Rockwell Automation, Inc. v. 3S-Smart Software Solutions GmbH

Filing 105

CLAIM CONSTRUCTION MEMORANDUM AND ORDER. Signed by Magistrate Judge Roy S. Payne on 10/5/2016. (ch, )

THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
ROCKWELL AUTOMATION, INC.,
v.
3-S SMART SOFTWARE SOLUTIONS,
GMBH

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CASE NO. 2:15-CV-1543-JRG-RSP

CLAIM CONSTRUCTION
MEMORANDUM AND ORDER
On August 24, 2016, the Court held a hearing to determine the proper construction of
disputed claim terms in United States Patents No. 5,619,409, 5,636,124, 5,812,133, 5,818,711,
5,844,795, 5,845,149, 5,940,293, 6,138,174, 6,247,168, 6,675,226, 6,816,817, 6,978,225,
7,130,704, 7,143,366, 7,693,585, 7,716,567, and 7,836,122. Having reviewed the arguments
made by the parties at the hearing and in their claim construction briefing (Dkt. Nos. 63, 67,
and 68),1 having considered the intrinsic evidence, and having made subsidiary factual findings
about the extrinsic evidence, the Court hereby issues this Claim Construction Memorandum
and Order. See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005); Teva Pharm. USA,
Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).

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Citations to documents (such as the parties’ briefs and exhibits) in this Claim Construction
Memorandum and Order refer to the page numbers of the original documents rather than the
page numbers assigned by the Court’s electronic docket unless otherwise indicated.
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Table of Contents
I. BACKGROUND ....................................................................................................................... 6 
II. LEGAL PRINCIPLES ........................................................................................................... 6 
III. THE PARTIES’ STIPULATED TERMS ......................................................................... 10 
IV. CONSTRUCTION OF DISPUTED NON-PREAMBLE TERMS AS TO WHICH
THERE IS NO 35 U.S.C. § 112, ¶ 6 ALLEGATION .............................................................. 10 
A. “breakpoint value” .............................................................................................................. 11 
B. “breakpoint signal”.............................................................................................................. 14 
C. “bus” .................................................................................................................................... 17 
D. “execute once to completion” ............................................................................................. 18 
E. “event” ................................................................................................................................. 21 
F. “a portion of each scheduled task . . . from the portions starting point to its completion
point” .................................................................................................................................. 22 
G. “address monitor” ............................................................................................................... 22 
H. “to alter the display of the graphical element when an address of the electronic memory
is accessed during execution of the stored program” ......................................................... 23 
I. “to display an indication of the graphical element together with a time of accessing of
an address of the electronic memory when an address of the electronic memory from
the second address area is accessed during execution of the stored program” ................... 25 
J. “simultaneously displaying an executable program in a remote processor and a plurality
[of] program edits input at a workstation” .......................................................................... 26 
K. “monitoring the memory location to record the time of a change in the data in the
memory location” ............................................................................................................... 28 
L. “entering an I/O map table into the controller,” “software address,” and “physical
network address”................................................................................................................. 30 
M. “sequences of axis functions” ............................................................................................ 35 
N. “generating a substantially complete real time machine language program” and
“producing a substantially complete real time machine language program for
controlling axis functions” .................................................................................................. 37 
O. “A production object for an object-oriented programming language” ............................... 39 
P. “a first module” and “a second module” ............................................................................. 39 
Q. “multi-network interface” ................................................................................................... 41 
R. “identity data representative of an identity of the respective component in the system,”
“component designation data,” and “component data” ...................................................... 45 
S. “generating a series of user viewable monitoring displays of the parameters by
component based upon the sensed parameters and the identity data, the monitoring
displays including graphical presentations of parameter levels,” “generating a user
viewable monitoring display of the parameters by component based upon the sensed
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parameters and the identity data,” and “a monitoring station configured cyclically to
access the parameter data via the network link and to generate a user viewable
representation of the parameter data including a plurality of virtual meters displaying
current and historical levels of selected parameters for each component” ......................... 46 
T. “an automation interface component that facilitates . . .” ................................................... 47 
U. “editing the control program while in the industrial controller”......................................... 50 
V. “the computer process interface library is compiled with the automation interface
component” ......................................................................................................................... 52 
W. “a packaging component associated with an industrial control device” ............................ 52 
X. “an abstraction component that . . . determines the properties and methods that are
exposed to a particular data consuming device” ................................................................. 53 
Y. “determining the properties and methods that are exposed to a particular data
consuming device” .............................................................................................................. 53 
Z. “invokes methods” .............................................................................................................. 54 
AA. “scale of the data” ............................................................................................................ 54 
BB. “the monitoring station is configured to build a view of the components in real-time
based upon the identifying component data” ...................................................................... 55 
CC. “a plurality of monitoring representations built in real-time based upon the
identifying data and viewable on the monitoring station” and “displaying a plurality of
monitoring representations . . . built in real-time based on the status and identity data” ... 55 
DD. “providing a uniform interface” ....................................................................................... 56 
V. CONSTRUCTION OF DISPUTED NON-MEANS TERMS AS TO WHICH THERE IS
A 35 U.S.C. § 112, ¶ 6 ALLEGATION ..................................................................................... 57 
EE. “a conversion system that receives a first and a second control program and converts
the first and second control program into a first and second data set representing
individual instruction of the first and second control program” and “a conversion
system that receives a first and a second control program and converts the first and
second control program into a first and second binary data set representing individual
instruction of the first and second control program” .......................................................... 58 
FF. “a difference module that determines differences between the first and the second
control programs and provides a difference data structure representing the differences
between the first and second control program” and “a difference module for
determining differences between the first and the second binary data set and providing
a difference data structure representing the differences between the first and second
control programs” ............................................................................................................... 63 
GG. “a comparison module that receives the difference data structure and the first and
second control programs and generates a plurality of comparison scenarios to provide a
plurality of comparison set views, the comparison module employing a decision model
to determine the optimal display set view from the plurality of comparison set views
by maximizing individual instruction matches between the first and second control
programs” and “a comparison module that receives the difference data structure and
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the first and second control programs and generates a plurality of comparison scenarios
to provide a plurality of comparison set views; a decision model that determines an
optimal display set view from the plurality of comparison set views by maximizing
individual instruction matches between the first and second control programs” ............... 69 
HH. “a viewing system that accepts the first and second data sets and provides a graphical
view of the first and second control programs in a single view based on the first and
second binary data sets” ...................................................................................................... 75 
II. “a viewing system that accepts the optimal display set view and provides a graphical
view of the first and second control programs in an adjacent configuration” .................... 76 
JJ. “converting the first and second ladder logic control program into a first and second
data set representing individual rungs of the first and second ladder logic control
program,” “determining differences between the first and the second ladder logic
control programs and providing a difference data structure representing the differences
between the first and second ladder logic control program,” and “generating a plurality
of comparison scenarios based on the differences to provide a plurality of comparison
set views and selecting an optimal display set view from the plurality of comparison
set views by maximizing individual rung matches between the first and second ladder
logic control programs” ...................................................................................................... 77 
VI. CONSTRUCTION OF DISPUTED TERMS AS TO WHICH THE PARTIES AGREE
35 U.S.C. § 112, ¶ 6 APPLIES ................................................................................................... 80 
KK. “means for monitoring the memory locations of the transfer of data to and from
electronic memory to produce a breakpoint signal when the memory location matches
at least one particular memory location indicated by the breakpoint value” ...................... 81 
LL. “means for receiving a first and a second control program and converting the first and
second control program into a first and second binary data set representing individual
instruction of the first and second control program” .......................................................... 83 
MM. “means for determining differences between the first and the second binary data set
and providing a difference data structure representing the differences between the first
and second control programs” ............................................................................................ 84 
NN. “means for receiving the difference data structure and the first and second control
programs and generating a plurality of comparison scenarios to provide a plurality of
comparison set views; means for determining an optimal display set view from the
plurality of comparison set views by maximizing individual instruction matches
between the first and second control programs” ................................................................. 87 
OO. “means for accepting the optimal display set view and providing a graphical view of
the first and second control programs in an adjacent configuration” ................................. 90 
PP. “means for accepting data from an industrial control component” ................................... 91 
QQ. “means for determining the properties and methods that are exposed to a particular
data consuming device” and “means for abstracting a property and a method of the
data” .................................................................................................................................... 92 
RR. “means for encapsulating” ................................................................................................ 95 

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SS. “means for providing such properties and methods to a data consumer” ......................... 95 
TT. “means for connecting a client to a Web server” .............................................................. 96 
UU. “means for directing communications from the client to the Web Server” ..................... 97 
VV. “means for creating a desired HMI” ................................................................................ 97 
VII. CONSTRUCTION OF DISPUTED PREAMBLES ....................................................... 98 
AAA. “An industrial controller operating controlled equipment according to a control
program divided into at least two tasks, the controller comprising” .................................. 98 
BBB. “An industrial controller operating controlled equipment according to a control
program divided into at least two tasks each having a starting and completion point, the
controller comprising:” ....................................................................................................... 99 
CCC. “A method of displaying the real-time status of input/output data exchanged
between a multi-tasking industrial controller executing a control program and a control
process, the method comprising the steps of:” ................................................................. 100 
DDD. “A production object for an object-oriented programming language, said
production object being disposed in a first module, and said production object
comprising:”...................................................................................................................... 101 
EEE. “A method for monitoring operational parameters of a plurality of networked
electrical component, the method comprising the steps of:” ............................................ 103 
FFF. “A method for monitoring operational parameters of a system of electrical
components, the method comprising the steps of:” .......................................................... 103 
GGG. “A method of providing a uniform interface for an industrial controller
comprising:”...................................................................................................................... 104 
HHH. “A system for providing a uniform industrial controller interface comprising:”........ 105 
III. “A system for providing an object based interface for an industrial controller
comprising:”...................................................................................................................... 106 
VIII. CONCLUSION ............................................................................................................... 108 
APPENDIX A ............................................................................................................................ 109 

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I. BACKGROUND
Plaintiff has alleged infringement of United States Patents No. 5,619,409 (“the ’409
Patent”), 5,636,124 (“the ’124 Patent”), 5,812,133 (“the ’133 Patent”), 5,818,711 (“the ’711
Patent”), 5,844,795 (“the ’795 Patent”), 5,845,149 (“the ’149 Patent”), 5,940,293 (“the ’293
Patent”), 6,138,174 (“the ’174 Patent”), 6,247,168 (“the ’168 Patent”), 6,675,226 (“the ’226
Patent”), 6,816,817 (“the ’817 Patent”), 6,978,225 (“the ’225 Patent”), 7,130,704 (“the ’704
Patent”), 7,143,366 (“the ’366 Patent”), 7,693,585 (“the ’585 Patent”), 7,716,567 (“the ’567
Patent”), and 7,836,122 (“the ’122 Patent”) (collectively, the “patents-in-suit”).
Plaintiff submits that the patents-in-suit “relate to industrial control applications. These
patents have a wide breadth and include various technologies associated with PLCs
[(programmable logic controllers)] and HMIs [(human machine interfaces)], and the software
used with them to support the automation of numerous types of industrial processes, including
manufacturing.” Dkt. No. 63 at 3. Plaintiff has asserted 113 claims, which are identified in the
parties’ June 3, 2016 Joint Claim Construction and Prehearing Statement. Dkt. No. 58 at 1-2.
Shortly before the start of the August 24, 2016 hearing, the Court provided the parties
with preliminary constructions with the aim of focusing the parties’ arguments and facilitating
discussion. Those preliminary constructions are set forth below within the discussion for each
term.
II. LEGAL PRINCIPLES
“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)). Claim construction is an issue of law for the court

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to decide. Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en
banc), aff’d, 517 U.S. 370 (1996). “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.” Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015)
(citation omitted). “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.” Id. (citing 517 U.S. 370).
To determine the meaning of the claims, courts start by considering the intrinsic
evidence. See Phillips, 415 F.3d at 1313; see also 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 Group, Inc.,
262 F.3d 1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the
specification, and the prosecution history. See Phillips, 415 F.3d at 1314; C.R. Bard, 388 F.3d
at 861. Courts give claim terms their 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 entire patent. Phillips,
415 F.3d at 1312-13; accord Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir.
2003).
The claims themselves provide substantial guidance in determining the meaning of
particular claim terms. Phillips, 415 F.3d at 1314. First, a term’s context in the asserted claim
can be instructive. Id. Other asserted or unasserted claims can 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

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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.
at 1315 (quoting Markman, 52 F.3d at 979 (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.’” Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); accord Teleflex, Inc. v. Ficosa N. Am.
Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). This is true because a patentee may define his own
terms, give a claim term a different meaning than the term would otherwise possess, or disclaim
or disavow the claim scope. Phillips, 415 F.3d at 1316. In these situations, the inventor’s
lexicography governs. Id. The specification may also resolve the meaning of ambiguous claim
terms “where the ordinary and accustomed meaning of the words used in the claims lack
sufficient clarity to permit the scope of the claim to be ascertained from the words alone.”
Teleflex, 299 F.3d at 1325. But, “[a]lthough the specification may aid the 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)); accord Phillips, 415 F.3d at 1323.
The prosecution history is another tool to supply the proper context for claim
construction because a patent applicant may also define a term in prosecuting the patent. Home
Diagnostics, Inc., v. Lifescan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the
specification, a patent applicant may define a term in prosecuting a patent.”). “[T]he prosecution
history (or file wrapper) limits the interpretation of claims so as to exclude any interpretation that

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may have been disclaimed or disavowed during prosecution in order to obtain claim allowance.”
Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985).
Although extrinsic evidence can 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
(citations and internal quotation marks omitted). 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
the particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
assertions as to a term’s definition are 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 of the United States has “read [35 U.S.C.] § 112, ¶ 2 to require that a
patent’s claims, viewed in light of the specification and prosecution history, 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). “A determination of claim indefiniteness is a
legal conclusion that is drawn from the court’s performance of its duty as the construer of patent
claims.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005)
(citations and internal quotation marks omitted), abrogated on other grounds by Nautilus, 134
S. Ct. 2120.

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III. THE PARTIES’ STIPULATED TERMS
The parties reached agreement on constructions as stated in their June 3, 2016 Joint
Claim Construction and Prehearing Statement and their August 12, 2016 Joint Claim
Construction Chart. Dkt. No. 58 at 2-3; see Dkt. No. 63 at Ex. A; see also Dkt. No. 71 at Ex. A.
Those agreements are set forth in Appendix A to the present Claim Construction Memorandum
and Order.
IV. CONSTRUCTION OF DISPUTED NON-PREAMBLE TERMS AS TO WHICH
THERE IS NO 35 U.S.C. § 112, ¶ 6 ALLEGATION
Plaintiff argues that “[t]hese 39 terms all have a plain and ordinary meaning to a person
of ordinary skill in the art and therefore do not need any construction.” Dkt. No. 63 at 9.
Plaintiff submits:
[I]n many instances, Defendant’s proposed constructions deviate from the clear
plain and ordinary meaning of the claim terms by importing limitations that would
read out whole embodiments of the invention from the scope of the claims. In
other instances, Defendant’s proposed constructions do nothing more than
unnecessarily repeat claim elements from elsewhere within the claims which
creates ambiguity and does nothing to clarify the claim scope.
Id. at 10.
Plaintiff further argues that “[n]o clearly limiting definitions in the intrinsic record
support any of Defendant’s special definitions,” and “no clear and unmistakable disavowal
supports Defendant’s proposed constructions.” Id. at 10-11.
Finally, Plaintiff argues that “[d]espite the prohibition against selectively reading
limitations from preferred embodiments into a claim term, Defendant’s proposed constructions
repeatedly do just that.” Id. at 12.2

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Plaintiff has also submitted the June 3, 2016 Declaration of Arthur M. Zatarain (Dkt. No. 58 at
Ex. B). The entirety of the claim construction opinions set forth in that expert declaration are as
follows:
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A. “breakpoint value”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“an address or an address range identifying a
location in data memory or an instruction in
code memory”

Dkt. No. 58, Ex. A at 1-2; Dkt. No. 63, Ex. B at 1-2; Dkt. No. 67 at 3; Dkt. No. 71, Ex. A at 1.
The parties submit that this term appears in Claim 1 of the ’409 Patent. Dkt. No. 58, Ex. A at 1.
Shortly before the start of the August 24, 2016 hearing, the Court provided the parties
with the following preliminary construction: “an address (or an address range) identifying a
location in memory.”
(1) The Parties’ Positions
Defendant argues that this term is explained in the specification. Dkt. No. 67 at 3 (citing
’409 Patent at 3:1-16).

28. I have reviewed each of the claim terms identified in Exhibit A to the parties’
Joint Claim Construction Statement. Based on my experience, and my review of
the relevant patent’s written description and prosecution history, it is my opinion
that each of those claim terms should be given their plain and ordinary meaning as
understood by a PHOSITA at the time of the application’s filing in light of the
relevant patent’s written description and file history.
29. I have reviewed each of the Defendant’s proposed constructions of claim
terms identified in Exhibit A to the parties’ Joint Claim Construction Statement
for which Defendant[] proposed a construction. Based on my experience, and my
review of the relevant patent’s written description and prosecution history, it is
my opinion that each of the Defendant’s proposed constructions unjustifiably
deviate from the plain and ordinary meaning of the respective claim terms as
understood by a PHOSITA at the time of the application’s filing in light of the
relevant patent’s written description and prosecution history.
Because these opinions are devoid of any analysis of the particular disputed terms, this
expert declaration has not affected the Court’s claim construction analysis. See Phillips, 415
F.3d at 1318 (“[C]onclusory, unsupported assertions by experts as to the definition of a claim
term are not useful to a court.”)
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Plaintiff replies that Defendant has not shown any disclaimer or disavowal, and this
disputed term “would be understandable to both one skilled in the art and to a jury and
[Defendant’s] proposed construction[] only add[s] ambiguity and unnecessary language.” Dkt.
No. 68 at 1.
(2) Analysis
Claim 1 of the ’409 Patent recites (emphasis added):
1. An industrial controller operating controlled equipment according to a control
program divided into at least two tasks, the controller comprising:
(a) an I/O module receiving electrical inputs and outputs connected to
controlled equipment;
(b) a user terminal for entering data from the user providing a breakpoint
value;
(d) [sic] an electronic memory;
(e) a bus communicating signals to and from the electronic memory for
transferring data to and from memory locations of the electronic memory, the data
of the memory including:
(i) instructions for the at least two tasks of the control program;
(ii) variables for the at least two tasks of the control program;
(iii) an operating system program controlling the execution of
the tasks according to a task scheduling table;
(iv) instructions for a breakpoint recording program,
(d) [sic] means for monitoring the memory locations of the transfer of data
to and from electronic memory to produce a breakpoint signal when the memory
location matches at least one particular memory location indicated by the
breakpoint value;
(e) an electronic processor communicating with the I/O module to receive
the inputs and change the outputs, according to the inputs and the control
program, and executing the operating system program to:
(i) execute a specific one of the at least two tasks according to
the task scheduling table;
(ii) upon the occurrence of the breakpoint signal executing the
breakpoint record routine to record an indication [of] the
specific one of the at least two tasks.
The Background of the Invention states that “breakpoints” are instructions to stop a task
at certain points so as to output values of certain memory locations:
For controllers executing only a single task and executing instructions from
re-writable memory, instructions (“breakpoints”) may be inserted into the task
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being executed to stop the task at certain points in the task program so as to output
values of certain memory locations to the operator. These breakpoint instructions
allow the operator to observe the progress of the task program as it is reflected in
the changes in memory values caused by the task program, and thus to evaluate
the operation of the task on a step-by-step basis.
’409 Patent at 2:30-39 (emphasis added).
Although the specification sometimes refers to a “value of the data,” thus suggesting that
“value” refers to data rather than an address at which data can reside (see id. at 14:58-60), the
Summary of the Invention explains that a “breakpoint value” is an address:
In particular, the present invention provides an industrial controller operating
controlled equipment according to a control program divided into at least two
tasks. The controller includes: an I/O module receiving electrical inputs and
outputs connected to controlled equipment, a user terminal for entering data from
the user providing a breakpoint value, and an electronic memory. A bus
communicates data to and from memory locations of the electronic memory, the
data of the memory including instructions for the tasks, variables for the tasks, an
operating system controlling execution of the tasks, and instructions for a
breakpoint recording program. Circuitry monitoring the memory locations of the
transfer of data to and from the electronic memory produces a breakpoint signal
when the memory locations match one or more particular memory locations
indicated by the breakpoint value.
Id. at 3:1-16 (emphasis added); see, e.g., id. at 12:45-46 (“range of addresses”).
The specification thus demonstrates that a “breakpoint” is an instruction to output data
values of certain memory locations, and a “breakpoint value” is the address or range of addresses
of data that is to be outputted. The context provided by the above-quoted claim is similar and
reinforces this understanding, in particular as to the recital that data is stored in memory
locations and that memory locations are monitored “to produce a breakpoint signal when the
memory location matches at least one particular memory location indicated by the breakpoint
value.”
As to Defendant’s proposal that a “breakpoint value” can be “an instruction in code
memory,” however, Defendant has not adequately supported its proposal that a “breakpoint
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value” can be an “instruction.” Finally, Defendant has not demonstrated that the claim language
gives rise to any distinction between “data memory” and “code memory.” At the August 24,
2016 hearing, Defendant stated that it agreed with the Court’s preliminary construction, which
did not include the “instruction,” “data memory,” and “code memory” limitations that Defendant
had proposed.
The Court therefore hereby construes “breakpoint value” to mean “an address (or an
address range) identifying a location in memory.”
B. “breakpoint signal”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“a hardware interrupt produced by the
monitoring component”

