Free Stream Media Corp. v. Alphonso Inc.

Filing 125

MEMORANDUM OPINION AND ORDER re Claim Construction. Signed by Judge Robert W. Schroeder, III on 3/29/2017. (sm, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION

FREE STREAM MEDIA CORP. d/b/a
SAMBA TV,
Plaintiff,
v.
ALPHONSO INC.,
Defendant.

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Case No. 2:15-CV-1725-RWS
LEAD CASE

MEMORANDUM OPINION AND ORDER
On February 8, 2017, the Court held a hearing to determine the proper construction of the
disputed claim terms in United States Patent Nos. 9,026,668 (“the ’668 Patent”) and 9,386,356
(“the ’356 Patent”) (collectively “the Asserted Patents). The Court has considered the arguments
made by the parties at the hearing and in their claim construction briefs. Docket Nos. 99, 104, &
109.1 The Court has also considered the intrinsic evidence and made subsidiary factual findings
about the extrinsic evidence. 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). The Court issues this Claim
Construction Memorandum and Order in light of these considerations.

Citations to the parties’ filings are to the filing’s number in the docket (Docket No.) and pin
cites are to the page numbers assigned through ECF.
1

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TABLE OF CONTENTS
MEMORANDUM OPINION AND ORDER ................................................................................. 1
I.

BACKGROUND ................................................................................................................ 3

II.

APPLICABLE LAW .......................................................................................................... 6

III.

LEVEL OF ORDINARY SKILL IN THE ART .............................................................. 12

IV.

CONSTRUCTION OF AGREED TERMS ...................................................................... 13

V.

CONSTRUCTION OF DISPUTED TERMS ................................................................... 15
1. “communication session” ............................................................................. 16
2. “associate with...,” “associated with...,” “associating with...,”
“associate...with...” .............................................................................................. 24
3. “targeted data” .............................................................................................. 29
4. “content identification server” and “relevancy-matching server” ................ 34
5. “client device configured to” and “network device configured to” .............. 44
6. “the processor is configured to match a targeted data with a primary data
based on a relevancy factor associated with a user” ........................................... 55
7. “instructions stored in the memory and executed using the processor
configured to” ...................................................................................................... 58
8. “the sandboxed application is configured to gather the primary data from the
networked device through the communication session” / “the embedded object is
configured to gather the primary data from the networked device through the
communication session” ...................................................................................... 64

VI.

CONCLUSION ................................................................................................................. 69

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I.

BACKGROUND

The ’668 Patent was filed on May 28, 2013, issued on May 5, 2015, and is titled “RealTime and Retargeted Advertising on Multiple Screens of a User Watching Television.” The ’356
Patent was filed on December 29, 2015, issued on July 5, 2016, and is titled “Targeting with
Television Audience Data Across Multiple Screens.” The Asserted Patents share a common
specification. The Asserted Patents generally relate to “[a] method, apparatus, and system related
to relevancy improvement through targeting of information based on data gathered from a
networked device associated with a security sandbox of a client device.” ’668 at 2:15-18.
The specification describes Figure 1 as “a block diagram depicting a system of automatic
bidirectional communication (e.g., sending and receiving information in both directions without
prior configuration by a human) between multiple devices, according to one embodiment.” ’668
Patent at 5:54–57.

Id. at Figure 1. Figure 1 includes “a client device 100, a networked device 102, a security sandbox
104, an executable environment 106, a processor 108, a memory 110, a sandboxed application
112, a sandbox-reachable service 114, a communication session 116, a cross-site scripting
technique 118, an appended header 120, a same origin policy exception 122, and an other mode

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124.” Id. at 5:58–65. The specification states that “the client device 100 may automatically
establish the communication session 116 between the sandboxed application 112 and the sandboxreachable service 114 of the networked device 102.” Id. at 6:6–9.
The specification further specifies that “[t]he communication session 116 may be
established between the sandboxed application 112 and the sandbox-reachable service 114 through
the cross-site scripting technique 118, the appended header 120, the same origin policy exception
122, and/or the other mode 124 of bypassing a number of (e.g., at least one) access controls of the
security sandbox 104.” Id. at 6:9–16. The specification adds that “networked device 102 may
generate a primary data 500 and/or a preliminary data 702,” and that “[t]he primary data 500 and/or
the preliminary data 702 may be associated with a user 902.” Id. at 6:28–32.
The specification describes Figure 2 as illustrating “a system of bidirectional
communication between a relevancy-matching server 200, the client device 100, and the
networked device 102, according to one embodiment.” Id. at 11:45–47.

Id. at Figure 2. The specification states that “the relevancy-matching server 200 may be a
computer hardware system dedicated to matching, using a processor and a memory, a targeted

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data 800 with the primary data 500 based on a relevancy factor associated with the user 902.” Id.
at 11:56–60. The specification further states that “[t]he relevancy-matching server 200 may match
the targeted data 800 with the primary data 500 by searching the storage 200 for a matching item
and/or a related item based on the relevancy factor.” Id. at 12:17–20.
For example, “[t]he client device 100 may communicate the primary data 500 to the
relevancy-matching server 200 through the embedded object 204.” Id. at 13:9–11. “When the
relevancy-matching server 200 has the primary data 500, the relevancy-matching server 200 may
use the primary data 500 to select the targeted data 800 to render to the user 902.” Id. at 13:11–
14. The specification adds that “[t]he relevancy-matching server 200 may synchronize the targeted
data 800 on the client device 100 to the primary data 500 on the networked device 102.” Id. at
13:14–17.
Claim 1 of the ’668 Patent is an exemplary claim and recites the following elements
(disputed term in italics):
1. A system comprising:
a networked device configured to:
automatically announce a sandbox-reachable service of the
networked device to a discovery module; and
a relevancy-matching server configured to match a targeted data
with a primary data based on a relevancy factor associated
with the user; and
a client device configured to:
automatically process an identification data of at least one of the
networked device and the sandbox-reachable service of the
networked device from the discovery module,
automatically associate with the networked device through a
sandboxed application of the client device communicatively
coupled to the sandbox-reachable service based on the
identification data,
process an embedded object from the relevancy-matching server
through the sandboxed application,
gather the primary data through at least one of the embedded
object and the sandboxed application, and
communicate the primary data to the relevancy-matching server
through the embedded object;

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wherein the client device is further configured to: constrain an
executable environment in a security sandbox,
execute the sandboxed application in the executable
environment, and
automatically establish a communication session between the
sandboxed application and the sandbox-reachable service
through at least one of a cross-site scripting technique, an
appended header, a same origin policy exception, and an
other mode of bypassing a number of access controls of the
security sandbox, and
wherein the relevancy-matching server is configured to match the
targeted data with the primary data in a manner such that
the relevancy-matching server is configured to search a
storage for at least one of a matching item and a related
item based on the relevancy factor comprising at least one
of a category of the primary data, a behavioral history of
the user, a category of the sandboxed application, and an
other information associated with the user.
Claim 1 of the ’356 Patent is an exemplary claim and recites the following elements
(disputed term in italics):
1. A system comprising:
a television to generate a fingerprint data;
a relevancy-matching server to:
match primary data generated from the fingerprint data with
targeted data, based on a relevancy factor, and
search a storage for the targeted data;
wherein the primary data is any one of a content identification
data and a content identification history;
a mobile device capable of being associated with the television
to:
process an embedded object,
constrain an executable environment in a security sandbox, and
execute a sandboxed application in the executable environment;
and
a content identification server to:
process the fingerprint data from the television, and
communicate the primary data from the fingerprint data to any
of a number of devices with an access to an identification
data of at least one of the television and an automatic
content identification service of the television.
II.

APPLICABLE LAW

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A.

Claim Construction

“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to
which the patentee is entitled the right to exclude.’ ” Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc.,
381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start by
considering the intrinsic evidence. Id. at 1313; C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d
858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group, Inc., 262 F.3d
1258, 1267 (Fed. Cir. 2001).

The intrinsic evidence includes the claims themselves, the

specification, and the prosecution history. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at
861. The general rule is that each claim term is construed according to its ordinary and accustomed
meaning as understood by one of ordinary skill in the art at the time of the invention in the context
of the patent. Phillips, 415 F.3d at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361,
1368 (Fed. Cir. 2003); Azure Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014)
(“There is a heavy presumption that claim terms carry their accustomed meaning in the relevant
community at the relevant time.”) (vacated on other grounds).
“The claim construction inquiry . . . begins and ends in all cases with the actual words of
the claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998).
“[I]n all aspects of claim construction, ‘the name of the game is the claim.’ ” Apple Inc. v.
Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362,
1369 (Fed. Cir. 1998)). First, a term’s context in the asserted claim can be instructive. Phillips,
415 F.3d at 1314. Other asserted or unasserted claims can also aid in determining the claim’s
meaning, because claim terms are typically used consistently throughout the patent.

Id.

Differences among the claim terms can also assist in understanding a term’s meaning. Id. For

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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.
(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)).
“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is
dispositive; it is the single best guide to the meaning of a disputed term.’ ” Id. (quoting Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am.
Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). But, “ ‘[a]lthough the specification may aid the 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 MicroDevices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323. “[I]t is
improper to read limitations from a preferred embodiment described in the specification—even if
it is the only embodiment—into the claims absent a clear indication in the intrinsic record that the
patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
898, 913 (Fed. Cir. 2004).
The prosecution history is another tool to supply the proper context for claim construction
because, like the specification, the prosecution history provides evidence of how the U.S. Patent
and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415 F.3d at 1317.
However, “because the prosecution history represents an ongoing negotiation between the PTO
and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the
specification and thus is less useful for claim construction purposes.” Id. at 1318; see also Athletic

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Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996) (ambiguous prosecution
history may be “unhelpful as an interpretive resource”).
Although extrinsic evidence can also be useful, it is “‘less significant than the intrinsic
record in determining the legally operative meaning of claim language.’” Phillips, 415 F.3d at
1317 (quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a
court understand the underlying technology and the manner in which one skilled in the art might
use claim terms, but technical dictionaries and treatises may provide definitions that are too broad
or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert
testimony may aid a court in understanding the underlying technology and determining the
particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
assertions as to a term’s definition are entirely unhelpful to a court. Id. Generally, extrinsic
evidence is “less reliable than the patent and its prosecution history in determining how to read
claim terms.” Id. The Supreme Court recently explained the role of extrinsic evidence in claim
construction:
In some cases, however, the district court will need to look beyond the patent’s
intrinsic evidence and to consult extrinsic evidence in order to understand, for
example, the background science or the meaning of a term in the relevant art during
the relevant time period. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546 (1871)
(a patent may be “so interspersed with technical terms and terms of art that the
testimony of scientific witnesses is indispensable to a correct understanding of its
meaning”). In cases where those subsidiary facts are in dispute, courts will need to
make subsidiary factual findings about that extrinsic evidence. These are the
“evidentiary underpinnings” of claim construction that we discussed in Markman,
and this subsidiary factfinding must be reviewed for clear error on appeal.
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).

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B.

Functional Claiming and 35 U.S.C. § 112, ¶ 6 (pre-AIA) / § 112(f)
(AIA)2

A patent claim may be expressed using functional language. See 35 U.S.C. § 112, ¶ 6;
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347–49 & n.3 (Fed. Cir. 2015) (en banc in
relevant portion). Section 112, Paragraph 6, provides that a structure may be claimed as a “means
. . . for performing a specified function” and that an act may be claimed as a “step for performing
a specified function.” Masco Corp. v. United States, 303 F.3d 1316, 1326 (Fed. Cir. 2002).
But § 112, ¶ 6 does not apply to all functional claim language. There is a rebuttable
presumption that § 112, ¶ 6 applies when the claim language includes “means” or “step for” terms,
and that it does not apply in the absence of those terms. Masco Corp., 303 F.3d at 1326;
Williamson, 792 F.3d at 1348. The presumption stands or falls according to whether one of
ordinary skill in the art would understand the claim with the functional language, in the context of
the entire specification, to denote sufficiently definite structure or acts for performing the function.
See Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1372 (Fed. Cir. 2015) (§
112, ¶ 6 does not apply when “the claim language, read in light of the specification, recites
sufficiently definite structure” (quotation marks omitted) (citing Williamson, 792 F.3d at 1349;
Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1099 (Fed. Cir. 2014))); Williamson, 792 F.3d
at 1349 (§ 112, ¶ 6 does not apply when “the words of the claim are understood by persons of
ordinary skill in the art to have sufficiently definite meaning as the name for structure”); Masco
Corp., 303 F.3d at 1326 (§ 112, ¶ 6 does not apply when the claim includes an “act” corresponding
to “how the function is performed”); Personalized Media Communications, L.L.C. v. International
Trade Commission, 161 F.3d 696, 704 (Fed. Cir. 1998) (§ 112, ¶ 6 does not apply when the claim
2

Because the applications resulting in the Asserted Patents were filed before September 16, 2012,
the effective date of the America Invents Act (“AIA”), the Court refers to the pre-AIA version of
§ 112.
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includes “sufficient structure, material, or acts within the claim itself to perform entirely the recited
function . . . even if the claim uses the term ‘means.’ ” (quotation marks and citation omitted)).
When it applies, § 112, ¶ 6 limits the scope of the functional term “to only the structure,
materials, or acts described in the specification as corresponding to the claimed function and
equivalents thereof.” Williamson, 792 F.3d at 1347. Construing a means-plus-function limitation
involves multiple steps. “The first step . . . is a determination of the function of the means-plusfunction limitation.” Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311
(Fed. Cir. 2001). “[T]he next step is to determine the corresponding structure disclosed in the
specification and equivalents thereof.”

Id.

A “structure disclosed in the specification is

‘corresponding’ structure only if the specification or prosecution history clearly links or associates
that structure to the function recited in the claim.” Id. The focus of the “corresponding structure”
inquiry is not merely whether a structure is capable of performing the recited function, but rather
whether the corresponding structure is “clearly linked or associated with the [recited] function.”
Id. The corresponding structure “must include all structure that actually performs the recited
function.” Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed.
Cir. 2005).

However, § 112 does not permit “incorporation of structure from the written

description beyond that necessary to perform the claimed function.” Micro Chem., Inc. v. Great
Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999).
For § 112, ¶ 6 limitations implemented by a programmed general purpose computer or
microprocessor, the corresponding structure described in the patent specification must include an
algorithm for performing the function. WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339,
1349 (Fed. Cir. 1999). The corresponding structure is not a general purpose computer but rather

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the special purpose computer programmed to perform the disclosed algorithm. Aristocrat Techs.
Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).
III.

