Uniloc USA, Inc. et al v. ADP, LLC

Filing 233

MEMORANDUM OPINION AND ORDER adopting the constructions for the disputed and agreed terms of the Asserted Patents. Signed by Judge Robert W. Schroeder, III on 8/16/2017. (sm, )

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

UNILOC USA, INC. and UNILOC
LUXEMBOURG, S.A.
Plaintiffs,
v.
AVG TECHNOLOGIES USA, INC.
Defendant,
v.
ADP, LLC
Defendant.

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Case No. 2:16-CV-00393
LEAD CASE

Case No. 2:16-CV-00741
LEAD CASE

MEMORANDUM OPINION AND ORDER
On August 10, 2017, the Court held a hearing to determine the proper construction of the
disputed claim terms in United States Patent Nos. 6,324,578 (“the ’578 Patent”), 6,728,766 (“the
’766 Patent”), 6,510,466 (“the ’466 Patent”), and 7,069,293 (“the ’293 Patent”) (collectively “the
Asserted Patents”).1 The Court has considered the arguments made by the parties at the hearing
and in their claim construction briefs. Docket Nos. 140, 150, 155, 174, 185 & 190.2 The Court
has also considered the intrinsic evidence and made subsidiary factual findings about the extrinsic

1

    The ’466 and ’293 Patents share a common specification. Unless otherwise noted, citations

related to either of these patents are made collectively to the ’466 Patent. Similarly, the ’578 and
’766 Patents share a common specification. Unless otherwise noted, citations related to either of
these patents are made collectively to the ’578 Patent.
2

Citations to the parties’ filings are to the filing’s number in the docket (Docket No.) and pin
cites are to the page numbers assigned through ECF in Case No. 2:16-CV-393.

evidence. See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005); Teva Pharm. USA,
Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015). The Court issues this Claim Construction
Memorandum and Order in light of these considerations.

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TABLE OF CONTENTS
I.

BACKGROUND ................................................................................................................ 4

II.

APPLICABLE LAW .......................................................................................................... 7

III.

CONSTRUCTION OF AGREED TERMS ...................................................................... 10

IV.

RELEVANCE OF THE PROSECUTION FILE HISTORY IN RELATED PATENTS. 11

V.

CONSTRUCTION OF DISPUTED TERMS ................................................................... 14
1. “application program(s) / application(s)” ..................................................... 14
2. “application launcher program” .................................................................... 23
3. “make the application program available for use” ....................................... 31
4. “registration operations” ............................................................................... 38
5. “the initiating execution step” ...................................................................... 44
6. “the computer readable program code means for executing the application
program” / “the computer readable program code means for initiating execution”
/ “the means for executing the application program” / “the means for initiating
execution”............................................................................................................ 51
7. “license availability”..................................................................................... 55
8. “an instance” / “an instance of the application program” / “an instance of the
selected one of the plurality of application programs” and “provid[e]/[ing]” .... 59

VI.

CONCLUSION ................................................................................................................. 68

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I.

BACKGROUND
A.

The ’578 Patent

The ’578 Patent was filed on December 14, 1998, issued on November 27, 2001, and is
titled “Methods, Systems, and Computer Program Products for Management of Configurable
Application Programs on a Network.” The ’578 Patent relates to obtaining user and administrator
preferences for the application programs installed at a server and providing these preferences along
with an instance of the application program to a client for execution. See, e.g., ’578 Patent, col.
3:50–4:5.
Claim 1 of the ’578 Patent is an exemplary claim and recites the following elements
(disputed term in italics):
1. A method for management of configurable application
programs on a network comprising the steps of:
receiving an application launcher program associated with an
application program having a plurality of configurable
preferences from a server;
providing a user set of the plurality of configurable preferences
from one of the plurality of authorized users executing the
application launcher program to the server; and
requesting that the server provide an instance of the application
program and a stored user set and an administrator set of
the plurality of configurable preferences for use in
executing the application program responsive to a request
from the one of the plurality of authorized users.
B.

The ’466 Patent

The ’466 Patent was filed on December 14, 1998, issued on January 21, 2003, and is titled
“Methods, Systems, and Computer Program Products for Centralized Management of Application
Programs on a Network.” The ’466 Patent relates to installing application software on a server,
and providing instances of that software to clients for execution via a user desktop interface with
display regions associated with the installed software. See, e.g., ’466 Patent, col. 3:48–50, 4:39–
44.

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Claim 15 of the ’466 Patent is an exemplary claim and recites the following elements
(disputed term in italics):
15. An application program management system for managing
application programs on a network including a server and
a client comprising:
means for installing a plurality of application programs at the
server;
means for receiving at the server a login request from a user at
the client;
means for establishing a user desktop interface at the client
associated with the user responsive to the login request
from the user, the desktop interface including a plurality of
display regions associated with a set of the plurality of
application programs installed at the server for which the
user is authorized;
means for receiving at the server a selection of one of the plurality
of application programs from the user desktop interface;
and
means for providing an instance of the selected one of the
plurality of application programs to the client for execution
responsive to the selection.
C.

The ’766 Patent

The ’766 Patent was filed on April 10, 2001, issued on April 27, 2004, and is titled
“Methods, Systems, and Computer Program Products for License Use Management on a Network.”
The ’766 Patent relates to maintaining license related policies and information in the client-server
environment for the installed software such that license availability can be communicated to clients
on a user-specific basis. See, e.g., ’578 Patent, col. 3:24–28, 3:40–45, 5:38–60.
Claim 7 of the ’766 Patent is an exemplary claim and recites the following elements
(disputed term in italics):
7. A license use management system for a network comprising:
means for maintaining license management policy information
for a plurality of application programs at a license
management server, the license management policy
information including at least one of a user identity based

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policy, an administrator policy override definition or a user
policy override definition;
means for receiving at the license management server a request
for a license availability of a selected one of the plurality of
application programs from a user at a client;
means for determining the license availability for the selected one
of the plurality of application programs for the user based
on the maintained license management policy information;
and
means for providing an unavailability indication to the client
responsive to the selection if the license availability
indicates that a license is not available for the user or an
availability indication if the licensed availability indicates
that a license is available for the user.
D.

The ’293 Patent

The ’293 Patent was filed on May 31, 2001, issued on June 27, 2006, and is titled “Methods,
Systems, and Computer Program Products for Distribution of Application Programs to a Target
Station on a Network.” The ’293 Patent relates to the distribution of application programs to a
target station (e.g., an on-demand server) from a centralized network management server. See, e.g.,
’466 Patent at 5:29–54.
Claim 1 of the ’293 Patent is an exemplary claim and recites the following elements
(disputed term in italics):
1. A method for distribution of application programs to a target
on-demand server on a network comprising the following
executed on a centralized network management server
coupled to the network:
providing an application program to be distributed to the network
management server;
specifying a source directory and a target directory for
distribution of the application program;
preparing a file packet associated with the application program
and including a segment configured to initiate registration
operations for the application program at the target ondemand server; and
distributing the file packet to the target on-demand server to make
the application program available for use by a user at a
client.

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II.

APPLICABLE LAW
A.

Claim Construction

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

The intrinsic evidence includes the claims themselves, the

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

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Id.