Dkt. No. 58, Ex. A at 2; Dkt. No. 63, Ex. B at 2; Dkt. No. 67 at 3; Dkt. No. 71, Ex. A at 1. The
parties submit that this term appears in Claim 1 of the ’409 Patent. Dkt. No. 58, Ex. A at 2.
Shortly before the start of the August 24, 2016 hearing, the Court provided the parties
with the following preliminary construction: “a hardware interrupt.”
(1) The Parties’ Positions
Defendant argues that “[i]n contrast to software-based general processor interrupts known
in the art, the patent utilizes a hardware-based breakpoint logic circuitry and comparator to
monitor and compare certain values, and, based on that information, generate a hardware
interrupt (breakpoint signal) that prevents any task switching until the breakpoint signal is
processed.” Dkt. No. 67 at 4 (citing ’409 Patent at 12:39-51).
Plaintiff replies that Defendant has not shown any disclaimer or disavowal, and this
disputed term “would be understandable to both one skilled in the art and to a jury and

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[Defendant’s] proposed construction[] only add[s] ambiguity and unnecessary language.” Dkt.
No. 68 at 1.
(2) Analysis
Claim 1 of the ’409 Patent recites (emphasis added):
1. An industrial controller operating controlled equipment according to a control
program divided into at least two tasks, the controller comprising:
(a) an I/O module receiving electrical inputs and outputs connected to
controlled equipment;
(b) a user terminal for entering data from the user providing a breakpoint
value;
(d) [sic] an electronic memory;
(e) a bus communicating signals to and from the electronic memory for
transferring data to and from memory locations of the electronic memory, the data
of the memory including:
(i) instructions for the at least two tasks of the control program;
(ii) variables for the at least two tasks of the control program;
(iii) an operating system program controlling the execution of
the tasks according to a task scheduling table;
(iv) instructions for a breakpoint recording program,
(d) [sic] means for monitoring the memory locations of the transfer of data
to and from electronic memory to produce a breakpoint signal when the memory
location matches at least one particular memory location indicated by the
breakpoint value;
(e) an electronic processor communicating with the I/O module to receive
the inputs and change the outputs, according to the inputs and the control
program, and executing the operating system program to:
(i) execute a specific one of the at least two tasks according to
the task scheduling table;
(ii) upon the occurrence of the breakpoint signal executing the
breakpoint record routine to record an indication [of] the
specific one of the at least two tasks.
The specification discloses:
Referring to FIGS. 9 and 10, the breakpoint logic circuitry 260 includes a multiple
bit comparator 263 that may compare the address on secondary bus 254 to values
contained in registers B1 264, and B2 266 in order to generate the breakpoint
signal on the abort line 262. Each of registers B1 and B2 may receive a 25 bit
address via the data lines of the secondary bus 254 which is then used to establish
a range of addresses that will generate the breakpoint signal on the abort line 262.
The breakpoint signal is separate from general processor interrupts as are known

- 15 -

in the art. When the breakpoint signal occurs, interrupts are disabled to prevent
task switching (as will be described) until the breakpoint signal is processed.
’409 Patent at 12:39-51; see id. at 5:46-48 (“specialized circuitry for providing an alarm signal to
the processor 62 on a periodic basis without the need for software timing loops by the
processor 62”).
In addition to this disclosure as to specific embodiments, the Summary of the Invention
states: “The circuitry of the present invention unlike a software system adds no overhead to the
execution time of the tasks, an important feature for real time control.” Id. at 3:26-29 (emphasis
added).
On balance, this characterization of the invention in terms of hardware should be given
effect in the Court’s construction. See, e.g., Verizon Servs. Corp. v. Vonage Holdings Corp., 503
F.3d 1295, 1308 (Fed. Cir. 2007) (“When a patent thus describes the features of the ‘present
invention’ as a whole, this description limits the scope of the invention.”). At the August 24,
2016 hearing, Plaintiff emphasized that the specification refers to a “software interrupt routine”
(’409 Patent at 2:65), but Defendant persuasively argued that the term “interrupt routine” refers
not to an interrupt itself but rather to actions performed in response to an interrupt. Regardless,
even if “software interrupt routine” is interpreted as disclosure of a software interrupt, this
disclosure does not override the above-quoted disclosures explaining that a “breakpoint signal”
in the context of the claimed invention is a hardware interrupt.
Defendant’s proposal that this hardware interrupt is “produced by the monitoring
component,” however, is rejected as potentially confusing and as unnecessary in light of
surrounding claim language. At the August 24, 2016 hearing, Defendant stated that it agreed
with the Court’s preliminary construction, which did not include the “produced by the
monitoring component” limitation that Defendant had proposed.
- 16 -

The Court accordingly hereby construes “breakpoint signal” to mean “a hardware
interrupt.”
C. “bus”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“a single path or multiple parallel paths for
power or data signals to which several devices
may be connected at the same time”

Dkt. No. 58, Ex. A at 2; Dkt. No. 63, Ex. B at 2; Dkt. No. 67 at 4; Dkt. No. 71, Ex. A at 1-2. The
parties submit that this term appears in Claim 1 of the ’409 Patent. Dkt. No. 58, Ex. A at 2.
Shortly before the start of the August 24, 2016 hearing, the Court provided the parties
with the following preliminary construction: “a single path or multiple paths for power or data
signals to which several devices may be connected at the same time.”
(1) The Parties’ Positions
Defendant argues that its proposed construction is consistent with a definition set forth in
one of Plaintiff’s own documents. Dkt. No. 67 at 4.
Plaintiff replies that “[Defendant] seeks to import a definition from extrinsic evidence
without explanation as to why the claim language or the intrinsic record would not permit one of
ordinary skill in the art to understand the meaning of this term.” Dkt. No. 68 at 1.
(2) Analysis
“Bus” is a technical term, and “[t]he Court believes that some construction of the
disputed claim language will assist the jury to understand the claims.” See TQP Dev., LLC v.
Merrill Lynch & Co., Inc., No. 2:08-CV-471, 2012 WL 1940849, at *2 (E.D. Tex. May 29,
2012) (Bryson, J.).

- 17 -

Defendant has cited extrinsic evidence in the form of an “Industrial Automation
Glossary,” apparently published by Plaintiff, that defines “bus” as:
A single path or multiple parallel paths for power or data signals to which several
devices may be connected at the same time. A bus may have several sources of
supply and/or several sources of demand.
Dkt. No. 67, Ex. C at 14.
Although the word “parallel” appears in this definition, that term would tend to confuse
rather than clarify the scope of the term, particularly in light of the separate explanation in the
definition that multiple devices may be connected. Further, Plaintiff expressed concern at the
August 24, 2016 hearing that requiring multiple “devices” in the construction might exclude
“internal” buses that are within a single device. See, e.g., ’409 Patent at 5:14. Plaintiff stated
that it would be amenable to construing “bus” to mean “a single path or multiple paths for power
or data signals.”
On balance, the Court hereby construes “bus” to mean “a single path or multiple paths
for power or data signals to which several components may be connected at the same time.”
D. “execute once to completion”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“execute the highest priority task to completion
without interruption from any other task”3

Dkt. No. 58, Ex. A at 3; Dkt. No. 63, Ex. B at 3; Dkt. No. 67 at 5; Dkt. No. 71, Ex. A at 4. The
parties submit that this term appears in Claim 1 of the ’124 Patent. Dkt. No. 58, Ex. A at 3.

3

Defendant previously proposed: “execute the highest priority periodic task to completion
without interruption from any other task.” Dkt. No. 58, Ex. A at 3 (emphasis added).
- 18 -

Shortly before the start of the August 24, 2016 hearing, the Court provided the parties
with the following preliminary construction: “execute the highest priority task to completion
without interruption from any other task.”
(1) The Parties’ Positions
Defendant argues that during prosecution the patentee explained that when the claim
requires a task to “execute once to completion,” it must do so without interruption, and any other
task must wait for the task to complete. Dkt. No. 67 at 5. Defendant also submits that this is
consistent with the specification. Id.
Plaintiff replies that “[t]he fact that the event triggered task cited by [Defendant] in the
prosecution history ‘must wait for the periodic task to execute once to completion’ does not
mean that the periodic task could not be interrupted by a different, higher priority task.” Dkt.
No. 68 at 1.
(2) Analysis
Claim 1 of the ’124 Patent recites, in relevant part (emphasis added):
(d) an electronic processor communicating with the electronic memory
and the I/O module to receive the electrical inputs and operate according to the
inputs and the control program, and executing the operating system program to:
(i) identify a highest priority periodic task requiring current
execution based on the task priority and the time period of
the task;
(ii) identify a highest priority event triggered task ready current
execution based on the occurrence of its event;
(iii) if there is no ready event triggered task of higher priority
than the highest priority periodic task, execute once to
completion the highest priority periodic task;
(iv) if there is no highest priority periodic tasks [sic] of higher
priority than the ready event triggered task execute once to
completion the ready event triggered task.
The Summary of the Invention states:

- 19 -

An electronic processor, operating according to the task scheduling information
and the operating system, executes the tasks by determining a highest priority
periodic or event triggered task requiring current execution, based on the task
priority and the task periodicity values or occurrence of an event, and executes
that highest priority task once from its starting point to its completion point unless
an event occurs associated with a task of higher priority. Other tasks are
suspended.
’124 Patent at 3:7-15 (emphasis added). The specification further discloses:
Once a task is readied, the first program of the task is executed once to completion
from a starting point to an ending point as indicated by process block 234.
Id. at 11:31-34 (emphasis added).
During prosecution, the patentee used the term “execute once to completion” in the
context of requiring that if a particular “event driven” task has a lower priority than a particular
periodic task, then the event-driven task must await completion of the periodic task:
Prior art methods of ensuring that periodic tasks are executed on a reliable
schedule are described generally at page 5, lines 6-19 of the present application.
Unfortunately, these techniques do not well accommodate a mixture of “periodic
tasks” with “event driven tasks”, the latter which occur at arbitrary times and tend
to disrupt any regular scheduling mechanism. See the present invention, page 5,
line 20 et seq. The present invention recognizes that both periodic and event
driven tasks can co-exist with predictable execution times if the event driven
tasks, once they are triggered, are prioritized and queued just like periodic tasks.
For this to work, the present invention requires that an interrupt (an event driven
task) does not necessarily get immediate execution but rather the priority of the
interrupt must be determined and, if lower than a periodic task, must wait for the
periodic task to execute once to completion. See claim 1, lines 33-40.
In contrast, the Flood device does not contemplate scheduled event driven tasks.
Thus, Flood does not teach the critical elements of identifying priorities of
periodic tasks, and event driven tasks, and of having event driven task give way to
higher priority periodic tasks. This is not surprising because Flood is concerned
with a much more basic problem of ensuring that continuously running
background operations do not overwhelm primary tasks.
Dkt. No. 67, Ex. D, Sept. 12, 1996 First Amendment at 2-3 (RAI_00000229).

- 20 -

On balance, the above-quoted prosecution history sets forth definitive statements by the
patentee that to “execute once to completion” means to execute a task without interruption from
any other task. See Omega Eng’g v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003) (“As a
basic principle of claim interpretation, prosecution disclaimer promotes the public notice
function of the intrinsic evidence and protects the public’s reliance on definitive statements made
during prosecution.”); see also Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1381
(Fed. Cir. 2011) (“The patentee is bound by representations made and actions that were taken in
order to obtain the patent.”).
At the August 24, 2016 hearing, Plaintiff expressed concern that a “without interruption”
construction would preclude a task from being interrupted by a higher priority task. This
concern is addressed by the phrase “highest priority” in the construction, as well as by
conditional language that precedes the disputed term in the claim, as quoted above. Plaintiff
stated that it interprets the conditional language as evaluating relative priorities at the time a task
begins to execute, but no such “at that time” limitation is apparent in the claim language at issue.
The Court therefore hereby construes “execute once to completion” to mean “execute
the highest priority task to completion without interruption from any other task.”
E. “event”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“an electrical signal interrupting all running
tasks that can be observed at any time”

Dkt. No. 58, Ex. A at 3; Dkt. No. 63, Ex. B at 3. The parties submit that this term appears in
Claim 1 of the ’124 Patent. Dkt. No. 58, Ex. A at 3.
Defendant “hereby withdraws its proposed construction[] for th[is] . . . disputed term and
adopts [Plaintiff’s] proposed construction[].” Dkt. No. 67, Ex. B at 1; see Dkt. No. 71, Ex. A
- 21 -

at 4. The Court therefore sets forth the parties’ now-agreed construction in Appendix A to this
Claim Construction Memorandum and Order.
F. “a portion of each scheduled task . . . from the portions starting point to its completion
point”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“a user defined amount of code of a scheduled
task . . . from the user defined starting point to
the user defined completion point”

Dkt. No. 58, Ex. A at 3; Dkt. No. 63, Ex. B at 4. The parties submit that this term appears in
Claim 9 of the ’124 Patent. Dkt. No. 58, Ex. A at 3.
Defendant “hereby withdraws its proposed construction[] for th[is] . . . disputed term and
adopts [Plaintiff’s] proposed construction[].” Dkt. No. 67, Ex. B at 1; see Dkt. No. 71, Ex. A
at 6. The Court therefore sets forth the parties’ now-agreed construction in Appendix A to this
Claim Construction Memorandum and Order.
G. “address monitor”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“a hardware circuit for supervising memory
access”

Dkt. No. 58, Ex. A at 3; Dkt. No. 63, Ex. B at 4; Dkt. No. 67 at 5. The parties submit that this
term appears in Claims 1 and 8 of the ’133 Patent. Dkt. No. 58, Ex. A at 3.
Defendant submits that “[a]lthough this term was included in [Plaintiff’]s Brief (at
page 7), the parties previously agreed to this construction.” Dkt. No. 67 at 5.
The parties’ June 3, 2016 Joint Claim Construction and Prehearing Statement lists an
agreement that the term “address monitor” in Claims 1 and 8 of the ’133 Patent means
“a hardware circuit for supervising memory access.” Dkt. No. 58 at 2. This agreement also

- 22 -

appears in the parties’ August 12, 2016 Joint Claim Construction Chart. Dkt. No. 71, Ex. A at 6.
This agreed-upon construction is set forth in Appendix A to this Claim Construction
Memorandum and Order.
H. “to alter the display of the graphical element when an address of the electronic memory
is accessed during execution of the stored program”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“to alter the display of the graphical element
only at the time an address of the electronic
memory is accessed during execution of the
stored program”

Dkt. No. 58, Ex. A at 4; Dkt. No. 63, Ex. B at 4-5; Dkt. No. 67 at 6; Dkt. No. 71, Ex. A at 6-7.
The parties submit that this term appears in Claim 1 of the ’133 Patent. Dkt. No. 58, Ex. A at 4.
Shortly before the start of the August 24, 2016 hearing, the Court provided the parties
with the following preliminary construction: “Plain meaning ([r]eject Defendant’s proposal of
altering ‘only at the time an address of the electronic memory is accessed during execution of the
stored program’).”
(1) The Parties’ Positions
Defendant argues that the prosecution history “requires the editing of the graphical
element to occur only when the stored program is executing.” Dkt. No. 67 at 6.
Plaintiff replies that the prosecution does not alter the claim language, and the Court
should reject “[Defendant’s] improper attempt to swap the claim term ‘when’ with ‘only at the
time.’” Dkt. No. 68 at 2.
(2) Analysis
During prosecution, the patentee argued:
The interface 41 of Kiya apparently allows for a reading of a program and data
and displaying of the same in graphical form on a computer screen. Apparently in
- 23 -

Kiya, the display is altered by selection by the user with a cursor independent of
operation of the program. There is no indication that the editing proposed by
Kiya is done while the processor is executing. In fact, editing is normally done
while the control program is not operating for reasons of safety and practicality.
***
The Brooks patent, owned by the assignee of the present invention, describes a
control system similar to the present invention but lacking the address monitor of
element (f). The Bender patent teaches displaying a “sequence time” for
instructions that implicitly cause an action at a certain time, but there is no
indication that the instruction address is monitored during execution to determine
this sequence time. Rather the sequence time is probably the time entered by the
programmer.
Dkt. No. 67, Ex. E, Sept. 18, 1997 First Amendment at 3-4 (RAI_00000374-75) (emphasis
added).
Defendant’s proposal of “only,” however, is a negative limitation that is not supported by
any apparent disclaimer or definitive statement during prosecution. See Omega Eng’g, 334 F.3d
at 1324 (“As a basic principle of claim interpretation, prosecution disclaimer promotes the public
notice function of the intrinsic evidence and protects the public’s reliance on definitive
statements made during prosecution.”) (emphasis added).
The Court therefore hereby expressly rejects Defendant’s proposed construction. No
further construction is necessary. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568
(Fed. Cir. 1997) (“Claim construction is a matter of resolution of disputed meanings and
technical scope, to clarify and when necessary to explain what the patentee covered by the
claims, for use in the determination of infringement. It is not an obligatory exercise in
redundancy.”); see also O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351,
1362 (Fed. Cir. 2008) (“[D]istrict courts are not (and should not be) required to construe every
limitation present in a patent’s asserted claims.”); Finjan, Inc. v. Secure Computing Corp., 626
F.3d 1197, 1207 (Fed. Cir. 2010) (“Unlike O2 Micro, where the court failed to resolve the
- 24 -

parties’ quarrel, the district court rejected Defendants’ construction.”); ActiveVideo Networks,
Inc. v. Verizon Commcn’s, Inc., 694 F.3d 1312, 1326 (Fed. Cir. 2012); Summit 6, LLC v.
Samsung Elecs. Co., Ltd., 802 F.3d 1283, 1291 (Fed. Cir. 2015).
The Court accordingly hereby construes “to alter the display of the graphical element
when an address of the electronic memory is accessed during execution of the stored
program” to have its plain meaning.
I. “to display an indication of the graphical element together with a time of accessing of an
address of the electronic memory when an address of the electronic memory from the
second address area is accessed during execution of the stored program”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“to alter the display of the graphical element
only at the time an address of the electronic
memory is accessed during execution of the
stored program”

Dkt. No. 58, Ex. A at 4; Dkt. No. 63, Ex. B at 5; Dkt. No. 67 at 6; Dkt. No. 71, Ex. A at 8. The
parties submit that this term appears in Claim 8 of the ’133 Patent. Dkt. No. 58, Ex. A at 4.
Shortly before the start of the August 24, 2016 hearing, the Court provided the parties
with the following preliminary construction: “Plain meaning ([r]eject Defendant’s proposal of
altering ‘only at the time an address of the electronic memory is accessed during execution of the
stored program’).”
Defendant argues that the prosecution history “requires the editing of the graphical
element to occur only when the stored program is executing.” Dkt. No. 67 at 6.
This term presents essentially the same dispute as the term “to alter the display of the
graphical element when an address of the electronic memory is accessed during execution of the
stored program,” which is addressed above.

- 25 -

The Court therefore hereby expressly rejects Defendant’s proposed construction. No
further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521
F.3d at 1362; Finjan, 626 F.3d at 1207; ActiveVideo, 694 F.3d at 1326; Summit 6, 802 F.3d
at 1291.
The Court accordingly hereby construes “to display an indication of the graphical
element together with a time of accessing of an address of the electronic memory when an
address of the electronic memory from the second address area is accessed during
execution of the stored program” to have its plain meaning.
J. “simultaneously displaying an executable program in a remote processor and a plurality
[of] program edits input at a workstation”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“simultaneously displaying a program running
on a remote processor of an industrial
controller and also displaying a plurality of
program edits input at a workstation”

Dkt. No. 58, Ex. A at 4; Dkt. No. 63, Ex. B at 5; Dkt. No. 71, Ex. A at 10-11. The parties submit
that this term appears in Claim 1 of the ’711 Patent. Dkt. No. 58, Ex. A at 4.
Shortly before the start of the August 24, 2016 hearing, the Court provided the parties
with the following preliminary construction: “simultaneously displaying a program that runs on a
remote processor and also displaying a plurality of program edits input at a workstation.”
(1) The Parties’ Positions
Defendant argues that, during prosecution, the patentee explained that it is an essential
element of the claims that the program be executed on the processor in the controller, and not on
the workstation or elsewhere outside of the industrial controller. Dkt. No. 67 at 7.
Plaintiff replies:

- 26 -

[Defendant] seeks to require that the displayed executable program be “running
on a remote processor” instead of simply resident “in a remote processor” as the
plain language of the claim recites. [Defendant’s] proposed additional
requirement would improperly exclude from the claim scope any embodiment in
which a displayed program is resident on a remote processor that is temporarily
halted, stopped or running a different program or task; there is no lexicography or
disavowal in the intrinsic record that would justify such an exclusion.
[Defendant] also cites to portions of the prosecution history that discuss “editing”
and when an instruction address may be “monitored”; however these portions of
the prosecution history do not discuss “displaying” and thus should be
disregarded.
Dkt. No. 68 at 2.
(2) Analysis
Because the disputed term recites an executable program “in” a remote processor, the
disputed term itself is consistent with Defendant’s proposal. Likewise, during prosecution the
patentee stated:
In contrast to the present invention Kimelman teaches highlighting program
segments as they execute. Kimelman also teaches identifying which program
segments are running in which processor. In the present invention, program
segments only execute in the controller. The workstation is utilized as an
interface for performing edits which must be downloaded to the controller before
they can be executed. Kimelman anticipates that every program segment will be
executed and thus eventually be highlighted. As claimed, the present invention
applies modifiable visual indicia to select program segments (i.e. new and
modified) which is not taught or even suggested in either of the cited references.
Dkt. No. 67, Ex. F, Feb. 17, 1998 Amendment A at 3 (RAI_00000517) (emphasis added).
This prosecution history thus reinforces that the disputed term requires that the program
is executed by a remote processor. See Omega, 334 F.3d at 1324 (“As a basic principle of claim
interpretation, prosecution disclaimer promotes the public notice function of the intrinsic
evidence and protects the public’s reliance on definitive statements made during prosecution.”);
see also Typhoon Touch, 659 F.3d at 1381 (“The patentee is bound by representations made and
actions that were taken in order to obtain the patent.”).