LEVEL OF ORDINARY SKILL IN THE ART

It is well established that patents are interpreted from the perspective of one of ordinary
skill in the art. See Phillips, 415 F.3d at 1313 (“[T]he ordinary and customary meaning of a claim
term is the meaning that the term would have to a person of ordinary skill in the art in question at
the time of the invention, i.e., as of the effective filing date of the patent application.”). The Federal
Circuit has advised that the “[f]actors that may be considered in determining the level of skill in
the art include: (1) the educational level of the inventors; (2) the type of problems encountered in
the art; (3) prior art solutions to those problems; (4) the rapidity with which innovations are made;
(5) sophistication of the technology; and (6) education level of active workers in the field.” Env’tl
Designs, Ltd. v. Union Oil Co. of California, 713 F.2d 693, 696 (Fed. Cir. 1983). “These factors
are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.”
Daiichi Sankyo Co. Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
The parties essentially agree that a person of ordinary skill in the art would have at least a
bachelor degree in computer science, electrical engineering, or a related discipline and 2-3 years
of experience. Plaintiff submitted a declaration of Dr. Vijay Madisetti, in which he opines that “a
POSITA in this timeframe would have been someone with at least a bachelor degree in computer
science, electrical engineering, or a related discipline and 2-3 years of experience. Alternatively,
a POSITA may have been someone with an advanced degree in computer science, electrical
engineering, or a related discipline.” Docket No. 99-13 at 12 (Vijay Madisetti Decl. at ¶ 33).
Defendant submitted a declaration of Dr. Michael Shamos, in which he states that he generally
agrees with Dr. Madisetti description of level of education. Docket No. 104-1 at 5 (Michael

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Shamos Decl. at ¶ 15). Defendant argued in its brief that a “POSITA would need an undergraduate
degree in computer science or electrical engineering, or equivalent experience, and at least three
years of industry or research experience in computer networking and audio and video systems,
including exposure to fingerprinting, watermarking, content identification, device and service
discovery, sandboxing, circumvention of sandbox protection, and relevancy matching to identify
targeted data.” Docket No.104 at 10.
As an initial matter, the Court finds that the differences between the parties’ descriptions
of the person of ordinary skill in the art are not significant for the purpose of claim construction.
Having considered the parties’ proposals, and the factors that may be considered in determining
the level of skill in the art, the Court finds that a person of ordinary skill in the art would have at
least a bachelor degree in computer science, electrical engineering, or a related discipline, and a
working knowledge of the technologies implemented in “networking, data recognition systems,
and data recommendation systems.” ’668 Patent at 1:38-40.
IV.

CONSTRUCTION OF AGREED TERMS

The parties agreed to the constructions of the following terms/phrases:
Claim Term/Phrase
“communicatively coupled”

Agreed Construction
“connected in a way that permits communication”

(’668 Patent, claims 11, 21, 25)
(’356 Patent, claims 10, 14, 18)
“content identification data”

“information used to identify content”

(’356 Patent, claims 1, 10, 14, 18)
“discovery module”
(’668 Patent, claims 11, 19, 21, 29)

“software, hardware, firmware, and/or integrated
circuit to detect devices and/or services on a
network”

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“fingerprint data”

“data representing characteristic features
obtained, detected, extracted, quantized, and/or
hashed from audio or visual content”

(’356 Patent, claims 1, 2, 10, 13, 14, 17,
18)
“primary data”

“data that may be associated with a user and
matched with targeted data”

(’668 Patent, claims 11, 14, 15, 19, 21, 24,
25, 29)
(’356 Patent, claims 1, 10, 11, 13, 14, 17,
18, 19)
“relevancy factor”

“criterion used for matching targeted data with
primary data”

(’668 Patent, claims 11, 21)
(’356 Patent, claims 1, 10, 11, 14, 18, 19)
“sandbox-reachable service”
(’668 Patent, claims 11, 15, 19, 21, 25,
29)
“sandboxed application”

“service that can be discovered and/or
communicated with from within a security
sandbox”
“software or application that runs in a security
sandbox”

(’668 Patent, claims 11, 14, 16, 21, 24,
26)
(’356 Patent, claims 1, 10, 14)
“security sandbox”

“environment that constrains operations available
to an application”

(’668 Patent, claims 11, 21)
(’356 Patent, claims 1, 2)
“embedded object”
(’668 Patent, claims 11, 14, 21, 24)
(’356 Patent, claims 1, 2)

“object in an application or webpage linked to an
external source, such as a script, an image, a
player, an iframe, or other external media”

Docket No. 116-1 at 67, 75, 79, 84, 90, 103, 113, 119, 127, 133. In view of the parties’ agreement
on the proper construction of the identified terms, the Court hereby ADOPTS the parties’ agreed
constructions.
During the claim construction hearing, the parties agreed to the construction of the

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following term:
Claim Term/Phrase
“pairing server”

Agreed Construction
“server that communicatively couples the
television and the mobile device”

(’356 Patent, claims 4, 9, 11, 15, 19)
The Court agrees that “pairing server” should be construed to mean “server that
communicatively couples the television and the mobile device.” The specification states that
“[t]he pairing server 300 exists in the cloud 712 and is communicatively coupled to the client device
100 and the networked media device 102 of FIG. 3.” ’668 Patent at 13:29–31 (emphasis added).
As indicated by the plain and ordinary meaning of the term “pairing,” and the related disclosure,
the recited “pairing server” enables devices on the same network to pair by communicatively
coupling the devices. Indeed, the specification states that “[t]he pairing server 300 may be
configured to receive in the announcement from the networked device 102 and to communicate to
the client device 100 the identification data 304 when a shared network is determined to be
commonly associated with the client device 100 and the networked device 102.” Id. at 13:45–50
(emphasis added). Likewise, the specification states that “[t]he pairing server 300 may also
provide a relay service (e.g., transmits a data between two terminals that are incapable of
communicating directly) between the client device 100 and the networked device 102.” Id. at
13:51–54. In view of the intrinsic evidence and the parties’ agreement on the proper construction
of the term “pairing server,” the Court hereby ADOPTS the parties’ agreed construction.
V.

CONSTRUCTION OF DISPUTED TERMS

The parties’ dispute focuses on the meaning and scope of eleven terms/phrases in the
Asserted Patents.

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“communication session”

1.

Disputed Term
“communication session”

Plaintiff’s Proposal
“period of time during which
information is sent and/or
received between devices either
directly or indirectly (e.g.
through a server)”

Defendant’s Proposal
“period of time during which
there is a bidirectional
exchange of information over a
network connection between
devices”

a) The Parties’ Positions
The parties agree that a “communication session” is a period of time during which
communication occurs. The parties dispute: (1) whether there must be a bidirectional exchange
of information; and (2) whether the exchange of information must take place over a network
connection between devices. Plaintiff contends that the proper construction includes one-way and
two-way sending and/or receiving of information. Docket No. 99 at 13. Plaintiff argues that
Defendant’s construction improperly imports additional limitations from certain embodiments
while excluding other embodiments. Id. at 13 (citing ’668 Patent at Fig. 7, 20:50–56). Plaintiff
further argues that the Asserted Patents use the term communication to include both one-way and
two-way communication. Docket No. 99 at 13 (citing ’668 Patent at 38:45–59, 41:33–40, 5:54–
64, 9:65–10:8). Plaintiff contends that if the term “communication” was intended to be limited to
only two-way communication, the word “bidirectional” would be superfluous and the Asserted
Patents would not use the word “communication” to describe one-way communication. Docket
No. 99 at 13.
Plaintiff also argues that its construction clarifies that communication sessions may include
both direct and indirect communication (e.g. through a server). Id. at 13 (citing ’668 Patent at
11:6–10, Figure 7). Plaintiff contends that technical dictionaries also support its construction.
Docket No. 99 at 14–15 (citing Docket No. 99-6 (Webster’s New World Telecom Dictionary
(2008)), Docket No. 99-7 (Comprehensive Dictionary of Electrical Engineering, 2d Ed. (2005))).

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Defendant responds that the specification uniformly characterizes a “communication
session” as comprising a bidirectional exchange of information and never depicts or describes a
communication session as comprising only one-way communication. Docket No. 104 at 12–13
(citing ’668 Patent at 11:5–6, 5:54–57, 5:64–65, 11:3–4, 11:45–52, Figures 1 and 2). Defendant
argues that Plaintiff’s attempt to find support for a one-way communication session in the patents
confuses a communication session (which must be established between devices) with a mere
communication (a simple action by any device). Docket No. 104 at 14 (citing ’668 Patent at
38:47–50, 38:28–39:1). According to Defendant, the Asserted Patents never describe a one-way
communication session. Docket No. 104 at 14.
Defendant also argues that the Asserted Patents do not describe Figure 7 as showing a
communication session between the networked device and client device. Docket No. 104 at 14
(citing ’668 Patent at 19:28–37). According to Defendant, Figure 7 shows one example of
information being relayed from the networked device to the client device via an intermediary
server, with no indication that it depicts all data ever sent between the devices or that no data is
ever sent from the client device to the networked device. Docket No. 104 at 14.
Defendant further argues that the specification and claims demonstrate that a
communication session also requires a network connection between devices. Docket No. 104 at
15 (citing ’668 Patent at 1:38–39, 2:18–25, 2:46–50, 6:6–15, 6:32–37, 11:1–11, 13:31–36, 16:9–
13, 51:31–33, 53:25–27, 55:22–24).

Defendant contends that the characteristics of a

communication session cited by Plaintiff confirms it comprises a network connection between
devices. Docket 104 at 15 (citing ’668 Patent at 6:9–15, 11:12–44). Defendant also contends that
the discovery protocols cited by Plaintiff allow devices to discover each other so that specific
devices may establish a communication session, not to communicate through an existing

Page 17 of 70

communication session. Docket No. 104 at 15–16 (citing ’668 Patent at 11:37–39, 2:56–58, 3:9–
18, 14:1–44).
Finally, Defendant argues that Plaintiff’s construction covers any communication, which
improperly reads “session” out of the claims. Docket No. 104 at 16. Defendant contends that
under Plaintiff’s construction a radio station that broadcasts a radio signal to millions of
unidentified radios would share a “communication session” with any radio that happened to be
tuned to its broadcast frequency. Id. Defendant also contends that without the need for a network
connection between devices, devices that communicate only twice would share a “communication
session” spanning any time period. Id.
Plaintiff replies that the Asserted Patents disclose two-way communication sessions and
one-way communications. Docket No. 109 at 3 (citing ’668 Patent at 38:22–47, 18:58–67, 19:4–
27, Figures 1, 2, 5, and 6). Plaintiff argues that Figure 7 depicts a “communication session.”
Docket No. 109 at 4 (citing ’668 Patent at 20:50–56, 21:9–11, claim 14). Plaintiff contends that
in the context of the entire claim language and the patent, it is clear that “communication session”
is merely one element in a system, and that “communication session” with the other claim
limitations together define the patented invention. Docket No. 109 at 4. Plaintiff further argues
that there is no need to import a “networked device” limitation into the term “communication
session.” Id. According to Plaintiff, the Asserted Patents make clear that the networked device
and client device can have a communication session even when they are not on the same network.
Docket No. 109 at 5 (’668 Patent at 38:28–31, 38:47–48, 38:50–53, 39:1–10).
For the following reasons, the Court finds that the term “communication session” should
be construed to mean “period of time during which information is sent and received either
directly or indirectly.”

Page 18 of 70

b) Analysis
The term “communication session” appears in claims 1, 4, 11, 14, 21, and 24 of the ’668
Patent. The Court finds that the term is used consistently in the claims and is intended to have the
same general meaning in each claim. The Court further finds that the recited “communication
session” is a period of time during which information is sent and received (i.e., bidirectional
exchange). The claims indicate that the “communication session” is between the networked device
and the client device. See, e.g., ’668 Patent at Claim 1 (“a networked device configured to:
automatically announce a sandbox-reachable service of the networked device . . . a client device
configured to: . . . automatically establish a communication session between the sandboxed
application and the sandbox-reachable service . . . .”).
The specification consistently states that the “communication session” between these two
devices is a bidirectional communication. For example, the specification states that “FIG. 1 is a
block diagram depicting a system of automatic bidirectional communication (e.g., sending and
receiving information in both directions without prior configuration by a human) between multiple
devices, according to one embodiment.” Id. at 5:54–57 (emphasis added). The specification then
explicitly states that “the client device 100 communicates bidirectionally with the networked
device 102 of FIG. 1.” Id. at 5:64–65 (emphasis added). Similarly, the specification states that
“FIG. 2 depicts a system of bidirectional communication between a relevancy-matching server
200, the client device 100, and the networked device 102, according to one embodiment.” Id. at
11:45–47 (emphasis added). Figures 1 and 2 further illustrate the bidirectional “communication
session 116” with a two-sided arrow connecting a client device and a networked device. Id. at
Figures 1 and 2.
Likewise, Figures 4, 10, and 11 illustrate and disclose a bidirectional communication

Page 19 of 70

between a networked device and a client device. Id. at 4:17–21 (“FIG. 4 is a block diagram
depicting a system of bidirectional communication between the client device 100 and the
networked device 102 using an extension 404 of a security sandbox 104, according to one
embodiment”) (emphasis added); 4:45–49 (“FIG. 10 is a block diagram of a system including a
content identification server 1006 configured for automatic bidirectional communication with a
number of capture servers 1008A, 1008B, the client device 100, and the networked device 102,
according to one embodiment.”) (emphasis added); 4:50–54 (“FIG. 11 is a block diagram of a
system of automatic bidirectional communication between the client device 100 and the networked
device 102 involving the content identification server 1006 and a plurality of other networked
devices 1400A, 1400B, according to one embodiment.”) (emphasis added).
These embodiments further indicate that the bidirectional communication is automatic.
See, e.g., id. at 14:66–15:2 (“When the client device 100 pairs with the networked device 102, the
automatic bidirectional communication may comprise the client device 100 pushing the media
data 1004 to the networked device 102.”).

