Customedia Technologies, L.L.C. v. Dish Network Corporation et al

Filing 56

CLAIM CONSTRUCTION MEMORANDUM AND ORDER. Signed by Magistrate Judge Roy S. Payne on 2/13/2017. (ch, )

THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
CUSTOMEDIA TECHNOLOGIES, LLC,
v.
DISH NETWORKS CORP., et al.

§
§
§
§
§
§
§

CASE NO. 2:16-CV-129-JRG

CLAIM CONSTRUCTION
MEMORANDUM AND ORDER
Before the Court is Plaintiff Customedia Technologies, LLC’s (“Plaintiff’s”) Opening
Claim Construction Brief (Dkt. No. 36). Also before the Court are Defendants DISH Networks
Corporation and DISH Network LLC’s (collectively, “Defendants’”) response (Dkt. No. 42) and
Plaintiffs’ reply (Dkt. No. 45).
The Court held a claim construction hearing on February 2, 2017.

-1-

Table of Contents
I. BACKGROUND ....................................................................................................................... 4
II. LEGAL PRINCIPLES ........................................................................................................... 5
III. AGREED TERMS................................................................................................................. 9
IV. DISPUTED TERMS IN U.S. PATENTS NO. 8,719,090 AND 9,053,494 ......................... 9
A. “individually controlled and reserved advertising data storage section adapted
specifically for storing the specifically identified advertising data” / “individually
controlled and reserved advertising data storage section” .................................................... 9
B. “addressable and reserved storage space[s] for storing digital advertising data” /
“addressable and reserved storage space for storing the particular advertising data” ........ 18
C. “customer specific advertising data” ................................................................................... 19
D. “user suitability criteria” ..................................................................................................... 22
E. “automatically” .................................................................................................................... 25
F. “multimedia data products” ................................................................................................. 26
G. “digital multimedia data” .................................................................................................... 28
H. “the suitability criteria data is collected by at least one method selected from the group
consisting of . . .” ................................................................................................................ 29
I. “the particular advertising data is configured for presentation to an end user by a
method selected from the group consisting of . . .” ............................................................ 32
V. DISPUTED TERMS IN U.S. PATENTS NO. 7,840,437 AND 8,955,029 ........................ 34
J. “limited-use digital data” ..................................................................................................... 34
K. “data supplier” .................................................................................................................... 36
L. “notifying a data supplier of said simulated return”............................................................ 39
M. “enacting a simulated return of said rented data” .............................................................. 42
N. “performing a virtual return of the [limited-use / stored rented] digital data that has
been transferred to the portable playback device” .............................................................. 44
O. “by deleting or scrambling said data from said built in storage device or blocking
further access to said data” ................................................................................................. 47
P. “a storage device built in to the system and which is not removable from the system
. . .” ...................................................................................................................................... 49
Q. “a user interface operatively connected to the processing circuitry for programming
which processing functions are to be applied to the received data” ................................... 49
R. “a user interface operatively connected to said processing circuitry for programming
one or more processing functions to be performed by said processing circuitry” /
“a user interface operatively connected to the processing circuitry for programming the
at least one processing function” ........................................................................................ 52
-2-

S. “portable playback device” .................................................................................................. 53
T. “processing circuitry comprising software . . .” .................................................................. 57
VI. CONCLUSION .................................................................................................................... 62

-3-

I. BACKGROUND
Plaintiff brings suit alleging infringement of United States Patents No. 7,840,437 (“the
’437 Patent”), 8,719,090 (“the ’090 Patent”), 8,955,029 (“the ’029 Patent”), and 9,053,494 (“the
’494 Patent”) (collectively, the “patents-in-suit”). Plaintiff submits that the patents-in-suit relate
to managing data. (See Dkt. No. 36, at 4 & 17.)
The ’090 Patent, titled “System for Data Management and On-Demand Rental and
Purchase of Digital Data Products,” issued on May 6, 2014, and bears an earliest priority date of
June 12, 1997. The ’494 Patent is a continuation of the ’090 Patent.
The ’437 Patent, titled “System for Data Management and On-Demand Rental and
Purchase of Digital Data Products,” issued on November 23, 2010, and bears an earliest priority
date of June 12, 1997. The ’029 Patent is a continuation of the ’437 Patent.
The Abstract of the ’090 Patent is representative and states:
A system for handling data and transactions involving data through the use of a
virtual transaction zone, which virtual transaction zone removes the dependency
of such transaction on the delivery medium of the product. The invention may
reside and operate on a variety of electronic devices such as televisions, VCRs,
DVDs, personal computers, WebTV, any other known electronic recorder/player,
or as a stand alone unit. The transaction zone also provides a mechanism for
combining mediums, data feeds, and manipulation of those feeds. The transaction
zone also provides a mechanism for controlling the content, delivery, and timing
of delivery of the end consumer’s product.
Shortly before the start of the February 2, 2017 hearing, the Court provided the parties
with preliminary constructions with the aim of focusing the parties’ arguments and facilitating
discussion. Those preliminary constructions are set forth below within the discussion for each
term.

-4-

II. LEGAL PRINCIPLES
It is understood that “[a] claim in a patent provides the metes and bounds of the right
which the patent confers on the patentee to exclude others from making, using or selling the
protected invention.” Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed.
Cir. 1999). Claim construction is clearly an issue of law for the court to decide. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 970–71 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370
(1996).
“In some cases, however, the district court will need to look beyond the patent’s intrinsic
evidence and to consult extrinsic evidence in order to understand, for example, the background
science or the meaning of a term in the relevant art during the relevant time period.” Teva
Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015) (citation omitted). “In cases
where those subsidiary facts are in dispute, courts will need to make subsidiary factual findings
about that extrinsic evidence. These are the ‘evidentiary underpinnings’ of claim construction
that we discussed in Markman, and this subsidiary factfinding must be reviewed for clear error
on appeal.” Id. (citing 517 U.S. 370).
To ascertain the meaning of claims, courts look to three primary sources: the claims, the
specification, and the prosecution history. Markman, 52 F.3d at 979. The specification must
contain a written description of the invention that enables one of ordinary skill in the art to make
and use the invention. Id. A patent’s claims must be read in view of the specification, of which
they are a part. Id. For claim construction purposes, the description may act as a sort of
dictionary, which explains the invention and may define terms used in the claims. Id. “One
purpose for examining the specification is to determine if the patentee has limited the scope of
the claims.” Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000).

-5-

Nonetheless, it is the function of the claims, not the specification, to set forth the limits of
the patentee’s invention. Otherwise, there would be no need for claims. SRI Int’l v. Matsushita
Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). The patentee is free to be his own
lexicographer, but any special definition given to a word must be clearly set forth in the
specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992).
Although the specification may indicate that certain embodiments are preferred, particular
embodiments appearing in the specification will not be read into the claims when the claim
language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc.,
34 F.3d 1048, 1054 (Fed. Cir. 1994).
This Court’s claim construction analysis is substantially guided by the Federal Circuit’s
decision in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips,
the court set forth several guideposts that courts should follow when construing claims. In
particular, the court reiterated that “the claims of a patent define the invention to which the
patentee is entitled the right to exclude.” 415 F.3d at 1312 (quoting Innova/Pure Water, Inc. v.
Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To that end, the words
used in a claim are generally given their ordinary and customary meaning. Id. The 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.” Id. at 1313. This principle of patent law flows naturally from the
recognition that inventors are usually persons who are skilled in the field of the invention and
that patents are addressed to, and intended to be read by, others skilled in the particular art. Id.
Despite the importance of claim terms, Phillips made clear that “the person of ordinary
skill in the art is deemed to read the claim term not only in the context of the particular claim in

-6-

which the disputed term appears, but in the context of the entire patent, including the
specification.” Id. Although the claims themselves may provide guidance as to the meaning of
particular terms, those terms are part of “a fully integrated written instrument.” Id. at 1315
(quoting Markman, 52 F.3d at 978). Thus, the Phillips court emphasized the specification as
being the primary basis for construing the claims. Id. at 1314–17. As the Supreme Court stated
long ago, “in case of doubt or ambiguity it is proper in all cases to refer back to the descriptive
portions of the specification to aid in solving the doubt or in ascertaining the true intent and
meaning of the language employed in the claims.” Bates v. Coe, 98 U.S. 31, 38 (1878). In
addressing the role of the specification, the Phillips court quoted with approval its earlier
observations from Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir.
1998):
Ultimately, the interpretation to be given a term can only be determined and
confirmed with a full understanding of what the inventors actually invented and
intended to envelop with the claim. The construction that stays true to the claim
language and most naturally aligns with the patent’s description of the invention
will be, in the end, the correct construction.
Phillips, 415 F.3d at 1316. Consequently, Phillips emphasized the important role the
specification plays in the claim construction process.
The prosecution history also continues to play an important role in claim interpretation.
Like the specification, the prosecution history helps to demonstrate how the inventor and the
United States Patent and Trademark Office (“PTO”) understood the patent. Id. at 1317. Because
the file history, however, “represents an ongoing negotiation between the PTO and the
applicant,” it may lack the clarity of the specification and thus be less useful in claim
construction proceedings. Id. Nevertheless, the prosecution history is intrinsic evidence that is
relevant to the determination of how the inventor understood the invention and whether the

-7-

inventor limited the invention during prosecution by narrowing the scope of the claims. Id.; see
Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (noting that
“a patentee’s statements during prosecution, whether relied on by the examiner or not, are
relevant to claim interpretation”).
Phillips rejected any claim construction approach that sacrificed the intrinsic record in
favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc court
condemned the suggestion made by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193
(Fed. Cir. 2002), that a court should discern the ordinary meaning of the claim terms (through
dictionaries or otherwise) before resorting to the specification for certain limited purposes.
Phillips, 415 F.3d at 1319–24. According to Phillips, reliance on dictionary definitions at the
expense of the specification had the effect of “focus[ing] the inquiry on the abstract meaning of
words rather than on the meaning of claim terms within the context of the patent.” Id. at 1321.
Phillips emphasized that the patent system is based on the proposition that the claims cover only
the invented subject matter. Id.
Phillips does not preclude all uses of dictionaries in claim construction proceedings.
Instead, the court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the
court emphasized that claim construction issues are not resolved by any magic formula. The
court did not impose any particular sequence of steps for a court to follow when it considers
disputed claim language. Id. at 1323–25. Rather, Phillips held that a court must attach the
appropriate weight to the intrinsic sources offered in support of a proposed claim construction,
bearing in mind the general rule that the claims measure the scope of the patent grant.

-8-

III. AGREED TERMS
In their briefing (see Dkt. No. 42, at 1 n.1), the parties set forth their agreement as to the
following terms in the patents-in-suit:
Term
“automatically”

Agreement
Plain meaning

(Claims 1, 5, and 6 of the ’090 Patent;
Claims 3 and 43 of the ’494 Patent)

“a storage device built in to the system and
which is not removable from the system . . .”

Plain meaning

(Claim 1 of the ’437 Patent)

IV. DISPUTED TERMS IN U.S. PATENTS NO. 8,719,090 AND 9,053,494
A. “individually controlled and reserved advertising data storage section adapted
specifically for storing the specifically identified advertising data” / “individually controlled
and reserved advertising data storage section”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“plain meaning”

“individually controlled data storage section
set aside just for storing specifically identified
advertising data”

(Dkt. No. 35, Ex. A, at 1; Dkt. No. 42, at 1; Dkt. No. 44, Ex. A, at 1–3.) The parties submit that
these terms appear in Claims 1, 4, and 8 of the ’090 Patent. (Dkt. No. 35, Ex. A, at 1; Dkt.
No. 44, Ex. A, at 1.)
Shortly before the start of the February 2, 2017 hearing, the Court provided the parties
with the following preliminary construction: “individually controlled data storage section set
aside just for storing the specifically identified advertising data.”