- 27 -

Nonetheless, to whatever extent Defendant is arguing that the program must actually be
running or that the remote processor must be “of an industrial controller,” such limitations are
not apparent in the claim and have not otherwise been justified by Defendant.
The Court therefore hereby construes “simultaneously displaying an executable
program in a remote processor and a plurality [of] program edits input at a workstation”
to mean “simultaneously displaying an executable program that is located in a remote
processor and also displaying a plurality of program edits input at a workstation.”
K. “monitoring the memory location to record the time of a change in the data in the
memory location”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“monitoring the memory location and only
recording the time of a change in the data in
the memory location, and not recording time
information when there is no change in the data
in the memory location”

Dkt. No. 58, Ex. A at 5; Dkt. No. 63, Ex. B at 6; Dkt. No. 67 at 7; Dkt. No. 71, Ex. A at 11. The
parties submit that this term appears in Claim 1 of the ’795 Patent. Dkt. No. 58, Ex. A at 5.
Shortly before the start of the August 24, 2016 hearing, the Court provided the parties
with the following preliminary construction: “Plain meaning ([r]eject Defendant’s proposal of
‘only recording the time of a change in the data in the memory location, and not recording time
information when there is no change in the data in the memory location’).”
(1) The Parties’ Positions
Defendant argues that, during prosecution, the patentee explained that it is essential to the
claims that the data is recorded only when there is a change in the data in the memory location
and that no data is recorded when there is no change. Dkt. No. 67 at 7-8.

- 28 -

Plaintiff replies that “[Defendant] cites to statements made during prosecution that
discuss the recording of ‘data,’ but contain no prohibition as to when a ‘time of a change’ may be
recorded, much less ‘time information,’ a term coined by [Defendant] without justification and
not found in the specification.” Dkt. No. 68 at 2.
(2) Analysis
The specification discloses:
[T]he monitoring task 400 need only perform four tasks: (1) reading a predesignated memory location for each input or output data being monitored;
(2) comparing the value of the data in that memory location to a previously stored
value, and only if the value has changed, (3) storing the new value in memory (for
later comparisons) and (4) storing the time of the change of the value (the current
time).
’795 Patent at 18:30-56. Although this disclosure could be interpreted as stating that time is
recorded only for the time of a change of a value, this is a specific feature of a particular
disclosed embodiment that should not be imported into the claim. See Comark, 156 F.3d
at 1187; see also Phillips, 415 F.3d at 1323.
Likewise, during prosecution the patentee stated:
[T]he Sadre approach logs all data between break points, not just data that has
changed. As claimed in claim 1 of the present invention, the memory monitor
monitors changes in the data and logs those time of changes [sic]. The
significance of this is that far less data is generated in the present invention and
this allows real-time data monitoring with a program as opposed to specialized
hardware.
Dkt. No. 67, Ex. G, May 4, 1998 First Amendment at 3 (RAI_00000654).
Although the patentee explained that it may be advantageous to record data only when
data changes, this prosecution history contains no definitive statement that would warrant
imposing a negative limitation as to recording time information only when data changes. See
Omega Eng’g, 334 F.3d at 1324 (“As a basic principle of claim interpretation, prosecution

- 29 -

disclaimer promotes the public notice function of the intrinsic evidence and protects the public’s
reliance on definitive statements made during prosecution.”) (emphasis added); see also Golight,
Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1332 (Fed. Cir. 2004) (“Because the statements in
the prosecution history are subject to multiple reasonable interpretations, they do not constitute a
clear and unmistakable departure from the ordinary meaning of the term . . . .”); Praxair, Inc. v.
ATMI, Inc., 543 F.3d 1306, 1325 (Fed. Cir. 2008) (“it is generally not appropriate to limit claim
language to exclude particular devices because they do not serve a perceived purpose of the
invention”) (citation and internal quotation marks omitted).
The Court therefore hereby expressly rejects Defendant’s proposed construction. No
further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521
F.3d at 1362; Finjan, 626 F.3d at 1207; ActiveVideo, 694 F.3d at 1326; Summit 6, 802 F.3d
at 1291.
The Court therefore hereby construes “monitoring the memory location to record the
time of a change in the data in the memory location” to have its plain meaning.
L. “entering an I/O map table into the controller,” “software address,” and “physical
network address”
“entering an I/O map table into the controller”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“entering an I/O map table, that allows
mapping to occur within the controller and is
separate from the control program, into the
controller”

- 30 -

“software address”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“a mnemonic used in a control program to
identify a physical I/O address independent of
the physical address itself”

“physical network address”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“unique address corresponding to a specific
physical device”

Dkt. No. 58, Ex. A at 5; Dkt. No. 63, Ex. B at 6-7; Dkt. No. 67 at 8; Dkt. No. 71, Ex. A at 13.
The parties submit that these terms appear in Claim 4 of the ’149 Patent. Dkt. No. 58, Ex. A
at 5.
Shortly before the start of the August 24, 2016 hearing, the Court provided the parties
with the following preliminary constructions: “entering an I/O map table into the controller”
means “entering into the controller an I/O map table that allows mapping to occur within the
controller”; “software address” has its “[p]lain meaning ([r]eject Def[endant]’s proposal of
‘mnemonic’)”; and “physical network address” has its “[p]lain meaning ([r]eject Def[endant]’s
proposal of ‘unique’).”
(1) The Parties’ Positions
Defendant argues that, during prosecution, the patentee explained that “the I/O map table
is separate from the control program, and the control program can be created without needing the
physical addresses because mapping the physical addresses occurs independent of the layout of
the I/O modules via the software address.” Dkt. No. 67 at 8. Defendant also argues that

- 31 -

“[b]ecause the software addresses are assigned without regard to the actual layout of the I/O
modules in a system, they are independent of the physical network addresses.” Id. at 9. Finally,
Defendant argues that its proposal for “physical network address” is supported by the
specification. Id.
Plaintiff replies that “the prosecution history cited by [Defendant] distinguishes the
claimed invention over the prior art based on the ‘existence’ of the I/O map table and not
because it is ‘separate from the control program’ or that it ‘allows mapping to occur within the
controller’ as [Defendant] would have the Court rule.” Dkt. No. 68 at 3. Plaintiff also argues
that “[t]he claim terms ‘software address’ and ‘physical network address’, as drafted, would be
understandable to both one skilled in the art and to a jury,” and “[Defendant’s] constructions add
ambiguity and unnecessary terms and are not required or justified by any disavowal or
lexicography in the intrinsic record.” Id.
(2) Analysis
Claim 4 of the ’149 Patent recites (emphasis added):
4. A method of operating an industrial controller having a central processor
executing a stored control program to exchange data with a plurality of
input/output modules distributed over a network at physical network addresses to
provide an electrical interface at control points to a controlled process, the method
comprising the steps of:
(a) entering the control program into the controller, the program having
steps where data is exchanged with a particular control point in the controlled
process designated by a software address in the control program and not
dependent on a physical address;
(b) entering an I/O map table into the controller linking the software
address to a physical network address of a particular input/output module serving
as the electrical interface with the control point;
(c) operating the controller to exchange data with the control point through
the particular I/O module at the physical network address linked to the software
address by the I/O map table;
(d) entering into the I/O map table the second software address linked to
the physical network addresses of the second industrial controller; and

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(e) operating the controller to exchange data with the second industrial
controller at the physical network address linked to the second software address
by the I/O map table;
wherein the industrial controller also executes the stored control program
to exchange data with a second industrial controller, the second industrial
controller having a physical network address, wherein at step (a) the control
program entered into the controller has steps where data is exchanged with the
second industrial controller designated by a second software address in the
control program.
The specification refers to a “separate I/O map table” (see ’149 Patent at 2:32-37) and
during prosecution the patentee stated:
Applicant agrees generally that the present invention differs from prior art
industrial controllers by the existence of an I/O map table which links software
addresses to physical network addresses. As noted in the Summary of the
Invention of the present application, . . . this allows the control program to be
developed without regard to the actual layout of the I/O modules and allows the
control points to be given easy-to-understand names. It also allows a program to
be used at different sites where the physical addresses may change.
***
[T]he Applicant cannot find an indication that the Montgomery I/O map is used to
translate arbitrary software addresses to physical addresses of the devices as is
required by the present claims. As noted above, Applicant has amended claim 1
to emphasize this distinction and to indicate that the software addresses are not
dependent on the physical addresses of the I/O module but may be arbitrarily
selected.
Dkt. No. 67, Ex. H, Mar. 31, 1998 Amendment at 4 (RAI_00000736) (emphasis modified).
On one hand, this prosecution history can be read as assuming or implying that the “I/O
map table” is separate from the control program, thereby “allow[ing] the control program to be
developed without regard to the actual layout of the I/O modules.” Id. On the other hand, the
patentee relied upon the “existence” of an I/O map table rather than any separateness. Id. This
prosecution history thus does not give rise to any disclaimer or disavowal that would support
Defendant’s proposed construction as to the I/O map table. See Omega Eng’g, 334 F.3d at 1324;
see also Golight, 355 F.3d at 1332.
- 33 -

As to Defendant’s proposal that a “software address” must be a “mnemonic,” this is a
potential advantage that should not be imported into the claim. See ’149 Patent at 1:7-11; see
also Praxair, 543 F.3d at 1325 (“it is generally not appropriate to limit claim language to exclude
particular devices because they do not serve a perceived purpose of the invention”) (citation and
internal quotation marks omitted). The remainder of Defendant’s proposal is adequately
addressed by surrounding claim language. The Court therefore hereby expressly rejects
Defendant’s proposed construction. No further construction is necessary. See U.S. Surgical,
103 F.3d at 1568; see also O2 Micro, 521 F.3d at 1362; Finjan, 626 F.3d at 1207; ActiveVideo,
694 F.3d at 1326; Summit 6, 802 F.3d at 1291.
Finally, Defendant has not adequately demonstrated that a “physical network address”
must be “unique.” No such limitation is express or implied in the above-reproduced claim
language, and the above-quoted prosecution history cited by Defendant contains no definitive
statement in that regard. See Omega Eng’g, 334 F.3d at 1324 (“As a basic principle of claim
interpretation, prosecution disclaimer promotes the public notice function of the intrinsic
evidence and protects the public’s reliance on definitive statements made during prosecution.”)
(emphasis added).
As to the specification, the Background of the Invention states: “Each I/O module has a
unique address on the communication network, its ‘physical address,’ which may be defined by
the path of a message between the controller and the I/O module through various branches of the
communication network.” ’149 Patent at 1:34-37 (emphasis added). On one hand, the
patentee’s use of quotation marks around “physical address” suggests that this passage sets forth
a definition. On the other hand, this passage refers to “physical address” rather than the disputed
term “physical network address.”

- 34 -

On balance, to whatever extent this disclosure regarding “physical address” is deemed
relevant to the term “physical network address,” use of a “unique” address is a specific feature of
particular disclosed embodiments that should not be imported into the claim. See Comark, 156
F.3d at 1187; see also Phillips, 415 F.3d at 1323. The Court therefore hereby expressly rejects
Defendant’s proposed construction. No further construction is necessary. See U.S. Surgical,
103 F.3d at 1568; see also O2 Micro, 521 F.3d at 1362; Finjan, 626 F.3d at 1207; ActiveVideo,
694 F.3d at 1326; Summit 6, 802 F.3d at 1291.
The Court therefore hereby construes the disputed terms as set forth in the following
chart:
Term

Construction

“entering an I/O map table into the
controller”

“entering into the controller an I/O map
table that allows mapping to occur within
the controller”

“software address”

Plain meaning

“physical network address”

Plain meaning

M. “sequences of axis functions”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“sets of separate machine movements”

Dkt. No. 58, Ex. A at 5-6; Dkt. No. 63, Ex. B at 7; Dkt. No. 67 at 9; Dkt. No. 71, Ex. A at 17.
The parties submit that this term appears in Claim 26 of the ’293 Patent. Dkt. No. 58, Ex. A
at 5-6.
Shortly before the start of the August 24, 2016 hearing, the Court provided the parties
with the following preliminary construction: “sets of machine movements.”

- 35 -

(1) The Parties’ Positions
Defendant argues that “[d]uring prosecution, [the] patentee defined the terms ‘axis,’
‘function,’ and ‘sequence.’” Dkt. No. 67 at 9.
Plaintiff replies that “[Defendant’s] proposed additions to this claim term contradict the
intrinsic record that [Defendant] itself recited [sic, cited] and should therefore be rejected.” Dkt.
No. 68 at 4.
(2) Analysis
During prosecution, the patentee referred to “axis,” “function,” and “sequence” as
follows:
[A]s used in the present specification and claims, a machine progresses through a
cycle including two sequences. A sequence includes one or more axis which
perform functions on an object being machined. The words [emphasized] in the
preceding sentence have distinct meanings.
An axis is an assembly of two or more mechanical components wherein one
component has freedom to move with respect to the other component in a
reciprocal manner along a single axis . . . . For example, an axis may include a
main slide on a horizontal mill or a cross slide on a mill.
A function is a single axis movement (e.g. main slide advance, main slide return,
etc.).
A sequence includes a correctly orchestrated set of functions by one or more axis
which realizes a portion of a manufacturing process (i. e. a cycle) . . . . For
example, a sequence may include a “main slide advance” function followed by a
“cross slide advance” function.
A cycle includes two sequences wherein a second sequence inverts the actions
(i.e. functions) performed by the first sequence. In other words the second
sequence returns tools to the states the tools occupied prior to the beginning of the
first sequence. . . . For example, where a first sequence includes functions “main
slide advance” and “cross slide advance”, the second sequence in a cycle may
include the functions “cross slide return” and “main slide return”.
Dkt. No. 67, Ex. I, Nov. 2, 1998 Amendment at 5-6 (RAI_00000996-97).

- 36 -

Particularly because these definitions appear as part of a discussion of terms “as used in
the present specification and claims” (id. at 5), the patentee’s definitions should be given effect.
See Typhoon Touch, 659 F.3d at 1381; see also Phillips, 415 F.3d at 1316 (“the inventor’s
lexicography governs”); Home Diagnostics, 381 F.3d at 1356 (“As in the case of the
specification, a patent applicant may define a term in prosecuting a patent.”).
As to Defendant’s proposal of “separate” movements, no such requirement appears in the
above-quoted prosecution history, and Defendant has not otherwise justified such a limitation.
The Court therefore hereby construes “sequences of axis functions” to mean “sets of
machine movements.”
N. “generating a substantially complete real time machine language program” and
“producing a substantially complete real time machine language program for controlling
axis functions”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“generating a substantially complete machine
control program using predefined machine
language modules”4

Dkt. No. 58, Ex. A at 6; Dkt. No. 63, Ex. B at 7; Dkt. No. 67 at 10; Dkt. No. 71, Ex. A at 16.
The parties submit that these terms appear in Claims 16 and 26 of the ’293 Patent. Dkt. No. 58,
Ex. A at 6.
Shortly before the start of the August 24, 2016 hearing, the Court provided the parties
with the following preliminary construction: “Plain meaning ([r]eject Defendant’s proposal of
‘predefined machine language modules’).”

4

Defendant previously proposed “generating a substantially complete machine control program
in real time using predefined machine language modules.” Dkt. No. 58, Ex. A at 6 (emphasis
added).
- 37 -

(1) The Parties’ Positions
Defendant argues that its proposed construction “is consistent with the specification
which explains using predefined modules to produce a control program.” Dkt. No. 67 at 10.
Plaintiff replies that “[Defendant] seeks to completely remove the ‘real time’ aspect from
these claim terms and instead add its coined terms ‘machine control program’ and ‘predefined
machine language program,’ both of which appear nowhere in the specification.” Dkt. No. 68
at 4.
(2) Analysis
The specification discloses:
Using the inventive apparatus, a user can quickly construct a bar chart image on a
computer screen that contains all of the information necessary to sequence tool
movements.
***
Template language guides a user to assemble from a set of programming units
called modules a complete and correct machine tree 11. Individual modules are
identified with templates, which include truly reusable control logic so that, when
a template-based machine tree is compiled, a complete control program for an
industrial process is produced.
’293 Patent at 4:28-31 & 12:43-48 (emphasis added); see id. at 4:31-41 (“the apparatus itself can
completely convert bar chart information into sequencing logic thus minimizing programming
time and associated cost”).
On balance, the use of predefined modules is a specific feature of particular disclosed
embodiments that should not be imported into the claims. See Comark, 156 F.3d at 1187; see
also Phillips, 415 F.3d at 1323.
The Court therefore hereby expressly rejects Defendant’s proposed construction. No
further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521

- 38 -

F.3d at 1362; Finjan, 626 F.3d at 1207; ActiveVideo, 694 F.3d at 1326; Summit 6, 802 F.3d
at 1291.
The Court accordingly hereby construes “generating a substantially complete real time
machine language program” and “producing a substantially complete real time machine
language program for controlling axis functions” to have their plain meaning.
O. “A production object for an object-oriented programming language”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

This claim element does not require the
“a runtime or firmware module with embedded
Court’s construction because it is only found in properties and/or functions for use in an objectthe non-limiting portion of the preamble of
oriented programming language”
claim 1.
Alternatively, this claim element should be
given its plain and ordinary meaning.
Dkt. No. 58, Ex. A at 6-7; Dkt. No. 63, Ex. B at 8. The parties submit that this term appears in
Claim 1 of the ’168 Patent. Dkt. No. 58, Ex. A at 6-7.
Defendant “hereby withdraws its proposed construction[] for th[is] . . . disputed term and
adopts [Plaintiff’s] proposed construction[].” Dkt. No. 67, Ex. B at 1; see Dkt. No. 71, Ex. A
at 19.
Nonetheless, the parties have presented a dispute as to whether the preamble in which
this term appears is limiting, and the Court separately addresses that dispute below.
P. “a first module” and “a second module”
“a first module”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“a first microprocessor hardware module of a
modular programmable controller”

- 39 -

“a second module”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“a second hardware module of a modular
programmable controller, where the first and
second modules are separate pieces of
hardware”

Dkt. No. 58, Ex. A at 7; Dkt. No. 63, Ex. B at 8-9; Dkt. No. 71, Ex. A at 19. The parties submit
that this term appears in Claim 1 of the ’168 Patent. Dkt. No. 58, Ex. A at 7.
Shortly before the start of the August 24, 2016 hearing, the Court provided the parties
with the following preliminary construction: “Plain meaning ([r]eject Defendant’s proposal of
requiring ‘hardware’ modules).”
(1) The Parties’ Positions
Defendant argues that “[t]he specification of the ‘168 Patent explains ‘a first module’ and
‘a second module[]’ are hardware components of a programmable controller.” Dkt. No. 67 at 11.
Plaintiff replies that “the words ‘microprocessor’ and ‘modular’ appear nowhere in the
specification,” and Plaintiff argues that Defendant’s proposed construction would exclude
disclosed embodiments. Dkt. No. 68 at 4.
(2) Analysis
The Summary of the Invention discloses “a first module” and “a second module” in a
hardware context:
The programmable controller system includes a backplane, a first module, and a
second module. The first and second modules are disposed in the backplane and
are linked by the backplane.
’168 Patent at 2:25-34. Further, as disclosed regarding Figure 1:
The PLC system 30 comprises a PLC processor module 32 and a plurality of other
- 40 -

modules 34-42. The other modules 34-42 could include, for example, one or
more Ethernet modules, DHRIO modules, CNB modules, analog modules, PLC
processor modules and/or a plurality of other types of modules. The modules are
disposed in a rack (not illustrated) and are networked by way of a common
backplane 54 (see FIG. 2).
Id. at 4:11-19 (emphasis added); see id. at Fig. 1.
On balance, however, the use of “hardware” modules is a specific feature of particular
disclosed embodiments that should not be imported into the claims. See Comark, 156 F.3d
at 1187; see also Phillips, 415 F.3d at 1323. Of particular note, Claim 1 of the ’168 Patent
introduces “a first module” in the context of “an object-oriented programming language” rather
than in the context of hardware.
The Court therefore hereby expressly rejects Defendant’s proposed construction. No
further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521
F.3d at 1362; Finjan, 626 F.3d at 1207; ActiveVideo, 694 F.3d at 1326; Summit 6, 802 F.3d
at 1291.
The Court accordingly hereby construes “a first module” and “a second module” to
have their plain meaning.
Q. “multi-network interface”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“multi-network interface circuit card”

Dkt. No. 58, Ex. A at 7; Dkt. No. 63, Ex. B at 9; Dkt. No. 67 at 11; Dkt. No. 71, Ex. A at 20.
The parties submit that this term appears in Claim 1 of the ’226 Patent. Dkt. No. 58, Ex. A at 7.
Shortly before the start of the August 24, 2016 hearing, the Court provided the parties
with the following preliminary construction: “multi-network interface circuit card.”

