Prism Technologies v. AT&T et al

Filing 132

MEMORANDUM AND ORDER - IT IS ORDERED: For the purposes of United States Patent Nos. 7,290,288, 8,127,345, and 8,387,155, 1) As jointly stipulated by the parties (Schedule B, Filing No. 110), the following terms are construed as indicated in this Order. 2) As jointly stipulated by the parties (Schedule B, Filing No. 110), the preambles of the asserted claims are limiting. 3) The Court construes disputed terms as set forth within this Order. 4) The Court will not provide a construction for the term "authorization level(s)." Ordered by Senior Judge Lyle E. Strom. (TCL )

IN THE UNITED STATES DISTRICT COURT FOR THE
DISTRICT OF NEBRASKA
PRISM TECHNOLOGIES LLC,

)
)
Plaintiff,
)
)
v.
)
)
AT&T MOBILITY, LLC,
)
)
Defendant.
)
______________________________)
PRISM TECHNOLOGIES LLC,
)
)
Plaintiff,
)
)
v.
)
)
SPRINT SPECTRUM L.P.,
)
d/b/a SPRINT PCS,
)
)
Defendant.
)
______________________________)
PRISM TECHNOLOGIES LLC,
)
)
Plaintiff,
)
)
v.
)
)
T-MOBILE USA, INC.,
)
)
Defendant.
)
______________________________)
PRISM TECHNOLOGIES LLC,
)
)
Plaintiff,
)
)
v.
)
)
UNITED STATES CELLULAR
)
CORPORATION, d/b/a U.S.
)
CELLULAR,
)
)
Defendant.
)
______________________________)

8:12CV122

MEMORANDUM AND ORDER

8:12CV123

8:12CV124

8:12CV125

PRISM TECHNOLOGIES LLC,

)
)
Plaintiff,
)
)
v.
)
)
CELLCO PARTNERSHIP d/b/a
)
VERIZON WIRELESS,
)
)
Defendant.
)
______________________________)

8:12CV126

This matter is before the Court for construction of
patent claim terms in accordance with Markman v. Westview
Instruments, Inc., 517 U.S. 370 (1996).

In these cases,

plaintiff Prism Technologies LLC (“Prism”) alleges infringement
of three patents, U.S. Patent No. 7,290,288 (“‘288 patent”), U.S.
Patent No. 8,127,345 (“‘345 patent”), and U.S. Patent No.
8,387,155 (“‘155 patent”) (collectively, the “asserted patents”)
by defendants AT&T Mobility LLC, Sprint Spectrum L.P., T-Mobile
USA, Inc., United States Cellular Corporation d/b/a U.S.
Cellular, and Cellco Partnership d/b/a Verizon Wireless.

The

parties have submitted proposed claim constructions, opening and
responsive briefs, and corresponding indices of evidence, and the
Court heard oral argument on July 2, 2013.

After consideration

of the briefs, evidence, oral argument, and relevant law, the
Court rules as follows.
I.

Background and Procedural History.
The ‘288 patent, entitled “METHOD AND SYSTEM FOR

CONTROLLING ACCESS, BY AN AUTHENTICATION SERVER, TO PROTECTED
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COMPUTER RESOURCES PROVIDED VIA AN INTERNET PROTOCOL NETWORK,”
issued on October 30, 2007 (Ex. 1, Filing No. 85),1 from an
application filed August 29, 2002, with the United States Patent
and Trademark Office (“USPTO”).

Prism contends that the ‘288

patent application2 was a continuation-in-part of the application
that matured into another Prism patent, U.S. Patent No. 6,516,416
(“‘416 patent”), entitled “SUBSCRIPTION ACCESS SYSTEM FOR USE
WITH AN UNTRUSTED NETWORK,” which issued on February 4, 2003,
from an application filed June 11, 1997 (Ex. 5, Filing No. 119).
The ‘345 patent, entitled “METHOD AND SYSTEM FOR
MANAGING ACCESS TO PROTECTED COMPUTER RESOURCES PROVIDED VIA AN
INTERNET PROTOCOL NETWORK” issued on February 28, 2012, from an
application filed October 30, 2007, with the USPTO (Ex. 6, Filing
No. 85).

Prism contends that the ‘345 patent application was a

continuation of the ‘288 patent application.
The ‘155 patent, entitled “SYSTEM FOR MANAGING ACCESS
TO PROTECTED COMPUTER RESOURCES” issued on February 26, 2013,
from an application filed November 11, 2010, with the USPTO (Ex.
7, Filing No. 85).

Prism contends that the ‘155 patent

application was a continuation of the ‘345 patent application.

1

For ease of citation, the Court will cite to the filings
in the AT&T Mobility LLC case (8:12CV122).
2

The application for each issued patent will be referred
to, for example, as “the ‘288 patent application,” rather than by
the patent application number.
-3-

The claims of the unasserted ‘416 patent include
several of the same terms whose construction is now disputed in
the presently asserted patents.

In previous litigation initiated

in 2005 by Prism against other defendants (the “Delaware Case”),
the United States District Court for the District of Delaware
(the “Delaware Court”) construed the term “hardware key” and
several other terms in the ‘416 patent that are also common to
the asserted patents.

(Prism Tech. LLC v. Verisign, Inc., No.

1:05-214-JJF, Filing No. 449 (D. Del. Apr. 2, 2007) (Ex. 11,
Filing No. 119, at 3 (the “Delaware Order”)).

See also Prism

Tech. LLC v. Verisign, Inc., 512 F. Supp. 2d 174 (D. Del. 2007),
aff’d, 263 F. App’x 878 (Fed. Cir. 2008) (the “Delaware
Memorandum”).

Prism disclosed the Delaware Memorandum and the

Delaware Order to the USPTO (see ‘288 patent, p. 15).
Prism appealed the Delaware Order, which the Federal
Circuit affirmed without comment.

Prism did not, however, appeal

all of the claim constructions of the Delaware Order, and the
constructions that it did appeal are not at issue in this case.
On December 29, 2008, Prism filed a complaint in this
Court against defendants Research in Motion, Ltd. (“RIM”) and
Microsoft Corporation, alleging infringement of the ‘288 patent
only (see Complaint, Prism Tech. LLC v. Research in Motion et
al., 8:08CV537 (the “RIM Case”)).

Although the case was settled

before this Court held a Markman hearing or entered a claim
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construction order, Prism and RIM did submit briefs in support of
their proposed constructions.
On June 8, 2010, Prism filed a complaint in this Court
against several software manufacturers, alleging infringement of
the ‘288 patent only (see Complaint, Prism Tech. LLC v. Adobe et
al., 8:10CV220 (the “Adobe Case”)).

On April 11, 2011, the Court

conducted an initial Markman hearing for the purpose of
construing the term “hardware key / access key” and subsequently
issued its claim construction order (Adobe Case, Filing No. 188
(“2011 Adobe Order”)).
On January 12, 2012, the Court conducted a second
Markman hearing in the Adobe Case for the purpose of construing
additional disputed claim terms in the ‘288 patent.

After the

second Markman hearing, the parties in the Adobe Case submitted a
joint stipulation on claim construction, including an agreement
as to the significance of claim preambles and as to the
definitions of five claim terms.

The Court adopted the jointly

stipulated agreement, and the Court construed the eight remaining
disputed terms (Adobe Case, Filing No. 469 (“2012 Adobe Order”)).
Prism disclosed the 2011 and 2012 Adobe Orders to the USPTO (see
‘155 patent at pp. 17-18).
Prism claims that the asserted patents all descend from
the invention of the ‘416 patent, as noted above.

In the Adobe

Case, Prism described the “Background of the Patented Technology”
to this Court as follows:
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In early 1996, the Internet was
still in its infancy. Prism
Resources, a predecessor to Prism
Technologies, LLC, was busy
addressing the problematic security
issues associated with the open
Internet. At that time, most
Internet businesses provided access
to computer resources openly over
the Internet. When companies
needed to control access, they were
forced to use costly private
networks. This was largely an
artifact of the Internet being
created without security in mind.
Prism Resources endeavored to solve
these security problems so that
companies could enjoy cost savings
by employing the low-cost Internet
to replace higher-cost private
networks. Prism developed a
revolutionary solution for
controlling access to computer
resources over an open network like
the Internet. This novel system
enabled access to resources using a
hardware key from which digital
credentials necessary for
authentication could be generated,
derived or read. This allowed
companies to effectively turn the
insecure public Internet connection
between two parties into the
equivalent of a secure, private
network at low cost. Prism
Resources proceeded to patent its
ideas.
(Adobe Case, Filing No. 178, at 6-7) (internal citations
omitted).
Prism similarly described its invention to the Federal
Circuit in an appellate brief in the Delaware Case:

“Prism set

out to solve this very problem by developing a revolutionary
solution for controlling access to computer resources over an
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untrusted network like the Internet.

Prism’s novel system

enables access to resources using a hardware key that contains
digital credentials necessary for authentication.”

Brief of

Plaintiff-Appellant Prism Technologies LLC, Prism Tech. LLC v.
Verisign, Inc., 263 F. App’x 878 (Fed. Cir. 2008) (No. 20071315), 2007 WL 2956764 (“Prism Brief - Delaware Case”).

“The

invention turned the insecure public Internet connection between
two parties into the equivalent of a secure, low-cost private
network.”

Id.
Prism filed its complaint in the present action on

April 4, 2012 (Filing No. 1), which it amended on September 21,
2012 (Filing No. 40), and March 1, 2013 (Filing No. 85).

On

April 23, 2013, the parties filed a Joint Claim Construction
Statement delineating their proposed claim constructions and
stipulations (Filing No. 110).
II.

Legal Standard.
“It is a ‘bedrock principle’ of patent law that ‘the

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 banc) (quoting Innova/Pure Water,
Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115
(Fed. Cir. 2004)).

In construing a claim term, the Court must

give each term its “ordinary and customary meaning, as [it] would
be understood by one of ordinary skill in the art in question at
the time of the invention.”

Intervet Inc. v. Merial Ltd., 617
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F.3d 1282, 1287 (Fed. Cir. 2010) (citing Phillips, 415 F.3d at
1312-13).
Because the meaning of a claim term
as understood by persons of skill
in the art is often not immediately
apparent, and because patentees
frequently use terms
idiosyncratically, the court looks
to “those sources available to the
public that show what a person of
skill in the art would have
understood disputed claim language
to mean.”
Phillips, 415 F.3d at 1314 (quoting Innova/Pure Water, 381 F.3d
at 1116).

