatively large amount of time.” 11:10-13.
To solve this problem, Mr. Klug designed the lock-out process, such that locked-out PCs “will
not be checked for input” at all, thereby saving the time that would be spent polling them. 11:1617. Thus, the Court agrees with the Plaintiff that the specification contemplates that, at times,
locked out PCs will not be polled in the manner shown in Fig. 3A.
But the Court also agrees with the Defendant, who argues that the necessary inquiry is
not what tasks the algorithm performs at a certain point in time and in response to a certain set of
circumstances, but rather, what steps the algorithm must be capable of performing. In this
regard, it is clear that the algorithm must be designed to poll all of the PCs involved in the
session at some point(s) in time. All descriptions of the invention indicate an expectation that
every user participating in a session would have some ability to participate in editing. In order to
participate in editing, a user must have his or her PC polled at some point (or, in non-polling
embodiments, simply have the ability to send edits to the host).9 Thus, the algorithm of every
embodiment must include a software structure that polls or receives data from multiple users. It
may very well be that, at times, only one user is actively editing the document or file, and thus,
9
Indeed, the sine qua non of “coordinating editing” is the algorithm managing editing
instructions coming simultaneously or serially from two or more different sources. The act of
“coordinating” something requires, by definition, two or more inputs that the agent performing
the coordination brings into a common order or relationship; for example, one coordinates their
own schedule with the schedule belonging to a friend, a coordinator of a football team manages
and arranges all of the various components of the offense or defense. Thus, by definition, the
MPM is “coordinating editing” only when it is managing editing instructions coming from two
or more PCs. In the situation that the Plaintiff describes, where only on PC is actively supplying
editing instructions because all others are locked out, the MPM is not “coordinating” anything, it
is merely implementing the single set of instructions it is being given.
18
the portion of the algorithm that manages polling other PCs is not in use. But to carry out the
functions described in the patent, every embodiment will require an algorithm that is capable of
performing all of the functions shown in Fig. 3A, including the polling of each PC.
Thus, as to the issue that is apparently in dispute,10 this Court agrees with the Patent
Examiner and Judge Daniel that the MPM, as described in the patent, requires a software
algorithm that is capable of performing all of the steps shown in Fig. 3A.
b. “polling”
Claim 31 of the Patent describes a “means for sequentially polling the input from each of
the [user’s computers].” The Plaintiff proposes that the term “polling” be construed to mean
“determining whether a file editing input has been received from an active PC.” The Defendant
proposes that the term be construed to mean “the process of continually checking each potential
source of input . . . in a round-robin sequence.” Thus, the primary differences between the
parties’ proposed construction is that the Defendant’s construction requires that polling be both
“continual” and “in a round-robin sequence,” whereas the Plaintiff’s construction lacks those
requirements.
The specification describes how the polling process occurs: “the microprocessor of the
host PC essentially sequentially polls each of the PCs for input.” 9:63-64. The specification
states that, if input is provided, the host PC carries out the command contained in the input,
updates the display sent to each PC, and then “performs the same function for the other two PCs”
10
Although the Plaintiff does not argue as much in its initial claim construction brief, it
raises a new issue in its response and reply briefs: that the MPM should not have to perform all
of the steps shown in Fig. 3A because certain steps, like “establish voice communication” (step
100) or transferring the completed file (step 112) are not tasks that are found in all embodiments.
19
– that it, the host polls the remaining PCs in sequence. 10:3-8. “After each polling sequence” is
completed, the host PC “checks to see if a request has been made to end the editing,” and, if so,
begins the exit process. 10:66-67. Otherwise, “the polling sequence . . . is repeated,” beginning
again with the first PC. 10:8-10.
Noting that the polling process can take a long time when large numbers of users are
present, the Patent contemplates that “any of the PCs may be locked out and made non-active,”
with the result that “that PC’s buffer will not be checked for input.” 11:14-17. The locked-out
user continues to receive updates to the display of the document or file, and both the
specification and Fig. 3A contemplate that at the end of the polling sequence, the host PC queries
whether any of the locked-out PCs should be made active again. 11:20-23, Step 117. There are
also circumstances where no polling whatsoever will occur, such as when the host computer is
involved in a resource-intensive process such as spell-checking. 10:31-34.