- 41 -

(1) The Parties’ Positions
Plaintiff argues that “[w]hile the specification states that the multi-network interface
requires a processor and memory, a circuit card is not required.” Dkt. No. 63 at 13 (citing ‘226
Patent at 4:57-64).
Defendant responds that “[Plaintiff’s] ‘plain and ordinary meaning’ construction
improperly enlarges the scope of a claim term that requires hardware and cannot be performed
by software alone.” Dkt. No. 67 at 11. In particular, Defendant cites prosecution history. Id.
at 12.
Plaintiff replies that “[t]he patentee knew how to explicitly claim a ‘multi network
interface circuit card’ and chose not to do so in claim 1.” Dkt. No. 68 at 5.
(2) Analysis
On one hand, Figure 2 of the ’226 Patent illustrates “multi-network interface 42” (see
’226 Patent at 4:57-58) as being within “desktop computer 12” (see id. at 4:35-36). At least at
first blush, this disclosure weighs against requiring the “multi-network interface” to be distinct.
Also of note, whereas independent Claim 11 of the ’226 Patent expressly recites a “multinetwork interface card,” no such recital of a “card” appears in Claim 1 of the ’226 Patent.
On the other hand, the Summary of the Invention states: “The present invention provides
a circuit card that may be attached to a desktop computer to allow a simple programming
interface to a wide variety of industrial controller communication networks.” ’226 Patent
at 2:16-19. Likewise, the written description sets forth:
The bus 36 also communicates with a multi-network interface 42 of the present
invention which has multiple ports 50 communicating with the network cables 24
for the various networks needed to support the industrial control system 10. The
multi-network interface 42 includes its own processor 43 and memory 45 as will
be described further below.

- 42 -

’226 Patent at 4:57-63 (emphasis added).
Also, during prosecution the patentee stated:
Claims 1 and 9 recite both a computer and a separate processor. That is, claims 1
and 9 recite a processor on a multi-network interface that is in addition to a
computer.
Dkt. No. 67, Ex. J, May 27, 2003 Reply at 2 (RAI_00001358); see Dkt. No. 68 at 4 (noting that
Claim 11 of the ’226 Patent was numbered as claim 9 during prosecution).
Plaintiff has cited the following explanation by the patentee regarding the addition of a
“card” limitation in application claim 9 (issued Claim 11):
Finally, claim 9 additionally has been amended to provide that the multi-network
interface is implemented on a card that is capable of being coupled to and
decoupled from a bus of the computer. This is supported in the Specification at
page 4, lines 3-13 and page 8 lines 13-17.
The Applicants respectfully submit that, except for the last above-discussed
amendment to claim 9, in which the multi-network interface is specified to be a
card, the amendments to the claims have been made to clarify the language of the
claims.
Dkt. No. 68, Ex. A, Apr. 15, 2002 Amendment at 7 (RAI_00001324); see id. at 12 (showing
amendments to claim 9). Because this amendment added not merely that the multi-network
interface is “implemented on a card” but also that it is “capable of being coupled to and
decoupled from a bus of the computer,” any claim differentiation argument by Plaintiff in this
regard is unpersuasive. Id.; see, e.g., Mycogen Plant Sci. v. Monsanto Co., 243 F.3d 1316, 1329
(Fed. Cir. 2001).
Moreover, as Defendant urged at the August 24, 2016 hearing, the “card” limitation in
Claim 11 is presented as having antecedent basis in “[a] multi-network interface” recited in the
preamble. The limitation at issue is: “wherein the multi-network interface card is implemented
using a card that is capable of being coupled to and decoupled from a bus of the computer.” A

- 43 -

fair reading of this limitation is that rather than limiting the multi-network interface to being a
card, this limitation presumes that the multi-network interface is a card and then adds the
limitation that the card “is capable of being coupled to and decoupled from a bus of the
computer.” The above-quoted prosecution history can likewise be read in this manner.
Finally, other differences between Claim 1 and Claim 11 are also apparent. See Wenger
Mfg., Inc. v. Coating Mach. Sys., Inc., 239 F.3d 1225, 1233 (Fed. Cir. 2001) (“Claim
differentiation, while often argued to be controlling when it does not apply, is clearly applicable
when there is a dispute over whether a limitation found in a dependent claim should be read into
an independent claim, and that limitation is the only meaningful difference between the two
claims.”) (emphasis added). For example, whereas Claim 1 recites an “API” and “API
extensions,” Claim 11 does not.
On balance, the specification and the prosecution history demonstrate that although a
“multi-network interface” may be attached to a computer, a “multi-network interface” is
nonetheless a distinct circuit card. See, e.g., Verizon, 503 F.3d at 1308 (“When a patent thus
describes the features of the ‘present invention’ as a whole, this description limits the scope of
the invention.”); Typhoon Touch, 659 F.3d at 1381 (“The patentee is bound by representations
made and actions that were taken in order to obtain the patent.”).
The Court accordingly hereby construes “multi-network interface” to mean “multinetwork interface circuit card.”

- 44 -

R. “identity data representative of an identity of the respective component in the system,”
“component designation data,” and “component data”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“data representing the configuration of a
particular hardware device component in the
system, in addition to the communication
address of the particular hardware device
component”

Dkt. No. 58, Ex. A at 8-9; Dkt. No. 63, Ex. B at 10-12; Dkt. No. 67 at 13. The parties submit
that these terms appear in Claims 21, 27, 33, 34, and 35 of the ’817 Patent and Claim 1 of the
’225 Patent. Dkt. No. 58, Ex. A at 8-9.
In their August 12, 2016 Joint Claim Construction Chart, the parties submit that they now
agree that these terms should be given their “[p]lain and ordinary meaning.” Dkt. No. 71, Ex. A
at 23. The Court therefore sets forth the parties’ now-agreed construction in Appendix A to this
Claim Construction Memorandum and Order.

- 45 -

S. “generating a series of user viewable monitoring displays of the parameters by
component based upon the sensed parameters and the identity data, the monitoring
displays including graphical presentations of parameter levels,” “generating a user
viewable monitoring display of the parameters by component based upon the sensed
parameters and the identity data,” and “a monitoring station configured cyclically to
access the parameter data via the network link and to generate a user viewable
representation of the parameter data including a plurality of virtual meters displaying
current and historical levels of selected parameters for each component”
“generating a series of user viewable monitoring displays of the parameters by component
based upon the sensed parameters and the identity data, the monitoring displays including
graphical presentations of parameter levels” (’817 Patent, Claims 21, 27)
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“automatically generating a series of user
viewable screens of the parameters by
component based upon the sensed parameters
and the identity data, the monitoring displays
including graphical presentations of parameter
levels”

“generating a user viewable monitoring display of the parameters by component based
upon the sensed parameters and the identity data” (’817 Patent, Claims 33, 34, 35)
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“automatically generating a series of user
viewable screens of the parameters by
component based upon the sensed parameters
and the identity data”

- 46 -

“a monitoring station configured cyclically to access the parameter data via the network
link and to generate a user viewable representation of the parameter data including a
plurality of virtual meters displaying current and historical levels of selected parameters
for each component” (’225 Patent, Claim 1)
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“a monitoring station configured to cyclically
access the parameter data via the network link
and to automatically generate user viewable
screens of the parameter data including a
plurality of virtual meters displaying current
and historical levels of selected parameters for
each component”

Dkt. No. 58, Ex. A at 8-9; Dkt. No. 63, Ex. B at 10-12; Dkt. No. 67 at 15.
In their August 12, 2016 Joint Claim Construction Chart, the parties submit that they now
agree that these terms should be given their “[p]lain and ordinary meaning.” Dkt. No. 71, Ex. A
at 22-23. The Court therefore sets forth the parties’ now-agreed construction in Appendix A to
this Claim Construction Memorandum and Order.
T. “an automation interface component that facilitates . . .”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“a stand-alone application that, through
external program code rather than a user
interface or direct user interaction, provides for
. . .”

Dkt. No. 58, Ex. A at 9; Dkt. No. 63, Ex. B at 12; Dkt. No. 67 at 16; Dkt. No. 71, Ex. A at 23-24.
The parties submit that this term appears in Claims 1 and 14 of the ’704 Patent. Dkt. No. 58,
Ex. A at 9.

- 47 -

Shortly before the start of the August 24, 2016 hearing, the Court provided the parties
with the following preliminary construction: “an application that can operate without a user
interface and that provides for . . . .”
(1) The Parties’ Positions
Plaintiff argues that Defendant is “selectively excluding whole embodiments from the
scope of the claims without reason.” Dkt. No. 63 at 15.
Defendant responds that its proposal is supported by the specification as well as by the
doctrine of claim differentiation. Dkt. No. 67 at 16.
Plaintiff replies that Defendant’s proposal improperly limits the claims to a single
disclosed embodiment and excludes other claimed embodiments, such as recited in Claim 10.
Dkt. No. 68 at 6. Plaintiff also argues that Defendant’s proposal of “external program code”
lacks support in the specification. Id.
(2) Analysis
The specification discloses that functions may be controlled with or without user
interface control:
A user interface can be provided to the applications program to allow users to
manually control functions, or functions can be controlled programmatically
without any user intervention.
’704 Patent at 7:35-36.
The context of the claims is consistent with such a reading. For example, Claims 1
and 13 of the ’704 Patent recite (emphasis added):
1. A system that facilitates interaction with an industrial controller, comprising:
an automation interface component that facilitates communications with
at least an industrial controller for creating, uploading to and downloading from
the industrial controller a control program, and editing of the control program
while in the industrial controller; and

- 48 -

a computer process interface library that comprises object-oriented based
objects and classes that are associated with the automation interface component,
the computer process interface library is compiled with the automation interface
component and provides the automation interface component with a plurality of
computer process interfaces that expose the automation interface component to
one or more client application processes to facilitate programmatical
communications with the industrial controller.
***
13. The system of claim 1, wherein the automation interface has a visible mode
provided with a user interface and an invisible mode where no user interface is
provided.
Thus, dependent Claim 13 reinforces that the “automation interface” can operate with or
without a user interface.
Nonetheless, that the automation interface is “stand-alone” is a specific feature of a
particular disclosed embodiment that should not be imported into the claims. See Comark, 156
F.3d at 1187; see also Phillips, 415 F.3d at 1323. Further, to whatever extent Defendant intends
“stand-alone” to refer merely to the ability to operate without a user interface, such a limitation is
already apparent in the remainder of Defendant’s proposed construction.
At the August 24, 2016 hearing, Plaintiff proposed replacing “without” in the Court’s
preliminary construction with the phrase “with or without” so as to ensure that the construction
does not exclude operating with a user interface. Defendant was amenable to this modification,
although Defendant proposed that the construction should specify not merely “a user interface”
but rather “a separate user interface.” On balance, Defendant has not adequately justified its
proposal that the user interface must be “separate,” and also such a requirement would tend to
confuse rather than clarify the scope of the claims.

- 49 -

The Court therefore hereby construes “an automation interface component that
facilitates . . .” to mean “an application that can operate with or without a user interface
and that provides for . . . .”
U. “editing the control program while in the industrial controller”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“remotely editing the control program source
code while that source code is resident in the
industrial controller”

Dkt. No. 58, Ex. A at 9-10; Dkt. No. 63, Ex. B at 12; Dkt. No. 67 at 17; Dkt. No. 71, Ex. A at 24.
The parties submit that this term appears in Claims 1 and 14 of the ’704 Patent. Dkt. No. 63,
Ex. B at 12; Dkt. No. 58, Ex. A at 9-10.
Shortly before the start of the August 24, 2016 hearing, the Court provided the parties
with the following preliminary construction: “remotely editing the control program source code
while that source code is resident in the industrial controller.”
(1) The Parties’ Positions
Defendant argues that although the specification discloses two ways in which control
programs can be edited, the claim term makes clear that it is limited to only one of those
embodiments. Dkt. No. 67 at 17.
Plaintiff replies: “However, the specification describes multiple embodiments in which
edits may be made locally or remotely (see, e.g. 2:40-43, 3:53-56) and the term ‘source code’
appears nowhere in the specification. The only intrinsic record cited by [Defendant] is the
patent’s Background of the Invention section describing prior art techniques for ‘creating’ a
control program, not ‘editing’ one as in the claim term.” Dkt. No. 68 at 7.

- 50 -

(2) Analysis
Claim 1 of the ’704 Patent, for example, recites in relevant part (emphasis added):
“an automation interface component that facilitates communications with at least an industrial
controller for creating, uploading to and downloading from the industrial controller a control
program, and editing of the control program while in the industrial controller; . . . .”
The Background of the Invention states:
A ladder program can be created by connecting a special input module to a PLC
[(programmable logic controller)] that includes a small keyboard and entering
ladder logic statements directly into the memory of the PLC. Another method of
creating a ladder logic program involves, utilizing a ladder logic program
development/editor tool residing on a separate device, such as a personal
computer. An operator or programmer of the personal computer draws a series of
ladder logic graphs representing each rung or instruction directly on the computer
display screen. Once the ladder logic program is complete, the PC software
converts the graphs into the corresponding ladder logic commands. The ladder
logic command[s] are then transferred to the PLC and stored in the PLC memory.
’704 Patent at 2:1-13.
Both of the options set forth in the above-quoted disclosure refer to creating a program,
not editing a program, so this disclosure is of limited relevance. Nonetheless, the disputed term
refers to editing a program that is “in” the industrial controller, which excludes merely
transferring an edited program to a controller.
At the August 24, 2016 hearing, Defendant agreed with the Court’s preliminary
construction except that Defendant withdrew its proposal of the word “remotely.” Also, Plaintiff
persuasively argued at the hearing that a control program may include more than source code,
such as variables that may be controlled by the operator, and Plaintiff emphasized that the
specification does not refer to “source code” of a control program.

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The Court therefore hereby construes “editing the control program while in the
industrial controller” to mean “editing the control program while that control program is
resident in the industrial controller.”
V. “the computer process interface library is compiled with the automation interface
component”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

No construction of this term is proposed by
[Defendant].

Invalid as indefinite under 35 U.S.C. § 112 ¶ 2
for claiming both a system and a method of
using that system.

[Plaintiff] proposes that no construction by the
Court is necessary and that this element should
be given its plain and ordinary meaning.
Dkt. No. 58, Ex. A at 10; Dkt. No. 63, Ex. B at 12-13. The parties submit that this term appears
in Claim 1 of the ’704 Patent. Dkt. No. 58, Ex. A at 10.
Defendant “hereby withdraws its proposed construction[] for th[is] . . . disputed term and
adopts [Plaintiff’s] proposed construction[].” Dkt. No. 67, Ex. B at 1. The Court therefore sets
forth the parties’ now-agreed construction in Appendix A to this Claim Construction
Memorandum and Order.
W. “a packaging component associated with an industrial control device”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“a software component located on an industrial
control device to provide data to a particular
remote consumer”

Dkt. No. 58, Ex. A at 17; Dkt. No. 63, Ex. B at 23. The parties submit that this term appears in
Claim 1 of the ’585 Patent. Dkt. No. 58, Ex. A at 17.
Defendant “hereby withdraws its proposed construction[] for th[is] . . . disputed term and
adopts [Plaintiff’s] proposed construction[].” Dkt. No. 67, Ex. B at 1; see Dkt. No. 71, Ex. A

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at 50. The Court therefore sets forth the parties’ now-agreed construction in Appendix A to this
Claim Construction Memorandum and Order.
X. “an abstraction component that . . . determines the properties and methods that are
exposed to a particular data consuming device”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“a device that, based on user input, selects and
prepares data for transmission to a particular
data consuming device”

Dkt. No. 58, Ex. A at 17-18; Dkt. No. 63, Ex. B at 23. The parties submit that this term appears
in Claim 1 of the ’585 Patent. Dkt. No. 58, Ex. A at 17-18.
Defendant “hereby withdraws its proposed construction[] for th[is] . . . disputed term and
adopts [Plaintiff’s] proposed construction[].” Dkt. No. 67, Ex. B at 1; see Dkt. No. 71, Ex. A
at 50. The Court therefore sets forth the parties’ now-agreed construction in Appendix A to this
Claim Construction Memorandum and Order.
Y. “determining the properties and methods that are exposed to a particular data
consuming device”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“based on user input, selecting and preparing
data for transmission to a particular data
consuming device”

Dkt. No. 58, Ex. A at 18; Dkt. No. 63, Ex. B at 23-24. The parties submit that this term appears
in Claim 17 of the ’585 Patent. Dkt. No. 58, Ex. A at 18.
Defendant “hereby withdraws its proposed construction[] for th[is] . . . disputed term and
adopts [Plaintiff’s] proposed construction[].” Dkt. No. 67, Ex. B at 1; see Dkt. No. 71, Ex. A
at 50. The Court therefore sets forth the parties’ now-agreed construction in Appendix A to this
Claim Construction Memorandum and Order.

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Z. “invokes methods”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“triggers the execution of procedures
associated with objects and waits for the
result”

Dkt. No. 58, Ex. A at 19; Dkt. No. 63, Ex. B at 26. The parties submit that this term appears in
Claims 1, 17, and 25 of the ’585 Patent. Dkt. No. 58, Ex. A at 19.
Defendant “hereby withdraws its proposed construction[] for th[is] . . . disputed term and
adopts [Plaintiff’s] proposed construction[].” Dkt. No. 67, Ex. B at 1; see Dkt. No. 71, Ex. A
at 56. The Court therefore sets forth the parties’ now-agreed construction in Appendix A to this
Claim Construction Memorandum and Order.
AA. “scale of the data”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“correlation and conversion information for the
data”

Dkt. No. 58, Ex. A at 20; Dkt. No. 63, Ex. B at 26. The parties submit that this term appears in
Claims 1, 17, and 25 of the ’585 Patent. Dkt. No. 58, Ex. A at 20.
Defendant “hereby withdraws its proposed construction[] for th[is] . . . disputed term and
adopts [Plaintiff’s] proposed construction[].” Dkt. No. 67, Ex. B at 1; see Dkt. No. 71, Ex. A
at 56. The Court therefore sets forth the parties’ now-agreed construction in Appendix A to this
Claim Construction Memorandum and Order.

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BB. “the monitoring station is configured to build a view of the components in real-time
based upon the identifying component data”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“the monitoring station is configured to build a
user viewable display of the components
without previous knowledge of the components
by polling the networked components and
automatically building the display based on the
identifying data received from the local
memory of the components”

Dkt. No. 58, Ex. A at 20; Dkt. No. 63, Ex. B at 26-27; Dkt. No. 67 at 18. The parties submit that
this term appears in Claim 1 of the ’567 Patent. Dkt. No. 58, Ex. A at 20.
In their August 12, 2016 Joint Claim Construction Chart, the parties submit that they now
agree that this term should be given its “[p]lain and ordinary meaning.” Dkt. No. 71, Ex. A
at 56. The Court therefore sets forth the parties’ now-agreed construction in Appendix A to this
Claim Construction Memorandum and Order.
CC. “a plurality of monitoring representations built in real-time based upon the
identifying data and viewable on the monitoring station” and “displaying a plurality of
monitoring representations . . . built in real-time based on the status and identity data”
“a plurality of monitoring representations built in real-time based upon the identifying
data and viewable on the monitoring station” (’567 Patent, Claim 9)
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“a plurality of user viewable representations of
the plurality of components built automatically
without prior knowledge of the components
based on the polled identifying data stored
locally in the components, the representations
viewable on the monitoring station”

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“displaying a plurality of monitoring representations . . . built in real-time based on the
status and identity data” (’567 Patent, Claim 20)
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Plain and ordinary meaning.

“displaying a plurality of visual representations
of the components, built automatically without
prior knowledge of the components based on
polling the status and identity data stored in the
components”

Dkt. No. 58, Ex. A at 20-21; Dkt. No. 63, Ex. B at 27; Dkt. No. 67 at 19.
In their August 12, 2016 Joint Claim Construction Chart, the parties submit that they now
agree that these terms should be given their “[p]lain and ordinary meaning.” Dkt. No. 71, Ex. A
at 56. The Court therefore sets forth the parties’ now-agreed construction in Appendix A to this
Claim Construction Memorandum and Order.
DD. “providing a uniform interface”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

This claim element does not require the
“providing a uniform standardized
Court’s construction because it is only found in programming interface”
the non-limiting preamble of claim 1.
Alternatively, this claim element should be
given its plain and ordinary meaning.
Dkt. No. 58, Ex. A at 21; Dkt. No. 63, Ex. B at 28-29; Dkt. No. 67 at 21; Dkt. No. 71, Ex. A
at 62. The parties submit that this term appears in Claim 1 of the ’122 Patent. Dkt. No. 58,
Ex. A at 21.
Shortly before the start of the August 24, 2016 hearing, the Court provided the parties
with the following: “This disputed term appears in the preamble of Claim 1 of the ’122 Patent,
which is addressed separately below.”

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Defendant argues that although “[t]he claim does not provide any clarity about what a
‘uniform interface’ means,” “[t]he specification provides some hint of the patentee’s intended
meaning: that an object provider ‘provide[s] an abstraction of the underlying proprietary
software object interface [giving] the programmer a unified and standard programming
environment.’” Dkt. No. 67 at 21 (citing ’122 Patent at 10:40-59).
Plaintiff replies that “[Defendant] seeks to depart from the term’s plain and ordinary
meaning by importing its coined word ‘standardized’ (which does not appear in the specification
and which is different than the term ‘standard’ that is present in the specification) without
explanation as to why the language of the claim itself or the intrinsic record is insufficient.” Dkt.
No. 68 at 8.
This disputed term appears in the preamble of Claim 1 of the ’122 Patent, which the
Court addresses separately below.
V. CONSTRUCTION OF DISPUTED NON-MEANS TERMS AS TO WHICH THERE IS
A 35 U.S.C. § 112, ¶ 6 ALLEGATION
Plaintiff has addressed these terms as a group, arguing that “[a]s can be seen from the
plain language of these terms, they recite sufficiently definite structure, and thus, the
presumption that 112 ¶6 does not apply has not been overcome.” Dkt. No. 63 at 20 (citation and
internal quotation marks omitted). Alternatively, Plaintiff argues that “ample structure is recited
in the specification.” Id.
Defendant has addressed these terms individually as set forth below.

