CROSS ATLANTIC CAPITAL PARTNERS, INC. v. FACEBOOK, INC. et al

Filing 54

NOTICE by CROSS ATLANTIC CAPITAL PARTNERS, INC. of Filing of Plaintiff's Memorandum in Support of its Proposed Claim Construction (TECCE, FREDERICK)

CROSS ATLANTIC CAPITAL PARTNERS, INC. v. FACEBOOK, INC. et al

D o c . 54

IN THE UNITED STATES DISTRICT COURT F O R THE EASTERN DISTRICT OF PENNSYLVANIA C R O S S ATLANTIC CAPITAL P A R T N E R S , INC., P l a i n t i ff, vs. F A C E B O O K , INC. and T H E FACEBOOK, LLC, D e fe n d a n t s . : : : : : : : : : : :

C IV IL ACTION N O . : 07-CV-02768 H O N . JOHN R. PADOVA

P L A I N T I F F CROSS ATLANTIC CAPITAL P A R T N E R S , INC.'S MEMORANDUM IN S U P P O R T OF ITS PROPOSED CLAIM CONSTRUCTION T h o m a s J. Duffy, Esquire (PA ID # 34729) P a tric k J. Keenan, Esquire (PA ID # 53775) D uffy & Keenan T h e Curtis Center, Suite 1150 In d e p e n d e n c e Square West P h ila d e lp h ia , Pennsylvania 19106 (2 1 5 ) 238-8700 (2 1 5 ) 238-8710 (Fax) F r e d e r i c k A. Tecce, Esquire M CS HEA\T ECCE, P.C. T h e Bell Atlantic Tower - 28 th Floor 1 7 1 7 Arch Street P h ila d e lp h ia , Pennsylvania 19103 (2 1 5 ) 599-0800 (2 1 5 ) 599-0888 (Fax) C o u n s e l for plaintiff C r o s s Atlantic Capital Partners, Inc.

Dockets.Justia.com

T A B L E OF CONTENTS T a b le of Authorities . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . iii I. II. In t r o d u c t i o n . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 B a c kgr o u n d . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 A. B. III. P ro c e d u ra l Background . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 F a c tu a l Background . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3

C la im Construction Principles . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3 A. B. In t r o d u c t i o n . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3 T h e Court Should Construe The Claims W ith Reference to the Accused Product . . . . . . . . . . . . . . . . . . . . . . . . . . 5 T h e Court May Consider Extrinsic Evidence . . . . . . . . . . . . . . . . . . . . . . 6

C. IV .

C la im Construction Arguments . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7 A. In t rin s ic Evidence that the Court Should Use to Construe the Claims of the `629 Patent is Limited to the Claims and the Specification . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7 T h e Accused Device . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8 X A C P Proposed Definitions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 1 1. 2. 3. 4. 5. C o m m u n ity . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 1 C re a tin g a Community . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 4 C re a tio n Transmission . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 5 R e gis te re d User . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 6 C re a te a Community . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 7

B. C.

-i-

6. 7. 8. 9. 10. 11. 12. 13. 14. 15. 16. 17 18. 19. 20. 21. 22. 23. 24. 25. 26.

C o m m u n ity Identification Information . . . . . . . . . . . . . . . . . . . . 1 8 Se le c tio n . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 9 A p p lic a tio n Object . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2 0 C o m m u n ic a tio n s Address . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2 2 C re a te d Community . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2 4 T ra n s m ittin g . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2 5 U s e r Interface . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2 8 Su b s c rib e . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2 9 Su b s c rip tio n Object . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3 1 P u b lis h e d . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3 2 C o m m u n ity Information . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3 3 C o m m u n ity Fields . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3 4 U s e r Fields . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3 6 V e n d o r Fields . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3 7 R e c e ive r Module . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3 9 C re a tio n Module . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4 1 Su b s c rip tio n Module . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4 2 Su b s c rib in g . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4 3 Se le c tin g . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4 4 C o m m u n ity is Created . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4 5 T ra n s m itte r Module . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4 6 -ii-

27. IV .

D is p la y Module . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4 8

C O N C L U S IO N . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5 1

-iii-

T A B L E OF AUTHORITIES Page D ig ita l Biometric, Inc. v. Identix, Inc., 149 F.3d 1335 (Fed. Cir. 1998) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4 H e ra e u s Electro-Nite Co. v. Midwest Instrument Company, Inc., WL 3274147 (E.D.Pa., Nov. 1, 2007) (Padova, J) . . . . . . . . . . . . . . . . . . . . . . . . . 4 K u m a r v. Ovonic Battery Co., Inc. 351 F.3d 1364 (Fed. Cir. 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5 L iebe l-Fla rsh eim Company v. Medrad, Inc., 358 F.3d 898 (Fed. Cir. 2004) . . . . . . . . 5 1 M a r k m a n v. Westview Instrs., 52 F.3d 967 (F ed . Cir. 1995), aff'd, 517 U.S. 370 (1996) . . . . . . . . . . . . . . . . . . . . . . . . 4 , 5, 7 M B O Laboratories, Inc. v. Becton, Dickinson & Co., 474 F.3d 1323 (Fed. Cir. 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 4 N o rth American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335 (Fed. Cir. 2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 1 , 38, 49 Phillips v. AWH Corp, 415 F.3d 1303 (Fed. Cir. 2005) . . . . . . . . . . . . . . . . . . . . . p a ss im P itney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298 (Fed. Cir.1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 4 R e n is h a w PLC v. Marposs Societa' per Azioni, 158 F.3d 1243 (Fed. Cir. 1998) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4 S m ith k lin e Beecham Consumer Healthcare, L.P. v. Colgate Palmolive Co., No. 99-2533, 1999 WL 1246924, * 2 (E.D. Pa., Dec. 22, 1999) . . . . . . . . . . . . . 6 Vitr o n ic s Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) . . . . . . . . . . . . 4 , 5 W ils o n Sporting Goods Co. v. Hillerich & Bradsby, 442 F.3d 1322 (Fed. Cir. 2006) . . 6

-iv-

I.