“Sources available to the public” include:

(1) the

patent claims themselves; (2) the remainder of the patent’s
specification; (3) the patent’s prosecution history; and (4)
extrinsic evidence pertaining to relevant scientific principles,
such as a technical term’s meaning and the state of the art.
Phillips, 415 F.3d at 1314.
“First, we look to the words of the claims themselves,
both asserted and nonasserted, to define the scope of the
patented invention.”

Vitronics Corp. v. Conceptronic, Inc., 90

F.3d 1576, 1582 (Fed. Cir. 1996).

“The written description part

of the specification itself does not delimit the right to
exclude.

That is the function and purpose of claims.”

Markman

v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995),
aff’d, 517 U.S. 370 (1996).
“Because claim terms are normally used consistently
throughout the patent, the usage of a term in one claim can often
-8-

illuminate the meaning of the same term in other claims.”
Phillips, 415 F.3d at 1314.

“Where claims use different terms,

those differences are presumed to reflect a difference in the
scope of the claims.”

Forest Labs., Inc. v. Abbott Labs., 239

F.3d 1305, 1310 (Fed. Cir. 2001).
As to patent families, when “patents all derive from
the same parent application and share many common terms, we must
interpret the claims consistently across all asserted patents.”
NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1293 (Fed.
Cir. 2005).

“[W]e presume, unless otherwise compelled, that the

same claim term in the same patent or related patents carries the
same construed meaning.”

Omega Eng’g, Inc. v. Raytek Corp., 334

F.3d 1314, 1334 (Fed. Cir. 2003).
In addition to the language of the claims, the patent
specification “‘is always highly relevant to the claim
construction analysis.

Usually, it is dispositive; it is the

single best guide to the meaning of a disputed term.”

Phillips,

415 F.3d at 1315 (quoting Vitronics, 90 F.3d at 1582).
“Importantly, the person of ordinary skill in the art is deemed
to read the claim term not only in the context of the particular
claim in which the disputed term appears, but in the context of
the entire patent, including the specification.”
F.3d at 1313.

After all, as required by statute,
The specification shall contain a
written description of the
invention, and of the manner and
-9-

Phillips, 415

process of making and using it, in
such full, clear, concise, and
exact terms as to enable any person
skilled in the art to which it
pertains, or with which it is most
nearly connected, to make and use
the same, and shall set forth the
best mode contemplated by the
inventor or joint inventor of
carrying out the invention.
35 U.S.C. § 112(a).
“Statements that describe the invention as a whole,
rather than statements that describe only preferred embodiments,
are more likely to support a limiting definition of a claim
term.”

C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 864

(Fed. Cir. 2004).

Because “the specification often describes

very specific embodiments of the invention, we have repeatedly
warned against confining the claims to those embodiments.”
Phillips, 415 F.3d at 1323.

While

[t]he written description and other
parts of the specification, for
example, may shed contextual light
on the plain and ordinary
meaning[,] . . they cannot be used
to narrow a claim term to deviate
from the plain and ordinary meaning
unless the inventor acted as his
own lexicographer or intentionally
disclaimed or disavowed claim
scope.
Aventis Pharm. Inc. v. Amino Chem. Ltd., 715 F.3d 1363, 1373
(Fed. Cir. 2013).

Thus “[t]he longstanding difficulty is the

contrasting nature of the axioms that (a) a claim must be read in
view of the specification and (b) a court may not read a

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limitation into a claim from the specification.”

Innova, 381

F.3d at 1117.
After the claims themselves and the remainder of the
specification, “[t]he court has broad power to look as a matter
of law to the prosecution history of the patent in order to
ascertain the true meaning of language used in the patent claims
. . . .”

Markman, 52 F.3d at 980.

“This history contains the

complete record of all the proceedings before the [USPTO],
including any express representations made by the applicant
regarding the scope of the claims.

As such, the record before

the [USPTO] is often of critical significance in determining the
meaning of the claims.”

Vitronics, 90 F.3d at 1582.

“[T]he

prosecution history can often inform the meaning of the claim
language by demonstrating how the inventor understood the
invention and whether the inventor limited the invention in the
course of prosecution, making the claim scope narrower than it
would otherwise be.”

Phillips, 415 F.3d at 1317.

“The public notice function of a patent and its
prosecution history requires that a patentee be held to what he
declares during the prosecution of his patent.”

Springs Window

Fashions LP v. Novo Indus., L.P., 323 F.3d 989, 995 (Fed. Cir.
2003).

“A patentee may not state during prosecution that the

claims do not cover a particular device and then change position
and later sue a party who makes that same device for
infringement.”

Id.

“‘The purpose of consulting the prosecution
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history in construing a claim is to exclude any interpretation
that was disclaimed during prosecution.’” Id. (quoting Chimie v.
PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005)).
III.

Claim Construction.
“When the parties present a fundamental dispute

regarding the scope of a claim term, it is the court’s duty to
resolve it.”

O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co.,

Ltd., 521 F.3d 1351, 1362 (Fed. Cir. 2008).

Here, the Court

finds that the parties have agreed that three terms, “internal,”
“client computer device” and “provided via . . . ,” should be
“given their ordinary and customary meaning.”
at 1312.

Phillips, 415 F.3d

Since the parties do not “present a fundamental

dispute,” the terms do not require a construction from the
Court.3

The parties offer differing proposed constructions for

the remaining terms on Schedule A, as follows.
A.

“Internet Protocol network” terms (“an Internet
Protocol network,” “network utilizing at least one
Internet Protocol,” and “a network utilizing at
least one Internet Protocol”)

3

See Schedule A, Filing No. 110 (For the three terms, plus
the term “external,” Prism states, “No construction is required
-- plain and ordinary meaning”); Filing No. 114, at 19 n. 11
(Defendants state that the same terms “should be given their
plain and ordinary meaning”). Nevertheless, the Court does
choose to construe the term “external” (see “hardware key,”
below).
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Prism’s Proposed
Construction:

Defendants’ Proposed
Construction:

“A network using any protocol
of the Internet Protocol Suite
including at least one of IP,
TCP/IP, UDP/IP, and HTTP”

“An untrusted network using
any protocol of the Internet
Protocol Suite including at
least one of IP, TCP/IP,
UDP/IP, and HTTP/IP, where
untrusted is defined as a
public network with no
controlling organization, with
the path to access the network
being undefined and the user
being anonymous”

Prism’s proposed construction is the same as the
construction to which the parties jointly stipulated for the ‘288
patent in the Adobe Case.

Generally, claim terms from related

patents (and certainly from the same patent) are interpreted
consistently.
1334.

NTP, 418 F.3d at 1293; Omega Eng’g, 334 F.3d at

Defendants contend that because they were not a party to

the stipulation adopted in the Adobe Case, and because they do
not agree with the stipulation, the Court should place less
significance on the previous construction.
Addressing a similar situation, the Federal Circuit
wrote, “The infringement analysis in the initial determination
was made pursuant to a stipulation with respect to the meaning of
the claim terms by one of the respondents in that proceeding.”
Fuji Photo Film Co., Ltd. v. Int'l Trade Comm'n, 386 F.3d 1095,
1101 (Fed. Cir. 2004).

“Since the respondents who are affected

by the claim construction in the present proceedings were not
parties to that stipulation, they are not bound by it, nor does
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the administrative law judge’s acceptance of the stipulation
constitute a formal claim construction.”

Id.

Similarly, the

Court will view the Adobe Case constructions based on
stipulations as relevant (particularly because they appear in the
prosecution history) but not binding to the present action.
The primary difference4 between the parties’ proposed
constructions is defendants’ insertion of the word “untrusted,”
defined in the ‘288 patent specification (‘288 patent, 3:39-42).5
Defendants contend that the “Internet Protocol network” terms as
used in the asserted patents’ claims should be restricted to
untrusted networks; Prism claims that no such limitation exists.
While Prism concedes that the ‘416 patent “generally claims
systems for controlling the operation and access to protected
resources where the access server and client computer communicate
over an untrusted network,” Prism contends that “claims in the
‘288 patent apply to both trusted and untrusted networks” (Filing
No. 118, at 12).

4

One other difference exists: Prism includes the term
“HTTP,” while defendants include the term “HTTP/IP.” None of the
parties has addressed this difference, and the Court has no way
to determine the technical significance, if any, of the addition
of “/IP.” The Court will include both “HTTP” and “HTTP/IP” in
its construction.
5

The parties state that the specifications of the asserted
patents are identical (see Filing No. 118, at 9 n.7; Filing No.
114, at 15). The Court will cite to the ‘288 patent
specification only, but such citations apply similarly to the
‘345 patent and the ‘155 patent specifications.
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1.

The Claim Language.

Prism states, “[B]y its plain

language ‘an Internet Protocol network’ is a network that uses
the Internet Protocol.

As the claim language broadly recites

‘network’ without further limitation, as a matter of law, the
claim captures any network, including both trusted and untrusted
networks” (Filing No. 118, at 36).
Defendants read the claims differently; they propose
that an “Internet Protocol network” is a subset of all untrusted
networks (Defendant Slide 41).

For example, claim 62 of the ‘288

patent begins as follows:
62. A method for protecting
resources of a server computer, the
server computer providing the
protected resources to a client
computer device via an untrusted
network . . .
(‘288 patent, 39:48-50).

Dependent claim 81 then reads,

81. The method of claim 62, wherein
the untrusted network uses an IP
protocol.
(Id., 41:39-40).

Similarly, claim 87 begins,

87. A method for protecting
resources of a server computer, the
server computer providing the
protected resources to a client
computer device via an untrusted
network . . .
(Id., 41:61-63).

Dependant claim 110 then reads,

110. The method of claim 87,
wherein the untrusted network uses
an IP protocol.

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(Id., 43:63-64).

Here, defendants persuasively argue that in the

context of the ‘288 patent claims, networks that use an IP
protocol are one species of untrusted network.
But Prism also contends that the doctrine of claim
differentiation supports its argument.

For example, Prism

compares the preamble of claim 31, which contains the term
“untrusted network,” as cited above, with the preamble of claim
117, which contains the term “Internet Protocol network:”
117. A system for controlling
access to protected computer
resources provided via an Internet
Protocol network . . .
(Id., 45:1-2).

