International Business Machines Corporation v. Rakuten, Inc. et al

Filing 356

MEMORANDUM OPINION re claim construction. Signed by Judge Gregory B. Williams on 6/1/23. (ntl)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
INTERNATIONAL BUSINESS MACHINES
CORPORATION,
Plaintiff,
V.

Civil Action No. 21-461-GBW
RAKUTEN, INC., and EBATES
PERFORMANCE MARKETING, INC.
DBA RAKUTEN REW ARDS,
Defendants.

David Ellis Moore, Bindu Ann George Palapura, Andrew L. Brown, POTTER ANDERSON &
CORROON, LLP, Wilmington, Delaware; John M. Desmarais, Karim Z. Oussayef, Jonas R.
McDavit, Jordon N. Malz, Brian D. Matty, Edward Geist, Jun Tong, Eliyahu Balsam, Amy I.
Wann, William Vieth, William N. Yau, Benjamin Rodd, Michael Wueste, Lindsey E. Miller,
DESMARIS LLP, New York, New York; Michael Rhodes, Kyle Curry, DESMARIS LLP, San
Francisco, California
Counsel for Plaintiff

Benjamin J. Schladweiler, GREENBERG TRAURIG, LLP, Wilmington, Delaware; Joshua L.
Raskin, Allan A. Kassenoff, Julie P. Bookbinder, Jade Li-Yu Chen, Jonathan Presveli,
GREENBERG TRAURIG, LLP, New York, New York; Maja Sherman, GREENBERG
TRAURIG, LLP, Chicago, Illinois
Counsel for Defendants

MEMORANDUM OPINION

June 1, 2023
Wilmington, Delaware

GREGORYB. WILLIAMS
UNITED STATES DISTRICT JUDGE
Pending before the Court is the issue of claim construction of multiple terms in the
following patents: U.S. Patent Nos. 7,072,849 ("the ' 849 patent"), 6,697,861 ("the ' 861 patent"),
7,962,960 ("the ' 960 patent"), and 8,072,968 ("the ' 968 patent"). The '849 patent is asserted by
Plaintiff International Business Machines Corporation ("IBM" or "Plaintiff) and the ' 861, ' 960,
and ' 968 patents are asserted by Defendants Rakuten, Inc. and Ebates Performance Marketing, Inc.
dba Rakuten Rewards (collectively, "Rakuten" or "Defendants"). D.I. 237 at 1-4.
The Court has considered the parties' joint claim construction brief, the accompanying
appendix, and notice of subsequent authority. D.I. 237; D.I. 238; D.I. 291. The Court held a claim
construction hearing on April 4, 2023 ("Tr._").

I.

LEGAL STANDARDS
A. Claim Construction
'" [T]he claims of a patent define the invention to which the patentee is entitled the right to

exclude."' Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en bane) (citation
omitted); Aventis Pharms. Inc. v. Amino Chemicals Ltd , 715 F.3d 1363, 1373 (Fed. Cir. 2013)
(same). "[T]here is no magic formula or catechism for conducting claim construction." Phillips,
415 F.3d at 1324. The Court is free to attach the appropriate weight to appropriate sources "in
light of the statutes and policies that inform patent law." Id The ultimate question of the proper
construction of a patent is a question of law, although "subsidiary factfinding is sometimes
necessary." Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 326--27 (2015); see Markman

v. Westview Instruments, Inc. , 517 U.S. 370, 372 (1996) ("the construction of a patent .. . is
exclusively within the province of the court.").

1

"The words of a claim are generally given their ordinary and customary meaning as
understood by a person of ordinary skill in the art when read in the context of the specification and
prosecution history." Thorner v. Sony Comput. Entm 't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
2012) (citing Phillips, 415 F.3d at 1313); Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1358
(Fed. Cir. 2016) (similar). The "'only two exceptions to this general rule "' are (1) when a patentee
defines a term or (2) disavowal of '" the full scope of a claim term either in the specification or
during prosecution."' Thorner, 669 F.3d at 1365 (citation omitted).
The Court "' first look[s] to, and primarily rel[ies] on, the intrinsic evidence,"' which
includes the claims, written description, and prosecution history and '" is usually dispositive. "'

Personalized Media Commc 'ns, LLC v. Apple Inc., 952 F.3d 1336, 1340 (Fed. Cir. 2020) (citation
omitted). "[T]he specification ' . . . is the single best guide to the meaning of a disputed term. "'

Akzo Nobel Coatings, Inc. v. Dow Chem. Co., 811 F.3d 1334, 1340 (Fed. Cir. 2016) (citation
omitted). '" [T]he specification may reveal a special definition given to a claim term by the
patentee that differs from the meaning it would otherwise possess. ' When the patentee acts as its
own lexicographer, that definition governs." Cont '! Cirs. LLC v. Intel Corp., 915 F.3d 788, 796
(Fed. Cir. 2019) (quoting Phillips, 415 F.3d at 1316). However, '" [the Court] do[es] not read
limitations from the embodiments in the specification into the claims. "' Master Mine Software,

Inc. v. Microsoft Corp., 874 F.3d 1307, 1310 (Fed. Cir. 2017) (citation omitted)). The "written
description ... is not a substitute for, nor can it be used to rewrite, the chosen claim language."

SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
The Court "should also consider the patent's prosecution history, if it is in evidence."

Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995), ajf'd, 517 U.S. 370;
Cont '! Cirs., 915 F.3d at 796 (same). The prosecution history may '" demonstrat[e] how the

2

inventor understood the invention and whether the inventor limited the invention in the course of
prosecution . . . ." SpeedTrack, Inc. v. Amazon.com, 998 F.3d 1373, 1377 (Fed. Cir. 2021) (quoting
Phillips, 415 F.3d at 1317).

The Court may "need to look beyond the patent's intrinsic evidence and to consult extrinsic
evidence in order to understand, for example, the background science or the meaning of a term in
the relevant art during the relevant time period." Teva, 574 U.S. at 331. "Extrinsic evidence
consists of all evidence external to the patent and prosecution history, including expert and
inventor testimony, dictionaries, and learned treatises." Markman, 52 F.3d at 980; Phillips, 415
F.3d at 1317 (same). Extrinsic evidence may be useful, but it is "less significant than the intrinsic
record in determining the legally operative meaning of claim language." Cont'! Cirs. , 915 F.3d at
799 (internal quotation marks and citations omitted). However, "[p ]atent documents are written
for persons familiar with the relevant field ... . Thus resolution of any ambiguity arising from the
claims and specification may be aided by extrinsic evidence of usage and meaning of a term in the
context of the invention." Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1119 (Fed. Cir. 2002);
see Nautilus, Inc. v. Biosig Instruments, Inc. , 572 U.S. 898, 899 (2014) (explaining that patents are

addressed "to those skilled in the relevant art").

II.