The Plaintiff’s brief argues that the Defendant’s proposal of a “round-robin sequence” of
polling – by which each remote PC is checked, or checked in particular order, in each iteration of
the polling cycle – is in error, and that “the host PC does not check its buffer equally for inputs
from each remote PC in some set order.” In doing so, the Plaintiff relies on a passage in the
specification that states “the [host PC] polls the buffer which holds input for the first PC for
input therefrom. The buffer may be checked for a certain period of time, until the buffer is
empty, or until it is determined that no input data has been placed in the buffer.” 9:65-10:2.
It appears that Mr. Klug has sown confusion by his use of the term “buffer” to describe
two different mechanisms. The host PC creates a buffer in its own memory to store commands
that it has received during the polling sequence, but has not yet executed. 9:48-50. At the same
20
time, the patent speaks of other “buffers” that, although never expressly described, must
necessarily be created in the memory of the remote PCs, similarly storing input commands from
the user that have yet to be sent (via the polling process) to the host PC. See e.g. 10:65 (storing
each user’s editing location in “that PC’s buffer” that is later polled); 11:16-17 (when a user is
locked out, “that PC’s buffer will not be checked for input”). Once it is understood that the
remote and host PCs each have buffers to store unprocessed commands, the reference to a
“buffer” that the Plaintiff relies upon becomes clear: the buffer being polled is the buffer on each
remote PC that stores whatever editing commands the remote user has input. Thus, the polling
occurs when the host PC checks the remote PC’s buffer and either: (i) finding it empty, waits
until the host PC has “determined that no input data has been placed in the buffer”; or, (ii)
finding commands, begins conveying those commands to the host PC until it has either emptied
the remote PC’s buffer or until a certain time period has passed. The Plaintiff’s argument
mistakes the “buffer” described above to be only the host PC’s buffer, suggesting that the
“polling” occurs there. Such a construction fails to account for how that buffer ever gets filled
with commands from the remote PC. If the only “buffer” that exists is found on the host PC, and
it is that buffer that is “polled,” the Patent describes no mechanism for commands to be solicited
from the remote PCs.
The Court also finds that the Patent calls for the “polling” process to require the querying
of each PC during each cycle. For PCs that are “active” – that is, not locked-out – the polling
retrieves editing commands from the remote computer. PCs that are locked-out are also queried
during the polling sequence, albeit for a different information. They are queried at Step 117 to
determine whether their lockout should be cancelled (e.g. because the user has begun providing
21
input after a period of inactivity or because the user has sent a command to end the lockout).
The cyclical querying of the locked-out PCs is necessary to effectuate the Patent’s observation
that a lockout can be ended “at any time.” Thus, the Court agrees with the Defendant’s
construction that calls for “polling” to require each remote PC to be queried for input in an
established order or “round-robin sequence.”
However, the Court does not adopt that portion of the Defendant’s proposed construction
that requires “polling” to be conducted “continually.” The Plaintiff is correct that, at times, the
host PC will stop all polling and devote its complete attention to a complex task. The polling
sequence or cycle is performed repetitively, but not necessarily “continually.
Accordingly, the Court construes the term “polling” to mean “the process of repetitively
checking, in an established order, each personal computer for input.”
c. “substantially real-time” and “substantially contemporaneously”
All of the independent claims call for the invention to function in a way that allows users
to make edits “on a substantially real-time basis” and to be able to review the results
“substantially contemporaneously with” the execution of the editing commands. As the
Defendant concedes, these terms mean that “edits [are] made so quickly that they would be
performed on the file almost as fast as the edits are inputted by the users” and that the display of
such edits “occur[s] so quickly that all of the remote users would be able to see the edits being
made on the display almost at the same time as the edits would be inputted by an editing user.”
Although the parties are not asking for the Court to construe the term “substantially” in
order to clarify its meaning, the Defendant argues that the term introduces a fatal indefiniteness
to Mr. Klug’s claims. The Defendant contends that the word “substantially” “provide[s] no
22
reasonable guidance as to how close in time these actions need to be to fall within the claims’
scope,” suggesting that one person skilled in the art might consider a delay of 5 seconds between
input and edit to be “substantially real-time,” while another might not.