Differences among the claim terms can also assist in understanding a term’s meaning. Id. For
example, when a dependent claim adds a limitation to an independent claim, it is presumed that
the independent claim does not include the limitation. Id. at 1314–15.
“[C]laims ‘must be read in view of the specification, of which they are a part.’ ” Id.
(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)).
“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is
dispositive; it is the single best guide to the meaning of a disputed term.’ ” Id. (quoting Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am.
Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). But, “ ‘[a]lthough the specification may aid the court
in interpreting the meaning of disputed claim language, particular embodiments and examples
appearing in the specification will not generally be read into the claims.’ ” Comark Commc’ns,
Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced MicroDevices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323. “[I]t is
improper to read limitations from a preferred embodiment described in the specification—even if
it is the only embodiment—into the claims absent a clear indication in the intrinsic record that the
patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
898, 913 (Fed. Cir. 2004).
The prosecution history is another tool to supply the proper context for claim construction
because, like the specification, the prosecution history provides evidence of how the U.S. Patent
and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415 F.3d at 1317.
However, “because the prosecution history represents an ongoing negotiation between the PTO
and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the
specification and thus is less useful for claim construction purposes.” Id. at 1318; see also Athletic

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

Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA)

Patent claims must particularly point out and distinctly claim the subject matter regarded
as the invention. 35 U.S.C. § 112, ¶ 2. A claim, when viewed in light of the intrinsic evidence,

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must “inform those skilled in the art about the scope of the invention with reasonable certainty.”
Nautilus Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). If it does not, the claim
fails § 112, ¶ 2 and is therefore invalid as indefinite. Id. at 2124. Whether a claim is indefinite is
determined from the perspective of one of ordinary skill in the art as of the time the application for
the patent was filed. Id. at 2130. As it is a challenge to the validity of a patent, the failure of any
claim in suit to comply with § 112 must be shown by clear and convincing evidence. Id. at 2130
n.10. “[I]ndefiniteness is a question of law and in effect part of claim construction.” ePlus, Inc.
v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012).
III.

CONSTRUCTION OF AGREED TERMS

The parties agreed to the construction of the following phrase:
Claim Term/Phrase
“a segment configured to initiate
registration operations”

Agreed Construction
“portion of the file packet that includes software
to initiate registration operations”

(’293 Patent, claims 1, 12, 17)
“license management policy information”

“a set of rules that determine whether users can
obtain a license to use a particular application”

(’766 Patent, claims 1, 7, 13)
“license management server”

“a server that determines license availability
based on license management policy information”

(’766 Patent, claims 1, 7, 13)
“centralized network management server”

“centralized server for managing the network”

(’293 Patent, claims 1, 12, 17)
“on demand server”
(’766 Patent, claims 3, 9, 15)
“target on-demand server”
(’293 Patent, claims 1, 12, 17)

“a server delivering applications as needed
responsive to user requests as requests are
received”
“a server delivering applications as needed
responsive to user requests as requests are
received at the server, where those applications

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are distributed from a centralized network
management server”
“installing a plurality of application
programs at the server”

plain and ordinary meaning

(’466 Patent, claims 1, 15, 16)
“installing [an / a second] application
plain and ordinary meaning
program having a plurality of configurable
preferences and a plurality of authorized
users on a server coupled to the network”
(’578 Patent, claims 1, 14, 15,17, 30, 32,
45)
“authorized user” / “[for which the] user
[is (not)] authorized”

plain and ordinary meaning

(’466 Patent, claims 1, 2, 8, 15, 17, 23;
’578 Patent, claims 1, 7, 10, 12–17, 23,
26, 32, 38, 41-46)
“user set”

plain and ordinary meaning

(’578 Patent, claims 1, 2, 4, 6, 8, 10, 11,
14-18, 20, 22, 24, 26, 30–33, 35, 37, 39,
41, 42, 45, 46)
Docket Nos. 159-1 at 8–10; 159-2 at 10–12. In view of the parties’ agreement on the proper
construction of the identified terms, the Court hereby ADOPTS the parties’ agreed construction.
IV.

RELEVANCE OF THE PROSECUTION FILE HISTORY IN RELATED
PATENTS

The parties dispute whether the prosecution histories of the ’466 and ’766 Patents are
relevant for construing the terms in the ’578 and ’293 Patents. As background, the ’578 and ’466
Patents were filed on the same day. The specification of the ’578 Patent states that “[t]his
application is related to the following application filed concurrently herewith: [the ’466 Patent].”
’578 Patent at 1:6–13. Similarly, the specification of the ’466 Patent states that “[t]his application

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is related to the following application filed concurrently herewith: [the ’578 Patent].” ’466 Patent
at 1:6–12. Moreover, the specification of the ’578 Patent incorporates by reference the ’466 Patent.
’578 Patent at 7:17–21, 11:27–30. Likewise, the specification of the ’466 Patent incorporates by
reference the ’578 Patent. ’466 Patent at 7:41–48, 11:17–26. Furthermore, the ’293 Patent is a
divisional of the ’466 Patent, and the patents share a common specification. Similarly, the ’766
Patent is a divisional of the ’578 Patent, and the patents share a common specification.
Plaintiffs argue that the prosecution histories of the ’466 and ’766 Patents are irrelevant
and should be disregarded because they “form[] no part of the prosecution history of the ’578 or
’293 [P]atents.” Docket No. 155 at 8. In the alternative, Plaintiffs argue that “[t]hose prosecution
histories can be considered, but only as extrinsic evidence . . . .” Docket No. 190 at 4 (citing C&C
Jewelry MFG, Inc. v. West, 2010 WL 2681921, *1 (N.D. Cal. 2010)).

During the claim

construction hearing, Plaintiffs suggested that the issue was not adequately briefed by the parties.3
The Court disagrees and finds that Defendants provide persuasive authority and arguments
to support their position that the prosecution histories of the ’466 and ’766 Patents are relevant to
the construction of identical terms used in the related ’578 and ’293 Patents.
Specifically, Defendants cite to Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d
1295 (Fed. Cir. 2007), to support their contention that disclaimers of claim scope in one patent
apply to related patents. Docket No. 185 at 8. The Verizon court summarized the facts in that case
as follows:
The claims of the ’880 patent originated in U.S. patent application No. 08/814,291
(“’291 application”). During prosecution the examiner issued a restriction
requirement on the ground that the ’291 application covered two independent and

3

Notwithstanding Plaintiffs’ suggestion, the Court provided the parties with ample opportunity
to brief the issue of whether the prosecution histories of the ’466 and ’766 Patents are relevant to
the construction of identical terms in the related ’578 and ’293 Patents. Furthermore, the Court
specifically inquired about the issue during the claim construction hearing.
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distinct inventions. The applicants then filed divisional application No. 09/363,750
(“’750 application”), pursuing some of the claims of the original ’291 application,
which was allowed as the ’880 patent. The remainder of the claims of the original
’291 application in turn matured into U.S. Patent No. 6,542,497 (“’497 patent”).
The claims of both applications require a “localized wireless gateway system.”
During prosecution of the ’291 application the applicants’ claims were rejected
based on prior art wireless gateway systems.
The applicants gained allowance of the claims of the ’291 application after stating
that the prior art systems “all appear to be directed to non-localized systems,” and
that the “present invention,” by contrast, was “restricted to operate within a few
feet from a base station (i.e. wireless handsets).”
Verizon, 503 F3d at 1306-1307. Given this background, the court in Verizon rejected the argument
“that the disclaimer in the ’291 application process (leading to the ’497 patent) should not apply
to the ’880 patent because it occurred after the ’880 patent issued.” Id. at 1307. The Court held
that “ ‘it is not unsound to apply the same interpretation to th[e] patent[-in-suit],’ ‘even though
[that] patent had already issued.’ ” Id. (quoting Microsoft Corp. v. Multi-tech Sys., Inc., 357 F.3d
1340, 1350 (Fed. Cir. 2004)).
The facts in Verizon are analogous to the facts in this case. As in Verizon, the ’293 Patent
is a divisional of the ’466 Patent, and the patents share a common specification. Similarly, the
’766 Patent is a divisional of the ’578 Patent, and the patents share a common specification.
Likewise, all four patents require “application program(s);” and the ’466, ’766 and ’578 Patents
each require an “application launcher program.” Moreover, the specification of the ’578 Patent
incorporates by reference the ’466 Patent, and explicitly states the applications are related. ’578
Patent at 1:6–13, 7:17–21, 11:27–30. Likewise, the specification of the ’466 Patent incorporates
by reference the ’578 Patent, and explicitly states the applications are related. ’466 Patent at 1:6–
12, 7:41–48, 11:17–26.
Contrary to Plaintiffs’ contention, a restriction requirement does not automatically isolate
the prosecution history of a divisional application from its sibling or related application. Indeed,

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in Microsoft Corp. v. Multi-Tech Sys., 357 F.3d 1340 (Fed. Cir. 2004), the Federal Circuit
concluded that “[a]ny statement of the patentee in the prosecution of a related application as to the
scope of the invention would be relevant to claim construction, and the relevance of the statement
made in this instance is enhanced by the fact that it was made in an official proceeding in which
the patentee had every incentive to exercise care in characterizing the scope of its invention.” Id.
at 1350. As discussed above, it cannot be reasonably disputed that the Asserted Patents are related.
Accordingly, the Court finds that the prosecution histories of the ’466 and ’766 Patents are relevant
to the construction of identical terms in the related ’578 and ’293 Patents.4
V.