IN T R O D U C T IO N P la in tiff Cross Atlantic Capital Partners, Inc. ("XACP") has brought this action

a ga in s t defendants Facebook, Inc. and Thefacebook, LLC (collectively "Facebook" or "D e fe n d a n ts " ) for their infringement of the claims of United States Patent No. 6,519,629 B 2 ("`629 Patent"), entitled System for Creating a Community for Users with Common In te re s ts to Interact In. Cmpl., at Count I && 22-30. (A copy of the `629 Patent is a tta c h ed hereto as Exhibit A). To avoid infringement, the Defendants have proposed c laim constructions which: (1) unsupportably narrows the scope certain claim terms to e x c lu d e their accused device from the claim scope, and (2) unsupportably broadens other c la im terms in an attempt to invalidate the claims by capturing the prior art within the claim scope. The claims of the `629 Patent represent specific groundbreaking technology c o n c e ived almost six years before Facebook was even formed. This Court is respectfully re q u e ste d to reject defendants' proposed claim constructions and adopt those proposed by p la in tiff XACP as set forth herein. II. B AC K GR O U N D A. P r oce dur a l Background

T h is case was commenced on July 3, 2007 when XACP filed its complaint for p a te n t infringement. On July 20, 2007, the summons and complaint were served on F a c e b o o k. (D.E. # 6.). On August 15, 2007, this Court approved the parties= stipulation ex tend ing the time for Facebook to answer or otherwise plead until September 4, 2007. -1-

(D .E . # 14.) On September 4, 2007, Facebook answered and counterclaimed seeking a d e c la ra tio n of non-infringement and invalidity regarding the >629 Patent. (D.E. # 16.). On September 10, 2007, Facebook filed a motion to transfer venue. (D.E. # 23). On Se p te m b e r 24, 2007, XACP filed its response in opposition to Facebook=s motion to tra n sfe r (D.E. # 31). The Court denied Facebook=s motion to transfer venue on Sep tem b er 28, 2007 (D.E. # 33). On September 24, 2007, this Court conducted a Preliminary Pretrial Conference. (See, Report at D.E. # 32). On October 15, 2007, the Court entered its Pretrial Sc h e d u lin g Order, which set a Markman hearing for January 25, 2008 at 10:00 a.m. in C o u rtroo m 17B. (D.E. # 36). On October 26, 2007, in accordance with the Court's 10/15/07 Schedule Order, X A C P served Defendants with a copy of the claim terms which XACP contended should b e construed and plaintiff's proposed definitions. A copy of XACP's proposed claim c o n stru c tio n s are attached hereto as Exhibit B. On December 10, 2007, Defendants s e rve d plaintiff with a copy of defendants' proposed claim construction. A copy of F ac eb o o k's proposed construction is attached hereto as Exhibit C. The Pretrial Scheduling Order also required submission of XACP's claim co n stru ctio n brief twenty-eight days before the hearing. 10/15/07 Scheduling Order at ¶ 4 (D .E . # 20).

-2-

B.

F a c tua l Background

F o r the purposes of claim construction, this Court need focus on the intrinsic re c o rd , i.e. the `629 Patent and its specification. The following factual background places th e intrinsic record in context and will be proven at trial. In the late 1990's, iKimbo, Inc. ("iKimbo") was formed to develop and c o m m e rc ia liz e the novel and ground-breaking technology conceived in large part by Jam es Harvey ("Harvey"). This technology includes, inter alia, systems and methods for c re a tin g an on-line community for users with common interests. On September 15, 1998, th e inventors filed the original application that eventually matured in United States Patent N o . 6,519,629 B2 (`629 Patent"). As with most start-up companies, iKimbo needed capital. In or about 2002, XACP m a n a ge d two funds known as "Cross Atlantic Technology Fund" ("XATF") and "The C o -In ve stm e n t 2000 Fund" ("CI2K"). In or about 2002, iKimbo sought capital from th o s e funds to finance its efforts to develop, market and commercialize Harvey's novel in ve n tio n s . On February 11, 2003, the United States Patent and Trademark Office issued th e `629 Patent to Harvey and the other inventors, and XACP is the present assignee of the Patent. III. C L A I M CONSTRUCTION PRINCIPLES A. I nt r oduc ti on

C o n stru c tio n of patent claims is a matter of law exclusively for the Court to d ec ide. Markman v. Westview Insts., Inc., 52 F.3d 967, 977 (Fed Cir. 1995), aff'd., 517 -3-

U .S. 370 (1996); Heraeus Electro-Nite Co. v. Midwest Instrument Company, Inc., 2007 W L 3274147 (E.D. Pa., Nov. 1, 2007) (Padova, J). Importantly, claims "should be so c o n stru e d , if possible, as to sustain their validity." Phillips v. AWH Corp., 415 F.3d 1 3 0 3 , 1327 (Fed. Cir. 2005) (en banc), cert. denied, 546 U.S. 1170 (2006)(citing Rhine v. C a s io , Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999)). The Court must first look to the words of the claims themselves, both asserted and n o n -asse rte d , to define the scope of the patented invention. Vitronics Corp. v. C o n c e p tro n ic , Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Claim construction "begins and e n d s in all cases with the actual words of the claim...." Renishaw PLC v. Marposs S o c ie ta ' per Azioni, 158 F.3d 1243, 1248-49 (Fed. Cir. 1998). "The actual words of the c la im are the controlling focus." Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1 3 4 4 (Fed. Cir. 1998). T h e words of the claim are to be given their "ordinary and accustomed meaning," a b se n t a special definition spelled out in the specification or prosecution history by the p aten t applicant. Renishaw, 158 F.3d at 1248-49. The "ordinary" meaning is determined a c co rd in g to an objective standard: "what one of ordinary skill in the art at the time of the in ve n tio n would have understood the term to mean." Markman, 52 F.3d at 986; see also Ph illip s , 415 F.3d at 1313. "[T]he 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 a p p e ars , but in the context of the entire patent, including the specification." Id. Thus, w h ile the claims themselves provide "substantial guidance" as to the meaning of claim -4-

te rm s , the claims "must be read in view of the specification of which they are a part." Phillips, 415 F.3d at 1315 (citing Markman, 52 F.3d at 979). The specification is "a lw a y s highly relevant to the claim construction analysis. Usually, it is dispositive; it is th e single best guide to the meaning of a disputed term." Id. at 1315 (quoting Vitronics, 9 0 F.2d at 1582). In addition to the words of the claims themselves and the specification, intrinsic evid en ce on which courts rely includes the prosecution history of the patent and prior art cited during the prosecution of the patent. Phillips, 415 F.3d at 1317 (courts look to the p ro s e c u tio n history to inform the "ordinary and accustomed" meaning of claim terms, as w e ll as limit the scope of the claims); Kumar v. Ovonic Battery Co., Inc. 351 F.3d 1364, 1 3 6 8 (Fed. Cir. 2003) ("[w]hen prior art that sheds light on the meaning of a term is cited b y the patentee, it can have particular value as a guide to the proper construction of the te rm , because it may indicate not only the meaning of the term to persons skilled in the a rt, but also that the patentee intended to adopt that meaning") (internal quotations and citatio n s omitted). B. T h e Court Should Construe The Claims W ith Reference to the Accused Product

T h e Federal Circuit has held that "in reviewing claim construction in the context o f infringement, the legal function of giving meaning to claim terms always takes place in th e context of a specific accused infringing device or process." Wilson Sporting Goods C o . v. Hillerich & Bradsby, 442 F.3d 1322, 1326 (Fed. Cir. 2006). The Federal Circuit