A patent is impermissibly indefinite if its claims, read in light of the specification and
prosecution history, fail to inform, with reasonable certainty, a person skilled in the art as to the
scope of the claimed invention. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2124
(2014). The term “substantially” is not necessarily indefinite; if the record provides sufficient
instruction from which a person skilled in the art could ascertain what “substantially” means in
the appropriate context, the claim is sufficiently definite. See Apple, Inc. v. Samsung Electronic
Co., 786 F.3d 983, 1002-03 (Fed.Cir. 2015). Here, the Patent repeatedly suggests that the metric
to determine “substantially” in this context is one of perceptibility of the difference between the
speed at which edits are made and displayed via the host PC and the speed at which those edits
would be made and displayed if the same operation had been carried out on the user’s own PC.
See 9:13-17 (“the likelihood is reduced that user of the remote PC will even notice a time delay
that would suggest that the operation has been carried out at the host PC rather than the remote
PC”); 10:12-13 (“no discernable delay in the processing will be perceived by the users”); 10:2324 (“a significant delay will not be perceived”). Thus, the Patent provides a benchmark -- the
time the same operation would take to perform on the user’s own PC -- to measure any delay and
a metric -- whether the user would perceive that difference in time-- by which to determine
whether that delay is “substantial” or not. Although there are natural variations in different
people’s ability to perceive short increments of time, the invention here is focused on using highspeed data lines and powerful computers to create a seamless multi-user interface. Persons
23
skilled in that art would necessarily be familiar with user interface issues and the degree of
delays in processing that typical users would and would not notice in such circumstances.
Accordingly, the Court finds that the term “substantially” as used in the contexts above is
not indefinite.
d. “personal computer”
All independent claims entail the use of “a personal computer.” The parties agree that
this phrase involves “a single-user [ ]computer designed for personally-controllable
applications,” but the Plaintiff proposes two additional qualifications: that a personal computer is
necessarily a “microcomputer” and that it is “not connected to a mainframe.”11
The Patent largely defines “personal computer” as follows:
Traditionally, a personal computer is defined as a single-user
microcomputer designed for personally controllable applications.
However, recently introduced single-user computers have many
times the processing power of their predecessors, and the term
personal computer covers a wide variety of products. Today,
single-user personally controllable "desktop" computers are used
in technical or engineering workstations for CAD/CAM and the
like. Many of these personal computers use reduced instruction set
computing (RISC) microprocessors, and can perform functions in a
single-user system which were until only recently available just
from mainframes.
7:5-17.
Turning first to whether “personal computer” necessarily means “microcomputer,” the
11
Judge Daniel adopted the Plaintiff’s construction in the prior action, but this Court notes
that the parties’ dispute in that case concerned whether Mr. Klug, during the prosecution of the
patent, had limited its definition of “personal computer” to one having specified processor speeds
and other architecture. Thus, whether the construction should include the terms
“microcomputer” and “not connected to a mainframe” was not a matter considered by Judge
Daniel, and thus, his adoption of the construction the Plaintiff urges here is not persuasive on
those points.
24
Court pauses, as neither party has offered a clear definition of the term “microcomputer” or
explained how that term differs from the undifferentiated “computer.” The Defendant argues
that “[t]he specification . . . recognizes that ‘microcomputer’ is an antiquated term and goes on to
include ‘workstations’ . . . in the category of ‘personal computers’ that would work with the
claimed invention, despite not being labeled ‘microcomputers.’” Thus, the Court assumes that
the Defendant contends that “microcomputers” and “workstations” are distinct from each other.
But the text quoted above does not appear to recognize that distinction; to the contrary, Mr. Klug
clearly considers the term “personal computer” to include “technical or engineering
workstations.” Moreover, and perhaps more importantly, the Defendant’s own proffered expert,
Keith Lantz, adopts a definition that makes the term “personal computer” “[s]ynonymous with
microcomputer.” Docket # 95 at ¶ 83. Accordingly, the Court finds that the term “personal
computer” means “a microcomputer.”