The “automatic bidirectional communication”

addresses the problem of a user being “unable to configure the networked device to share the
information with the other networked device.” Id. at 1:65–67.3 Accordingly, the Court finds that
the intrinsic evidence indicates that the recited “communication session” means “a period of time
during which information is sent and received.”
Arguing against the bidirectional communication limitation, Plaintiff contends that the
patents include embodiments of one-way communication. Docket No. 99 at 13 (referring to Figure
7); Docket No. 109 at 3 (referring to Figures 5 and 6). Contrary to Plaintiff’s suggestion, the

The Court notes that the claims generally require “automatically establishing” a communication
session, and thus “automatically” would be redundant and is not included in the Court’s
construction.
3

Page 20 of 70

specification never describes the “one-way communication” as a “communication session”
between the networked device and the client device. Instead, the specification states that Figures
5 and 6 illustrate “a block diagram depicting the client device 100 gathering a primary data 500
through a sandboxed application 112 [an executable code 600] and communicating the primary
data 500 to the relevancy-matching server 200 through an image 502 [the executable code 600],
according to one embodiment.” ’668 Patent at 4:22–32 (emphasis added). Thus, Figures 5 and 6
relate to the “gather[ing] the primary data” claim element, which is a different than “automatically
establish[ing] a communication session.” See, e.g., id. at Claim 1 (Compare “gather the primary
data through at least one of the embedded object and the sandboxed application” to “automatically
establish a communication session between the sandboxed application and the sandbox-reachable
service.”).
Similarly, the specification does not describe Figure 7 as illustrating a “communication
session” between the networked device and client device. Instead, Figure 7 is an example of
information being relayed from the networked device to the client device via an intermediary
server. In other words, the specification does not suggest or indicate that it depicts all data that is
sent between the devices, or that a “communication session” includes a one-way communication.
Indeed, the specification explicitly states that “FIG. 7 is a block diagram depicting the client device
100 residing on a separate network from the networked device 102 and gathering the primary data
500 from an intermediary server 700, according to one embodiment.” Id. at 4:33–36; see also id.
at 19:28–30 (“FIG. 7 is a block diagram depicting the client device 100 residing on a separate
network from the networked device 102 and gathering the primary data 500 from the intermediary
server 700, according to one embodiment.”).

To be sure, the specification refers to

“communication session 116 between the client device and the networked device 102,” but does

Page 21 of 70

not illustrate “communication session 116” in Figure 7, like it does in the other figures. Id. at
20:50–56. Contrary to Plaintiff’s suggestion, the Court’s construction does not exclude the
embodiment illustrated in Figure 7, because Figure 7 requires automatically establishing a
bidirectional communication session.
Plaintiff also contends that the Assert Patents discuss “a low-bitrate communication in onedirection.” Docket No. 99 at 13. Plaintiff is correct that this example provides a one-way
communication. However, this example refers to a “covert channel” the networked device may
use to announce itself to the client device in order to “enable the communication session” (i.e.,
before a communication session has even been established.). See, e.g., ’668 Patent at 38:47–50
(“The covert channel may enable the communication session 116 between the sandboxed
application 112 and the sandbox-reachable service 114 without opening the networked device 102
to a security risk.”) (emphasis added). As indicated, the one-direction communication is not the
recited “communication session 116.”

Indeed, the specification states that “[t]he networked

device 102 may also be configured to automatically announce the sandbox-reachable service 114
of the networked device 102 to a discovery module 302 prior to an establishment of the
communication session 116 between the sandboxed application 112 and the sandbox-reachable
service 114.” Id. at 6:33–37 (emphasis added).
In summary, Plaintiff’s contention that the recited “communication session” may be a oneway communication is inconsistent with the intrinsic evidence. Moreover, Plaintiff’s construction
would cover any communication, and would improperly read “session” out of the claims. See,
e.g., Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1348 (Fed. Cir. 2012)
(rejecting claim construction because it “effectively reads [a] term [] out of the limitation”).
Furthermore, the extrinsic evidence is consistent with the intrinsic evidence and defines “session”

Page 22 of 70

as “[i]n communications, the time during which two computers maintain a connection.” Docket
No. 104-4 at 4 (Microsoft Computer Dictionary); see also Docket No. 104-3 at 4 (Dictionary of
Multimedia Terms & Acronyms) (defining “session” as “in telecommunications, a series of
communications between two stations during one connection”). Accordingly, the Court finds
“communication session” should be construed to mean a “period of time during which information
is sent and received.”
Regarding the second issue related to Defendant’s proposed “network connection between
devices,” the Court finds that it is unnecessary and could potentially confuse the jury. The
specification makes clear that the networked device and client device can have a communication
session even when they are not on the same network. The specification explicitly states that “[t]he
networked device 102 and the client device 100 may not reside on the same network.” ’668 Patent
at 39:1–2. For example, the specification states that “[w]hen the client device 100 and the
networked device 102 are paired using the hidden signal of the networked device 102, the client
device 100 and the networked device 102 may not be required to reside on a same network.” Id.
at 38:28–31. Moreover, the claims recite that the communication session is “automatically
established” between the networked device and the client device. Thus, Defendant’s construction
is unnecessary and could confuse the jury by suggesting that the networked device and client
device must be on the same network. Finally, in reaching its conclusion, the Court has considered
the extrinsic evidence submitted by the parties, and given it its proper weight in light of the intrinsic
evidence.
c) Court’s Construction
The Court construes the term “communication session” to mean “period of time during
which information is sent and received either directly or indirectly.”

Page 23 of 70

2. “associate with . . .,” “associated with . . .,” “associating with . . .,”
“associate . . . with . . .”
Disputed Term
“associate the television
with the mobile device”

Plaintiff’s Proposal
plain meaning / no
construction needed

“mobile device capable of
being associated with the
television”

plain meaning / no
construction needed

“client device configured
to…associate with the
networked device”

plain meaning / no
construction needed

“associating, by the client
device, with the
networked device”

plain meaning / no
construction needed

Defendant’s Proposal
“exchange information to permit
the television and mobile device to
communicate with each other”
“mobile device capable of
exchanging information to permit
the mobile device and television to
communicate with each other”
“client device configured to
exchange information to permit the
client device and networked device
to communicate with each other”
“exchanging information, by the
client device, to permit the client
device and networked device to
communicate with each other”

a) The Parties’ Positions
The parties dispute the meaning of “associate with” and variations of that phrase
(collectively referred to as “associate”) in the context of associated networked devices and client
devices. Plaintiff contends that the term is used in its plain and ordinary meaning throughout the
Asserted Patents to describe various aspects of the claimed inventions. Docket No. 99 at 10 (citing
’668 Patent at 3:46–52, 11:60–63, Claims 1, 7, 8). Plaintiff argues that the specification describes
information as “associated with a user” to mean information related to a user in some way, and
describes a hardware address as “associated with the networked device” to mean a hardware
address used to identify or signify a networked device. Docket 99 at 10-11 (’668 Patent at 1:48–
51, 3:4–6). Plaintiff contends that the term also appears in several of the claims of the Asserted
Patents in the same context. Docket 99 at 11 (citing ’668 Patent at Claims 1 and 2; ’356 Patent at
Claims 4 and 7). Plaintiff further argues that the term comports with its well-understood plain and
ordinary meaning. Docket No. 99 at 11 (citing Docket 99-3 (Merriam-Webster Collegiate
Dictionary (2014)); Docket No. 99-4 (New Oxford American Dictionary (2010)); Docket No. 99Page 24 of 70

5 (American Heritage Dictionary (2012))).
Plaintiff also argues that it would be improper to limit the meaning of certain uses of the
term “associate” while interpreting all other uses of the term under its plain and ordinary meaning.
Docket No. 99 at 11.

Plaintiff contends that Defendant’s construction attempts to add a

requirement that associated networked and mobile devices must have a two-way exchange of
information. Id. at 12. Plaintiff further contends that Defendant’s construction would exclude
Figure 7, which depicts the networked device communicating preliminary or primary data to the
client device through the intermediary server. Id. (citing ’668 Patent at Figure 7, 19:28–21:37).
Plaintiff argues that Defendant cannot import limitations into the claims unless the patentee clearly
intended to do so. Docket No. 99 at 12.
Defendant responds that it seeks construction of “associate” because it has more than one
ordinary meaning, and those ordinary meanings do not resolve the parties’ dispute. Docket No.
104 at 18. Defendant argues that Plaintiff admits the term takes on different meanings within the
Asserted Patents. Id. at 19. Defendant further argues that none of the different meanings Plaintiff
assigns to “associate” make sense when those meanings are applied to the disputed phrases. Id.
According to Defendant, when one device associates with another, the devices associate through
their communicatively coupled applications, confirming that the devices are not simply associating
in any lay sense of the word. Id. at 20. Defendant also contends that the most straightforward
interpretation in this context is that the associating device exchanges information (e.g., in
establishing a communication session) that permits communication between devices. Id.
Plaintiff replies that the use of the word “associate” in the phrases “associated with a user”
and “associated with the networked device” does not diverge from the plain and ordinary meaning.
Docket No. 109 at 5. Plaintiff argues that the surrounding description of the relationship informs

Page 25 of 70

the reader about the degree of the relationship. Id. Plaintiff contends that the same plain and
ordinary meaning applies to associations between client and networked devices. Id. Plaintiff
further argues that Defendant’s construction excludes one-way communication embodiments
through its construction of “associate.” Id. at 6 (citing ’668 Patent at Figs. 5–8, 19:28–21:37).
Plaintiff also contends that it excludes embodiments in which a network device posts identification
data at a URL for a client device to discover. Docket No. 109 at 6 (citing ’668 Patent at 6:43–46,
6:60–65, 7:5–27, 8:11–23).
For the following reasons, the Court finds that the phrase “associate the television with
the mobile device” should be construed to mean “enable the television to communicate with
the mobile device,” and the phrase “mobile device capable of being associated with the
television” should be construed to mean “mobile device capable of communicating with the
television.” The Court further finds that the phrase “client device configured to . . . associate
with the networked device” should be construed to mean “client device configured to . . .
communicate with the networked device,” and the phrase “associating, by the client device,
with the networked device” should be construed to mean “communicating, by the client, with
the networked device.”
b) Analysis
The phrase “associate the television with the mobile device” appears in claims 4, 11, and
19 of the ’356 Patent. The phrase “mobile device capable of being associated with the television”
appears in claim 1 of the ’356 Patent. The phrase “client device configured to . . . associate with
the networked device” appears in claims 1 and 21 of the ’668 Patent. The phrase “associating, by
the client device, with the networked device” appears in claim 11 of the ’668 Patent. The Court
finds that “associate” is used consistently in the claims and is intended to have the same general

Page 26 of 70

meaning in each claim.

The Court further finds that the intrinsic evidence indicates that

“associating with” generally means “communicating with.”
The Summary section states that the client device “automatically process[es] an
identification data of the networked device and/or the sandbox-reachable service,” then
“automatically associate[s] with the networked device through a sandboxed application of the
client device communicatively coupled to the sandbox-reachable service based on the
identification data.” ’668 Patent at 2:31–38 (emphasis added). The specification further indicates
that this process may take place via the pairing server. Specifically, the specification states that
“[t]he pairing server 300 exists in the cloud 712 and is communicatively coupled to the client
device 100 and the networked media device 102 of FIG. 3.” Id. at 13:28–31 (emphasis added).
Indeed, claim 4 of the ’356 Patent recites “pairing server to: associate the television with
the mobile device.” Likewise, claim 1 of the ’668 Patent recites that the networked device
“automatically announce a sandbox-reachable service of the networked device,” and that the client
device “automatically associate with the networked device through a sandboxed application of the
client device communicatively coupled to the sandbox-reachable service.” Thus, the intrinsic
evidence indicates that when one device “associates with” another, the devices associate through
their communicatively coupled applications. Accordingly, the Court finds that a person of
ordinary skill in the art would understand “associating with” to mean “communicating with.”
Turning to the parties’ constructions, the Court finds that “associated with” has more than
one ordinary meaning in the context of the intrinsic evidence. Plaintiff does not dispute this fact.
Therefore, giving the term its plain and ordinary meaning would not resolve the parties’ dispute
over what it means for one device to associate with another device in the context of the patents.
See, e.g., O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008)

Page 27 of 70

(“A determination that a claim term ‘needs no construction’ or has the ‘plain and ordinary
meaning’ may be inadequate when a term has more than one ‘ordinary’ meaning or when reliance
on a term’s ‘ordinary’ meaning does not resolve the parties’ dispute.”).
Plaintiff identifies several examples in which the Asserted Patents refer to one thing (e.g.,
information or data) that is “associated with” another thing/person (e.g., a user or device). Docket
No. 99 at 10–11. Plaintiff agrees that these examples show that the term takes on different
meanings within the Asserted Patents. For example, Plaintiff argues that “[t]he specifications
describe information as ‘associated with a user’ to mean information related to a user in some way
and describe a hardware address as ‘associated with the networked device’ to mean a hardware
address used to identify or signify a networked device.” Id. However, neither of these meanings
of “associate” make sense when applied to the disputed phrases. For example, substituting
“relating” for “associating” in claim 11 of the ’668 Patent makes performing the step unclear.
Specifically, the step would become “automatically [relating], by the client device, [to] the
networked device through a sandboxed application of the client device communicatively coupled
to the sandbox-reachable service based on the identification data.” Accordingly, the Court rejects
Plaintiff’s proposal of plain and ordinary meaning.
However, the Court agrees that Defendant’s construction improperly adds a requirement
that the associated networked and mobile devices must have a two-way exchange of information.
A “two way exchange of information” is not the plain and ordinary meaning of “associate” in the
context of the intrinsic evidence.