CONSTRUCTION OF DISPUTED TERMS

The parties’ dispute focuses on the meaning and scope of nine terms/phrases in the
Asserted Patents.
1. “application program(s) / application(s)”
Disputed Term
“application program(s) /
application(s)”

Plaintiffs’ Proposal
“code associated with
performing function for a
user”

Defendants’ Proposal
“application level software program
code for underlying application level
functions that executes locally at the
client as a separate application from
the browser”

4

Plaintiffs did not provide relevant authority to support their position that the prosecution history
of a sibling application that is incorporated by reference should automatically be considered
extrinsic evidence. The Federal Circuit has stated that “[i]ncorporation by reference provides a
method for integrating material from various documents into a host document . . . by citing such
material in a manner that makes clear that the material is effectively part of the host document as
if it were explicitly contained therein.” Advanced Display Sys. Inc. v. Kent State Univ., 212 F.3d
1272, 1282 (Fed. Cir. 2000). The court further held that the determination of “[w]hether and to
what extent material has been incorporated by reference into a host document is a question of law.”
Id. at 1283. For the reasons stated above, the Court finds that the prosecution histories of the ’466
and ’766 Patents are relevant to the construction of identical terms used in the related ’578 and
’293 Patents. Accordingly, the Court disagrees that the prosecution histories of the Asserted
Patents in this case should be considered in isolation. Instead, the Court will consider the
prosecution histories in the context of the disputed terms to avoid reading unnecessary and
redundant language into a disputed term.

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a) The Parties’ Positions
The parties dispute whether the term “application program” should be limited to
“execute[ing] locally at the client as a separate application from the browser,” as Defendants
propose. Plaintiffs argue that there are two ways a user can execute an application in the network
described in the Asserted Patents. Docket No. 140 at 4. The first method includes downloading
and executing an application on the client terminal. Id. Plaintiffs agree that the asserted claims of
the ’466 Patent, and claims 3, 9 and 15 of the ’766 Patent, are drawn to this first method. Id. The
second method includes the application remaining on the server and being executed remotely by
a user. Id. Plaintiffs contend that the claims of the ’578 and ’293 Patents cover both methods. Id.
Plaintiffs argue that all claims of the ’466 Patent, and claims 3, 9 and 15 of the ’766 Patent,
recite language that unambiguously requires execution on the client. Id. at 5. Plaintiffs contend
that no similar language appears in the claims or prosecution history of the ’578 or ’293 Patents.
Id. According to Plaintiffs, the patentees drafted the claims of the ’578 Patent to cover either
method. Id. Plaintiffs further argue that the claims of the ’293 Patent are directed to an exchange
of applications from a central management server to the remote servers, not from the remote server
to the client. Id. Plaintiffs contend that those claims do not mention executing the application
program. Id.
Plaintiffs further argue that nothing in the ordinary and usual meaning of “application”
would limit the term to software executed only at the client. Id. Plaintiffs contend that applications
are frequently executed at remote servers. Id. at 6. Plaintiffs argue that the intrinsic record of the
’578 and ’293 Patents does not contain a definition or disclaimer that would limit the claims. Id.
at 7. Plaintiffs also argue that nothing in the in the intrinsic record of the ’466 or ’766 Patents
modifies the ordinary and usual meeting of “application.” Id. Plaintiffs contend that the claims
of the ’466 Patent are limited to execution on the client because the claims recite this limitation in

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specific language. Id.
Defendants respond that the ’293 and ’578 Patents explicitly distinguish the claimed
invention from certain prior art centralized software management systems on the basis that
applications were executed “at the server rather than the client.” Docket No. 150 at 9–10 (citing
’578 Patent at 2:50–55, 3:5–8; ’466 Patent at 2:52–57). Defendants argue that the patentees could
not have intended to claim a system where “applications” were executed at the server. Docket No.
150 at 10. Defendants also argue that the “Summary of the Invention” section of the ’293 Patent
states that, according to the “present invention,” “[t]he application program is then provided from
the server and executed at the client.” Id. (citing ’466 Patent at 3:55–4:3). Defendants contend
that this provides additional support that the claimed invention was directed specifically to
execution of applications at the client. Docket No. 150 at 10.
Defendants further argue that the disclosed embodiments in the ’293 and ’578 Patents
reflect that applications are “distributed” or “delivered” to, and executed at, the client, and that
there are no embodiments in which applications are executed at the server. Id. (citing ’578 Patent
at 6:16–25, 11:65–12:1, Figures 2–4; ’466 Patent at 6:15–17, 6:22–24, 6:62–64, 9:30–33, 10:3–7,
10:61–64, Figures 3, 4, 6). Defendants contend that Plaintiffs do not cite to any specification to
support its position regarding server-side execution. Docket No. 150 at 11.
Defendants further argue that the prosecution histories of the ’766 and ’466 Patents confirm
the patentees’ intent to foreclose the possibility of execution at the server. Id. at 12. Defendants
contend that the patentees repeatedly distinguished the claimed invention because the prior art
applications were not provided to the client for execution. Id. (citing Docket No. 150-6 at 9–11,
36, 46–47). Defendants also argue that the patentees confirmed this definition of “application
program” during prosecution of the ’466 Patent. Docket No. 150 at 12 (citing Docket No. 150-5

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at 25, 50). Defendants contend that the patentees argued that an “application program” required
both local execution at the client and to be separate from the browser. Docket No. 150 at 13 (citing
Docket No. 150-5 at 27-29, 53-55). Defendants further argue that the only portion of any of the
four file histories to which Plaintiffs cite does not address execution at all. Docket No. 150 at 13–
14.
Plaintiffs reply that the four patents are directed towards four different inventions, with
each invention relating to a particular portion of an enterprise computer network. Docket No. 155
at 2. Plaintiffs contend that all claims of the ’466 Patent incorporate specific language requiring
execution at the client. Id. Plaintiffs further contend that the claims of the ’578 and ’293 Patents
are directed toward inventions that can be practiced in networks where execution is at a server. Id.
Plaintiffs argue that nothing in the ordinary and usual meaning of “application” would limit the
term to software executed only at a client. Id. at 2–3.
Plaintiffs further argue that the ’578 Patent’s criticism of certain mobility systems was
because they did not address “the full range of complications which may arise in a heterogeneous
network utilizing different devices and connections.” Id. at 4 (citing ’578 Patent at 3:5–8).
Plaintiffs contend that this limitation of prior art mobility systems would appear to be independent
of where applications are executed. Docket No. 155 at 5 (citing ’578 Patent at 3:12–27, 2:35–3:4,
2:50–55). Plaintiffs argue that the ’578 Patent does not criticize executing applications on the
server. Docket No. 155 at 5. Plaintiffs further contend that the section of the specification entitled
“DETAILED DESCRIPTION OF PREFERRED EMBODIMENTS” makes no mention of where
the applications are executed. Id. (citing ’578 Patent at 6:29–11:22, Figures 2–4). According to
Plaintiffs, this section only describes downloading the “application launcher program,” not the
application. Docket No. 155 at 5. Plaintiffs contend that the only reference in the entire patent to