The remaining question is whether a “personal computer” must be one that is “not
connected to a mainframe.” The Patent itself mentions the term “mainframe” only once, in the
unhelpful context of noting that modern personal computers can perform some of the tasks that
previously could only be performed by mainframes. 7:14-16. As with “microcomputer,” the
parties have not cited to extrinsic evidence that provides a meaningful definition of the term
“mainframe.” Mr. Lantz’s affidavit briefly addresses the notion that “terminals” are computers
that “require a mainframe or server to operate,” and that these less-powerful machines are
distinct from “personal computers.” Mr. Lantz explains that terminals are “machines [that] had
relatively simple hardware that could only display the results of computations that had been
performed on another computer.” The Patent expressly states that “[t]he present invention may
25
also be carried out using a host PC, as discussed above, and remote computer terminals that do
not have the full power of a PC.” 13:34-36 (emphasis added). And many of Mr. Klug’s initial
claims distinguished the notion of “terminal” from that of “personal computer” – for example,
Claim 17 called for “a personal computer” and “a plurality of remote terminals.” From this, the
Court discerns that the terms “terminal” and “personal computer” are not synonymous.
By using the term “personal computer” in the claims at issue, then, the Court presumes
that Mr. Klug did not intend to assert a claim over a process that involves the use of “terminals.”
The only evidence in the record that distinguishes a “terminal” from a “personal computer” is
Mr. Lantz’s unopposed assertion that a terminal “require[s] a mainframe or server to operate.”
Thus, the Court thus construes the term “personal computer” as follows: “a single-user
microcomputer, designed for personally controllable applications, that does not require a
mainframe or server in order to operate.”
e. “single-user application program”
All of the disputed claims entail the use of a host PC “using a single user application
program.” The Plaintiff suggests a construction of that term to be “a software program that
perceives that only a single user is providing inputs to the program at any given time.” The
Defendant proposes a construction of “an application program designed for use by only a single
user at a time.” Judge Daniel construed this term in the prior litigation, adopting the Plaintiff’s
proposed construction over several constructions urged by the defendant there that were
somewhat similar, but not identical to, the construction urged by the Defendant here.
As Judge Daniel noted, the term “single-user application program” does not appear in the
specification of the Patent; rather, it was a new term that appeared for the first time when Mr.
26
Klug re-framed his claims during the first re-examination proceeding. Both sides essentially
admit that, beyond the general purpose of the invention, nothing in the Patent itself sheds any
light on Mr. Klug’s intended meaning of the phrase “single-user application program.”
The parties’ proposed constructions differ only in regard to a relatively nebulous point:
whether the application is designed for a single user or whether it perceives a single user. To a
large extent, this distinction appears to be a purely semantic one. A system that is designed for a
single user will, by definition, only ever perceive one user to be using it; there is no need for the
system to even contemplate the receipt of input from someone other than the single user.
Likewise, a system that can only perceive one user must necessarily have been designed so than
only one operator can use the system at a time. Otherwise, the designer who intended the
application to support multiple users failed to design a system that meets his or her intentions.
Thus, the “perceived” versus “designed” distinction appears to be a meaningless one. Certainly,
the parties’ briefing has not explained why the selection of one term over another would have
any concrete significance.
This Court is not persuaded that Judge Daniel’s reasoning in the prior litigation applies
here. In that case, the defendant proposed constructions – the application only “allows” input
from a single user, or is only “controllable” by a single user – that, Judge Daniel found, would
have subverted the very intention of Mr. Klug’s invention, which was to allow multiple users to
provide input to, or otherwise control, the application. Unlike the constructions proposed in that
case, the parties’ proposed constructions here are so functionally similar that there is no
meaningful need to select one over the other. Accordingly, the Court declines to adopt one
proposed construction over the other, finding that they are, functionally, identical.