-5-

h a s further noted that knowledge of the accused product or process provides "meaningful co n text" for the first step of the infringement analysis - - claim construction. Wilson S p o r tin g Goods Co., 442 F.3d at 1326-27 (citing Multiform Dessicants, Inc. v. Medzam, L td ., 133 F.3d 1473, 1476-78 (Fed. Cir. 1988)). A lth o u gh this Court's claim construction should be independent of the accused d e vic e , it is convenient for the Court to concentrate on those aspects of the claim whose relatio n sh ip to the accused device is in dispute. Wilson Sporting Goods Co., 442 F.3d at 1 3 2 7 (citing Pall Corp. v. Hemasur, Inc., 181 F.3d 1305, 1308 (Fed. Cir. 1999)). C. T he Court May Consider Extrinsic Evidence

E x t rin s ic evidence, such as expert testimony, technical treatises, and dictionaries, also may assist the court in construing the claims. See Phillips, 415 F.3d at 1318; Vitr o n ic s, 90 F.3d at 1584 n.6 ("judges are free to consult such resources at any time... a n d may also rely on dictionary definitions when construing claim terms, so long as the d ic tio n a ry definition does not contradict any definition found in or ascertained by a re a d in g of the patent documents"); Smithkline, 1999 WL 1246924, at *2 ("[t]o perform claim interpretation, a court should consider: (I) the specification...; (ii) the patent's p rose cu tio n history, i.e., the `undisputed public record' of proceedings in the Patent and T ra d e m a rk Office, which is of primary significance in understanding the claims; and (iii) a n y extrinsic evidence, including expert and inventor testimony, dictionaries, and learned tre a tise s, provided that such evidence may not be used to vary or contradict the plain m e a n in g of the terms of the claims") (citing Markman, 52 F.3d at 979-81) (Giles, J.). -6-

E x trin s ic evidence is most useful to bridge the gap between the judge's existing kn o w ledge of the technology and the inventions disclosed in the patent, but it may never be used to contradict the intrinsic evidence by changing the meaning of the claims. See P h illip s, 415 F.3d at 1318. IV. C L A I M CONSTRUCTION ARGUMENTS A. In trin sic Evidence that the Court Should Use to Construe the Claims of the `629 Patent is Limited to the Claims and the Specification

In construing the claims at issue, the Court should consider the claims and the s p e c ific a tio n , but not the prosecution history since it is irrelevant. The prosecution h is to ry includes the complete record of proceedings before the United States Patent and T ra d e m ark Office ("PTO") and includes the prior art cited during the examination of the p aten t. Phillips, 415 F.3d at 1317. Thus, the prosecution history represents "an ongoing n e go tia tio n between the PTO and the applicant...." Id. at 1317. "The purpose of c o n su ltin g the prosecution history in construing a claim is to `exclude any interpretation th a t was disclaimed during prosecution.'" Id., quoting Chimie v. PPG Industries, Inc., 4 0 2 F.3d 1371, 1384 (Fed. Cir. 2005). There is no substantive evidence in the prosecution history upon which this Court n e e d rely in connection with its claim construction of the claim terms at issue since the `6 2 9 Patent was not subject to a prior art rejection. Since there was no prior art rejection, th e inventors never negotiated with the PTO or disclaimed any interpretations of the c la im s . More specifically, the original application which eventually matured in the `629

-7-

P a te n t was filed on September 15, 1998 and assigned Application Serial Number 0 9 /2 6 4 ,9 8 8 ("`988 Application"). Copies of the relevant portions of the `629 Patent's file h is to ry are attached hereto as Exhibit D. On February 25, 2000, the inventors filed a c o n tin u a tio n -p a rt application which was assigned Application Serial No. 09/513,844 ("`8 4 4 Application"). On October 2, 2001, the inventors filed a divisional patent a p p lic a tio n which eventually matured into the `629 Patent. That application was assigned Ap p lica tio n Serial No. 09/968,386 ("`386 Application"). Thereafter, on May 18, 2002, the PTO allowed all pending claims of the `386 A p p lic a tio n over the prior art. In doing so, the PTO stated: T h e following is an examiner's statement of reasons for allowance: None of the prior art of record taken singularly or in combination teaches or suggest receiving a creation transmission from a registered user to indicate that the user desires to c re a te a community, receiving a selection of at least one application object from th e registered user, and creating a community based on community identification in fo rm a tio n received from the registered use and the at least one application o b ject. Exhibit D at Notice of Allowance (D-17). Significantly, at no time did the PTO ever reject any of the originally submitted claims of the `629 Patent over the prior art. B. T he Accused Product

A s noted above, the Federal Circuit has held that claim construction should be in th e context of the accused infringing device. By understanding how Facebook's website o p era tes, the Court can better understand Facebook's motivation for certain claim term d e f i n i ti o n s . Facebook's website facebook.com describes itself as "a social utility that connects -8-

p e o p le with friends and others who work, study and live around them." Facebook further d e sc rib e s its website as being "made up of many networks, each based around a c o m p a n y , region, or school," and encourages users to "[j]oin the networks that reflect y o u r real-life communities to learn more about the people who work, live, or study a ro u n d you." Through a method, facebook.com allows registered users to create "G ro u p s" through which users with common interests can interact in, and such interests a re categorized by Facebook as including, but not limited to, business, activities, age, ga rd e n in g, history, languages, philosophy, politics, science, travel, wine, geography, m u s ic , and sports and recreation. It is Facebook's Groups application that infringes the c la im s of the `629 Patent. Recognizing the obviousness of it infringement, Facebook has very recently changed its Groups application in a unsuccessful attempt to avoid i n f r in ge m e n t . Facebook's method for creating Groups and inviting others to join the Group is e ss e n tially as follows: · T h e Facebook user registers on facebook.com by providing, inter alia, his or her full name, affiliation, email address, password, and date of birth. See Exhibit E-1, w h ich is a screen shot of a web page on facebook.com. T h e registered user, who desires to create a Group, clicks on a "Create a New G rou p " or "+Create a New Group" button on Facebook's website. See Exhibit E2. An electronic form is displayed for the registered user to complete, and the form c o n ta in s fields for the following Group identification information to be supplied b y the registered user: group name, network, group description, group type, recent n ew s, office, website, email, street, and city/town. See Exhibit E-3.