-9-

(1) The Parties’ Positions
Plaintiff argues that “no intrinsic evidence requires departing from the plain and ordinary
meaning of ‘reserved,’” and Plaintiff argues that Defendants’ proposal “is contrary to the explicit
prosecution history” because “applicant removed from a draft version of the claims the very
word ‘only’ that [Defendants] propose[] in effect to re-insert.” (Dkt. No. 36, at 6.) Plaintiff
urges that “[b]ecause Applicant and Examiner thoughtfully considered ‘only’ and Applicant
choose to remove it, [Defendants] cannot re-insert ‘only’ by using instead ‘set aside just for’
. . . .” (Id., at 7.) Plaintiff also argues that “there is no support in the specification that the
reserved space must be used exclusively for content.” (Id., at 9.)
Defendants respond that during prosecution the patentee “disclaimed the common use of
reserved storage sections and instead claimed specific storage sections ‘just for’ storing
advertising data . . . .” (Dkt. No. 42, at 1.) Defendants explain that “[b]ecause the Examiner
could not find written description support for ‘only,’ Applicant removed ‘only’ . . . but
maintained the ‘specifically for storing’ language . . . .” (Id., at 7.)
Plaintiff replies that Defendants are “attempting to limit the claim in a manner that was
expressly rejected by the examiner and abandoned by the applicant during prosecution.” (Dkt.
No. 45, at 1.) Plaintiff also urges that “the specification and prosecution history teach that the
claimed reserved storage space is memory allocated or reserved for advertising data, but that
memory is not a completely separate structure or used ‘only’ for that data.” (Id., at 2.) Finally,
Plaintiff proposes that if construction is found to be necessary, then Defendants’ proposal of “set
aside just for” should be replaced with “allocated.” (Id., at 3; see Dkt. No. 47, Notice of
Customedia’s Corrected P.R. 4-5(d) Joint Claim Construction Chart, Ex. B, at 1–3 & 10–12.)

- 10 -

At the February 2, 2017 hearing, Plaintiff added that “reserved” simply means having
control over what goes into the space that has been reserved.
(2) Analysis
Claim 1 of the ’090 Patent (from which Claims 4 and 8 depend) recites (emphasis added):
1. A data delivery system for providing automatic delivery of multimedia data
products from one or more multimedia data product providers, the system
comprising:
a remote account transaction server for providing multimedia data
products to an end user, at least one of the multimedia data products being
specifically identified advertising data; and
a programmable local receiver unit for interfacing with the remote account
transaction server to receive one or more of the multimedia data products and for
processing and automatically recording the multimedia data products, said
programmable local receiver unit including at least one individually controlled
and reserved advertising data storage section adapted specifically for storing the
specifically identified advertising data, said at least one advertising data storage
section being monitored and controlled by said remote account transaction server
and such that said specifically identified advertising data is delivered by said
remote account transaction server and stored in said at least one individually
controlled and reserved advertising data storage section.
The specification discloses:
. . . Programmable designation of advertising “sections” within VPR/DMS 30
internal storage areas. These permanent or programmable “sections”, “data
boxes” or “spaces” are monitored and controlled by both content providers (or
VPR/DMS 30 central data base) as well as by end users according to pre-set or
negotiable criteria. The designated advertising “sections” might be used for
delivering advertising feeds, which are processed and recorded by VPR/DMS 30
system for real-time or subsequent viewing by end user. These advertising data
feeds might be mass distributed or broadcast to VPR/DMS 30 customers, or might
be selectively distributed according to customer profiles, demographics, or other
criteria. Profile criteria can be established through analysis of customer activity
history from on-line monitoring. Alternatively, it may be developed from
customer information inquiries acquired directly through system interaction or
from outside customer profile data sources. Advertising “sections” or “spaces” or
“data boxes” may be reserved, rented, leased or purchased from end user, content
providers, broadcasters, cable/satellite distributor, or other data communications
companies administering the data products and services. For example, a wide
band, multi-media cable distributor may provide, lease or sell a cable “set top
box” containing the VPR/DMS system. This VPR/DMS 30 comprises a built-in
non-movable storage device 14 which has certain areas that are reserved and
- 11 -

controlled by the cable company. These areas are available for commercial sales
or leasing to others, who may include movie distributors, advertisers, data product
suppliers, video game suppliers, video magazine publishers, or video product
catalogue companies.
’090 Patent at 31:44–32:6.
During prosecution, the patentee repeatedly relied upon specific storage sections being
“reserved” for advertising data:
None of the cited prior art includes or suggests a system where specific storage
sections of the local receiver unit are designated as advertising storage sections
and are then reserved specifically for storage of advertising data. * * * In both
Logan et al. and Herz et al., all storage can be used for any type of data storage.
For example, there may be times when all storage is used for movie programming
leaving no storage left for advertising. In the aspect of applicant’s system where
specific advertising storage sections are provided, there is always storage
provided for advertising data. This is a significant and unobvious difference
between the prior art systems and applicant’s system.
(Dkt. No. 42, Ex. K, Nov. 2, 2007 Amendment, at 12 (emphasis added); see id., Ex. L, June 2,
2008 Request for Reconsideration After Final, at 11 (“dedicated advertising data storage
space”).)
Applicant’s claimed system requires having a memory for the data transmitted
from the head-end and having at least one advertising storage section in that
memory specifically reserved for advertising data transmitted from the head-end.
. . . It provides for specifically dedicating a section of the memory for storage of
advertising data as opposed to other programming data, regardless of whether or
not the other programming data may have a higher priority in some priority
scheme.
(Id., Ex. M, Dec. 9, 2008 Amendment, at 15 (emphasis added).)
In the present Claim 1, a programmable local receiver unit is required which
includes a memory divided into a plurality of individually controlled storage
sections. This memory and the individual controlled storage sections are
structural elements. The language “at least one of the plurality of individually
controlled storage sections being reserved as an advertising data storage section
specifically for storing advertising data” recites a structural limitation for the
receiver which requires that structurally the receiver reserves at least one of the
plurality of storage sections just for storing advertising data. This means that the
programmable local receiver unit is configured or structured to limit access to at
- 12 -

least one of the storage sections of the memory to just advertising data. One of
the storage sections is structurally set aside for advertising data.
(Id., Ex. B, June 17, 2009 Request for Reconsideration After Final, at 14 (emphasis added).)
The patentee then amended the limitation here at issue so as to recite that the section is
“adapted specifically for storing only the specifically identified advertising data.” (Id., Ex. O,
Oct. 21, 2009 Supplemental Amendment, at 14 (emphasis in original).) In response to a
subsequent rejection that the word “only” lacked support in the specification, the patentee cited
disclosure regarding “reserved” and cited dictionary definitions of “reserve” and “reserved.”
(See id., Ex. N, June 18, 2010 Response, at 16 (“to ‘reserve’ a memory space for advertising data
would mean to a person skilled in the art that such memory space is kept for only advertising
data and only for that advertising data for which the specific storage space is ‘reserved’”)
(emphasis omitted).)
The patentee ultimately removed the word “only” and instead relied upon the word
“reserved.” (See id., Ex. P, Jan. 3, 2011 Amendment, at 16–17; see also id. at 18.) Nonetheless,
the patentee continued to distinguish the “Logan” prior art reference because “the downloaded
data as taught by Logan is simply stored in a storage device in a random fashion or in whatever
memory locations are available” rather than in an “individually controlled and reserved storage
section.” (Id., at 18 (emphasis omitted); see id. (“At best, Logan, again, simply teaches
downloading data in a random fashion to memory and does not teach any monitoring or
controlling of such memory, let alone a reserved advertising data storage section as recited in
these claims.”).)
In a Notice of Allowability, the Examiner set forth a section titled “Interpretation of
Claim Language” and stated therein:

- 13 -

9. A reserved storage section has been defined in the instant application to mean
an allocation or assignment of a uniquely identified portion of computer memory
(spec. para. [0186] and Microsoft Press Computer Dictionary definition of
“storage location”). Reservation in this sense is analogous to reserving a certain
hotel room for an indefinite period of time or buying a resort apartment under a
time-share contract.
10. This is a case where the limits of language failed the inventor. “Reservation”
is not uncommonly used in the prior art to mean any allocation of memory space.
And although the inventor’s concept was known at the time of the invention
(para. 14 below), it was so uncommon as to not have acquired its own name.
Today the instant invention might be called a “static allocation” of memory, but
this term did not exist at the time of the invention (1999).
11. The examiner was perhaps slow to catch on, but eventually concluded that the
inventor met his burden for redefining the term reserved by disclosing “leased”
and “purchased” storage. Further support is provided by the disclosure that
sections are reserved for the use of individual family members (spec. para. [0084]
and [0173]) and for advertisers (spec para. [0179] and [0186]). This implies
complex scheduling that could be facilitated by making the allocation to uniquely
identified portions of computer memory.
(Dkt. No. 42, Ex. A, July 10, 2013 Notice of Allowability, at 3–4 (emphasis modified).) 1 The
Examiner thus found that the patentee used “reserved” in this context to refer to exclusive
allocation of a uniquely identified portion of storage. The above-reproduced disclosure in the
specification is likewise consistent with such a reading because it refers to “leasing” particular

1

(See also id., at 4, ¶ 14 (emphasis omitted)):
The following is an examiner’s statement of reasons for allowance: the closest
prior art, Herz et al. (US pat. 5,758,257, “Herz” hereafter) in view of Logan et al.
(US pat. 5,721,827, “Logan” hereafter) does not teach or suggest at least one data
storage section being reserved for advertising data storage. Marsh et al. (US
6,876,974 B1) teaches this limitation, literally as, a designated portion of the
storage device 206 having a predetermined memory capacity (e.g., 10 MB) which
is specifically reserved for storage of advertisements at the time the client system
software is installed. This is done to assure there is sufficient space for
advertising, to support the special email application taught by March [sic, Marsh]
et al. There is no basis upon which one of ordinary skill in the art would have
found it obvious, at the time of the invention, to add this specialized teaching to
those of Herz and Logan.
- 14 -

storage areas.” See ’090 Patent at 32:2–6. Also of note, the prosecution history includes e-mail
correspondence between the Examiner and the patentee in which the Examiner stated:
“Searching the claim is not easy because, as I explained in the reasons for allowance, the phrase,
‘[]reserved data storage section(s)’ is commonly used in the prior art to mean something far
broader than the instant inventor means.” (Dkt. No. 42, Ex. Q, Oct. 3, 2013 e-mail from
Champagne to Owens (p. 8 of 10 in Ex. Q) (emphasis added).) In the correspondence that
followed, the patentee did not challenge the Examiner’s interpretation of “reserved.” (See id.,
Ex. Q, at pp. 5–7 of 10.)
Defendants’ proposed construction does not improperly re-introduce a limitation of
“adapted specifically for storing only the specifically identified advertising data” because this
language required that the memory must be unusable for any other purpose. (Id., Ex. O, Oct. 21,
2009 Supplemental Amendment, at 14 (emphasis omitted).) That is, this language required that
the capability of the particular memory be limited to storing only advertising data. Defendants’
proposed construction, by contrast, is consistent with the patentee’s statements that “the receiver
reserves at least one of the plurality of storage sections just for storing advertising data.” (Id.,
Ex. B, June 17, 2009 Request for Reconsideration After Final, at 14 (emphasis added); see id.
(“the programmable local receiver unit is configured or structured to limit access to at least one
of the storage sections of the memory to just advertising data”).) Plaintiff’s reliance upon
ZiiLabs Inc. v. Samsung Electronics Co., for example, is therefore unpersuasive. See No. 2:14CV-203, 2015 WL 3955997, at *33 (E.D. Tex. June 25, 2015) (rejecting proposal of language
that had been added but then removed during prosecution).
Plaintiff has also argued that the reserved storage space is not “just for storing
specifically identified advertising data,” as Defendants have proposed, because the specification

- 15 -

discloses collecting customer profile data. See, e.g., ’090 Patent at 31:56–60 & 32:28–48.
Plaintiff has not shown, however, that such data must be stored in a “reserved advertising data
storage section” rather than in some other location. Thus, Plaintiff has not demonstrated any
inconsistency between Defendants’ proposal and the disclosures regarding customer profile data.
Moreover, to whatever extent this amounts to an argument as to what types of data are
“advertising data,” 2 any underlying dispute as to the scope of “advertising data” has not been
presented as a matter for claim construction as to these disputed terms.
On balance, the patentee’s consistent statements during prosecution should be given
effect such that the disputed terms refer to storage sections set aside just for storing advertising
data. See, e.g., Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1381 (Fed. Cir. 2011)
(“The patentee is bound by representations made and actions that were taken in order to obtain
the patent.”); Springs Window Fashions LP v. Novo Indus., L.P., 323 F.3d 989, 995 (Fed. Cir.
2003) (“The public notice function of a patent and its prosecution history requires that a patentee
be held to what he declares during the prosecution of his patent.”).
Plaintiff’s alternative suggestion of “allocated” rather than “set aside just for” (see Dkt.
No. 45, at 3) does not appear to give proper effect to the patentee’s above-discussed reliance,
during prosecution, upon exclusivity as to a specific storage area. Also, whereas Plaintiff argued
at the February 2, 2017 hearing that the storage is “reserved” for advertising data so long as an
advertiser has control over what is stored there, the disputed terms refer to “advertising data,” not
“advertiser’s data,” so the term “reserved” must be given effect with respect to “advertising
data.”