Prism states, “The fact that the inventors of the

Asserted Patents chose to use the term ‘untrusted network’ in
some claims and ‘Internet Protocol network’ in others
demonstrates that these terms must have different meanings based
on the doctrine of claim differentiation” (Filing No. 118 at 37).
Defendants dispute the fact that the doctrine of claim
differentiation applies in this case, because the two preambles
have other differences unrelated to “untrusted network” and
“Internet Protocol network” (Filing No. 126, at 15).

Yet even if

the doctrine of claim differentiation did apply, it does not
address the disagreement between the parties, because the
difference between the two terms is in dispute.

Prism argues

that the terms are different because an “Internet Protocol
network” can be either trusted or untrusted; defendants argue
that the terms are different because an “Internet Protocol
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network” is a subset of the term “untrusted network.”

Thus the

doctrine of claim differentiation does not aid the analysis.
2.

Specification Disclosure.
“Where the specification makes
clear that the invention does not
include a particular feature, that
feature is deemed to be outside the
reach of the claims of the patent,
even though the language of the
claims, read without reference to
the specification, might be
considered broad enough to
encompass the feature in question.”

Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1366
(Fed. Cir. 2012) (quoting SciMed Life Sys., Inc. v. Advanced
Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001)).
“Generally, a claim is not limited to the embodiments described
in the specification unless the patentee has demonstrated a clear
intention to limit the claim’s scope with words or expressions of
manifest exclusion or restriction. . . . By the same token, not
every benefit flowing from an invention is a claim limitation.”
i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 843 (Fed. Cir.
2010) (quotation and citation omitted), aff’d, 131 S. Ct. 2238
(2011).
Prism and defendants agree that the specification
addresses both trusted and untrusted networks.

Prism, however,

contends that the network above the firewall in Figure 1 can be
either trusted or untrusted, whereas defendants contend that the
network above the firewall is untrusted only.

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(‘288 patent, Fig. 1).
At oral argument, defendants emphasized the fact that
“[a]s the preamble to the asserted claims makes clear, the
relevant ‘network’ is the network over which protected resources
are ‘provided’ to a client computer device . . . ” (Defendants’
Slide 30, quoting ‘288 patent, claim 117).

Defendants argue,

“The preamble tells us that the network we’re looking at is the
network that’s used to provide access to the protected computer
resources by the client computer device.

It’s the top half of

Figure 1, not the bottom half” (Markman Hearing Transcript,
Filing No. 130, at 62:8-11).

Defendants argue that the “Internet
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Protocol network” of claim 117 must correspond to INTERNET 38 of
Figure 1, which connects ACCOUNT HOLDER 36 to WEB SERVER 34
(Defendants’ Slide 30, quoting ‘288 patent, Fig. 1).

Defendants

also conclude that the term “Internet Protocol network” cannot be
part of the trusted network indicated by solid lines in Figure 3,
but that the term only refers to the part of the invention that
is in the shape of the cloud and that connects the two sides of
the drawing with dotted lines (Defendants’ Slides 38-41).

(‘288 patent, Fig. 3).
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Keeping in mind that some of the networks described in
the specification are trusted and secure (illustrated by the
solid lines in Figure 3), Prism’s argument can be condensed as
follows:
1. Some aspects of such a trusted
and secure network, such as a LAN
[local area network] use a TCP/IP
protocol (Filing No. 124, at 13).
2. A network that uses a TCP/IP
protocol is an “Internet Protocol
network” (Plaintiff’s Construction,
Schedule A, Filing No. 110).
3. Therefore, the trusted and
secure network that uses a TCP/IP
protocol is an “Internet Protocol
network,” and an “Internet Protocol
network” includes trusted networks.
(See Filing No. 118, at 36-37; Filing No. 124, at 12-14).

This

argument only succeeds if the second statement is true, that is,
that a network that uses a TCP/IP protocol is an “Internet
Protocol network.”

Yet this is the very position that Prism is

setting out to prove; as such, it cannot be assumed.

After all,

defendants would rewrite the second statement as “An untrusted
network that uses a TCP/IP protocol is an “Internet Protocol
network,” thereby not allowing for Prism’s third, conclusory
statement.

Moreover, as defendants point out, “[t]he

specification’s disclosure of the LAN is irrelevant to the
‘Internet Protocol network’ terms because the LAN is not the
network over which protected computer resources are provided from
the access server to the client computer device as the preamble
requires” (Filing No. 126, at 10-11).
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Turning to the written language of the specifications,
the first sentences of the ‘288 patent specification read as
follows:

“The present invention generally relates to security

systems for use with computer networks.

More particularly, the

present invention relates to a secure transaction system that is
particularly adapted for use with untrusted networks, such as the
Internet” (‘288 patent, 1:8-12) (emphasis added).
Describing the drawings, the specification reads, “FIG.
1 is a block diagram of the secure transaction system embodying
the present invention, wherein a secure transaction server is
part of a local area network, with the server being connected to
the Internet and to the local area network via a firewall” (Id.,
2:17-21) (emphasis added).

Also describing the drawings, “FIG. 3

is a more detailed block diagram of the schema of the present
invention” (Id., 2:26-27) (emphasis added).
The first sentences of the Detailed Description section
of the ‘288 patent specification read as follows:
Broadly stated, the present
invention is directed to a secure
transaction system that is
particularly adapted for use with
an untrusted network, such as the
Internet worldwide web. As used
herein, an untrusted network is
defined as a public network with no
controlling organization, with the
path to access the network being
undefined and the user being
anonymous. A client-server
application running over such a
network has no control over the
transmitted information during all
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the phases of transmission. The
present invention provides a
platform for securing transactions
between consumers and suppliers on
an untrusted network.
(Id., 3:36-46) (emphasis added).

Finally,

While the steps that have been
described with respect to FIG. 2
are a very broad overview of the
preferred embodiment, the
functional block diagram of FIG. 3
provides a more detailed general
schema of the present invention.
The system includes a server
application 44, an account holder
or client application 46, both of
which are connected to an untrusted
network via a traditional
communication path indicated by the
dotted lines 48 and 50.
(Id., 6:24-31) (emphasis added).
The parties emphasize different aspects of the
foregoing specification excerpts.

Prism states, “The

Specification uses the words ‘present invention’ in a permissive
and general manner to describe the advantages of the claimed
invention . . .” (Filing No. 124, at 14).

Prism goes on to say,

“The specification also provides examples of particular uses of
the invention, such as ‘particularly adapted for use with
untrusted networks, such as the Internet’ and ‘particularly
adapted for use with an untrusted network, such as the Internet
worldwide web.’

Such statements do not limit the scope of

‘Internet Protocol networks’” (Id., at 15).

-22-

Prism cites i4i to support its contention that a
description of a “particular advantage” of an invention does not
limit the invention (Id.).

Prism claims, “[T]he permissive

language used in the Specification (e.g., ‘generally,’
‘particularly adapted,’ ‘broadly stated,’ ‘provides a platform,’
‘general schema’) is not limiting” (Id., at 16).

Prism likens

these terms to terms in the i4i patent specification that the
Federal Circuit did find to be permissive:

“The specification’s

permissive language, ‘could be edited,’ ‘can be created,’ and
‘ability to work,’ does not clearly disclaim systems lacking
these benefits.”

i4i, 598 F.3d at 844.

The Court does not find Prism’s language to be
permissive in the same sense as “can be” and “could be,” which
create a possibility but not a requirement.

The specification

itself distinguishes between Figure 2, showing “a very broad
overview of the preferred embodiment,” and Figure 3, showing “a
more detailed general schema of the present invention.”

The

Court finds that the plain language of these statements indicates
that Figure 3 is not, in fact, a particular advantage or a
preferred embodiment like Figure 2, but rather is just as Prism
describes it -- a “general schema of the present invention,” with
no permissive language present at all.
Defendants emphasize Prism’s use of the term “the
present invention,” citing Honeywell, where the Federal Circuit
found that “the claim term ‘fuel injection system component’ is
-23-

limited to a fuel filter.”

Honeywell Int'l, Inc. v. ITT Indus.,

Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006).

In arriving at this

limitation, the Federal Circuit cited four instances in the
patent’s specification where “the written description refers to
the fuel filter as ‘this invention’ or ‘the present invention . .
. .”

Id.

The Federal Circuit concluded that under such

circumstances, “[t]he public is entitled to take the patentee at
his word and the word was that the invention is a fuel filter.”
Id.
Prism cites Martek Biosciences Corp. v. Nutrinova,
Inc., 579 F.3d 1363 (Fed. Cir. 2009) as an example of the
rejection of a claim limitation based on a description of “the
present invention.”

But in Martek, the patentee had acted as its

own lexicographer with regard to the claim term in question,
which is not the case here.

(“When a patentee explicitly defines

a claim term in the patent specification, the patentee’s
definition controls.” Id. at 1380.)
In consideration of the foregoing, the Court finds that
defendants have persuasively argued that the specification is
dispositive on the issue and that, as in Honeywell, the
specification speaks for itself as to the untrusted nature of the
network connection between the client computer device and the
server that allows for access to protected computer resources.
3.

Prosecution History Disclaimer.

“We indulge a

heavy presumption that claim terms carry their full ordinary and
-24-

customary meaning unless the patentee unequivocally imparted a
novel meaning to those terms or expressly relinquished claim
scope during prosecution.”

Omega Eng’g, 334 F.3d at 1323 (Fed.

Cir. 2003) (quotation and citations omitted).

“[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 (footnote omitted).

“[A]n applicant can make a binding disavowal of claim scope in
the course of prosecuting the patent, through arguments made to
distinguish prior art references.”

Cordis Corp. v. Medtronic

Ave, Inc., 511 F.3d 1157, 1177 (Fed. Cir. 2008).

“In order to

constitute binding surrenders of claim scope, the statements in
question must be such that ‘a competitor would reasonably believe
that the applicant had surrendered the relevant subject matter.’”
Id. (quoting Cybor Corp. v. FAS Tech., Inc., 138 F.3d 1448, 1457
(Fed. Cir. 1998) (en banc)).
Defendants contend that “Prism disclaimed a system that
operates over a private, trusted network -- the same type of
network that it now seeks to reclaim through its proposed
construction of the terms ‘Internet Protocol network’ and
‘network utilizing at least one Internet Protocol’” (Filing No.
114, at 20).