Instead, the claim language itself recites the required

communication. For example, claim 1 of the ’668 Patent recites a client device configured to
“automatically associate with the networked device through a sandboxed application of the client
device communicatively coupled to the sandbox-reachable service based on the identification

Page 28 of 70

data,” as well as “automatically establish a communication session between the sandboxed
application and the sandbox-reachable service through at least one of a cross-site scripting
technique, an appended header, a same origin policy exception, and an other mode of bypassing a
number of access controls of the security sandbox.” ’668 Patent at claim 1 (emphasis added). To
the extent that Defendant contends that “associate” requires a “two way exchange of information,”
the Court rejects this argument. Finally, in reaching its conclusion, the Court has considered the
extrinsic evidence submitted by the parties, and given it its proper weight in light of the intrinsic
evidence.
c) Court’s Construction
The Court construes the term the phrase “associate the television with the mobile device”
to mean “enable the television to communicate with the mobile device,” and the phrase “mobile
device capable of being associated with the television” to mean “mobile device capable of
communicating with the television.” The Court further construes the phrase “client device
configured to . . . associate with the networked device” to mean “client device configured to
. . . communicate with the networked device,” and the phrase “associating, by the client
device, with the networked device” to mean “communicating, by the client, with the
networked device.”
3. “targeted data”
Disputed Term
“targeted data”

Plaintiff’s Proposal
“content recommendation,
advertisement, product
recommendation, and/or other
information related to primary
data”

Page 29 of 70

Defendant’s Proposal
“information related to primary
data and intended to be
communicated to a user, such
as a content recommendation,
advertisement, or product
recommendation”

a) The Parties’ Positions
The parties do not dispute that the targeted data may include a content recommendation,
an advertisement, or a product recommendation. The parties dispute whether the “targeted data”
must be information that is intended to be communicated to a user, as Defendant proposes.
Plaintiff argues that Defendant’s construction includes a statement of intended use that provides
less clarity regarding the scope of the claimed invention. Docket No. 99 at 19. Plaintiff also
argues that Defendant’s construction excludes preferred embodiments where the targeted data is
not sent or intended to be sent to a user. Id. (citing ’668 Patent at 12:10–12, Figure 2). According
to Plaintiff, targeted data is selected by a relevancy-matching process, and only after selection by
the relevancy-matching server do the Asserted Patents contemplate communicating or rendering
the targeted data to a user. Docket No. 99 at 19 (citing ’668 Patent at 12:17–20, 12:1–4). Plaintiff
further argues that the Asserted Patents describe embodiments in which targeted data sits in storage
devices, and is only communicated to a user after selection and in some instances only after a
triggering event. Docket No. 99 at 19 (citing ’668 Patent at 13:9–16, 22:18–24).
Defendant responds that its construction specifies that targeted data is information that is
intended to be communicated to a user. Docket No. 104 at 23. Defendant argues that its
construction is supported by the specification and conforms to the central purpose of the invention.
Id. (citing ’668 Patent at 1:40–44, 2:15–18, 5:48–53, 3:39–45, 21:38–41, 12:2–4, 13:11–14,
21:65–22:1, 52:32–35, 54:25–28, 56:29–32, Figures 8–9). Defendant concedes that not every
claim requires that targeted data is actually communicated or rendered to a user, but argues that
targeted data must at least be intended to be communicated to a user. Docket No. 104 at 24.
Defendant further argues that there are many different types of data related to primary data that
would never be targeted to a user (e.g., unintelligible fingerprint data). Id. According to
Defendant, Plaintiff’s construction is impermissibly broad because it essentially reads the word
Page 30 of 70

“targeted” out of the claims. Id.
Plaintiff replies that rendering of “targeted data” (e.g., presenting, transmitting in a
consumable format, delivering) is claimed in dependent claims of the Asserted Patents. Docket
No. 109 at 7 (citing ’668 at Claims 16; 7:49–50). Plaintiff argues that this shows “targeted data”
does not indicate whether the data is rendered (e.g., delivered) to a user. Docket No. 109 at 7.
According to Plaintiff, the Asserted Patents make clear “communicating to a user” is separate from
“targeted data” itself. Id. (citing ’668 Patent at 12:10–12; Figures 2). Plaintiff contends that
targeted data is communicated or rendered to a user only after selection by the relevancy-matching
server or another triggering event. Docket No. 109 at 7 (citing ’668 Patent at 12:17–20, 12:1–4,
13:9–16, 22:18–24).
For the following reasons, the Court finds that the term “targeted data” should be
construed to mean “content recommendation, advertisement, product recommendation,
and/or other information matching or related to primary data.”
b) Analysis
The term “targeted data” appears in claims 1, 6, 11, 16, 21, and 26 of the ’668 Patent; and
claims 1, 3, 6, 10, 11, 14, 18, 19, and 21 of the ’356 Patent. The Court finds that the term is used
consistently in the claims and is intended to have the same general meaning in each claim. The
Court further finds that the term “targeted data” is closely tied to the relevancy-matching server.
Claim 1 of the ’668 Patent recites “a relevancy-matching server configured to match a targeted
data with a primary data based on a relevancy factor associated with the user.” See also ’668
Patent at 2:28–30 (“The relevancy-matching server may be configured to match a targeted data
with the primary data based on a relevancy factor associated with the user.”). The specification
further states that Figure 8 illustrates “a block diagram depicting the relevancy-matching server

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200 communicating the targeted data 800 to the client device 100 and the networked device 102,
according to one embodiment.” ’668 Patent at 21:38–41. This is consistent with dependent claim
6 of the ’668 Patent, which recites that the relevancy-matching server “is configured to render the
targeted data to the user through at least one of the networked device and the sandboxed application
of the client device.” Thus, the intrinsic evidence draws a distinction between targeted data that
is matched to primary data, and targeted data that is later rendered to the user after it is matched
to primary data.
Moreover, the specification states that “the targeted data 800 may comprise a content
recommendation, an advertisement, a product recommendation, and/or an other information
related to the primary data 500.” Id. at 21:49–52. The specification adds that “[t]he targeted data
800 may comprise the matching item and/or the related item in the storage 202.” Id. at 21:52–55
(emphasis added). This is consistent with the parties’ agreement for this term. Accordingly, the
Court construes “targeted data” to mean “content recommendation, advertisement, product
recommendation, and/or other information matching or related to primary data.”
Regarding Defendant’s “intended to be communicated” proposal, the Court rejects the
proposal because it confuses the claim language. The specification indicates that storage 202 acts
as a repository of targeted data. ’668 Patent at 12:10–12 (“The storage 200 may be a volatile
memory, a non-volatile memory, a disk, and/or an other repository of the targeted data 800.”). The
specification further states that “[t]he relevancy-matching server 200 may match the targeted data
800 with the primary data 500 by searching the storage 200 for a matching item and/or a related
item based on the relevancy factor.” Id. at 12:17–20. Thus, the specification indicates that the
“targeted data” is stored and then selected based on the relevancy factor, and not on intended use.
Indeed, the intrinsic evidence indicates that it is only after the targeted data is selected that

Page 32 of 70

it may be communicated or rendered to the user. For example, dependent claim 6 of the ’668
Patent recites “wherein the relevancy-matching server is configured to render the targeted data to
the user through at least one of the networked device and the sandboxed application of the client
device.” Similarly, the specification states that Figure 8 “is a block diagram depicting the
relevancy-matching server 200 communicating the targeted data 800 to the client device 100 and
the networked device 102, according to one embodiment.” ’668 Patent at 21:38–41. Thus, the
intrinsic evidence indicates that “communicating to a user” is separate from the recited “targeted
data” itself. Moreover, it is not just “any data,” but instead is the data selected based on the
relevancy factor associated with the user.
Defendant contends that the “targeted data must at least be intended to be communicated
to a user; otherwise, nothing about it is targeted.” Docket No. 104 at 24. The Court disagrees. As
discussed, the claims recite that the relevancy-matching server is “configured to match a targeted
data with a primary data based on a relevancy factor associated with the user.” ’668 Patent at
Claim 1. Therefore, the selection of the targeted data is based on a relevancy factor associated
with the user, and not necessarily on whether it is intended to be communicated. The Court finds
Defendant’s “intended to be communicated” potentially confusing because it would require
determining the “intended use” of the data.
c) Court’s Construction
The Court construes the term “targeted data” to mean “content recommendation,
advertisement, product recommendation, and/or other information matching or related to
primary data.”

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4. “content identification server” and “relevancy-matching server”
Plaintiff’s Proposal
Function(s):
“process the fingerprint data from the
television”

Defendant’s Proposal
Function(s):
’356 (claim 1): “process the
fingerprint data from the television”

“communicate the primary data from
the fingerprint data to any of a number
of devices with an access to an
identification data of at least one of the
television and an automatic content
identification service of the television”

Disputed Term
“a content
identification
server to . . . ”

’356 (claims 13, 18): “process the
fingerprint data from at least one of
the television and the mobile device”

“process the fingerprint data from at
least one of the television and the
mobile device”
“communicate the primary data from
the fingerprint data to any of a number
of devices with an access to an
identification data of at least one of the
television and an automatic content
identification service of the television”

a relevancymatching server
a relevancy
matching server
configured to
the relevancymatching server
is configured to

Corresponding Structure(s), Act(s),
or Material(s):
U.S. Patent No. 9,386,356 at Figs. 10–
11 (item 1006), 12, 13–26 (items 1006,
1500, 1700, 1900); cols. 7:60–9:64,
12:21–13:66, 19:28–21:37, 22:53–
26:53, 27:12–29:38, 30:3–32:51,
33:25–41, 34:33–51, 35:64–38:64,
42:32–51:59, and equivalents thereof.
Claimed Function(s):
“match a targeted data with a primary
data based on a relevancy factor
associated with the user”
“match the targeted data with the
primary data in a manner such that the
relevancy- matching server is
configured to search a storage for at
least one of a matching item and a
related item based on the relevancy
factor comprising at least one of a

Page 34 of 70

’356 (claims 1, 13, 18):
“communicate the primary data from
the fingerprint data to any of a
number of devices with an access to
an identification data of at least one
of the television and an automatic
content identification service of the
television”
Corresponding Structure that
performs the Claimed Function(s):
None. Indefinite for failure to
disclose sufficient corresponding
algorithm(s) and/or other structure for
performing the claimed function(s).

Claimed Function(s):
’668 (claims 1, 6): “match a targeted
data with a primary data based on a
relevancy factor associated with the
user”
’668 (claims 1, 6, 21, 26) &'356
(claim 14): “search a storage for at
least one of a matching item and a
related item based on the relevancy
factor comprising at least one of a
category of the primary data, a

a relevancymatching server
comprising a

category of the primary data, a
behavioral history of the user, a
category of the sandboxed application,
and an other information associated
with the user”
render the targeted data to the user
through at least one of the networked
device and the sandboxed application
of the client device
“match primary data generated from
the fingerprint data with targeted data,
based on a relevancy factor”
“search a storage for the targeted data”
Corresponding Structure(s), Act(s),
or Material(s):
U.S. Patent No. 9,026,668 at Figs. 2
(item 200), 5–9 (item 200); cols.
11:53–12:20, 13:9–39, 18:30–19:56,
21:12–22:3, 22:41–52, 30:48–61,
31:10–28, 31:49–58, 50:50–51:3, and
equivalents thereof.
U.S. Patent No. 9,386,356 at Figs. 2
(item 200), 5–9 (item 200); cols. 7:49–
11:38, 12:46–14:31, 15:24–36, 19:21–
30, 19:62–20:3, 20:19–21:8, 22:3–9,
22:29–36, 22:54–61, 23:32–44, 27:64–
28:34, 29:39–53, 31:42–33:6, 35:28–
41, 38:65–39:11, 41:50–42:5, 43:53–
67, 44:44–45:18, 45:36–46:7, 46:43–
48:63, 49:65–50:42, 51:5–19, 51:39–
59, and equivalents thereof.

behavioral history of the user, a
category of the sandboxed
application, and an other information
associated with the user”
’668 (claims 11, 16): “match the
targeted data with the primary in a
manner such that the relevancymatching server is configured to
search a storage for at least one of a
item based on the relevancy factor
comprising at least one of a category
of the primary data, a behavioral
history of the user, a category of the
sandboxed application, and an other
information associated with the user”
’668 (claims 6, 16, 26): “render the
targeted data to the user through at
least one of the networked device and
the sandboxed application of the
client device”
’356 (claim 1): “match primary data
generated from the fingerprint data
with targeted data, based on a
relevancy factor”
Corresponding Structure that
performs the Claimed Function(s):
None. Indefinite for failure to
disclose sufficient corresponding
algorithm(s) and/or other structure for
performing the claimed function(s).

a) The Parties’ Positions
The parties dispute whether the “server” terms are subject to § 112 ¶ 6. Defendant contends
that the terms are means-plus-function terms governed by § 112(6) because they recite insufficient
structure to perform their recited functions. Defendant further contends that the terms are
indefinite because the specification does not recite algorithms that perform the recited functions.

Page 35 of 70

Specifically, Defendant contends that the “relevancy-matching server” is “configured to” perform
three functions and the “content identification server” is required “to” perform two functions in
the asserted claims. Docket No. 104 at 25. Defendant argues that none of the five recited functions
are standard to a traditional server, and the limitations do not recite sufficient structure for
performing them. Id. at 25 (citing Docket No. 104-1 at 9, 32-33). According to Defendant, the
claimed “relevancy-matching server” and “content identification server” do not “live up to their
inventor-given names absent sufficient structure that allows the claimed servers to perform the
claimed functions.” Docket No. 104 at 26.
Defendant also argues that Plaintiff does not address whether the “server configured to”
terms recite sufficient structure for performing the recited functions. Id. Defendant contends that
Plaintiff’s assertion that “server” necessarily recites sufficient structure does not withstand
scrutiny. Id. Defendant argues that the recited function is outside the set of standard functions for
a standard server, and that § 112(6) applies because there is insufficient recited structure for
performing the claimed function without additional programming. Id.
Defendant also argues that Plaintiff’s expert does not contend that “relevancy-matching
server” and “content identification server” are well-known industry terms. Id. at 27. Defendant
also contends that the portions of the specification cited by Plaintiff do not provide structure
sufficient to perform the claimed functions.

Id.

Defendant further argues that “[u]nder

Williamson’s second alternative test for means-plus function claiming, the relevant inquiry for
these terms is whether these ‘server configured to’ / ‘server to’ terms recite functions without also
reciting sufficient structure for performing those functions.” Id. at 28.
Plaintiff responds that the “content identification server” and “relevancy-matching server”
elements are not means-plus-function limitations because a person of ordinary skill in the art

Page 36 of 70

would understand these terms to refer to sufficiently-definite structures. Docket No. 99 at 24.
Plaintiff argues that Courts recognize that the term “server” recites sufficient structure. Id.
Plaintiff contends that “content identification server” and “relevancy-matching server” recite at
least as much structure as “server,” and are thus not means-plus-function limitations. Id. Plaintiff
further argues that the Asserted Patents confirm the terms relevancy-matching server and content
identification server recite sufficient structure. Id. (citing ’668 Patent at Abstract; 2:15–45, 3:29–
59, 11:53–12:20, 13:9–39, 18:31–39, 19:4–12, 19:28–56, 21:12–18, 21:38–45, 21:65–22:3,
22:51–52, 30:48–61, 31:10–28, 31:49–58, 50:45–51:3; Figures 2, 5–9, Claims 1, 6, 11, 16, 21–30
(relevancy-matching server); 7:61–8:5, 12:62–13:8, 22:53–25:60, 26:19–28:44, 29:9–31:58,
32:32–48, 33:40–58, 35:4–38:6, 41:41–51:3; Figures 10–26, Claims 8, 18, 28 (content
identification); Docket No. 99-13 at 15, 17). Plaintiff also contends that extrinsic evidence
confirms server is an understood term connoting structure consistent with the Asserted Patents.
Docket No. 99 at 25 (citing Docket No. 99-13 at 16; Docket No. 99-11 (the Dictionary of Computer
and Internet Terms (2013)), Docket No. 99-12 (Oxford Dictionary of Computing (6th ed., 2008))).
In the alternative, Plaintiff argues that if § 112, ¶ 6 is found to apply to the content
identification server or relevancy-matching server elements, the specifications recite substantial
structure for each of these terms corresponding to their claimed functions. Docket No. 99 at 26.
Plaintiff also argues that the steps described in the identified portions of the Asserted Patents can
constitute specific algorithms that could be implemented on a general-purpose computer if
required. Id.
Finally, Plaintiff argues that Defendant’s “alternative test” conflates the threshold question
of whether a term is a mean-plus-function term with the second question of identifying
corresponding structure only after a term is found to be a means-plus-function term. Docket No.