AGREED-UPON TERMS
The parties agreed upon the construction of the following claim terms (D.I. 237 at 1-2):

A. The '849 Patent
Claim No.
1, 2, 3, 13,
14, 15, 16
1, 2, 3, 13,
14, 15, 16

Claim Term

A2reed-Upon Construction
data structure( s)

object(s)
advertising object(s)

objects that (1) contain display data to
be presented at screen partitions and (2)
whose subject matter is selected to
concern advertising

3

Claim No.
1, 4, 7, 8,
13, 14, 17,
20, 21
3, 4, 5, 6, 7,
8, 16, 17,
18, 19, 20,
21
1, 2, 8, 9,
12, 13, 14,
15, 21 , 25
1

13, 14

1, 13

14

1, 13, 14

Claim Term
application( s)

A2reed-Upon Construction
information events composed of a
sequence of one or more pages opened
at a screen
targeting criteria for users as defined by
interaction history with the service
and/or such other information as user
demographics and locale
two or more interconnected computers

characterization(s)

computer network I the network

structuring advertising in a manner
compatible to that of the
applications so that it may be
presented
structuring the advertising objects in
a manner compatible to that of the
applications so that it may be
presented
structuring applications so that they
may be presented .. . at a first
portion of one or more screens of
display
structuring applications so that a
user requested application may be
presented, through the network, at a
first portion of one or more screens
of display
at a second portion of one or more
screens of display concurrently with
applications

formatting advertising for potential use
with a plurality of applications

formatting the advertising objects for
potential use with a plurality of
applications
formatting applications so that they may
be presented ... at a first area of one or
more screens of display
formatting applications so that a user
requested application may be presented,
through the network, at a first area of
one or more screens of display
at a second area of one or more screens
of display concurrently with
applications

B. The '861 Patent

Claim No.
10

Claim Term
communication link

A2reed-Upon Construction
Plain and ordinary meaning

C. The '960 Patent
Claim No.
23

Claim Term
means for storing values associated
with each of a plurality of
vulnerabilities

4

A2reed-Upon Construction
Function: storing values associated
with each of a plurality of
vulnerabilities

Claim No.

Claim Tenn

A~reed-Upon Construction
Structure: a memory, storage device
and/or database, as described in 1:662:1, 4:7-12, 4:14-27, 4:42-57, 4:586:26, 6:48-53 , 7:29-30, 8:61-9:4, 9:2427, 9:37-40, 9:43-48, 10:25-31 , 12:2329, 13:21-24, and/or FIGS. 1, 2, 3, 5
and/or 6
and structural equivalents thereof.

23

means for outputting the adjusted
risk indicator

Function: outputting the adjusted risk
indicator
Structure: an output device such as a
display, a printer, or speakers
configured according to 2:34-52, 4:512, 4:32-37, 10:61-11 :12, 14:13-58
and/or FIGS. 1, 2, 4, 5 and/or 6
and structural equivalents thereof.

D. The '968 Patent
Claim No.
16

Claim Tenn
means for receiving a plurality of
application session setup requests
from a subscriber by the
communication network

A!!reed-Upon Construction
Function: receiving a plurality of
application session setup requests from
a subscriber by the communication
network
Structure: session controller SC 241
or SC 341 and structural equivalents
thereof.

The Court will adopt these agreed-upon constructions. 1

1

After the parties filed their Second Amended Joint Claim Construction Brief (D.I. 237), the
parties filed an Amended Joint Claim Construction Chart. D.I. 299, Ex. A. The Court also adopts
the parties' agreed-upon constructions in the Amended Joint Claim Construction Chart that were
not included in their Second Amended Joint Claim Construction Brief.
5

Ill

DISPUTED TERMS
A. "selectively storing advertising objects at a store established at the reception
system"

Disputed Term

selectively storing
advertising objects
at a store
established at the
reception system

Plaintiff IBM's
Construction
storing advertising
objects according to a
predetermined storage
criterion at a store
established at the
reception system

(the ' 84 9 patent,
claims 1, 13, 14)

Defendants
Rakuten's
Construction

The Court's
Construction

retrieving (i.e.,
prefetching)
advertising objects and
storing at a store
established at the
reception system in
anticipation of display
concurrently with the
applications

retrieving (i.e., prefetching) advertising
objects and storing at
a store established at
the reception system
in anticipation of
display concurrently
with the applications

Three courts have previously construed this exact claim term and their constructions are
nearly identical. See Int '! Bus. Machs. Corp. v. Priceline Grp. Inc., C.A. No. 15-137-LPS, 2016
WL 6405824, at *9-10 (D. Del. Oct. 28, 2016) ("Priceline Opinion"); Int '! Bus. Machs. Corp. v.

Groupon, Inc., C.A. No. 16-122-LPS, 2017 WL 3310688, at *4-5 (D . Del. Aug. 3, 2017)
("Groupon Opinion"); Chewy, Inc. v. Int '! Bus. Machs. Corp., 571 F. Supp. 3d 133, 141-43
(S.D.N.Y 2021) ("Chewy Opinion"). All three courts agreed that the advertising objects must be
pre-fetched. See id. In Priceline and Groupon, the court construed this claim term to mean "prefetching advertising objects and storing at a store established at the reception system in anticipation
of display concurrently with the applications." See Priceline Opinion at *9-10; Groupon Opinion
at *4-5. In Chewy, the court construed the term to mean "retrieving advertising objects and storing
at a store established at the reception system in anticipation of display concurrently with the
applications." Chewy Opinion at 143 . The Chewy court simply replaced the word "pre-fetched"
with "retrieving" because
juror[s] may not be familiar with using the term "fetch" or, relatedly, "pre-fetch,"
to describe retrieving objects in this context. More understandable is the word
6

"retrieving," which- in combination with the language from Chewy's construction
stating that the storing occurs in "anticipation of display concurrently with the
applications" - appropriately captures the meaning of the word "pre-fetching" but
in language more accessible to a jury.

Id. "IBM has not pointed to any intrinsic evidence not considered by the [other district courts] in
the [prior] action[s], nor does it present any persuasive arguments for its proposal." See Groupon
Opinion at *4.
Accordingly, the Court construes "selectively storing advertising objects at a store
established at the reception system" to mean "retrieving (i.e., pre-fetching) advertising objects and
storing at a store established at the reception system in anticipation of display concurrently with
the applications."

