SSL Services, LLC vs. Cisco Systems, Inc.
Filing
102
MEMORANDUM OPINION AND ORDER. Signed by Magistrate Judge Roy S. Payne on 5/17/2016. (ch, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
SSL SERVICES, LLC,
Plaintiff,
v.
Case No. 2:15-cv-433-JRG-RSP
CISCO SYSTEMS, INC.,
Defendant.
MEMORANDUM OPINION AND ORDER
Pending before the Court is the opening claim construction brief of SSL Services, LLC
(“Plaintiff”) (Dkt. No. 71, filed on January 6, 2016), 1 the response of Cisco Systems, Inc.
(“Defendant”) (Dkt. No. 75, filed on January 20, 2016), and the reply of Plaintiff (Dkt. No. 76,
filed on January 27, 2016). The Court held a claim construction hearing on February 25, 2016.
Having considered the arguments and the intrinsic and extrinsic evidence the Court issues this
Order construing the disputed terms. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005);
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015).
1
Citations to the parties’ filings are to the filing’s number in the docket (Dkt. No.) and pin cites
are to the page numbers assigned through ECF.
1
Table of Contents
I.
BACKGROUND ............................................................................................................... 3
II.
LEGAL PRINCIPLES ..................................................................................................... 6
A.
Claim Construction ........................................................................................... 6
B.
Departing from the Ordinary Meaning of a Claim Term .................................. 9
C.
Functional Claiming and 35 U.S.C. § 112, ¶ 6 (pre-AIA) / § 112(f)
(AIA) ............................................................................................................... 10
D.
Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA) ........... 12
III.
CONSTRUCTION OF AGREED TERMS .................................................................. 13
IV.
CONSTRUCTION OF DISPUTED TERMS ............................................................... 15
A.
B.
The Intercept Terms ........................................................................................ 24
C.
“encrypt files” / “files”.................................................................................... 31
D.
“computer software for installation on a client computer of a multi-tier
virtual private network” .................................................................................. 35
E.
V.
“applications level” ......................................................................................... 15
The Order of the Steps of Method Claim 7..................................................... 39
CONCLUSION ............................................................................................................... 42
2
I.
BACKGROUND
Plaintiff alleges that Defendant infringes U.S. Patent No. 6,158,011 (the “’011 Patent).
The ’011 Patent is entitled “Multi-Access Virtual Private Network.” The application that led to
the ’011 Patent is a continuation of an application filed on August 26, 1997. The ’011 Patent
issued on December 5, 2000. The parent application, filed on August 26, 1997, issued as U.S.
Patent No. 6,061,796 (the “’796 Patent”) on May 9, 2000. In an ex parte reexamination of the
’011 Patent, all reexamined claims were confirmed without amendment and the certificate issued
on December 12, 2012.
The Court previously construed the ’011 Patent and the ’796 Patent, in SSL Services, LLC
v. Citrix Systems, Inc., No. 2:08-cv-158-JRG. There, the Court construed several terms that are
also presented for construction in this case. SSL Servs., LLC v. Citrix Sys., 816 F. Supp. 2d 364
(E.D. Tex. 2011) (“Citrix”). The Federal Circuit considered an appeal from the Citrix case that
included issues related to the infringement and validity of the ’011 Patent. SSL Servs., LLC v.
Citrix Sys., 769 F.3d 1073, 1078, 1088–93 (Fed. Cir. 2014) (“Citrix Appeal”). The Federal
Circuit affirmed that the ’011 Patent was willfully infringed and was not invalid and affirmed the
Court’s claim constructions.
In general, the ’011 Patent is directed to implementing a virtual private network by
inserting software between the levels (or layers) of a computer-communication software
hierarchy. These levels include an applications level and various communications levels below
the applications level in the hierarchy. These lower communications levels facilitate computer
communications. More specifically, they facilitate application-to-application communications
without requiring the applications to have the functionality for handling every stage of the
communication. For example, an application program may share information by providing it to a
3
transport driver level where the information is formatted for communication by being packaged
into packets or datagrams. The transport driver level may share the formatted information with a
network driver level where the information is driven over the communication channel (e.g.,
telephone line or Ethernet). ’011 Patent col.2 l.49 –col.3 l.57; see Citrix, 816 F. Supp. at 366–68;
Citrix Appeal, 769 F.3d at 1078–80. The invention of the ’011 Patent is directed to inserting
security functionality as “shims” between the software levels and using the shims to reroute
certain information flowing between the levels to software for encryption and authentication. Id.
at col.6 ll.37–50.
The ’011 Patent describes the operation of various
shims with reference to Figures 3, 4, and 5. Figure 5,
reproduced here and annotated by the Court, shows the
location of three shims with respect to existing levels. A
socket shim (50, in blue) is placed between a sockets
level (22) and the applications level, where applications
(27, 36, 37) and encryption software (the “Authentication
Client Software,” 20) are located. Id. at col.9 l.46 –
col.10 l.26. A TDI shim (53, in yellow) is placed between
the sockets level (50) and the TDI (transport driver) level
(21) and also between the applications level and the TDI
level for applications that do not use the sockets level. Id. at col.10 ll.27–41. An NDIS shim (55,
in green) is placed between the TDI level and NDIS (network driver) level (24). Id. at col.10 l.42
– col.11 l.2. For certain information flowing from the applications to the sockets or TDI level,
the socket shim or TDI shim reroutes the information to the applications level encryption
4
software, where the information is encrypted for communication via an authentication server (not
shown). Id. at col.9 l.46 – col.10 l.41. The NDIS shim does not reroute the information to the
applications level encryption software, but rather performs encryption itself. Id. at col.10 l.42 –
col.11 l.2.
Notably, the ’011 Patent provides that
the invention maintains the applications level infrastructure of prior client server
private networking arrangements, while adding shims to lower levels in order to
accommodate a variety of peer-to-peer communications applications while
utilizing the applications level infrastructure for authentication and session key
generation purposes.
Id. at col.2 ll.14–20. That is, in the invention, the shims are inserted below the applications level
where the applications level encryption takes place. Id.; see also id. at col.4 ll.22–26, ll.59–64
(describing implementing the invention with a prior-art encryption software that “operates at the
highest level, or applications level”).
The abstract of the ’011 Patent provides:
A virtual private network for communicating between a server and clients over an
open network uses an applications level encryption and mutual authentication
program and at least one shim positioned above either the socket, transport driver
interface, or network interface layers of a client computer to intercept function
calls, requests for service, or data packets in order to communicate with the server
and authenticate the parties to a communication and enable the parties to the
communication to establish a common session key. Where the parties to the
communication are peer-to-peer applications, the intercepted function calls,
requests for service, or data packets include the destination address of the peer
application, which is supplied to the server so that the server can authenticate the
peer and enable the peer to decrypt further direct peer-to-peer communications.
5
Claims 2 and 7 are reproduced here as representative system and method claims,
respectively.
II.
LEGAL PRINCIPLES
A.
Claim Construction
“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)). To determine the meaning of the claims, courts start
by considering the intrinsic evidence. Id. at 1313; C.R. Bard, Inc. v. U.S. Surgical Corp., 388
F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262
F.3d 1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the
specification, and the prosecution history. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at
6
861. The general rule—subject to certain specific exceptions discussed infra—is that each claim
term is construed according to its ordinary and accustomed meaning as understood by one of
ordinary skill in the art at the time of the invention in the context of the patent. Phillips, 415 F.3d
at 1312–13; Alloc, Inc. v. ITC, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure Networks, LLC v.
CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (“There is a heavy presumption that claim terms
carry their accustomed meaning in the relevant community at the relevant time.”) (vacated on
other grounds).
“The claim construction inquiry . . . begins and ends in all cases with the actual words of
the claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998).
“[I]n all aspects of claim construction, ‘the name of the game is the claim.’” Apple Inc. v.
Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362,
1369 (Fed. Cir. 1998)). First, a term’s context in the asserted claim can be instructive. Phillips,
415 F.3d at 1314. Other asserted or unasserted claims can also aid in determining the claim’s
meaning, because claim terms are typically used consistently throughout the patent. Id.
Differences among the claim terms can also assist in understanding a term’s meaning. Id. For
example, when a dependent claim adds a limitation to an independent claim, it is presumed that
the independent claim does not include the limitation. Id. at 1314–15.
“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id.
(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)).
“[T]he 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.’” Id. (quoting Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am.
Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). But, “‘[a]lthough the specification may aid the
7
court in interpreting the meaning of disputed claim language, particular embodiments and
examples appearing in the specification will not generally be read into the claims.’” Comark
Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v.
Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); see also Phillips, 415
F.3d at 1323. “[I]t is improper to read limitations from a preferred embodiment described in the
specification—even if it is the only embodiment—into the claims absent a clear indication in the
intrinsic record that the patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v.
Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).
The prosecution history is another tool to supply the proper context for claim
construction because, like the specification, the prosecution history provides evidence of how the
U.S. Patent and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415
F.3d at 1317. However, “because the prosecution history represents an ongoing negotiation
between the PTO and the applicant, rather than the final product of that negotiation, it often lacks
the clarity of the specification and thus is less useful for claim construction purposes.” Id. at
1318; see also Athletic Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996)
(ambiguous prosecution history may be “unhelpful as an interpretive resource”).
Although extrinsic evidence can also be useful, it is “‘less significant than the intrinsic
record in determining the legally operative meaning of claim language.’” Phillips, 415 F.3d at
1317 (quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a
court understand the underlying technology and the manner in which one skilled in the art might
use claim terms, but technical dictionaries and treatises may provide definitions that are too
broad or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly,
expert testimony may aid a court in understanding the underlying technology and determining
8
the particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
assertions as to a term’s definition are entirely unhelpful to a court. Id. Generally, extrinsic
evidence is “less reliable than the patent and its prosecution history in determining how to read
claim terms.” Id. The Supreme Court recently explained the role of extrinsic evidence in claim
construction:
In some cases, however, the district court will need to look beyond the patent’s
intrinsic evidence and to consult extrinsic evidence in order to understand, for
example, the background science or the meaning of a term in the relevant art
during the relevant time period. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546
(1871) (a patent may be “so interspersed with technical terms and terms of art that
the testimony of scientific witnesses is indispensable to a correct understanding of
its meaning”). In cases where those subsidiary facts are in dispute, courts will
need to make subsidiary factual findings about that extrinsic evidence. These are
the “evidentiary underpinnings” of claim construction that we discussed in
Markman, and this subsidiary factfinding must be reviewed for clear error on
appeal.
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
B.
Departing from the Ordinary Meaning of a Claim Term
There are “only two exceptions to [the] general rule” that claim terms are construed
according to their plain and ordinary meaning: “1) when a patentee sets out a definition and acts
as his own lexicographer, or 2) when the patentee disavows the full scope of the claim term
either in the specification or during prosecution.” 2 Golden Bridge Tech., Inc. v. Apple Inc., 758
F.3d 1362, 1365 (Fed. Cir. 2014) (quoting Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d
1362, 1365 (Fed. Cir. 2012)); see also GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304,
1309 (Fed. Cir. 2014) (“[T]he specification and prosecution history only compel departure from
2
Some cases have characterized other principles of claim construction as “exceptions” to the
general rule, such as the statutory requirement that a means-plus-function term is construed to
cover the corresponding structure disclosed in the specification. See, e.g., CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1367 (Fed. Cir. 2002).
9
the plain meaning in two instances: lexicography and disavowal.”). The standards for finding
lexicography or disavowal are “exacting.” GE Lighting Sols., 750 F.3d at 1309.
To act as his own lexicographer, the patentee must “clearly set forth a definition of the
disputed claim term,” and “clearly express an intent to define the term.” Id. (quoting Thorner,
669 F.3d at 1365); see also Renishaw, 158 F.3d at 1249. The patentee’s lexicography must
appear “with reasonable clarity, deliberateness, and precision.” Renishaw, 158 F.3d at 1249.
To disavow or disclaim the full scope of a claim term, the patentee’s statements in the
specification or prosecution history must amount to a “clear and unmistakable” surrender. Cordis
Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner, 669 F.3d at
1366 (“The patentee may demonstrate intent to deviate from the ordinary and accustomed
meaning of a claim term by including in the specification expressions of manifest exclusion or
restriction, representing a clear disavowal of claim scope.”) “Where an applicant’s statements are
amenable to multiple reasonable interpretations, they cannot be deemed clear and unmistakable.”
3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013).
C.
Functional Claiming and 35 U.S.C. § 112, ¶ 6 (pre-AIA) / § 112(f) (AIA) 3
A patent claim may be expressed using functional language. See 35 U.S.C. § 112, ¶ 6;
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347–49 & n.3 (Fed. Cir. 2015) (en banc in
relevant portion). Section 112, Paragraph 6, provides that a structure may be claimed as a “means
. . . for performing a specified function” and that an act may be claimed as a “step for performing
a specified function.” Masco Corp. v. United States, 303 F.3d 1316, 1326 (Fed. Cir. 2002).
But § 112, ¶ 6 does not apply to all functional claim language. There is a rebuttable
presumption that § 112, ¶ 6 applies when the claim language includes “means” or “step for”
3
Because the application resulting in the Asserted Patent was filed before September 16, 2012,
the effective date of the America Invents Act (“AIA”), the Court refers to the pre-AIA version of
§ 112.
10
terms, and that it does not apply in the absence of those terms. Masco Corp., 303 F.3d at 1326;
Williamson, 792 F.3d at 1348. The presumption stands or falls according to whether one of
ordinary skill in the art would understand the claim with the functional language, in the context
of the entire specification, to denote sufficiently definite structure or acts for performing the
function. See Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1372 (Fed.
Cir. 2015) (§ 112, ¶ 6 does not apply when “the claim language, read in light of the specification,
recites sufficiently definite structure” (quotation marks omitted) (citing Williamson, 792 F.3d at
1349; Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1099 (Fed. Cir. 2014))); Williamson,
792 F.3d at 1349 (§ 112, ¶ 6 does not apply when “the words of the claim are understood by
persons of ordinary skill in the art to have sufficiently definite meaning as the name for
structure”); Masco Corp., 303 F.3d at 1326 (§ 112, ¶ 6 does not apply when the claim includes
an “act” corresponding to “how the function is performed”); Personalized Media Commc’ns,
L.L.C. v. ITC, 161 F.3d 696, 704 (Fed. Cir. 1998) (§ 112, ¶ 6 does not apply when the claim
includes “sufficient structure, material, or acts within the claim itself to perform entirely the
recited function . . . even if the claim uses the term ‘means.’” (quotation marks and citation
omitted)).
When it applies, § 112, ¶ 6 limits the scope of the functional term “to only the structure,
materials, or acts described in the specification as corresponding to the claimed function and
equivalents thereof.” Williamson, 792 F.3d at 1347. Construing a means-plus-function limitation
involves multiple steps. “The first step . . . is a determination of the function of the means-plusfunction limitation.” Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311
(Fed. Cir. 2001). “[T]he next step is to determine the corresponding structure disclosed in the
specification and equivalents thereof.” Id. A “structure disclosed in the specification is
11
‘corresponding’ structure only if the specification or prosecution history clearly links or
associates that structure to the function recited in the claim.” Id. The focus of the “corresponding
structure” inquiry is not merely whether a structure is capable of performing the recited function,
but rather whether the corresponding structure is “clearly linked or associated with the [recited]
function.” Id. The corresponding structure “must include all structure that actually performs the
recited function.” Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc., 412 F.3d 1291,
1298 (Fed. Cir. 2005). However, § 112 does not permit “incorporation of structure from the
written description beyond that necessary to perform the claimed function.” Micro Chem., Inc. v.
Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999).
For § 112, ¶ 6 limitations implemented by a programmed general purpose computer or
microprocessor, the corresponding structure described in the patent specification must include an
algorithm for performing the function. WMS Gaming Inc. v. International Game Tech., 184 F.3d
1339, 1349 (Fed. Cir. 1999). The corresponding structure is not a general purpose computer but
rather the special purpose computer programmed to perform the disclosed algorithm. Aristocrat
Techs. Austl. Pty Ltd. v. International Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).
D.
Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA) 4
Patent claims must particularly point out and distinctly claim the subject matter regarded
as the invention. 35 U.S.C. § 112, ¶ 2. A claim, when viewed in light of the intrinsic evidence,
must “inform those skilled in the art about the scope of the invention with reasonable certainty.”
Nautilus Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). If it does not, the claim
fails § 112, ¶ 2 and is therefore invalid as indefinite. Id. at 2124. Whether a claim is indefinite is
determined from the perspective of one of ordinary skill in the art as of the time the application
4
Because the application resulting in the Asserted Patent was filed before September 16, 2012,
the effective date of the America Invents Act (“AIA”), the Court refers to the pre-AIA version of
§ 112.