“Because of this [prosecution] disclaimer,

‘Internet Protocol network’ and ‘network utilizing at least one
Internet Protocol’ should be limited to an untrusted network”
(Id.).
-25-

Defendants cite a document filed by Prism with the
USPTO on January 19, 2000, during prosecution of the ‘416 patent,
distinguishing prior art (“Dolphin”) by stating, “With respect to
the rejection of claims 1 and 28 as being anticipated by Dolphin
reference, it is submitted that claims 1 and 28 are not
anticipated . . .” (Ex. 4, Filing No. 118, at 8).

“The Dolphin

reference uses a private network for communications between the
subscriber and the billing/access center designed to allow only
subscribers to obtain the unique key material identifier (KMID)
needed to decrypt the computer resources” (Id.).

“Thus, it does

not teach or suggest a system that includes, among other things,
a clearinghouse means, server software means and client software
means as claimed by the present invention” (Id.) (emphasis
added).
Prism responds, “Rather than constitute a disclaimer,
the [first sentence of the January 19, 2000, statement] is simply
a statement of what the Dolphin reference teaches -- i.e., a
private network for communications -- while the [second
sentence], where Prism distinguishes Dolphin, does not mention
that Dolphin is a private network” (Filing No. 124, at 11).
“Indeed, Prism’s Response relied entirely on other claimed
limitations, such as the clearinghouse, server software means,
and client software means to distinguish Dolphin . . .” (Id.).
But Prism clarified its statement to the USPTO when it
stated to the Federal Circuit with regard to the Dolphin prior
-26-

art, “In response to this rejection, the applicants noted, inter
alia, that Dolphin used a private, not a public (untrusted)
network for communications between the subscriber and a billing
access center that allows authenticated subscribers to obtain a
key needed to decrypt the desired computer resources”
Brief -- Delaware Case).

(Prism

“Thus, Dolphin taught neither server

software means nor client software means functioning as described
in Prism’s application” (Id.).

Prism’s notable distinction

between “a private [network]” and a “public (untrusted) network”
suggests to the Court that Prism’s statement to the Federal
Circuit was not “simply a statement of what the Dolphin reference
teaches,” but rather a clear and unmistakable distinction between
Dolphin’s “private” network and Prism’s “public (untrusted)”
network.

Prism’s statement to the Federal Circuit lends credence

to defendants’ contention that such a distinction was also made
to the USPTO.
The USPTO seemed to reach this conclusion as well.

At

oral argument, defendants noted that subsequent to Prism’s
January 19, 2000, statement, on September 21, 2000, the USPTO
issued an Office Action stating, “Claims 1, 2, 4, 6-11, 15-17,
20, 22-24, 28 and 30-36 are allowed.

The following is art

examiner’s statement of reasons for allowance:

The present

invention comprises a system for accessing subscription materials

-27-

over an unsecure network. . . .” (8:12CV123, Ex. 2, Filing No.
130, at 39; this document was not filed in 8:12CV122).6
Prism argues that even if prosecution history disavowal
were to be found, any disclaimer would not apply to the
downstream, asserted patents.

Prism states, “Unlike the ‘416

patent [claims], the asserted claims here do not include the
‘untrusted network’ limitation and therefore any purported
disclaimer from the prosecution of the ‘416 patent would not
apply to claims in the later issued Asserted Patents” (Filing No.
124, at 12).
Yet the Federal Circuit advises that an important
exception exists to the general rule:

“We have explained that

‘[w]hen the purported disclaimers [made during prosecution] are
directed to specific claim terms that have been omitted or
materially altered in subsequent applications (rather than to the
invention itself), those disclaimers do not apply.’”

Regents of

Univ. of Minnesota v. AGA Med. Corp., 717 F.3d 929, 943 (Fed.
Cir. 2013) (quoting Saunders Grp., Inc. v. Comfortrac, Inc., 492
F.3d 1326, 1333 (Fed. Cir. 2007)).

“In general, a prosecution

disclaimer will only apply to a subsequent patent if that patent
contains the same claim limitation as its predecessor.”
717 F.3d at 943.

Regents,

“The sole exception is when the disclaimer is

6

This document was first cited to the Court at oral
argument; defendants did not cite to it in their briefs. Prism
had been alerted to the possibility of such a citation but did
not object at the hearing (See Markman Hearing Transcript, at
7:18-8:23; 65:12-66:10).
-28-

directed to the scope of the invention as a whole, not a
particular claim.

See, e.g., Ormco Corp. v. Align Tech., Inc.,

498 F.3d 1307, 1314-15 (Fed. Cir. 2007) (the patentee’s
statements ‘w[ere] not associated with particular language from
[the] claims’ but were instead directed to the ‘present
invention’ and the ‘overall method’ claimed).”
at 943, n.8.

Regents, 717 F.3d

As in Ormco, here, where Prism’s statement to the

USPTO was directed to “the present invention,” the exception
applies as well -- that is, the disclaimer made during the ‘416
patent prosecution would apply to the downstream, asserted
patents.
In consideration of the claim language, the
specification, and the prosecution history,7 considered in
descending order of emphasis, the Court must reject Prism’s
contention that the term “Internet Protocol network” in the
context of the asserted patents can apply more broadly, not only
to public, untrusted networks, but also to private, trusted
networks.

While the network behind the firewall can certainly

include a private, trusted, network, the Court must conclude that
the “Internet Protocol network” by which the invention controls
access to protected computer resources is untrusted.

7

Because the Court finds the intrinsic evidence to be
dispositive of the construction, the Court does not consider
Prism’s discussion of a patent not at issue here (Filing No. 124,
at 21-23).
-29-

Accordingly, the Court is persuaded to amend its
previously stipulated construction.

The Court construes each of

the “Internet Protocol network” terms (“an Internet Protocol
network,” “network utilizing at least one Internet Protocol,” and
“a network utilizing at least one Internet Protocol”) to mean “an
untrusted network using any protocol of the Internet Protocol
Suite including at least one of IP, TCP/IP, UDP/IP, HTTP, and
HTTP/IP, where untrusted is defined as a public network with no
controlling organization, with the path to access the network
being undefined and the user being anonymous.”
B.

“forward/receive” terms (“forward,” “forwards,”
and “forwarded”; “receive” and “receiving”)

Prism’s Proposed
Constructions

Defendants’ Proposed
Constructions

“forward”: Prism argues that
no construction is required,
and that the term should be
given its plain and ordinary
meaning.

“forward”: “transmit nonwirelessly”
“receive”: “receive nonwirelessly”

“receive”: Prism argues that
no construction is required,
and that the term should be
given its plain and ordinary
meaning.

While the terms “forward” and “receive” were not
separately construed in the Delaware Case and the Adobe Case,
both courts construed terms containing the term “forward.”

In

the Delaware Case, such terms were stipulated to by the parties

-30-

(Delaware Order, at 6, 7).

More significantly, in the Adobe

Case, after hearing argument by the parties, this Court construed
“selectively requiring . . . [said/the] client computer device to
forward” to mean “choosing to require that the client computer
device transmit certain information,” and the Court construed
“adapted to forward” to mean “configured to transmit” (2012 Adobe
Order, at 31-32).

Thereby, the word “forward” was effectively

construed as “transmit.”

Similarly, in this case, the parties

have stipulated that the term “selectively requiring . . .
[said/the] client computer device to forward” is construed as
“choosing to require that the client computer device transmit
certain information” (Filing No. 110, Schedule B).

There too,

the term “forward” is effectively construed as “transmit.”
The debate here centers around defendants’ proposed
requirement of “non-wireless” transmission and reception, which
Prism opposes.

Prism notes that in the context of construing the

term “hardware key” in the Delaware Case, the Delaware Court had
occasion to state with regard to the term “connected,”
[E]ven though the inventors did not
describe any embodiment of a
hardware key that connects
wirelessly to the computer, patent
claims are not limited to only
those features described in the
specification, and later-developed
technology is commonly allowed to
be covered by broad claim terms.
Varco, L.P. v. Pason Sys. USA
Corp., 436 F.3d 1368, 1375-76 (Fed.
Cir. 2006) (citing SRI Int'l v.
Matsushita Elec. Corp. Of Am., 775
F.2d 1107, 1121 (Fed. Cir. 1985)
-31-

(‘The law does not require [that]
an applicant describe in his
specification every conceivable and
possible future embodiment of his
invention.’) (en banc)). Thus,
wireless devices are anticipated by
the broad language in the claims
and specification.
Prism, 512 F. Supp. 2d at 189.

The “wireless device” cited by

the Delaware Court was the hardware key only (see discussion of
“hardware key” below).

The Delaware Court did not address

wireless communication between any of the invention’s other
computers or servers.
1.

The Claim Language.

Looking first to the language

of the claims themselves, defendants’ proposed construction would
seem to be impossible.

For example, dependent claim 136 of the

‘288 patent reads,
136. The system of claim 117,
wherein said at least one client
computer device wirelessly forwards
said digital identification to said
at least one access server.
(‘288 patent, 46:43-45).

Likewise, dependent claim 170 reads,

170. The method of claim 150,
wherein receiving, at the at least
one access server, the digital
identification from the at least
one client computer device includes
wirelessly receiving the digital
identification.
(Id., 49:1-4).

As Prism points out, defendants’ construction, as

applied to claim 136, would mean that the “client computer device
wirelessly transmits non-wirelessly said digital identification,”

-32-

which would be nonsensical.

Moreover, Prism argues that the

doctrine of claim differentiation supports its argument in favor
of both wireless and non-wireless transmission, in that the
independent claims 117 and 150, which do not mention wireless
transmission, are limited by dependent claims 136 and 170, which
do, thereby meaning that the terms “forward” and “receive” can
support both wireless and non-wireless transmission.
2.

Specification Disclosure.

As noted by the parties,

the specification is largely silent on the issue of wireless vs.
non-wireless transmission.

Nonetheless, Prism does argue that

the specification nowhere limits the terms “forward” and
“receive” to non-wireless transmission.

For example, with regard

to Figure 3 above, the specification states that “the dotted
lines are conventional communication paths,” which Prism espouses
could be wireless or non-wireless paths, which would have been
known to a person of ordinary skill in the art at the time of the
‘416 prosecution in 1997 (Filing No. 118, at 28; see also ‘288
patent, 6:24-38).
In support of this contention, Prism introduces
extrinsic evidence in the form of an article written in 1994
announcing, “AT&T will next month add roaming capabilities to its
wireless WaveLAN network” (Ex. 15, Filing No. 119, at 2).
Defendants, on the other hand, state that the same article
supports their argument that “conventional communication paths”
at the time would have been non-wireless:
-33-

“The WavePoint

[wireless] bridge links WaveLAN to conventional wired networks”
(Id.).