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an embodiment that describes execution at the client is in a section describing the “[a]lternative
preferred embodiments . . . described in [the ’466] patent application.” Id. (citing ’578 Patent at
11:27–12:36). According to Plaintiffs, this alternate embodiment does not disavow coverage of
systems or programs that execute on a server in the claims of the ’578 Patent. Docket No. 155 at
5.
Plaintiffs further argue that the ’293 Patent is a divisional of the ’466 Patent and is directed
to “distribution of application programs to a target station on a network.” Id. at 6. Plaintiffs
contend that all claims of the ’466 Patent have language unambiguously requiring execution at the
client and the ’293 Patent does not involve a client. Id. at 7. Plaintiffs further contend that
embodiments in the shared specification that are executed at the client correspond to the distinct
invention of the ’466 Patent and where applications are executed is not mentioned in the ’293
Patent. Id. (citing ’466 Patent at 17:17–20:59).
Regarding the prosecution history, Plaintiffs argue that the prosecution history of the ’466
Patent can be disregarded because the claim construction issue is limited to claims of the ’578 and
’293 Patents. Docket No. 155 at 7. Plaintiffs contend that the requirement of execution at the
client in the ’466 Patent arises from specific language in the ’466 Patent’s claims requiring
execution at the client. Id. at 8. According to Plaintiffs, the statements in the prosecution history
of the ’466 Patent have no relevance to the ’578 Patent. Id.
Plaintiffs further argue that the prosecution history of the ’766 Patent also forms no part of
the prosecution history of the ’578 or ’293 Patents and should be disregarded. Id. Plaintiffs
contend that the relevant claims of the ’766 Patent cover a method or system in which an
application launcher program located on the client requests a license availability from a server and
then receives from the server an indication of availability or unavailability. Id. at 8–9. Plaintiffs

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argue that the relevant claims do not discuss execution and the patentees did not distinguish any
of those references based on where execution is performed. Id. at 9. Plaintiffs also argue that the
patentees did not distinguish Franklin on the grounds that its applications were executed on the
server, but instead distinguished Franklin on the ground that the application launcher was located
on the server. Id.
Plaintiffs also contend that the comment regarding the Duvvoori reference was that the
reference did not disclose “a configurable instance of an application . . . for execution at the client.”
Id. According to Plaintiffs, the patentees did not distinguish the prior art references on the grounds
that applications would be executed at the server because, in both references, the applications were
executed at the client, not the server. Id. at 9–10 (citing Docket No. 155-3 at 4, 6). Plaintiffs
contend that the patentees similarly described Duvvoori as describing “an agent process . . . at the
client that controls execution programs resident on the clients.” Docket No. 155 at 10 (citing
Docket No. 155-4 at 4). Plaintiffs argue that the patentees never described either reference as
executing programs at the server. Docket No. 155 at 10. Plaintiffs also argue that the patentees’
statement distinguishing Duvvoori related to that reference not having an application launcher
located on the client. Id.
For the following reasons, the Court finds that the term “application program(s) /
application(s)” should be construed to mean “the code associated with the underlying
program functions that is a separate application from a browser interface and does not
execute within the browser window.”
b) Analysis
The term “application program(s) / application(s)” appears in claims 1–4, 8–9, 13, 15, 16–
19, 23–24, 28, 30–32, 36–37 and 41 of the ’466 Patent; claims 1–3, 7–9 and 13–15 of the ’766

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Patent; claims 1, 2, 4, 5, 7, 11–18, 20, 21, 23, 27–33, 35, 36, 38 and 42–46 of the ’578 Patent; and
claims 1, 12 and 17 of the ’293 Patent. The Court finds that the term is used consistently in the
claims and is intended to have the same general meaning in each claim. The Court further finds
that the specification provides an explicit definition for the term. Both the ’578 and ’466 Patents
state that “as used herein, it is to be understood that the term ‘application program’ generally refers
to the code associated with the underlying program functions, for example, Lotus Notes or a
terminal emulator program.” ’578 Patent at 12:13–16; ’466 Patent at 14:24–27.
The patentees also argued during the prosecution of the ’466 Patent that “the application
launcher program interacts with the desktop, such as a user browser interface, while an instance
of the application program is requested through the desktop but executes locally at the client as a
separate application from the browser interface. For example, Lotus Notes would not execute
within the browser window.” Docket No. 150-5 at 25, 50 (emphasis added). Accordingly, the
Court construes the term “application program(s) / application(s)” to mean “code associated with
the underlying program functions that is a separate application from a browser interface and does
not execute within the browser window.”
The Court rejects Defendants’ proposal of “executes locally at the client” because it would
unnecessarily add a limitation to the term “application program.” The intrinsic evidence indicates
that the application programs are stored at the server. For example, the Summary of the Invention
of the ’466 Patent states that “[a] plurality of application programs are installed at the server.”
’466 Patent at 4:24–25. The specification further states that “[t]he server receives a selection of
one of the plurality of application programs from the user desktop interface and provides an
instance of the selected one of the plurality of application programs to the client for execution
responsive to the selection.” Id. at 4:34–38 (emphasis added). Thus, it is an “instance of the

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application program” that is “executed locally at the client.” Indeed, as discussed above, the
patentees argued during the prosecution of the ’466 Patent that “the application launcher program
interacts with the desktop, such as a user browser interface, while an instance of the application
program is requested through the desktop but executes locally at the client as a separate application
from the browser interface.” Docket No. 150-5 at 25, 50 (emphasis added). The claims of the
’466, ’766 and ’578 Patents explicitly recite either “provid[es]/[ing] an instance of the application
program” or “providing an instance of the selected one of the plurality of application programs.”
Thus, it would be improper to redraft the claims to read “executes locally” into the term
“application program.”
Defendants argue that the “Background of the Invention” sections of both the ’293 and
’578 Patents explicitly distinguish the claimed invention from certain prior art centralized software
management systems on the basis that applications were executed “at the server rather than the
client.” Docket No. 150 at 9–10. Contrary to Defendants’ contention, this section of the
specification does not provide a clear and unambiguous disavowal of the suggested claim scope.
Instead, this section describes a number of prior art systems. Computer Docking Station Corp. v.
Dell, Inc., 519 F.3d 1366, 1374-75 (Fed. Cir. 2008) (“Prosecution disclaimer does not apply . . . if
the applicant simply describes features of the prior art and does not distinguish the claimed
invention based on those features.”). For example, the “Background of the Invention” section also
describes prior art systems in which the application program is transmitted from a server to a client.
’578 Patent at 1:62–2:6 (“In addition, the Systems Management Server (SMS) program from
Microsoft Corporation provides an ability to transmit an application program from a server to a
number of clients. The SMS system typically allows installation of programs and associated icons
at client stations for SMS-enabled applications.”).