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EE. “a conversion system that receives a first and a second control program and converts
the first and second control program into a first and second data set representing
individual instruction of the first and second control program” and “a conversion system
that receives a first and a second control program and converts the first and second control
program into a first and second binary data set representing individual instruction of the
first and second control program”
“a conversion system that receives a first and a second control program and converts the
first and second control program into a first and second data set representing individual
instruction of the first and second control program” (’366 Patent, Claim 1)
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

This claim element is not governed by
35 U.S.C. § 112 ¶ 6 and should be given its
plain and ordinary meaning.

This term is governed by 35 U.S.C. § 112 ¶ 6.

Alternatively, the function is “receiving a first
and a second control program and converting
the first and second control program into a first
and second data set representing individual
instruction of the first and second control
program” and exemplary related structures
disclosed in the specification include:
PC software (‘366 Patent: 1:67-2:2)
conversion system 20, converter 22; first
converter and second converter (‘366 Patent:
Fig. 2; 3:6-8; 4:60-5:22)
conversion system 52 (‘366 Patent: 5:676:7)
compare utility (‘366 Patent: 10:35-37)

Function:
“receiving a first and a second control
program and converting the first and second
control program into a first and second data set
representing individual instruction of the first
and second control program”
Structure:
Indefinite

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“a conversion system that receives a first and a second control program and converts the
first and second control program into a first and second binary data set representing
individual instruction of the first and second control program” (’366 Patent, Claim 9)
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

This claim element is not governed by
35 U.S.C. § 112 ¶ 6 and should be given its
plain and ordinary meaning.

This term is governed by 35 U.S.C. § 112 ¶ 6.

Alternatively, the function is “receiving a first
and a second control program and converting
the first and second control program into a first
and second binary data set representing
individual instruction of the first and second
control program” and exemplary related
structures disclosed in the specification
include:
PC software (‘366 Patent: 1:67-2:2)
conversion system 20, converter 22; first
converter and second converter (‘366 Patent:
Fig. 2; 3:6-8; 4:60-5:22)
conversion system 52 (‘366 Patent: 5:676:7)
compare utility (‘366 Patent: 10:35-37)

Function:
“receiving a first and a second control
program and converting the first and second
control program into a first and second binary
data set representing individual instruction of
the first and second control program”
Structure:
Indefinite

Dkt. No. 58, Ex. A at 10-11; Dkt. No. 63, Ex. B at 13-14; Dkt. No. 71, Ex. A at 26-29.
Shortly before the start of the August 24, 2016 hearing, the Court provided the parties
with the following preliminary construction: “35 U.S.C. § 112, ¶ 6 does not apply. Plain
m[eanin]g.”
(1) The Parties’ Positions
Defendant argues that “the rebuttable presumption against application of 35 U.S.C. § 112
¶6 is overcome” because “conversion system” does not connote any particular structure in the
relevant art and because the explanations in the specification are purely functional. Dkt. No. 67
at 22. Also, Defendant submits, “the function recited in claims 1 and 9 (‘receives a first and a

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second control program and converts . . .’) is nearly identical to the recited function of claim 20
(‘receiving a first and a second control program and converting . . .’).” Id. at 23. Defendant
concludes that “the specification fails to disclose an operative algorithm for the recited claim
functions.” Id. at 24.
Plaintiff replies that the structure is “the algorithm performed by a converter (Fig. 2 and
corresponding written description) configured to receive control programs (Fig. 2 and 4:60-64)
and convert them into binary data sets (Fig. 2 and 4:64-5:3) to achieve the claimed function and
equivalents.” Dkt. No. 68 at 9.
(2) Analysis
Title 35 U.S.C. § 112, ¶ 6 provides: “An element in a claim for a combination may be
expressed as a means or step for performing a specified function without the recital of structure,
material, or acts in support thereof, and such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification and equivalents thereof.”
“[T]he failure to use the word ‘means’ . . . creates a rebuttable presumption . . . that
§ 112, para. 6 does not apply.” Williamson v. Citrix Online LLC, 792 F.3d 1339, 1348 (Fed. Cir.
2015) (citations and internal quotation marks omitted). “When a claim term lacks the word
‘means,’ the presumption can be overcome and § 112, para. 6 will apply if the challenger
demonstrates that the claim term fails to recite sufficiently definite structure or else recites
function without reciting sufficient structure for performing that function.” Id. at 1349 (citations
and internal quotation marks omitted).
Williamson, in an en banc portion of the decision, abrogated prior statements that the
absence of the word “means” gives rise to a “strong” presumption against means-plus-function
treatment. Id. (citation omitted). Williamson also abrogated prior statements that this

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presumption “is not readily overcome” and that this presumption cannot be overcome “without a
showing that the limitation essentially is devoid of anything that can be construed as structure.”
Id. (citations omitted). Instead, Williamson found, “[h]enceforth, we will apply the presumption
as we have done prior to Lighting World . . . .” Id. (citing Lighting World, Inc. v. Birchwood
Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004)). In a subsequent part of the decision not
considered en banc, Williamson affirmed the district court’s finding that the term “distributed
learning control module” was a means-plus-function term that was indefinite because of lack of
corresponding structure, and in doing so Williamson stated that “‘module’ is a well-known nonce
word.” 792 F.3d at 1350.
Here, the disputed terms each recite a “conversion system that” carries out particular
algorithmic steps that are set forth in the claim terms themselves.
In so finding, the Court applies long-standing principles articulated prior to the abrogated
Lighting World decision. See id.; see, e.g., Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d
1311, 1320 (Fed. Cir. 2004) (“when the structure-connoting term ‘circuit’ is coupled with a
description of the circuit’s operation, sufficient structural meaning generally will be conveyed to
persons of ordinary skill in the art, and § 112 ¶ 6 presumptively will not apply”; noting
“language reciting [the circuits’] respective objectives or operations”); Apex, 325 F.3d at 1372
(“While we do not find it necessary to hold that the term ‘circuit’ by itself always connotes
sufficient structure, the term ‘circuit’ with an appropriate identifier such as ‘interface,’
‘programming’ and ‘logic,’ certainly identifies some structural meaning to one of ordinary skill
in the art.”); Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 705
(Fed. Cir. 1998) (“Even though the term ‘detector’ does not specifically evoke a particular
structure, it does convey to one knowledgeable in the art a variety of structures known as

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‘detectors.’ We therefore conclude that the term ‘detector’ is a sufficiently definite structural
term to preclude the application of § 112, ¶ 6.”); Greenberg, 91 F.3d at 1583 (finding that
“detent mechanism” was not a means-plus-function term because it denotes a type of device with
a generally understood meaning in the mechanical arts); Affymetrix, Inc. v. Hyseq, Inc., 132 F.
Supp. 2d 1212, 1232 (N.D. Cal. 2001) (finding that “‘computer code’ is not a generic term, but
rather recites structure that is understood by those of skill in the art to be a type of device for
accomplishing the stated functions”).
Although Defendant argued at the August 24, 2016 that the claims and the specification
lack sufficient detail regarding an algorithm, “[t]he amount of detail required to be included in
claims depends on the particular invention and the prior art.” Typhoon Touch, 659 F.3d at 1385
(citation and internal quotation marks omitted). Here, the relatively simple receiving and
converting functions do not demand any greater detail than is recited.
The Court therefore hereby construes the disputed terms as set forth in the following
chart:
Term

Construction

“a conversion system that receives a first
and a second control program and converts
the first and second control program into a
first and second data set representing
individual instruction of the first and second
control program”

35 U.S.C. § 112, ¶ 6 does not apply.

“a conversion system that receives a first
and a second control program and converts
the first and second control program into a
first and second binary data set
representing individual instruction of the
first and second control program”

35 U.S.C. § 112, ¶ 6 does not apply.

Plain meaning.

Plain meaning.

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FF. “a difference module that determines differences between the first and the second
control programs and provides a difference data structure representing the differences
between the first and second control program” and “a difference module for determining
differences between the first and the second binary data set and providing a difference data
structure representing the differences between the first and second control programs”
“a difference module that determines differences between the first and the second control
programs and provides a difference data structure representing the differences between
the first and second control program” (’366 Patent, Claim 1)
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

This claim element is not governed by
35 U.S.C. § 112 ¶ 6 and should be given its
plain and ordinary meaning.

This term is governed by 35 U.S.C. § 112 ¶ 6.

Alternatively, the function is “determining
differences between the first and the second
control programs and providing a difference
data structure representing the differences
between the first and second control program”
and exemplary related structures disclosed in
the specification include:
difference module 28 (‘366 Patent: 5:1-22)
comparison utility (‘366 Patent: 10:37-42)
computer 220 (‘366 Patent: 9:61-10:16;
10:37-42)

Function:
“determining differences between the first
and the second control programs and providing
a difference data structure representing the
differences between the first and second
control program”
Structure:
Indefinite

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“a difference module for determining differences between the first and the second binary
data set and providing a difference data structure representing the differences between the
first and second control programs” (’366 Patent, Claim 9)
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

This claim element is not governed by
35 U.S.C. § 112 ¶ 6 and should be given its
plain and ordinary meaning.

This term is governed by 35 U.S.C. § 112 ¶ 6.

Alternatively, the function is “determining
differences between the first and the second
binary data set and providing a difference data
structure representing the differences between
the first and second control programs” and
exemplary related structures disclosed in the
specification include:
difference module 28 (‘366 Patent: 5:1-22)
comparison utility (‘366 Patent: 10:37-42)
computer 220 (‘366 Patent: 9:61-10:16;
10:37-42)

Function:
“determining differences between the first
and the second binary data set and providing a
difference data structure representing the
differences between the first and second
control programs”
Structure:
Indefinite

Dkt. No. 58, Ex. A at 11-12; Dkt. No. 63, Ex. B at 14-16; Dkt. No. 71, Ex. A at 31-34.
Shortly before the start of the August 24, 2016 hearing, the Court provided the parties
with the following preliminary constructions:
Term

“a difference module that
determines differences
between the first and the
second control programs
and provides a difference
data structure representing
the differences between the
first and second control
program”
(’366 Pat., Cl. 1)

Preliminary Construction

35 U.S.C. § 112, ¶ 6 applies.
Function:
“determining differences between the first and the second
control programs and providing a difference data structure
representing the differences between the first and second control
program”
Structure:
“difference module 28 configured to perform the algorithm set
forth in the ’366 Patent at 5:1-22, or comparison utility
configured to perform the algorithm set forth in the ’366 Patent at
10:37-42; and equivalents thereof”

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“a difference module for
determining differences
between the first and the
second binary data set and
providing a difference data
structure representing the
differences between the first
and second control
programs”
(’366 Pat., Cl. 9)

35 U.S.C. § 112, ¶ 6 applies.
Function:
“determining differences between the first and the second
binary data set and providing a difference data structure
representing the differences between the first and second control
programs”
Structure:
“difference module 28 configured to perform the algorithm set
forth in the ’366 Patent at 5:1-22, or comparison utility
configured to perform the algorithm set forth in the ’366 Patent at
10:37-42; and equivalents thereof”

(1) The Parties’ Positions
Defendant argues that “the disputed ‘a difference module’ in claims 1 and 9 and ‘means
for determining differences. . . and providing’ in claim 20 are all means-plus-function terms”
because “[t]he claim terms recite only function.” Dkt. No. 67 at 24. Defendant urges that the
specification fails to disclose adequate structure. Id. at 25.
Plaintiff replies that the structure is “the algorithm performed by a difference module
(Fig. 2, 5:1-13) or comparison utility (10:37-42) configured to achieve the claimed function and
equivalents.” Dkt. No. 68 at 9.
(2) Analysis
Legal principles regarding whether 35 U.S.C. § 112, ¶ 6 applies are discussed above as to
the “conversion system” terms.
The disputed terms each recite a “difference module” that performs particular functions,
and Williamson found that “module” is a “nonce” word that generally does not connote structure.
792 F.3d at 1350. Further, although “the presence of modifiers can change the meaning of
‘module,’” no such modifiers are apparent here. Id. at 1351. The Court therefore finds that the
disputed terms are means-plus-function terms governed by 35 U.S.C. § 112, ¶ 6.
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When it applies, 35 U.S.C. § 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.” Id. at 1347.
Construing a means-plus-function limitation involves multiple steps. “The first step . . .
is a determination of the function of the means-plus-function limitation.” Medtronic, Inc. v.
Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001). Here, the parties
agree that the claimed function is to “monitor a currently running node in an HPC system
comprising a plurality of nodes.”
“[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 ‘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).
Here, the parties agree upon the claimed function. As to the corresponding structure,
Plaintiff has cited “exemplary related structures disclosed in the specification.” On balance, the
proper corresponding structure is “difference module 28” or “comparison utility” configured to
perform the algorithms set forth in the specification. See ’366 Patent at 5:1-13 & 10:37-42; see,

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e.g., Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1374 (Fed. Cir. 2015)
(“Because these functions are computer-implemented functions, . . . the structure disclosed in the
specification must be more than a general purpose computer or microprocessor. Instead, we
require that the specification disclose an algorithm for performing the claimed function.”)
(citations omitted).
The Court therefore hereby construes the disputed terms as set forth in the following
chart:
Term

Construction

“a difference module that determines
differences between the first and the second
control programs and provides a difference
data structure representing the differences
between the first and second control
program”

35 U.S.C. § 112, ¶ 6 applies.
Function:
“determining differences between the
first and the second control programs and
providing a difference data structure
representing the differences between the
first and second control program”
Structure:
“difference module 28 configured to
perform the algorithm set forth in the ’366
Patent at 5:1-22, or comparison utility
configured to perform the algorithm set
forth in the ’366 Patent at 10:37-42; and
equivalents thereof”

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“a difference module for determining
differences between the first and the second
binary data set and providing a difference
data structure representing the differences
between the first and second control
programs”

35 U.S.C. § 112, ¶ 6 applies.
Function:
“determining differences between the
first and the second binary data set and
providing a difference data structure
representing the differences between the
first and second control programs”
Structure:
“difference module 28 configured to
perform the algorithm set forth in the ’366
Patent at 5:1-22, or comparison utility
configured to perform the algorithm set
forth in the ’366 Patent at 10:37-42; and
equivalents thereof”

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GG. “a comparison module that receives the difference data structure and the first and
second control programs and generates a plurality of comparison scenarios to provide a
plurality of comparison set views, the comparison module employing a decision model to
determine the optimal display set view from the plurality of comparison set views by
maximizing individual instruction matches between the first and second control programs”
and “a comparison module that receives the difference data structure and the first and
second control programs and generates a plurality of comparison scenarios to provide a
plurality of comparison set views; a decision model that determines an optimal display set
view from the plurality of comparison set views by maximizing individual instruction
matches between the first and second control programs”
“a comparison module that receives the difference data structure and the first and second
control programs and generates a plurality of comparison scenarios to provide a plurality
of comparison set views, the comparison module employing a decision model to determine
the optimal display set view from the plurality of comparison set views by maximizing
individual instruction matches between the first and second control programs”
(’366 Patent, Claim 1)
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

This claim element is not governed by
35 U.S.C. § 112 ¶ 6 and should be given its
plain and ordinary meaning.

This term is governed by 35 U.S.C. § 112 ¶ 6.
Function:
“receiving the difference data structure and
the first and second control programs and
generating a plurality of comparison scenarios
to provide a plurality of comparison set views,
and determining the optimal display set view
from the plurality of comparison set views by
maximizing individual instruction matches
between the first and second control programs”

Alternatively, the function is “receiving the
difference data structure and the first and
second control programs and generating a
plurality of comparison scenarios to provide a
plurality of comparison set views and
employing a decision model to determine the
optimal display set view from the plurality of
comparison set views by maximizing
individual instruction matches between the first Structure:
Indefinite
and second control programs” and exemplary
related structures disclosed in the specification
include:
viewing system 40, comparison component
42 (‘366 Patent: 5:30-40)
viewing system 60, comparison component
62 (‘366 Patent: 6:54-64
compare utility (‘366 Patent: 10:42-46)
computer 220 (‘366 Patent: 9:61-10:16;
10:42-46)

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“a comparison module that receives the difference data structure and the first and second
control programs and generates a plurality of comparison scenarios to provide a plurality
of comparison set views; a decision model that determines an optimal display set view from
the plurality of comparison set views by maximizing individual instruction matches
between the first and second control programs” (’366 Patent, Claim 9)
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

This claim element is not governed by
35 U.S.C. § 112 ¶ 6 and should be given its
plain and ordinary meaning.

This term is governed by 35 U.S.C. § 112 ¶ 6.

Alternatively, the two functions are
“receiving the difference data structure and the
first and second control programs and
generating a plurality of comparison scenarios
to provide a plurality of comparison set views”
and “determining an optimal display set view
from the plurality of comparison set views by
maximizing individual instruction matches
between the first and second control programs”
and exemplary related structures disclosed in
the specification include:
viewing system 40, comparison component
42 (‘366 Patent: 5:30-40)
viewing system 60, comparison component
62 (‘366 Patent: 6:54-64[)]
compare utility (‘366 Patent: 10:42-46)
computer 220 (‘366 Patent: 9:61-10:16;
10:42-46)

Function:
“receiving the difference data structure and
the first and second control programs and
generating a plurality of comparison scenarios
to provide a plurality of comparison set views;
determining an optimal display set view from
the plurality of comparison set views by
maximizing individual instruction matches
between the first and second control programs”
Structure:
Indefinite

Dkt. No. 58, Ex. A at 12-13; Dkt. No. 63, Ex. B at 16-18; Dkt. No. 71, Ex. A at 35-39.
Shortly before the start of the August 24, 2016 hearing, the Court provided the parties
with the following preliminary constructions:
Term

“a comparison module that
receives the difference data
structure and the first and
second control programs
and generates a plurality of

Preliminary Construction

35 U.S.C. § 112, ¶ 6 applies.
Function:
“receiving the difference data structure and the first and
second control programs and generating a plurality of comparison

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comparison scenarios to
provide a plurality of
comparison set views, the
comparison module
employing a decision model
to determine the optimal
display set view from the
plurality of comparison set
views by maximizing
individual instruction
matches between the first
and second control
programs”

scenarios to provide a plurality of comparison set views and
employing a decision model to determine the optimal display set
view from the plurality of comparison set views by maximizing
individual instruction matches between the first and second
control programs”
Structure:
“comparison component 42 configured to perform the
algorithm set forth in the ’366 Patent at 5:30-40, or comparison
component 62 configured to perform the algorithm set forth in the
’366 Patent at 6:54-64, or compare utility configured to perform
the algorithm set forth in the ’366 Patent at 10:42-46; and
equivalents thereof”

(’366 Pat., Cl. 1)
“a comparison module that
receives the difference data
structure and the first and
second control programs
and generates a plurality of
comparison scenarios to
provide a plurality of
comparison set views; a
decision model that
determines an optimal
display set view from the
plurality of comparison set
views by maximizing
individual instruction
matches between the first
and second control
programs”
(’366 Pat., Cl. 9)

35 U.S.C. § 112, ¶ 6 applies.
Function:
“receiving the difference data structure and the first and
second control programs and generating a plurality of comparison
scenarios to provide a plurality of comparison set views”
Structure:
“comparison component 42 configured to perform the
algorithm set forth in the ’366 Patent at 5:30-40, or comparison
component 62 configured to perform the algorithm set forth in the
’366 Patent at 6:54-64, or compare utility configured to perform
the algorithm set forth in the ’366 Patent at 10:42-44; and
equivalents thereof”
“a decision model that determines an optimal display set view
from the plurality of comparison set views by maximizing
individual instruction matches between the first and second
control programs”:
Plain meaning (35 U.S.C. § 112, ¶ 6 does not apply)

(1) The Parties’ Positions
Defendant argues that “each term recites only function, without structure.” Dkt. No. 67
at 26. Also, Defendant submits, “the ‘366 Patent does not disclose adequate corresponding
structure, material, or acts for performing all of the recited functions.” Id.