Page 37 of 70

109 at 7. Plaintiff contends that the second step of identifying corresponding structure only applies
if the disputed terms are first found to be means-plus-function terms. Id. at 7–8. According to
Plaintiff, Defendant’s argument that each recited function “is outside the set of standard functions
for a standard, ‘out-of-the-box’ server’ ” is the wrong analysis. Id. at 9. Plaintiff argues that the
threshold question is whether one of skill in the art would recognize that “content identification
server” recites sufficient structure. Plaintiff contends that both experts agree a server connotes
structure. Id. (citing Docket No. 99-13 at 15-18; Docket No. 104-1 at 10-11; Docket No. 109-1 at
5-11).
For the following reasons, the Court finds that the terms “content identification server”
and “relevancy-matching server” are not subject to subject to § 112 ¶ 6, and should be given
their plain and ordinary meaning.
b) Analysis
The term “content identification server” appears in claims 1, 13, and 18 of the ’356 Patent.
The Court finds that the term is used consistently in the claims and is intended to have the same
general meaning in each claim. The term “relevancy-matching server” appears in claims 1, 6, 11,
16, 21, and 26 of the ’668 Patent, and claims 1 and 14 of the ’356 Patent. The Court finds that the
term is used consistently in the claims and is intended to have the same general meaning in each
claim. The Court further finds that the terms are not subject to § 112 ¶ 6.
“It is well settled that ‘[a] claim limitation that actually uses the word ‘means’ invokes a
rebuttable presumption that § 112, [¶] 6 applies.’ ” Apex Inc. v. Raritan Comput., Inc., 325 F.3d
1364, 1371 (Fed. Cir. 2003) (quotation omitted). It is also equally understood that “a claim term
that does not use ‘means’ will trigger the rebuttable presumption that § 112, [¶] 6 does not apply.”
Id. (quotation omitted). The presumption against the application of § 112, ¶ 6 may be overcome

Page 38 of 70

if a party can “demonstrate[] that the claim term fails to ‘recite sufficiently definite structure’ or
else recites ‘function without reciting sufficient structure for performing that function.’ ”
Williamson, 792 F.3d 1339 (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)).
“In undertaking this analysis, we ask if the claim language, read in light of the specification, recites
sufficiently definite structure to avoid § 112, ¶ 6.” Robert Bosch, LLC v. Snap-On Inc., 769 F.3d
1094, 1099 (Fed. Cir. 2014) (citing Inventio AG v. Thyssenkrupp Elevator Ams. Corp., 649 F.3d
1350, 1357 (Fed. Cir. 2011)).
None of the claims recite the word “means.” Therefore, there is a rebuttable presumption
that § 112, ¶ 6 does not apply. Here, Defendant has failed to rebut the presumption because “the
words of the claim are understood by persons of ordinary skill in the art to have sufficiently definite
meaning as the name for structure.” Williamson, 792 F.3d at 1348. Specifically, the claims
themselves connote that the “relevancy-matching server” is structural by describing how the
“relevancy-matching server” operates within the claimed invention to achieve its objectives. For
instance, claim 1 of the ’668 Patent recites that the relevancy-matching server is configured to
match a targeted data with a primary data based on a relevancy factor associated with the user.
Claim 1 further recites that the relevancy-matching server is configured to match the targeted data
with the primary data in a manner such that the relevancy-matching server is configured to search
a storage for at least one of a matching item and a related item based on the relevancy factor
comprising at least one of a category of the primary data, a behavioral history of the user, a
category of the sandboxed application, and an other information associated with the user.
Likewise, claim 6 of the ’668 Patent recites that the relevancy-matching server is configured to
render the targeted data to the user through at least one of the networked device and the sandboxed
application of the client device.

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Moreover, claim 10 of the ’356 Patent recites that the relevancy-matching server includes
a processor, a memory communicatively coupled with the processor, and instructions stored in the
memory and executed using the processor. Claim 10 further recites that the relevancy-matching
server is configured to match primary data generated using a fingerprint data with targeted data,
based on a relevancy factor comprising at least one of a category of the primary data, a behavioral
history of a user, a category of a sandboxed application, and another information associated with
the user. The claim also recites that the relevancy-matching server is configured to search a storage
for the targeted data, and cause a rendering of the targeted data to the user through the sandboxed
application of the mobile device.
Therefore, the claims themselves connote sufficiently definite structure by describing how
the “relevancy-matching server” operates within the claimed invention to achieve its objectives.
See, e.g., Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1319-21 (Fed. Cir. 2004)
(finding “circuit [for performing a function]” to be sufficiently definite structure because the claim
recited the “objectives and operations” of the circuit); Apple Inc. v. Motorola, Inc., 757 F.3d 1286,
1295, 1301 (Fed. Cir. 2014) (finding “heuristic [for performing a function]” to be sufficiently
definite structure because the patent described the operation and objectives of the heuristic);
Collaborative Agreements, LLC v. Adobe Sys., No. 15-cv-03853-EMC, 2015 U.S. Dist. LEXIS
161809, at *11-*24 (N.D. Cal. Dec. 2, 2015) (determining “code segment [for performing a
function]” to be sufficiently definite structure because the claim described the operation of the
code segment); Finjan, Inc. v. Proofpoint, Inc., No. 13-cv-05808-HSG, 2015 U.S. Dist. LEXIS
162504, at *31-*32 (N.D. Cal. Dec. 3, 2015) (determining “processor [for performing a function]”
to be sufficiently definite structure because the claim described how the processor functions with
the other claim components).

Page 40 of 70

Similarly, the claims connote that the “content identification server” is structural by
describing how the “content identification server” operates within the claimed invention to achieve
its objectives. For instance, claim 1 of the ’356 Patent recites that the content identification server
is configured to process the fingerprint data from the television, and communicate the primary
data from the fingerprint data to any of a number of devices with an access to an identification
data of at least one of the television and an automatic content identification service of the
television. Therefore, the claims themselves connote sufficiently definite structure by describing
how the “content identification server” operates within the claimed invention to achieve its
objectives.
In addition to the claims, the specification states that the relevancy-matching server may
be “a computer hardware system dedicated to matching, using a processor and memory, a targeted
data 800 with the primary data 500 based on a relevancy factor associated with the user 902,” and
that the content identification server may be a “computer hardware system dedicated to identifying
a content of the media data 1004 and/or the other media data . . . using a processor and a memory.”
’668 Patent at 11:53–12:4, 12:62–66. The specification further states that the relevancy-matching
and the content identification servers may comprise “a computer, a plurality (e.g., at least two) of
computers, and/or a peer-to-peer network of computers.” Id. at 11:63–66, 24:55–57.
The specification also states that the relevancy-matching server is connected to the client
device, the networked device, and/or storage, and that storage may exist within the relevancymatching server. Id. at 11:45–12:4, 12:12–13, Figure 2. Likewise, the specification states that the
“content identification server” is connected to the client device and the networked device. Id. at
22:57-60. Therefore, the intrinsic evidence describes the structural nature of the servers, delineates
the components that the servers are connected to, describes how the server interacts with those

Page 41 of 70

components, and describes the objective and operation of the servers.

Inventio AG v.

Thyssenkrupp Elevator Ams. Corp., 649 F.3d 1350, 1359 (Fed. Cir. 2011) (“[T]his is not a case
where a claim nakedly recites a ‘device’ and the written description fails to place clear structural
limitations on the ‘device.’ ”)
Finally, the extrinsic evidence indicates that “server” is an understood term connoting
structure. For example, the Dictionary of Computer and Internet Terms defines server as “a
computer that provides services to another computer (called the client).” Docket No. 99-11 at 7.
The Oxford Dictionary of Computing defines server as “a system of a network that provides a
service to other systems connected to the network.” Docket No. 99-12 at 5. Accordingly, a person
of ordinary skill in the art would understand that “the claim language, read in light of the
specification, recites sufficiently definite structure to avoid § 112, ¶ 6.” Robert Bosch, LLC v.
Snap-On Inc., 769 F.3d 1094, 1099 (Fed. Cir. 2014). Although the presumption against § 112 ¶ 6
is no longer “strong,” it is still a presumption that Defendant must affirmatively overcome. Here,
Defendant has failed to rebut the presumption that § 112, ¶ 6 does not apply.
Defendant argues that Williamson created a “second alternative test for means-plus
function claiming.” Docket No. 104 at 28. The Court agrees that the test for determining whether
§ 112, ¶ 6 applies has been stated and restated in a number of ways, but disagrees that Williamson
created a new “second alternative test.” The Court in Williamson clearly stated that “[t]he standard
is whether the words of the claim are understood by persons of ordinary skill in the art to have a
sufficiently definite meaning as the name for structure.” Williamson v. Citrix Online, LLC, 792
F.3d 1339, 1349 (Fed. Cir. 2015). In other words, “[t]he correct inquiry, when ‘means’ is absent
from a limitation, is whether the limitation, read in light of the remaining claim language,
specification, prosecution history, and relevant extrinsic evidence, has sufficiently definite

Page 42 of 70

structure to a person of ordinary skill in the art.” Apple Inc. v. Motorola, Inc., 757 F.3d 1286,
1298 (Fed. Cir. 2014). As indicated above, the intrinsic and extrinsic evidence indicates that the
disputed “content identification server” and “relevancy-matching server” connote sufficiently
definite structure to a person of ordinary skill in the art, and are not subject to subject to § 112 ¶
6.
This is further confirmed by the fact that Defendant does not contend that the “pairing
server” is subject to subject to § 112 ¶ 6. Instead, Defendant originally argued that the “pairing
server” should be construed to mean a “server that enables a communication session between two
other devices.” Docket No. 104 at 17. Defendant has since agreed to a construction for “pairing
server,” but still maintains that the other “server” terms are subject to § 112 ¶ 6, and are indefinite
for failing to disclose sufficient structure. Defendant has not provided a persuasive reason why
“pairing server” connotes sufficient structure, but “content identification server” and “relevancymatching server” do not. The simple answer is that all of the “server” terms when “read in light
of the remaining claim language, specification, prosecution history, and relevant extrinsic
evidence, ha[ve] sufficiently definite structure to a person of ordinary skill in the art.” Apple Inc.
v. Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014).
Indeed, the specification explicitly states that “[t]he pairing server 300 may also be the
relevancy-matching server 200 and/or the intermediary server 700.” ’668 Patent at 13:38–39.
Similarly, the specification states that “[t]he content identification server 1006 may also be the
relevancy-matching server 200, the pairing server 300, and/or the intermediary server 700.” Id. at
24:57–60. Finally, in reaching its conclusion, the Court has considered the extrinsic evidence
submitted by the parties, and given it its proper weight in light of the intrinsic evidence.

Page 43 of 70

c) Court’s Construction
The terms “content identification server” and “relevancy-matching server” are not
subject to subject to § 112 ¶ 6, and will be given their plain and ordinary meaning.
5. “client device configured to” and “network device configured to”
Disputed Term
“a client
device
configured to:”
“the client
device
configured to”

Plaintiff’s Proposal
Function(s):
“automatically process an identification
data of at least one of the networked
device and the sandbox-reachable service
of the networked device from the
discovery module”
“automatically associate with the
networked device through a sandboxed
application of the client device
communicatively coupled to the sandboxreachable service based on the
identification data”
“process an embedded object from the
relevancy-matching server through the
sandboxed application”
“gather the primary data through at
least one of the embedded object and
the sandboxed application”
“communicate the primary data to the
relevancy- matching server through the
embedded object”
“constrain an executable environment in
a security sandbox”
“execute the sandboxed application in
the executable environment”
“automatically establish a
communication session between the
sandboxed application and the sandboxreachable service through at least one of a
cross-site scripting technique, an

Page 44 of 70

Defendant’s Proposal
Function(s):
’668 (claims 1, 21): “automatically
process an identification data of at
least one of the networked device and
the sandbox-reachable service of the
networked device from the discovery
module”
’668 (claims 1, 21): “automatically
associate with the networked device
through a sandboxed application of
the client device communicatively
coupled to the sandbox- reachable
service based on the identification
data”
’668 (claims 1, 21): “process an
embedded object from the relevancymatching server through the
sandboxed application”
’668 (claims 1, 21): “gather the
primary data through at least one of
the embedded object and the
sandboxed application”
’668 (claims 1, 21): “communicate
the primary data to the relevancymatching server through the
embedded object”
’668 (claims 1, 21): “constrain an
executable environment in a security
sandbox”

appended header, a same origin policy
exception, and an other mode of
bypassing a number of access controls of
the security sandbox”
Corresponding Structure(s), Act(s), or
Material(s):
U.S. Patent No. 9,026,668 at Figs. 1–11,
13–16 (item 100); cols. 5:48–7:48, 8:11–
9:42, 9:65–10:45, 11:3–52, 12:21–61,
13:9–66, 15:22–50, 16:1–38, 16:52–59,
17:39–23:2, 23:12–24:42, 32:14–31,
32:49–56, 33:13–26, 33:40–58, 37:1–16,
37:42–59, 38:21–44, 38:62–39:14,
39:38–46, 39:66–40:50, 50:45–51:3, and
equivalents thereof.

“a networked
device
configured to:”

Claimed Function(s):
“automatically announce a sandboxreachable service of the networked device
to a discovery module”

“the networked
device
“automatically announce the primary data
configured”
along with the sandbox-reachable service
of the networked device to the discovery
module”
Corresponding Structure(s), Act(s), or
Material(s):
U.S. Patent No. 9,026,668 at Figs. 1–8
(item 102), 10 (item102), 11 (items 102,
1106A, 1106B), 13 (item 102), 14(items
102, 1400A, 1400B), 15–19 (item 102),
22 (item102), 23 (items, 102, 1400A,
1400B), 26 (item 2600); cols. 1:48–67,
6:16–9:64, 11:3–11, 11:45–67, 12:21–
13:67, 14:9–23, 14:32–51, 14:66–15:67,
16:18–23, 19:13–37, 20:1–59, 21:1–64,
22:10–16, 22:62–23:29, 23:58–24:22,
24:61–25:12, 26:50–27:3, 32:58–66,
50:45–51:3, and equivalents thereof

Page 45 of 70

’668 (claims 1, 21): “execute the
sandboxed application in the
executable environment”
’668 (claims 1, 21): “automatically
establish a communication session
between the sandboxed application
and the sandbox reachable service
through at least one of a cross-site
scripting technique, an appended
header, a same origin policy
exception, and an other mode of
bypassing a number of access
controls the security sandbox”
Corresponding Structure that
performs the Claimed Function(s):
None. Indefinite for failure to
disclose sufficient corresponding
algorithm(s) and/or other structure for
performing the claimed function(s).
Claimed Function(s):
’668 (claims 1, 9, 21, 29):
“automatically announce a sandboxreachable service of the networked
device to a discovery module”
’668 (claims 9, 19, 29):
“automatically announce the primary
data along with the sandboxreachable service of the networked
device to the discovery module”
Corresponding Structure that
performs the Claimed Function(s):
None. Indefinite for failure to
disclose sufficient corresponding
algorithm(s) and/or other structure for
performing the claimed function(s).

a) The Parties’ Positions
The parties dispute whether the “device” terms are subject to § 112 ¶ 6. Defendant
contends that the terms are means-plus-function terms governed by § 112(6) because they recite
insufficient structure to perform their recited functions. Defendant further contends that the terms
are indefinite because the specification does not recite algorithms that perform the recited
functions. Specifically, Defendant argues that the limitations are defined in the claims by what
the “device’ does and not by what the “device” is. Docket No. 104 at 29. Defendant contends that
the claimed “devices” each represent a black box for performing the recited functions. Id.
Defendant further argues that portions of the specification provide some structure for “client
device” and “networked device,” but do not denote sufficiently definite structure for performing
all of the recited functions. Id. (citing ’668 Patent at 5:66–6:2; 6:16–22).
Defendant also argues that “network” and “client” before the term “device” do not provide
any “structural significance” for performing the recited functions.