27
f. “data corresponding with and limited to said file editing operations” and
“file information”
Each of the independent claims provides for the host PC to be responsible for
“coordinating the transfer of data. . . wherein the coordinated transfer of data corresponding with
and limited to said file editing operations includes file information received from file editing
operations executed by a single user application program and constituting a portion of the given
computer file.” To reduce this windy verbiage to a manageable size, the Plaintiff proposes
construing the phrase “file information . . .” to mean “computer renderable information that
identifies the file editing operations then occurring” and to construe the phrase “data
corresponding . . .” to mean, simply, “file information.” Thus, the Plaintiff’s construction would
reduce the quoted language in the claims to “ . . . wherein the coordinated transfer of file
information includes computer renderable information that identifies the file editing operations
then occurring.” The Defendant proposes to construe the phrase “file information . . .” to mean
“editable data, rather than image information, that constitutes a portion of a copy of the computer
file and that can be edited by the single user application program” and the phrase “data
corresponding . . .” to mean “file information pertaining only to the edits to the file.” Thus, the
Defendant’s concatenated construction of the claim language is “. . . wherein the coordinated
transfer of file information pertaining only to the edits to the file includes editable data, rather
than image information, that constitutes a portion of a copy of the computer file and that can be
edited by the single user application program.”
Once again, the language in the claims is not directly addressed in the specification;
rather, the disputed language was added to the claims by Mr. Klug during the second
reexamination, in an attempt to overcome the prior art of the Bartholomew patent. Notably, the
28
Patent Office was concerned that the Bartholomew patent anticipated Mr. Klug’s invention
insofar as the host computer in the Bartholomew patent passed “display information” back to the
remote user. As Mr. Klug explained, under Bartholomew, the remote user “will receive a
communication from [the host] whenever [the host’s] screen display changes – such screen
display change may be as mundane as [the host’s] on-screen clock time clock updating.”
JA1424. In other words, in the Bartholomew invention, the data that remote users received was
simply a screenshot of the host computer’s display, not interactive or editable data.
At the time of the reexamination, Mr. Klug’s claims addressed a means for “coordinating
the transfer of data corresponding with and limited to said file editing operations from said host
computer to the display means of the others.” Mr. Klug argued that, under his own invention,
the host computer transmitted data used for “file editing operations” to the remote users, not just
images of the host’s own screen. He relied, in part, on an affidavit from Mr. Nutt that further
explained that “editable forms for information operate on the information itself rather than on an
image of the information (e.g., one can use conventional programs to read and write a document
in editable form, such as a Word file. . .) As a result, a fundamental tenet of the ‘320 patent is
that the information, rather than an image of the information, is shared among the participants.”
JA1481.
The Patent Examiner disagreed, finding that, under Bartholomew, “only the specific data
lines that have been changed or edited would be sent to the [remote PC],” and thus, Bartholomew
addressed the claim to “data corresponding with and limited to said file editing operations.”
JA1486. Mr. Klug made certain edits to the claim language that failed to satisfy the Examiner,
ultimately leading Mr. Klug to offer another amendment containing the operative language here.
29
JA1517.
The Examiner accepted this modification as overcoming Bartholomew, noting that the
amendment ensured that Mr. Klug’s invention “allow[ed the host] to send ‘the file information
itself’ so that data is executed in each remote PC using the single user application program and
thus, outputs of the data can differ from one remote PC to other remote PC.” JA1537.
Thus, it is clear from the prosecution history that in Mr. Klug’s claims, as amended, each
remote PC is running the same application program (e.g. Microsoft Word). The “file
information” that the host PC sends to the remote PCs is at least a portion (and possibly the
whole) of the very computer file that the users are collectively editing, not simply some portion
of the host computer’s screen display. From the prosecution proceedings, this Court will assume
that, in at least some embodiments, the host PC simply supplies the remote PCs with an copy of a
portion of the computer file being edited, and then proceeds to simultaneously provide each user
with the editing commands entered by other users, relying on the remote PCs to perform those
edits (i.e. “data is executed in each remote PC “). The Court will assume that other embodiments
closely follow the design outlined in the specification, where the host PC receives the editing
commands and performs the file edits. To overcome Bartholomew, these embodiments must
return something more than the mere output of the host PC’s editing. Thus, it is fair to conclude
that, in these embodiments, the host PC supplies the remote PCs with a updated copy of the
portion of the file after each edit.