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Plaintiff replies that the structure is “the algorithm performed by a viewing system (Fig 3,
5:30-40) configured to achieve the claimed function(s) and equivalents.” Dkt. No. 68 at 9.
(2) Analysis
As a threshold matter, the second of these disputed terms submitted by the parties
includes a distinct disputed term, namely a “decision model,” which the Court construes
separately herein.
Legal principles regarding 35 U.S.C. § 112, ¶ 6 are discussed above as to other disputed
terms.
Here, two of these disputed terms each recite a “comparison module” that performs
particular functions, and Williamson found that “module” is a “nonce” word that generally does
not connote structure. 792 F.3d at 1350. Further, although “the presence of modifiers can
change the meaning of ‘module,’” no such modifiers are apparent here. Id. at 1351. The Court
therefore finds that the “comparison module” terms presented here are means-plus-function
terms governed by 35 U.S.C. § 112, ¶ 6.
As to the claimed function for the “comparison module” terms, the differences between
the parties’ proposals appear to be stylistic rather than substantive. The Court adopts Plaintiff’s
proposals, which more closely follow the language that appears in the disputed terms themselves.
As to the corresponding structure for the “comparison module” terms, Plaintiff has cited
“exemplary related structures disclosed in the specification.” A patent may disclose multiple
“alternative structures for performing the claimed function,” and the Court may identify those
alternatives rather than attempt to formulate a single claim interpretation to cover multiple
alternatives. Ishida Co., Ltd. v. Taylor, 221 F.3d 1310, 1316 (Fed. Cir. 2000). On balance, the
proper corresponding structure is “comparison component 42,” “comparison component 62,” or

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“compare utility” configured to perform the algorithms set forth in the specification. See ’366
Patent at 5:30-40, 6:54-66 & 10:42-46; see, e.g., Media Rights, 800 F.3d at 1374.
Finally, Defendant has not demonstrated that “decision model” is a nonce term or that
this term otherwise fails to connote structure. Alternatively and in addition, “a decision model
that determines an optimal display set view from the plurality of comparison set views by
maximizing individual instruction matches between the first and second control programs” is not
a means-plus-function term because the term itself sets forth an algorithm. See Typhoon Touch,
659 F.3d at 1385 (“the amount of detail that must be included in the specification depends on the
subject matter that is described and its role in the invention as a whole, in view of the existing
knowledge in the field of the invention”) (citation and internal quotation marks omitted). The
Court thus hereby expressly rejects Defendant’s argument that this is a means-plus-function
term. No further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2
Micro, 521 F.3d at 1362; Finjan, 626 F.3d at 1207; ActiveVideo, 694 F.3d at 1326; Summit 6,
802 F.3d at 1291.
The Court therefore hereby construes the disputed terms as set forth in the following
chart:

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Term

Construction

“a comparison module that receives the
difference data structure and the first and
second control programs and generates a
plurality of comparison scenarios to provide
a plurality of comparison set views, the
comparison module employing a decision
model to determine the optimal display set
view from the plurality of comparison set
views by maximizing individual instruction
matches between the first and second
control programs”

35 U.S.C. § 112, ¶ 6 applies.
Function:
“receiving the difference data structure
and the first and second control programs
and generating a plurality of comparison
scenarios to provide a plurality of
comparison set views and employing a
decision model to determine the optimal
display set view from the plurality of
comparison set views by maximizing
individual instruction matches between the
first and second control programs”
Structure:
“comparison component 42 configured
to perform the algorithm set forth in the
’366 Patent at 5:30-40, or comparison
component 62 configured to perform the
algorithm set forth in the ’366 Patent at
6:54-64, or compare utility configured to
perform the algorithm set forth in the ’366
Patent at 10:42-46; and equivalents thereof”

“a comparison module that receives the
difference data structure and the first and
second control programs and generates a
plurality of comparison scenarios to provide
a plurality of comparison set views”

35 U.S.C. § 112, ¶ 6 applies.
Function:
“receiving the difference data structure
and the first and second control programs
and generating a plurality of comparison
scenarios to provide a plurality of
comparison set views”
Structure:
“comparison component 42 configured
to perform the algorithm set forth in the
’366 Patent at 5:30-40, or comparison
component 62 configured to perform the
algorithm set forth in the ’366 Patent at
6:54-64, or compare utility configured to
perform the algorithm set forth in the ’366
Patent at 10:42-44; and equivalents thereof”

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35 U.S.C. § 112, ¶ 6 does not apply.

“a decision model that determines an
optimal display set view from the plurality
of comparison set views by maximizing
individual instruction matches between the
first and second control programs”

Plain meaning

HH. “a viewing system that accepts the first and second data sets and provides a graphical
view of the first and second control programs in a single view based on the first and second
binary data sets”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

This claim element is not governed by
35 U.S.C. § 112 ¶ 6 and should be given its
plain and ordinary meaning.

This term is governed by 35 U.S.C. § 112 ¶ 6.

Alternatively, the function is “accepting the
first and second data sets and providing a
graphical view of the first and second control
programs in a single view based on the first
and second binary data sets” and exemplary
related structures disclosed in the specification
include:
computer display screen, computer display
(‘366 Patent: 1:64-66; 3:64-4:2)
a single frame window (‘366 Patent: 3:4554; 4:2-9)
viewing system 14 (‘366 Patent: 14:27-49)
display system 16, CRT (‘366 Patent: 4:4959; Figs 2 and 3)
viewing system 60, viewing component 66
(‘366 Patent: 6:50-7:4; Fig. 5)
input/output system 70 (‘366 Patent: 7:4-7)
frame 100, frame window 100 (‘366
Patent: 7:48-8:41; Figs. 7-9)
monitor 247 (‘366 Patent: 9:28-32; Fig. 10)
compare utility (‘366 Patent: 10:52-54)
computer 220, CRT (‘366 Patent: 9:6110:16; 10:52-54)

Function:
“accepting the first and second data sets
and providing a graphical view of the first and
second control programs in a single view based
on the first and second binary data sets”
Structure:
Indefinite

Dkt. No. 58, Ex. A at 14-15; Dkt. No. 63, Ex. B at 19. The parties submit that this term appears
in Claim 1 of the ’366 Patent. Dkt. No. 58, Ex. A at 14-15.

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Defendant “hereby withdraws its proposed construction[] for th[is] . . . disputed term and
adopts [Plaintiff’s] proposed construction[].” Dkt. No. 67, Ex. B at 1; see Dkt. No. 71, Ex. A
at 42-44. The Court therefore sets forth the parties’ now-agreed construction in Appendix A to
this Claim Construction Memorandum and Order.
II. “a viewing system that accepts the optimal display set view and provides a graphical
view of the first and second control programs in an adjacent configuration”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

This claim element is not governed by 35
U.S.C. § 112 ¶ 6 and should be given its plain
and ordinary meaning.

This term is governed by 35 U.S.C. § 112 ¶ 6.

Alternatively, the function is “accepting the
optimal display set view and providing a
graphical view of the first and second control
programs in an adjacent configuration” and
exemplary related structures disclosed in the
specification include:
computer display screen, computer display
(‘366 Patent: 1:64-66; 3:64-4:2)
a single frame window (‘366 Patent: 3:4554; 4:2-9)
viewing system 14 (‘366 Patent: 14:27-49)
display system 16, CRT (‘366 Patent: 4:4959; Figs 2 and 3)
viewing system 60, viewing component 66
(‘366 Patent: 6:50-7:4; Fig. 5)
input/output system 70 (‘366 Patent: 7:4-7)
frame 100, frame window 100 (‘366
Patent: 7:48-8:41; Figs. 7-9)
monitor 247 (‘366 Patent: 9:28-32; Fig. 10)
compare utility (‘366 Patent: 10:52-54)
computer 220, CRT (‘366 Patent: 9:6110:16; 10:52-54)

Function:
“accepting the optimal display set view and
providing a graphical view of the first and
second control programs in an adjacent
configuration”
Structure:
Indefinite

Dkt. No. 58, Ex. A at 15; Dkt. No. 63, Ex. B at 20. The parties submit that this term appears in
Claim 9 of the ’366 Patent. Dkt. No. 58, Ex. A at 15.

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Defendant “hereby withdraws its proposed construction[] for th[is] . . . disputed term and
adopts [Plaintiff’s] proposed construction[].” Dkt. No. 67, Ex. B at 1; see Dkt. No. 71, Ex. A
at 44-45. The Court therefore sets forth the parties’ now-agreed construction in Appendix A to
this Claim Construction Memorandum and Order.
JJ. “converting the first and second ladder logic control program into a first and second
data set representing individual rungs of the first and second ladder logic control
program,” “determining differences between the first and the second ladder logic control
programs and providing a difference data structure representing the differences between
the first and second ladder logic control program,” and “generating a plurality of
comparison scenarios based on the differences to provide a plurality of comparison set
views and selecting an optimal display set view from the plurality of comparison set views
by maximizing individual rung matches between the first and second ladder logic control
programs”
“converting the first and second ladder logic control program into a first and second data
set representing individual rungs of the first and second ladder logic control program”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

This claim element is not governed by
35 U.S.C. § 112 ¶ 6.

This term is governed by 35 U.S.C. § 112 ¶ 6.

Plain and ordinary meaning.

Function:
“converting the first and second ladder
logic control program into a first and second
data set representing individual rungs of the
first and second ladder logic control program”
Structure:
Indefinite

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“determining differences between the first and the second ladder logic control programs
and providing a difference data structure representing the differences between the first and
second ladder logic control program”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

This claim element is not governed by
35 U.S.C. § 112 ¶ 6.

This term is governed by 35 U.S.C. § 112 ¶ 6.

Plain and ordinary meaning.

Function:
“determining differences between the first
and the second ladder logic control programs
and providing a difference data structure
representing the differences between the first
and second ladder logic control program”
Structure:
Indefinite

“generating a plurality of comparison scenarios based on the differences to provide a
plurality of comparison set views and selecting an optimal display set view from the
plurality of comparison set views by maximizing individual rung matches between the first
and second ladder logic control programs”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

This claim element is not governed by
35 U.S.C. § 112 ¶ 6.

This term is governed by 35 U.S.C. § 112 ¶ 6.

Plain and ordinary meaning.

Function:
“generating a plurality of comparison
scenarios based on the differences to provide a
plurality of comparison set views and selecting
an optimal display set view from the plurality
of comparison set views by maximizing
individual rung matches between the first and
second ladder logic control programs”
Structure:
Indefinite

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Dkt. No. 58, Ex. A at 16-17; Dkt. No. 63, Ex. B at 21-23; Dkt. No. 71, Ex. A at 48-50. The
parties submit that these terms appear in Claim 15 of the ’366 Patent. Dkt. No. 58, Ex. A
at 16-17.
Shortly before the start of the August 24, 2016 hearing, the Court provided the parties
with the following preliminary construction: “35 U.S.C. § 112, ¶ 6 does not apply. Plain
m[eanin]g.”
Defendant argues that “[t]he rebuttable presumption against the above three claim terms
not being in step-plus-function format is overcome, because the limitations contain no act for
performing the recited claim functions.” Dkt. No. 67 at 26. In other words, Defendant argues,
“those elements recite steps for what is accomplished in the claim, but not how it is
accomplished, and 35 U.S.C. §112 ¶6 applies to each of the terms.” Id. at 27.
The Court of Appeals for the Federal Circuit has stated: “Where the claim drafter has not
signaled his intent to invoke § 112, paragraph 6 by using the ‘step[s] for’ language, we are
unwilling to resort to that provision to constrain the scope of coverage of a claim limitation
without a showing that the limitation contains nothing that can be construed as an act.” Masco
Corp. v. U.S., 303 F.3d 1316, 1327 (Fed. Cir. 2002).
Here, the disputed terms set forth acts and also set forth limitations as to how such acts
must be performed. For example, the “converting” must be to data “representing” rungs of
ladder logic control programs, the “determining” must compare ladder logic control programs,
and the “generating” must be based on certain differences and must provide comparison set
views.
The Court therefore hereby expressly rejects Defendant’s argument that the disputed
terms are governed by 35 U.S.C. § 112 ¶ 6. No further construction is necessary. See U.S.

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Surgical, 103 F.3d at 1568; see also O2 Micro, 521 F.3d at 1362; Finjan, 626 F.3d at 1207;
ActiveVideo, 694 F.3d at 1326; Summit 6, 802 F.3d at 1291.
The Court accordingly hereby construes the disputed terms as set forth in the following
chart:
Term

Construction

“converting the first and second ladder logic 35 U.S.C. § 112, ¶ 6 does not apply.
control program into a first and second data
set representing individual rungs of the first Plain meaning
and second ladder logic control program”
“determining differences between the first
and the second ladder logic control
programs and providing a difference data
structure representing the differences
between the first and second ladder logic
control program”

35 U.S.C. § 112, ¶ 6 does not apply.

“generating a plurality of comparison
scenarios based on the differences to
provide a plurality of comparison set views
and selecting an optimal display set view
from the plurality of comparison set views
by maximizing individual rung matches
between the first and second ladder logic
control programs”

35 U.S.C. § 112, ¶ 6 does not apply.

Plain meaning

Plain meaning

VI. CONSTRUCTION OF DISPUTED TERMS AS TO WHICH THE PARTIES AGREE
35 U.S.C. § 112, ¶ 6 APPLIES
Plaintiff has addressed these terms as a group, arguing that “for most of the proposed
functions . . ., Defendant proposes changing the claimed function from what is recited in the
claim to some other function with no explanation as to why the Court should deviate from the
express claim language.” Dkt. No. 63 at 26.
Defendant has addressed some of these terms individually as set forth below.

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KK. “means for monitoring the memory locations of the transfer of data to and from
electronic memory to produce a breakpoint signal when the memory location matches at
least one particular memory location indicated by the breakpoint value”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Function:
“monitoring the memory locations of the
transfer of data to and from electronic memory
to produce a breakpoint signal when the
memory location matches at least one
particular memory location indicated by the
breakpoint value”

This term is governed by 35 U.S.C. § 112 ¶ 6.

Exemplary Structures:
a circuit, circuitry (‘409 Patent; 2:57-64;
3:12-16)
breakpoint logic circuitry 260 (‘409 Patent:
12:27-34)
comparator 263 (‘409 Patent: 12:39-58)
condition registers 264-268 (‘409 Patent:
12:52-14:9)
secondary bus 254 (‘409 Patent: 12:27-34)
a software interrupt routine (‘409 Patent; 2:6567)

Function:
“means for monitoring the memory
locations of the transfer of data to and from
electronic memory to produce a breakpoint
signal when the memory location matches at
least one particular memory location indicated
by the breakpoint value”
Structure:
Indefinite

Dkt. No. 58, Ex. A at 2; Dkt. No. 63, Ex. B at 2-3; Dkt. No. 67 at 27; Dkt. No. 71, Ex. A at 2-4.
The parties submit that this term appears in Claim 1 of the ’409 Patent. Dkt. No. 58, Ex. A at 2.
Shortly before the start of the August 24, 2016 hearing, the Court provided the parties
with the following preliminary construction: “Function: ‘monitoring the memory locations of the
transfer of data to and from electronic memory to produce a breakpoint signal when the memory
location matches at least one particular memory location indicated by the breakpoint value,’” and
“Structure: ‘comparator 263 (’409 Patent 12:39-58) and equivalents thereof.’”
The parties agree as to the claimed function. As to the corresponding structure,
Defendant argues that “[Plaintiff’s] citation to multiple exemplary structures[] confuses the
bounds of the claim term.” Dkt. No. 67 at 27. Plaintiff replies that the structure is “the

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algorithm by which the comparator (12:39-58) and condition register (12:52-58), performs
(12:59-14:9) the claimed function and equivalents. In addition, comparators were a fundamental
and generic programming concept well known to those skilled in the art at the time.” Dkt.
No. 68 at 8-9 (citing Blue Spike, LLC v. Tex. Instruments, Inc., No. 6:12-CV-499, 2014 WL
5299320, at *21-*22 (E.D. Tex. Oct. 16, 2014). On balance, the proper corresponding structure
is “comparator 263.” See ’409 Patent at 12:39-58.
The Court therefore hereby construes the disputed term as set forth in the following chart:
Term

Construction

“means for monitoring the memory
locations of the transfer of data to and from
electronic memory to produce a breakpoint
signal when the memory location matches at
least one particular memory location
indicated by the breakpoint value”

35 U.S.C. § 112, ¶ 6 applies.
Function:
“monitoring the memory locations of the
transfer of data to and from electronic
memory to produce a breakpoint signal
when the memory location matches at least
one particular memory location indicated by
the breakpoint value”
Structure:
“comparator 263 (’409 Patent: 12:3958); and equivalents thereof”

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LL. “means for receiving a first and a second control program and converting the first and
second control program into a first and second binary data set representing individual
instruction of the first and second control program”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Function:
“receiving a first and a second control
program and converting the first and second
control program into a first and second binary
data set representing individual instruction of
the first and second control program”

This term is governed by 35 U.S.C. § 112 ¶ 6.

Exemplary structures:
PC software (‘366 Patent: 1:67-2:2)
conversion system 20, converter 22; first
converter and second converter (‘366 Patent:
Fig. 2; 3:6-8; 4:60-5:22)
conversion system 52 (‘366 Patent: 5:676:7)
compare utility (‘366 Patent: 10:35-37)
computer 220 (‘366 Patent: 9:61-10:16;
10:35-37)

Function:
“receiving a first and a second control
program and converting the first and second
control program into a first and second binary
data set representing individual instruction of
the first and second control program”
Structure:
Indefinite

Dkt. No. 58, Ex. A at 11; Dkt. No. 63, Ex. B at 14; Dkt. No. 71, Ex. A at 29-31. The parties
submit that this term appears in Claim 20 of the ’366 Patent. Dkt. No. 58, Ex. A at 11.
Shortly before the start of the August 24, 2016 hearing, the Court provided the parties
with the following preliminary construction: “Function: ‘receiving a first and a second control
program and converting the first and second control program into a first and second binary data
set representing individual instruction of the first and second control program,’” and “Structure:
‘converter 22; and equivalents thereof.’”
The parties agree as to the claimed function. Plaintiff submits that the structure is “the
algorithm performed by a converter (Fig. 2 and corresponding written description) configured to
receive control programs (Fig. 2 and 4:60-64) and convert them into binary data sets (Fig. 2 and

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4:64-5:3) to achieve the claimed function and equivalents.” Dkt. No. 68 at 9. On balance, the
proper corresponding structure is “converter 22.” ’366 Patent at 4:63-5:1.
The Court therefore hereby construes the disputed term as set forth in the following chart:
Construction

Term
“means for receiving a first and a second
control program and converting the first
and second control program into a first and
second binary data set representing
individual instruction of the first and second
control program”

35 U.S.C. § 112, ¶ 6 applies.
Function:
“receiving a first and a second control
program and converting the first and
second control program into a first and
second binary data set representing
individual instruction of the first and second
control program”
Structure:
“converter 22 (’366 Patent: 4:63-5:1);
and equivalents thereof”

MM. “means for determining differences between the first and the second binary data set
and providing a difference data structure representing the differences between the first and
second control programs”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Function:
“determining differences between the first
and the second binary data set and providing a
difference data structure representing the
differences between the first and second
control programs”

This term is governed by 35 U.S.C. § 112 ¶ 6.

Exemplary structures:
difference module 28 (‘366 Patent: 5:1-22)
comparison utility (‘366 Patent: 10:37-42)
computer 220 (‘366 Patent: 9:61-10:16;
10:37-42)

Function:
“determining differences between the first
and the second binary data set and providing a
difference data structure representing the
differences between the first and second
control programs”
Structure:
Indefinite

Dkt. No. 58, Ex. A at 12; Dkt. No. 63, Ex. B at 16; Dkt. No. 71, Ex. A at 34-35. The parties
submit that this term appears in Claim 20 of the ’366 Patent. Dkt. No. 58, Ex. A at 12.

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Shortly before the start of the August 24, 2016 hearing, the Court provided the parties
with the following preliminary construction: “Function: ‘determining differences between the
first and the second binary data set and providing a difference data structure representing the
differences between the first and second control programs,’” and “Structure: ‘difference module
28 configured to perform the algorithm set forth in the ’366 Patent at 5:1-22, or comparison
utility configured to perform the algorithm set forth in the ’366 Patent at 10:37-42; and
equivalents thereof.’”
The parties agree as to the claimed function. Plaintiff submits that the structure is “the
algorithm performed by a difference module (Fig. 2, 5:1-13) or comparison utility (10:37-42)
configured to achieve the claimed function and equivalents.” Dkt. No. 68 at 9. On balance, the
proper corresponding structure is “difference module 28” or “comparison utility” configured to
perform the algorithms set forth in the specification. ’366 Patent at 5:1-13 & 10:37-42; see, e.g.,
Media Rights, 800 F.3d at 1374 (“Because these functions are computer-implemented functions,
. . . the structure disclosed in the specification must be more than a general purpose computer or
microprocessor. Instead, we require that the specification disclose an algorithm for performing
the claimed function.”) (citations omitted).
At the August 24, 2016 hearing, Defendant argued that the specification merely restates
the claimed function. Of particular note, however, the specification explains that differences
identified may be “inserted rungs, deleted rungs, modified rungs and moved rungs.” ’366 Patent
at 5:7-9.
The Court therefore hereby construes the disputed term as set forth in the following chart:

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Term

Construction

“means for determining differences between
the first and the second binary data set and
providing a difference data structure
representing the differences between the
first and second control programs”

35 U.S.C. § 112, ¶ 6 applies.
Function:
“determining differences between the
first and the second binary data set and
providing a difference data structure
representing the differences between the
first and second control programs”
Structure:
“difference module 28 configured to
perform the algorithm set forth in the ’366
Patent at 5:1-22, or comparison utility
configured to perform the algorithm set
forth in the ’366 Patent at 10:37-42; and
equivalents thereof”

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NN. “means for receiving the difference data structure and the first and second control
programs and generating a plurality of comparison scenarios to provide a plurality of
comparison set views; means for determining an optimal display set view from the plurality
of comparison set views by maximizing individual instruction matches between the first
and second control programs”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Function:
“receiving the difference data structure and
the first and second control programs and
generating a plurality of comparison scenarios
to provide a plurality of comparison set views”

This term is governed by 35 U.S.C. § 112 ¶ 6.