Defendants also cite a patent claimed as prior art by

Prism (which is, therefore, intrinsic evidence; see Phillips, 415
F.3d at 1317) in support of their position (Filing No. 126, at
24).

On such scant evidence, the Court will not render a

decision as to what constituted a conventional communication path
in 1997.
3.

Prosecution History Disclaimer.

Defendants claim,

“Because Prism disclaimed wirelessly transmitting and receiving
during prosecution of the ‘155 Patent, these terms should be
construed to mean transmitting and receiving non-wirelessly”
(Filing No. 114, at 27).

The purported disclaimer was made in

response to a USPTO office action dated October 6, 2011, where
USPTO Examiner Aubrey Wyszynski rejected submitted claims 1-20 in
the ‘155 patent application (Ex. 7, Filing No. 117).
twenty rejected claims, two are relevant here:
3.

The system of claim 1, wherein
said at least one server is
adapted to receive said
identity data wirelessly.

14.

The method of claim 12,
wherein receiving, by the at
least one server, the identity
data from the at least one
client computer device
includes wirelessly receiving
the identity data.

(Ex. 3, Filing No. 117, at ¶¶ 3, 14).

-34-

Among the

Examiner Wyszynski rejected all twenty claims for
several reasons, including nonstatutory obviousness-type double
patenting over claims 1-187 of the ‘288 patent and statutory
obviousness rejections over prior art pursuant to 35 U.S.C.
§ 103(a) (Ex. 7, Filing No. 117, at 7, 10).

Examiner Wyszynski

also specifically rejected Claims 3 and 14, stating,
Claims 3 and 14 are rejected under
35 U.S.C. 112, first paragraph, as
failing to comply with the written
description requirement. The
claim(s) contains subject matter
which was not described in the
specification in such a way as to
reasonably convey to one skilled in
the relevant art that the
inventor(s), at the time the
application was filed, had
possession of the claimed
invention. The examiner cannot
find support in the specification
for ‘wireless’ communication.
(Ex. 7, Filing No. 117, at 10).
On April 5, 2012, Prism responded to Examiner
Wyszynski’s rejections of the twenty claims by amending the ‘155
patent application to cancel claims 1-20, add new claims 21-117,
and amend the title and abstract (Ex. 8, Filing No. 117).

Prism

specifically stated that it “cancelled claims 1-20 without
prejudice or disclaimer of their subject matter” (Id. at 19).
Prism stated that its cancellation of the claims rendered the
examiner’s rejections “on the ground of nonstatutory obviousnesstype double patenting,” “under 35 U.S.C. § 112, first paragraph,”
and “under 35 U.S.C. § 103(a)” “moot” (Id.).
-35-

Defendants now

argue that Prism’s cancellation of claims 3 and 14, particularly,
amount to prosecution history disclaimer as to wireless
communications, since one of the grounds on which Examiner
Wyszynski cancelled the claims was lack of specification support
for wireless communications.
“The doctrine of prosecution disclaimer is well
established in Supreme Court precedent, precluding patentees from
recapturing through claim interpretation specific meanings
disclaimed during prosecution.”

Omega Eng’g, 334 F.3d at 1323.

“‘It is a rule of patent construction consistently observed that
a claim in a patent as allowed must be read and interpreted with
reference to claims that have been cancelled or rejected, and the
claims allowed cannot by construction be read to cover what was
thus eliminated from the patent.’”

Id. (quoting Schriber-Schroth

Co. v. Cleveland Trust Co., 311 U.S. 211, 220-21 (1940)).

“The

injurious consequences to the public and to inventors and patent
applicants if patentees were thus permitted to revive cancelled
or rejected claims and restore them to their patents are
manifest.”

Schriber-Schroth, 311 U.S. at 221.
“As a basic principle of claim interpretation,

prosecution disclaimer promotes the public notice function of the
intrinsic evidence and protects the public’s reliance on
definitive statements made during prosecution.

We have, however,

declined to apply the doctrine of prosecution disclaimer where
the alleged disavowal of claim scope is ambiguous.”
-36-

Omega Eng’g,

334 F.3d at 1324 (internal citation omitted).

“But where the

patentee has unequivocally disavowed a certain meaning to obtain
his patent, the doctrine of prosecution disclaimer attaches and
narrows the ordinary meaning of the claim congruent with the
scope of the surrender.”

Omega Eng’g, 334 F.3d at 1324.

For example, in Rheox, Inc. v.
Entact, Inc., 276 F.3d 1319, 1325,
61 USPQ2d 1368, 1373 (Fed. Cir.
2002), we ruled that the scope of
the patent in suit did not cover
‘triple superphosphate’ - an
embodiment expressly disclosed in
the written description - because
the patentee cancelled a claim
covering ‘triple superphosphate’
and expressly disclaimed that
compound in his arguments to the
examiner to gain patent allowance.
Id. at 1324-25 (emphasis added).
The Federal Circuit describes another example of claim
disavowal as follows:

“The applicants disavowed claim coverage

of sustained release tablets by cancelling original claims 1-11
and remarking to the examiner that ‘[o]riginal claims 1-11 were
directed to a sustained release formulation. . . .

[T]he

sustained release claims have been cancelled to facilitate
prosecution.’”

Reckitt Benckiser Inc. v. Watson Laboratories,

Inc., 430 F. App’x 871, 876 (Fed. Cir. 2011) (internal citation
omitted).

“The unmistakable effect of that disavowal, evident

from the applicants’ remarks distinguishing the prior art, was to
limit the remaining claims to two-portion guaifenesin products.”
Id.

In contrast, “There is no ‘clear and unmistakable’
-37-

disclaimer if a prosecution argument is subject to more than one
reasonable interpretation, one of which is consistent with a
proffered meaning of the disputed term.”

SanDisk Corp. v.

Memorex Products, Inc., 415 F.3d 1278, 1287 (Fed. Cir. 2005).
The parties have not uncovered a case where a
prosecution history disclaimer was alleged after the rejection of
a claim on more than one ground, as here.

In addition, as Prism

points out, “All of Defendants’ cases involved disclaimers where
the patentee did not already have issued claims expressly
directed toward the claim scope that was later argued to be
disavowed” (Filing No. 124, at 25).

“Here, by contrast, Prism

already had issued claims expressly directed towards wireless
communications -- the claim scope that Defendants argue Prism
disavowed” (Id.).
Defendants suggest that nothing in the file wrapper
indicates that the examiner looked at the issue carefully
(“‘[W]ireless’ only came in at the very tail end [of the ‘288
patent prosecution] after . . . the bulk of the issues were
resolved, as two dependent claims, as part of 75 new claims that
were then summarily allowed two months later”) (Markman Hearing
Transcript, at 81:7-11).

Defendants argue, “Prism could have

opposed [Examiner Wyszynski’s] rejection by making the same
argument it raises here -- that two ‘wireless’ dependent claims
were approved by a prior examiner of the ‘288 Patent” (Filing No.
126, at 22).

“Instead, Prism failed to challenge the Examiner’s
-38-

clear statement about the scope of the patents, and canceled its
pending wireless claims.

That is the essence of disclaimer” (Id.

(internal citation omitted)).

The Court disagrees.

The Court finds that Prism’s strong arguments in favor
of its construction, made largely by examination of the claims
themselves, are not overcome by defendants’ argument in favor of
prosecution history disavowal.

Prism did not clearly and

unmistakably disavow wireless transmission when it cancelled
original claims 3 and 14 of the ‘155 patent application.

Prism’s

cancellation is subject to more than one reasonable
interpretation, since claims 3 and 14 were also rejected by the
examiner on grounds unrelated to wireless transmission.
Similarly, Prism did not “expressly disclaim[] [wireless
transmission] in [its] arguments to the examiner to gain patent
allowance.”

Omega Eng’g, 334 F.3d at 1324-25.

The Court will

not impose a “non-wireless” limitation on the terms “forward” and
“receive.”
In keeping with the Court’s previous constructions of
phrases including the term “forward” in the Adobe Case, and in
consideration of the parties’ stipulation in this case, the Court
construes “forward” to mean “transmit.”

The Court will not

construe the word “receive” but will give it its plain and
ordinary meaning.

-39-

C.

“Protected Computer Resources” terms (“protected
computer resources,” “protected resources,” and
“protected resources of at least one server
computer”)

Prism’s Proposed
Construction:

Defendants’ Proposed
Construction:

“Computer services,
applications, or content that
can be accessed (either
directly or indirectly)”

“Computer services,
applications, or content that
is stored within the secure
transaction system that can
only be accessed by a server
within the secure transaction
system”

Like the Internet Protocol network terms, Prism’s
proposed construction for the protected computer resources terms
is the same as the construction to which the parties jointly
stipulated for the ‘288 patent in the Adobe Case.

As with the

Internet Protocol network terms, the Court will view the Adobe
Case construction as relevant but not binding to the present
actions.
Prism also emphasizes the fact that the Delaware Court
construed the term “selected computer resources of at least a [or
said] first server computer” from the ‘416 patent to mean
“computer services, applications, or content that can be accessed
by (either directly or indirectly) said first server computer”
(Delaware Order, at 2), supporting Prism’s construction here.
Defendants recall the doctrine of claim differentiation, arguing
that “‘protected’ is presumed to have a different meaning from
‘selected,’ and the proper construction of ‘protected resources’

-40-

turns on that difference” (Filing No. 126, at 20).

The Court

agrees that the words “selected” and “protected” have different
meanings, and the Court assumes that the inventors used different
terms to convey different meanings.
1.

The Claim Language.

Unlike Prism’s construction,

defendants’ construction has two additional requirements:

first,

that the protected resources be “stored within the secure
transaction system,” and second, that the protected resources
“can only be accessed by a server within the secure transaction
system.”

Defendants state, “Prism’s proposed construction would

render the word ‘protected’ superfluous.

Indeed, under Prism’s

construction, ‘protected resources’ can be any computer resource
accessible by any means” (Filing No. 114, at 30).