Docket No. 104 at 30.

According to Defendant, neither these prefixes nor the written disclosure describe that interaction
“in a way that might inform the structural character of the limitation-in-question or otherwise
impart structure” to the “client device” or “network device” of the claims. Id. (citing Williamson,
792 F.3d at 1351).
Regarding the term “client device,” Plaintiff responds that the “client device” element is
not a means-plus-function element because a person of ordinary skill in the art would understand
the term to have sufficiently-definite structure. Docket. No. 99 at 21. Plaintiff contends that the
Asserted Patents describe the client device as hardware, and further describes what the client
device contains. Id. at 22 (citing ’668 Patent at 5:66–6:6, 9:65–67). Plaintiff further argues that
the Asserted Patents describe what the client device is connected to, and that the client device may
use executable code, may be on a mobile phone on a cellular network, and may have a Media
Page 46 of 70

Access Control (MAC) address. (Docket No. 99 at 22) (citing ’668 Patent at 5:54–6:15, 11:3–11,
11:45–12:4, 13:23–39, 19:28–56; 25:50–26:34, 18:40–57, 19:4–12, 21:5–11, 21:31–37, 23:30–
24:22, 39:2–7, 40:2–5, 40:45–48; Figures 1– 3, 7, 11).
Plaintiff also contends that the Asserted Patents provide structure when describing how the
client device performs functions. Docket No. 99 at 23 (citing ’668 Patent at 6:32–9:64). Plaintiff
also argues that the Asserted Patents describe the client device processing an embedded object,
and further describe an executable environment of the client device as a virtual machine, a jail, or
a scripting language interpreter that constrains applications. Docket No. 99 at 23 (citing ’668
Patent at 12:21–61, 9:65–10:58). Finally, Plaintiff contends that the extrinsic evidence further
confirms “client device” connotes structure. Docket No. 99 at 23 (citing Docket No. 99-11
(Dictionary of Computer and Internet Terms (11th ed., 2013)); Docket No. 99-13 at 14).
In the alternative, Plaintiff argues that if § 112, ¶ 6 is found to apply to the client device
element, the specifications recite substantial structure for each of these terms corresponding to
their claimed functions. Docket No. 99 at 23. Plaintiff also argues that the steps described in the
identified portions of the Asserted Patents constitute specific algorithms that could be
implemented on a general-purpose computer if required. Id. at 24.
Regarding “networked device,” Plaintiff responds that the “networked device” element is
not a means-plus-function element because a person of ordinary skill in the art would understand
the term to have sufficiently-definite structure. Id. at 26. Plaintiff contends that the Asserted
Patents describe the networked device as hardware, and further describes the networked device as
performing a number of sandbox-reachable services using a processor and a memory. Id. at 27.
(citing ’668 Patent at 6:16–22, 16:24–30). Plaintiff further argues that the Asserted Patents
describe what the networked device is connected to and that the networked device may render

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media data, have a hardware address (e.g., a MAC address), have a global unique identifier
(GUID), and communicate via a local area network (LAN). Docket No. 99 at 27 (citing ’668
Patent at 11:3–11, 11:45–12:4, 13:23–39, 19:28–56; 25:50–26:34.; Ex. A at 7:49–51, 13:51–67,
20:41–59, 21:1–4; Figures 1–3, 7, 11; Docket No. 99-13 at 18–20).
Plaintiff further argues that the Asserted Patents provide structure when describing how
the networked device performs its functions. Docket No. 99 at 27 (citing ’668 Patent at 6:32–
7:48). Finally, Plaintiff contends that the extrinsic evidence further confirms client device
connotes structure. Docket No. 99 at 23 (citing Docket No. 99-11 (Dictionary of Computer and
Internet Terms (11th ed., 2013)); Docket No. 99-13 at 19-20).
In the alternative, Plaintiff argues that if § 112, ¶ 6 is found to apply to the networked
device element, the Asserted Patents recite substantial structure for each of these terms
corresponding to their claimed functions. Docket No. 99 at 27-28. Plaintiff also argues that the
steps described in the identified portions of the Asserted Patents constitute specific algorithms that
could be implemented on a general-purpose computer if required. Id. at 28.
For the following reasons, the Court finds that the term “client device” should be construed
to mean “a computer, a smartphone, and/or another hardware that may be configured to
initiate contact with a server to make use of a resource,” and that the term “networked device”
should be construed to mean “a geolocation device, a hygrometer, a thermometer, a
barometer, an anemometer, a television, an audio device, a game console, a set top box, an
other computer, and/or an other hardware connected by a number of communications
channels that allow sharing of a number of resources and/or a number of information.”
b) Analysis
The term “client device” appears in claims 1 and 21 of the ’668 Patent. The Court finds

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that the term is used consistently in the claims and is intended to have the same general meaning
in each claim. The term “networked device” appears in claims 1, 9, 19, 21, and 29 of the ’668
Patent. The Court finds that the term is used consistently in the claims and is intended to have the
same general meaning in each claim. The Court further finds that the terms are not subject to §
112 ¶ 6.
“It is well settled that ‘[a] claim limitation that actually uses the word ‘means’ invokes a
rebuttable presumption that § 112, [¶] 6 applies.’” Apex Inc. v. Raritan Comput., Inc., 325 F.3d
1364, 1371 (Fed. Cir. 2003) (quotation omitted). It is also equally understood that “a claim term
that does not use ‘means’ will trigger the rebuttable presumption that § 112, [¶] 6 does not apply.”
Id. (quotation omitted). The presumption against the application of § 112, ¶ 6 may be overcome
if a party can “demonstrate[] that the claim term fails to ‘recite sufficiently definite structure’ or
else recites ‘function without reciting sufficient structure for performing that function.’”
Williamson, 792 F.3d 1339 (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)).
“In undertaking this analysis, we ask if the claim language, read in light of the specification, recites
sufficiently definite structure to avoid § 112, ¶ 6.” Robert Bosch, LLC v. Snap-On Inc., 769 F.3d
1094, 1099 (Fed. Cir. 2014) (citing Inventio AG v. Thyssenkrupp Elevator Ams. Corp., 649 F.3d
1350, 1357 (Fed. Cir. 2011)).
None of the claims recite the word “means.” Therefore, there is a rebuttable presumption
that § 112, ¶ 6 does not apply. Here, Defendant has failed to rebut the presumption. Although
“[g]eneric terms such as ‘mechanism,’ ‘element,’ ‘device,’ and other nonce words that reflect
nothing more than verbal constructs may be used in a claim in a manner that is tantamount to using
the word ‘means,’ ” Williamson at 1350 (quoting Abacus Software, 462 F.3d at 1354), the Court
finds that the claims of the ’668 Patent recite sufficiently definite structure given the context of

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the limitations in which the claim terms are found. Apple Inc. v. Motorola, Inc., 757 F.3d 1286,
1299 (Fed. Cir. 2014) (“Even if a patentee elects to use a ‘generic’ claim term, such as ‘a nonce
word or a verbal construct,’ properly construing that term (in view of the specification, prosecution
history, etc.) may still provide sufficient structure such that the presumption against means-plusfunction claiming remains intact.”). Moreover, a modifier added to a nonce term (e.g., module,
element, device) can prevent the term from being construed as a means-plus-function element
because the modifier “further narrows the scope of those structures covered by the claim and
makes the term more definite.” Personalized Media Commc'ns, LLC v. Int'l Trade Comm'n, 161
F.3d 696, 705 (Fed. Cir. 1998).
Regarding the term “client device,” the claims themselves connote sufficiently definite
structure by describing how the “client device” operates within the claimed invention to achieve
its objectives. For instance, claim 1 of the ’668 Patent recites that the client device is configured
to “automatically process an identification data of at least one of the networked device and the
sandbox-reachable service of the networked device from the discovery module, automatically
associate with the networked device through a sandboxed application of the client device
communicatively coupled to the sandbox-reachable service based on the identification data,
process an embedded object from the relevancy-matching server through the sandboxed
application, gather the primary data through at least one of the embedded object and the sandboxed
application, and communicate the primary data to the relevancy-matching server through the
embedded object.” Claim 1 further recites that the client device is further configured to “constrain
an executable environment in a security sandbox, execute the sandboxed application in the
executable environment, and automatically establish a communication session between the
sandboxed application and the sandbox-reachable service through at least one of a cross-site

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scripting technique, an appended header, a same origin policy exception, and an other mode of
bypassing a number of access controls of the security sandbox.”
Therefore, the claims themselves connote sufficiently definite structure by describing how
the “client device” operates within the claimed invention to achieve its objectives. See, e.g., Linear
Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1319-21 (Fed. Cir. 2004) (finding “circuit [for
performing a function]” to be sufficiently definite structure because the claim recited the
“objectives and operations” of the circuit); Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1295, 1301
(Fed. Cir. 2014) (finding “heuristic [for performing a function]” to be sufficiently definite structure
because the patent described the operation and objectives of the heuristic); Collaborative
Agreements, LLC v. Adobe Sys., No. 15-cv-03853-EMC, 2015 U.S. Dist. LEXIS 161809, at *11*24 (N.D. Cal. Dec. 2, 2015) (determining “code segment [for performing a function]” to be
sufficiently definite structure because the claim described the operation of the code segment);
Finjan, Inc. v. Proofpoint, Inc., No. 13-cv-05808-HSG, 2015 U.S. Dist. LEXIS 162504, at *31*32 (N.D. Cal. Dec. 3, 2015) (determining “processor [for performing a function]” to be
sufficiently definite structure because the claim described how the processor functions with the
other claim components).
In addition, the specification states that the client device may be “a computer, a
smartphone, and/or another hardware that may be configured to initiate contact with a server to
make use of a resource.” ’668 Patent at 5:66–6:2. The specification further states that the client
device may include a memory, processor, security sandbox, executable environment, and
sandboxed application. See, e.g., id. at 6:2–6, 9:65–67, Figure 1. The specification further
indicates that the client device is connected to networked devices, a relevancy-matching server,
pairing server, intermediary server, and/or content identification server. ’668 Patent at 5:54–6:15,

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11:3–11, 11:45–12:4, 13:23–39, 19:28–56; 25:50–26:34; Figures. 1–3, 7, 11. The specification
also states that the client device may use executable code, may be a mobile phone on a cellular
network, and may have a Media Access Control (MAC) address. ’668 at 18:40–57, 19:4–12, 21:5–
11, 21:31–37, 23:30–24:22, 3, 40:2–5, 40:45–48. Accordingly, a person of ordinary skill in the
art would understand that “the claim language, read in light of the specification, recites sufficiently
definite structure to avoid § 112, ¶ 6.” Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1099
(Fed. Cir. 2014)
Moreover, the use of the word “client” in conjunction with the word “device” places an
additional functional constraint on a structure otherwise adequately defined. Personalized Media
Communs., L.L.C. v. ITC, 161 F.3d 696, 705 (Fed. Cir. 1998) (finding that the adjectival
qualification “digital” further “narrows the scope of those structures covered by the claim and
makes the term more definite.”), see also Williamson, 792 F.3d at 1351 (noting that “the presence
of modifiers can change the meaning of” an otherwise nonce term.). For example, the Dictionary
of Computer and Internet Terms defines “client” as “a computer that receives services from
another computer.” Docket No. 99-11 at 5 (Dictionary of Computer and Internet Terms (11th ed.,
2013)). This is consistent with the intrinsic evidence and the understanding of a person of ordinary
skill in the art.
Regarding the term “networked device,” the claims themselves connote sufficiently
definite structure by describing how the “networked device” operates within the claimed invention
to achieve its objectives. For instance, claim 1 of the ’668 Patent recites that the networked device
is configured to automatically announce a sandbox-reachable service of the networked device to a
discovery module. Likewise, claim 9 further recites that the networked device is configured to
automatically announce the primary data along with the sandbox-reachable service of the

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networked device to the discovery module.4
Therefore, the claims themselves connote sufficiently definite structure by describing how
the “networked device” operates within the claimed invention to achieve its objectives. See, e.g.,
Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1319-21 (Fed. Cir. 2004) (finding
“circuit [for performing a function]” to be sufficiently definite structure because the claim recited
the “objectives and operations” of the circuit); Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1295,
1301 (Fed. Cir. 2014) (finding “heuristic [for performing a function]” to be sufficiently definite
structure because the patent described the operation and objectives of the heuristic); Collaborative
Agreements, LLC v. Adobe Sys., No. 15-cv-03853-EMC, 2015 U.S. Dist. LEXIS 161809, at *11*24 (N.D. Cal. Dec. 2, 2015) (determining “code segment [for performing a function]” to be
sufficiently definite structure because the claim described the operation of the code segment);
Finjan, Inc. v. Proofpoint, Inc., No. 13-cv-05808-HSG, 2015 U.S. Dist. LEXIS 162504, at *31*32 (N.D. Cal. Dec. 3, 2015) (determining “processor [for performing a function]” to be
sufficiently definite structure because the claim described how the processor functions with the
other claim components).
In addition, the specification states that the networked device may be “a geolocation
device, a hygrometer, a thermometer, a barometer, an anemometer, a television, an audio device,
a game console, a set top box, an other computer, and/or an other hardware connected by a number
of communications channels that allow sharing of a number of resources and/or a number of
information.” ’668 Patent at 6:16–22. The specification further describes the networked device
as performing a number of sandbox reachable services using a processor and a memory. Id. at