Exemplary structure:
viewing system 40, comparison component
42 (‘366 Patent: 5:30-40)
viewing system 60, comparison component
62 (‘366 Patent: 6:54-64[)]
compare utility (‘366 Patent: 10:42-46)
computer 220 (‘366 Patent: 9:61-10:16;
10:42-46)

Function:
“receiving the difference data structure and
the first and second control programs and
generating a plurality of comparison scenarios
to provide a plurality of comparison set views;
means for determining an optimal display set
view from the plurality of comparison set
views by maximizing individual instruction
matches between the first and second control
programs”
Structure:
Indefinite

Function:
“determining an optimal display set view
from the plurality of comparison set views by
maximizing individual instruction matches
between the first and second control programs”
Exemplary structures:
viewing system 40, comparison component
42 (‘366 Patent: 5:30-40)
viewing system 60, comparison component
62 (‘366 Patent: 6:54-64[)]
compare utility (‘366 Patent: 10:42-46)
computer 220 (‘366 Patent: 9:61-10:16;
10:42-46)
Dkt. No. 58, Ex. A at 14; Dkt. No. 63, Ex. B at 18-19; Dkt. No. 71, Ex. A at 39-42. The parties
submit that these terms appear in Claim 20 of the ’366 Patent. Dkt. No. 58, Ex. A at 14.
Shortly before the start of the August 24, 2016 hearing, the Court provided the parties
with the following preliminary constructions:

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Term

Preliminary Construction

“means for receiving the difference data
structure and the first and second control
programs and generating a plurality of
comparison scenarios to provide a plurality of
comparison set views”

Function:
“receiving the difference data structure and
the first and second control programs and
generating a plurality of comparison scenarios
to provide a plurality of comparison set views”

(’366 Pat., Cl. 20)

Structure:
“comparison component 42 configured to
perform the algorithm set forth in the ’366
Patent at 5:30-40, or comparison component 62
configured to perform the algorithm set forth in
the ’366 Patent at 6:54-64, or compare utility
configured to perform the algorithm set forth in
the ’366 Patent at 10:42-44; and equivalents
thereof”

“means for determining an optimal display set
view from the plurality of comparison set
views by maximizing individual instruction
matches between the first and second control
programs”

Function:
“determining an optimal display set view
from the plurality of comparison set views by
maximizing individual instruction matches
between the first and second control programs”

(’366 Pat., Cl. 20)

Structure:
“decision model 44 configured to perform
the algorithm set forth in the ’366 Patent at
5:34-42, or decision model 64 configured to
perform the algorithm set forth in the ’366
Patent at 6:58-64, or decision model
configured to perform the algorithm set forth in
the ’366 Patent at 10:44-46; and equivalents
thereof”

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The parties agree as to the claimed function. On balance, the Court hereby construes the
disputed terms as set forth in the following chart (see, e.g., Media Rights, 800 F.3d at 1374):
Construction

Term
“means for receiving the difference data
structure and the first and second control
programs and generating a plurality of
comparison scenarios to provide a plurality
of comparison set views”

35 U.S.C. § 112, ¶ 6 applies.
Function:
“receiving the difference data structure
and the first and second control programs
and generating a plurality of comparison
scenarios to provide a plurality of
comparison set views”
Structure:
“comparison component 42 configured
to perform the algorithm set forth in the
’366 Patent at 5:30-40, or comparison
component 62 configured to perform the
algorithm set forth in the ’366 Patent at
6:54-64, or compare utility configured to
perform the algorithm set forth in the ’366
Patent at 10:42-44; and equivalents thereof”

“means for determining an optimal display
35 U.S.C. § 112, ¶ 6 applies.
set view from the plurality of comparison set
Function:
views by maximizing individual instruction
matches between the first and second
“determining an optimal display set view
control programs”
from the plurality of comparison set views
by maximizing individual instruction
matches between the first and second
control programs”
Structure:
“decision model 44 configured to
perform the algorithm set forth in the ’366
Patent at 5:34-42, or decision model 64
configured to perform the algorithm set
forth in the ’366 Patent at 6:58-64, or
decision model configured to perform the
algorithm set forth in the ’366 Patent at
10:44-46; and equivalents thereof”

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OO. “means for accepting the optimal display set view and providing a graphical view of
the first and second control programs in an adjacent configuration”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Function:
“accepting the optimal display set view and
providing a graphical view of the first and
second control programs in an adjacent
configuration”

This term is governed by 35 U.S.C. § 112 ¶ 6.

Exemplary structures:
computer display screen, computer display
(‘366 Patent: 1:64-66; 3:64-4:2)
a single frame window (‘366 Patent: 3:4554; 4:2-9)
viewing system 14 (‘366 Patent: 14:27-49)
display system 16, CRT (‘366 Patent: 4:4959; Figs 2 and 3)
viewing system 60, viewing component 66
(‘366 Patent: 6:50-7:4; Fig. 5)
input/output system 70 (‘366 Patent: 7:4-7)
frame 100, frame window 100 (‘366
Patent: 7:48-8:41; Figs. 7-9)
monitor 247 (‘366 Patent: 9:28-32; Fig. 10)
compare utility (‘366 Patent: 10:52-54)
computer 220, CRT (‘366 Patent: 9:6110:16; 10:52-54)

Function:
“accepting the optimal display set view and
providing a graphical view of the first and
second control programs in an adjacent
configuration”
Structure:
Indefinite

Dkt. No. 58, Ex. A at 15-16; Dkt. No. 63, Ex. B at 20-21. The parties submit that this term
appears in Claim 20 of the ’366 Patent. Dkt. No. 58, Ex. A at 15-16.
Defendant “hereby withdraws its proposed construction[] for th[is] . . . disputed term and
adopts [Plaintiff’s] proposed construction[].” Dkt. No. 67, Ex. B at 1; see Dkt. No. 71, Ex. A
at 46-47. The Court therefore sets forth the parties’ now-agreed construction in Appendix A to
this Claim Construction Memorandum and Order.

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PP. “means for accepting data from an industrial control component”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Function:
“accepting data from an industrial control
component”

This term is governed by 35 U.S.C. § 112 ¶ 6.
Function:
“receiving data from an industrial control
component”

Exemplary structures:
packaging component 110, which may be a
Structure:
hardware or software interface (‘585 Patent:
6:1-20)
Indefinite
abstraction component 210 (‘585 Patent:
7:28-30; 6:14-20)
industrial controller 410 (‘585 Patent: 10:814)
data object component 510 (10:43-45;
6:14-20)
data object library 610 (‘585 Patent: 11:1418)
encapsulation component 730 (‘585 Patent:
11:55-60; 6:14-20)
various wired and/or wireless media (‘585
Patent: 12:23-48)
network interface 1148 or communication
connection 1150 (‘585 Patent: 15:16-38)
communication framework 1250 (‘585
Patent: 15:47-57)

Dkt. No. 58, Ex. A at 18; Dkt. No. 63, Ex. B at 24. The parties submit that this term appears in
Claim 25 of the ’585 Patent. Dkt. No. 58, Ex. A at 18.
Defendant “hereby withdraws its proposed construction[] for th[is] . . . disputed term and
adopts [Plaintiff’s] proposed construction[].” Dkt. No. 67, Ex. B at 1; see Dkt. No. 71, Ex. A
at 50-52. The Court therefore sets forth the parties’ now-agreed construction in Appendix A to
this Claim Construction Memorandum and Order.

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QQ. “means for determining the properties and methods that are exposed to a particular
data consuming device” and “means for abstracting a property and a method of the data”
“means for determining the properties and methods that are exposed to a particular data
consuming device”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Function:
“determining the properties and methods
that are exposed to a particular data consuming
device”

This term is governed by 35 U.S.C. § 112 ¶ 6.

Exemplary structure:
abstraction component 210 (‘585 Patent:
7:36-46; 6:14-20)

Function:
“[Defendant] adopts [Plaintiff’s] proposed
function, only, for this term.”
Structure:
Indefinite

“means for abstracting a property and a method of the data”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Function:
“abstracting a property and a method of the
data”

This term is governed by 35 U.S.C. § 112 ¶ 6.

Exemplary structures:
abstraction component 210 (‘585 Patent:
7:25-46; 6:14-20)
data object component 510 (‘585 Patent:
10:43-45; 6:14-20)

Function:
“[Defendant] adopts [Plaintiff’s] proposed
function, only, for this term.”
Structure:
Indefinite

Dkt. No. 58, Ex. A at 18-19; Dkt. No. 63, Ex. B at 24-25; Dkt. No. 67 at 28 & nn.7-8; Dkt.
No. 71, Ex. A at 52-54. The parties submit that these terms appear in Claim 25 of the ’585
Patent. Dkt. No. 58, Ex. A at 18-19.
Shortly before the start of the August 24, 2016 hearing, the Court provided the parties
with the following preliminary constructions:

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Term

“means for determining the properties and
methods that are exposed to a particular data
consuming device”

Preliminary Construction

Function:
“determining the properties and methods
that are exposed to a particular data consuming
device”

(’585 Pat., Cl. 25)
Structure:
“abstraction component 210 configured to
perform the algorithm set forth in the ’585
Patent at 7:25-46; and equivalents thereof”
“means for abstracting a property and a method Function:
of the data”
“abstracting a property and a method of the
data”
(’585 Pat., Cl. 25)
Structure:
“abstraction component 210 configured to
perform the algorithm set forth in the ’585
Patent at 7:25-46, or data object component
510 configured to perform the algorithm set
forth in the ’585 Patent at 10:43-45; and
equivalents thereof”

The parties agree as to the claimed function. As to the corresponding structure,
Defendant argues that “[Plaintiff’s] purported ‘exemplary structure(s)’ reveal nothing more than
purely functional language . . . .” Dkt. No. 67 at 28.
Plaintiff replies that the structure for the “means for determining . . .” is “the algorithm
performed by an abstraction component (7:36-46) configured to achieve the claimed function
and equivalents.” Dkt. No. 68 at 10. Plaintiff also submits that the structure for the “means for
abstracting” is “the algorithm performed by an abstraction component (7:25-46) configured to
achieve the claimed function and equivalents or the algorithm performed by a data object
component (10:43-45) configured to achieve the claimed function and equivalents.” Dkt. No. 68
at 10.

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On balance, the proper corresponding structure includes “abstraction component 210”
configured to perform the algorithm set forth in the ’585 Patent at 7:25-46. See, e.g., Media
Rights, 800 F.3d at 1374. For the “means for abstracting a property and a method of the data,”
corresponding structure also includes “data object component 510” configured to perform the
algorithm set forth in the ’585 Patent at 10:43-45. See id.
The Court therefore hereby construes the disputed term as set forth in the following chart:
Term
“means for determining the properties and
methods that are exposed to a particular
data consuming device”

Construction
35 U.S.C. § 112, ¶ 6 applies.
Function:
“determining the properties and
methods that are exposed to a particular
data consuming device”
Structure:
“abstraction component 210 configured
to perform the algorithm set forth in the
’585 Patent at 7:25-46; and equivalents
thereof”

“means for abstracting a property and a
method of the data”

35 U.S.C. § 112, ¶ 6 applies.
Function:
“abstracting a property and a method of
the data”
Structure:
“abstraction component 210 configured
to perform the algorithm set forth in the
’585 Patent at 7:25-46, or data object
component 510 configured to perform the
algorithm set forth in the ’585 Patent at
10:43-45; and equivalents thereof”

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RR. “means for encapsulating”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Function:
“encapsulating”

This term is governed by 35 U.S.C. § 112 ¶ 6.

Exemplary structures:
packaging component 110 (‘585 Patent:
5:60-64; 6:14-20)
encapsulation component 220 (‘585 Patent:
8:10-16; 6:14-20)
encapsulation component 310 (‘585 Patent:
9:23-24; 6:14-20)
data object component 510 (‘585 Patent:
10:43-45; 6:14-20)
encapsulation component 730 (‘585 Patent:
11:55-60; 6:14-20)

Function:
“defining the manner in which a data object
can interface to various data consumers”
Structure:
Indefinite

Dkt. No. 58, Ex. A at 19; Dkt. No. 63, Ex. B at 25-26. The parties submit that this term appears
in Claim 25 of the ’585 Patent. Dkt. No. 58, Ex. A at 19.
Defendant “hereby withdraws its proposed construction[] for th[is] . . . disputed term and
adopts [Plaintiff’s] proposed construction[].” Dkt. No. 67, Ex. B at 1; see Dkt. No. 71, Ex. A
at 54-55. The Court therefore sets forth the parties’ now-agreed construction in Appendix A to
this Claim Construction Memorandum and Order.
SS. “means for providing such properties and methods to a data consumer”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Function:
“providing such properties and methods to
a data consumer”

This term is governed by 35 U.S.C. § 112 ¶ 6.

Exemplary structures:
various wired and/or wireless media (‘585
Patent: 12:23-48)
network interface 1148 or communication
connection 1150 (‘585 Patent: 15:16-38)
communication framework 1250 (‘585
Patent: 15:47-57)

Function:
“providing data objects to a data consumer”
Structure:
Indefinite

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Dkt. No. 58, Ex. A at 19; Dkt. No. 63, Ex. B at 26. The parties submit that this term appears in
Claim 25 of the ’585 Patent. Dkt. No. 58, Ex. A at 19.
Defendant “hereby withdraws its proposed construction[] for th[is] . . . disputed term and
adopts [Plaintiff’s] proposed construction[].” Dkt. No. 67, Ex. B at 1; see Dkt. No. 71, Ex. A
at 55-56. The Court therefore sets forth the parties’ now-agreed construction in Appendix A to
this Claim Construction Memorandum and Order.
TT. “means for connecting a client to a Web server”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Function:
“connecting a client to a Web server”

This term is governed by 35 U.S.C. § 112 ¶ 6.

Exemplary Structures:
browser 50 (‘122 Patent: 4:39-44; 5:40-47)
Internet connection 12, Internet 20 (‘122
Patent: 4:48-56; 5:40-47)

Function:
“connecting a client computer to a
webserver”
Structure:
“a network”

Dkt. No. 58, Ex. A at 21; Dkt. No. 63, Ex. B at 29. The parties submit that this term appears in
Claim 32 of the ’122 Patent. Dkt. No. 58, Ex. A at 21.
Defendant “hereby withdraws its proposed construction[] for th[is] . . . disputed term and
adopts [Plaintiff’s] proposed construction[].” Dkt. No. 67, Ex. B at 1; see Dkt. No. 71, Ex. A
at 63. The Court therefore sets forth the parties’ now-agreed construction in Appendix A to this
Claim Construction Memorandum and Order.

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UU. “means for directing communications from the client to the Web Server”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Function:
“directing communications from the client
to the Web Server”

This term is governed by 35 U.S.C. § 112 ¶ 6.

Exemplary Structures:
Web page 24 (‘122 Patent: 5:48-54)

Function:
“transmitting communications from the
client computer to the web server in a
particular manner (‘directly’)”
Structure:
Indefinite

Dkt. No. 58, Ex. A at 21-22; Dkt. No. 63, Ex. B at 29. The parties submit that this term appears
in Claim 32 of the ’122 Patent. Dkt. No. 58, Ex. A at 21-22.
Defendant “hereby withdraws its proposed construction[] for th[is] . . . disputed term and
adopts [Plaintiff’s] proposed construction[].” Dkt. No. 67, Ex. B at 1; see Dkt. No. 71, Ex. A
at 63. The Court therefore sets forth the parties’ now-agreed construction in Appendix A to this
Claim Construction Memorandum and Order.
VV. “means for creating a desired HMI”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

Function:
“creating a desired HMI”

This term is governed by 35 U.S.C. § 112 ¶ 6.

Exemplary Structures:
an HMI applet, applet program 30 (‘122
Patent: 3:50-53; Fig. 1; 7:18-30; claims 29 and
30)
server-side HMI program 37 (‘122 Patent:
5:6-12)

Function:
“constructing a desired Human Machine
Interface (‘HMI’)”
Structure:
Indefinite

Dkt. No. 58, Ex. A at 22; Dkt. No. 63, Ex. B at 29-30. The parties submit that this term appears
in Claim 33 of the ’122 Patent. Dkt. No. 58, Ex. A at 22.

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Defendant “hereby withdraws its proposed construction[] for th[is] . . . disputed term and
adopts [Plaintiff’s] proposed construction[].” Dkt. No. 67, Ex. B at 1; see Dkt. No. 71, Ex. A
at 63. The Court therefore sets forth the parties’ now-agreed construction in Appendix A to this
Claim Construction Memorandum and Order.
VII. CONSTRUCTION OF DISPUTED PREAMBLES
Plaintiff submits that generally preambles are not limiting and, even if limiting, a
preamble is not necessarily limiting in its entirety. Dkt. No. 63 at 27. More specifically,
Plaintiff argues that although the preambles of Claim 1 of the ’409 Patent and Claims 1 and 9 of
the ’124 Patent are limiting to the extent that they provided antecedent basis for later-recited
claim elements, “the disputed preambles of the ’795, ’168, ’817, and ’122 Patents describe
inventions that are completely set forth in the body of the claims” and “merely state[] a purpose
or intended use.” Dkt. No. 63 at 28-30 & 28 n.8. In its reply brief, Plaintiff also urges that
“[Defendant] has failed to show that any terms in the disputed preambles ‘provide essential
context’ or were relied upon ‘to define or refine the scope of the asserted claims.’” Dkt. No. 68
at 10 (quoting Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1359 (Fed. Cir. 2010)).
AAA. “An industrial controller operating controlled equipment according to a control
program divided into at least two tasks, the controller comprising”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

The preamble is not limiting except for “a
control program divided into at least two
tasks.”

The preamble is limiting.

Dkt. No. 58, Ex. A at 1; Dkt. No. 63, Ex. B at 1. The parties submit that this term appears in
Claim 1 of the ’409 Patent. Dkt. No. 58, Ex. A at 1.
Plaintiff argues that apart from the portion that Plaintiff agrees is limiting, “the remainder
of th[is] preamble[] simply state[s] the purpose or intended use for the invention – an industrial
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controller operating controlled equipment according to a control program.” Dkt. No. 63 at 28
(citation and internal quotation marks omitted).
Defendant responds that it “hereby withdraws its proposed construction[] for th[is] . . .
disputed term and adopts [Plaintiff’s] proposed construction[].” Dkt. No. 67, Ex. B at 1; see Dkt.
No. 71, Ex. A at 4. The Court therefore sets forth the parties’ now-agreed construction in
Appendix A to this Claim Construction Memorandum and Order.
BBB. “An industrial controller operating controlled equipment according to a control
program divided into at least two tasks each having a starting and completion point, the
controller comprising:”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

The preamble is not limiting except for “a
control program divided into at least two tasks
each having a starting and completion point.”

The preamble is limiting.

Dkt. No. 58, Ex. A at 2-3; Dkt. No. 63, Ex. B at 3-4. The parties submit that this term appears in
Claims 1 and 9 of the ’124 Patent. Dkt. No. 58, Ex. A at 2-3.
Plaintiff argues that apart from the portion that Plaintiff agrees is limiting, “the remainder
of th[is] preamble[] simply state[s] the purpose or intended use for the invention – an industrial
controller operating controlled equipment according to a control program.” Dkt. No. 63 at 28
(citation and internal quotation marks omitted).
Defendant responds that it “hereby withdraws its proposed construction[] for th[is] . . .
disputed term and adopts [Plaintiff’s] proposed construction[].” Dkt. No. 67, Ex. B at 1; see Dkt.
No. 71, Ex. A at 4 & 6. The Court therefore sets forth the parties’ now-agreed construction in
Appendix A to this Claim Construction Memorandum and Order.

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CCC. “A method of displaying the real-time status of input/output data exchanged
between a multi-tasking industrial controller executing a control program and a control
process, the method comprising the steps of:”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

The preamble is not limiting.

The preamble is limiting.

Dkt. No. 58, Ex. A at 4-5; Dkt. No. 63, Ex. B at 5-6; Dkt. No. 71, Ex. A at 11. The parties
submit that this term appears in Claim 1 of the ’795 Patent. Dkt. No. 58, Ex. A at 4-5.
Shortly before the start of the August 24, 2016 hearing, the Court provided the parties
with the following preliminary construction: “This preamble is limiting.”
Defendant argues that this preamble is limiting because it provides antecedent basis. Dkt.
No. 67 at 29. At the August 24, 2016 hearing, Plaintiff conceded that the preamble is limiting to
the extent it provides antecedent basis, but Plaintiff maintained that “displaying the real-time
status of input/output data exchanged” is a non-limiting statement of purpose that does not
provide antecedent basis for any limitation recited in the body of the claim.
Claim 1 of the ’795 Patent recites (emphasis added):
1. A method of displaying the real-time status of input/output data exchanged
between a multi-tasking industrial controller executing a control program and a
control process, the method comprising the steps of:
(a) executing the control program as first of at least two concurrent tasks
on the multi-tasking industrial controller;
(b) accepting an input from a user identifying an input/output datum
referenced by the control program;
(c) identifying a memory location in the industrial [sic, industrial
controller] holding the input/output data;
(d) generating a memory monitor program to be run as a second of at least
two concurrent tasks on the multi-tasking industrial controller, the memory
monitor program receiving the memory location identified in step (c) and
monitoring the memory location to record the time of a change in the data in the
memory location;
(e) executing the memory monitor program concurrently with the control
program; and
(f) displaying the recorded time of change.