·

·

-9-

·

F a c e b o o k receives a selection of at least one application object from the registered u s e r through an electronic form which contains fields that permit the selection of a t least one of the following application objects: "Related Groups," "Discussion B o a rd , " "The Wall," "Photos," "Videos," and "Posted Items." See Exhibit E-3 (sin c e this screen shot was taken, the Videos Posted Items application objects were a d d e d ). Until very recently, the user would select the application object(s) he or s h e wanted to include in the new Group by checking a box next to each such a p p lic a tio n object. Just recently, Facebook changed this part of its method so that th e user selects the application object(s) he or she does not want to include in the n ew Group by un-checking a box next to each such application object. A f te r setting forth the Group identification information and selecting the at least o n e application object in the electronic form, the registered user clicks on a "C re a te Group" button. The website then informs the registered user that "Your gro u p has been created." See Exhibit E-4. After the new Group is created, the user can invite members to join the Group. Through an electronic form, facebook.com prompts the registered user to "Invite p eo p le who are not on Facebook Via Email: (Enter emails separated by commas)." A fte r the registered user sets forth an email address in the form, Facebook prompts the registered user to click on an "Add" button. See Exhibit E-5. A fte r the registered user clicks on the "Add" button, the website acknowledges re c e ip t of the email address by removing the email address from the previously p o p u la te d field entitled "Invite people who are not on Facebook Via Email: (Enter e m a ils separated by commas)," informing the registered user that "1 person has not b e e n sent an invitation yet" and displaying the designated email addressee in the "Se n d Invitations" field, and prompting the registered user to click on a "Send In vi tatio n s" button. See Exhibit E-6. T h e registered user then clicks on the "Send Invitations" button, whereupon F a c e b o o k sends to the invited user's email address an email which includes an e lec tro n ic link to the created Group. Upon clicking on the link, the Group is la u n c h ed and transmitted to the invited user. At the Group web page, the invited u ser its then promoted to click on a "Join this Group" button. See Exhibit E-7 & 8. F a c e b o o k's method for creating a Group and inviting others to join the Group

·

·

·

·

in frin ge s claims 1-4, 9-12, 17-20, and 25-28 of the `629 Patent. F ac eb o o k's website infringe the remaining claims of the `629 Patent. -10-

Other aspects of

C.

X A C P 's Proposed Definitions

C la im 1 of the `629 Patent reads:1 1. A method for creating a community for users with common interests to in ter a c t in, the method comprising the steps of: receiving a creation transmission from a registered user, the creation transmission in d ica tin g that the registered user desires to create a community; receiving community identification information from the registered user; receiving a selection of at least one application object from the registered user; creating a community based on the community identification information and the a t least one application object; receiving at least one communications address designated by the registered user, th e at least one communications address corresponding to a user to receive a c re a te d community; and transmitting the created community based in part on the at least one communications address. Exhibit A at Col. 330, line 65 - Col. 31, line 17. 1. C om m unit y

The term "community" is used independently or as a part of a phrase in most of th e 32 claims of the `629 Patent, including Claim 1, and should therefore be separately c o n stru e d by the Court. As noted above, the specification is "the single best source" of th e meaning of the claim term at issue and is "usually dispositive." Phillips, 415 F.3d at 1 3 1 5 (The specification is "always highly relevant to the claim construction analysis.

The specific claim elements subject to construction are hi-lighted to identify their relationship to the remainder of the claims. North American Container, Inc. v. Plastipak P a ck a g ing , Inc., 415 F.3d 1335, 1344-1345 (Fed. Cir. 2005) (terms must be construed with reference to the other words in the claim)(citations omitted). -11-

1

U s u a lly , it is dispositive; it is the single best guide to the meaning of a disputed te rm . ")(c itin g Vitronics, 90 F.2d at 1582). The specification of the `629 Patent instructs that the term "community" means inform a tio n and at least one function relating to a specific transaction, interaction, and/or expression of interest that may be accessed and/or interacted with by a plurality of users with common interests through a private or public c o m m u n ic a tio n network, such web pages on an a Internet site. For example, the sp e c ifica tio n states: According to an example, a community entitled "The XYZ Softball Team" may be c re a te d , where information about the XYZ Softball team, including a schedule of ga m e s, player statistics, and other information, is presented. A creator may d e t e rm i n e that only members of the XYZ Softball team should be able to access the community. Exhibit A at Col. 11, line 66 through Col. 12, line 4 (emphasis added). 2 Community is a d d re ss e d in other parts of the specification: It is a still further object of the invention to provide a system and method for m u lti-u s e r interaction and communication through a network which is directed to a sp e c ific transaction, interaction and/or interest. E x h ib it A at Col. 3, lines 15-18. The specification also notes that: Ac co rd in g to an embodiment of the invention, community creating module 165 m a y provide the framework through which central controller module 115 interacts w ith a user to create a community, and related applications and functions. E x h ib it A at Col. 7, lines 53-57 (emphasis added). Claims 1, 9, 17 and 25 also teach that

The term subject to construction will be set in bold/italic type. However, the citations will not indicate "emphasis added." -12-

2

a community has at least one function. Exhibit A at Col. 31, lines 6-10; Col. 32, lines 61 4 ; Col. 33, lines 7-8; Col. 34, lines 4-5. Finally, the specification teaches that a c o m m u n ity can be in the form of web pages on an Internet site. R e tu rn in g to Fig. 11, at step 805, the user establishes a connection to a community w ith central controller 805. This can be accomplished through the use of an in vita tio n application as described above or through browser access to an ap p ro p riate website. Exhibit A at Col. 29, lines 56-60; see also Col. 7, lines 59-60 ("According to another em b o d ime n t of the invention, community creation may comprise a web-based creation."). Accordingly, based upon the specification's use of the term and its ordinary a n d recognized meaning, the Court should adopt XACP's claim construction of "c o m m u n i ty " as follows: In fo rm atio n and at least one function relating to a specific transaction, interaction, and/or expression of interest that may be accessed and/or interacted w ith by a plurality of users with common interests through a private or public c o m m u n ic a tio n network, such web pages on an a Internet site. D e fe n d a n ts have defined the term "community" to mean: A virtual place or electronic medium where people having c o m m o n interests can interact, which can be accessed by a computer or other device. E x h ib it C at 4. However, the Defendants' proposed definition does not take into account th e intrinsic record. The terms "virtual place" and "electronic medium" do not appear a n y w h e re in the `629 Patent, nor within the dictionary references that Defendants cite in th e ir Proposed Claim Construction document (Exhibit C). Accordingly, the Court should re je c t Defendants' proposed definitions for "community."

-13-

2.