12
for the patent was filed. Id. at 2130. As it is a challenge to the validity of a patent, the failure of
any claim in suit to comply with § 112 must be shown by clear and convincing evidence. Id. at
2130 n.10. “[I]ndefiniteness is a question of law and in effect part of claim construction.” ePlus,
Inc. v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012).
When a term of degree is used in a claim, “the court must determine whether the patent
provides some standard for measuring that degree.” Biosig Instruments, Inc. v. Nautilus, Inc.,
783 F.3d 1374, 1378 (Fed. Cir. 2015) (quotation marks omitted). Likewise, when a subjective
term is used in a claim, “the court must determine whether the patent’s specification supplies
some standard for measuring the scope of the [term].” Datamize, LLC v. Plumtree Software, Inc.,
417 F.3d 1342, 1351 (Fed. Cir. 2005); Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371
(Fed. Cir. 2014) (citing Datamize, 417 F.3d at 1351).
In the context of a claim governed by 35 U.S.C. § 112, ¶ 6, the claim is invalid as
indefinite if the claim fails to disclose adequate corresponding structure to perform the claimed
functions. Williamson, 792 F.3d at 1351–52. The disclosure is inadequate when one of ordinary
skill in the art “would be unable to recognize the structure in the specification and associate it
with the corresponding function in the claim.” Id. at 1352.
III.
CONSTRUCTION OF AGREED TERMS
The parties have agreed to the following constructions in their Joint Claim Construction
Chart Pursuant to P.R. 4-5(d) (Dkt. No. 79):
Term 5
Claim 2 preamble
Agreed Construction
not limiting
5
For all term charts in this order, the claims in which the term is found are listed with the term
but: (1) only the highest level claim in each dependency chain is listed, and (2) only asserted
claims identified in the parties’ Joint Claim Construction Chart Pursuant to P.R. 4-5(d) (Dkt. No.
79) are listed.
13
Term 5
“multi-tier”
•
Claims 2, 4, 7
“virtual private network”
•
Claims 2, 4, 7
“generate a session key”
•
a sequence of bits that is input into an
encryption algorithm to encrypt data for a
session
to produce a session key
Claims 2, 4, 7
“encrypt”
•
a server verifies the identity of the client
computer and the client computer verifies the
identity of the server
Claims 2, 4, 7
“session key”
•
a program that verifies the identity of a client
or server and renders data unintelligible
without decrypting
Claims 2, 4, 7
“mutually authenticate the server and the
client computer initiating communications
with the server”
•
Not 35 U.S.C. § 112, ¶ 6.
Claims 2, 4, 7
“authentication and encryption program” /
“encryption and authentication software”
•
a computer that requests data or services from
a server
Claims 2, 4, 7
“means for transmitting data to and receiving
data from an open network”
•
more than one
Claims 2, 4, 7
“client computer”
•
software running on a computer that provides
services to client computers
Claims 2, 4, 7
“plurality”
•
a system for securing communications
between computers over an open network
Claims 2, 4, 7
“server”
•
Agreed Construction
more than one level or layer
to render unintelligible without decrypting
Claims 2, 4, 7
14
Term 5
“lower level set of communications drivers” /
“lower set of communications drivers”
•
[Claims 2, 4, 7]
“a shim”
•
Agreed Construction
set of communications drivers below the
applications layer”
software added between two existing software
layers, which utilizes the same function calls
of the existing layers
[Claims 2, 4]
Claim 4 preamble.
Limiting.
Having reviewed the intrinsic and extrinsic evidence, the Court adopts the parties’ agreed
constructions.
IV.
CONSTRUCTION OF DISPUTED TERMS
The parties’ positions and the Court’s analysis as to the disputed terms are presented
below.
A.
“applications level”
Disputed Term
Plaintiff’s Proposed
Construction
“applications level”
•
Claims 2, 4, 7
Plain and ordinary meaning.
Defendant’s Proposed
Construction
the highest software
level/layer that is above the
levels/layers at which sockets
are located
The Parties’ Positions
Plaintiff submits that the term “applications level” is used in the ’011 Patent pursuant to
its plain and ordinary meaning and that its meaning is readily understood without construction.
Dkt. No. 71 at 10. According to Plaintiff, the “applications” are software applications and the
“applications level” is the “level” where the software applications are installed. Id. Plaintiff
argues the Court has already found that “applications level” does not need construction because
it previously found that a larger term containing “applications level” did not need construction.
Id. at 11 (citing SSL Servs., LLC v. Citrix Sys., 816 F. Supp. 2d 364, 387–88 (E.D. Tex. 2011)).
15
Plaintiff argues that Defendant’s proposed construction should be rejected because it: (1) imports
limitations from the exemplary embodiments without justification, (2) excludes the exemplary
embodiment in which a sockets level is not present (citing ’011 Patent col.2 ll.58–65, col.3 ll.43–
47, col.7 ll.29–34, col.10 ll.27–29), (3) imports a “socket” limitation that is expressed in a
dependent claim (citing Claims 3 and 5), and (4) does not clarify claim scope because it is
unclear whether the “highest” level is the highest level in the stack or the next highest level
above the sockets level. Id. at 11–13.
In addition to the claims, Plaintiff cites the following intrinsic evidence to support its
position: ’011 Patent col.1 ll.58–60, col.2 ll.13–20, col.2 ll.49–65, col.3 ll.7–14, col.3 ll.33 –
col.4 l.15, col.7 ll.29–34, col.10 ll.27–29, figs.2–5.
Defendant responds that the intrinsic record clearly establishes that the “applications
level” is separate from and above the sockets level. Dkt. No. 75 at 11–12. Defendant contends
that the “applications level” is the highest level (or layer) recited in the claims because it is
necessarily at a higher level than the shim and the shim may be positioned above the other levels.
Id. at 13. According to Defendant, the patent’s description shows this hierarchy in that: (1) the
“applications level” is the highest level in each exemplary embodiment (citing ’011 Patent col.2
ll.58–65), (2) the “applications level” is equated with “the highest level” (quoting ’011 Patent
col.4 ll.63–67), and (3) the “applications level” is described as distinct and separate from the
socket layer (citing ’011 Patent col.9 ll.48–52). Id. at 13–14. Defendant further responds that in
the course of prosecuting the original application and the reexamination of the ’011 Patent, the
patentee clearly stated that the “applications level” is distinct from and above the “sockets level.”
Id. at 14–16. Defendant argues the patent issued from reexamination because the patentee
convinced the examiner that the sockets level “is not part of the applications level.” Id. at 16
16
(quoting November 29, 2012 Notice of Intent to Issue Ex Parte Reexamination Certificate (Dkt.
No. 75-8)).
Defendant contends that its proposed construction does not exclude any exemplary
embodiment for two reasons. First, because the ’011 Patent does not include an embodiment
without a sockets level. Id. at 17. Second, because the proposed construction does not require a
sockets level—it only requires that the “applications level” be distinct from and above a sockets
level if the sockets level is present. Id. at 17.
In addition to the claims, Defendant cites the following intrinsic and extrinsic evidence to
support its position. Intrinsic evidence: ’011 Patent col.2 ll.58–65, col.4 ll.63–67, col.8 ll.38–42,
col.9 ll.48–52, fig.2–5; ’011 Patent File Wrapper February 26, 1999 Preliminary Amendment
(Defendant’s Ex. C, Dkt. No. 75-3), October 17, 2012 Response in Reexamination 90/011,242
(Defendant’s Ex. D, Dkt. No. 75-4), November 9, 2012 Response in Reexamination 90/011,242
(Defendant’s Ex. E, Dkt. No. 75-5), November 9, 2012 Patentee’s Interview Statement in
Reexamination 90/011,242 (Defendant’s Ex. F, Dkt. No. 75-6), November 11, 2012 Examiner’s
Interview Summary in Reexamination 90/011,242 (Defendant’s Ex. G, Dkt. No. 75-7),
November 29, 2012 Notice of Intent to Issue Ex Parte Reexamination Certificate (Defendant’s
Ex. H, Dkt. No. 75-8). Extrinsic evidence: Plaintiff’s Infringement Contentions (excerpts)
(Defendant’s Ex. L, Dkt. No. 75-12); Plaintiff’s Technical Tutorial (excerpts), SSL Services, LLC
v. Citrix Systems, Inc., No. 2:08-cv-158 (Defendant’s Ex. M, Dkt. No. 75-13).