In such circumstances, it is abundantly clear that the term “file information” necessarily
consists of two components: “a portion of the given computer file” (referenced in the claim
language itself) plus either the modifications to that portion that have resulted from the output of
“file editing operations” performed on that portion of the file by the host PC, or the actual editing
30
instructions collected by the host PC and sent to the remote PCs to be carried out on their copies
of the file. Constructing the term in this way is consistent with the actual claim language as well
as the discussions that Mr. Klug had with the Patent Examiner and the amendments he made to
overcome the Bartholomew patent. In this sense, the portion of the Defendant’s proposed
construction that defines “file information” as “editable data that constitutes a portion of a copy
of the computer file” more accurately captures this concept than the Plaintiff’s proposed
construction of “computer renderable information.”
Indeed, the Plaintiff’s construction could, arguably, encompass nothing more than the
sending of an image of the host PC’s screen, as such display information is “computer
renderable” (it can be displayed on a computer) and it “identifies the file editing operations then
occurring” by showing how the display changes as each editing operation is performed on the
host PC. As the prosecution history makes clear, simply conveying the host PC’s display to the
remote PCs would implicate the Bartholomew patent. The Plaintiff’s proposed construction also
omits certain express limitations in the claim language, such as the requirement that the “file
information” consist of “a portion of the given computer file.” Thus, the Court finds the
Plaintiff’s proposed construction to be both overbroad and under-inclusive. The Court adopts the
Defendant’s construction of the term “file information.”
In doing so, this Court notes that it reaches a conclusion different than that of Judge
Daniel in the prior litigation. Judge Daniel’s adoption of the Plaintiff’s proposed construction
turned on two key findings: (i) that Mr. Klug’s amendments to the claim language during the
second reexamination did not “agree to give up coverage for systems that transmit only image
information to the remote computers” – in other words, Mr. Klug elected to maintain a claim to
31
such an invention despite the risk that doing so could result in invalidity due to anticipation by
the Bartholomew patent; and (ii) that the Defendant’s requirement that “file information” consist
of “editable data” was contrary to the process described in the specification, by which the host
PC performed all of the edits to the file or document, and then simply distributed the output of
such operations to the remote PCs, such that “the form of the ‘file information’ . . . is irrelevant
because all of the editing occurs on the host PC.” This Court finds that both of those arguments
are refuted by Mr. Nutt’s affidavit, upon which Mr. Klug relied during the reexamination. As
Mr. Nutt explains, “a fundamental tenet of the ‘320 patent is that the information, rather than an
image of the information, is shared among the participants.” This is further confirmed by the
Patent Examiner reciting that Mr. Klug agreed that “the sending of the ‘file information’ itself
allows the data to be executed in each remote PC.” JA1559. Thus, because this Court finds that
the prosecution history unambiguously includes an argument by Mr. Klug that the “file
information” must consist of editable data capable of being processed by the software application
on the remote PCs, the proper construction of the term “file information” is that urged by the
Defendant, not the Plaintiff.
However, as between the parties’ proposed constructions of “data corresponding with . .
.,” the Court adopts the Plaintiff’s construction. The Plaintiff’s proposed construction essentially
subsumes this clause within the broader term “file information.” The Defendant’s proposed
construction also links this clause to the term “file information,” but further limits it to
“information pertaining only to the edits to the file.” By the terms of the claims themselves,
“data corresponding with . . . includes file information . . . .” Thus, by definition, the phrase
“data corresponding with . . .” must either be congruent with or broader than the phrase “file
32
information. . .” In other words, a rule that “A includes B” means that either A contains all of B
and nothing more, such that A = B, or A contains all of B plus other things, such that A > B. In
no circumstance can A include B and yet A < B. The Defendant’s proposed construction of
“data corresponding with . . .” produces the improper A < B result, as it provides that “data
corresponding with . . .” is “file information” but only that portion of file information “pertaining
. . . to the edits to the file.” As discussed above, “file information” includes two components: a
copy of a portion of the file and editing information. The Defendant’s proposed construction
would define “data corresponding with . . .” to include only the latter, yielding a situation where
that clause fails to “include” all of “file information. . . .” By contrast, the Plaintiff’s proposed
construction, which simply equates “data corresponding with. . . .” with “file information . . .”
produces the permissible result where, if A includes B, A = B. Thus, a construction wherein
“data corresponding with. . .” is simply synonymous with “file information . . .” produces a
logically valid result.