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Defendants further argue that the prosecution histories of the ’766 and ’466 Patents confirm
the patentees’ intent to foreclose the possibility of execution at the server. Docket No. 150 at 12.
Defendants contend that “the Applicants repeatedly distinguished the claimed invention from the
prior art on the basis that the prior art applications were not provided to the client for execution.”
Id. The Court disagrees with Defendants’ analysis of the prosecution history. In fact, contrary to
Defendants’ contention, the patentees argued that the Christiano reference “appears to describe an
environment in which the program’s executable is already on the client and the client obtains
‘authorization . . . to use or ‘implement’ (run) a single designated software product.’ ” Docket No.
150-6 at 11 (emphasis added) (citation omitted). Thus, the patentees argued that the prior art
included an application program executed on the client, and they did not distinguish the claims on
this basis. Instead, the patentees distinguished the Christiano reference because it did not disclose
“receiving the request from an application launcher program.” Id. Similarly, the patentee
distinguished the Franklin and Duvvoori references because they did not request an instance of the
application. Id. at 11, 36, 54.
Regarding the prosecution history of the ’466 Patent, Defendants contend that the
Applicants were explicit that the “application” of the invention executed locally at the client.
Docket No. 150 at 13. Defendants focus on an incomplete portion of the patentees’ statement.
The patentees argued that “the application launcher program interacts with the desktop, such as a
user browser interface, while an instance of the application program is requested through the
desktop but executes locally at the client as a separate application from the browser interface.”
Docket No. 150-5 at 25, 50. As indicated, it is “an instance of the application program” that
“executes locally at the client,” not the recited “application program.” The claims of the ’466,
’766 and ’578 Patents explicitly recite “provid[es]/[ing] an instance of the application program”

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or “providing an instance of the selected one of the plurality of application programs.” Thus, it
would be improper to redraft the claims to read in “execute locally” into the term “application
program.”
c) Court’s Construction
The Court construes the term “application program(s) / application(s)” to mean “the
code associated with the underlying program functions that is a separate application
from a browser interface and does not execute within the browser window.”
2. “application launcher program”
Disputed Term
“application launcher
program”

Plaintiffs’ Proposal
“a program distributed to a client
to initially populate a user
desktop and to request execution
of the application program”

Defendants’ Proposal5
“a program distributed to a client
to initially populate a user desktop
and to request the application
program from a server”

a) The Parties’ Positions
The parties dispute whether the term “application launcher program” should be limited “to
request the application program from a server,” as Defendants propose, or whether the term merely
“request(s) execution of the application program,” as Plaintiffs propose. Plaintiffs argue that the
’578 Patent describes a launcher as a program that the server distributes to a client to “initially
populate the user desktop” by “provid[ing] for a user interface” (e.g., displaying an icon that
corresponds to the application) “to execute the application.” Docket No. 174 at 2 (citing ’578
Patent at 12:26–27, 3:64–4:2). Plaintiffs contend that the program is called a “launcher” because
when the user “selects” the application, the launcher requests execution of (“launches”) the
application itself. Docket No. 174 at 2–3 (citing ’578 Patent at 4:6–9, 8:14–17, 10:58–62).

5

Defendant Kaspersky Lab, Inc. indicates that it does “not join in [Defendants’ supplemental]
brief, and proposes that the Court adopt Uniloc’s construction of the two terms addressed herein.”
Docket No. 185 at 4 n.1.
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Plaintiffs also argue that the ’578 Patent describes the launcher as providing user
information to the server “along with the request to initiate execution of the application.” Docket
No. 174 at 3 (citing ’578 Patent at 4:6–9). Plaintiffs contend that Defendants’ proposal is not
mentioned until later in the patent, and then only as a characteristic of an “alternative”
embodiment. Docket No. 174 at 3 (citing ’578 at 11:60–12:1, 11:27–30). According to Plaintiffs,
Defendants’ construction describes only one embodiment. Docket No. 174 at 4.
Plaintiffs further argue that Defendants’ construction does not cover all launchers and
would not cover launchers that request execution at the server. Id. Plaintiffs contend that when
an application is executed at the server, the launcher would not request the application from the
server. Id. According to Plaintiffs, the launcher would need only provide the server with a
“request to initiate execution of the application.” Id. Plaintiffs agree that the specification
describes an embodiment in which the launcher requests an application from the server but argues
that the ’578 Patent describes this as alternative preferred embodiment. Id. (citing ’578 Patent at
11:65–12:1, 11:27–30).
Plaintiffs further argue that the specification includes an embodiment in which the launcher
distributed to the client includes the entire application provided by the vendor. Docket No. 174 at
4 (citing ’466 Patent at 14:32–34). According to Plaintiffs, that launcher would not “request the
application” from the server, because that launcher already includes the application. Docket No.
174 at 4. Plaintiffs contend that there is nothing in the specification to suggest that the inventors
would have wanted to exclude this embodiment. Id. at 5.
Defendants respond that “application launcher program” is not a term of art, but instead is
an expression coined by the patentees specifically for these patents. Docket No. 185 at 5–6.
Defendants contend that the same claim term used in related patents is presumed to carry the same

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construed meaning. Id. at 6. Defendants argue that an application launcher program allows a
client to request an instance of an application from a server for execution at a client. Id. (citing
’466 Patent at 16:18–29; ’578 Patent 11:60–12:1, 11:32–12:4). According to Defendants, no
embodiment in either specification expressly states that an application launcher program is used
to execute programs on a server. Docket No. 185 at 6.
Defendants further argue that Plaintiffs take the phrase “request to initiate execution of the
application” out-of-context and Plaintiffs ask the Court to hypothesize that execution could take
place on the server itself. Id. at 7 (citing ’578 Patent at 4:6–9). Defendants also argue that the full
passage specifies that the server responds by “providing an instance of the application program for
execution.” Docket No. 185 at 7 (citing ’578 Patent at 10:9–12). Defendants contend that the
request is received by an “on-demand server,” which the specification defines as a server
“delivering” applications to clients, not executing applications itself. Docket No. 185 at 7 (citing
’578 Patent 4:15–18, 6:51–53). According to Defendants, it is the client that executes an
application program following its delivery by the on-demand server. Docket No. 185 at 7.
Defendants argue that server-side execution is expressly discussed in the Asserted Patents
only in the “Background of the Invention,” in which the patentees distinguish prior art mainframe
systems whose applications were executed “at the server rather than the client.” Docket No. 185
at 7 (citing ’578 Patent at 2:50–55, 3:5–8;’466 Patent 2:52–57). Defendants also argue that the
patentees repeatedly assigned to the application launcher program the function of distributing
applications to clients. Docket No. 185 at 7. Defendants contend that when a specification
exclusively assigns functions to certain claimed elements, that assignment should be reflected in
that element’s claim construction. Id.
Defendants further argue that the patentees disavowed embodiments in which application

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launcher programs initiate server execution of applications. Id. Defendants contend that during
prosecution of the ’766 Patent the patentees defined the application launcher program to require
local execution. Id. Defendants argue that the patentees repeatedly relied on local distribution of
applications to distinguish this “application launcher program” from cited prior art application
launchers. Id. Defendants contend that the patentees distinguished the application launcher of
Franklin as a “launcher . . . that merely accesses applications which are stored and launched from
a server,” while characterizing the claimed application launcher program as one that “populates
clients.” Id. (citing Docket No. 150-6 at 11–12).
Defendants also argue that the patentees attempted to distinguish the Duvoori reference
because that reference’s application “wrapper” failed to “request a configurable instance of an
application from a server for execution at the client as with the recited application launcher
programs of the present invention.” Docket No. 185 at 8–9 (citing Docket No. 150-6 at 36).
Defendants also contend that, on appeal, the patentees repeated their arguments regarding Duvoori
and further distinguished the Christiano reference as lacking “an application launcher program that
obtains ‘the application program’s executable code from the server on-demand.’ ” Docket No.
185 at 9 (citing Docket No. 150-6 at 52). According to Defendants, each of these arguments makes
clear that the patentees intended the term “application launcher program” to mean a program that
requests application programs from a server.
Defendants also argue that Plaintiffs incorrectly suggest that Defendants’ construction
reads out an embodiment in the ’578 Patent “where the launcher distributed to the client includes
the entire application the vendor provided.” Docket No. 185 at 9 (citing ’466 Patent at 14:32–34).
According to Defendants, this passage indicates that the application launcher program may be an
“entire program provided by a software vendor” (i.e., to perform all operations associated with