2

(See, e.g., Dkt. No. 45, at 2 (Plaintiff referring to “various types of advertising data like ad
queues, ads in any format, and ad statistics”).)
- 16 -

Further, Plaintiff appeared to argue at the February 2, 2017 hearing that whereas
advertising data can be stored only in a storage area that is “reserved” for advertising data, other
data can be stored anywhere, including in areas that are “reserved” for advertising data.
Plaintiff’s argument appears to turn the patentee’s consistent usage of “reserved” on its head by
restricting the availability of storage for advertising data rather than ensuring it. Such an
interpretation is inconsistent with the above-discussed intrinsic evidence and is therefore hereby
expressly rejected. Also, although Plaintiff argued at the February 2, 2017 hearing that
advertising data could merely be given priority for use of “reserved” storage areas, the patentee
distinguished mere prioritization when distinguishing the “Travaille” reference during
prosecution. (See Dkt. No. 42, Ex. M, Dec. 9, 2008 Amendment, at 15–16 (arguing that the
applicant’s “advertising storage section” “provides for specifically dedicating a section of the
memory for storage of advertising data as opposed to other programming data, regardless of
whether or not the other programming data may have a higher priority in some priority
scheme”).)
Nonetheless, to whatever extent Defendants are proposing that the “reserved” memory
must be on a physically separate device or on a physically contiguous portion of a storage
medium, no such limitation has been shown.
Finally, Plaintiff has argued that Defendants’ proposal of the same construction for all of
Claims 1, 4, and 8 is improper because Claims 4 and 8 of the ’090 Patent do not recite
“specifically identified” advertising data. The Court rejects Plaintiff’s argument as follows.
Claim 8 depends from Claim 5, which in turn depends from Claim 1. Further, Claim 8 itself
recites “specifically identified advertising data.” In a similar fashion, Claim 4 depends from
Claim 3, which in turn depends from Claim 1. Claim 4 recites “customer specific advertising

- 17 -

data,” and Claim 3 recites that “the specifically identified advertising data is customer specific
advertising data.” Defendants’ proposal of “specifically identified” is therefore appropriate as to
the disputed term in all of Claims 1, 4, and 8.
The Court therefore hereby construes “individually controlled and reserved
advertising data storage section adapted specifically for storing the specifically identified
advertising data” and “individually controlled and reserved advertising data storage
section” to mean “individually controlled data storage section set aside just for storing the
specifically identified advertising data.”
B. “addressable and reserved storage space[s] for storing digital advertising data” /
“addressable and reserved storage space for storing the particular advertising data”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“plain meaning”

“individually controlled data storage section
set aside just for storing specifically identified
advertising data”

(Dkt. No. 35, Ex. A, at 9; Dkt. No. 42, at 11; Dkt. No. 44, Ex. A, at 10–12.) The parties submit
that these terms appear in Claims 1, 19, and 33 of the ’494 Patent. (Dkt. No. 35, Ex. A, at 9;
Dkt. No. 44, Ex. A, at 10.)
Shortly before the start of the February 2, 2017 hearing, the Court provided the parties
with the following preliminary constructions: “addressable and reserved storage space[s] for
storing digital advertising data” means “data storage section set aside just for storing digital
advertising data”; and “addressable and reserved storage space for storing the particular
advertising data” means “data storage section set aside just for storing the particular advertising
data.”
In their briefing as well as at the February 2, 2017 hearing, the parties referred to their
arguments as to the “individually controlled and reserved advertising data storage section” terms,
- 18 -

which are addressed above. (See Dkt. No. 36, at 10; see also Dkt. No. 42, at 11; Dkt. No. 45,
at 1–3.)
The Court therefore reaches the same conclusions here as for the “individually controlled
and reserved advertising data storage section” terms addressed above. The Court accordingly
hereby construes the disputed terms as set forth in the following chart:
Term

Construction

“addressable and reserved storage space[s]
for storing digital advertising data”

“data storage section set aside just for
storing digital advertising data”

“addressable and reserved storage space
for storing the particular advertising data”

“data storage section set aside just for
storing the particular advertising data”

C. “customer specific advertising data”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“plain meaning”

“promotional content consisting of at least
two media types that is targeted for
consumption by a specific customer or end
user by a particular identifier or selection
code”

(Dkt. No. 35, Ex. A, at 4; Dkt. No. 42, at 11; Dkt. No. 44, Ex. A, at 3–6.) The parties submit that
this term appears in Claims 3–5, 17, and 23 of the ’090 Patent. (Dkt. No. 35, Ex. A, at 4; Dkt.
No. 44, Ex. A, at 3.)
Shortly before the start of the February 2, 2017 hearing, the Court provided the parties
with the following preliminary construction: “promotional content that is targeted for
consumption by a specific customer or a specific group of customers.”
(1) The Parties’ Positions
Plaintiff argues that Defendants’ proposal should be rejected because: (1) “[Defendants]
replace[] ‘advertising data’ with ‘promotional content,’ a phrase found nowhere in the patent”;
- 19 -

(2) Defendants’ proposal to limit “advertising data” to content “consisting of at least two media
types” is inconsistent with claim differentiation as to dependent Claims 98 and 102; and
(3) “[t]here is nothing in the specification or the claims requiring that ‘a particular identifier or
selection code’ be used to pair advertising data to customers.” (Dkt. No. 36, at 11–12.) Finally,
Plaintiff urges that “to the extent that [Defendants] argue[] that ‘customer specific’ is limited to
content created for a single customer, the specification offers no support for such a limitation.”
(Id., at 12.)
Defendants respond that “advertising data means the advertisements, not simply data
regarding the advertisement,” and “‘customer specific’ means that the advertising data is targeted
for consumption by a specific end user customer.” (Dkt. No. 42, at 12.)
Plaintiff replies by reiterating that “the specification discloses various types of
advertising data (both advertisements and data associated with advertising).” (Dkt. No. 45, at 4.)
At the February 2, 2017 hearing, Plaintiff argued that “customer specific advertising
data” may include suitability criteria and therefore is not limited to only the promotional content
itself.
(2) Analysis
Claim 3 of the ’090 Patent, for example, depends from Claim 1 and recites:
3. The system of claim 1, wherein the specifically identified advertising data is
customer specific advertising data and the customer specific advertising data is
recorded in raw form by said programmable local receiver unit and subsequently
processed or edited by a content filter according to preprogrammed user
suitability criteria.
Defendants’ proposal of “promotional content” properly clarifies that the phrase
“advertising data” in the disputed term does not refer merely to any data related to advertising
but rather refers to actual advertising content. This interpretation is consistent with the context

- 20 -

provided by surrounding claim language in above-reproduced Claim 3, which recites that the
data is “recorded in raw form” and “processed or edited by a content filter according to
preprogrammed user suitability criteria.” Also, the parties have cited the following statements
by the Examiner in a section titled “Interpretation of Claim Language”:
8. Advertising data is disclosed (spec. para. [0173] and [0186]) to be promotional
information provided in a special way (“targeted” or “specifically identified”) for
consumption by the end user. Here, by definition, advertising data is the
information placed in one or more reserved storage sections. Advertising data is
functional descriptive material and accordingly given patentable weight (MPEP
211.051.A).
(Dkt. No. 42, Ex. A, July 10, 2013 Notice of Allowability, at 3 (emphasis modified).) Although
Plaintiff argues that this reference to “promotional information” demonstrates that “advertising
data” need not be actual advertisements (Dkt. No. 45, at 4), the subsequent phrase “for
consumption by the end user” undermines Plaintiff’s interpretation of the Examiner’s statements.
As to Defendants’ proposal of requiring “at least two media types,” no such limitation is
evident in the claim language or in any definition or disclaimer in the intrinsic evidence.
Also, Defendants have not shown that customer specific advertising data cannot include
data that is associated with the promotional content, such as control information that may be
necessary for proper storage and playback of promotional content. Further, Defendants have not
shown that any claim language or any definition or disclaimer requires an “identifier or selection
code.”
Finally, Defendants have not demonstrated that “customer specific” means that an
advertisement is targeted at a particular end user. On one hand, the specification discloses that
“advertisements which are delivered to the VPR/DMS 30 advertising ‘sections’ can be customer
specific by use of systems built-in signal decoding and the data content filter/editing algorithm.”
’090 Patent at 32:7–10. More specifically, the specification discloses:
- 21 -

This customized editing feature allows each member of a family to enjoy a
customized edition of the broadcast program/movie according to their own
personal preferences, or those of the VPR/DMS system administrator. This
functionality gives parents greater control over content to be viewed by their
children. It also provides many new opportunities for broadcasters and content
providers to transmit various editions of custom programs and custom targeted
advertising data all contained within a single broadcast transmission.
Id. at 30:29–38 (emphasis added).
On the other hand, the specification suggests that advertising may be targeted for groups
rather than for one particular end user:
The designated advertising “sections” might be used for delivering advertising
feeds, which are processed and recorded by VPR/DMS 30 system for real-time or
subsequent viewing by end user. These advertising data feeds might be mass
distributed or broadcast to VPR/DMS 30 customers, or might be selectively
distributed according to customer profiles, demographics, or other criteria.
Id. at 31:49–56 (emphasis added); see id. at 32:54–57 (“Providing the advertiser has immediately
available advertisement formats (audio/video/text, etc.) for transmission, then instantaneous
advertisement delivery can be transmitted to the 5,000,000 qualified customers.”) (emphasis
added).
The Court therefore hereby construes “customer specific advertising data” to mean
“promotional content (and associated data, if any) that is targeted for consumption by a
specific customer or a specific group of customers.”
D. “user suitability criteria”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“plain meaning”

“content-based filter preferences set by the
user, such as a program name, theme, genre,
favorite actors or actresses, directors,
producers or other parameters, such as key
words, television/motion picture rating”

- 22 -

(Dkt. No. 35, Ex. A, at 6; Dkt. No. 42, at 12; Dkt. No. 44, Ex. A, at 6–7.) The parties submit that
this term appears in Claims 3 and 23 of the ’090 Patent. (Dkt. No. 35, Ex. A, at 6; Dkt. No. 44,
Ex. A, at 6.)
Shortly before the start of the February 2, 2017 hearing, the Court provided the parties
with the following preliminary construction: “Plain meaning (reject Defendants’ proposed list of
examples.”
(1) The Parties’ Positions
Plaintiff argues that “[Defendants] propose[] to impermissibly limit this term to specific
examples from the specification . . . .” (Dkt. No. 36, at 12.)
Defendants respond that they “propose[] a construction based on express statements in
the specification.” (Dkt. No. 42, at 12–13.)
Plaintiff replies that Defendants “seek[] to impermissibly limit the term to an exemplary
list in a preferred embodiment.” (Dkt. No. 45, at 4–5.) Plaintiff submits: “[Defendants] argue[]
that [they are] only attempting to provide exemplary guidance to the jury as opposed to a
construction that defines the scope of the term by limiting it to those criteria; that, of course, is
not the function of claim construction, and the risk of jury confusion is too great.” (Id., at 5.)
At the February 2, 2017 hearing, the parties presented no oral argument as to this
disputed term.
(2) Analysis
The specification discloses:
[T]he preferred embodiment makes significant improvements over the manual
timer or VCR+ type recording methods by allowing the user to personalize his or
her own parameters for recording broadcast programs. . . . [T]he system includes
a built-in automatic discretionary content filter/editor. This content filter/editor
allows a user to program the unit to automatically record broadcast content by
selection of a “User Suitability Criteria”, which may be defined as a program
- 23 -

name, theme, genre, favorite actors or actresses, directors, producers or other
parameters, such as key words, television/motion picture rating, etc. The User
Suitability Criteria may be used alone or in combination, and can be used to either
select or prohibit programming to be recorded.
’090 Patent at 5:51–65.
Although the specification thus sets forth the examples that Defendants have included in
their proposed construction, this list is disclosed merely as how “‘User Suitability Criteria’ . . .
may be defined . . . .” Id. (emphasis added). Any benefit of including this list of examples in the
construction is outweighed by the risk that the finder of fact might perceive this list as limiting.
The examples therefore should not be included in the construction.
Further, Defendants have not shown why the criteria must necessarily be set “by the
user” rather than in some other manner. No such limitation is apparent in the claim language,
and Defendants have not shown any definition or disclaimer in this regard.
Finally, Defendants propose that the criteria must be “content-based.” The specification
discloses:
In a preferred embodiment, the user may program the system to process the
received data according to the User’s Suitability Criteria. For example, the
system may be preset to automatically filter, edit, record or not record all or any
part of the content of the data based on User’s Suitability Criteria, by interpreting
control data encoded into a broadcast signal.
Id. at 8:18–23 (emphasis added). Nonetheless, the above-quoted disclosure of “other parameters,
such as key words, television/motion picture rating, etc.,” weighs against imposing a “contentbased” limitation. See id. at 5:51–65. For example, the specification discloses that entire
programs could be categorically blocked. See id. at 8:26–52 (“The V-chip, which is well known,
merely blocks out entire programs that are considered ‘unsuitable.’”). Also of note, the
specification refers to user suitability criteria in the context of age. See id. at 9:50–64 (“For