Accordingly, the Court construes the pertinent claim language to be “wherein the
coordinated transfer of data corresponding with and limited to said file editing operations
includes file information received from file editing operations executed by a single user
application program and constituting a portion of the given computer file” to mean “wherein the
coordinated transfer of data [ ] includes editable data, rather than image information, that
constitutes a portion of a copy of the computer file that can be edited by the single user
application program.”
g. “interconnecting means”
Claims 21-24 and 45-48 all require an “interconnecting means for electrically
33
interconnecting said host computer with the others.” The parties disagree on what structure is
described to carry out this interconnection function. The Plaintiff contends that the appropriate
structure is “all hardware and software, provided in or connected to a PC, which enables the host
PC to connect to an analog and/or digital networks and any networks and/or communications
systems utilized to facilitate communications between the host PC and one or more remote PCs.”
The Defendant contends that the appropriate structure is “the ISDN digital communications
network described at col. 8:24-45 or the digital/analog communications network described at
cols. 11:50-12:30.”
The Patent describes interconnecting means in several locations. Among others, it
mentions a preference for “a non-dedicated digital communications system [that can] link both
the personal computers and voice communication means,” 5:14-17, and, as an alternative, “a
plurality of modems . . . and an analog communications link.” 5:18-20. In the specification, Mr.
Klug elaborates at some length about the need for high-speed communications links, noting that
“[u]ntil recently,” such networks required “dedicated lines” which posed economic and logistical
obstructions to implementing the invention. 8:14-24. Mr. Klug noted more recent availability of
ISDN systems, “a non-dedicated digital communications network which can carry voice and data
over the same pair of standard telephone wires.” 8:24-29. (The Patent implies, however, that at
the time of its drafting, ISDN networks had yet to reach “full[ ] operation[ ] nationally” and
internationally. 8:36, 39-40.) He also predicted that “further engineering breakthroughs have
been made which will enable even faster digital communications over non-dedicated lines.”
8:46-48. Mr. Klug noted that “the only hardware that is necessary to connect a personal
computer to an ISDN interface is an ISDN adapter.” 8:41-44.
34
Later, the Patent describes the alternative of a connection occurring “over an analog
communications network via digital-to-analog/analog-to-digital converters” (essentially,
modems). This system called for the converter in the sending PC to convert digital signals to
analog ones, for the signals to be transmitted over the analog communications network, and for
the converter on the receiving PC to convert the analog signals back to digital ones. 11:55-60.
The Patent further contemplates that, when using an analog network, hardware or software that
performs data compression may be necessary to achieve sufficient data speeds and multiplexers
may be useful to reduce the number of individual telephone lines that connect to the host PC may
be desirable.
The Court rejects that portion of the Defendant’s proposed construction that limits the
digital version of an “interconnection means” to an ISDN network. Mr. Klug specifically noted
that future, non-ISDN digital networks were likely to arise, suggesting that reference to an ISDN
network was simply an example of a type of non-dedicated, high-speed digital communications
network that could support the invention. At the same time, the Court also rejects the several
aspects of the Plaintiff’s proposed construction. A construction that reaches “all hardware and
software . . . which enables host PC to connect to an analog and/or digital network” misconstrues
the Patent’s requirements when an analog network is present. This incorrectly limits the notion
of “interconnecting means” to those hardware and software structures used by the host PC when
the Patent makes clear that in embodiments involving analog networks, all PCs, host and remote,
must possess a converter for handling analog and digital signals. 5:18-19, 11:62-64. Moreover,
the Plaintiff’s proposed construction’s overbroad inclusion of “all hardware and software . . .