C re a tin g A Community

T h e Preamble of Claim 1 indicates that the invention is a "method for creating a c o m m u n ity ." Terms in the preamble are generally not subject to interpretation unless it h elps to give the claim meaning. MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1 3 2 3 , 1330 (Fed. Cir. 2007) ("Where that term appears in a claim preamble, it is ` n e c e s s a ry to give life, meaning, and vitality to the claim,' and may be used as a lim ita tio n " ) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (F e d . Cir.1999)). Here, interpretation of the phrase "creating a community" helps give m e a n in g to the claim and should therefore be construed consistent with the above d e fin itio n of "community" and the ordinary meaning of "create." Webster's New World D ic tio n a ry , Third College Edition (1994) defines the term "create" as: "To cause to come in to existence; bring into being; make; originate." See Exhibit F at 325.3 Accordingly, th e Court should adopt XACP's claim construction of "creating a community" as follows: T h e act or instance of causing to come into existence, bringing into being, making or originating information and at least one function relating to a specific tra n sa c tio n , interaction, and/or expression of interest that may be accessed and/or interac ted with by a plurality of users with common interests through a private or public communication network, such web pages on an a Internet site. T h e Defendants have proposed the following definition: B rin gin g into being a virtual place or electronic medium where people having common in te re st can interact, which can be accessed by a computer or other device.

The cover, Edition Page and relevant pages of Webster's New World Dictionary, Third College Edition (1994) is attached hereto as Exhibit F. -14-

3

E x h ib it C at 7. However, the Defendants' proposed definition should be rejected by the C o u rt for the reasons previously discussed in Section IV.C.1. 3. C r e a tion Transmission

T h e next term to be construed ("creation transmission") is found in the first e le m e n t of Claim 1 which reads: re c eivin g a creation transmission from a registered user, the creation transmission in d ica tin g that the registered user desires to create a community; Exhibit A at Col. 31, lines 1-3. The claims and specification teach that a "creation tra n sm is s io n " is an electronic transmission that is provided through a communications n etw o rk and indicates a desire to create a community. See Exhibit A at Col. 3, lines 9-37; C o l. 7, lines 26-29; Fig. 2.4 Ac co rd in gly , based upon the ordinary and recognized meaning of the term "c re a tin g transmission" and the specification, the Court should adopt XACP's claim c o n stru c tio n of "creation transmission" as follows: An electronic transmission through a private or public communication n e tw o rk indicating a request to create a community. D e f e n d a n ts have defined this term as: A n electronic signal indicating a request to create a community. E x h ib it C at 7. However, the Defendants' proposed definition improperly narrows the

As is discussed in Section IV.C.11, Plaintiff XACP's proposed definition for the related term "transmitting" is electronically connecting, sending out and/or communicating by any wireless or wire mechanism. Thus, there is no need to further define the word "transmission" in "creation transmission." -15-

4

fo rm of transmission to an electronic signal, which is unsupported by the specification or the ordinary use of the word. The specification does not disclaim that the transmission c a n also be in the form of data. Even in the only dictionary reference cited by D e fe n d a n ts ' in their Proposed Claim Construction document, a "signal" is merely used as an example. See Exhibit C at 7. Accordingly, the Court should reject Defendants' p rop o sed claim construction. 4. R e g is te r ed User

T h e next term to be construed from the first element of Claim 1 is the term "re gis te re d user." The term "user" is mentioned throughout the specification. For example, the sp e c ifica tio n identifies various aspects of the user in general, and a "registered user" in p a r t ic u l a r : A user provides registration information (e.g. full name, address, personal info rm atio n , etc.) and forwards the information to the central controller. E x h ib it A at Col. 5, lines 3-5. The specification further identifies this term: In either case, on the user's first visit, the user is prompted to register, and does r e g is te r with the service via central controller at steps 535 and 540 so that in fo rm a tio n can be gathered as necessary prior to game play. A registration form (o r other means of providing the requested information) is completed by the user a n d may be sent by client 110 to central controller module 115 at step 545. E x h ib it A at Col. 27, lines 1-7. Accordingly, based upon the use of these terms in the s p e c ific a tio n , the Court should adopt XACP's claim construction of "registered user" as fo llo w s:

-16-

A user who has provided, at least once, requested registration information (e.g., name, address, personal information, etc.) and forwarded the information to a controller. T h e Facebook defendants have proffered the following definition: A user who has provided, at least once, registration information (e. g . , name, address, personal information, etc.) E x h ibit C at 9. However, the Defendants' proposed definition fails to account for where o r to whom the registration information is provided. The specification makes clear the registratio n information is provided to a controller of the community. Thus, the Court sh o u ld reject Defendants' proposed construction. 5. C re a te A Community

T h e last term of the first element of Claim 1 of the `629 Patent which must be c o n stru e d is the term "create a community." As set forth in Section IV.C.1 above, the specification defines the term "c o m m u n i ty " as information and at least one function relating to a specific transaction, interaction, and/or expression of interest that may be accessed and/or interacted with by a plurality of users with common interests through a private or public c o m m u n ic a tio n network, such web pages on an a Internet site. (See, Exhibit A at Col. 3, lin e s 15-18; Col. 11, line 66 through Col. 12, line 2). Furthermore, the ordinary meaning o f "create" is " to cause to come into existence; bring into being; make; originate." W e b ste r's New World Dictionary, Third College Edition (1994) at 325. (Exhibit F at 3 2 5 ). Accordingly, based upon the specification and confirmed by the ordinary and

-17-

re c o gn iz e d meaning of the terms, the Court should adopt XACP's claim construction of "c re a te a community" as follows: To cause to come into existence, bring into being, make or originate information and at least one function relating to a specific transaction, interaction, and/or expression of interest that may be accessed and/or interacted w ith by a plurality of users with common interests through a private or public co m m u n icatio n network, such web pages on an a Internet site. The Defendants have proposed the following definition: T o bring into being a virtual place where people having common interest can interact, which can be accessed by a computer or other device. E x h ib it C at 6. However, the Defendants' proposed definition should be rejected by the C o u rt for the reasons previously discussed in Section IV.C.1. 6. C omm unity Identification Information

T h e second element of Claim 1 of the `629 Patent reads: re c e ivin g community identification information from the registered user; Exhibit A at Col. 31, lines 4-5. This Court should construe the term "community iden tifica tio n information" consistent with its use in the specification. The specification provides clear instruction on the meaning of this term: A t step 202, a creator provides community identification information to a central c o n tro lle r module 115. Community identification information may comprise a c o m m u n ity name, description, search tags, keywords, and topline key. By way of e x a m p le , a creator may name a community and provide a brief description, such as n a m in g the community the "Omaha Sailing Club" and may describe the c o m m u n ity as a group of sailors in the greater Omaha, Nebr. area who have an in ter e st in sailing and following sailing events. A creator may further designate ap p ro p riate keyword(s), metatag(s), search tag(s), and/or other classifications for a co m m u n ity . . . Community identification information may further comprise in fo rm a tio n about the creator, such as name, address, personal information, and -18-

o ther creator information. Community identification information may also c o m p r is e computer information, such as electronic identifier (e.g., cookies, co m p u ter identification number, etc.) and other information about the computer. Other community identification information may also be requested. E x h ib it A at Col. 7, line 61 through Col. 8, line 13. Accordingly, based upon the o rd in a ry and recognized meaning of the term "community identification information" and th e specification, the Court should adopt XACP's claim construction of "community id e n tifica tio n information" as follows: Information that identifies the community being created, which may include, but is not limited to, a community name, description, search tags, keywords, information about the creator, and/or computer information. D e fe n d a n ts have proposed the following definition: In fo rm a tio n that identifies a community. E x h ib it C at 5. However, the Defendants' proposed definition fails to consider the c o n te x t of the intrinsic record and the use of the term in the claims and specification. The in trin s ic record does not teach that "community identification information" is information b e in g received by a registered user about any community. To the contrary, it teaches th a t the information is about the community being created. Accordingly, the Court s h o u ld reject Defendants' proposed claim construction. 7. S e le c ti on