- 24 -

example, this feature allows parents to have greater control over the programming that may be
accessed by their children.”).
The Court therefore hereby expressly rejects Defendants’ proposed construction. No
further construction is necessary. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568
(Fed. Cir. 1997) (“Claim construction is a matter of resolution of disputed meanings and
technical scope, to clarify and when necessary to explain what the patentee covered by the
claims, for use in the determination of infringement. It is not an obligatory exercise in
redundancy.”); see also O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351,
1362 (Fed. Cir. 2008) (“[D]istrict courts are not (and should not be) required to construe every
limitation present in a patent’s asserted claims.”); Finjan, Inc. v. Secure Computing Corp., 626
F.3d 1197, 1207 (Fed. Cir. 2010) (“Unlike O2 Micro, where the court failed to resolve the
parties’ quarrel, the district court rejected Defendants’ construction.”); ActiveVideo Networks,
Inc. v. Verizon Commcn’s, Inc., 694 F.3d 1312, 1326 (Fed. Cir. 2012); Summit 6, LLC v.
Samsung Elecs. Co., Ltd., 802 F.3d 1283, 1291 (Fed. Cir. 2015).
The Court therefore hereby construes “user suitability criteria” to have its plain
meaning.
E. “automatically”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“plain meaning”

“without human intervention”

(Dkt. No. 35, Ex. A, at 7 & 12.) The parties submit that this term appears in Claims 1, 5, and 6
of the ’090 Patent and Claims 3 and 43 of the ’494 Patent. (Dkt. No. 35, Ex. A, at 7 & 12.)
Defendants submit that “[t]he parties have agreed to plain meaning” for this term. (Dkt.
No. 42, at 1 n.1.)

- 25 -

Because this term is no longer disputed, the Court does not further address this term.
F. “multimedia data products”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“plain meaning”

“content consisting of at least two media
types such as video, audio, images, or text”

(Dkt. No. 35, Ex. A, at 6; Dkt. No. 42, at 14; Dkt. No. 44, Ex. A, at 7–9.) The parties submit that
this term appears in Claims 1 and 2 of the ’090 Patent. (Dkt. No. 35, Ex. A, at 6; Dkt. No. 44,
Ex. A, at 7.)
Shortly before the start of the February 2, 2017 hearing, the Court provided the parties
with the following preliminary construction: “‘content consisting of at least two media types
(examples of media types may include video, audio, images, or text)’ (reject Defendants’
argument that a downloaded broadcast program cannot be a ‘multimedia data product’).”
(1) The Parties’ Positions
Plaintiff argues: “While multimedia could certainly include media types such as video,
audio, images, or text, providing a limited ‘such as’ list is confusing to the jury and would tend
to create an exhausted list rather than an opened ended exemplary one. Additionally, the patent
discloses downloaded broadcast programs over cable or satellite as being a multimedia data
product.” (Dkt. No. 36, at 16.)
Defendants respond that they intend their proposal to “simplify the terms by providing
concrete examples for an otherwise abstract concept to avoid any confusion to the jury.” (Dkt.
No. 42, at 14.) Defendants also urge that “[t]he specification . . . does not support ‘downloaded
broadcast programs’ as multimedia data products as argued by [Plaintiff].” (Id.)

- 26 -

Plaintiff replies that “[o]riginal Claim 2 of the ’090 Patent is part of the specification and
states that ‘multimedia data products are received via Network TV broadcast, Cable TV
broadcast, or Satellite broadcast.’” (Dkt. No. 45, at 5.)
At the February 2, 2017 hearing, Plaintiff argued that Defendants’ proposal should be
rejected because, in patent parlance, the word “consisting” is a closed-ended term that excludes
anything other than what is set forth. Plaintiff proposed that “including” would be a more
appropriate term.
(2) Analysis
The specification does not define “multimedia” but rather merely discloses that
“information may . . . be blended into a Multimedia Data Display/Playback 65, for the
user’s discretionary enjoyment.” ’090 Patent at 29:1–3; see id. at Fig. 9 (illustrating reference
numeral 65 as “BLENDED Multimedia Data Display/Playback”). The specification also refers
to a “multimedia array of sports programming.” Id. at 20:24–31 (“The processing means 13 may
include any or all of the features and attributes as described hereinabove. In this manner, the
user, through user interface 17 and microprocessor 12, may specify the exact type of processing
he/she wishes the received raw data in the form of a movie to undergo. Using the example of the
multimedia array of sports programming, the digital information would pass from the storage
device 14 to the playback device.”) (emphasis added).
The specification thus appears to contemplate audio/video program broadcasts as a
typical example of multimedia data products. See also id. at 1:51–53 (“program broadcasts such
as network television, radio, cable television channels[,] satellite feeds, UHF/VHF channels,
videotapes, and even the Internet”); id. at 26:29–30 (“Broadcast program data (e.g., television
audio and video signals) are received on data feed 10a at the receiver 2.”). The Court therefore

- 27 -

hereby expressly rejects Defendants’ argument that a downloaded broadcast program cannot be a
“multimedia data product.”
In order to give effect to the term “multimedia,” however, Defendants’ proposal of
requiring “content consisting of at least two media types” is appropriate. Further, providing a
non-exclusive list of examples will assist the finder of fact and will prevent or mitigate confusion
as to the meaning of “media types.” See Funai Elec. Co. v. Daewoo Elecs. Corp., 616 F.3d
1357, 1366 (Fed. Cir. 2010) (“The criterion is whether the explanation aids the court and the jury
in understanding the term as it is used in the claimed invention.”).
The Court accordingly hereby construes “multimedia data products” to mean “content
including at least two media types (examples of media types may include video, audio,
images, or text).”
G. “digital multimedia data”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“plain meaning”

“digital content consisting of at least two
media types such as video, audio, images, or
text”

(Dkt. No. 35, Ex. A, at 12; Dkt. No. 42, at 14; Dkt. No. 44, Ex. A, at 13.) The parties submit that
this term appears in Claims 19 and 33 of the ’494 Patent. (Dkt. No. 35, Ex. A, at 12.)
Shortly before the start of the February 2, 2017 hearing, the Court provided the parties
with the following preliminary construction: “digital content consisting of at least two media
types (examples of media types may include video, audio, images, or text).”

- 28 -

(1) The Parties’ Positions
Plaintiff argues that “[Defendants’] proposal does nothing other than add ‘digital’ to its
proposed construction for multimedia data product, and thus is nothing other than an attempt to
define multimedia twice.” (Dkt. No. 36, at 16.)
Defendants respond (and Plaintiff replies) as to this term together with the term
“multimedia data products,” which is addressed above. (See Dkt. No. 42, at 14; see also Dkt.
No. 45, at 5–6.) The parties likewise addressed all of these terms together at the February 2,
2017 hearing.
(2) Analysis
The Court reaches the same conclusions for this term as for the similar term “multimedia
data products,” which is addressed above.
The Court therefore hereby construes “digital multimedia data” to mean “digital
content including at least two media types (examples of media types may include video,
audio, images, or text).”
H. “the suitability criteria data is collected by at least one method selected from the group
consisting of . . .”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“plain meaning”

Indefinite

Not subject to §112(6).
(Dkt. No. 35, Ex. A, at 13; Dkt. No. 44, Ex. A, at 14–16.) The parties submit that this term
appears in Claims 5, 25, and 39 of the ’494 Patent. (Dkt. No. 35, Ex. A, at 13; Dkt. No. 44,
Ex. A, at 14.)

- 29 -

Shortly before the start of the February 2, 2017 hearing, the Court provided the parties
with the following preliminary construction: “Plain meaning (reject Defendants’ argument that
these claims are improper mixed method-apparatus claims).”
(1) The Parties’ Positions
Plaintiff submits that “[Defendants] simply label[] this term indefinite without
explanation or support from any expert.” (Dkt. No. 36, at 16.)
Defendants respond that “Claims 5, 25, and 39 of the ’494 Patent impermissibly
introduce method steps into system claims.” (Dkt. No. 42, at 15.)
Plaintiff replies that “[t]hese functional limitations do not create ambiguity as to when
infringement may occur but rather define the functionality that must be present for
infringement.” (Dkt. No. 45, at 6.)
At the February 2, 2017 hearing, the parties presented no oral argument as to this
disputed term.
(2) Analysis
A single patent may include claims directed to one or more of the classes of
patentable subject matter, but no single claim may cover more than one subject
matter class. IPXL Holdings[, LLC v. Amazon.com, Inc.], 430 F.3d [1377,] 1384
[(Fed. Cir. 2005)] (holding indefinite a claim covering both an apparatus and a
method of using that apparatus).
Microprocessor Enhancement Corp. v. Tex. Instruments Inc., 520 F.3d 1367, 1374 (Fed. Cir.
2008).
Claims 1 and 5 of the ’494 Patent, for example, recite:
1. A system for providing targeted advertising to a multimedia content end user,
comprising:
at least one storage device, wherein at least one of said at least one storage
device comprises at least one addressable and reserved storage space for storing
digital advertising data;
at least one processor; and
- 30 -

software implemented by said at least one processor wherein said software
comprises a program to reserve said at least one addressable storage space and
wherein said software further comprises a program to select particular advertising
data suitable for targeting to at least one end user based upon predefined criteria
data, wherein particular advertising data is stored in said at least one addressable
and reserved storage space and is accessible to the at least one end user.
***
5. The system of claim 1, wherein the suitability criteria data is collected by at
least one method selected from the group consisting of monitoring at least one
activity of an end user, monitoring a search routine of an end user, monitoring a
key word, monitoring an end user inquiry, monitoring a selection of media
content by an end user, monitoring a selection of television programming by an
end user, monitoring playback of a media program, monitoring an advertising
preference of an end user, monitoring a product rental or purchase by an end user,
monitoring a broadcast time schedule, examining end user profile data, examining
demographics, and combinations thereof.
Defendants have cited UltimatePointer, LLC v. Nintendo Co., Ltd., which found a
“pointing device” claim to be invalid because the claim also “requir[ed] the user to use the
pointing device.” No. 6:11-CV-496, 2013 WL 2325118 (E.D. Tex. May 28, 2013). Likewise,
Defendants have cited Ariba, Inc. v. Emptoris, Inc., which found an improper mixed methodapparatus claim where the claim recited “[a] bidding device” but also recited “wherein a bid
submitted by the potential seller operating the bidding device is compared to the corresponding
bid ceiling of the potential seller operating the bidding device,” and this “compar[ing]” did not
occur on the bidding device. No. 9:07-CV-90, 2008 WL 3482521 (E.D. Tex. Aug. 7, 2008),
aff’d, No. 2009-1230, 2010 WL 55625 (Fed. Cir. Jan. 8, 2010).
Claims 1 and 5 of the ’494 Patent, by contrast, recite a “system.” Particularly because
above-reproduced Claim 1 recites a “processor” and “software” configured so as to perform
various functions, dependent Claim 5 merely recites an additional configuration limitation rather
than requiring the actual performance of any method step. See Microprocessor Enhancement,
520 F.3d at 1375 (noting that “functional language” is permissible in claims); see also Typhoon
- 31 -