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application requests) or “merely a portion” of such program “distributed to a client to perform
particular operations” (i.e., a subset of operations associated with application requests). Docket
No. at 185 at 9 (citing ’466 Patent at 14:32–41). Defendants contend that the specifications never
describe an application launcher program as Plaintiffs contend, and that Plaintiffs’ proposed
broadening construction is improper. Docket No. at 185 at 9.
Plaintiffs reply that Defendants refer to an “alternative preferred embodiment” as the only
mention of where execution refers to downloading an application for execution at the client.
Docket No. 190 at 3 (citing ’578 Patent at 11:27–12:36). Plaintiffs contend that the specification
does not otherwise mention location of execution. Docket No. 190 at 3. Plaintiffs argue that
whether applications are executed at the server or at the client would be irrelevant to the claimed
invention of the ’578 Patent. Id. Plaintiffs further argue that all claims of the ’466 Patent recite
“providing an instance of the . . . application . . . to the client for execution” because that patent is
directed to a different invention, which incorporates that feature. Id. Plaintiffs contend that
references to that feature in the ’466 Patent would not disavow the full scope of claims of the ’578
Patent. Id.
Plaintiffs further argue that the ’578 Patent issued on a first office action and that nothing
in its prosecution history could disavow anything. Id. at 4. Plaintiffs contend that the prosecution
histories of the ’466 and ’766 Patents can be considered, but only as extrinsic evidence as they
were not part of the negotiation with the PTO to obtain the claims of the ’578 Patent. Id.
According to Plaintiffs, there are no statements in those prosecution histories that would clearly
and unmistakably disavow the scope of any claims of the ’578 Patent. Id.
For the following reasons, the Court finds that the term “application launcher program”
should be construed to mean “a program distributed to a client to initially populate a user

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desktop and to request an instance of the application for execution at the client.”
b) Analysis
The term “application launcher program” appears in claims 3, 6, 10, 18, 21, 25, 31, 34 and
38 of the ’466 Patent; claims 2, 8 and 14 of the ’766 Patent; and claims 1, 4–5, 11–17, 20–21, 27–
32, 35–36 and 42–46 of the ’578 Patent. The Court finds that the term is used consistently in the
claims and is intended to have the same general meaning in each claim. The Court further finds
that the term “application launcher program” is not a term of art, but instead is a term coined by
the patentees for the Asserted Patents.
The parties agree that the term should at least be construed to mean “a program distributed
to a client to initially populate a user desktop.” The Court agrees. The ’578 and ’466 Patents state
that “the application launcher program distributed to initially populate the user desktop preferably
does not include the code associated with the underlying application program.” ’578 Patent at
12:26–29; ’466 Patent at 14:36–38.

The specification of the ’466 Patent also states that

“[p]referably, the application launcher program, as described above, is distributed for each
authorized application program to the client station 202 at the time of establishment of the user
desktop interface without including all of the executable code of each application as part of the
application launchers at the time of distribution.” ’466 Patent at 16:13–18. Accordingly, the
intrinsic evidence indicates that the “application launcher program” is “a program distributed to a
client to initially populate a user desktop.”
The Court further finds that the intrinsic evidence indicates that the “application launcher
program” requests an instance of the application for execution at the client. For example, the ’578
Patent specification states that “[t]he application launcher applet then detects selection by the user
of the application program’s associated icon from the user desktop interface at clients 24, 24’, 26,

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26’ and requests an instance of the selected one of the plurality of application programs associated
with the icon from server system 22. The application launcher program then populates clients 24,
24’, 26, 26’ with the instance of the selected application program for execution.” ’578 Patent at
11:60–12:1 (emphasis added). Likewise, the ’466 Patent specification states that “[t]he application
launcher applet then detects selection by the user of the application program’s associated icon from
the user desktop interface at client station 202 and requests an instance of the selected one of the
plurality of application programs associated with the icon from server system 22. The application
launcher program then populates client station 202 with the instance of the selected application
program for execution.” ’466 Patent at 16:18–25 (emphasis added).
Moreover, the patentees argued during the prosecution of the ’766 Patent that the prior art
failed to disclose an application launcher program that requests an instance of the application for
execution at the client. Specifically, the patentees argued that “while the wrappers of Duvvoori
may request a license, they do not request a configurable instance of an application from a server
for execution at the client as with the recited application launcher programs of the present
invention.” Docket No. 150-6 at 36, 54 (emphasis added). Likewise, the patentee argued that “the
launcher recited in Franklin is a server-based resource that merely accesses applications which are
stored and launched from a server” and does not disclose a launcher that “requests an instance of
the selected one of the plurality of application programs . . . from server system 22.” Id. at 11.
Similarly, the patentee argued that “ ‘receiving the request from an application launcher program’
is not disclosed in or suggested by Christiano.” Id. at 11.
The patentees also made similar arguments during the prosecution of the ’466 Patent.
Specifically, the patentees argued that “the application launcher program interacts with the
desktop, such as a user browser interface, while an instance of the application program is

Page 29 of 68

requested through the desktop but executes locally at the client . . . .” Docket No. 150-5 at 25, 50
(emphasis added). The patentee also distinguished the Win reference by arguing that “no selection
received at the server of such an application program and no ‘providing an instance of the selected’
application program ‘to the client for execution’ is taught or suggested by Win.” Id. at 27.
Accordingly, the intrinsic evidence indicates that “application launcher program” should be
construed to mean “a program distributed to a client to initially populate a user desktop and to
request an instance of the application for execution at the client.”
Plaintiffs argue that the specification of the ’578 Patent describes the launcher as providing
user information to the server “along with the request to initiate execution of the application.”
Docket No. 174 at 3 (citing ’578 Patent at 4:6–9). The problem with Plaintiffs’ argument is that
the quote does not indicate where the execution takes place. In fact, the specification indicates
that the server responds by “providing an instance of the application program for execution.” ’578
Patent at 10:9–12. Furthermore, the request is received by an “on-demand server,” which the
specification defines as a server “delivering” applications to clients, not executing applications
itself. ’578 Patent at 4:15–18, 6:51–53. Indeed, Plaintiffs concede that the ’578 Patent only
mentions downloading an application for execution at the client, and does not otherwise mention
location of execution. Docket No. 190 at 3. The Court is cognizant that to impose a limited
construction, it is “not enough that the only embodiments, or all of the embodiments, contain a
particular limitation.” Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir.
2012). However, as indicated above, the intrinsic evidence indicates that the application launcher
program requests an instance of the application for execution at the client. Medrad, Inc. v. MRI
Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005) (“We cannot look at the ordinary meaning
of the term . . . in a vacuum. Rather, we must look at the ordinary meaning in the context of the

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written description and the prosecution history.”).
c) Court’s Construction
The Court construes the term “application launcher program” to mean “a program
distributed to a client to initially populate a user desktop and to request an instance of
the application for execution at the client.”
3. “make the application program available for use”
Disputed Term
“make the application
program available for
use”

Plaintiffs’ Proposal
“make the application program
available for use”

Defendants’ Proposal6
Bitdefender, Piriform, ADP,
LLC, Blackboard, Box, and
Zendesk
“make the application
available for access and
download, responsive to user
requests”
Ubisoft, Square Enix, Big
Fish
“identify the individual users
to which the application
program is available for
execution”

a) The Parties’ Positions
The parties dispute whether the phrase “make the application program available for use”
requires construction. Plaintiffs argue that a user would select an application by clicking the
corresponding icon on his desktop, and if that application is “available for use,” it could either be
executed at the server or downloaded to the client for execution. Docket No. 174 at 5. Plaintiffs
contend that Defendants’ proposal of “download” would improperly narrow the claims to exclude
systems that execute the application at the server. Id. Plaintiffs note that the claims were amended