B. "structuring advertising so that it may be selectively supplied to and retrieved at
the reception systems for presentation"; "structuring advertising separately from
the applications so that the advertising may be selectively supplied, through the
network, to and retrieved at the reception systems for presentation" (collectively,
the "structuring advertising" terms)
Disputed Term

structuring
advertising so that
it may be
selectively
supplied to and
retrieved at the
reception systems
for presentation
(the ' 849 patent,
claim 8)
structuring
advertising
separately from the
applications so that
the advertising
may be selectively
supplied, through

Plaintiff IBM's
Construction
formatting advertising
so that it may be
selectively supplied to
and retrieved at the
reception systems for
presentation

formatting advertising
separately from the
applications so that the
advertising may be
selectively supplied,
through the network, to
and retrieved at the

Defendants
Rakuten's
Construction
formatting advertising
so that it may be
selectively supplied to
and retrieved (i.e.,
prefetched) at the
reception systems for
presentation

formatting advertising
separately from the
applications so that the
advertising may be
selectively supplied,
through the network,
to and retrieved (i.e. ,
7

The Court's
Construction
formatting
advertising so that it
may be selectively
supplied to and
retrieved (i.e., prefetched) at the
reception systems for
presentation

formatting
advertising separately
from the applications
so that the advertising
may be selectively
supplied, through the
network, to and

I'

Disputed Term

Plaintiff IBM's
Construction

the network, to and reception systems for
retrieved at the
presentation
reception systems
for presentation

Ii

Defendants
Rakuten's
Construction
prefetched) at the
reception systems for
presentation

The Court's
Construction
retrieved (i.e. , prefetched) at the
reception systems for
presentation

(the ' 849 patent,
claim 21)
The parties dispute whether the "structuring advertising" terms require the advertising to
be pre-fetched. D.I. 237 at 18-23 .
The courts in Priceline and Chewy found that the ' 849 patent "describes the ' invention' as
a whole as including ' pre-fetched' advertising as an improvement over the prior art, with such
advertising being displayed ' concurrently' with applications." Price line Opinion at * 10 (citations
omitted); see also Chewy Opinion at 141-42 ("the patent method was intended to speed up the
display of advertisements - an important advantage in the days of dial-up connections - by
' eliminat[ing] from the new page response time the time it takes to retrieve an advertising object
from the host system based on a user' s characteristics. This is accomplished by using the ... prefetching mechanism,' whereby the user' s system downloads and stores the advertising in advance,
before it is needed for viewing -

that is, it pre-fetches the advertising.") (quoting ' 849 patent at

34:21-44). The Court agrees with the Priceline and Chewy Opinions and finds that the ' 849 patent
requires retrieving advertising to mean pre-fetching the advertising. The specification states, "in
accordance with the method [of the ' 849 patent], the user reception system at which the advertising
is presented includes facility for storing and managing the advertising so that it can be pre-fetched
from the network and staged at the reception system in anticipation of being called for
presentation." ' 84 9 patent at 3: 16-21 .

8

IBM argues that "[d]ependent claims 9 and 22 confirm that ' retrieved' does not mean
'prefetched' because they- unlike independent claims 8 and 21- require that advertising be
'prefetched. " ' D.I. 237 at 18. Dependent claim 9 of the ' 849 patent recites:
The method of claim 8 wherein supplying advertising data to the reception system
includes pre-fetching advertising data from the network when the store of
advertising data falls below a predetermined level.
' 849 patent, claim 9.
Dependent claim 22 of the ' 849 patent recites:
The method of claim 21 wherein supplying advertising data to the reception system
includes pre-fetching advertising data from the network when the store of
advertising data falls below a predetermined level.
' 849 patent, claim 22.
The court in Chewy previously rejected a similar argument with respect to the "selectively
storing advertising objects at a store established at the reception system" term. The Court held:
IBM incorrectly assumes that mention of "pre-fetching" in [the] dependent claims
[] is to express a new limitation. However, when read in context, it is clear that each
claim is describing the use of "pre-fetching" under the specific circumstances
discussed in those claims. For example, claim 22 discusses pre-fetching "when the
store of advertising data falls below a predetermined level." Thus, the use of the
term "prefetching" in those terms does not demonstrate that the more general
concept of prefetching cannot also be encompassed by other claim terms, such as
"selectively storing." Indeed, as the Federal Circuit has noted, "[i]t is not unusual
that separate claims may define the invention using different terminology,
especially where (as here) independent claims are involved." Hormone Research
Found. v. Genentech, Inc., 904 F.2d 1558, 1567 n.15 (Fed. Cir. 1990).
Chewy Opinion at 142-43.
The Court agrees with the court' s reasoning in Chewy and finds the same reasoning applies
for the "structuring advertising" terms.
Accordingly, the Court construes "structuring advertising so that it may be selectively
supplied to and retrieved at the reception systems for presentation" to mean "formatting advertising

9

so that it may be selectively supplied to and retrieved (i.e., pre-fetched) at the reception systems
for presentation" and "structuring advertising separately from the applications so that the
advertising may be selectively supplied, through the network, to and retrieved at the reception
systems for presentation" to mean "formatting advertising separately from the applications so that
the advertising may be selectively supplied, through the network, to and retrieved (i.e., prefetched) at the reception systems for presentation."
C. "extranet"; "extranet subscribers"
Disputed Term

extranet
(' 861 patent,
claims 1-13)

extranet
subscribers

Plaintiff IBM's
Construction

a private internet that
allows communications
and application sharing
between a plurality of
designated, non-related
organizations2

entities with access to
the extranet that are not
related to each other

Defendants
Rakuten's
Construction
generally closed
networks that allow
communications
between designated
parties

plain and ordinary
meaning

The Court's
Construction

extranets are private
internets that allow
communications
and application
sharing between
designated, nonrelated organizations.
Extranets are
generally closed
networks that allow
communication
between designated
parties.
plain and ordinary
meaning

(' 861 patent, claim
10)

2

IBM provides two alternative constructions in its brief: ( 1) a generally closed private internet that
allows communications and application sharing between a plurality of designated, non-related
organizations (D.I. 237 at 24) and (2) a private internet that allows communications and application
sharing between a plurality of different organizations (id. at 31 ).
10

The parties agree that an "extranet" "allows communications between designated parties"
and that it is a "generally closed network," but dispute whether extranet must be between nonrelated organizations. D.I. 237 at 23-25, 27.
The Court must determine whether the patentee acted as his or her own lexicographer here.
There are times when "the specification may reveal a special definition given to a claim term by
the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor' s
lexicography governs." Phillips, 415 F. 3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp.,
288 F.3d 1359, 1366 (Fed. Cir. 2002)). The standard for finding lexicography is "exacting." GE

Lighting Sols., LLC v. AgiLight, Inc. , 750 F.3d 1304, 1309 (Fed. Cir. 2014).
Here, the patentee has done just that. The specification discloses:
Other networks, often referred to as "extranets" or private internets allow
communications and application sharing between designated, non-related
organizations. Extranets are generally closed networks that allow communications
between designated parties.
' 861 patent at 1:30-32 (emphasis added). The specification uses the word "are" after the disputed
term "extranets," which may "signify that a patentee is serving as its own lexicographer." Cf