Touch, 659 F.3d at 1381–82 (“We discern no error in the district court’s view that this term
requires that the device is programmed or configured to perform the stated function.”).
The Court therefore hereby expressly rejects Defendants’ indefiniteness argument. No
further construction is necessary.
The Court accordingly hereby construes “the suitability criteria data is collected by at
least one method selected from the group consisting of . . .” to have its plain meaning.
I. “the particular advertising data is configured for presentation to an end user by a
method selected from the group consisting of . . .”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“plain meaning”

Indefinite

Not subject to §112(6).
(Dkt. No. 35, Ex. A, at 13–14.) The parties submit that this term appears in Claim 28 of the ’494
Patent. (Dkt. No. 35, Ex. A, at 13–14.)
Shortly before the start of the February 2, 2017 hearing, the Court provided the parties
with the following preliminary construction: “Plain meaning (reject Defendants’ argument that
this claim is an improper mixed method-apparatus claim).”
(1) The Parties’ Positions
Plaintiff argues that “[Defendants] simply label[] this term indefinite without explanation
or support from any expert.” (Dkt. No. 36, at 16.)
Defendants respond that “dependent claim 28 recites the method step ‘the particular
advertising data is configured for presentation to an end user by a method selected from the
group consisting of . . . ,’ which may be performed by a user. Furthermore, the apparatus step is
not limited to the elements of the system. The claim as read in light of the specification provides
no guidance as to who or what performs the step.” (Dkt. No. 42, at 17.)
- 32 -

Plaintiff’s reply brief does not address this term. (See Dkt. No. 45.)
At the February 2, 2017 hearing, the parties presented no oral argument as to this
disputed term.
(2) Analysis
Claims 19 and 28 of the ’494 Patent recite (emphasis added):
19. A device for providing targeted advertising to an end user, comprising:
at least one input port for receiving digital multimedia data, wherein the
digital multimedia data comprises particular advertising data for targeting to at
least one end user based upon predefined criteria data associated with the at least
one end user;
at least one storage device;
at least one addressable and reserved storage space for storing the
particular advertising data;
at least one processor configured to reserve said at least one addressable
storage space and to present the particular advertising data to the at least one end
user.
***
28. The device of claim 19, wherein the particular advertising data is configured
for presentation to an end user by a method selected from the group consisting of
a dynamic insertion of the particular advertising data in or around a user selected
media program, a transfer of the particular advertising data to a second end user
device, a menu screen, a header, a footer, an [sic, a] picture in picture, a split
screen, an overlay, a keyword search item, a user selectable interactive
advertisement, and combinations thereof.
Claim 28 thus recites a limitation as to how the advertising data “is configured.” This
configuration limitation does not amount to introducing a method step. See Microprocessor
Enhancement, 520 F.3d at 1375 (noting that “functional language” is permissible in claims); see
also Typhoon Touch, 659 F.3d at 1381–82 (“We discern no error in the district court’s view that
this term requires that the device is programmed or configured to perform the stated function.”).
The Court therefore hereby expressly rejects Defendants’ indefiniteness argument. No
further construction is necessary.

- 33 -

The Court accordingly hereby construes “the particular advertising data is configured
for presentation to an end user by a method selected from the group consisting of” to have
its plain meaning.
V. DISPUTED TERMS IN U.S. PATENTS NO. 7,840,437 AND 8,955,029
J. “limited-use digital data”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“plain meaning”

“rented digital data”

(Dkt. No. 35, Ex. A, at 23; Dkt. No. 42, at 23; Dkt. No. 44, Ex. A, at 47–60.) The parties submit
that this term appears in Claims 1–4, 6–9, 13–15, 19, 20, 22, 25–28, 30, 31, and 68 of the ’029
Patent. (Dkt. No. 35, Ex. A, at 23; Dkt. No. 44, Ex. A, at 47.)
Shortly before the start of the February 2, 2017 hearing, the Court provided the parties
with the following preliminary construction: “Plain meaning (reject Defendants’ proposal that
‘limited-use’ means ‘rented’).”
(1) The Parties’ Positions
Plaintiff argues that Defendants’ proposed construction should be rejected because “the
claims themselves distinguish ‘limited-use digital data’ from ‘rented digital data.’” (Dkt. No. 36,
at 18.)
Defendants respond that whereas Plaintiff’s proposal amounts to expanding the term “to
cover some unknown scope of data,” Defendants’ proposal “is consistent with the plain language
of the claim and the specification.” (Dkt. No. 42, at 23.) Defendants also argue that Claim 68 of
the ’029 Patent uses “rented digital data” and “limited-use digital data” interchangeably. (Id.,
at 24 (citing Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1329 (Fed. Cir. 2009) (“The
interchangeable use of . . . two terms is akin to a definition equating the two.”)).)

- 34 -

Plaintiff replies that “[c]ontrary to the assertions by [Defendants], the specification
discusses a wide variety of data that may be obtained without rental.” (Dkt. No. 45, at 6.)
Plaintiff argues that “while all rented data will be considered limited-use data (subject to
restrictions), not all limited-use data will be rented.” (Id., at 7.)
At the February 2, 2017 hearing, Plaintiff argued that the specification discloses
restrictions and limited uses other than rentals, such as previews and demos.
(2) Analysis
On one hand, “[c]laims that are written in different words may ultimately cover
substantially the same subject matter.” Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d
1473, 1480 (Fed. Cir. 1998) (citations omitted). Likewise, “it is not unknown for different words
to be used to express similar concepts, even though it may be poor drafting practice.” Bancorp
Servs., L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367, 1373 (Fed. Cir. 2004).
On the other hand, Plaintiff has highlighted that whereas Claim 1 of the ’029 Patent
recites “limited-use digital data,” Claim 68 of the ’029 Patent recites “rented digital data.” See
Tandon Corp. v. U.S. Intern. Trade Comm’n, 831 F.2d 1017, 1023 (Fed. Cir. 1987) (“There is
presumed to be a difference in meaning and scope when different words or phrases are used in
separate claims.”); see also CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co. KG, 224
F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must
presume that the use of these different terms in the claims connotes different meanings.”); Chi.
Bd. Options Exch., Inc. v. Int’l Sec. Exch., LLC, 677 F.3d 1361, 1369 (Fed. Cir. 2012) (noting
“[t]he general presumption that different terms have different meanings”).
Defendants have emphasized that the specification refers to “rental (limited use)”:
A variation of the invention offers content providers the capability of direct
instant delivering [sic] multi-formatted programs (movies, direct Compact Disc or
- 35 -

other audio medium, video catalogs, etc.). The data management zone (or ring)
would allow for rental (limited use) or purchase to home based or business based
customers. It effectively eliminates need for transporting, inventorying, and
physical delivery of digital data products. Direct data rental or purchase provides
far more convenience, data security, versatility, cost effectiveness, technical
quality, accessibility, product variety, product durability (no broken tapes or
damaged compact discs)[,] anti-piracy protection, various preview/rental/purchase
options, secure transactions, auto return (no late fees), user privacy, etc. It also
provides the added benefit to the rental industry of reducing or eliminating retail
space and physical inventory.
’029 Patent at 7:9–24 (emphasis added). Even assuming for the sake of argument that this
disclosure of “rental (limited use)” means that a “rental” is a “limited use,” Defendants have not
shown that it necessarily follows that “limited use” means only “rental.” Instead, a better reading
of the above-reproduced disclosure is that “rental” is an example of “limited use.” See id.; see
also id. at 36:3-6 (“the system is programmable to automatically return, erase, scramble or block
out the data/program when the rental, preview, demo time has expired”). The same is true as to
the recital in Claim 68 of both “rented digital data” and “limited-use digital data.”
The Court therefore hereby expressly rejects Defendants’ proposed construction. No
further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521
F.3d at 1362; Finjan, 626 F.3d at 1207; ActiveVideo, 694 F.3d at 1326; Summit 6, 802 F.3d
at 1291.
The Court accordingly hereby construes “limited-use digital data” to have its plain
meaning.
K. “data supplier”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“plain meaning”

“data product supplier, e.g. movie studios,
distributors, sports broadcasters, network and
cable broadcasters, news media outlets, music
publishers, and book distributors”

- 36 -

(Dkt. No. 35, Ex. A, at 21; Dkt. No. 42, at 17; Dkt. No. 44, Ex. A, at 25–35.) The parties submit
that this term appears in Claims 1, 8, 9, 19, 21, 22, 25, 31, 36, 53, 58, 64, 68, 70, 79, and 82 of
the ’029 Patent. (Dkt. No. 35, Ex. A, at 21; Dkt. No. 44, Ex. A, at 25.)
Shortly before the start of the February 2, 2017 hearing, the Court provided the parties
with the following preliminary construction: “Plain meaning (reject Defendants’ proposal of
‘product’ as well as Defendants’ proposed list of examples).”
(1) The Parties’ Positions
Plaintiff argues that “[w]hile data suppliers could certainly include ‘movie studios,
distributors, sports broadcasters, network and cable broadcasters, news media outlets, music
publishers, and book distributors,’ as stated in [Defendants’] proposed construction, providing a
limited ‘e.g.’ list is confusing to the jury and would tend to suggest an exhausted list rather than
an exemplary one.” (Dkt. No. 36, at 19.)
Defendants respond that “[t]he term must be read in light of the specification which only
supports content providers as ‘data suppliers.’” (Dkt. No. 42, at 18.) Defendants argue that a
“satellite provider may receive the movie from the broadcast network but is not a ‘data supplier’
(such as HBO) within the meaning of the specification.” (Id. (discussing ’029 Patent at 44:29–
35).)
Plaintiff replies: “The claims require that the data supplier be allowed to monitor and
receive notifications and communications concerning the use of the supplied data. Any entity
that is responsible for supplying data to the end user is thus covered by these claims.” (Dkt.
No. 45, at 7.)
At the February 2, 2017 hearing, the parties presented no oral argument as to this
disputed term.

- 37 -

(2) Analysis
The specification discloses:
The Content Providers 41 may consist of movie studios, distributors, sports
broadcasters, network and cable broadcasters, news media outlets, music
publishers, book distributors, and generally any content providers that would
otherwise utilize the television, personal computer, the internet, or telephone lines
to convey information.
***
This VPR/DMS 30 comprises a built-in non-movable storage device 14 which has
certain areas that are reserved and controlled by the cable company. These areas
are available for commercial sales or leasing to others, who may include movie
distributors, advertisers, data product suppliers, video game suppliers, video
magazine publishers, or video product catalogue companies.
’029 Patent at 21:21–26 & 32:22–28.
Although the specification thus sets forth examples that Defendants have included in their
proposed construction, Defendants have not shown that the examples necessarily pertain to the
term “data supplier.” In addition, Defendants have not shown that including their proposed list
of examples in the construction is necessary or that any benefit would outweigh the risk that the
finder of fact might perceive the list as limiting. On balance, the examples proposed by
Defendants should not be included in the construction.
Defendants also have not adequately justified their proposal of requiring that a “data
supplier” must be a “data product supplier.” See id. at 32:24–28 (“data product suppliers”).
Instead, “data product suppliers” simply appear to be one potential type of “data supplier.” See
id. at 32:22–28.
Finally, Defendants have not shown that the term “data supplier” refers only to entities
that generate content as opposed to, for example, distribution network providers. No such
limitation is apparent in the claim language, and Defendants have not shown that the intrinsic

- 38 -

evidence contains any relevant definition or disclaimer. Also of note, the specification refers to
“premium channel broadcast network[s] such as Direct TV, HBO, or SHOWTIME . . . .” Id.
at 44:29–30. This reference to “Direct TV,” which the parties appear to agree is a reference to a
satellite television provider (see Dkt. No. 36, at 19; see also Dkt. No. 42, at 18), further weighs
against limiting “data supplier” to content generators as opposed to distributors.
The Court therefore hereby expressly rejects Defendants’ proposed construction. No
further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521
F.3d at 1362; Finjan, 626 F.3d at 1207; ActiveVideo, 694 F.3d at 1326; Summit 6, 802 F.3d
at 1291.
The Court accordingly hereby construes “data supplier” to have its plain meaning.
L. “notifying a data supplier of said simulated return”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“plain meaning”

“communicating the simulated return of the
rented data to the data product supplier, e.g.
movie studios, distributors, sports
broadcasters, network and cable broadcasters,
news media outlets, music publishers, and
book distributors”

(Dkt. No. 35, Ex. A, at 15; Dkt. No. 42, at 18–19; Dkt. No. 44, Ex. A, at 17.) The parties submit
that this term appears in Claim 1 of the ’437 Patent. (Dkt. No. 35, Ex. A, at 15; Dkt. No. 44,
Ex. A, at 17.)
Shortly before the start of the February 2, 2017 hearing, the Court provided the parties
with the following preliminary construction: “communicating to the data supplier the simulated
return of the rented data.”