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The above-emphasized reliance upon the preamble for antecedent basis weighs in favor
of finding the preamble limiting. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339
(Fed. Cir. 2003) (“When limitations in the body of the claim rely upon and derive antecedent
basis from the preamble, then the preamble may act as a necessary component of the claimed
invention.”). Of particular note, although Plaintiff urges that the phrase “displaying the real-time
status of input/output data exchanged” is not limiting, that phrase is related to status involving “a
multi-tasking industrial controller” and “a control program” that provide antecedent basis for
limitations set forth in the body of the claim.
On balance, the preamble as a whole is limiting. See Bell Commc’ns Research, Inc. v.
Vitalink Commc’ns Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (“[W]hen the claim drafter chooses
to use both the preamble and the body to define the subject matter of the claimed invention, the
invention so defined, and not some other, is the one the patent protects.”); see also Proveris
Scientific Corp. v. Innovasystems, Inc., 739 F.3d 1367, 1373 (Fed. Cir. 2014) (“The phrase ‘the
image data’ clearly derives antecedent basis from the ‘image data’ that is defined in greater
detail in the preamble as being ‘representative of at least one sequential set of images of a spray
plume.’”) (emphasis added).
The Court therefore finds that this preamble is limiting.
DDD. “A production object for an object-oriented programming language, said
production object being disposed in a first module, and said production object
comprising:”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

The preamble is not limiting except for “said
production object being disposed in a first
module.”

The preamble is limiting.

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Dkt. No. 58, Ex. A at 6; Dkt. No. 63, Ex. B at 7-8. The parties submit that this term appears in
Claim 1 of the ’168 Patent. Dkt. No. 58, Ex. A at 6.
Shortly before the start of the August 24, 2016 hearing, the Court provided the parties
with the following preliminary construction: “This preamble is limiting except as to the phrase
‘for an object-oriented programming language.’”
Defendant argues that this preamble is limiting because it provides antecedent basis. Dkt.
No. 67 at 29.
Claim 1 of the ’168 Patent recites (emphasis added):
1. A production object for an object-oriented programming language, said
production object being disposed in a first module, and said production object
comprising:
a plurality of services and a plurality of attributes which are adapted for
transferring an executable program from the first module to a second module over
a common network;
wherein said plurality of services include a first service that is capable of
creating a new instance of said production object to transfer the executable
program from the first module to the second module; and
wherein said plurality of services include a second service that is capable
of setting at least one of the plurality of attributes, said at least one attribute
defining a parameter pertaining to the transfer of the executable program from the
first module to the second module.
The above-emphasized reliance upon the preamble for antecedent basis weighs in favor
of finding the preamble limiting. See Eaton, 323 F.3d at 1339. Indeed, Plaintiff acknowledges
that the preamble is limiting as to the entire phrase “said production object being disposed in a
first module.” Dkt. No. 63, Ex. B at 7-8; see Proveris, 739 F.3d at 1373.
Nonetheless, the preamble phrase “for an object-oriented programming language” is a
statement of purpose or use and is not inextricably intertwined with the other preamble language
that provides antecedent basis. See TomTom Inc. v. Adolph, 790 F.3d 1315, 1323 (Fed. Cir.
2015) (“That [a] phrase in the preamble . . . provides a necessary structure for [the] claim . . .

- 102 -

does not necessarily convert the entire preamble into a limitation, particularly one that only states
the intended use of the invention.”); see also Marrin v. Griffin, 599 F.3d 1290, 1294-95 (Fed.
Cir. 2010) (“the mere fact that a structural term in the preamble is part of the claim does not
mean that the preamble’s statement of purpose or other description is also part of the claim”).
Thus, the Court finds that this preamble is limiting except as to the phrase “for an
object-oriented programming language.”
EEE. “A method for monitoring operational parameters of a plurality of networked
electrical component, the method comprising the steps of:”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

The preamble is not limiting.

The preamble is limiting.

Dkt. No. 58, Ex. A at 7; Dkt. No. 63, Ex. B at 9. The parties submit that this term appears in
Claims 21 and 27 of the ’817 Patent. Dkt. No. 58, Ex. A at 7.
In their August 12, 2016 Joint Claim Construction Chart, the parties submit that they now
agree that this preamble is not limiting. Dkt. No. 71, Ex. A at 22. The Court therefore sets forth
the parties’ now-agreed construction in Appendix A to this Claim Construction Memorandum
and Order.
FFF. “A method for monitoring operational parameters of a system of electrical
components, the method comprising the steps of:”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

The preamble is not limiting.

The preamble is limiting.

Dkt. No. 58, Ex. A at 7; Dkt. No. 63, Ex. B at 9-10. The parties submit that this term appears in
Claims 33, 34, and 35 of the ’817 Patent. Dkt. No. 58, Ex. A at 7.
In their August 12, 2016 Joint Claim Construction Chart, the parties submit that they now
agree that this preamble is not limiting. Dkt. No. 71, Ex. A at 22. The Court therefore sets forth

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the parties’ now-agreed construction in Appendix A to this Claim Construction Memorandum
and Order.
GGG. “A method of providing a uniform interface for an industrial controller
comprising:”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

The preamble is not limiting.

The preamble is limiting.

Dkt. No. 58, Ex. A at 21; Dkt. No. 63, Ex. B at 27-28; Dkt. No. 71, Ex. A at 57. The parties
submit that this term appears in Claim 1 of the ’122 Patent. Dkt. No. 58, Ex. A at 21.
Shortly before the start of the August 24, 2016 hearing, the Court provided the parties
with the following preliminary construction: “This preamble is not limiting.”
Defendant argues that this preamble is limiting because it provides antecedent basis. Dkt.
No. 67 at 29.
Claim 1 of the ’122 Patent recites (emphasis added):
1. A method of providing a uniform interface for an industrial controller
comprising:
employing a processor executing computer executable instructions
embodied on a computer readable storage medium to perform the following acts:
connecting a client to a first Web server communicating with
the industrial controller;
executing an applet program at the client to enable the client to
exchange data with the first Web server using a standard
object protocol; and
providing at least two object providers, where a first object
provider utilizes the standard object protocol to link a first
software object with the client, wherein the first software
object employs a first object protocol, wherein a second
object provider utilizes the standard object protocol to link
a second software object with the client, wherein the
second software object employs a second object protocol,
wherein the standard object protocol, first protocol, and
second protocol are distinct protocols from each other,
wherein the first object provider translates communications
comprising object oriented instructions between the
standard object protocol and the first protocol, wherein the
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second object provider translates communications between
the standard object protocol and the second protocol,
wherein at least one of the first or second software objects
communicates with one or more industrial controllers.
Although the preamble provides antecedent basis for “the industrial controller” that is
recited in the body of the claim, the preamble phrase “providing a uniform interface” is
nonetheless merely a non-limiting statement of purpose. See TomTom, 790 F.3d at 1323; see
also Marrin, 599 F.3d at 1294-95. Further, the preamble does not provide any additional detail
as to the recited “industrial controller.” See Proveris, 739 F.3d at 1373.
The Court therefore finds that this preamble is not limiting.
HHH. “A system for providing a uniform industrial controller interface comprising:”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

The preamble is not limiting.

The preamble is limiting.

Dkt. No. 58, Ex. A at 21; Dkt. No. 63, Ex. B at 28; Dkt. No. 71, Ex. A at 58-59. The parties
submit that this term appears in Claim 14 of the ’122 Patent. Dkt. No. 58, Ex. A at 21.
Shortly before the start of the August 24, 2016 hearing, the Court provided the parties
with the following preliminary construction: “This preamble is limiting.”
Defendant argues that this preamble is limiting because it provides antecedent basis. Dkt.
No. 67 at 29.
Claim 14 of the ’122 Patent recites (emphasis added):
14. A system for providing a uniform industrial controller interface comprising:
a processor;
a memory communicatively coupled to the processor, the memory having
stored therein computer-executable instructions to implement the system,
including:
a web server that provides the uniform interface;
the uniform interface further comprises at least two object
providers, wherein a first object provider utilizes a standard
object protocol to link a first software object with a client
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program, wherein the first software object employs a first
object protocol, wherein a second object provider utilizes
the standard object protocol to link a second software
object with the client program, wherein the second software
object employs a second object protocol, wherein the
standard object protocol, first protocol, and second protocol
are distinct protocols from each other, wherein the first
object provider translates communications comprising
object oriented instructions between the standard object
protocol and the first protocol, wherein the second object
provider translates communications between the standard
object protocol and the second protocol, wherein at least
one of the first or second software objects communicates
with one or more industrial controllers.
The above-emphasized reliance upon the preamble for antecedent basis weighs in favor
of finding the preamble limiting. See Eaton, 323 F.3d at 1339.
On balance, the preamble as a whole is limiting, in particular because the preamble
provides additional detail as to the “uniform industrial controller interface.” See Bell
Commc’ns, 55 F.3d at 620 (“[W]hen the claim drafter chooses to use both the preamble and the
body to define the subject matter of the claimed invention, the invention so defined, and not
some other, is the one the patent protects.”); see also Proveris, 739 F.3d at 1373 (“The phrase
‘the image data’ clearly derives antecedent basis from the ‘image data’ that is defined in greater
detail in the preamble as being ‘representative of at least one sequential set of images of a spray
plume.’”) (emphasis added).
The Court therefore finds that this preamble is limiting.
III. “A system for providing an object based interface for an industrial controller
comprising:”
Plaintiff’s Proposed Construction

Defendant’s Proposed Construction

The preamble is not limiting.

The preamble is limiting.

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Dkt. No. 58, Ex. A at 21; Dkt. No. 63, Ex. B at 28; Dkt. No. 71, Ex. A at 60. The parties submit
that this term appears in Claim 32 of the ’122 Patent. Dkt. No. 58, Ex. A at 21.
Shortly before the start of the August 24, 2016 hearing, the Court provided the parties
with the following preliminary construction: “This preamble is not limiting.”
Defendant argues that this preamble is limiting because it provides antecedent basis. Dkt.
No. 67 at 29.
Claim 32 of the ’122 Patent recites (emphasis added):
32. A system for providing an object based interface for an industrial controller
comprising:
a processor;
a memory communicatively coupled to the processor, the memory having
stored therein computer-executable instructions to implement the system,
including:
means for connecting a client to a Web server communicating
with the industrial controller; and
means for directing communications from the client to the Web
Server, wherein the communications comprise object
oriented instructions, the means for directing comprises at
least two object providers, where a first object provider
utilizes the standard object protocol to link a first software
object with the client, wherein the first software object
employs a first object protocol, wherein a second object
provider utilizes the standard object protocol to link a
second software object with the client, wherein the second
software object employs a second object protocol, wherein
the standard object protocol, first protocol, and second
protocol are distinct protocols from each other, wherein the
first object provider translates communications comprising
object oriented instructions between the standard object
protocol and the first protocol, wherein the second object
provider translates communications between the standard
object protocol and the second protocol, wherein at least
one of the first or second software objects communicates
with one or more industrial controllers.
Although the preamble provides antecedent basis for “the industrial controller” that is
recited in the body of the claim, the preamble phrase “providing an object based interface” is

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nonetheless merely a non-limiting statement of purpose or use. See TomTom, 790 F.3d at 1323;
see also Marrin, 599 F.3d at 1294-95. Further, the preamble does not provide any additional
detail as to the recited “industrial controller.” See Proveris, 739 F.3d at 1373.
The Court therefore finds that this preamble is not limiting.
VIII. CONCLUSION

.

The Court adopts the constructions set forth in this opinion for the disputed terms of the
patents-in-suit.
The parties are ordered to not refer to each other’s claim construction positions in the
presence of the jury. Likewise, in the presence of the jury, the parties are ordered to refrain from
mentioning any portion of this opinion, other than the actual definitions adopted by the Court.
The Court’s reasoning in this order binds the testimony of any witnesses, but any reference to the
claim construction proceedings is limited to informing the jury of the definitions adopted by the
Court.

SIGNED this 3rd day of January, 2012.
SIGNED this 5th day of October, 2016.

____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

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APPENDIX A
Parties’ Agreement in
Prehearing Statement

Term
“methods”

“procedures associated with
objects”

(’585 Patent, Claims 1, 17, 25)
“address monitor”

“a hardware circuit for
supervising memory access”

(’133 Patent, Claims 1, 8)
Preamble: “A method for simultaneously displaying an
executable program in a remote processor and a plurality program
edits input at a workstation, the executable program comprising a
plurality of executable program segments, the plurality of
program edits comprising new program segments and modified
program segments, the executable program segments including
corresponding executable program segments corresponding to the
modified program segments, the plurality of program edits being
selectively downloaded from the workstation to the remote
processor, the method comprising the steps of:”

The preamble is limiting.

(’711 Patent, Claim 1)
Preamble: “A method of operating an industrial controller having
a central processor executing a stored control program to
exchange data with a plurality of input/output modules distributed
over a network at physical network addresses to provide an
electrical interface at control points to a controlled process, the
method comprising the steps of:”
(’149 Patent, Claim 4)

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The preamble is limiting.

Preamble: “A method to be used with an industrial controller
which has a processor module that stores and executes a machine
language program to control a machine, the machine including at
least one axis, the axis including two or more mechanical
components wherein one component has freedom to move with
respect to the other in a reciprocal manner along a single axis,
each separate movement referred to as an axis function, each
function being part of a machine cycle, the cycle represented by a
behavior profile including means whereby functions and their
sequences are illustrated, the method for providing a machine
language program for controlling the cycle, the method
comprising the steps of:”

The preamble is limiting.

(’293 Patent, Claim 16)
Preamble: “A programming apparatus for an industrial controller
which has a processor module that stores and executes a machine
language program to control a machine, the machine including at
least one axis, each axis including two or more mechanical
components wherein one component has freedom to move with
respect to another stationary component in a reciprocal manner
along a single axis, each separate movement referred to as an axis
function, each function being part of a machine cycle, the
apparatus used to provide a machine language program for
controlling at least one cycle, the apparatus comprising:”

The preamble is limiting.

(’293 Patent, Claim 26)
“shell program”

“a program simulating the
stand-alone
computer running the
operating system to
execute the utility program”

(’174 Patent, Claim 1)

Preamble: “A multi-network interface connecting a computer in
The preamble is limiting.
parallel with plurality of industrial control networks employing
different communication protocols to communicate with remote
I/O devices, the computer executing at least one application
program and an operating system, the operating system providing
an API allowing the application program to communicate with the
computer, the multi-network interface comprising:”
(’226 Patent, Claim 1)

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Preamble: “A control and monitoring system including a plurality
of control and monitoring components coupled to a monitoring
station via a data network, the system comprising:”

The preamble is limiting.

(’567 Patent, Claim 1)

Dkt. No. 58 at 2-4; Dkt. No. 63 at Ex. A.
Term

Parties’ Agreement in Briefing

Preamble: “An industrial controller operating
controlled equipment according to a control
program divided into at least two tasks, the
controller comprising:”

The preamble is not limiting except for “a
control program divided into at least two
tasks.”

(’409 Patent, Claim 1)
Preamble: “An industrial controller operating
controlled equipment according to a control
program divided into at least two tasks each
having a starting and completion point, the
controller comprising:”

The preamble is not limiting except for “a
control program divided into at least two
tasks each having a starting and completion
point.”

(’124 Patent, Claims 1, 9)
“event”

Plain and ordinary meaning.

(’124 Patent, Claim 1)
“a portion of each scheduled task . . . from the
portions starting point to its completion point”

Plain and ordinary meaning.

(’124 Patent, Claim 9)
“the computer process interface library is compiled Plain and ordinary meaning.
with the automation interface component”
(’704 Patent, Claim 1)

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“a viewing system that accepts the first and second
data sets and provides a graphical view of the first
and second control programs in a single view
based on the first and second binary data sets”

This claim element is not governed by 35
U.S.C. § 112 ¶ 6 and should be given its
plain and ordinary meaning.

(’366 Patent, Claim 1)
“a viewing system that accepts the optimal display
set view and provides a graphical view of the first
and second control programs in an adjacent
configuration”

This claim element is not governed by 35
U.S.C. § 112 ¶ 6 and should be given its
plain and ordinary meaning.

(’366 Patent, Claim 9)
“means for accepting the
optimal display set view and
providing a graphical view
of the first and second
control programs in an
adjacent configuration”
(’366 Patent, Claim 20)

Function:
“accepting the optimal display set view and providing a
graphical view of the first and second control programs in an
adjacent configuration”
Exemplary structures:
computer display screen, computer display (‘366 Patent: 1:6466; 3:64-4:2)
a single frame window (‘366 Patent: 3:45-54; 4:2-9)
viewing system 14 (‘366 Patent: 14:27-49)
display system 16, CRT (‘366 Patent: 4:49-59; Figs 2 and 3)
viewing system 60, viewing component 66 (‘366 Patent: 6:507:4; Fig. 5)
input/output system 70 (‘366 Patent: 7:4-7)
frame 100, frame window 100 (‘366 Patent: 7:48-8:41; Figs.
7-9)
monitor 247 (‘366 Patent: 9:28-32; Fig. 10)
compare utility (‘366 Patent: 10:52-54)
computer 220, CRT (‘366 Patent: 9:61-10:16; 10:52-54)

“a packaging component associated with an
industrial control device”

Plain and ordinary meaning.

(’585 Patent, Claim 1)
“an abstraction component that . . . determines
the properties and methods that are exposed to
a particular data consuming device”

Plain and ordinary meaning.

(’585 Patent, Claim 1)

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“determining the properties and methods that
are exposed to a particular data consuming
device”

Plain and ordinary meaning.

(’585 Patent, Claim 17)
“means for accepting data
from an industrial control
component”
(’585 Patent, Claim 25)

“means for encapsulating”

Function:
“accepting data from an industrial control component”
Exemplary structures:
packaging component 110, which may be a hardware or
software interface (‘585 Patent: 6:1-20)
abstraction component 210 (‘585 Patent: 7:28-30; 6:14-20)
industrial controller 410 (‘585 Patent: 10:8-14)
data object component 510 (10:43-45; 6:14-20)
data object library 610 (‘585 Patent: 11:14-18)
encapsulation component 730 (‘585 Patent: 11:55-60; 6:1420)
various wired and/or wireless media (‘585 Patent: 12:23-48)
network interface 1148 or communication connection 1150
(‘585 Patent: 15:16-38)
communication framework 1250 (‘585 Patent: 15:47-57)
Function:
“encapsulating”

(’585 Patent, Claim 25)
Exemplary structures:
packaging component 110 (‘585 Patent: 5:60-64; 6:14-20)
encapsulation component 220 (‘585 Patent: 8:10-16; 6:14-20)
encapsulation component 310 (‘585 Patent: 9:23-24; 6:14-20)
data object component 510 (‘585 Patent: 10:43-45; 6:14-20)
encapsulation component 730 (‘585 Patent: 11:55-60; 6:1420)
“means for providing such
properties and methods to a
data consumer”
(’585 Patent, Claim 25)

Function:
“providing such properties and methods to a data consumer”
Exemplary structures:
various wired and/or wireless media (‘585 Patent: 12:23-48)
network interface 1148 or communication connection 1150
(‘585 Patent: 15:16-38)
communication framework 1250 (‘585 Patent: 15:47-57)

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“invokes methods”

Plain and ordinary meaning.

(’585 Patent, Claims 1, 17, 25)
“scale of the data”

Plain and ordinary meaning.

(’585 Patent, Claims 1, 17, 25)
“means for connecting a client to a
Web server”

Function:
“connecting a client to a Web server”

(’122 Patent, Claim 32)

Exemplary Structures:
browser 50 (‘122 Patent: 4:39-44; 5:40-47)
Internet connection 12, Internet 20 (‘122 Patent: 4:4856; 5:40-47)

“means for directing
communications from the client to
the Web Server”

Function:
“directing communications from the client to the Web
Server”

(’122 Patent, Claim 32)

Exemplary Structures:
Web page 24 (‘122 Patent: 5:48-54)

“means for creating a desired HMI”

Function:
“creating a desired HMI”

(’122 Patent, Claim 33)
Exemplary Structures:
an HMI applet, applet program 30 (‘122 Patent: 3:5053; Fig. 1; 7:18-30; claims 29 and 30)
server-side HMI program 37 (‘122 Patent: 5:6-12)
“A method for monitoring
The preamble is not limiting.
operational parameters of a plurality
of networked electrical component,
the method comprising the steps
of:”
(’817 Patent, Claims 21, 27)
“A method for monitoring
operational parameters of a system
of electrical components, the
method comprising the steps of:”

The preamble is not limiting.

(’817 Patent, Claims 33, 34, 35)

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“generating a series of user
viewable monitoring displays of the
parameters by component based
upon the sensed parameters and the
identity data, the monitoring
displays including graphical
presentations of parameter levels”

Plain and ordinary meaning.

(’817 Patent, Claims 21, 27)
“generating a user viewable
monitoring display of the
parameters by component based
upon the sensed parameters and the
identity data”

Plain and ordinary meaning.

(’817 Patent, Claims 33, 34, 35)
“a monitoring station configured
cyclically to access the parameter
data via the network link and to
generate a user viewable
representation of the parameter data
including a plurality of virtual
meters displaying current and
historical levels of selected
parameters for each component”

Plain and ordinary meaning.

(’225 Patent, Claim 1)
“identity data representative of an
identity of the respective
component in the system”

Plain and ordinary meaning.

(’817 Patent, Claims 21, 33, 34, 35)
“component designation data”

Plain and ordinary meaning.

(’817 Patent, Claim 27)
“component data”

Plain and ordinary meaning.

(’225 Patent, Claim 1)

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Plain and ordinary meaning.
“the monitoring station is
configured to build a view of the
components in real-time based upon
the identifying component data”
(’567 Patent, Claim 1)
“a plurality of monitoring
representations built in real-time
based upon the identifying data and
viewable on the monitoring station”

Plain and ordinary meaning.

(’567 Patent, Claim 9)
“displaying a plurality of
monitoring representations . . . built
in real-time based on the status and
identity data”

Plain and ordinary meaning.

(’567 Patent, Claim 20)

Dkt. No. 67 at Ex. B; see Dkt. No. 58 at Ex. A; see also Dkt. No. 63 at Ex. B; Dkt. No. 71 at
Ex. A.

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