Abbott Lab y s v. Andrx Pharms. , Inc., 473 F.3d 1196, 1210 (Fed. Cir. 2007) ("The word ' is ' may
signify that a patentee is serving as its own lexicographer."). This sentence is clearly lexicography
and, as such, the patentee' s lexicography governs. Phillips, 415 F.3d at 1316. IBM' s proposed
construction improperly narrows the claim term to only "non-related organizations." The
specification states, " [i]t is . .. desirable to provide an extranet architecture coupled to a wide
diversity of applications that may be shared by non-related organizations while eliminating the
need for any one organization to maintain the available applications." ' 861 patent at 2:14-16. The
specification states that this outcome is "desirable," not required, and that it "may be shared by

11

non-related organizations." Id. (emphasis added). Nothing in the intrinsic record suggests that the
extranet architecture requires applications to be shared by non-related organizations.
During the Markman hearing, the parties agreed to the Court adding the following sentence
to the Court's construction of extranet, "extranets are private intemets that allow communications
and application sharing between designated, non-related organizations." Tr. at 50:22-51 :4, 53: 1015. Accordingly, the Court construes "extranet" to mean "extranets are private intemets that allow
communications and application sharing between designated, non-related organizations. Extranets
are generally closed networks that allow communication between designated parties."
As to the term "extranet subscriber," the Court agrees with Rakuten that it need not construe
this term because "a lay juror will understand what a ' subscriber' is and the term ' extranet' is being
separately construed." D.I. 237 at 30. Thus, the Court construes "extranet subscribers" to have its
plain and ordinary meaning, which is the default in claim construction. Phillips, 415 F.3d at 13 16.

D. "workgroup application"; "transaction application"; "transport application";
"workflow software application(s)"; "transaction software application(s)"
(collectively, the "application terms")
Disputed Term

workgroup
application

Plaintiff IBM's
Construction

Defendants
Rakuten's
Construction
Plain and ordinary
mearung, 1.e., an
application for
collaborating in a
workgroup

Plain and ordinary
mearung, 1.e., an
application for
collaborating in a
workgroup

Indefinite

Plain and ordinary
meaning, i.e. , an
application for
entering or sending
transactions

Plain and ordinary
mearung, 1.e., an
application for
entering or sending
transactions

Indefinite

Plain and ordinary
meaning, i.e. , an

Plain and ordinary
mearung, 1.e., an

Indefinite

(' 861 patent, claim
6)
transaction
application
(' 861 patent, claim
6)
transport
application

12

The Court's
Construction

Disputed Term
i:

Plaintiff IBM's
Construction

Defendants
Rakuten's
Construction
application relating to
data transport

application relating to
data transport

Indefinite

Plain and ordinary
mearung, 1.e., an
application for
managing workflows

Plain and ordinary
meaning, i.e., an
application for
managing workflows

Indefinite

Plain and ordinary
mearnng, 1.e., an
application for
entering or sending
transactions

Plain and ordinary
meaning, i.e. , an
application for
entering or sending
transactions

(' 861 patent, claim
6)
workflow software
application( s)
(' 861 patent, claim
10)
transaction
software
application( s)
(' 861 patent, claim
10)

The Court's
Construction

The parties dispute whether the application terms are indefinite. IBM argues that the
application terms are indefinite because "the ' 861 patent provides little guidance or description of
what these applications are or do." D.I. 237 at 36. Rakuten disagrees and contends the application
terms would be readily understood by a person of ordinary skill in the art ("POSA"). Id. at 37.
Section 112 of the Patent Act requires that the claims of a patent "particularly point[] out
and distinctly claim[] the subject matter which the inventor . . . regards as the invention." 35
U.S.C. § 112(b). The "primary purpose of the definiteness requirement" that§ 112(b) contains "is
to ensure that the claims are written in such a way that they give notice to the public of the extent
of the legal protection afforded by the patent, so that interested members of the public, e.g. ,
competitors of the patent owner, can determine whether or not they infringe." All Dental Prodx,

LLC v. Advantage Dental Prods. , Inc., 309 F.3d 774, 779-80 (Fed. Cir. 2002) (citation omitted).
" [A] patent is invalid for indefiniteness if its claims, read in light of the specification
delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those
skilled in the art about the scope of the invention." Nautilus, 572 U.S. at 901. While a " ' potential
13

infringer"' need not "'be able to determine ex ante if a particular act infringes the claims,"' the
patentee must "apprise the public 'of what is still open to them[]"' such that "a person of ordinary
skill in the art could determine whether or not an accused product or method infringes the claim."

Niazi Licensing Corp. v. St. Jude Med. S.C., Inc. , 30 F.4th 1339, 1346-47 (Fed. Cir. 2022)(citations
omitted).
Like claim construction, definiteness is a question of law, but the Court must sometimes
render factual findings based on extrinsic evidence to resolve the ultimate issue of definiteness.

See Sonix Tech. Co. v. Publications Int '!, Ltd. , 844 F.3d 1370, 1376 (Fed. Cir. 2017). The
challenger must prove indefiniteness by clear and convincing evidence. BASF Corp. v. Johnson

Matthey Inc., 875 F.3d 1360, 1365 (Fed. Cir. 2017).
The application terms, when read in light of the specification and the prosecution history,
informs with reasonable certainty, those skilled in the art, about the scope of the invention. The
specification of the '861 patent states that the various applications depicted in Figure 2 "are
commercially available products which may be used in the present invention." ' 861 patent at 5:4952.

14

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FIG. 2

The specification explains that the "collaboration suit application" includes "project
management, discussion groups, work flow engine, document and image library and bulletin board
applications," which are all examples of workflow and workgroup related applications. ' 861
patent at Fig 2, 4: 14-16.

The "electronic data interchange (EDI)" or transaction related

applications "enable low-volume EDI users to enter transactions into a Web page or enable
medium volume users to send transactions by secure EDI-MIME type e-mail." Id at Fig. 2, 4: 1720. The Abstract also states, "[t]he server stores a plurality of applications including workgroup
applicants, transaction applications, security applications and transport circuits and equipment."

Id at Abstract.
That the application terms are not indefinite is further supported by statements made by the
examiner during the prosecution of the ' 861 patent. The examiner wrote, '" [o]fficial notice ' is
taken that both the concept and advantages of providing shared applications software (e.g.,
15

work:flow software, transaction software, security software, electronic mail software, etc .. [.] ) on
the extranet is well known and expected in the art[.]" D.I. 149, Ex. D-2 at 24-25. The examiner
also wrote:
As such, at the heart of every extranet are well known as well as expected
applications software that are specifically designed to increase the productivity of
and enrich the collaboration between extranet parties. It would have been obvious
to one skilled in the art at the time of the invention to store in one or more of the
servers in Page' s system any type of applications software, e.g. collaboration
software (such as workgroup software), work:flow software, transaction software,
security software, electronic mail software, electronic data interchange software,
office productivity software, as well as any other new applications software that is
specifically designed to be shared between customers, for Page' s broker to make it
available over the extranet to be used by the subscribers. These applications
software would empower the extranet environment and facilitate the sharing
between the collaborating parties.