Plaintiff replies that the plain and ordinary meaning of “applications level” allows the
sockets to be part of the applications level. Dkt. No. 76 at 4. Plaintiff argues that “applications
level” was not defined otherwise through lexicography or disclaimer in the ’011 Patent or in its
prosecution history. Id. at 4–7. Specifically, Plaintiff argues that the patentee’s statement that
17
“the present invention inserts a shim between the sockets layer and the applications programs
that use the sockets layer” is understood in context of the entire patent to mean that the invention
is directed to placing a shim between levels, not to the location of the sockets level. Id. at 6.
Plaintiff argues that the patentee’s characterizations of the location of the Winsock socket in the
distinguished prior art simply recognize that the Winsock socket is not part of the applications
level—it is not an unambiguous disclaimer of a socket being part of the applications level. Id. at
6–7.
Plaintiff cites further intrinsic evidence to support its position: ’011 Patent figs.2–5; ’011
Patent File Wrapper February 26, 1999 Preliminary Amendment (Defendant’s Ex. C, Dkt. No.
75-3), October 17, 2012 Response in Reexamination 90/011,242 (Defendant’s Ex. D, Dkt. No.
75-4), November 9, 2012 Response in Reexamination 90/011,242 (Defendant’s Ex. E, Dkt. No.
75-5), November 9, 2012 Patentee’s Interview Statement in Reexamination 90/011,242
(Defendant’s Ex. F, Dkt. No. 75-6), November 11, 2012 Examiner’s Interview Summary in
Reexamination 90/011,242 (Defendant’s Ex. G, Dkt. No. 75-7).
Analysis
The parties dispute two issues: first, whether the sockets level and the applications level
must be distinct, and second, whether all socket-like operations must occur at the sockets level.
As to the first, the Court finds that the applications level and the sockets level must be distinct
and that operations that occur at the sockets level do not occur at the applications level. As to the
second, the Court finds that the use or presence of sockets is not mandated by the patent or its
prosecution history and the intrinsic evidence does not require all socket-like operations to occur
on the sockets level.
18
Consistent with the plain and ordinary meaning of “level,” the patent describes the
software levels (or layers) as distinct and complementary libraries of software routines:
First, the concept of “layers,” “tiers,” and “levels,” which [is] essential to an
understanding of the invention, simply refers to libraries or sets of software
routines for carrying out a group of related functions, and which can conveniently
be shared or called on by different programs at a higher level to facilitate
programming, avoiding duplication and maximizing computer resources.
’011 Patent col.2 ll.50–58.
The “levels” are distinct because they are not duplicative. The patent explains the benefit
of distinct levels. Distinct levels allow applications to be created without the developer having to
incorporate into an application all of the functionality necessary for communication with the
application:
By providing layers in this manner, an applications software programmer can
design an application program to supply data to the TDI layer without having to
re-program any of the specific functions carried out by that layer, and all of the
transmission, verification, and other functions required to send a message will be
taken care of [by] the TDI layer without further involvement by the applications
software. In a sense, each “layer” simply accepts data from the higher layer and
formats it by adding a header or converting the data in a manner which is content
independent, with retrieval of the data simply involving reverse conversion or
stripping of the headers, the receiving software receiving the data as if the
intervening layers did not exist.
Id. at col.3 ll.7–19.
The sockets level in the ’011 Patent is a “level.” Specifically, the sockets level provides
libraries of software routines that act as an interface between applications (at the applications
level) and the transport driver level. As described in the patent:
Some applications are written to directly call upon the TCP functions. However,
for most applications utilizing a graphical user interface conveniently rely on a set
of software routines which are considered to operate above the TDI layer, and are
known as sockets. Sockets serve as an interface between the TCP set of functions,
or stack, and various applications, by providing libraries of routines which
facilitate TCP function calls, so that the application simply has to refer to the
socket library in order to carry out the appropriate function calls. For Windows
applications, a commonly used non-proprietary socket is the Windows socket,
19
known as Winsock, although sockets exist for other operating systems or
platforms, and alternative sockets are also available for Windows, including the
Winsock 2 socket currently under development.
Id. col.3 ll.43–57.
Unpacked, the passage above states that similar to the shims of the patent, the sockets
level fits between two levels of the communication hierarchy, namely, the applications level and
the transport driver level. As with the other levels in the communication hierarchy, the sockets
level facilitates application development by moving functionality away from the application. For
example, the patent discusses Winsock, an exemplary socket on the sockets level. Winsock
allows applications “to refer to the socket library in order to carry out the appropriate function
calls.” Id. col.3 ll.51–52.
The Court finds based on the plain and ordinary meaning of “level” that the plain and
ordinary meaning of “applications level” means that the “sockets level” and “applications level”
are distinct, just as the “applications level” and the “transport driver level” are distinct. The
Court also notes that the patentee throughout prosecution used “applications level” in a manner
that is consistent with the understanding that the “applications level” is distinct from the “sockets
level.” See, e.g., February 26, 1999 Preliminary Amendment at 4–5 (Dkt. No. 75-3 at 5–6)
(noting the difference between the “sockets layer” and the “application programs that use the
sockets layer”); November 9, 2012 Patentee’s Interview Statement in Reexamination 90/011,242
at 1–2 (Dkt. No. 75-6 at 2–3) (noting that Winsock is in a level distinct from the applications
level). Indeed, the patentee said that encryption on a level below the applications level is not an
applications level encryption. See November 9, 2012 Response in Reexamination 90/011,242 at
3–4, 10–12 (Dkt. No. 75-5 at 4–5, 11–13) (noting that encryption by a program at a level below
the applications level is not applications-level encryption); February 16, 2012 Request for
Reconsideration in Reexamination 90/011,242 at 3–5 (Dkt. No. 75-9 at 4–6) (same); see also
20
Citrix Appeal, 769 F.3d at 1089–90 (adopting Plaintiff’s position and affirming that Claims 2, 4,
and 7 were not proven invalid because the prior-art encryption was on a level other than the
applications level).
In addition to finding the “applications level” and the “sockets level” distinct Defendant
asks the Court to find (1) that the “applications level” is the “highest software level” and (2) that
all sockets are located outside the “applications level.” (See Dkt. No. 75-3 at 11 (“above the
levels/layers at which the sockets are located”) (emphasis added).) The Court rejects these
arguments because Defendant has not shown the plain and ordinary meaning of “applications
level” includes these limitations and has not pointed to any disclaimer that supports a deviation
from the plain and ordinary meaning.
Whether the applications level is the highest level. The Court finds that a construction
of “applications level” which includes “highest level” would be too narrow. The Court agrees
with Defendant that the patent shows the “applications level” as the “highest level” in all
embodiments and states “SmartGATE operates at the highest level, or applications level.” ’011
Patent col.4 ll.63–64. The Court finds that these passages show that the “applications level” is
the “highest level” of the specific stack discussed in the patent but the passages do not show that
the “applications level” is the “highest level” of any stack under any context. “The only meaning
that matters in claim construction is the meaning in the context of the patent.” Trustees of
Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016). Thus, the Court
having considered the context of the ’011 Patent finds that a party cannot assert the “applications
level” is below the “levels” that perform the functions of the lower levels in the ’011 Patent. The
Court, however, rejects Defendant’s proposed construction because it does not account for the
21
context of the ’011 Patent and can be read to mean the “applications level” is the “highest level”
in any stack including those not described in the ’011 Patent.
Whether all sockets are outside the applications level. The Court has read
“applications level” in light of the intrinsic record and finds that the patent does not require all
things which perform socket-like operations, that is, all things that could be “sockets,” to be
outside the “applications level.” See Columbia Univ., 811 F.3d at 1364. The finding is based on
the following reasoning. The patent states: “Sockets serve as an interface between the TCP set of
functions . . . and [] applications, by providing libraries of routines which facilitate TCP function
calls.” ’011 Patent col.3 ll.47–49. Sockets serve as interfaces between applications and the TCP
stack. However, the patent states that a system “can [also] include . . . [software] applications
which directly call upon a transport driver interface stack.” ’011 Patent col.9 ll.25–26 (emphasis
added). For example, Figure 3 and the accompanying specification passage describe peer-to-peer
(“P2P”) applications “directly” calling on the transport driver interface (“TDI”) stack. See ’011
Patent at fig.3, item 37 (referring to “applications which directly call upon a transport driver
interface stack”).