Defendants

continue, “[U]nder Prism’s construction, a popular website
outside of Defendants’ control and publicly available to anyone
with an internet connection, such as www.google.com, would be
considered a ‘protected computer resource’” (Id., at 30 n.16).
On the other hand, Prism states that “there is nothing
in the asserted patent claims, Specification, or prosecution
history that requires the ‘protected resources’ or ‘protected
computer resources’ to be stored in any particular location or
only be accessible by a server within the secure transaction
system” (Filing No. 118, at 34).

In addition,

When Prism’s construction is read
in the context of the claims,
protected resources refers only to
-41-

resources made available to a
client computer device after the
client computer device is
authenticated and authorized to
access the protected resources —
that is, the required
authentication and authorization
pathway is what makes the resources
protected.
(Filing No. 124, at 29).

In fact, “Internet access itself could

be the protected resource” (Markman Hearing Transcript, at
103:14).
2.

Specification Disclosure.

In the RIM Case, Prism

assisted the Court in its understanding of the ‘288 patent
specification by providing an annotated Figure 3:
In its most basic form, the
security system comprises four
elements, those being: (1) an
access server (34 purple), (2) a
client computer device (54 pink),
(3) a hardware key associated with
the client computer device (36
orange), and (4) an authentication
server (30 green). These elements
(or steps in the method claims) are
adapted to permit access to the
protect computer resources (yellow)
upon successful authentication and
authorization. Figure 3 of the
patent sets forth a very basic
overview of the invention:

-42-

(RIM Case, Filing No. 76, at 6-7) (internal citations omitted).
Thus Prism indicated to this Court that the protected computer
resources were located at the “secure transaction services.”
Prism specifically did not indicate that the protected computer
resources were located at the “un-secure transaction services,”
immediately to the right of the secure transaction services.
From this, defendants argue that “Prism’s construction in this
case allows the claimed ‘protected computer resources’ to be any
service, application, or content accessed in any way, including
the ‘un-secure transaction services’ that Prism excluded
previously” (Filing No. 114, at 34).
Further, Prism told this Court,
The purpose of the invention is to
secure access to the “protected
-43-

computer resources.” Protected
computer resources include computer
services, applications, content,
files, data or other information.
The invention controls access to
the protected content through an
authentication and authorization
process utilizing an access server
[item 34] and authentication server
[item 30]. Importantly, the
protected resources may be located
at the access server itself, or
remotely at other servers or
databases which are directly or
indirectly accessible to the access
server.
(RIM Case, Filing No. 76, at 7).

Prism did not suggest to the

Court that the “other servers or databases” wherein the
“protected resources may be located” are someone else’s servers
or databases, nor did it suggest that the “other servers or
databases” are outside of the invention entirely.

The

specification states, “The account holder software 36 is
installed on the account holder’s personal computer.

This

software enables a web browser 77 to access the transaction
services 78 provided by the secure transaction server” (‘288
patent, 8:56-59).

Hence the secure transaction services 78,

where the protected resources are located, are “provided by the
secure transaction server,” not some outside server.
Defendants emphasize this point by stating, “The
specification only describes a system that provides computer
resources (i.e., ‘transaction services’) that are stored within
the servers and computer systems of the company that hosts the

-44-

secure transaction system . . .” (Filing No. 114, at 31).
Defendants point out that the specification teaches,
A web master or a system
administrator needs to determine
which transactions are to be
protected and make sure that all
these transactions are organized in
separate directories from
unprotected transaction services.
In this way, the web server
configuration can be changed to
protect these particular
directories using the secure
transaction system.
(‘288 patent, 11:20-26).

The specification also states, “The

administration software 64 allows an administrator to define the
particular transaction services that can be accessed by an
account holder” (Id., 10:40-42).

This would not seem to be

possible if the protected computer resources (“particular
transaction services”) are located outside of the invention.
Prism emphasizes the importance of the Delaware Court’s
construction of the term including “selected computer resources,”
on which Prism’s proposed construction is based (Filing No. 118,
at 34).

Prism claims that the Delaware Court “specifically

rejected construing a related term (‘selected computer
resources’) in the ‘416 patent to include the limitation that the
protected resources need be stored in a particular location as
Defendants argue here” (Id.).

On this point, the Delaware Court

stated,

-45-

The specification discusses a
system whereby various web sites
are hosted through web servers
operating in conjunction with first
server computers8 that protect the
contents of the sites. Figure 3
shows the protected contents
residing outside of the first
server computer, with the path over
which protected contents can be
sent crossing through the ‘Service
Function’ block rather than the
server. Likewise, in Figure 4, the
protected content resides outside
the first server, and is accessed
by the server through the ‘Service
Function,’ which also resides
outside the first server computer.
Thus, the Court concludes that the
system disclosed in the
specification and corresponding
figures does not require the first
server computer to store the
resources it communicates to
subscribers. Rather, it allows the
server to act as a gatekeeper,
accessing selected computer
resources protected by the
invention either itself or through
a ‘Service Function’ block, and
communicating those resources to
subscribers.
Prism, 512 F. Supp. 2d at 186 (emphasis added) (internal
citations omitted).

8

Prism states that the asserted patent claims use the terms
“server computer” and “access server” rather than the “first
server computer” of the ‘416 patent. See Filing No. 118, at 34.
-46-

(‘288 patent, Fig. 4).
The Court first notes that the Delaware Court was
indeed construing a different term, “selected computer resources”
rather than “protected computer resources.”

The dispute in the

Delaware Case was as to whether the selected computer resources
had to be located at the first server computer or whether they
could be located on a server outside of the first server
computer.

Prism, 512 F. Supp. 2d at 185-86.

Unlike defendants’

construction in the Delaware Case, defendants’ construction here
does not specifically require a particular server to hold the
protected computer resources; it only states that such a server
is “within the secure transaction system.”

-47-

While the Delaware Court did state that Figures 3 and 4
did not require the selected computer resources to be located on
the first server computer, the Delaware Court did not go so far
as to say that the selected computer resources or the web servers
could be located outside of the secure transaction system.

The

Court takes Prism at its word when it located the protected
computer resources at the secure transaction services, that is,
at a location within the invention and provided by the secure
transaction server.
In consideration of the claim language and the
specification of the asserted patents, the Court is persuaded to
amend its previously stipulated construction.

The Court

construes each of the “protected computer resources” terms
(“protected computer resources,” “protected resources,” and
“protected resources of at least one server computer”) to mean
“Computer services, applications, or content that is stored
within the secure transaction system that can only be accessed by
a server within the secure transaction system.”
D.

“digital identification”

Prism’s Proposed
Construction:

Defendants’ Proposed
Construction:

“digital data whose value is
known in advance or calculated
[at] the moment”

“digital data stored on a
hardware key / access key
whose value is known in
advance or calculated at the
moment”

-48-

Here, Prism’s construction of “digital identification”
is identical to the Delaware Court’s construction of the same
term in the ‘416 patent and to this Court’s construction of the
same term in the ‘288 patent in the Adobe Case.

Defendants’

proposed construction differs in that it requires that the
digital identification be “stored on a hardware key/access key.”
As construed by the Court, a hardware key / access key
is “an external hardware device or external object from which the
predetermined digital identification can be read” (see below).
But the claims of the ‘288 patent make clear that the digital
identification, while residing on the hardware key / access key,
can also be stored on the authentication server.

For example,

117. A system for controlling
access to protected computer
resources provided via an Internet
Protocol network, the system
comprising:
at least one authentication server
having an associated database to
store (I) identity data of at least
one access server, (ii) a digital
identification associated with at
least one client computer device
requesting access to said protected
computer resources, and (iii) data
associated with said protected
computer resources;
said at least one client computer
device having an associated access
key, said digital identification
being derived from said access key;
. . .
(‘288 patent, 45:1-13).

Moreover, the ‘288 patent specification

reads as follows: “The digital ID created by the biometric data
-49-

would be compared to the digital ID already stored in the
transaction clearinghouse for authenticity” (Id., 22:20-22).
The parties do not seem to be at odds on this point.
Prism avows that “the claims and Specification [of the ‘288
patent] . . . state that digital identification may be stored in
both a hardware key/access key and in a database associated with
the authentication server” (Filing No. 124, at 30).

Meanwhile,

defendants state, “this portion of the [‘288 patent]
specification [22:20-22] teaches that the digital identification
is stored on the hardware/access key as well as at the
authentication server” (Filing No. 126, at 26).

The Court notes

that if the digital identification is not stored in two places,
then a comparison cannot be made.
The Court agrees with Prism’s assessment:

“[T]he

claims expressly recite the digital data [sic] being in a
particular place, whether it’s on the access key or on the
database, so to put the location into the construction seems to
be doubling up on what the claims expressly require” (Markman
Hearing Transcript, at 113:2-6).

The Court finds that

defendants’ construction of digital identification is redundant
given the construction of hardware key / access key below and in
light of the relevant claims that include the term being
construed.

The Court adopts the same construction as in the

Delaware Case and in the Adobe Case:

-50-

“Digital identification” is

construed to mean “digital data whose value is known in advance
or calculated at the moment.”
E.

“Identity Data” terms

Prism’s Proposed
Constructions

Defendants’ Proposed
Constructions

“identity data”: “data
sufficient for the system to
determine whether a person,
organization, and/or computer
is authentic and/or is
entitled to access protected
resources”

“identity data”: Defendants
believe that the term
“identity data” should be
construed within the phrases
in which it appears in the
claims, not as a separate
term, but in the event the
Court determines “identity
data” should be construed
alone, the term should be
construed as: “Data including
digital identification
sufficient for the system to
determine whether a person,
organization, and/or computer
is authentic and/or is
entitled to access protected
resources”

“identity data associated with
at least one client computer
device”: “data related to the
client computer that is
sufficient for the system to
determine whether a person,
organization, and/or computer
is authentic and/or is
entitled to access protected
resources”

“identity data associated with
at least one client computer
device”: “Data including
digital identification,
sufficient for the system to
determine whether a client
computer device is authentic
and/or is entitled to access
protected resources”

“identity data of at least one
access server”: “data related
to the access server that is
sufficient for the system to
determine whether a person,
organization, and/or computer
is authentic and/or is
entitled to access protected
resources”

“identity data of at least one
access server”: “data
sufficient for the system to
determine whether an access
server is authentic and/or is
entitled to access protected
resources”

-51-

The Delaware Court construed the term “‘identity data’
as it relates to the subscriber client computer” in the ‘416
patent to mean “data sufficient for the patented system to
determine whether a person, organization, and/or computer is
authentic and/or is entitle[d] to a[cc]ess said selected computer
resources” (Delaware Order at 3).