Id. at 25 .
For the reasons stated above, IBM has not carried its burden of demonstrating, by clear and
convincing evidence, that the application terms are indefinite. Accordingly, the Court construes
"workgroup application" to have its "plain and ordinary meaning, i.e., an application for
collaborating in a workgroup," "transaction application" to have its "plain and ordinary meaning,
i.e., an application for entering or sending transactions," "transport application" to have its "plain
and ordinary meaning, i.e., an application relating to data transport," "work:flow software
application(s)" to have its "plain and ordinary meaning, i.e., an application for managing
work:flows," and "transaction software application(s)" to have its "plain and ordinary meaning,
i.e., an application for entering or sending transactions."
E. Means-Plus-Function Claim Terms
Disputed Term

Plaintiff IBM's
Construction

means for
Indefinite
scanrung a
network element to

Defendants
Rakuten's
Construction
Function: scanning a
network element to
identify vulnerabilities

16

The Court's
Construction
Function: scanning a
network element to

identify
vulnerabilities

Structure: a scanner
or scanning device
configured according
to 2:34-42, 3:18-31 ,
3:40-48, 9:19-27,
9:41-43, 12:47-60,
14: 13-21 , and/or
FIGS. 1, 5 and/or 6,
and structural
equivalents thereof.

('960 patent, claim
23)

means for
identifying at least
one of the plurality
of vulnerabilities
associated with the
network element
based on output
from the means
for scanning

Indefinite

(' 960 patent, claim
23)

means for
generating a risk
indicator for the
network element
based on the stored
value associated
with the at least
one identified

Indefinite

identify
vulnerabilities

Structure: a scanner
or scanning device
configured according
to 2:34-42, 3:18-31 ,
3:40-48, 9:19-27,
9:41-43 , 12:47-60,
14:13-21, and/or
FIGS. 1, 5 and/or 6,
and structural
equivalents thereof.
Function: identifying Function: identifying
at least one of the
at least one of the
plurality of
plurality of
vulnerabilities
vulnerabilities
associated with the
associated with the
network element based network element
on output from the
based on output from
means for scanning
the means for
scannmg
Structure: a network
monitoring system
Structure: a network
configured according
monitoring system
to 2:34-42; 3:32-48,
configured according
4:2-12, 4:42-57, 4:62- to 2:34-42; 3 :32-48,
65, 5:23-30, 7:594:2-12, 4:42-57,
8:13, 12:47-60, 14:13- 4:62-65, 5:23-30,
21 , 14:47-58 and/or
7:59-8:13 , 12:47-60,
FIGS. 1, 2, 5 and/or 6, 14:13-21, 14:47-58
and structural
and/or FIGS. 1, 2, 5
equivalents thereof.
and/or 6, and
structural equivalents
thereof.
Function: generating
Function: generating
a risk indicator for the a risk indicator for
network element based the network element
on the stored value
based on the stored
associated with the at
value associated with
least one identified
the at least one
vulnerability
identified
vulnerability

17

Structure: a network
monitoring system
configured according
to 2:4-8, 2:34-42,
3:32-48, 4:5-1 2, 4:4257, 5:43-57, 7:598: 13, 8:14-9:50,
10:19-60, 12:32-13:6,
14:22-64 and/or FIGS.
1, 2, 5 and/or 6, and
structural equivalents
thereof.

vulnerability
(' 960 patent, claim
23 )

means for
adjusting the risk
indicator

Indefinite

(' 960 patent, claim
23)

Function: adjusting
the risk indicator

Structure: a network
monitoring system
configured according
to 2:4-8, 2:34-42,
3:32-48, 4:5-12,
4:42-57, 5:43-57,
7:59-8 :13, 8:14-9:50,
10:19-60, 12:32-13 :6,
14:22-64 and/or
FIGS. 1, 2, 5 and/or
6, and structural
equivalents thereof.
Function: adjusting
the risk indicator

Structure: a network
monitoring system
configured according
to 2:34-42, 3:32-48,
4:42-65, 5:58-6:16,
7:59-8:13, 9:50-10:60,
12:20-31, 12:47-60,
13 :2 1-26, 14:13-64
and/or FIGS. 1, 2, 5
and/or 6, and
structural equivalents
thereof.

Structure: a network
monitoring system
configured according
to 2:34-42, 3:32-48,
4:42-65, 5:58-6:16,
7:59-8 :13, 9:5010:60, 12:20-31,
12:47-60, 13:2 1-26,
14:13-64 and/or
FIGS. 1, 2, 5 and/or
6, and structural
equivalents thereof.

The crux of the parties' dispute is whether the ' 960 patent "disclose[s] a definite structure
or algorithm for carrying out those claimed functions." D.I. 23 7 at 42.
The Patent Act provides that
[a]n element in a claim for a combination may be expressed as a means or step for
performing a specified function without the recital of structure, material, or acts in
support thereof, and such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification and equivalents thereof.
35 U.S.C. § 112(f); 35 U.S.C. § 11 2 ,r 6 (2006) (same).

18

Such "[a] means-plus-function limitation recites a function to be performed rather than
definite structure or materials for performing that function. " Lockheed Martin Corp. v. Space

Sys./Loral, Inc., 324 F.3d 1308, 1318 (Fed. Cir. 2003) (citation omitted). "The duty of a patentee
to clearly link or associate structure with the claimed function is the quid pro quo for allowing the
patentee to express the claim in terms of function under section 112 .. .. " Med. Instrumentation

& Diagnostics Corp. v. Elekta AB, 344 F.3d 1205 , 1211 (Fed. Cir. 2003) (citation omitted); see
Twin Peaks Software Inc. v. IBM Corp., 690 F. App'x 656, 660 (Fed. Cir. 2017) (citing Med.
Instrumentation & Diagnostics, 344 F.3d at 12 11 ).
"Construction of a means-plus-function limitation includes two steps. ' First, the court must
determine the claimed function. Second, the court must identify the corresponding structure in the
written description of the patent that performs the function. "' Noah Sys. , Inc. v. Intuit Inc., 675
F.3d 1302, 1311 (Fed. Cir. 2012) (citation omitted); Via Vadis, LLC v. Blizzard Ent., Inc., 815 F.
App 'x 539, 545 (Fed. Cir. 2020) (same).
Structure disclosed in the specification qualifies as "corresponding structure" if the
intrinsic evidence clearly links or associates that structure to the function recited in
the claim. Even if the specification discloses corresponding structure, the
disclosure must be of "adequate" corresponding structure to achieve the claimed
function. . . . [I]f a person of ordinary skill in the art would be unable to recognize
the structure in the specification and associate it with the corresponding function in
the claim, a means-plus-function clause is indefinite.

Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1352 (Fed. Cir. 2015) (citations omitted); see
also Rain Computing, Inc. v. Samsung Elecs. Am. , Inc., 989 F.3d 1002, 1007 (Fed. Cir. 2021)
('" [S]tructure disclosed in the specification is corresponding structure only if the specification or
prosecution history clearly links or associates that structure to the function recited in the claim. "'
(citation omitted)). " [I]f a person of ordinary skill in the art would be unable to recognize the

19

structure in the specification and associate it with the corresponding function in the claim, a meansplus-function clause is indefinite." Williamson, 792 F.3d at 1352 (citations omitted).
The parties agree these terms are means-plus-function terms but dispute whether the ' 960
patent specification discloses a corresponding structure. The means-plus-function terms come
from claim 23 of the ' 960 patent, which reads:
A system comprising:
means for storing values associated with each of a plurality of vulnerabilities;
means for scanning a network element to identify vulnerabilities, the vulnerabilities
representing potential points of attack;
means for identifying at least one of the plurality of vulnerabilities associated with the
network element based on output from the means for scanning;
means for generating a risk indicator for the network element based on the stored value
associated with the at least one identified vulnerability; means for adjusting the risk
indicator, subsequent to generating the risk indicator, based on exceptions to security
rules stored in the system; and
means for outputting the adjusted risk indicator.
' 960 patent, claim 23.
For the reasons stated below, the Court finds that IBM has failed to put forth clear and
convincing evidence that the means-plus-function terms are indefinite.

a. "means for scanning a network element to identify vulnerabilities"
Rakuten proposes the structure of this claim term to be "a scanner or scanning device
configured according to 2:34-42, 3:18-31 , 3:40-48, 9:19-27, 9:41-43 , 12:47-60, 14:13-21 , and/or
FIGS . 1, 5 and/or 6, and structural equivalents thereof." The crux of the dispute is whether "a
scanner or scanning device" is a generic "black box[]" without any definite structure. D.I. 237 at
48-49, 50. The Court turns to the ' 960 patent specification to resolve this dispute.

20

The '960 patent includes the following figure which "is a block diagram of an exemplary
system 100" and includes a "scanner 130":
100.
SCANNER
130

NETWORK
MONITORING
SYSTEM
150

t----◄

INTRUSION
DETECTION
SYSTEM
140

112
122
..,, .. •···•..L .•...___ _

1----f....
\

,,

USER
DEVICE

USER
DEVICE

110

120

I

ROUTER

................

122.1

I ,,\

_______....-·. •''

/

'960 patent at Fig. 1, 2:34-38.
The "scanner 13 0" "may include one or more scanners used to detect anomalies in network
devices" or "may include a device that scans a server for open ports that may be infiltrated by a
hacker." Id at 3:18-21. The "scanner 130" may send data to the "network monitoring system
150" to "facilitate the identification of potential vulnerabilities in system 100[.]" Id. at 3:40-43 .
Thus, a POSA reading the specification of the ' 960 patent would understand that the scanner or
scanning device, such as scanner 130, is a "network scanner." See also D.I. 238, Ex.40176.
Rakuten's expert3 also opined that the ' 960 patent's disclosure of a "scanner" or "scanning
device" "is a well-known term of art which describes a well-known class of applications and
devices for identifying vulnerabilities on a network at the time of the invention." Id. The Federal

3

IBM did not provide or attach any expert declarations to its claim construction brief to support
its arguments. See generally D.I. 237.
21

Circuit has held such identification of distinct or discrete classes of structures was sufficient. See,

e.g., Vistan Corp. v. Fadei USA, Inc., 547 F. App'x 986, 990, 992 (Fed. Cir. 2013) (holding
'"mechanical linear actuator' is sufficiently definite structure for the purpose of section 112"
because "a person of ordinary skill in the art would understand mechanical linear actuators to be a
distinct and identifiable class of actuators"); Linear Tech. Corp. v. Impala Linear Corp. , 379 F .3d
1311, 1322 (Fed. Cir. 2004) ("Although the expression ' PWM circuit' does not reference a specific
circuit structure, persons of skill in the art would understand that ' PWM circuit' references a
discrete class of circuit structures that perform known functions. That the disputed term is not
limited to a single structure does not disqualify it as a corresponding structure, as long as the class
of structures is identifiable by a person of ordinary skill in the art."). 4 In fact, Rakuten' s expert
identified two common network scanners that were used at the time of the '960 patent: (1) "Nmap"
and (2) "Nessus." D.I. 238, Ex.40179.
Accordingly, the Court concludes that a "scanner" or "scanning device" provides
"sufficient description of structure that ' one skilled in the art will know and understand what
structure corresponds' to the claim limitations" and IBM has failed to show, by clear and
convincing evidence, that this means-plus-function term is indefinite. Vistan, 547 F. App 'x at 989.

4

IBM argues that the "supposed existence in the art of a ' class' of structures for scanning ... only
highlights the patent's deficiencies in failing to identify the specifically claimed structures in the
specification." D.I. 237 at 49 n.25 (emphases in original). IBM cites to the Federal Circuit cases
Synchronoss and Fiber for the proposition that the specification must adequately disclose
corresponding structure and "[e]xpert testimony cannot create structure where none is adequately
disclosed in the specification." Fiber, LLC v. Ciena Corp., 792 F. App'x 789, 796 (Fed. Cir. 2019)
(citation omitted); Synchronoss Techs., Inc. v. Dropbox, Inc. , 987 F.3d 1358, 1367 (Fed. Cir.
2021 ). That is not the case here. As explained above, the Court finds that the means-plus-function
claim term "correspond[s] to 'adequate' structure in the specification" and Rakuten is not relying
on its expert to "create structure where none is adequately disclosed in the specification."
Synchronoss, 987 F.3d at 1367 (first quote); Fiber, 792 F. App'x at 796 (second quote).
22

b. "means for identifying at least one of the plurality of vulnerabilities associated with
the network element based on output from the means for scanning"
Rakuten proposes the structure of this claim term to be "a network monitoring system
configured according to 2:34-42; 3:32-48, 4:2-1 2, 4:42-57, 4:62-65, 5:23-30, 7:59-8:13, 12:47-60,
14:13-21 , 14:47-58 and/or FIGS . 1, 2, 5 and/or 6, and structural equivalents thereof. " IBM argues
that Rakuten points to "a network monitoring system" without identifying an algorithm that
provides "a step-by-step procedure for accomplishing a given result," i.e., identifying at least one
of the plurality of vulnerabilities associated with the network element based on output from the
means for scanning. D.I. 237 at 49 (quoting Alfred E. Mann Found. for Sci. Rsch. v. Cochlear
Corp., 841 F.3d 1334, 1342 (Fed. Cir. 2016)). The Federal Circuit, however, has held that "the

specification must ' disclose an algorithm for performing the claimed function"' "'in any
understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any
other manner that provides sufficient structure. "' Intelligent Automation Design, LLC v. Zimmer
BiometCMF& Thoracic, LLC, 799 F. App'x 847, 851 (Fed. Cir. 2020) (citations omitted). "[T]he