T h e next claim element in Claim 1 reads: re c e ivin g a selection of at least one application object from the registered user; Exhibit A at Col. 31, lines 7-8. The parties agree that the claim term "selection" should

-19-

b e defined as follows: O n e or more things that have been chosen. See Exhibit C at 10; Exhibit F ­ Webster's New World Dictionary, Third College Edition (1 9 9 4 ) at 1216. 8. A pplic a tion Object

T h e next claim element in Claim 1 reads: re c e ivin g a selection of at least one application object from the registered user; Exhibit A at Col. 31, lines 7-8. This Court should construe the term "application object" as it is understood in the art and consistent with its use in the intrinsic record. The specification provides guidance regarding the term "application object: It is another object of the invention to provide a system and method which enables cre atio n and distribution of application objects which direct the user to specific in f o r m a tio n . E x h ibit A at Col. 3, lines 21-22. Further support is found at Col. 9, line 15, "... a c o n figu ra tio n editor may present various standard community templates and application o b je c ts (or "functions") to build a community... ." The claims and specification identify e x a m p le s of application objects, including those that enable chat or the viewing p h o tograp h s. See Exhibit A at Col. 9, lines 15-24; Col. 16, line 65 through Col. 19, line 2 3 ; Col. 25, lines 15-16; Claims 4, 12, 20 and 28. This intrinsic evidence is consistent with the following Webster's New World C o m p u te r Dictionary definition of the term "application": A program that enables a user to do something useful with the computer, such as -20-

w riting or accounting (as opposed to utilities, programs that help the user maintain the computer. E x h ib it G - Webster's New World Computer Dictionary 10 th Ed., 2003 at 23. 5 Ac co rd in gly , based upon the specification's clear use of the term and its ordinary a n d recognized meaning, the Court should adopt XACP's claim construction of "a p p lic a tio n object" as follows: A computer program or module that may function to direct a user to specific information an d /or enables a user to do something useful, and may be for, among other things, JAVA, chat, scheduling, pledging, viewing a photo album, a shopping cart, instant messaging, n avigatio n , searching, addresses, a news group, announcements, a white board, a ca len d ar, video conferencing, video chat, and/or a bulletin board. Defendants have proposed the following definition: A computer program or module that directs a user to specific information and/or e n a b les a user to do something useful, including but not limited to JAVA, chat, sc h e d u lin g, invitations, pledging, photo albums, shopping carts, instant messaging, navigating, searching addresses, news groups, announcements, white boards, calendars, video conferencing, video chat, voice chat, e-mail lists, and/or bulleting boards. E x h ib i t C at 3. Although very similar to XACP's proposed definition, the Defendants' p ro p o s e d definition should be rejected by the Court since it improperly limits the function o f the application object (i.e., computer program) to directing a user to specific in fo rm a tio n and/or enables a user to do something useful. Such a limitation is u n su p p o rte d by the specification. To the contrary, as is properly encompassed in X A C P " s definition, a computer program may be an application object so long as it may

Copies of relevant portions of the Webster's New World Computer Dictionary is attached hereto as Exhibit G. -21-

5

fu n c tio n to direct a user to specific information and/or enables a user to do something u sefu l. 9. C om munic a t ions Address

T h e last limitation of claim 1 of the `629 Patent reads: rec eivin g at least one communications address designated by the registered user, th e at least one communications address corresponding to a user to receive a c re a te d community; and transmitting the created community based in part on the at least one communications address. Exhibit A at Col. 31, lines 11-15. In connection with this last limitation, the Court must c o n stru e three terms: "communications address;" "created community;" and "t r a n s m i t t i n g. " The first of these terms is "communications address." Again, the specification p ro vid e s a clear teaching as to the meaning of this term: U p o n creating the community, the creator designates other users to access the c o m m u n ity . The application accesses the creator's locally stored communications a d d r e s s book, such as e-mail address book, or retrieves a centrally stored c o m m u n ic a t io n s address book from the central controller, and presents the co n ten ts to the creator. *** *** *** A user may provide certain information to allow for identification. *** *** *** A creator may further provide a communications address, such as an e-mail a d d re ss , to allow an invitation and a executable application to launch the c o m m u n ity to be sent to one or more users. According to an embodiment of the in ve n tio n , the community client application operating on the creator's computer m a y access the creator's locally stored communications address book (e.g., em a il, address book), or the central controller module 115 may access the creator's ce n trally stored address book. *** *** *** An invitation application may be sent to an invited user via a transmission using an a p p ro p ria te communications address, such as an e-mail address. -22-

E x h ib it A at Col. 4, lines 48-51; Col. 12, lines 59-65; Col. 12, lines 45-46; and Col. 15, lin es 36-37. The above intrinsic evidence is consistent with the following Webster's New W o rld Computer Dictionary definition of the term "address": The precise location of some type of resource (such as a file, a website, or storage s p a c e) in a computer system or network. See memory address; In e-mail, an em a il address; In the Internet, the location of a host on the network. See IP ad dress. E x h ib it G at 13 (defining "address"). Accordingly, based upon the use of the term in the sp e c ifica tio n and its ordinary meaning, the Court should adopt XACP's claim c o n s tr u c tio n of "communications address" as follows: T h e precise location in a computer system or network where a communication may be received or sent, such as an e-mail address, IP address, URL or Internet Relay Chat address. Defendants have proposed the following definition: In fo rm a tio n that specifies the precise location in a computer system or network where a communication may be received or sent, such as an e-mail address, IP address, URL or Internet Relay Chat address. E x h ibit C at 4. Defendant's proposed definition does not appear to materially differ from that proposed by XACP. Nonetheless, the specification and the ordinary meaning o f the term teaches that a communication address is, for example, an actual e-mail a d d re ss and not information about the e-mail address. Thus, Defendants' proposed claim co n stru ctio n should be rejected.

-23-

10.