6

Defendant Kaspersky Lab, Inc. indicated that it did “not join in [Defendants’ supplemental] brief,
and proposes that the Court adopt Uniloc’s construction of the two terms addressed herein.”
Docket No. 185 at 4 n.1.
Page 31 of 68

to add the language in dispute. Id. at 6 (citing Docket No. 174-2 at 6–7). Plaintiffs argue that the
amendment was not intended to prescribe where applications would be executed. Docket No. 174
at 6 (citing Docket No. 174-2 at 8). According to Plaintiffs, the added language was intended to
clarify that the application was not merely distributed to the server, but distributed in a way that it
would be recognized and available to users. Docket No. 174 at 6.
Plaintiffs further argue that in the prosecution of the ’466 Patent, the PTO issued a
restriction requirement, finding that the claimed invention of the ’293 Patent was distinct from the
’466 Patent claims. Id. at 7. Plaintiffs contend that the portions of the ’466 Patent that appear to
pertain exclusively to the ’293 Patent claims do not mention where applications are executed. Id.
(citing ’466 Patent at 3:47–50, 4:10–21, 5:28–54, 6:28–39, 17:18–20:59, Figures 8–10). Plaintiffs
argue that the patentees directed the four patents-in-suit to separate, distinct inventions. Docket
No. 174 at 8. According to Plaintiffs, the ’578 and ’293 Patents are agnostic as to where the
applications are executed. Id.
Defendants Bitdefender, Piriform, ADP, LLC, Blackboard, Box and Zendesk (collectively
“the First Group of Defendants”) argue that the phrase should require making “the application
available for access and download, responsive to user requests.” Docket No. 185 at 10. The First
Group of Defendants contend that the claims relate to an “on-demand” server that delivers
applications “as needed responsive to user requests as requests are received.” Id. (citing ’466
Patent at 6:62–64). The First Group of Defendants argue that no embodiment of an on-demand
server expressly describes the remote “use” of an application on a server. Docket No. 185 at 10.
The First Group of Defendants further contend that the ’293 Patent repeatedly confirms that an
on-demand server delivers or distributes an application (i.e., by download) for execution at the
client. Id. (citing ’466 Patent at 3:64–4:3, 6:15–17, 6:22–24, 10:61–64).

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The First Group of Defendants further argue that during the prosecution of the ’466 Patent
the patentees made multiple statements characterizing the invention as accessing and downloading
selected application programs for local execution at the client. Docket No. 185 at 10 (citing Docket
No. 150-5 at 25, 50). The First Group of Defendants also contend that the patentees defined “the
invention” as involving “access[ing] and download[ing] selected application programs.” Docket
No. 185 at 10 (citing Docket No. 150-5 at 8). The First Group of Defendants also argue that the
patentees defined “application programs” as application level software programs that “execute[]
locally at the client as a separate application from the browser interface.” Docket No. 185 at 11
(citing Docket No. 150-5 at 25).
The First Group of Defendants further argue that Plaintiffs’ restriction requirement
argument did not address where applications are executed and did not invite the patentees to adopt
a different meaning for an “application program” across the two applications. Docket No. 185 at
11. The First Group of Defendants further argue that Plaintiffs’ construction presumes that two
independent and potentially incompatible inventions were filed in the same specification, and were
described in alternating paragraphs throughout the specification.

Id.

The First Group of

Defendants contend that the natural reading is that the managed local applications of the ’466
Patent are distributed in the ’293 Patent by downloading them to the client for use. Id. at 12.
The First Group of Defendants also argue that Plaintiffs’ supplemental briefing for the
“available for use” term also contains a misleading quote. Id. The First Group of Defendants
argue that the patentees only cited “page 28, lines 3–4” of the original specification, corresponding
to the ’466 Patent at 17:47–49, and not to the “’466 patent at 17:40–49,” as Plaintiffs contend. Id.
(citing Docket No. 150-7 at 8). The First Group of Defendants argue that Plaintiffs arbitrarily
exclude the immediately preceding sentence in the same paragraph, which recites that this very

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embodiment “provides server and client software for distributing a software package from a server
to a list of TivoliTM clients.” Docket No. 185 at 12 (citing ’466 Patent at 17:35–40). The First
Group of Defendants also contend that the portion of the file history relied on by Plaintiffs supports
their position that the phrase “make the application program available for use” was intended to
convey the availability of programs for distribution (i.e., download) to one or more clients. Docket
No. at 185 at 12.
Defendants Ubisoft, Square Enix, and Big Fish (collectively “the Second Group of
Defendants”) argue that the phrase could be construed to mean “identify the individual users to
which the application program is available for execution.” Id. at 13. The Second Group of
Defendants contend that the phrase has a specific meaning in the context of the ’293 Patent. Id.
The Second Group of Defendants argue that the independent claims of the ’293 Patent require
“preparing a file packet associated with the application program and including a segment
configured to initiate registration operations for the application program” and “distributing the file
packet to the target on-demand server to make the application program available for use by a user
at a client.” Id. According to the Second Group of Defendants, the file packet that is distributed
to the on-demand server to make the application program “available for use by a user at a client”
is the same file packet that is prepared and includes a “segment configured to initiate registration
operations.” Id. The Second Group of Defendants argue that in the context of the ’293 Patent,
making an application program “available for use” involves designating which applications are
authorized with respect to individual users. Id. (citing ’466 Patent at 18:7–15, 17:62–67, 19:22–
29).
Replying to the arguments of the First Group of Defendants, Plaintiffs contend that
nowhere do the inventors state or imply an application executing at the server is not an

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“application.” Docket No. 190 at 5. Plaintiffs argue that the statements in the ’466 Patent requiring
execution at the client arise from the language in the claims explicitly imposing that requirement,
which does not appear in the claims of ’578 or ’293 Patents. Id. Plaintiffs further argue that if the
PTO determines two inventions in a single application are subject to restriction, then the claims of
one patent do not have to embrace limitations contained in claims of the other. Id. Plaintiffs also
contend that the servers are described as “on-demand” because they respond only when a request
(demand) is received from a user selecting an application for execution, not because of where the
application would be executed. Id. According to Plaintiffs, “deliver” in the agreed construction
of “on-demand server,” was intended to encompass both downloading and delivering for execution
at the server. Id. at 5-6.
Replying to the arguments of the Second Group of Defendants, Plaintiffs contend that the
passage relied on by the group describes the disclosed step as an “example,” where “server 22 may
be configured . . . .” Id. (citing ’466 Patent at 18:10–11). Plaintiffs further contend that a second
passage the Second Group of Defendants relied on has the same deficiency. Docket No. 190 at 6
(citing ’466 Patent at 17:62–67). According to Plaintiffs, the inventors added the disputed
language to clarify the application should be not only delivered to the server, but also registered
“in a manner which makes it recognized and available to users.” Docket No. 190 at 6.
For the following reasons, the Court finds that the phrase “make the application program
available for use” should be given its plain and ordinary meaning.
b) Analysis
The phrase “make the application program available for use” appears in claims 1, 12 and
17 of the ’293 Patent. The Court finds that the phrase is used consistently in the claims and is
intended to have the same general meaning in each claim. Before the Court ordered supplemental

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briefing for this term, all of the Defendants agreed to a single construction. After the supplemental
briefing, Defendants are divided into three groups. Kaspersky Lab now agrees with Plaintiffs.
Docket No. 185 at 4 n.1. The First Group of Defendants maintain the previous construction, and
the Second Group of Defendants propose a new construction for the phrase. Docket No. 185 at
12–13. Unlike their previous construction, the Second Group of Defendants’ construction does
not require an application program be available for “download.”
The Court finds that the phrase “make the application program available for use,” should
be given its plain and ordinary meaning. The phrase is not ambiguous or confusing to a jury.
Moreover, the phrase appears in the claims of the ’293 Patent, which relates to the transmission of
applications from a central management server to another server and does not involve a client.
See, e.g., ’466 Patent at 17:60–62 (“The application program software is then distributed by
Tivoli™ server 20 to specified on-demand servers 22, 22’ at block 116.”). The specification states
“[a]ccordingly, with a request from a single Tivoli™ server 20 location, an administrator both
sends a new application package to all supported on-demand servers and installs the program and
configures (registers) it to be available for use.” Id. at 18:26–29 (emphasis added).
Furthermore, the intrinsic evidence does not indicate that “use” should be redrafted as
“access and download, responsive to user requests,” as the First Group of Defendants propose.
The claims of the ’293 Patent require “distributing the file packet to the target on-demand server
to make the application program available for use by a user at a client.” As indicated, the claims
recite that the application program is available for use, and do not further recite how the users use
the application program. Simply stated, Defendants’ construction would read an unwarranted
limitation into the claims of the ’293 Patent.
The First Group of Defendants argue that no embodiment of an on-demand server