In the Adobe Case, this Court

construed the term “identity data” in the context of the ‘288
patent to mean “data sufficient for the system to determine
whether a person, organization, and/or computer is authentic
and/or is entitled to access protected resources,” which is
identical to Prism’s current proposal (2012 Adobe Order, at 31).
The parties disagree as to the construction for the
term “identity data” by itself, or, in the alternative, for the
constructions of two phrases wherein “identity data” appears.
Yet the parties are in agreement as to a third phrase in which
“identity data” appears and have stipulated as follows: “Identity
data of a subscriber identity module associated with at least one
client computer device” is stipulated to mean “data sufficient
for the system to determine whether a subscriber identity module
associated with at least one client computer device is authentic
and/or is entitled to access protected resources” (Schedule B,
Filing No. 110).

This stipulation essentially adopts this

Court’s construction of “identity data” from the Adobe Case and
inserts it into the phrase to be construed.

In light of this

stipulation, the Court in this case will not construe the
-52-

individual phrase “identity data” again, but will construe the
phrases in which it appears, consistent with the Adobe Case
construction, having not been “otherwise compelled” to give the
same claim term in the ‘288 patent a different construed meaning.
Omega Eng’g, 334 F.3d at 1334.
1.

“Identity data associated with at least one client

computer device.”

The parties’ proposed constructions of this

phrase differ in two ways.

First, defendants propose that the

phrase “including digital identification” be inserted into the
construction.
Prism states, “Such a construction would render
superfluous claim terms in the ‘288 patent that separately recite
this limitation -- a violation of a bedrock principle canon of
claim construction” (Filing No. 118, at 31).

Prism continues,

“For example, claims 1, 31, 62, and 87 of the ’288 patent
specifically recite identity data comprising ‘digital
identification.’

By adding a ‘digital identification’ limitation

to the term ‘identity data’, Defendants effectively render
superfluous the term ‘comprising said digital identification’ . .
.” (Id., at 31 (internal citation omitted)).
Prism also states that “Defendants’ proposed
construction violates the doctrine of claim differentiation.
When Prism wanted to draft claims that required digital
identification, it did so.

And when Prism [wanted to draft]

claims that did not recite digital identification, it did so as
-53-

well” (Id., at 32).

“Prism sought and obtained claims with

different scope and these differences should not be rendered
meaningless” (Id.).
Defendants emphasize the fact that while the ‘288
patent claims “explicitly require that the identity data of the
client computer device include a digital identification,” the
‘345 and ‘155 patents do not share such a requirement (Filing No.
114, at 36).

Defendants argue that the digital identification

must be read back into the ‘345 and ‘155 patents due to Prism’s
disclaimer during the prosecution of the ‘288 patent.
Specifically, defendants note Prism’s statement to the USPTO in
an attempt to distinguish a prior art reference (“Tabuki”):
In the Office Action, the Examiner
rejected claims 1-8, 11, 12, 15,
and 18 under 35 U.S.C. § 103(a) as
being unpatentable over U.S. Patent
No. 5,841,970 to Tabuki in view of
U.S. Patent No. 6,377,994 to Ault
et al. . . . The invention of
applicant’s claim 1 uses identity
data that includes digital
identification generated by a
hardware key associated with the
client computer device to identify
the client computer device. In
contrast, Tabuki’s invention uses a
pen tablet to capture and digitize
the user’s signature. This
digitized signature is held in
volatile memory in the tablet and
is discarded once sent to the
verification server. Therefore,
the signature data of Tabuki is not
digital identification generated by
a hardware key associated with the
client computer device to identify
the client computer device as
-54-

recited in amended claim 1 of
applicant’s invention.
(Ex. 12, Filing No. 117, at 21-22).
Prism responds, “What the prosecution history actually
shows is that Prism’s distinction over the Tabuki reference
focused on the differences between signature data described in
Tabuki and the particular way the claimed digital identification
was generated in the pending claim . . .” (Filing No. 124, at
34).
This argument focusing on Tabuki’s
use of a pen tablet to capture and
digitize a signature as being
different than the particularly
claimed digital identification
being generated by a hardware key
in no way is a clear and
unequivocal disclaimer that
identity data can only come from an
external hardware key, as argued by
Defendants.
(Id., at 35).

The Court agrees with Prism that its statement to

the USPTO does not clearly and unequivocally disavow an invention
that does not include a digital identification.
The second difference in the proposed constructions has
to do with the location of the identity data.

Prism’s proposed

construction translates “associated with” as “related to.”
Defendants’ proposed construction more faithfully follows the
construction of “identity data” by itself, with the more specific
“client computer device” replacing “a person, organization,
and/or computer.”

The Court finds that defendants’ substitution

is a straightforward application of the previous construction
-55-

relative to the claim language being construed with this phrase,
and the Court adopts this aspect of defendants’ construction.
The Court construes “identity data associated with at
least one client computer device” to mean “data sufficient for
the system to determine whether a client computer device is
authentic and/or is entitled to access protected resources.”
2.

“Identity data of at least one access server.”

Prism’s proposed construction translates “of” as “related to.”
Again, defendants’ proposed construction more faithfully follows
the construction of “identity data” by itself, with the more
specific “access server” replacing “a person, organization,
and/or computer.”

The Court construes “identity data of at least

one access server” to mean “data sufficient for the system to
determine whether an access server is authentic and/or is
entitled to access protected resources.”
F.

“hardware key / access key” (and “external”)

Prism’s Proposed
Construction:

Defendants’ Proposed
Construction:

“An external hardware device
or object from which the
predetermined digital
identification can be read”

“An external hardware device
or external object from which
the predetermined digital
identification can be read”

The Delaware Court construed “hardware key” to mean “an
external hardware device or object from which the predetermined
digital identification can be read,” and this Court gave the same
construction to both “hardware key” and “access key” in the Adobe
-56-

Case.

Defendants now wish to add another instance of “external”

before the word “object,” asking the Court to verify that the
word “external” in the Adobe Case construction modifies both
“hardware device” and “object.”
1.

“Shared Object 66.”

At oral argument, Prism

admitted that there was “[n]o dispute that external modifies
object and external hardware device from Court’s prior
construction” (Prism Slide 38; see Markman Hearing Transcript, at
116:24-117:6).
bears scrutiny.

But Prism’s understanding of the word “object”
Prism emphasizes the presence of a “shared

object 66” in the ‘288 patent specification, where the “object”
is software (Filing No. 118, at 23).

For example, “The server

shared object 66 is a binary module which provides function
pointers to a web server 69 to perform secure transaction server
34 specific operations” (‘288 patent, 7:59-61).

Prism claims

that a person having ordinary skill in the art would then
understand that the “object” in the hardware key construction
could be software as well (Filing No. 118, at 23).
Defendants disagree:

“Although [‘288 patent, 7:59-61]

mentions an ‘object’ that is software, the passage refers to the
secure transaction system of the invention, which has nothing to
do with the hardware key/access key associated with the client
computer device.

The specification never describes internal

software as the hardware key/access key” (Filing No. 126, at 17).

-57-

As defendants point out, the ‘288 patent specification describes
the hardware key as follows:
In accordance with another
important aspect of the present
invention, and referring to FIG.
21, a hardware token access device
450 for use as the hardware key 54
is shown in the illustrated
functional block diagram. The
access device 450 is an external
hardware device, such as the iKey
1000 USB Smart Token device
manufactured by Rainbow
Technologies of Irvine, Calif. The
hardware token access device 450
preferably connects to the USB port
of the account holder’s personal
computer. The major function of
the hardware token access device
450 is to uniquely identify a [sic]
account holder that desires to
access the transaction services and
computer resources of an untrusted
network, such as the Internet. It
is used in conjunction with the
username, password, and/or PIN to
provide two factor authentication.
Generally, two factor
authentication provides that
something is known (e.g., the
username and password) and
something is held (e.g., the
physical hardware token that is
attached to the computer or built
into the computer). While the
Rainbow iKey 1000 USB Smart Token
is the preferred embodiment for the
hardware token access device 450,
it should be understood that the
two factor authentication could be
provided by some other physical
device, such as a credit card, a
key, an ATM card, or the like which
is known to have been assigned and
given to a specific person.
(‘288 patent, 19:30-53).
-58-

The Court does not doubt that a person skilled in the
art would read “shared object 66” as referring to software.

But

was that the understanding of the word “object” by the Delaware
Court at the time of its construction of hardware key, or was
“object” taken as a synonym of or variant on “device?”

After

all, if the “object” in the construction were taken to mean
“software,” it would lead to the anomalous result that a
“hardware key” could be construed as “software from which the
predetermined digital identification can be read,” reading out
the “hardware” limitation of “hardware key” entirely.
An examination of the Delaware Memorandum answers the
question.

In its brief, Prism pointed out to the Delaware Court

that “[t]he ‘416 patent specifically teaches that the hardware
key may be attached to and separable from the user’s computer, or
it may be built in to the computer” (Ex. 5, Filing No. 116, at
34).

The Delaware Court rejected this contention:
After reviewing the term “hardware
key” in the context of the
specification, the Court concludes
that the specification requires
that the hardware key be an
external hardware device. The
Court declines to adopt Plaintiff’s
proposal that the key can be built
into the computer, because the
‘major function of the [hardware
key] is to uniquely identify a
user,’ and the specification
teaches that the key should be
something ‘which is known to have
been assigned and given to a
specific person.’ A hardware key
built in to a computer is
-59-

computer-specific, not
user-specific.
Prism, 512 F. Supp. 2d at 188 (internal citations and footnote
omitted).
The Delaware Court does not explain why it added the
words “or object” to the construction.9

Moreover, Prism did not

alert the Delaware Court to the ostensible difference between the
terms “device” and “object” in its opening brief.

But given the

Delaware Court’s interpretation of “hardware key” above, this
Court cannot imagine that by adding the word “object,” the
Delaware Court would negate its clear statement that “the
specification requires that the hardware key be an external
hardware device.”

And without a doubt, in this Court’s adoption

of the Delaware Court’s construction in the Adobe Case, this
Court intended only the usual and everyday meaning of the word
“object,” and not the context of software.
2.

External Object.