The parties agree that “discovery module” means “software, hardware, firmware, and/or
integrated circuit to detect devices and/or services on a network.”
4

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16:24–30. The specification indicates that the networked device is connected to a client device, a
relevancy-matching server, pairing server, intermediary server, and/or content identification
server. Id. at 11:3–11, 11:45–12:4, 13:23–39, 19:28–56; 25:50–26:34; Figures 1–3, 7, and 11.
The specification also states that the networked device may render media data, have a hardware
address (e.g., a MAC address), have a global unique identifier (GUID), and communicate via a
local area network (LAN). Id. at 7:49–51, 13:51–67, 20:41–59, 21:1–4.
Moreover, the use of the word “networked” in conjunction with the word “device” places
an additional functional constraint on a structure otherwise adequately defined. Personalized
Media Communs., L.L.C. v. ITC, 161 F.3d 696, 705 (Fed. Cir. 1998) (finding that “the adjectival
qualification “digital” further “narrows the scope of those structures covered by the claim and
makes the term more definite.”), see also Williamson, 792 F.3d at 1351 (noting that “the presence
of modifiers can change the meaning of” an otherwise nonce term.). Indeed, in support of its
construction for “communication session,” Defendant argues that “a principal device that shares a
communication session is called a ‘networked device,’ and the ‘Field Of Technology’ section of
explains that the Asserted Patents relate to the ‘technical field of networking.’ ” Docket No. 104
at 15 (emphasis in original). Likewise, the Dictionary of Computer and Internet Terms defines
“network” as “a set of computers connected together.” Docket No. 99-11 at 6 (Dictionary of
Computer and Internet Terms (11th ed., 2013)). This is consistent with intrinsic evidence and the
understanding of a person of ordinary skill in the art.
In summary, the claims at issue differ from those that simply recite a generic means or
mechanism, without further description in the remaining claim language or the specification. See
Inventio AG v. Thyssenkrupp Elevator Ams. Corp., 649 F.3d 1350, 1359 (Fed. Cir. 2011) (“[T]his
is not a case where a claim nakedly recites a ‘device’ and the written description fails to place

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clear structural limitations on the ‘device.’”). As indicated, the ’668 Patent recites a claim term
with a known meaning and also describes its objectives and operations in the claimed invention.
Defendant has failed to rebut the presumption because it has not established that “client device”
or “networked device” fails to connote sufficiently definite structure. Finally, in reaching its
conclusion, the Court has considered the extrinsic evidence submitted by the parties, and given it
its proper weight in light of the intrinsic evidence.
c) Court’s Construction
The Court construes the term “client device” to mean “a computer, a smartphone,
and/or another hardware that may be configured to initiate contact with a server to make
use of a resource.” The Court construes the term “networked device” to mean “a geolocation
device, a hygrometer, a thermometer, a barometer, an anemometer, a television, an audio
device, a game console, a set top box, an other computer, and/or an other hardware
connected by a number of communications channels that allow sharing of a number of
resources and/or a number of information.”
6. “the processor is configured to match a targeted data with a primary
data based on a relevancy factor associated with a user”
Disputed Term
“the processor is
configured to match a
targeted data with a
primary data based on a
relevancy factor
associated with a user”

Plaintiff’s Proposal
Claimed Functions:
“match a targeted data with a
primary data based on a
relevancy factor associated with
a user”
Corresponding Structure(s),
Act(s), or Material(s):
U.S. Patent No. 9,026,668 at
Fig. 1; 5:66–6:15, 9:65–11:2,
11:53–12:4, 12:62–13:8, 13:29–
39, 19:38–56, 25:32–49, 25:61–
26:10, 30:48–61, 31:10–28,
31:49–58, 50:50–51:3, and
equivalents thereof.

Page 55 of 70

Defendant’s Proposal
Claimed Function:
’668 (claim 21): “match a
targeted data with a primary
data based on a relevancy
factor associated with a user”
Corresponding Structure
that performs the Claimed
Function(s):
None. Indefinite for failure to
disclose sufficient
corresponding algorithm(s)
and/or other structure for
performing the claimed
function.

a) The Parties’ Positions
The parties dispute whether “processor is configured to” is subject to § 112 ¶ 6. Defendant
contends that the term is a means-plus-function terms governed by § 112(6) because it recites
insufficient structure to perform the recited function.” Defendant further contends that the term is
indefinite because the specification does not recite an algorithm that performs the recited function.
Defendant argues that a person of ordinary skill in the art would understand that the recited general
purpose processor requires special programming to perform the recited functions. Docket No. 104
at 31. Defendant further argues that Courts have concluded that a “processor” that is “configured
to” perform a function recites a function without reciting structure, and is subject to § 112(6). Id
(citing Personal Audio, LLC v. Apple, Inc., 2011 WL 11757163, at *21-22 (E.D. Tex. Jan. 30,
2011) (Clark, J.); St. Isidore Research, LLC v. Comerica Inc., 2016 WL 4988246 (E.D. Tex. Sept.
19, 2016) (Payne, M.J.)). According to Defendant, this limitation should similarly be construed
as a means-plus-function term because a processor may only perform this function with specialized
programming. Docket No. 104 at 32.
Plaintiff responds that the “processor” element is not a means-plus-function element
because a person of ordinary skill in the art would understand the term to have sufficiently-definite
structure. Docket No. 99 at 34. Plaintiff argues that where a processor is located and how it
interacts with other components is sufficient structure to avoid § 112, ¶ 6. Id. According to
Plaintiff, claim 21 of the ’668 Patent describes the processor as part of a server and coupled to
memory. Id. at 34-35. Plaintiff also contends that the specifications describe the processor as a
part of a computer system. Id. at 35 (’668 Patent at 5:66–6:15, 9:65–11:2, 11:53–12:4, 12:62–
13:8, 13:29–39, 19:38–56, 25:32–49, 25:61–26:10, 30:48–61, 31:10–28, 31:49–58, 50:50–51:3,
Figure 1; Docket No. 99-13 at 27-28).
In the alternative, Plaintiff argues that if § 112, ¶ 6 is found to apply to the processor
Page 56 of 70

element, the Asserted Patents recite structure corresponding to the claimed functions. Docket No.
99 at 35. Plaintiff also argues that the steps described in the identified portions of the Asserted
Patents constitute specific algorithms that could be implemented on a general-purpose computer
if required. Id.
For the following reasons, the Court finds that the phrase “processor is configured to” is
not subject to subject to § 112 ¶ 6, and should be given its plain and ordinary meaning.
b) Analysis
The phrase “processor is configured to” appears in claim 21 of the ’668 Patent. The Court
finds that the term is not subject to § 112 ¶ 6. Claim 21 does not recite the word “means.”
Moreover, the claim itself connotes that the term “processor is configured to” is structural by
describing how it is included in the “relevancy-matching server,” and how it is “communicatively
coupled” to a memory. Claim 21 of the 668 Patent recites “[a] relevancy-matching server
comprising: a processor; and a memory communicatively coupled to the processor.” Claim 21
further recites how the processor enables the “relevancy-matching server” to operate within the
claimed invention to achieve its objectives. Indeed, claim 21 of the ’668 Patent recites that the
processor of the relevancy-matching server is configured to match a targeted data with a primary
data based on a relevancy factor associated with the user.
Claim 21 further recites that the relevancy-matching server is configured to match the
targeted data with the primary data in a manner such that the relevancy-matching server is
configured to search a storage for at least one of a matching item and a related item based on the
relevancy factor comprising at least one of a category of the primary data, a behavioral history of
the user, a category of the sandboxed application, and an other information associated with the
user.

Thus, the claim itself connotes sufficiently definite structure by describing how the

Page 57 of 70

“processor is configured to” operate within the claimed invention to achieve its objectives.
In addition, the specification states that the processor may be “a central processing unit
(CPU), a microprocessor, an integrated circuit such as an application-specific integrated circuit
(ASIC), a hardwired electronic logic circuit, a discrete element circuit, a programmable logic
device such as a field-programmable gate array (FPGA), and/or another part of a computer system
that carries out the instructions of a program.” ’668 Patent at 10:34–45. The specification further
states that “the relevancy-matching server 200 may be a computer hardware system dedicated to
matching, using a processor and a memory, a targeted data 800 with the primary data 500 based
on a relevancy factor associated with the user 902.” Id. at 11:55–60. Like the claims, the
specification connotes sufficiently definite structure by describing how the processor operates
within the claimed invention to achieve its objectives. Accordingly, a person of ordinary skill in
the art would understand that “the claim language, read in light of the specification, recites
sufficiently definite structure to avoid § 112, ¶ 6.” Robert Bosch, LLC v. Snap-On Inc., 769 F.3d
1094, 1099 (Fed. Cir. 2014). Defendant has failed to rebut the presumption because it has not
established that “processor is configured to” fails to connote sufficient structure. Finally, in
reaching its conclusion, the Court has considered the extrinsic evidence submitted by the parties,
and given it its proper weight in light of the intrinsic evidence.
c) Court’s Construction
The term “processor is configured” is not subject to subject to § 112 ¶ 6, and will be given
its plain and ordinary meaning.
7. “instructions stored in the memory and executed using the processor
configured to”
Disputed Term
“instructions
stored in the

Plaintiff’s Proposal
Claimed Function(s):

Page 58 of 70

Defendant’s Proposal
Claimed Function(s):

“match primary data generated
using a fingerprint data with
targeted data, based on a relevancy
factor comprising at least one of a
category of the primary data, a
“a set of
behavioral history of a user, a
instructions when
category of a sandboxed
executed through a application, and another
machine using a
information associated with the
processor and a
user”
memory to
comprise the
“search a storage for the targeted
operations of:”
data”
memory and
executed using the
processor
configured to”

“match the targeted data with the
primary data in a manner such that
the relevancy- matching server is
to search the storage for at least
one of a matching item and a
related item based on the relevancy
factor”
“matching primary data generated
from a fingerprint data with
targeted data, based on a relevancy
factor and to search a storage for
the targeted data using the
processor communicatively
coupled with the memory”
“matching the targeted data with
the primary data in a manner such
that the relevancy-matching server
is to search the storage for at least
one of a matching item and a
related item based on the relevancy
factor comprising at least one of a
category of the primary data, a
behavioral history of a user, a
category of a sandboxed
application, and an other
information associated with the
user”
Corresponding Structure(s),
Act(s), or Material(s):

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’356 (claims 10, 11, 18, 19):
“match primary data generated
using a fingerprint data with
targeted data, based on a relevancy
factor comprising at least one of a
category of the primary data, a
behavioral history of a user, a
category of a sandboxed
application, and another
information associated with the
user”
’356 (claims 10, 11, 18, 19):
“search a storage for the targeted
data”
’356 (claim 11, 19): “match the
targeted data with the primary data
in a manner such that the
relevancy-matching server is to
search the storage for at least one
of a matching item and a related
item based on the relevancy factor”
’356 (claim 14): “matching primary
data generated from a fingerprint
data with targeted data, based on a
relevancy factor and to search a
storage for the targeted data using
the processor communicatively
coupled with the memory”
’356 (claim 14): “matching the
targeted data with the primary data
in a manner such that the
relevancy-matching server is to
search the storage for at least one
of a matching item and a related
item based on the relevancy factor
comprising at least one of a
category of the primary data, a
behavioral history of a user, a
category of a sandboxed
application, and an other
information associated with the
user”

U.S. Patent No. 9,386,356 at Fig.
1; cols. 7:49–11:38, 12:46–14:31,
15:24–3619:21–30, 19:62–20:3,
20:19–21:8, 22:3–9, 22:29–36,
22:54–61, 23:32–44, 27:64–28:34,
29:39–53, 31:42–33:6, 35:28–41,
38:65–39:11, 41:50–42:5, 43:53–
67, 44:44–45:18, 45:36–46:7,
46:43–48:63, 49:65–50:42, 51:5–
19, 51:39–59, and equivalents
thereof.

Corresponding Structure that
performs the Claimed
Function(s):
None. Indefinite for failure to
disclose sufficient corresponding
algorithm(s) and/or other structure
for performing the claimed
function(s).

a) The Parties’ Positions
The parties dispute whether the “instructions” terms are subject to § 112 ¶ 6. Defendant
contends that the terms are means-plus-function terms governed by § 112(6) because they recite
insufficient structure to perform the recited function.” Defendant further contends that the term is
indefinite because the specification does not recite an algorithm that performs the recited function.
Specifically, Defendant argues that neither the claims nor the specification provide any description
of how the “output” of the generic “instructions . . . configured to” limitation may be achieved.
Docket No. 104 at 33 (citing Docket No. 104-1 at 95–131). Defendant further argues that Plaintiff
cites no authority that supports its argument that mere disclosure of a function constitutes
“sufficient structure for performing that function,” as required by Williamson to avoid § 112(6).
Docket No. 104 at 33. According to Defendant, Plaintiff has not identified any disclosure in the
’356 Patent that describes how the “instructions configured for” operates within the claimed
invention. Id. at 34.
Plaintiff responds that the “instructions stored in memory and executed using the
processor” element is not a means-plus-function element because a person of ordinary skill in the
art would understand the term to have sufficiently-definite structure. Docket No. 99 at 28-29.
Plaintiff argues that the claims of the Asserted Patents describe how the instructions operate within
the claimed invention to achieve its objectives. Id. (citing ’356 Patent at claim 10). Plaintiff

Page 60 of 70

further argues that the Asserted Patents provide further structure when describing the processor
and memory. Docket No. 99 at 30 (citing Docket No. 99-13 at 22–23; ’356 Patent at 11:27–38).
Plaintiff also contends that the Asserted Patents confirm that the “instructions stored in the
memory and executed using the processor” element recites sufficient structure. Docket No. 99 at
30) (citing ’356 Patent at 4:39–60, 7:49–11:38, 12:46–13:12, 13:33–14:8, 14:21–31, 15:24–36,
20:29–21:8, 27:64–28:34, 29:39–53, 31:42–33:6, 35:28–41, 38:65–39:11, 41:50–42:5, 43:53–67,
44:44–45:18, 45:36–46:7, 46:43–48:63, 49:65–50:42, 51:5–19, 51:39–59; Figure 1; Claims 1, 3,
10, 11, 14, 18, 19; Docket No. 99-13 at 22-23).
Plaintiff also argues that claim 14 of the ’356 Patent is a method claim that requires stepplus-function analysis, including a determination of whether the alleged steps provide guidance
on how to perform the steps. Docket No. 99 at 30. According to Plaintiff, a claim element that
merely describes the result of a step is likely a step-plus-function element, where elements
including acts describing how to accomplish a function are not step-plus-function elements. Id.
Plaintiff argues that claim 14 is not a step-plus-function claim because it recites acts. Id. at 31
(citing Docket No. 99-13 at 22).
In the alternative, Plaintiff argues that if § 112, ¶ 6 is found to apply to “instructions stored
in the memory and executed using the processor” element, the Asserted Patents recite structure
corresponding to the claimed functions. Docket No. 99 at 31. Plaintiff also argues that the steps
described in the identified portions of the Asserted Patents constitute specific algorithms that could
be implemented on a general-purpose computer if required. Id.
For the following reasons, the Court finds that the phrases “instructions stored in the
memory and executed using the processor configured to” and “a set of instructions when
executed through a machine using a processor and a memory to comprise the operations of:”