which enables the [ ] PC to connect to [a] network” and “any networks and/or communications
35
systems utilized” encompass far more than is described in the Patent. Thus, the Court rejects
both parties’ proposed constructions. Instead, the Court construes “interconnection means” to
refer to “either: (i) a non-dedicated, digital communications network capable of data speeds
equivalent to or faster than an ISDN, and hardware in each PC in the form of an adapter to
connect the PC to that network, or (ii) an analog communications network, hardware in each PC
in the form of a digital-to-analog/analog-to-digital converter, and, if needed to ensure data
transmission rates sufficient to allow for substantially simultaneous editing, data compression
software for each PC sufficient to achieve that rate.”
h. “voice communication means”
Claims 22, 23, 29, 32, and 33 all include various language requiring “voice
communication means . . . for transmitting audio signals” between users. The Plaintiff proposes
that the phrase “voice communication means” be construed to refer to “hardware and/or software
which enables a user of a PC to communicate orally with another user.” The Defendant proposes
that the phrase be construed to mean “telephones connected over a standard analog telephone
line or over the same line of the digital communications network as are the personal computers.”
The specification clearly contemplates that users will remain in voice contact through the
use of telephone technology, specifically, “telephone handsets.” 6:61, 9:18. The remainder of
the Patent describes only the type of telephone network involved: the preferred embodiment
describes the same “digital communications network” that carries data, 6:62-64, but “if the
digital communication network does not have both voice and data capabilities, the telephone
handsets can be linked via a traditional conference call over other lines, such as standard analog
telephone lines.” 9:26-30. Mr. Klug makes a single mention of “digital telephones,” 6:63, but
36
does not elaborate on the meaning of such a term, nor does the Plaintiff’s brief cite to evidence in
the record explaining how that term would be understand by persons in the art at the time of the
Patent.
The Court rejects the Plaintiff’s proposed construction, as nothing in the Patent describes
voice communication as being facilitated by “hardware or software.” The Patent clearly and
exclusively describes voice communication via telephone handsets. Thus, the Court finds that
the structures disclosed in the patent enabling the “voice communication means” are “telephone
handsets communicating over a digital communications network or analog telephone network.”
i. “coordinating”/”coordination”
Finally, the parties seek construction of the terms “coordinating” or “coordination” that
appear in various places throughout the claims. The parties agree that the words should be given
their common meaning, but disagree as to what that common meaning is.
The term “coordinating” is used principally in identifying the functions that the MPM
performs, namely “coordinating the execution” of file editing commands and “coordinating the
transfer of data” from the host PC to the remote PCs. The Plaintiff suggests that the term
“coordinating” commonly means “to put in the same order or rank, or to bring into a common
action, movement, or condition.” The Defendant suggests that the term means “bringing various
elements into a proper or required relation to ensure effective operation.”
The Court will not belabor the analysis on this point. The common meaning of the term
“coordinating,” in the context that it is used here, entails the acts of collecting multiple items of
information from various sources and applying analytical rules to them in order to organize them
into a unified whole. Thus, the task of “coordinating editing” entails collecting each remote
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user’s editing commands, applying analytical rules (such as “execute them in a first-in/first-out
sequence” or “suspend all command execution during spell checking”) to organize them,
resulting in a single, consolidated set of instructions for the host PC to carry out. “Coordinating
file transfers” entails, in the most complex embodiments, the host PC ascertaining each
individual user’s location in the file, applying analytical rules to determine what portion of the
edited file to return to that user, and compiling a single list of the file parts to be sent to each user
that can then be executed.
This definition is consistent with that found in the Oxford English Dictionary: to
“coordinate” means, in this context, “to place or arrange things in proper position relatively to
each other and to the system of which they form parts; to bring into proper combined order as
parts of a whole.” Thus, the Court adopts neither party’s proposed construction of the term
“coordinating,” instead using the construction that “coordinating” (and its cognates) means
“collecting disparate items of information and, applying analytical rules, organizing them into an
integrated whole.”
CONCLUSION
Accordingly, the Court construes the disputed terms as set forth herein.
Dated this 16th day of June, 2017.
BY THE COURT:
Marcia S. Krieger
Chief United States District Judge
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