C re a ted Community

T h e second term of this last element in Claim 1 which must be construed is "c re a te d community." As set forth in Section IV.C.1 above, the specification defines the term "c o m m u n i ty " as information and at least one function relating to a specific transaction, interaction, and/or expression of interest that may be accessed and/or interacted with by a plurality of users with common interests through a private or public c o m m u n ic a tio n network, such web pages on an a Internet site. (See, Exhibit A at Col. 3, lin e s 15-18; Col. 11, line 66 through Col. 12, line 2). Furthermore, the ordinary meaning o f "create" is " to cause to come into existence; bring into being; make; originate." W e b ste r's New World Dictionary, Third College Edition (1994) at 325. (Exhibit F at 3 2 5 ). Accordingly, based upon the specification and confirmed by the ordinary and re c o gn iz e d meaning of the terms, the Court should adopt XACP's claim construction of "c re a ted community" as follows: Information and at least one function relating to a specific transaction, interaction, and/or expression of interest that may be accessed and/or interacted w ith by a plurality of users with common interests through a private or public c o m m u n ic a tio n network, such web pages on an a Internet site, that was caused to come in to existence, brought into being, made or originated. The Defendants have proposed the following definition: A virtual place or electronic medium where people having c o m m o n interest can interact, which can be accessed by a computer o r other device, which has been brought into being. E x h ib it C at 6. However, the Defendants' proposed definition should be rejected by the -24-

C o u rt for the reasons previously discussed in Section IV.C.1. 11. T r a nsmitting

T h e last term to be construed from the final element of Claim 1 of the `629 Patent is the term "transmitting," i.e., "transmitting the created community based in part on the a t least one communications address." The intrinsic and extrinsic evidence supports the te r m "transmitting" being defined as electronically connecting; sending out and/or communicating by any wireless or wire mechanism. The specification provides insight into the meaning of the term "transmitting," inclu d ing that an electronic connection through an Internet browser between a client (e.g., a personal computer 6 ) and a created community being stored by a central controller m o d u le (e.g., multiple server computers configured to appear to the client as a single re s o u rc e 7 ) is within the scope of the claim term. For example, the specification and Fig 1 te a ch that created communities "may be stored in data storage module 160," and that a "[c ]e n tra l controller module 115 may communicate with a number of data storage m o d u le s 160." The central controller module also administers the community that it is h o stin g. Col. 7, 1-24; Fig. 1. The specification also teaches that a transmission of a created community includes users linking to a created community through an electronic connection with the hosting

6

See Col. 5, lines 41-50. See Col. 6, lines 22-24. -25-

7

c e n tra l controller module. More specifically, the specification provides: It is another object of the invention to provide a system and methodology for in vo kin g an invitation application to simplify the creation of and allow the w id e sp re a d and rapid distribution of an electronic connection between a plurality o f users through an on-line community associated with a user interest. E x h ib i t A at Col. 3, lines 23-29 (emphasis added). The specification also states: F IG. 1 illustrates and IADS 100 according to an embodiment of the present in ven tio n . IADS 100 comprises multiple users 110 connected to Network 150 thro u gh multiple Connector Providers (CPs) 105. Network 150 may be any n e tw o rk that permits multiple users to connect and interact. According to an e m b o d im e n t of the invention, Network 150 may be a dedicated line to connect u se rs , the Internet, an intranet, or any other type of network. CP 105 may be a p ro vide r that connects a user to a network, According to an embodiment of the in ve n tio n , CP 105 may be an Internet service provider, a dial-up access or other m an n er of connecting to a network. In actual practice, there may be significantly m o r e users connected to IADS 100 than shown. This would mean that there w o u ld be additional users which are connected through the same CPs shown or th ro u gh other CPs. Nevertheless, for purposes of illustration, the discussion will p r e s u m e four users 110 connected to Network 150 through two CPs 105. E x h ib it A at Col. 5, lines 23-40 (emphasis added). Other sections of the specification p ro vide further support: C o m m u n ic a tio n module 180 may enable central controller module 115 to c o m m u n ic a te with others. According to an embodiment of the invention, c o m m u n ic a tio n module 180 may comprise an email transfer application such as Se n d m a il, Postfix, or Q-Mail or the like. Communication module 180 may further e n a b le central controller module 115 to interact with users via user application o b jects, such as instant messaging. Further, communications module 180 may e n a b le central controller module 115 to interact with an Internet browser, such a s Netscape Navigator®, Microsoft Internet Explorer®, or the like. *** *** *** A n executable component may assist central controller module 115 in d o w n lo a d in g a client application upon confirmation that installation should p ro c e ed . According to an embodiment of the invention, a client application may be d o w n lo a d e d while an invited user watches a tutorial. When the download is -26-

co m p lete, a user may have a link that has been associated on the user's computer. A t step 270, a user may launch a community, such as activating a link to launch a clien t application for a community. The link may designate information n e c e s s a ry for the invited client to connect to central controller module 115 and in itia te the user into the community. *** *** *** I n a preferred embodiment, the user next launches the invitation application (e .g . the executable component) which establishes a connection with central co n tro ller module 115. Central controller module 115 immediately initiates the c o m m u n ity , or "lobby," executable and the user is placed in the community chat r o o m (530). According to another embodiment, a user may be presented a dialog b o x instead of being placed in a chat room. The lobby serves as the entry point in to the gaming environment. Alternatively, it is possible for the verification in vita tio n application to be designed to automatically invoke the connection and la u n c h the application upon successful verification. * * * *** *** R e tu rn in g to FIG. 11, at step 805, the user establishes a connection to a c o m m u n ity with central controller 805. This can be accomplished through the u se of an invitation application object as described above or through browser a c c e ss to an appropriate website. Exhibit A at Col. 6, lines 39-49; Col. 16, lines 26-35; Col. 26, lines 56-67; and Col. 29, lin es 56-60 (emphasis added). The use of the term "transmitting" in the specification is consistent with the re c o gn iz e d meaning of the term. Webster's New World Dictionary, Third College E d i tio n (1994) defines the term "transmit" as: T o send or cause to go from one person or place to another, esp. across intervening sp ac e or distance; transfer; dispatch, convey; to pass along; impart (a disease, etc.); to hand down to others by heredity, inheritance, etc.; to communicate (news, etc.); to cause (light, heat, sound, etc.) to pass through air or some other medium [the s u n transmits heat and light]; to allow the passage of; conduct [water transmits so u n d ]; to convey (force, movement, etc.) from one mechanical part to another; to s e n d out (radio or television broadcasts, etc.) by electromagnetic waves; to send o u t radio or television signals. E x h ibit F at 1421 (defining "transmit"). -27-