That P2P applications can “directly” call on the TDI stack means P2P applications might
perform a socket-like operation by “providing libraries of routines for facilitating TCP function
calls” and exist on the “application level.” Thus, “applications level” and “sockets level” are
distinct but “applications level” should not be read to necessarily exclude all “sockets.” Nor
should it be read to require a separate “sockets level.” The description of P2P applications shows
that some things that may be “applications” do not need the sockets level to communicate with
the TDI stack and may themselves be considered “sockets” because they perform socket-like
operations by providing libraries of routines for communication. See, ’011 Patent at col.3 ll.43–
22
44 (“Some applications are written to directly call upon the TCP functions.”); February 16, 2012
Request for Reconsideration in Reexamination 90/011,242 at 4 (Dkt. No. 75-9 at 5) (“As a
preliminary matter, a person of ordinary skill would understand that there are many programs
that are considered to be ‘applications’ running at ‘application level’ which do not utilize the
sockets interface (e.g., word processing programs, calculator programs, spreadsheet
programs).”).
The Court’s finding is consistent with the doctrine of claim differentiation which suggests
that “sockets” should not be read into claim 2. Claims 3 and 5 depend from Claims 2 and 4
respectively and Claims 2 and 4 expressly recite using a socket as an interface between the
applications and the transport driver level. Indeed, the patent states that the shim of the invention
is not necessarily a “socket shim.” See, e.g., col.10 ll.43–48, Claim 3 (reciting “wherein said
shim is a socket shim”), Claim 5 (same).
Finally, the Court notes that many of these issues are not issues of claim construction
because whether a piece of software operates on the “applications level,” “the sockets level,” or
another “level” is an issue of fact that turns on the design of the accused device. For example, the
Court cannot, in claim construction, conclude that all software labeled as a “socket” exists on the
“sockets level” because whether one skilled in the art would consider a piece of software located
outside the sockets level to be a “socket” depends on the function of that software in the accused
device. These issues should be addressed on infringement or invalidity.
Accordingly, the Court construes the “applications level” as follows:
•
“applications level” means “software level, within the communications hierarchy,
where applications are installed.”
23
B.
The Intercept Terms
Disputed Term
Plaintiff’s Proposed
Construction
“intercept” / “intercepting”
•
Plain and ordinary meaning.
Claims 2, 4, 7
Defendant’s Proposed
Construction
receive/receiving a
communication that is not
addressed for the shim
“intercept function calls and
requests for service”
•
Claim 2
“intercept said function
calls and requests for
service” 6
•
Plain and ordinary meaning.
Claim 4
using a shim to [receive] a
request for a desired function,
service, operation, or event
[that is not addressed for the
shim]
“intercepting said function
calls and requests for
service”
•
Claim 7
Because the parties’ arguments and proposed constructions with respect to these terms
are related, the Court addresses the terms together.
The Parties’ Positions
Plaintiff submits the “intercept” and “intercepting” terms can be understood according to
their plain and ordinary meaning. Dkt. No. 71 at 13. Plaintiff argues that the Court has already
determined once that the meaning of “intercept” needs no explanation. The Court used the term
in its previous construction of the ’011 Patent and rejected a construction of “intercepting” as a
form of “receiving.” Id. at 13–14, 16 n.37 (citing SSL Servs., LLC v. Citrix Sys., 816 F. Supp. 2d
364, 378–81, 386–87, 393–94 (E.D. Tex. 2011)). Plaintiff submits that Defendant’s proposed
6
The parties presented the term “intercepting function calls and requests for service” for
construction but the Court does not find that term in any of the asserted claims. But the Court
notes that “intercept said function calls and requests for service” is found in Claim 4 and should
be understood according to the same analysis as applied to the other Intercept terms.
24
construction should be rejected because (1) it requires “communications” to be intercepted when
the claims state that “function calls and requests for service” are intercepted and (2) it excludes
the exemplary embodiment in which the “function calls and requests for service” are addressed
to the shim by virtue of the shim having the same addressing as another layer. Id. at 14–15
(citing ’011 Patent col.3 ll.20–26, col.9 ll.52–54).
With respect to “function calls and requests for service,” Plaintiff submits the meanings
of these words are readily apparent to one of skill in the art without construction. Id. at 15.
Plaintiff argues the Court recognized the meanings are understood without construction when it
accorded the terms their plain meaning in Citrix. Id. at 15–16 (citing Citrix, 816 F. Supp. 2d at
378–81).
In addition to the claims, Plaintiff cites the following intrinsic evidence to support its
position: ’011 Patent, at [57] Abstract, col.3 ll.20–26, col.6 ll.42–45, col.9 ll.47–54, col.10 ll.35–
37.
Defendant responds that the Court in Citrix determined that the intercepting terms needed
to be construed, and construed “intercept/intercepting function calls and requests for service” as
“using a shim to intercept or divert a request of a desired function, service, operation or event.”
Dkt. No. 75 at 18 (citing SSL Servs., LLC v. Citrix Sys., No. 2:08-cv-158, Dkt. No. 123 at 22–27
(E.D. Tex. Sept. 20, 2011)). 7 Defendant argues this construction is binding on Plaintiff under the
doctrine of collateral estoppel. Id. at 18–19 (citing Pfaff v. Wells Electronics, Inc., 5 F.3d 514,
518 (Fed. Cir. 1993); Molinaro v. Fannon/Courier Corp., 745 F.2d 651, 655 (Fed. Cir. 1984);
Pace v. Bogalusa City Sch. Bd., 403 F.3d 272, 290 (5th Cir. 2005)).
7
SSL Servs., LLC v. Citrix Sys., No. 2:08-cv-158, Dkt. No. 123 (E.D. Tex. Sept. 20, 2011) is the
slip opinion that is reported as SSL Servs., LLC v. Citrix Sys., 816 F. Supp. 2d 364 (E.D. Tex.
2011).
25
Defendant further responds that its proposed construction should be adopted because it is
identical to the Citrix construction, except for the reference to “or divert” and the explanation of
what it means to “intercept.” Id. at 19–20. The “or divert” language should be removed, argues
Defendant, because it is not synonymous with “intercept” and because it is not supported by the
intrinsic record. Id. at 20. Defendant contends the concept of “diverting” is more properly
contained in a separate limitation, the “causing the application level authentication and
encryption program [to perform functions]” limitation. Id. Defendant contends that the ’011
Patent distinguishes between diverting and intercepting. Id. at 20–21 & n.13 (citing ’011 Patent
col.9 ll.52–64, col.10 ll.31–33, col.10 ll.35–38, col.10 ll.49–50). 8
With respect to “intercept” and “intercepting,” Defendant responds that the terms do not
encompass receiving information addressed to the shim for three reasons. Id. at 21–24. First, the
claims expressly state that the shim intercepts function calls and requests sent to something other
than the shim. Id. at 22–23 (citing Claim 2). Second, the exemplary embodiments are described
as the shim intercepting function calls made to something other than the shim. Id. at 23 (citing
’011 Patent col.9 ll.52–54). Third, in the course of prosecuting the reexamination, the patentee
expressly stated that software that receives information addressed to it is not intercepting that
information. Id.
Finally, Defendant responds that interception by the shim is a limitation of every claim.
Id. at 24–25. According to Defendant, such a limitation is expressed in Claims 2 and 4, and is
also expressed in the description, as the Court held in Citrix. Id. at 24 (citing Citrix, No. 2:08-cv158, Dkt. No. 123 at 24; ’011 Patent col.6 ll.52–45, col.7 ll.1–4, col.9 ll.52–54, col.10 l.49).
8
Defendant has no objection to replacing “communications” in its proposed construction with
the claim language, “function calls and requests for service.” Id. at 22.
26
In addition to the claims, Defendant cites the following intrinsic and extrinsic evidence to
support its position. Intrinsic evidence: ’011 Patent col.6 ll.42–45, col.7 ll.1–4, col.9 ll.52–54,
col.10 ll.31–33, col.10 ll.35–38, col.10 ll.49–50; ’011 Patent File Wrapper November 9, 2012
Response in Reexamination 90/011,242 (Defendant’s Ex. E, Dkt. No. 75-5), February 16, 2012
Request for Reconsideration in Reexamination 90/011,242 (Defendant’s Ex. I, Dkt. No. 75-9).
Extrinsic evidence: Plaintiff’s Infringement Contentions (excerpts) (Defendant’s Ex. L, Dkt.
No. 75-12).
Plaintiff replies that the ’011 Patent describes that a shim can intercept data addressed for
the shim and that a shim can intercept information by diverting the information. Dkt. No. 76 at
8–10. Plaintiff argues that the patentee’s characterization of the prior art during prosecution
recognized a number of failings of the prior art. First, that the references did not disclose a shim
intercepting “function calls and requests for services . . . to communications drivers” because the
alleged shim did not have any communication drivers below it. Id. at 8 (citing February 16, 2012
Request for Reconsideration in Reexamination 90/011,242 at 6 (Dkt. No. 75-9 at 7)). Second, the
references did not disclose a shim arranged between two layers of the stack. Id. Third, the
references did not disclose intercepting information; rather, they disclosed information travelling
in a direct unimpeded path from source to destination. Id. at 9.