- 39 -

(1) The Parties’ Positions
Plaintiff argues that “there is no reason to substitute the term ‘notifying’ for
‘communicating,’” and “[c]ommunication may infer a specific type of action or message being
sent that is not required in the claim.” (Dkt. No. 36, at 19.)
Defendants respond that their proposal is consistent with the prosecution history. (Dkt.
No. 42, at 19.)
Plaintiff replies as to this term together with the term “data supplier,” which is addressed
above. (Dkt. No. 45, at 7.)
At the February 2, 2017 hearing, Plaintiff expressed concern that “communicating” might
carry more restrictive connotations than “notifying.” In particular, Plaintiff suggested that
“communicating” might be interpreted as requiring two-way communication. Defendants
responded that they are not arguing that the communication must be two-way. Instead,
Defendants argued, this disputed term simply requires a communication back to the data
supplier.
(2) Analysis
On one hand, the specification discloses an example that includes “notifying the digital
data provider that the transaction is completed”:
Virtual Video Game rental is operationally the same as the Virtual Movie Rental,
except the data is video game data (e.g., SONY PLAYSTATION,
NINTENDO 64). Data is stored on built-in storage device 14, and output from
digital output to re-writeable adapter cartridge, which may be inserted into a game
console. A return is initiated by deleting the rented software from the built-in
storage device 14 and notifying the digital data provider that the transaction is
completed.
’437 Patent at 38:30–37 (emphasis added).

- 40 -

On the other hand, the specification also refers to “communicat[ing],” “negotiat[ing],”
and “signal[ing].” Id. at 17:31–36 (“unless the downloaded movie is erased (and such erasure
communicated back to the microprocessor 12), ‘late fees’ could be assessed”), 35:52–67 (“[t]he
VPR/DMS interfaces with the ATS to negotiate the ‘return’”) & 38:20–25 (“the micro-controller
31 signals the remote ATS 29 that the movie data has been properly erased”).
Further, during prosecution, the patentee explained that “[i]f the user decides from the
menu of options to return the rental, then the user has to take action to return the rental and the
return is communicated to the data provider.” (Dkt. No. 42, Ex. T, Mar. 16, 2009 Response to
Requirement for Election and Amendment, at 13 (emphasis added).) The patentee distinguished
the “Tsukamoto et al.” reference, arguing that “applicant teaches that the simulated or virtual
return with notice to the data provider is an alternate to the automatic return such as provided by
Tsukamoto et al. . . . .” (Id. (emphasis added).)
The specification and the prosecution history are thus consistent with Defendants’
proposal that the disputed term requires communication. See Typhoon Touch, 659 F.3d at 1381
(“The patentee is bound by representations made and actions that were taken in order to obtain
the patent.”); see also Springs Window, 323 F.3d at 995 (“The public notice function of a patent
and its prosecution history requires that a patentee be held to what he declares during the
prosecution of his patent.”).
The Court therefore hereby construes “notifying a data supplier of said simulated
return” to mean “communicating to the data supplier the simulated return of the rented
data.”

- 41 -

M. “enacting a simulated return of said rented data”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“plain meaning”

“making said rented data inaccessible to the
user of the storage device”

(Dkt. No. 35, Ex. A, at 16; Dkt. No. 42, at 19; Dkt. No. 44, Ex. A, at 18–20.) The parties submit
that this term appears in Claims 1 and 13 of the ’437 Patent. (Dkt. No. 35, Ex. A, at 16; Dkt.
No. 44, Ex. A, at 18.)
Shortly before the start of the February 2, 2017 hearing, the Court provided the parties
with the following preliminary construction: “Plain meaning (Expressly reject Defendants’
proposed construction).”
(1) The Parties’ Positions
Plaintiff argues that “[t]he claim itself defines what is meant by ‘enacting a simulated
return . . .’ by stating a simulated return is accomplished ‘by deleting or scrambling said data
from said built in storage device or blocking further access to said data.’” (Dkt. No. 36, at 20
(quoting “’437 Patent at 36:34–37 [sic, 46:34–37]”).) Plaintiff also argues that “[Defendants]
incorrectly focus[] on access to the data when the claim refers to use of the data.” (Dkt. No. 36,
at 20.)
Defendants respond that “[a] jury would not readily ascertain the meaning of this term”
because “[i]t is unclear from the claim term itself what a ‘return’ is at all, much less a ‘simulated
return.’” (Dkt. No. 42, at 19–20.)
Plaintiff replies that Defendants’ proposal of “inaccessibly” is contrary to disclosures in
the specification that a return can be performed by encrypting or scrambling data, and
“[e]ncrypted and scrambled data is still accessible to potentially be decrypted or unscrambled at

- 42 -

a later time.” (Dkt. No. 45, at 7–8.) Plaintiff reiterates that “[i]f data can be made available in
the future, then it must be accessible.” (Id., at 8.)
At the February 2, 2017 hearing, the parties presented no oral argument as to this
disputed term.
(2) Analysis
The specification discloses, for example:
In order to avoid late charges or fees for rental transactions, the user must “return”
the data product by selecting a return option from the electronic menu. The
VPR/DMS interfaces with the ATS to negotiate the “return”, and the data product
is erased from the VPR/DMS storage device or re-scrambled (authorization key
voided, where the data product remains stored for future access/rental/purchase).
The data product has been transferred to portable medium; the control data keeps
a record of such transfer, and requires the portable medium to be erased before
successfully negotiating the “return.” In this way, the system is programmable by
the end user and broadcaster/content provider to enact a “virtual return” of data
products stored on the non-moveable storage device.
’437 Patent at 8:4–17.
The disputed term appears in Claims 1 and 13 of the ’437 Patent. Claim 1 of the ’437
Patent recites, in relevant part (emphasis added): “enacting a simulated return of said rented data
by deleting or scrambling said data from said built in storage device or blocking further access
to said data.” Claim 13 of the ’437 Patent depends from Claim 9, which in turn depends from
Claim 1. Claim 13 recites: “13. The system of claim 9, wherein the enacting of the simulated
return of said rented data by deleting or scrambling said data from said non-movable storage
device or blocking further access to said data, additionally requires the deleting or scrambling of
the rented data from said portable storage device on which the rented data has been recorded or
blocking further access to said data.”
Because surrounding claim language thus recites the manner of “enacting a simulated
return of said rented data,” no further construction is necessary. See U.S. Surgical, 103 F.3d
- 43 -

at 1568; see also O2 Micro, 521 F.3d at 1362; Finjan, 626 F.3d at 1207; ActiveVideo, 694 F.3d
at 1326; Summit 6, 802 F.3d at 1291.
The Court therefore hereby construes “enacting a simulated return of said rented
data” to have its plain meaning.
N. “performing a virtual return of the [limited-use / stored rented] digital data that has
been transferred to the portable playback device”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“plain meaning”

“making said limited-use data inaccessible on
the portable playback device and making the
processing circuitry aware that the user of the
portable playback device no longer has
access” 3

(Dkt. No. 35, Ex. A, at 20; Dkt. No. 44, Ex. A, at 41–47.) The parties submit that this term
appears in Claims 1, 35, and 68 of the ’029 Patent. (Dkt. No. 35, Ex. A, at 20; Dkt. No. 44,
Ex. A, at 41.)
Shortly before the start of the February 2, 2017 hearing, the Court provided the parties
with the following preliminary construction: “‘making said [limited-use / rented] data
inaccessible on the portable playback device’ (reject Defendants’ proposal of ‘making the
processing circuitry aware that the user of the portable playback device no longer has access’).”

3

Defendants previously proposed: “making said [limited-use / rented] data inaccessible on the
portable playback device and making the data product supplier, e.g. movie studios, distributors,
sports broadcasters, network and cable broadcasters, news media outlets, music publishers, and
book distributors, aware that the user of the portable playback device no longer has access to said
[limited-use / rented] data.” (Dkt. No. 35, Ex. A, at 20.) Defendants also previously proposed:
“making said [limited-use / rented data] inaccessible on the portable playback device and making
the processing circuitry aware that the portable playback device no longer has access.” (Dkt.
No. 42, at 22.)
- 44 -

(1) The Parties’ Positions
Plaintiff argues that “[Defendants’] requirement of ‘making the data supplier . . . aware’
that the user no longer has access to the rented data is unsupported by the specification, which
allows for an automatic return of rented data . . . .” (Dkt. No. 36, at 21.)
Defendants respond that construction is necessary because “[t]he claims do not make it
apparent what a ‘virtual return’ is or how one would be performed, particularly in relation to
material that has been transferred to portable playback devices.” (Dkt. No. 42, at 22.)
Plaintiff replies as to this term together with the term “enacting a simulated return of said
rented data,” which is addressed above. (See Dkt. No. 45, at 7–8.)
At the February 2, 2017 hearing, Plaintiff urged that Defendants’ proposal of
“inaccessible” is inconsistent with disclosures in the specification that the data might not be
deleted but rather could be kept on a device and might be accessed later if, for example, the user
rents the same content again. Plaintiff suggested, as an alternative proposal, that Defendants’
proposed construction should be modified by replacing “inaccessible” with “unplayable.”
Plaintiff also argued claim differentiation as to Claims 19 and 21 of the ’029 Patent.
(2) Analysis
Claim 1 of the ’029 Patent, for example, recites in relevant part (emphasis added):
“wherein said processing circuitry further comprises a program for transferring to a portable
playback device the stored limited-use digital data and control data for use by the portable
playback device for performing a virtual return of the limited-use digital data that has been
transferred to the portable playback device.”
The specification discloses, for example:
If a copy has been made for use on outside players, then the VPR/DMS 30 queries
the user to insert a disc or tape into the portable medium player/recorder 19. The
- 45 -

micro-controller 31 reads the control data information on the disc to make sure
that the disc is the proper one. When this is confirmed, the programming in the
VPR/DMS 30 causes the portable medium recorder/player 19 to erase the disc or
otherwise render it unusable. Next, the micro-controller 31 issues instructions to
delete the movie data from the built-in digital storage device 14. Finally, the
micro-controller 31 signals the remote ATS 29 that the movie data has been
properly erased from the built-in storage device 14, and any portable copies that
may exist.
’029 Patent at 38:30–42 (emphasis added).
Based on this and other disclosures, Defendants’ proposal of “inaccessible” gives proper
effect to how the specification uses the phrase “virtual return.” See id.; see also id. at 8:6–14
(“The VPR/DMS interfaces with the ATS to negotiate the ‘return’, and the data product is erased
from the VPR/DMS storage device or re-scrambled (authorization key voided, where the data
product remains stored for future access/rental/purchase). The data product has been transferred
to portable medium: the control data keeps a record of such transfer, and requires the portable
medium to be erased before successfully negotiating the ‘return.’”) (emphasis added); id. at
34:36–52 (“the user may enjoy access to the data product” and “[a]ccess would occur for a
limited period if rented”).
Nonetheless, as Plaintiff emphasized at the February 2, 2017 hearing, the data need
merely be inaccessible to the user because the data might “remain[] stored for future
access/rental/purchase” (’029 Patent at 8:6–10), such as if the user rents the same content again.
Further, Defendants have not shown that the claim language recites any limitation of
“making the processing circuitry aware that the portable playback device no longer has access.”
Although the specification discloses that “unless the downloaded movie is erased (and such
erasure communicated back to the microprocessor 12), ‘late fees’ could be assessed to the user
until such rental was virtually ‘returned’” (id. at 17:38–41), this is a specific feature of particular
disclosed embodiments that is not required by the claims unless recited. See Phillips, 415 F.3d
- 46 -

at 1323. Also of note, the specification discloses that a “‘virtual return’ may be an ‘auto return’,
where the data is automatically erased at the expiration of the rental period.” Id. at 38:17–19.
The Court therefore hereby construes “performing a virtual return of the [limited-use /
stored rented] digital data that has been transferred to the portable playback device” to
mean “making said [limited-use / stored rented] data inaccessible to the user on the
portable playback device.”
O. “by deleting or scrambling said data from said built in storage device or blocking
further access to said data”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“plain meaning”

“by only one of: (1) deleting; (2) scrambling
said data from said built in storage device;
and (3) blocking further access to said data”

(Dkt. No. 35, Ex. A, at 18; Dkt. No. 42, at 20; Dkt. No. 44, Ex. A, at 20–22.) The parties submit
that this term appears in Claims 1 and 13 of the ’437 Patent. (Dkt. No. 35, Ex. A, at 18; Dkt.
No. 44, Ex. A, at 20.)
Shortly before the start of the February 2, 2017 hearing, the Court provided the parties
with the following preliminary construction: “Plain meaning (reject Defendants’ proposal of
‘only one of’).”
(1) The Parties’ Positions
Plaintiff argues that “[Defendants’] proposed construction should be rejected because it
improperly limits these options by stating ‘only one’ can be utilized.” (Dkt. No. 36, at 21–22.)
Defendants respond that “[Plaintiff’s] assertion that the plain and ordinary meaning of the
term provides an inclusive list . . . goes against the specification and the readily understood use
of ‘or’ as linking alternatives.” (Dkt. No. 42, at 21.)