A c c o rd in gly, based upon the use of this term in the specification consistent with th e ordinary and recognized meaning, the Court should construe the term "transmitting" a s follows: Electronically connecting; sending out and/or communicating by any wireless or wire mechanism The Defendants' proposed definition of "sending" should be rejected by the Court sin c e it is overly narrow and inconsistent with the intrinsic record. Exhibit C at 11. As is d e sc rib e d in Section IV.B, Facebook purportedly hosts on its servers all communities (G ro u p s ) that are created using its Groups application, and its users electronically connect to the Groups on those servers through an Internet browser. Thus, in an attempt to avoid in frin ge m e n t, Defendants erroneously argue that the term "transmitting" should be c o n stru e d so that the entire created community (content and applications) must be sent to a n d then reside on a user's client computer. However, this is inconsistent with the p referred embodiments which teach that created communities may reside on the servers o f the central controller module and that users may establish a connection to the co m m u n ities through browser access to the central controller module's website. Accordingly, the Court should reject Defendants' overly narrow proposed claim c o n s t ru c t io n . 12. U s e r Interface

C la im 2 of the `629 Patent reads: T h e method according to claim 1, wherein the step of transmitting the created c o m m u n ity further comprises transmitting the created community and a user -28-

in te rfa c e. E x h ib i t A at Col. 31, lines 17-20. In connection with this element, the Court must c o n stru e the term "user interface." Support for this term can be found in the intrinsic r e c o rd at Figure 4 and Col. 5, lines 11-13 which states: U s in g the user interface, the user can interact with the community through the ce n tral controller, other users, or both at appropriate times. Exhibit A at Col. 5, lines 11-13. The specification further reveals: T h e preferred embodiment of this feature of IADS 100 provides access to central c o n tro lle r module 115 via a user interface or other order entry system which in te rfa c e s through a community with vendors' fulfillment system. E x h ibit A at Col. 30, lines 21-24. Moreover, the specification's use and definition of the term "user interface" are c o n sis te n t with the definition provided by Webster's New World Computer Dictionary: A ll the features of a program or computer that govern the way people interact with the computer. E x h ib it G at 387. Accordingly, based upon the specification and the ordinary and re c o gn ize d meaning, the Court should construe the term "user interface" as follows: The junction between a user and a computer program, such as a set of commands or menus through which a user communicates with a program. 13. S ubsc r ibe

C la im 5 of the `629 Patent reads: T h e method according to claim 1, further comprising the step of receiving a s e le c tio n to subscribe to at least one subscription object, wherein the at least one su b sc rip tio n object is accessed through one of the at least one application object.

-29-

E x h ib it A at Col. 31, lines 41-45. The Court should construe the terms "subscribe" and "s u b s c rip tio n object," which are initially used in Claim 5, consistent with its use in the intrinsic record (specification) and as understood by those of ordinary skill in the art. The specification defines the term "subscribed to" as: A subscription object may be published (e.g., made available for others to access in a community) and subscribed to (e.g., selected to be accessed in a community). A user, upon entering a community, may access subscription objects and other c o n te n t objects, which form the community. A user automatically received u p d a ted content objects as appropriate. Exhibit A at Col. 19, lines 33-39. The specification further teaches that a subscription is n o t limited to a single community. See Exhibit A at Col. 20, lines 53-55 ("The user may `p u b lish ' the subscription object[s] by permitting users of one or more communities to ac ce ss the subscription object."). Accordingly, based upon the specification, the Court should adopt XACP's claim c o n stru c tio n of "subscribing" as follows: Select to be interacted with and/or accessed in one or more communities, which may c o m p ris e , but is not limited to, selecting to automatically receive updated information, ap p lica tio n s, functions and/or other aspects of one or more communities. The Defendants have proposed the following definition: T o designate something to be interacted with and/or accessed in one or more communities. Exhibit C at 10. However, the Defendants' proposed definition should be rejected by the C o u rt. The definition is inconsistent with the above referenced portions of the s p e c if ic a tio n that define "subscribed to"as "selected to be accessed in a community" and

-30-

n o t "designated," as Defendants request. 14. S ubs c r iption Object

The other term to be construed in Claim 5 is "subscription object." The sp e c ifica tio n provides a clear and unambiguous meaning for the term: Subscription objects may be various objects, such as chat content, a product to p u rc h a se , a photograph file, or other item, which has been published by another u ser. E x h ib i t A at Col. 9, line 66 through Col. 10, line 2. The specification also notes: A community administrator may wish to place links directly to a subscription o b jec t within another community. A community administrator may determine that a n o th e r community has a particularly active chat room that my be of interest. The a d m in is tra to r may create a link directly to that chat room, rather than the entrance o f the community. Finally, an administrator may also wish to create links o rigin a tin g from or pointing towards World Wide Web pages, or may incorporate s o m e or all of a World Wide Web page directly into the community application. E x h ib it A at Col. 11, lines 8-16. In fact, the specification has an entire section dedicated to the description of "subscription objects." That section indicates, inter alia, that: S u b sc rip tio n objects, as set forth above, may be various objects, such as chat c o n te n t, a product to purchase, a photograph file, or other item, which has been p u b lis h e d by another user. Publishing a subscription object enables others to s u b s c rib e to the subscription object. Exhibit A at Col. 19, lines 26-31. Accordingly, based upon the clear use of the term in the specification, the Court sh o u ld construe the claim term "subscription object" as follows: An object that is published and to which a user may subscribe, which may comprise, but is not limited to, chat content, a publication, a product to purchase, a photograph file, web page and/or other item.

-31-

T h e Defendants have proposed the following definition: A n item to which a user may subscribe, which may c o m p ris e , but is not limited to, chat content, a publication, a product to purchase, a photograph file, web page and/or other item. Exhibit C at 11. However, the Defendants' proposed definition should be rejected by the C o u rt. The definition is inconsistent with the above referenced portions of the s p e c ific a tio n that teach that "subscription objects"are "objects" (not items) and that they are "published," as defined below. 15. P ublis he d

C la im 6 of the `629 Patent is a dependent claim which relies upon Claim 1 and reads: 6. T h e method according to claim 5, wherein the at least one subscription o b jec t is published by at least one of: a) at least one other community; b) at least one other user; and c) at least one vendor. Exhibit A at Col. 31, lines 46-50. The claim term which this Court must construe from C laim 6 is "published." The definition for the term "published" is expressly set forth in th e specification: A subscription object may be published (e.g., made available for others to access in the community) . . . Exhibit A at Col. 19, lines 33-34. The specification also teaches that a subscription o b ject may be "published" so that "users in one or more communities" may access it. -32-

E x h ib it A at Col. 20, lines 53-55. Accordingly, based upon the express definition set forth in the intrinsic record (specification), this Court should construe the term "p u b lish e d " as follows: Made available for others to interact with and/or access in one or more communities.

The Defendants have proposed the following definition: Made available to others. Exhibit C at 8. However, the Defendants' proposed definition should be rejected by the C o u rt since it is inconsistent with the specification and overly narrow. 16. C omm unity Information

C la im 8 of the `629 Patent is a dependent claim which relies upon Claim 1 and reads: 8. T h e method according to claim 1, wherein community information