Plaintiff cites further intrinsic evidence to support its position: ’011 Patent col.6 ll.29–
35; ’011 Patent File Wrapper February 16, 2012 Request for Reconsideration in Reexamination
90/011,242 (Defendant’s Ex. I, Dkt. No. 75-9).
27
Analysis
To begin, the Court does not reach the issue of collateral estoppel because the Court
reaches the same construction as in Citrix. Defendant’s position, that Plaintiff is estopped from
arguing against the previous construction, is moot.
Otherwise, there are two main points of dispute. First, whether information “diverted” by
the shim can be considered “intercepted” by the shim. Second, whether information addressed to
the shim can be considered “intercepted” by the shim. The Court finds that the way in which
information is intercepted in the patent includes “diverting” the information off its intended path,
as the Court explained in Citrix and that information addressed to the shim can be considered
intercepted by the shim.
The Court rejects Defendant’s argument that “intercepted” excludes “diverted” in the
’011 Patent. The Court said in Citrix that “intercepted” does not mean “seized” but means
“diverted” or “rerouted.” SSL Servs., LLC v. Citrix Sys., 816 F. Supp. 2d 364, 378–81 (E.D. Tex.
2011). Indeed, the Court finds here that the description and claim language equates, not
distinguishes, “intercept” and “divert.” For example, the patent states that the socket and TDI
shim “intercept[] function calls to the socket or transport driver and directs calls to the
authentication server in order to perform encryption and authentication routines.” ’011 Patent
col.6 ll.51–57 (emphasis added). The patent further states the socket shim “intercept[s] call
initiating function calls 40 made to the socket . . . [to] have the authentication client software
initiate communications with the authentication server . . . in order to carry out the authentication
protocol.” Id. at col.9 ll.46–58. The socket shim then “causes files 41 intended for the TDI layer
to be diverted to the authentication software for encryption.” Id. at col.9 ll.58–64 (emphasis
added). The patent summarizes the shim’s “interception” function:
28
Like the socket shim, implementation of the TDI shim essentially simply involves
diverting certain information to the client software in order to establish a
communications link with the authentication server, and subsequently perform
encryption to obtain encrypted files 54 for transmission directly through the TDI
layer in the usual manner.
Id. at col.10 ll.29–35. That is, the shim “diverts” information to the authentication and encryption
software in order to cause the encryption and other processing.
This understanding of “intercept” comports with the claim language. Claim 2 says that
the shim is arranged to “intercept” information “in order to cause the applications level
authentication and encryption program” to encrypt and otherwise process the information. ’011
Patent col.13 ll.16–23. Just as the description says the information is “diverted” in order to cause
encryption and other processing, the claim states the information is “intercepted” in order to
cause encryption and other processing. Thus, “intercept”/“intercepting” in the ’011 Patent means
“divert”/“diverting.”
Furthermore, the Court does not understand that in the ’011 Patent, “intercepting” is
broader than “diverting” from the intended path. It is true that ’011 Patent describes an NDIS
shim that “intercepts” IP packets but does not “divert” those packets to the applications level
encryption program. ’011 Patent col.10 ll.42–62. But those packets are not “seized.” They are
sent to encryption and other processing routines not in the intended path from the transport driver
layer (“TDI”) to the network driver layer (“NDIS”). Id. The processed packets then continue on
to the network driver layer. Id. That is, the packets are “diverted” off their intended path. As in
Citrix, the Court concludes that “the claim language indicates that intercepting is the same as
diverting.” Citrix, 816 F. Supp. 2d at 379.
The Court also rejects Defendant’s argument that “intercepted” by the shim cannot
include “addressed” to the shim. The ’011 Patent does not reference a shim diverting information
that is addressed to the shim. However, the Court does not understand the plain meaning of
29
“intercepting” to preclude such a possibility. For example, information can be addressed to two
intended recipients, one of them the shim. The shim then “diverts” the information from reaching
the other intended recipient. The Court understands that the information is still “intercepted.”
Defendant’s citations to the prosecution history do not disclaim this scenario. Rather, the
prosecution history states that something that reaches its intended destination along its intended
path is not “intercepted.” See, e.g., November 9, 2012 Response in Reexamination 90/011,242 at
5 (Dkt. No. 75-5 at 6) (“The fact that the application program sends data directly to its intended
destination means that it is not an ‘interception’ at all.” (emphases in original)). This is not a
disclaimer, this is simply an explanation of the plain meaning of “interception.”
In sum, nothing in the patent or prosecution history mandates that the “function calls and
requests for service” sent to the “lower level set of communications drivers” may not be sent to
the shim. And, if they are sent to the shim, there is nothing in the patent or prosecution history
that mandates that the shim may not intercept the “function calls and requests for service” sent to
the “lower level set of communications drivers.” Thus, an accused process or device that
addresses function calls and requests for service to the shim does not automatically fall outside
the scope of the claims.
Accordingly, the Court reiterates is holding in Citrix, with slight clarifications as follows:
•
“intercept” / “intercepting” means “divert / diverting from its intended path”;
•
“intercept function calls and requests for service” means “use a shim to divert a
request of a desired function, service, operation, or event”;
•
“intercepting function calls and requests for service” means “using a shim to
divert a request of a desired function, service, operation, or event”; and
30
•
“intercepting said function calls and requests for service” means “using a shim to
divert a request of a desired function, service, operation, or event.”
C.
“encrypt files” / “files”
Disputed Term
“files”
•
Claims 2, 4, 7
Plaintiff’s Proposed
Construction
Defendant’s Proposed
Construction
named sets of data used by a
a set of data used by a program
program
“encrypt files”
•
Claims 2, 4, 7
to render a set of data used by
a program unintelligible
without decrypting
to render, without first
packaging into datagrams or
packets, named sets of data
used by a program
unintelligible without
decrypting
The Parties’ Positions
Plaintiff submits that the Court should construe “files” and “encrypt files” as it previously
construed the terms, namely, as “a set of data used by a program” and “to render a set of data
used by a program unintelligible without decrypting,” respectively. Dkt. No. 71 at 16, 18 (citing
SSL Servs., LLC v. Citrix Sys., 816 F. Supp. 2d 364, 385 (E.D. Tex. 2011)). Plaintiff submits that
the Defendant’s proposed construction should be rejected because (1) it requires that files be
“named,” which is contrary to the term’s plain meaning and is unsupported by the intrinsic
record and (2) it requires the encryption to occur “without first packaging into datagrams or
packets,” which was rejected by the Court in Citrix and is unsupported by the intrinsic record. Id.
at 17–18 (citing Citrix, 816 F. Supp. 2d at 384–85).
Defendant responds that the Court in Citrix explained that “encrypting files” was
encryption at a file level—it does not include encrypting data packets or datagrams. Dkt. No. 75
at 26–27 (citing SSL Servs., LLC v. Citrix Sys., No. 2:08-cv-158, Dkt. No. 123 at 31–32 (E.D.
31
Tex. Sept. 20, 2011). Defendant contends that the ’011 Patent distinguishes between file-level
encryption and packet-level encryption. Id. at 27–28 (citing ’011 Patent col.10 l.63 – col.11 l.2).
The Court previously stated that the distinction between file-level and packet-level
encryption “does not mean that an accused device that encrypts packets automatically falls
outside the scope of the claims.” Defendants interpret this to mean that so long as there is filelevel encryption whether there is packet-level encryption is irrelevant. Id. at 27. Defendant
argues this means file-level encryption must happen before the file is packaged into packets or
datagrams. Id. at 28.
Defendant further responds that file-level encryption is mandated by the plain meaning of
term which says “encrypt file”— not “encrypt data”—and by the description of the invention. Id.
at 28–29. Specifically, Defendant contends that the applications-level encryption embodiments,
depicted in Figures 3 and 4, are described as encrypting files before they are packetized. Id. at 29
(citing ’011 Patent col.3 ll.21–29). Defendants also note that the Figure 5 embodiment has only
one shim which is between the TDI layer and the NDIS layer and does not have applicationslevel encryption, so it is not claimed. Id. at 30 (citing ’011 Patent col.10 l.42 – col.11 l.2).