- 47 -

Plaintiff replies that “[i]n the context of this patent, ‘or’ is conjunctive as it provides
various alternatives to effect a simulated return.” (Dkt. No. 45, at 8.)
At the February 2, 2017 hearing, the parties presented no oral argument as to this
disputed term.
(2) Analysis
The specification discloses, for example, that “the system is programmable to
automatically return, erase, scramble or block out the data/program when the rental, preview,
demo time has expired.” ’437 Patent at 35:54–57; see id. at 8:6–10 (“erased . . . or rescrambled”), 9:9–11 (“The data may be scrambled, encrypted, or otherwise locked from viewing
or playback (audio) until the user agrees to pay for access.”) & 34:34–40 (“erasing, encrypting or
scrambling the data product”).
None of these disclosures supports reading “or” in the claims as necessarily being an
exclusive “or,” and Defendants have not otherwise justified imposing such a restriction. In other
words, Defendants have not shown that the recitals of deleting “or” scrambling “or” blocking
necessarily preclude a combination thereof. Compare DietGoal Innovations LLC v. Chipotle
Mexican Grill, Inc., No. 2:12-CV-764, 2015 WL 164072, at *3 (E.D. Tex. Jan. 13, 2015)
(Bryson, J.) (“It is well recognized that the word ‘or’ can be used in either an inclusive or an
exclusive sense, depending on context.”) with Kustom Signals, Inc. v. Applied Concepts, Inc.,
264 F.3d 1326, 1330 (Fed. Cir. 2001) (affirming construction that “either . . . or” meant “a choice
between either one of two alternatives, but not both”).
The Court therefore hereby expressly rejects Defendants’ proposed construction. No
further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521

- 48 -

F.3d at 1362; Finjan, 626 F.3d at 1207; ActiveVideo, 694 F.3d at 1326; Summit 6, 802 F.3d
at 1291.
The Court accordingly hereby construes “by deleting or scrambling said data from
said built in storage device or blocking further access to said data” to have its plain
meaning.
P. “a storage device built in to the system and which is not removable from the system . . .”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“plain meaning”

“a storage device that is not removable from
the system without rendering the system
inoperable”

(Dkt. No. 35, Ex. A, at 18.) The parties submit that this term appears in Claim 1 of the ’437
Patent. (Dkt. No. 35, Ex. A, at 18.)
Defendants submit that “[t]he parties have agreed to plain meaning” for this term. (Dkt.
No. 42, at 1 n.1.)
Because this term is no longer disputed, the Court does not further address this term.
Q. “a user interface operatively connected to the processing circuitry for programming
which processing functions are to be applied to the received data”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“plain meaning”

“a user interface operatively connected to the
processing circuitry for customizing the
received data”

(Dkt. No. 35, Ex. A, at 19; Dkt. No. 42, at 21; Dkt. No. 44, Ex. A, at 23.) The parties submit that
this term appears in Claim 1 of the ’437 Patent. (Dkt. No. 35, Ex. A, at 19; Dkt. No. 44, Ex. A,
at 23.)

- 49 -

Shortly before the start of the February 2, 2017 hearing, the Court provided the parties
with the following preliminary construction: “Plain meaning (reject Def[endants]’ proposal of
‘customizing’).”
(1) The Parties’ Positions
Plaintiff argues that “[a] jury would be able to understand a user interface being
connected to processing circuitry to program the various functionality of the invention.” (Dkt.
No. 36, at 23.) As to Defendants’ proposed construction, Plaintiff argues that “[w]hile
customization of data may be one aspect of the preferred embodiment of the invention, the claim
is not limited to customization.” (Id.)
Defendants respond that “[Plaintiff] argues that a jury would understand these terms, but
fails to clarify what the claimed ‘processing functions’ are or how a jury would recognize them.”
(Dkt. No. 42, at 21.)
Plaintiff replies: “That the patent discloses display and recording functions that do not
customize, alter, or change the data in any way as ‘processing’ is conclusive evidence that
[Defendants’] construction is wrong.” (Dkt. No. 45, at 9.)
At the February 2, 2017 hearing, the parties presented no oral argument as to this
disputed term.
(2) Analysis
Claim 1 of the ’437 Patent recites (emphasis added):
1. A system for the processing, recording, and playback of audio or video data,
comprising:
a. a receiver apparatus for receiving audio or video data from at least one
data feed;
b. memory circuitry comprising a storage device built in to the system and
which is not removable from the system;
c. processing circuitry for processing the data and for storing the processed
data in the built in storage device;
- 50 -

d. a user interface operatively connected to the processing circuitry for
programming which processing functions are to be applied to the received data
by the processing circuitry;
e. playback circuitry, which reads the data from the built in storage device
and which converts the data to electronic signals for driving a playback apparatus;
and
f. a microprocessor having software programming to control the operation
of the processing circuitry and the playback circuitry enabling the recording of
rented data and enacting a simulated return of said rented data by deleting or
scrambling said data from said built in storage device or blocking further access
to said data, and notifying a data supplier of said simulated return.
On one hand, the specification discloses:
Processing may include recording, editing, condensing, rearranging data
segments, displaying, or otherwise customizing the content. This is especially
useful when the User Suitability Criteria is a ratings based edit. The processor
decodes the received content, interprets the control information, updates the
previously stored control information, and then automatically edits the signal to
censor unsuitable content (e.g., bleep out expletives, or eliminate scenes involving
nudity or graphic violent or sexual content). The processed data may then be
played back though the playback unit in real time and/or sent to the recording unit
to be recorded onto the non-movable storage device for later access, editing,
and/or playback by the playback unit.
’437 Patent at 8:40–52 (emphasis added).
On the other hand, as Plaintiff has emphasized, the specification discloses “V-Chip
program blocking” that can “merely block[] out entire programs that are considered
‘unsuitable.’” Id. at 8:26–28 & 14:57. This disclosure weighs against Defendants’ proposal of
“customizing.”
On balance, Defendants have not shown that “customizing” is a limitation of the disputed
term or that any construction is otherwise necessary, and the Court therefore hereby expressly
rejects Defendants’ proposed construction. See U.S. Surgical, 103 F.3d at 1568 (“Claim
construction is a matter of resolution of disputed meanings and technical scope, to clarify and
when necessary to explain what the patentee covered by the claims, for use in the determination
of infringement. It is not an obligatory exercise in redundancy.”); see also O2 Micro, 521 F.3d
- 51 -

at 1362 (“[D]istrict courts are not (and should not be) required to construe every limitation
present in a patent’s asserted claims.”).
The Court accordingly hereby construes “a user interface operatively connected to the
processing circuitry for programming which processing functions are to be applied to the
received data” to have its plain meaning.
R. “a user interface operatively connected to said processing circuitry for programming
one or more processing functions to be performed by said processing circuitry” / “a user
interface operatively connected to the processing circuitry for programming the at least
one processing function”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“plain meaning”

“a user interface operatively connected to the
processing circuitry for customizing the
[limited-use / rented] digital data”

(Dkt. No. 35, Ex. A, at 22; Dkt. No. 44, Ex. A, at 36–40.) The parties submit that this term
appears in Claims 1, 35, and 68 of the ’029 Patent. (Dkt. No. 35, Ex. A, at 22; Dkt. No. 44,
Ex. A, at 36.)
Shortly before the start of the February 2, 2017 hearing, the Court provided the parties
with the following preliminary construction: “Plain meaning (reject Defendants’ proposal of
‘customizing’).”
(1) The Parties’ Positions
Plaintiff incorporates its arguments as to the similar term “a user interface operatively
connected to the processing circuitry for programming which processing functions are to be
applied to the received data,” which is addressed above. (See Dkt. No. 36, at 23; see also Dkt.
No. 45, at 9.)
Defendants likewise address all of these terms together. (See Dkt. No. 42, at 21–22.)

- 52 -

At the February 2, 2017 hearing, the parties presented no oral argument as to this
disputed term.
(2) Analysis
For the same reasons set forth above as to the similar term “a user interface operatively
connected to the processing circuitry for programming which processing functions are to be
applied to the received data,” the Court finds that no construction is necessary.
The Court accordingly hereby construes “a user interface operatively connected to
said processing circuitry for programming one or more processing functions to be
performed by said processing circuitry” and “a user interface operatively connected to the
processing circuitry for programming the at least one processing function” to have their
plain meaning.
S. “portable playback device”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“plain meaning”

“portable device with a speaker system and a
display on the device”

(Dkt. No. 35, Ex. A, at 23; Dkt. No. 42, at 24–25; Dkt. No. 44, Ex. A, at 60–71.) The parties
submit that this term appears in Claims 1, 19, 20, 31, 32, 35, 38, 41, 53, 54, 59, 64, 65, and 68 of
the ’029 Patent. (Dkt. No. 35, Ex. A, at 23; Dkt. No. 44, Ex. A, at 60.)
Shortly before the start of the February 2, 2017 hearing, the Court provided the parties
with the following preliminary construction: “Plain meaning (reject Defendants’ proposal of
‘a speaker system and a display on the device’).”
(1) The Parties’ Positions
Plaintiff argues that the specification contains no support for Defendants’ proposal that a
“portable playback device” must include a display. (Dkt. No. 36, at 24.)
- 53 -

Defendants respond that “[o]nly [Defendants’] construction properly reconciles the
addition of the word portable to the term ‘playback device.’” (Dkt. No. 42, at 25.) Defendants
also argue: “[Plaintiff] confuses the term ‘portable playback device’ with what the specification
refers to as a ‘stand alone playback unit’ or a ‘portable recorder/player.’ While [Defendants]
agree[] with [Plaintiff’s] assertion that a ‘portable playback device’ is capable of reading content
from a video cassette or DVD, the only feasible construction of portable playback device
requires a portable device with a display or speaker system.” (Id., at 26.)
Plaintiff replies that “the specification distinguishes the playback device from the
speaker/display system as separate components.” (Dkt. No. 45, at 9.)
At the February 2, 2017 hearing, Defendants urged that the phrase “portable playback”
must be given meaning so that the term “portable playback device” does not encompass a mere
storage device.
(2) Analysis
On one hand, the specification discloses a playback device that appears to include a
speaker system and an LED display:
Once the received signal has been processed, it may be stored for future use on
the built-in, non-movable storage device 4, or immediately accessed for present
use. If needed for present use, the processed data is transmitted from the
microprocessor 3 to a playback device 5, which interprets the processed data and
prepares it for display. For example, an audio signal is received from a compact
disc player at receiver 2, and then processed and decoded by microprocessor 3 so
that any audio data is separated from CD-I information on the disc. Once the data
has been fully processed in the microprocessor 3, it is sent to the playback
device 5 which plays back the audio data through a speaker system and displays
the CD-I information on a LED display.
’029 Patent at 13:9–21 (emphasis added); see id. at 15:2–3, 15:16–20 & 25:14–17; see also id. at
Cl. 32 (“32. The system of claim 1, wherein the portable playback device is selected from a

- 54 -

group consisting of a portable telephone, portable digital recorder/player, a portable computer, a
PDA, nd [sic, and] combinations thereof.”)
On the other hand, Figures 1 and 2a illustrate a “playback device 5” and a “playback
device 15,” respectively, that are connected “To Display,” which implies that a display need not
be integrated with each “playback device.” See id. at 13:18–21 & 15:14–21. Also, the
specification refers to a “DVD player” or “VCR” as examples of a “stand alone playback unit”:
Once receipt of the data is acknowledged by the VPR/DMS and the transaction is
completed, the user may play back the data product, store it, or transfer it to
portable medium for use on a stand alone playback unit (e.g., DVD player, VCR,
etc.) provided all necessary transactions are completed.
Id. at 7:61–66. Because the specification refers to a VCR as being “well known equipment” (id.
at 6:43–44), the ordinary meaning of VCR appears to apply, in particular as to a VCR being a
device that can record and play but that usually does not itself have a display or a speaker
system. The distinct disclosures of TV/VCR and TV/DVD combinations further support this
interpretation. See id. at 10:41–44 (“For example, in the television and video market there exist
television/VCR combinations ‘bundles’ which include a television set and a video cassette
recorder combined into the same enclosure.”); see also id. at 2:33 (“regular DVD players”) &
10:45–46 (“TV DVD combination”). Further, the specification discloses “radio” embodiments
and “radio broadcasts,” and playback of “radio” presumably could be achieved without any
display. See, e.g., id. at 10:36–41, 10:51–54, 12:24–34, 22:28, 24:46 & 33:64–67.
Figure 8 of the ’029 Patent is also consistent with not requiring a display or speakers
because Figure 8 illustrates a “portable recorder/player 19” without any apparent display or
speakers, as contrasted with the “user’s audio/video system 36” illustrated in Figure 8. See ’029
Patent at 29:44-47.