Page 61 of 70

are not subject to subject to § 112 ¶ 6, and should be given their plain and ordinary meaning.
b) Analysis
The phrase “instructions stored in the memory and executed using the processor configured
to” appears in claim 10, 11, 18, and 19 of the ’356 Patent. The Court finds that the phrase is used
consistently in the claims and is intended to have the same general meaning in each claim. The
phrase “a set of instructions when executed through a machine using a processor and a memory to
comprise the operations of” appears in claim 14 of the ’356 Patent. The Court further finds that
the phrases are not subject to § 112 ¶ 6.
None of the claims recite the word “means.” Moreover, the claims themselves describe
how the instructions operate within the claimed invention to achieve its objectives. For example,
claims 10 and 18 of the 356 Patent recites that the instructions are configured to match primary
data generated using a fingerprint data with targeted data, based on a relevancy factor. Claims 10
and 18 further recite that the instructions are configured to search a storage for the targeted data.
Claims 11 and 19 of the ’356 Patent further recite that the instructions are configured to match the
targeted data with the primary data in a manner such that the relevancy-matching server is to search
the storage for at least one of a matching item and a related item based on the relevancy factor.
By reciting the objectives of the “instructions . . . configured to,” and how the code operates
within the context of the claimed invention, the claim language connotes sufficiently definite
structure to one of skill in the art. See, e.g., Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d
1311, 1319-21 (Fed. Cir. 2004) (finding “circuit [for performing a function]” to be sufficiently
definite structure because the claim recited the “objectives and operations” of the circuit); Apple
Inc. v. Motorola, Inc., 757 F.3d 1286, 1295, 1301 (Fed. Cir. 2014) (finding “heuristic [for
performing a function]” to be sufficiently definite structure because the patent described the

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operation and objectives of the heuristic); Collaborative Agreements, LLC v. Adobe Sys., No. 15cv-03853-EMC, 2015 U.S. Dist. LEXIS 161809, at *11-*24 (N.D. Cal. Dec. 2, 2015) (determining
“code segment [for performing a function]” to be sufficiently definite structure because the claim
described the operation of the code segment); Finjan, Inc. v. Proofpoint, Inc., No. 13-cv-05808HSG, 2015 U.S. Dist. LEXIS 162504, at *31-*32 (N.D. Cal. Dec. 3, 2015) (determining
“processor [for performing a function]” to be sufficiently definite structure because the claim
described how the processor functions with the other claim components).
Turning to the phrase “a set of instructions when executed through a machine using a
processor and a memory to comprise the operations of,” the Court notes that this phrase appears
in claim 14 of the ’356 Patent. Claim 14 is a method claim, which requires step-plus-function
analysis. This includes making a determination of whether the alleged steps provide guidance on
how to perform the steps. See O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 1582–83 (Fed. Cir. 1997).
Specifically, “[i]f a claim element recites only an underlying function without acts for performing
it, then § 112, P 6 applies even without express step-plus-function language.” Seal-Flex, Inc. v.
Athletic Track & Court Constr., 172 F.3d 836, 850 (Fed. Cir. 1999). On the other hand, elements
including acts describing how the function is accomplished are not step-plus-function elements.
Id. at 849–50.
Claim 14 is not a step-plus-function claim because it recites acts describing how the
function is accomplished. Specifically, the claimed instructions stored in the memory and
executed using the processor perform the acts of “matching primary data . . . with targeted data,
based on a relevancy factor,” “search a storage for the targeted data,” and “matching the targeted
data with the primary data in a manner such that the relevancy-matching server is to search the
storage for at least one of a matching item and a related item based on the relevancy factor . . . .”

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Accordingly, the Court finds that the phrase is not governed by 35 U.S.C. § 112, ¶ 6, and needs no
further construction. Finally, in reaching its conclusion, the Court has considered the extrinsic
evidence submitted by the parties, and given it its proper weight in light of the intrinsic evidence.
c) Court’s Construction
The phrases “instructions stored in the memory and executed using the processor
configured to” and “a set of instructions when executed through a machine using a processor
and a memory to comprise the operations of:” are not subject to subject to § 112 ¶ 6, and will
be given their plain and ordinary meaning.
8. “the sandboxed application is configured to gather the primary data
from the networked device through the communication session” / “the
embedded object is configured to gather the primary data from the
networked device through the communication session”
Disputed Term
“the sandboxed
application is configured
to gather the primary data
from the networked
device through the
communication session”

Plaintiff’s Proposal
Claimed Function(s):
“gather the primary data from
the networked device through
the communication session”
Corresponding Structure(s),
Act(s), or Material(s):
U.S. Patent No. 9,026,668 at
Figs. 2, 5–8; Figs. 1–8; 3:19–28,
5:66–6:15, 7:61–10:33, 10:52–
58, 12:21–13:22, 14:52–15:11,
16:1–18:30, 18:58–19:3, 19:13–
27, 20:60–67, 23:12–29, 24:5–
42, 37:42–59, 40:6–31, 50:50–
51:3, and equivalents thereof.

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Defendant’s Proposal
Claimed Function:
’668 (claims 4, 14, 24): “gather
the primary data from the
networked device through the
communication session”
Corresponding Structure
that performs the Claimed
Function:
None. Indefinite for failure to
disclose sufficient
corresponding algorithm(s)
and/or other structure for
performing the claimed
function.

“the embedded object is
configured to gather the
primary data from the
networked device through
the communication
session”

Claimed Function(s):
“gather the primary data from
the networked device through
the communication session”
Corresponding Structure(s),
Act(s), or Material(s):
U.S. Patent No. 9,026,668 at
Figs. 1, 2 (item 204), 5
(item502), 6 (item 600), 7
(item706), 8 (item 204); cols.
6:32–9:64, 10:59–11:52, 12:21–
13:22, 14:66–17:65, 18:10–
21:45, 27:24–40, 38:21–44,
40:32–50, 40:59–41:14, and
equivalents thereof.

Claimed Function:
’668 (claims 4, 14, 24): “gather
the primary data from the
networked device through the
communication session”
Corresponding Structure
that performs the Claimed
Function:
None. Indefinite for failure to
disclose sufficient
corresponding algorithm(s)
and/or other structure for
performing the claimed
function.

a) The Parties’ Positions
The parties dispute whether the term “sandboxed application is configured to” and the term
“embedded object is configured to” are subject to § 112 ¶ 6. Defendant contends that the terms
are means-plus-function terms governed by § 112(6) because they recite insufficient structure to
perform their recited functions. Defendant further contends that the terms are indefinite because
the specification does not recite algorithms that perform the recited functions. Specifically,
Defendant argues that neither the sandboxed environment in which an application is executed nor
“executable code” connotes any structure to the software or application itself. Docket No. 104 at
35 (citing Docket No. 104-1 at 131–153). Defendant contends that sufficient structure cannot be
found by repeating the function of this limitation or other limitations. Docket No. 104 at 35.
Regarding the “embedded object” phrase, Plaintiff responds that the “embedded object”
element is not a means-plus-function element because a person of ordinary skill in the art would
understand the term to have sufficiently-definite structure. Docket No. 99 at 32. Plaintiff argues
that the Asserted Patents describe an embedded object as a script, image, player, iframe, or other
external media included in the sandboxed application. Id. (citing ’668 Patent at 12:22–25, 12:31–

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41, 12:42–61; Figure 6; Claims 14, 24). According to Plaintiff, the Asserted Patents confirm that
the term embedded object recites sufficient structure. (Docket No. 99 at 32) (citing ’668 Patent at
2:31–45, 3:19–28, 11:45–52, 12:21–41, 13:9–22, 15:32–50, 18:58–19:3, 20:60–67, 21:38–45,
27:24–40, 38:21–44, 40:32–50, 40:59–41:14; Figures 2, 5, 8; Claims 1, 3, 4, 11, 13, 14, 21, 23,
24; Docket No. 99-13 at 24-25). Plaintiff further argues that the extrinsic evidence also supports
the structure of embedded object in the specifications and as understood by a person of ordinary
skill in the art. Docket No. 99 at 32 (citing Docket No. 99-13 at 25-26).
Regarding the “sandboxed application” phrase, Plaintiff responds that the “sandboxed
application” element is not a means-plus-function element because a person of ordinary skill in
the art would understand the term to have sufficiently-definite structure. Docket No. 99 at 33.
Plaintiff argues that the Asserted Patents describe a sandboxed application as “an untested code,
an untrusted program (e.g., from an untrusted web page), and/or an other software that can be
executed with an appropriate runtime environment of the security sandbox.” Id. (citing ’668 Patent
at 10:52–58, 14:66–15:11, 6:2–6, 12:21–41; Figure 1).

Plaintiff further argues that the

specifications show that the term sandboxed application recites sufficient structure. Docket No.
99 at 33 (citing ’668 Patent at 3:19–28, 5:66–6:15, 7:61–10:33, 10:52–58, 12:21–13:22, 14:52–
15:11, 16:1–18:30, 18:58–19:3, 19:13–27, 20:60–67, 23:12–29, 24:5–42, 37:42–59, 40:6–31,
50:50–51:3; Figures 1–8; Docket No. 99-13 at 26–27). Plaintiff contends that the Asserted Patents
provide further structure when describing how the sandboxed application may gather primary data
from the networked device through the communication session. Docket No. 99 at 33. (citing ’668
Patent at 6:32–9:42; Docket No. 99-13 at 26-27).
In the alternative, Plaintiff argues that if § 112, ¶ 6 is found to apply to the embedded object
element, the Asserted Patents recite structure corresponding to the claimed functions. Docket No.

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99 at 32. Plaintiff also argues that the steps described in the identified portions of the Asserted
Patents constitute specific algorithms that could be implemented on a general-purpose computer
if required. Id. at 33.
Similarly, Plaintiff argues that if § 112, ¶ 6 is found to apply to the sandboxed application
element, the Asserted Patents recite structure corresponding to the claimed functions. Id. at 34.
Plaintiff also argues that the steps described in the identified portions of the Asserted Patents
constitute specific algorithms that could be implemented on a general-purpose computer if
required. Id.
For the following reasons, the Court finds that the phrases “the sandboxed application is
configured to gather the primary data from the networked device through the
communication session” and “the embedded object is configured to gather the primary data
from the networked device through the communication session” are not subject to subject to
§ 112 ¶ 6, and should be given their plain and ordinary meaning.
b) Analysis
The phrase “the sandboxed application is configured to gather the primary data from the
networked device through the communication session” appears in claims 4, 14, and 24 of the ’668
Patent. The Court finds that the phrase is used consistently in the claims and is intended to have
the same general meaning in each claim. The phrase “the embedded object is configured to gather
the primary data from the networked device through the communication session” appears in claims
4, 14, and 24 of the ’668 Patent. The Court finds that the phrase is used consistently in the claims
and is intended to have the same general meaning in each claim. The Court further finds that the
phrases are not subject to § 112 ¶ 6.
Regarding the “embedded object” phrase, the specification states that an embedded object

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may be a script, image, player, iframe, or other external media included in the sandboxed
application. ’668 Patent at 3:19-21, 12:22-25. In claims 4, 14, and 24, the embedded object is
either an executable code or a statically rendered object. This is illustrated in Figure 5 (Image
502) and Figure 6 (Executable Code 600) of the ’668 Patent. According to the specification, when
the embedded object comprises executable code, it may gather primary data through the
communication session between the client and networked devices by querying a number of
reachable devices for the data. Id. at 12:35–41. When the executable code is a script, the script
may use an extension or the pairing server to discover and query the networked device for the
primary data. Id. at 12:42–61. The specification provides examples, including one where the
script pulls a JavaScript code that performs an HTTP GET request to a URL. Id. at 12:42–61.
Thus, the intrinsic evidence connotes sufficiently definite structure by describing how the
“embedded object” operates within the claimed invention to achieve its objectives.
Indeed, the parties have agreed to a construction for the term “embedded object,” and the
claims recite that when the embedded object is an executable code, the embedded object is
configured to gather the primary data from the networked device through the communication
session.
Regarding the “sandbox application” element, the specification states that the sandboxed
application may be “an untested code, an untrusted program (e.g., from an untrusted web page),
and/or an other software that can be executed with an appropriate runtime environment of the
security sandbox.” Id. at 10:52–58. The specification also states that a web browser is another
example sandboxed application. Id. at 15:2–4. The specification further describes the sandboxed
application as existing within the security sandbox of the client device. Id. at 10:52-53, Figure 1.
The specification adds that the client device may execute the sandboxed application in the

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executable environment using the processor and the memory. Id. at 6:2–6. Furthermore, the
specification states that the embedded object may exist within the sandboxed application. Id. at
12:21–22. Thus, the intrinsic evidence connotes sufficiently definite structure by describing how
the “sandbox application” operates within the claimed invention to achieve its objectives. Indeed,
the parties have agreed to a construction for “sandbox application,” and the claims recite that when
the embedded object is a statically rendered object, the sandboxed application is configured to
gather the primary data from the networked device through the communication session. Finally,
in reaching its conclusion, the Court has considered the extrinsic evidence submitted by the parties,
and given it its proper weight in light of the intrinsic evidence.
c) Court’s Construction
The phrases “the sandboxed application is configured to gather the primary data from
the networked device through the communication session” and “the embedded object is
configured to gather the primary data from the networked device through the
communication session” are not subject to subject to § 112 ¶ 6, and will be given their plain and
ordinary meaning.
VI.

CONCLUSION

The Court adopts the above constructions. The parties are ordered to not refer, directly or
indirectly, to each other’s claim construction positions in the presence of the jury. Likewise, the
parties are ordered to refrain from mentioning any part of this opinion, other than the definitions
adopted by the Court, in the presence of the jury. However, the parties are reminded that the
testimony of any witness is bound by the Court’s reasoning in this order but any reference to claim
construction proceedings is limited to informing the jury of the definitions adopted by the Court.
It is SO ORDERED.

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So ORDERED and SIGNED this 29th day of March, 2017.

____________________________________
ROBERT W. SCHROEDER III
UNITED STATES DISTRICT JUDGE

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