Defendant finally contends that “files” are distinct from “datagrams” and “packets” in the patent
(citing ’011 Patent col.8 ll.55–56, col.9 ll.34–45, figs.2–5). Id. at 30.
With respect to “files,” Defendant responds that the extrinsic evidence relied on by the
Court in Citrix defines a file as “a complete, named collection of information, such as . . . a set of
data used by a program.” Id. at 30–31 (citing Citrix Sys., No. 2:08-cv-158, Dkt. No. 123 at 31–
32; Microsoft Press Computer Dictionary 194 (3d ed. 1997) (Dkt. No. 75-10 at 5)). Defendant
advocates that this “named” aspect of the definition should be incorporated into the construction
32
of “files” to clarify that “packets” and “datagrams” are not “files,” as the Court previously
explained. Id.
In addition to the claims, Defendant cites the following intrinsic and extrinsic evidence to
support its position. Intrinsic evidence: ’011 Patent col.3 ll.21–29, col.8 ll.55–56, col.9 ll.34–35,
col.10 l.42 – col.11 l.2, figs.3–5. Extrinsic evidence: Microsoft Press Computer Dictionary (3d
ed. 1997) (“file”) (Defendant’s Ex. J, Dkt. No. 75-10).
Plaintiff replies that under the Court’s construction of “encrypt files” in Citrix, and under
the plain meaning of the term as used in the ’011 Patent, a file may be encrypted after the file has
been packaged into datagrams or packets. Dkt. No. 76 at 10–11. Plaintiff replies that under the
Court’s construction of “files” in Citrix and under the plain meaning of the term as used in the
’011 Patent, a file need not be named. Id. at 11–12. Thus, Plaintiff contends, incorporating the
“named” limitation from the extrinsic evidence is an improper use of extrinsic evidence in that it
would narrow the meaning of “file” as used in the patent. Id.
Plaintiff cites further intrinsic evidence to support its position: ’011 Patent col.2 l.65 –
col.3 l.7, col.3 ll.20–28, col.10 l.63 – col.11 l.2.
Analysis
The issue distills down to whether encrypting “files” includes encrypting “datagrams” or
“packets.” The Court finds that, as those terms are used in the ’011 Patent, it does not. The Court
understands “encrypt files” in the same way it understood the term in Citrix which is that “files”
does not “include [the] ‘packets,’ ‘datagrams,’ or other types of communications” described in
the specification of the ’011 Patent. SSL Servs., LLC v. Citrix Sys., 816 F. Supp. 2d 364, 384–85
(E.D. Tex. 2011).
33
The Court in Citrix held that an applications level encryption software that “encrypts
files” cannot encrypt the “datagrams” and “packets” of the patent because the applications level
encryption software exists on the applications level and the “datagrams” and “packets” exist on
the transport driver level below the applications level. These “datagrams” and “packets” do not
exist above the transport driver level because they are created when the transport driver level
formats information for transmission over a network. See id. (“As stated in the patent, it is the
TDI layer (below the application layer) where datagrams and packets are formed. . . . Simply
stated, ‘encrypted files’ from the application layer are not encrypted datagrams or packets.”);
’011 Patent col.2 l.66–col.3 l.3.2, col.8 ll.37–65.
That said the Court does not find “files” to exclude “datagrams” or “packets” as the terms
may be generally used in the art. Whether data at the applications level that is labeled a
“datagram” or “packet” constitutes a “file” is a question of fact that turns on how the “files”
function in a particular device. The patent does not say that “files” cannot be represented as
“packets” or “datagrams” at the applications level. The patent also does not say that “packets”
and “datagrams” cannot be created at other levels. The patent only teaches that “files” cannot be
the “packets” or “datagrams” created by the transport driver level as described in the
specification. Thus, a device that encrypts “datagrams” or “packets” does not automatically fall
outside the scope of the claims.
Finally, the Court finds that the “naming” limitation on “file” is not appropriate. The
Court finds it unclear what it means for data to be “named.” There is nothing in the patent that
mandates files have “names.” At the hearing, while they still disagreed as to whether a file
inherently has a “name,” the parties agreed that a file must be identifiable. The Court will not
34
add language that does not clarify claim scope. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d
1554, 1568 (Fed. Cir. 1997).
Accordingly, the Court construes “files” and “encrypt files” as follows:
•
files” means “identifiable sets of data used by a program”; and
•
“encrypt files” means “to render identifiable sets of data used by a program
unintelligible without decrypting.”
D.
“computer software for installation on a client computer of a multi-tier
virtual private network”
Disputed Term
“computer software for
installation on a client
computer of a multi-tier
virtual private network”
•
Plaintiff’s Proposed
Construction
Plain and ordinary meaning.
Claim 4
Defendant’s Proposed
Construction
This term is broad enough to
include instances of software
embodied in transitory
signals, which is not statutory
subject matter under 35
U.S.C. § 101.
The Parties’ Positions
Plaintiff submits the parties have already agreed on the meanings of “client computer,”
“multi-tier,” and “virtual private network” and that the remaining words of “computer software
for installation on a client computer of a multi-tier virtual private network,” namely, “computer,”
“software,” and “installation” are readily understood without construction. Dkt. No. 71 at 18.
Thus, Plaintiff contends, the term is understood without construction. Id. Plaintiff argues that the
term, and therefore Claim 4, is not directed to “transitory signals” and thus does not trigger the
proscription against claiming “transitory” material as stated in In re Nuijten, 500 F.3d 1346,
1353–57 (Fed. Cir. 2007). Id. at 19–20. Rather, Plaintiff contends that Claim 4 is directed to
“computer software” that is “installed on a client computer” and is therefore not transitory. Id. at
20.
35
Defendant responds that Claim 4 is directed to unembodied software and is not patentable
subject matter under 35 U.S.C. § 101. Dkt. No. 75 at 32 (citing Nuijten, 500 F.3d at 1353–57;
Allvoice Devs. US, LLC v. Microsoft Corp., 612 F. App’x 1009, 1018 (Fed. Cir. 2015); Digitech
Image Techs, LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344, 1349-50 (Fed. Cir. 2014)).
Defendant contends that the plain meaning of the claim language is that it is uninstalled
software—it recites “computer software for installation on a client computer.” Id. at 33 (quoting
Claim 4, emphasis added by Defendant). Defendant contends that nothing in the claim or the
entire ’011 Patent indicates a tangible medium embodying the software from which it can be
installed on a computer. Id.
Plaintiff replies that “software for installation” is necessarily embodied on a nontransitory storage medium and therefore is not subject to the Nuijten proscription. Dkt. No. 76 at
12.
Analysis
The issue is whether Claim 4 is broad enough to include non-patentable subject matter
under 35 U.S.C. § 101. Given the arguments and evidence before the Court, the Court is unable
to decide whether Claim 4 is directed to non-patentable subject matter. Specifically, the Court
understands the crux of the issue to be whether “software for installation” is necessarily directed
to a non-transitory tangible medium. Defendant contends that “for installation” does not
inherently require a non-transitory tangible medium, but does not provide any evidence that
allows the Court to reach that conclusion. Plaintiff contends that “for installation” does
inherently require a non-transitory tangible medium, but similarly does not provide any evidence
that allows the Court to reach that conclusion.
36
While software is not necessarily barred by § 101, it must be claimed as either a process
or in some tangible form. Recently, in Allvoice, the Federal Circuit held that a claim to an
“interface”—software—is not patentable under § 101 because it is not directed to a process or a
tangible medium. Allvoice, 612 F. App’x at 1017–19. Specifically, the Federal Circuit explained:
“Software may be patent eligible, but when a claim is not directed towards a process, the subject
matter must exist in tangible form. Here, the disputed claims merely claim software instructions
without any hardware limitations.” Id. at 1018.
Software, and other computer-utilized data, is not necessarily embodied in a tangible
form. In Allvoice, the Federal Circuit rejected the argument that software is necessarily in a
tangible form—a manufacture—as it must exist in a “machine readable, physical state.” Id. In
rejecting the argument, the Federal Circuit explained that “instructions, data, or information
alone, absent a tangible medium, is not a manufacture.” Id. (citing Digitech Image Techs., 758
F.3d at 1349–50; Nuijten, 500 F.3d at 1356). Similarly, in Digitech, the Federal Circuit rejected
the argument that a claim to a “profile”—data—is § 101 eligible because the data necessarily is
located within an electronic/computer system. Digitech 758 F.3d at 1348–50. The Federal Circuit
in Digitech noted that the claim did not tie the data to a tangible embodiment and explained that
“[d]ata in its ethereal, nonphysical form is simply information that does not fall under any of the
categories of eligible subject matter under section 101.” Id. at 1350 (comparing the Digitech
claims with the claims to transitory signals held invalid in Nuijten).