specification need only disclose enough to 'permit one of ordinary skill in the art to ... perceive the
bounds of the invention."' Id. at 852 (quoting Finisar Corp. v. DirecTV Grp. , Inc., 523 F.3d 1323,
1340-41 (Fed. Cir. 2008)).
IBM is correct that the specification of the ' 960 patent fails to disclose an algorithm. D.I.
237 at 50; see also ' 960 patent at 14:53-58 ("the operation and behavior of the aspects of the
invention were described without reference to the specific software code-it being understood that
one of ordinary skill in the art would be able to design software and control hardware to implement
the aspects based on the description herein."). But, the specification discloses enough to permit
one of ordinary skill in the art to understand the bounds of the invention. For example, the
"network monitoring system 150" uses the scanning results to assess vulnerabilities, such as
23

open ports within a network element (e.g., ports that can be seen from outside a
company's internal network and through which access can be gained by an outside
device), network elements that interface with non-secured devices, network
elements that have not been scanned to identify potential open ports, network
elements that have no intrusion detection system, firewall, or other protection
systems installed, etc.
'960 patent at 7:63-8:9.
Accordingly, a POSA would understand that the ' 960 patent specification discloses a
"network monitoring system," such as the "network monitoring system 150," with sufficient
structure to perform the claimed function of "identifying at least one of the plurality of
vulnerabilities associated with the network element based on output from the means for scanning."
Rakuten' s expert also opined that a POSA "would understand that a 'network monitoring system'
is a well-known term of art which describes a well-known class of applications and devices which
identify network vulnerabilities based on the output of a network scanner at the time of the
invention." D.I. 238, Ex.40190. Rakuten's expert provided an example of a network monitoring
system that was used at the time of the '960 patent-NagMIN. Id 191.
Accordingly, because a POSA would be able to recognize the structure in the specification
and associate it with the corresponding function in the claim, the means-plus-function term "means
for identifying at least one of the plurality of vulnerabilities associated with the network element
based on output from the means for scanning" is not indefinite.

c. "means for generating a risk indicator for the network element based on the stored
value associated with the at least one identified vulnerability"
Rakuten proposes the structure of this claim term to be "a network monitoring system
configured according to 2:4-8, 2:34-42, 3:32-48, 4:5-12, 4:42-57, 5:43-57, 7:59-8:13, 8:14-9:50,
10:19-60, 12:32-13:6, 14:22-64 and/or FIGS. 1, 2, 5 and/or 6, and structural equivalents thereof. "
Like the previous means-plus-function term, IBM argues that the specification fails to identify an

24

algorithm for the "network monitoring system" that provides a step-by-step procedure for
accomplishing a given result, i.e. , generating a risk indicator for the network element based on the
stored value associated with the at least one identified vulnerability. The Court finds, however,
that the '960 patent specification provides sufficient structure for this recited function.
The specification discloses that the stored values may be assigned different numerical
values based on various factors, such as "the likelihood that the vulnerability can be exploited,"
the severity of the vulnerability, "the location of the particular network element," whether a
network element is on a "Do Not Scan" list, or whether there has been "changes in the
configuration of the company ' s network." '960 patent at 8:9-9:4. "After a value has been assigned
to each potential vulnerability associated with network elements in system 100, network
monitoring system 150 may store this information in, for example, policy monitoring tools
database 340. This information may then be used to generate a score or grade for each network
element when a party requests information for this network element." Id. at 8 :61-67.
The specification also discloses various methods to generate a risk score based on the
stored values and identified vulnerabilities. " [T]he values associated with each of the identified
vulnerabilities" "may be added to generate an overall score." Id. at 10:31-34. A grade or pass/fail
determination may be generated:
For example, in this implementation, each network element may be originally
assigned a value of 100. Each identified vulnerability may then reduce the value for
that network element. For example, if a network element has an open port, 0.5 may
be subtracted from the 100. If the open port is a high vulnerability port, a value of
5 may be subtracted. Further, if a network element is on a Do Not Scan list, a value
of 30 may be subtracted. The total score for each element may then be determined
and a grade (e.g., a letter grade, such as A through for a pass/fail grade) may be
generated for each network element.
Id. at 10:43-53.

25

In fact, Rak:uten's expert opined that a POSA "would understand that the '960 patent

specification discloses sufficient structure (e.g., a network monitoring system such as network
monitoring system 150) for performing the claimed function, ' generating a risk indicator for the
network element based on the stored value associated with the at least one identified
vulnerability. "' D.I. 238, Ex. 40 ,r 100.
Accordingly, because a POSA would be able to recognize the structure in the specification
and associate it with the corresponding function in the claim, the means-plus-function term "means
for generating a risk indicator for the network element based on the stored value associated with
the at least one identified vulnerability" is not indefinite.
d. "means for adjusting the risk indicator"
Rakuten proposes the structure of this claim term to be "a network monitoring system
configured according to 2:34-42, 3:32-48, 4:42-65, 5:58-6:16, 7:59-8:13 , 9:50-10:60, 12:20-3 1,
12:47-60, 13:21-26, 14:13-64 and/or FIGS. 1, 2, 5 and/or 6, and structural equivalents thereof."
Again, IBM argues that the specification fails to identify an algorithm for the "network monitoring
system" that provides a step-by-step procedure for accomplishing a given result, i.e., adjusting the
risk indicator. The Court finds that the ' 960 patent specification provides sufficient structure for
this recited function.
Claim 23 of the ' 960 patent recites that the "means for adjusting the risk indicator" adjusts
the risk indicator "subsequent to generating the risk indicator" and "based on exceptions to security
rules stored in the system." ' 960 patent, claim 23. The specification provides further details
regarding how the score or grade may be adjusted based on business exceptions, such as
authorizing a party to use a program that "is not generally approved," or technical exceptions, such

26

as a "meaningless or erroneous" scan. Id. at 9:50-10:24. The specification provides examples of
how the score or grade may be adjusted based on those exceptions:
For example, if a scan shows that a program is being run on server 112-1 , such as
a program that is not generally approved for server 112-1 , network monitoring
system 150 may determine whether an exception has been granted for that program
to be run on server 112-1 . If an exception has been granted, network monitoring
system 150 may reduce the score associated with this network element. In addition,
network monitoring system 150 may check the exception information in policy
monitoring tools database 340 to determine whether any other exceptions
associated with, for example, other anomalies in the type/amount of data that server
112-1 is receiving to determine whether the anomaly is covered by an exception
that has been approved for that network element. The exception, therefore, may
account for the anomaly. In an exemplary implementation, if an exception has been
approved for a particular network element, the score for that particular network
element may be reduced by some value, such as 50.
As described above, another example of exception information may involve a
technical exception. For example, assume that scanner 130 runs a scan on one of
nodes 112-2 and the resulting scan data is meaningless or erroneous. Network
monitoring system 150 may check policy monitoring tools database 340 to
determine whether a business exception has been approved for node 112-2, such as
information indicating that node 11 2-2 is using an operating system that is not
compatible with scanner 130. If such an exception has been granted, network
monitoring system 150 may reduce the score for node 112-2 by a predetermined
amount, such as, for example, 50.