- 55 -

Finally, Defendants submit that “[t]he Federal Circuit recently held that the term
‘portable’ was subject to multiple constructions and thus [Plaintiff’s] request for ‘plain and
ordinary meaning’ is inappropriate.” (Dkt. No. 42, at 25 (citing Eon Corp. IP Holdings v. Silver
Spring Networks, 815 F.3d 1314, 1319 (Fed. Cir. 2016)).) Yet, Defendants themselves include
the word “portable” in their proposed construction without explicitly setting forth any special
meaning for “portable.” As to Defendants argument that the word “portable” means that the
disputed term requires a display and a speaker system built into the playback device, no such
limitation is evident in the intrinsic evidence cited by the parties, such as discussed above, or in
the extrinsic evidence submitted by Defendants (see Dkt. No. 42, at 25–26). In short, the
foregoing evidence demonstrates that Defendants have not shown that what is “portable” must be
everything that is necessary for the user to fully experience “playback.” Instead, the abovediscussed evidence demonstrates that what is portable is merely the “device.”
To the extent that Defendants have argued that Plaintiff is improperly conflating
“portable playback device” and “portable storage device,” Defendants’ argument appears to bear
upon factual questions as to application of the claims to the accused instrumentalities rather than
any legal question for claim construction. See Acumed LLC v. Stryker Corp., 483 F.3d 800, 806
(Fed. Cir. 2007) (“The resolution of some line-drawing problems . . . is properly left to the trier
of fact.”) (citing PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998)
(“after the court has defined the claim with whatever specificity and precision is warranted by
the language of the claim and the evidence bearing on the proper construction, the task of
determining whether the construed claim reads on the accused product is for the finder of fact”));
see EON, 815 F.3d at 1318-19 (citing PPG).

- 56 -

The Court therefore hereby expressly rejects Defendants’ proposed construction. No
further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521
F.3d at 1362; Finjan, 626 F.3d at 1207; ActiveVideo, 694 F.3d at 1326; Summit 6, 802 F.3d
at 1291.
The Court accordingly hereby construes “portable playback device” to have its plain
meaning.
T. “processing circuitry comprising software . . .”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

No construction necessary: Not subject to
§112(6).

Subject to §112, ¶6
Indefinite
Function:
“controlling operations of said memory
circuitry and said playback circuitry and
controlling at least one operation performed
upon the stored limited-use digital data as
permitted by at least one restriction on the use
of the limited-use digital data and transferring
to a portable playback device the stored
limited-use digital data and control data for
use by the portable playback device for
performing a virtual return of the limited-use
digital data that has been transferred to the
portable playback device.”
Structure:
microprocessor 3 without a disclosed
algorithm

(Dkt. No. 35, Ex. A, at 24–26; Dkt. No. 42, at 26; Dkt. No. 44, Ex. A, at 71–77.) The parties
submit that these terms appear in Claims 1, 35, and 68 of the ’029 Patent. (Dkt. No. 35, Ex. A,
at 24–26; Dkt. No. 44, Ex. A, at 71.)

- 57 -

Shortly before the start of the February 2, 2017 hearing, the Court provided the parties
with the following preliminary construction: “Plain meaning (35 U.S.C. § 112, ¶ 6 does not
apply).”
(1) The Parties’ Positions
Plaintiff argues that Defendants cannot overcome the presumption that 35 U.S.C. § 112,
¶ 6 does not apply to these non-means terms. (Dkt. No. 36, at 25.)
Defendants respond that “[Plaintiff] attempts to engage in purely functional claiming in a
system claim, thereby improperly claiming all potential structures for performing each claimed
function.” (Dkt. No. 42, at 26.)
Plaintiff replies by reiterating that Defendants fail to rebut the presumption against
means-plus-function treatment. (Dkt. No. 45, at 10.) Alternatively, Plaintiff argues that “[i]n
any event, the ’029 Patent discloses definite structure to perform the recited functions.” (Id.)
At the February 2, 2017 hearing, Defendants reiterated their arguments.
(2) Analysis
Claim 1 of the ’029 Patent, for example, recites (emphasis added):
1. A system for receiving, processing, and playback of limited-use digital data,
comprising:
circuitry for receiving limited-use digital data;
memory circuitry for storing the limited-use digital data as stored limiteduse digital data;
playback circuitry that reads the stored limited-use digital data from said
memory circuitry and converts the stored limited-use digital data to electronic
signals for driving a playback device;
processing circuitry comprising software to control operations of said
memory circuitry and said playback circuitry and to control at least one operation
performed upon the stored limited-use digital data as permitted by at least one
restriction on the use of the limited-use digital data;
a user interface operatively connected to said processing circuitry for
programming one or more processing functions to be performed by said
processing circuitry; and

- 58 -

at least one digital output operatively connected to said processing
circuitry that communicates with a data supplier to allow monitoring by the data
supplier of the at least one operation performed upon the stored limited-use digital
data as permitted by the at least one restriction on the use of the limited-use
digital data,
wherein said processing circuitry further comprises a program for
transferring to a portable playback device the stored limited-use digital data and
control data for use by the portable playback device for performing a virtual
return of the limited-use digital data that has been transferred to the portable
playback device.
Title 35 U.S.C. § 112, ¶ 6 (which has since been renamed § 112(f)) provides: “An
element in a claim for a combination may be expressed as a means or step for performing a
specified function without the recital of structure, material, or acts in support thereof, and such
claim shall be construed to cover the corresponding structure, material, or acts described in the
specification and equivalents thereof.”
“[T]he failure to use the word ‘means’ . . . creates a rebuttable presumption . . . that
§ 112, para. 6 does not apply.” Williamson v. Citrix Online LLC, 792 F.3d 1339, 1348 (Fed. Cir.
2015) (citations and internal quotation marks omitted). “When a claim term lacks the word
‘means,’ the presumption can be overcome and § 112, para. 6 will apply if the challenger
demonstrates that the claim term fails to recite sufficiently definite structure or else recites
function without reciting sufficient structure for performing that function.” Id. at 1349 (citations
and internal quotation marks omitted).
Williamson, in an en banc portion of the decision, abrogated prior statements that the
absence of the word “means” gives rise to a “strong” presumption against means-plus-function
treatment. Id. (citation omitted). Williamson also abrogated prior statements that this
presumption “is not readily overcome” and that this presumption cannot be overcome “without a
showing that the limitation essentially is devoid of anything that can be construed as structure.”
Id. (citations omitted). Instead, Williamson found, “[h]enceforth, we will apply the presumption
- 59 -

as we have done prior to Lighting World . . . .” Id. (citing Lighting World, Inc. v. Birchwood
Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004)). In a subsequent part of the decision not
considered en banc, Williamson affirmed the district court’s finding that the term “distributed
learning control module” was a means-plus-function term that was indefinite because of lack of
corresponding structure, and in doing so Williamson stated that “‘module’ is a well-known nonce
word.” 792 F.3d at 1350.
Here, “processing circuitry” is not a “nonce” term (see id.) but rather connotes a class of
structures. In particular, Plaintiff’s expert has persuasively opined that “circuitry” here refers to
a particular class of hardware structures. (See Dkt. No. 36, Ex. F, Dec. 9, 2016 Kesan Decl., at
¶ 35; see also ’029 Patent at 4:34–40 (“processing devices”).) Further, surrounding claim
language provides details regarding how the “processing circuitry” “interacts with other
components . . . in a way that . . . inform[s] the structural character of the limitation-in-question
or otherwise impart[s] structure . . . .” Williamson, 792 F.3d at 1351.
In so finding, the Court applies long-standing principles articulated prior to the abrogated
Lighting World decision. See, e.g., Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311,
1320 (Fed. Cir. 2004) (“when the structure-connoting term ‘circuit’ is coupled with a description
of the circuit’s operation, sufficient structural meaning generally will be conveyed to persons of
ordinary skill in the art, and § 112 ¶ 6 presumptively will not apply”; noting “language reciting
[the circuits’] respective objectives or operations”); Apex Inc. v. Raritan Computer, Inc., 325
F.3d 1364, 1372 (Fed. Cir. 2003) (“While we do not find it necessary to hold that the term
‘circuit’ by itself always connotes sufficient structure, the term ‘circuit’ with an appropriate
identifier such as ‘interface,’ ‘programming’ and ‘logic,’ certainly identifies some structural
meaning to one of ordinary skill in the art.”); Personalized Media Commc’ns, LLC v. Int’l Trade

- 60 -

Comm’n, 161 F.3d 696, 705 (Fed. Cir. 1998) (“Even though the term ‘detector’ does not
specifically evoke a particular structure, it does convey to one knowledgeable in the art a variety
of structures known as ‘detectors.’ We therefore conclude that the term ‘detector’ is a
sufficiently definite structural term to preclude the application of § 112, ¶ 6.”); Greenberg v.
Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (finding that “detent
mechanism” was not a means-plus-function term because it denotes a type of device with a
generally understood meaning in the mechanical arts); 4 Affymetrix, Inc. v. Hyseq, Inc., 132 F.
Supp. 2d 1212, 1232 (N.D. Cal. 2001) (finding that “‘computer code’ is not a generic term, but
rather recites structure that is understood by those of skill in the art to be a type of device for
accomplishing the stated functions”).
In sum, Defendants have failed to overcome the presumption against means-plus-function
treatment for these non-means terms. The Court therefore hereby expressly rejects Defendants’
proposal of means-plus-function treatment, as well as Defendants’ corresponding indefiniteness
arguments. No further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also
O2 Micro, 521 F.3d at 1362; Finjan, 626 F.3d at 1207; ActiveVideo, 694 F.3d at 1326; Summit 6,
802 F.3d at 1291.
The Court accordingly hereby construes “processing circuitry comprising software
. . .” to have its plain meaning.

4

Greenberg, 91 F.3d at 1583 (“‘detent’ denotes a type of device with a generally understood
meaning in the mechanical arts, even though the definitions are expressed in functional terms”);
id. (“It is true that the term ‘detent’ does not call to mind a single well-defined structure, but the
same could be said of other commonplace structural terms such as ‘clamp’ or ‘container.’ What
is important is not simply that a ‘detent’ or ‘detent mechanism’ is defined in terms of what it
does, but that the term, as the name for structure, has a reasonably well understood meaning in
the art.”).
- 61 -

VI. CONCLUSION
The Court adopts the constructions set forth in this opinion for the disputed terms of the
patent-in-suit, and in reaching conclusions the Court has considered and relied upon extrinsic
.
evidence. The Court’s constructions thus include subsidiary findings of fact based upon the
extrinsic evidence presented by the parties in these claim construction proceedings. See Teva,
135 S. Ct. at 841.
The parties are ordered that they may not refer, directly or indirectly, to each other’s
claim construction positions in the presence of the jury. Likewise, the parties are ordered to
refrain from mentioning any portion of this opinion, other than the actual definitions adopted by
the Court, in the presence of the jury. Any reference to claim construction proceedings is limited
to informing the jury of the definitions adopted by the Court.
SIGNED this 3rd day of January, 2012.
SIGNED this 13th day of February, 2017.

____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

- 62 -