It is unclear whether the “for installation” limitation necessarily means that the claimed
invention is embodied in a non-transitory tangible form. However, the Court notes this may be a
reasonable argument if, as Plaintiff contends, it may not be feasible to “install” software without
first storing it on a tangible medium.
37
The Court notes that the uncertainty as to whether software that is computer-readable is
necessarily patent eligible drives this dispute. On one hand, the Patent Trial and Appeal Board
(“PTAB”), applying the broadest reasonable construction, has held that a claim directed to a
“machine-readable storage medium” includes unpatentable transitory media and is patent
ineligible under § 101. See Ex parte Mewherter, 107 U.S.P.Q.2d (BNA) 1857, 1859–62
(P.T.A.B. 2013) (citing Nuijten for the proposition that “transitory embodiments are not directed
to statutory subject matter”). On the other hand, this Court has held that a claim to a “computerreadable medium” does not necessarily include unpatentable transitory embodiments. See Data
Engine Techs. LLC v. IBM, No. 6:13-CV-860-RWS-JDL, 2015 U.S. Dist. LEXIS 68504, at *18–
*22 (E.D. Tex. May 27, 2015) (noting that a transitory signal, while it may be computer readable
according to the patent at issue there, it is not a “computer-readable medium containing
instructions” as the claim required, because such a transitory signal cannot contain instructions).
The Court does not understand Mewherter or Data Engine to conclusively establish whether a
claim directed to a computer-readable medium necessarily includes unpatentable transitory
signals. Even if a computer-readable medium necessarily includes transitory signals, it is not
clear that a transitory signal can be said to be “for installation.”
Accordingly, the Court finds that “computer software for installation on a client computer
of a multi-tier virtual private network” should be accorded its plain and ordinary meaning and
finds that Defendant has not shown, on this record, that it encompasses unpatentable subject
matter.
38
E.
The Order of the Steps of Method Claim 7
Disputed Term
Plaintiff’s Proposed
Construction
“[I]ntercepting said function calls
comprises a first group of
and requests for service sent by said steps that must precede all
applications program to said lower other steps.
level set of communications
drivers”
Defendant’s Proposed
Construction
comprises a first step that
must precede all other
steps
“[C]ausing an applications level
authentication and encryption
program in said one of said client
computers to communicate with the
server in response to receiving said
intercepted function calls and
requests for service by generating a
session key, using the session key
generated by the applications level
authentication and encryption
program to encrypt file [sic] send
by the applications program”
“[S]ending function calls and
requests for service to the lower
level set of communications drivers
in order to transmit said encrypted
files over said open network”
comprises a second group
of steps that must follow
the first group of steps and
precede the third group of
steps
comprises a second group
of steps that must follow
the first step and precede
the third step
comprises a third group of
steps that must occur after
all of the steps included in
the first and second
groups of steps
comprises a third step that
must occur after all of the
steps included in the first
step and second group of
steps
The Parties’ Positions
Plaintiff submits that the Court has already construed Claim 7 as having groupings of
steps, with the groupings proceeding in the order recited but with the steps within the groupings
proceeding in any order. Dkt. No. 71 at 21–22 (citing SSL Servs., LLC v. Citrix Sys., 816 F.
Supp. 2d 364, 373–74 (E.D. Tex. 2011)). Plaintiff submits that the Defendant’s proposed
construction should be rejected because it ignores the groupings of the steps. Id. at 22–23. In
particular, Plaintiff contends that “intercepting said function calls and requests for service” is not
necessarily a single step, it could comprise a step of intercepting a function call and an additional
step of intercepting a request for service. Id. at 23. And likewise, “sending function calls and
39
requests for service” is not necessarily a single step. Id. Plaintiff submits that the ’011 Patent
expressly contemplates intercepting function calls separately from requests for service. Id. (citing
’011 Patent, at [57] Abstract, fig.7 step 100). And Plaintiff submits that the patent distinguishes
functions and services by their type. Id. (citing ’011 Patent col.3 ll.64 – col.4 l.1, col.6 ll.27–31,
col.6 l.50, col.7 ll.53–64, col.9 ll.5–10, col.10 ll.21–22).
In addition to the claims themselves, Plaintiff cites the following intrinsic evidence to
support its position: ’011 Patent, at [57] Abstract, col.3 l.64 – col.4 l.1, col.6 ll.27–31, col.6 l.50,
col.7 ll.53–64, col.9 ll.5–10, col.10 ll.21–22, fig.7.
Defendant responds that Claim 7 does not recite groups of “intercepting” steps or of
“sending” steps, but rather recites a single intercepting step to intercept both function calls and
requests for service, and a single sending step to send both function calls and requests for
service. Dkt. No. 75 at 35–36. Defendant argues that the Court’s construction in Citrix is based
on Claim 27 of the ’796 Patent and should not be applied to Claim 7 of the ’011 Patent because
Claim 27 of the ’796 Patent includes two intercepting steps. Id. (citing SSL Servs., LLC v. Citrix
Sys., No. 2:08-cv-158, Dkt. No. 123 at 14–15 (E.D. Tex. Sept. 20, 2011); ’796 Patent col.20 l.56
– col.22 l.5).
In addition to the claims themselves, Defendant cites the following intrinsic evidence to
support its position: ’796 Patent (Defendant’s Ex. K, Dkt. No. 75-11).
Plaintiff replies that because the ’011 Patent allows that function calls may be distinct
from requests for service, the step of “intercepting function calls and requests for service”
necessarily includes intercepting function calls distinct from intercepting requests for service.
Dkt. No. 76 at 13. Thus, the patent contemplates that the “intercepting” and “sending” steps may
comprise a group of steps. Id.
40
Analysis
The issue here distills to whether “intercepting/sending function calls and requests for
service” can be understood as “intercepting/sending function calls and intercepting/sending
requests for service.” The Court understands that it can and therefore rejects Defendant’s
proposed construction. Neither Defendant nor Plaintiff objected to the Court’s construction at the
hearing.
The plain meaning of “intercepting/sending function calls and requests for service” is
“intercepting/sending function calls and intercepting/sending requests for service.” The Federal
Circuit has addressed a similar grammar-based construction issue that informs the Court’s
analysis here. In Superguide Corp. v. DirecTV Enters., the Federal Circuit determined that at as a
matter of grammar, a phrase preceding a list applies to each member of a list. 358 F.3d 870, 886
(Fed. Cir. 2004) (citing William Strunk, Jr. & E. B. White, The Elements of Style 27 (4th ed.
2000)). For example, “in winter, summer, or fall” means “in winter, in summer, or in fall” and
“at least one of A, B, C, and D” means at least one of A, at least one of B, at least one of C, and
at least one of D. See id. The grammatical construct here is like “in winter and summer,” which
under the grammatical rule stated in Superguide, would mean “in winter and in summer.” Under
that rule, “intercepting function calls and requests for service” means “intercepting function calls
and intercepting requests for service” and “sending function calls and requests for service”
means “sending function calls and sending requests for service.”
Defendant has not provided any reason why “function calls and requests for service”
should be unitized in the subject phrases. And the Court declines to do so. That is, “function calls
and requests for service” are not necessarily a unit, and the “intercepting” and “sending” steps of
Claim 7 may include multiple intercepts or sends.
41
Accordingly, the Court reiterates its reasoning and construction set forth in Citrix, and
holds that Claim 7 includes three groups of steps, the “intercepting . . .” group, the “causing . . .”
group, and the “sending . . .” group. These groups proceed in the order they are recited in Claim
7, but the steps within the groups may proceed in any order. SSL Servs., LLC v. Citrix Sys., 816
F. Supp. 2d 364, 373–74 (E.D. Tex. 2011).
V.
.
CONCLUSION
The Court adopts the above constructions set forth in this opinion for the disputed and
agreed terms of the ’011 Patent. The parties are ordered that they may not refer, directly or
indirectly, to each other’s claim construction positions in the presence of the jury. Likewise, the
parties are ordered to refrain from mentioning any portion of this opinion, other than the actual
definitions adopted by the Court, in the presence of the jury. Any reference to claim construction
proceedings is limited to informing the jury of the definitions adopted by the Court. However,
the parties are reminded that all evidence must be constrained by the Court’s reasoning in this
Order.
SIGNED this 3rd day of January, 2012.
SIGNED this 17th day of May, 2016.
____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE
42
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