During the Adobe Case

construction of hardware key, the phrase “external hardware
device or object” was not in dispute.

Defendants state, “[I]n

Adobe, Prism did not dispute that the access key must be
external.

Prism should not now be allowed to take a position

inconsistent with the one it took in Adobe” (Filing No. 126, at
17 (internal citation and footnote omitted)).

9

The Court finds,

Prism’s proposed construction for hardware key was “a
device or object from which data may be read or emitted” (Ex. 5,
Filing No. 116, at 33).
-60-

as it intended from the beginning, that the word “external” also
modifies the word “object,” as Prism itself now admits.
Defendants originally proposed that “external” be
construed as “physically located outside of and physically
attached to and detachable from,” a narrow definition that would
negate the Delaware Court’s conclusion that the hardware key need
not be physically attached:
Though the invention’s preferred
embodiment involves a hardware key
that is physically attached to the
subscriber client computer via a
port interface, the specification
also lists acceptable alternatives
to the preferred embodiment which
need not be physically attached,
including “a credit card, a key, an
ATM card, or the like which is
known to have been assigned and
given to a specific person.”
Therefore, the Court finds that the
specification anticipates hardware
keys which are not physically
attached.
Prism, 512 F. Supp. 2d at 188-89 (quoting ‘416 patent, 22:1-5).
The parties have now stipulated that the word
“external” should be given its plain and ordinary meaning.

Yet

Prism claims that the “plain and ordinary meaning” of “external”
is “separate from” (Filing No. 118, at 21).

While defendants’

original proposed construction was too narrow, the Court finds
that Prism’s definition is too broad, and is not, in fact, the
plain and ordinary meaning of the term.

Webster’s New College

Dictionary defines “external,” as relevant here, as follows:
“relating to, existing on, or connected with the outside or an
-61-

outer part.”

Webster’s New College Dictionary Third Edition 405

(Houghton Mifflin Harcourt Publishing Company 2008).

Similarly,

the New Oxford American Dictionary defines “external,” as
relevant here, as follows:

“belonging to or forming the outer

surface or structure of something.”

New Oxford American

Dictionary Third Edition 613 (Oxford University Press 2010).
Both definitions are more narrow than Prism’s “separate from,”
because they contain the concept of “outside” or “outer.”
The Federal Circuit advises a district court to act
under these circumstances, so as to avoid requiring a jury to
construe a term in violation of Markman:
A determination that a claim term
“needs no construction” or has the
“plain and ordinary meaning” may be
inadequate when a term has more
than one “ordinary” meaning or when
reliance on a term’s “ordinary”
meaning does not resolve the
parties’ dispute. In this case,
for example, the parties agreed
that “only if” has a common
meaning, but then proceeded to
dispute the scope of that claim
term, each party providing an
argument identifying the alleged
circumstances when the requirement
specified by the claim term must be
satisfied (e.g., at all times or
during steady state operation). In
this case, the “ordinary” meaning
of a term does not resolve the
parties’ dispute, and claim
construction requires the court to
determine what claim scope is
appropriate in the context of the
patents-in-suit. This court has
construed other “ordinary” words

-62-

for these and other related
reasons. . . .
When the district court failed to
adjudicate the parties’ dispute
regarding the proper scope of “only
if,” the parties presented their
arguments to the jury. By failing
to construe this term, the district
court left the jury free to
consider these arguments.
O2 Micro, 521 F.3d at 1361-62.

Consequently, the Court will

provide a construction for the term “external.”
The Court’s search of the ‘288 patent for the word
“external” indicates that the term does not appear in the claims.
The term does appear in the claims of the ‘345 patent and the
‘155 patent, however, in the context of an “external device” or
an “external object” (See ‘345 patent, claims 6, 7, 10, 54, 55,
and 58; ‘155 patent, claims 4, 5, 6, 7, 41, 42, 43, and 44).
The Court’s search also indicates that the term appears
in the specification in the quote above (‘288 patent, 19:30-53),
plus one other:

“A read/write control logic block 484 manages

all the internal and external transfer of data controlled status,
while a control register 486 initializes the functional
configuration of the access device 450” (Id., 19:65-20:2).

Also

relevant is the Delaware Memorandum, which, as quoted above,
clearly uses the term “external” to oppose the concept of “built
in to the computer.”
After consideration of the claims themselves, the
specification, the Delaware Memorandum, and appropriate extrinsic
-63-

evidence, the Court construes the term “external” to mean:
“relating to, existing on, or connected with the outside or an
outer part.”
In summary, in this Court’s construction of the term
“hardware key,” the word “external,” as construed here, modifies
each of the terms “hardware device” and “object.”

The Court

construes “hardware key” and “access key” each to mean “an
external hardware device or external object from which the
predetermined digital identification can be read,” with the
understanding that this construction is only meant to clarify,
but not augment, previous constructions of the same terms.
G.

“authorization level(s)”

Prism’s Proposed
Construction:

Defendants’ Proposed
Construction:

Prism argues that no
construction is required and
that the term should be given
its plain and ordinary
meaning.

“A value identifying
particular protected computer
resources that are authorized
by the access server to be
received by the client
computer device”

“‘[I]f we once begin to include elements not mentioned
in the claim, in order to limit such claim . . . , we should
never know where to stop.’”

Phillips, 415 F.3d at 1312 (quoting

McCarty v. Lehigh Valley R.R. Co., 160 U.S. 110, 116 (1895)).
The term “authorization level” was not construed in
either the Delaware Case or the Adobe Case.

But the related term

“authorizing” was construed to mean “determining whether to grant
-64-

access to,” as stipulated by the parties in the Adobe Case, and
it is also so stipulated here.
Prism cites dependent claim 39 of the ‘345 patent:
39. The method of claim 1, further
comprising assigning one of a
plurality of authorization levels
to the at least a portion of the
protected computer resources,
assigning a particular
authorization level to the identity
data associated with the at least
one client computer device, and
only permitting access to
particular protected computer
resources by the at least one
client computer device permitted by
the particular authorization level.
(‘345 patent, 36:36-43).

Prism states:

“There is no dispute as

to the meaning of ‘authorization,’ i.e. ‘determining whether to
grant access to.’

Similarly, ‘levels’ has a well understood

plain and ordinary meaning in this context -- i.e., differing
degrees.

Accordingly, no particular construction is warranted

for ‘authorization levels’ beyond its plain and ordinary meaning”
(Filing No. 118, at 41).

Prism specifically objects to

defendants’ proposed construction because it “improperly imports
two limitations to the term” (Id., at 41).
The Court agrees that defendants’ proposed construction
inappropriately limits the term “authorization level(s).”

The

parties have stipulated to the construction of the terms
“authorize” and “authorizing,” and the Court finds that the term
“level(s)” should be given its plain and ordinary meaning.

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Consequently, the Court will not provide a construction for the
term “authorization level(s).”
IT IS ORDERED:

Accordingly,

For the purposes of United States

Patent Nos. 7,290,288, 8,127,345, and 8,387,155,
1) As jointly stipulated by the parties (Schedule B,
Filing No. 110), the following terms are construed as indicated:
a.

“Access server” is construed to mean “server
software that makes available information or other
resources.”

b.

“Adapted to forward” / “adapted to forward . . .
said identity data . . .” is construed to mean
“configured to forward” / “configured to forward
. . . identity data.”

c.

“Adapted to selectively require” is construed to
mean “configured to choose to require.”

d.

“Authenticate” / ”authenticating” is construed to
mean “determine/determining that something is, in
fact, what it purports to be.”

e.

“Authentication server” is construed to mean
“server software that is independent of the access
server and is capable of storing data and
controlling access to protected computer resources
of the access server.”

f.

“Authorize / “authorizing” is construed to mean
“determine / determining whether to grant access
to.”

g.

“Deriving” / “derived” is construed to mean
“calculating / calculated from a source.”

h.

“Generating” / “generate[d]” is construed to mean
“bringing / bring / brought into existence.”

I.

“Identity data of a subscriber identity module
associated with at least one client computer
device” is construed to mean “data sufficient for
the system to determine whether a subscriber
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identity module associated with at least one
client computer device is authentic and/or is
entitled to access protected resources.”
j.

“Selectively requiring. . . [said/the] client
computer device to forward” is construed to mean
“choosing to require that the client computer
device transmit certain information.”

k.

“Server computer” is construed to mean “a computer
that makes available information or other
resources.”

l.

“One of derived and generated” is construed to
mean “calculated from a source or brought/bringing
into existence.”

2) As jointly stipulated by the parties (Schedule B,
Filing No. 110), the preambles of the asserted claims are
limiting.
3) The Court construes disputed terms as follows:
a.

The “Internet Protocol network” terms (“an
Internet Protocol network,” “network utilizing at
least one Internet Protocol,” and “a network
utilizing at least one Internet Protocol”) are
each construed to mean “an untrusted network using
any protocol of the Internet Protocol Suite
including at least one of IP, TCP/IP, UDP/IP,
HTTP, and HTTP/IP, where untrusted is defined as a
public network with no controlling organization,
with the path to access the network being
undefined and the user being anonymous.”

b.

“Forward” is construed to mean “transmit.” The
Court will not construe the word “receive” and
will give it its plain and ordinary meaning.

c.

The “protected computer resources” terms
(“protected computer resources,” “protected
resources,” and “protected resources of at least
one server computer”) are construed to mean
“computer services, applications, or content that
is stored within the secure transaction system
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that can only be accessed by a server within the
secure transaction system.”
d.

“Digital identification” is construed to mean
“digital data whose value is known in advance or
calculated at the moment.”

e.

“Identity data associated with at least one client
computer device" is construed to mean “data
sufficient for the system to determine whether a
client computer device is authentic and/or is
entitled to access protected resources.”
“Identity data of at least one access server” is
construed to mean “data sufficient for the system
to determine whether an access server is authentic
and/or is entitled to access protected resources.”

f.

“Hardware key” and “access key” are each construed
to mean “an external hardware device or external
object from which the predetermined digital
identification can be read,” with the
understanding that this construction is only meant
to clarify, but not augment, previous
constructions of the same terms.
“External” is construed to mean: “relating to,
existing on, or connected with the outside or an
outer part.”

4) The Court will not provide a construction for the
term “authorization level(s).”
DATED this 30th day of July, 2013.
BY THE COURT:
/s/ Lyle E. Strom
____________________________
LYLE E. STROM, Senior Judge
United States District Court

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