Id. at 9:56-10:18.
Accordingly, because a POSA would be able to recognize the structure in the specification
and associate it with the corresponding function in the claim, the means-plus-function term "means
for adjusting the risk indicator" is not indefinite. 5

5

IBM also argues that "Rakuten' s contention that the same ' network monitoring system' [recited
as a structure for three out of the four means-plus-function terms] with overlapping support
performs multiple disparate function is improper." D.I. 237 at 42-43 (citing Noah Sys., 675 F. 3d
at 1314). But, "an algorithm can support more than one function. " Ironworks Pats. LLC v.
Samsung Elecs. Co., 798 F. App' x 621, 628 (Fed. Cir. 2020). In Noah , the Federal Circuit held
that if there are two functions recited, then that algorithm must "address both aspects of this
functional language." Noah Sys. , 675 F.3d at 13 14. As described above, the Court finds that the
"network monitoring system" as disclosed in the ' 960 patent specification addresses all three
27

For the reasons stated above, IBM has not carried its burden of demonstrating, by clear and
convincing evidence, that the four means-plus-function terms are indefinite. Accordingly, the
Court adopts Rakuten' s proposed construction for each means-plus function term.
F. "plurality of application sessions"
Disputed Term

plurality of
application
sess10ns

Plaintiff IBM's
Construction
two or more
independent and
unrelated application
sess10ns

The Court's
Construction

Defendants
Rakuten's
Construction
plain and ordinary
meanmg

plain and ordinary
meaning, which
means multiple
application sessions
in a communication
network

(the '968 patent,
claims 1, 11)6

The parties dispute whether Rakuten' s statements in its Patent Owner Preliminary
Response in inter partes review ("IPR") No. IPR2022-00890, which relates to the '968 patent,
amount to clear and unmistakable disavowal. See D.I. 237 at 52-57.
Prosecution

disclaimer "preclud[ es]

patentees

from

recapturing through

claim

interpretation specific meanings disclaimed during prosecution." Omega Eng 'g, Inc. v. Raytek

Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). " [F]or prosecution disclaimer to attach, our precedent
requires that the alleged disavowing actions or statements made during prosecution be both clear
and unmistakable." Id. at 1325-26. The Federal Circuit has held that the doctrine of prosecution
disclaimer equally applies in IPR proceedings. See Aylus Networks, Inc. v. Apple Inc., 856 F.3d

functions, i.e., "identifying ... ,""generating . . . ," and "adjusting . . .. " See supra Section III.E.bd.
6

The parties noted in their Joint Claim Construction Brief that Rakuten adopts IBM' s construction
for the term "means for receiving a plurality of application session setup requests from a subscriber
by the communication network," which is found in claim 16 of the ' 968 patent. D.I. 237 at 52
n.27.
28

1353, 1360 (Fed. Cir. 2017) ("Extending the prosecution disclaimer doctrine to IPR proceedings
will ensure that claims are not argued one way in order to maintain their patentability and in a
different way against accused infringers.").
IBM argues that Rakuten repeatedly made statements in its Patent Owner Preliminary
Response in IPR No. IPR2022-00890 that "plurality of application sessions" refers to two or more
independent and unrelated application sessions. D.I. 237 at 52. Thus, according to IBM, Rakuten
has clearly and unmistakably disclaimed a "plurality of application sessions" that are dependent
or related. Id. at 52-54, 56. Rakuten disagrees and argues that IBM "misleadingly quotes"
Rakuten' s Patent Owner Preliminary Response. Id. at 56; see also id. at 54-55.
The Court finds that none of Rakuten' s statements in its Patent Owner Preliminary
Response (D.I. 238, Ex. 5) amount to clear and unmistakable disavowal of the "plurality of
application sessions" claim term. See Omega, 334 F.3d at 1325-26; Ay lus, 856 F.3d at 1360. First,
in the section titled "Claim Construction and POSA Definition," Rakuten states:
As it relates to the plain and ordinary meaning of "a plurality of application sessions
in a communication network," Patentee notes the language is clear and purposeful.
First, a plurality of application sessions is required, i.e., multiple application
sessions. Second, ~ communication network is required, i.e., one communication
network.
D.I. 238, Ex. 5 at 12 (emphases in original).
Thus, Rakuten construed "a plurality of application sessions in a communication network"
to have its plain and ordinary meaning, which means "multiple application sessions in a
communication network," not "two or more" application sessions or unrelated application
sessions. See id.
Next, the Court looks at the statements Rakuten made in its Patent Owner Preliminary
Response when distinguishing a prior art reference. Rakuten argued, inter alia, that a prior art

29

reference does not disclose a plurality of application sessions because it "describes and treats the
audio and video as parts of a single multimedia whole." Id at 18. Rakuten concluded:
In view of [the prior art reference' s] explicit discussion of creating a single "multimedia session" with two underlying media streams, and its explicit discussion of
the two media streams being for communication of related media (e.g., related
audio and video) for that single multi-media session, a POSA would not have
understood [the prior art reference ' s] audio session and video session to be separate
and independent application sessions. Instead, a POSA would have understood the
two media streams to be related elements of a single multi-media session formed
by [the prior art reference's] device/application. As such, a POSA would not have
understood [the prior art reference ' s] two communication sessions to disclose a
"plurality of application sessions," as the Petition proposes.

Id at 19 (emphasis in original).

IBM argues that Rakuten was "distinguish[ing] the prior art" by "repeatedly" stating that
the claims require "' independent' and 'unrelated' application sessions." D.I. 237 at 56. IBM,
however, mischaracterizes Rakuten' s statements. Rakuten was merely relying on the prior art
reference's explanation that the two communication sessions created a single multi-media session.
Rakuten then concluded that, because the prior art reference discloses only a single multi-media
session, it cannot meet the "plurality of application sessions" limitation. Rakuten did not
distinguish the prior art reference on the basis that the multi-media session was "related" and not
"independent."

None of these statements, or other statements in Rakuten' s Patent Owner

Preliminary Response, amount to clear and unmistakable disclaimer in claim scope. See Omega,
334 F.3d at 1325-26; Aylus, 856 F.3d at 1360.
For the reasons stated above, the Court will construe "plurality of application sessions" to
have its plain and ordinary meaning, which means "multiple application sessions in a
communication network. " 7

7

This construction is also consistent with the ' 968 patent specification. The '968 patent
specification states that "sessions can be independent of each other," but there is no requirement
30

IV.

CONCLUSION
The Court will adopt the parties' agreed-upon constructions and construe the disputed

claim terms as described above. The Court will issue an Order consistent with this Memorandum
Opinion.

that they must be independent and unrelated. ' 968 patent at 1:42-44. Also, the word "unrelated"
does not appear in the '968 specification. See generally ' 968 patent.

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