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expressly describes the remote “use” of an application on a server. Docket No. 185 at 10. The
First Group of Defendants further argue that during the prosecution of the ’466 Patent the patentee
made multiple statements characterizing the invention as accessing and downloading selected
application programs for local execution at the client. Id. The Court disagrees that the patentees
made a clear and unambiguous disclaimer in the prosecution history regarding “available for use.”
Indeed, the patentees distinguished certain prior art by pointing out the claim (that would become
claim 1 of the ’293 Patent) recited “an exchange, not involving a client, to enable availability of a
program” at a target on-demand server. Docket No. 140-6 at 10 (emphasis added). As discussed
above, the claims recite that the application program is available for use, and do not further recite
how the users use the application program. Moreover, the phrase appears in the claims of the ’293
Patent, which relate to the transmission of applications from a central management server to
another server, and does not involve a client.
The First Group of Defendants also argue that the patentees defined “application
programs” in the ’466 Prosecution as application level software programs that “execute[] locally
at the client as a separate application from the browser interface.” Docket No. 185 at 11. The
First Group of Defendants focus on an incomplete portion of the patentees’ statement. The
patentees argued that “the application launcher program interacts with the desktop, such as a user
browser interface, while an instance of the application program is requested through the desktop
but executes locally at the client as a separate application from the browser interface.” Docket No.
150-5 at 25, 50. As indicated, it is “an instance of the application program” that “executes locally
at the client,” not the recited “application program.” Moreover, the claims of the ’293 Patent relate
only to the transmission of applications from a central management server to another server and
do not involve a client or executing an instance of the application program locally. As with the

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term “application program,” this proposal would be an unwarranted reading of a “download”
limitation into the phrase “make the application program available for use.”
The Second Group of Defendants argue that in the context of the ’293 Patent, making an
application program “available for use” involves designating which applications are authorized
with respect to individual users. Docket No. 185 at 13. The Court agrees that this is one disclosed
embodiment. However, the intrinsic evidence indicates that this is not the only embodiment and
presents this embodiment as an “example,” where “server 22 may be configured . . . .” ’466 Patent
at 18:10–11.

Accordingly, the Court does not adopt the Second Group of Defendants’

construction.
c) Court’s Construction
The phrase “make the application program available for use” will be given its plain
and ordinary meaning.
4. “registration operations”
Disputed Term
“registration
operations”

Plaintiffs’ Proposal
“registration of the
application program at the
target on-demand server so
that it will be available to
users from client computers”

Defendants’ Proposal
“registration of the application program
at the target on-demand server(s) so
that it will be available for access and
download responsive to user requests
from client computers”

a) The Parties’ Positions
The parties dispute whether “registration operations” require making the application
program “available for access and download responsive to user requests from client computers,”
as Defendants contend. Plaintiffs argue that there are two ways a user can execute an application
in the network described in the Asserted Patents. Docket No. 140 at 4. The first method includes
downloading and executing an application on the client terminal. Id. Plaintiffs agree that the
asserted claims of the ’466 Patent, and claims 3, 9 and 15 of the ’766 Patent, are drawn to this first

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method. Id. The second method includes the application remaining on the server and being
executed remotely by a user. Id. Plaintiffs contend that the claims of the ’293 Patent cover both
methods. Id.
Plaintiffs argue that all claims of the ’466 Patent, and claims 3, 9 and 15 of the ’766 Patent,
recite language that unambiguously requires execution on the client. Id. at 5. Plaintiffs contend
that no similar language appears in the claims or prosecution history of the ’578 or ’293 Patents.
Id. Plaintiffs further argue that the claims of the ’293 Patent are directed to an exchange of
applications from a central management server to the remote servers, not from the remote server
to the client. Id. Plaintiffs contend that those claims do not even mention executing the application
program. Id.
According to Plaintiffs, nothing in the ordinary and usual meaning of “registration
operation” would limit the term to only programs that are “download[ed].” Plaintiffs contend that
applications are frequently executed at remote servers. Id. at 6. Plaintiffs argue that the intrinsic
record of the ’578 and ’293 Patents does not contain a definition or disclaimer that would limit the
claims to only programs that are “download[ed].” Id. at 7.
Defendants respond that applications in all of the Asserted Patents are downloaded to client
computers for execution. Docket No. 150 at 14. Defendants argue that Plaintiffs’ construction
omits any description of the “operations” that are involved in “registration,” allowing it to pursue
an unreasonably broad reading of this term. Id. at 18. Defendants contend that “registration”
entails making an application available for access and download responsive to user requests from
client computers. Id. (citing ’466 Patent at 4:17–21, 18:26–29). Defendants further argue that the
patentees explained during prosecution of the ’293 Patent that “registering the application
programs at the on-demand server(s)” results in them “be[ing] available to users accessing the

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programs from client computers.” Docket No. 150 at 18 (citing Docket No. 150-7 at 9).
Defendants also contend that the Asserted Patents and their prosecution histories further make
clear that this core aspect of registration operation comprises making them “available for access
and download responsive to user requests from client computers.” Docket No. 150 at 18 (citing
’293 Patent at 7:65–67; Docket No. 150-5 at 49).
Plaintiffs reply that the four patents are directed towards four different inventions, with
each invention relating to a particular portion of an enterprise computer network. Docket No. 155
at 2. Plaintiffs contend that all of the claims of the ’466 Patent incorporate specific language
requiring execution at the client. Id. Plaintiffs further contend that the claims of the ’578 and ’293
Patents are directed toward inventions that can be practiced in networks where execution is at a
server. Id.
Plaintiffs further argue that the ’293 Patent is a divisional of the ’466 Patent and is directed
to “distribution of application programs to a target station on a network.” Id. at 6. Plaintiffs
contend that all claims of the ’466 Patent have language unambiguously requiring execution at the
client and that the ’293 Patent does not involve a client. Id. at 7. Plaintiffs further argue that
embodiments in the shared specification that are executed at the client correspond to the distinct
invention of the ’466 Patent, and where applications are executed is not mentioned in the ’293
Patent. Id. (citing ’466 Patent at 17:17–20:59).
Regarding the prosecution history, Plaintiffs argue that the prosecution history of the ’466
Patent can be disregarded because the claim construction issue is limited to claims of the ’578 and
’293 Patents. Docket No. 155 at 7. Plaintiffs contend that the requirement of execution at the
client in the ’466 Patent arises from specific language in the ’466 Patent’s claims requiring
execution at the client. Id. at 8. According to Plaintiffs, the statements in the prosecution history

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of the ’466 Patent have no relevance to the ’578 Patent. Id.
Plaintiffs further argue that the prosecution history of the ’766 Patent also forms no part of
the prosecution history of the ’578 Patent or the ’293 Patent and should be disregarded. Id.
Plaintiffs contend that the relevant claims in the ’766 Patent prosecution covered a method or
system in which an application launcher program located on the client requests a license
availability from a server, and then receives from the server an indication of availability or
unavailability. Id. at 8–9. Plaintiffs argue that the relevant claims did not discuss execution and
did not distinguish any of those references based on where execution is performed. Id. at 9.
Plaintiffs also argue that the patentees did not distinguish Franklin on the grounds that its
applications were executed on the server, but instead distinguished Franklin on the ground that the
application launcher was located on the server. Id.
Plaintiffs also contend that the comments regarding the Duvvoori reference was that the
reference did not disclose “a configurable instance of an application . . . for execution at the client.”
Id. According to Plaintiffs, the patentees did not distinguish the prior art references on the ground
that applications would be executed at the server, because in both references the applications were
executed at the client, not the server. Id. at 9–10 (citing Docket No. 155-3 at 4, 6). Plaintiffs
contend that the patentees similarly described Duvvoori as describing “an agent process . . . at the
client that controls execution programs resident on the clients.” Docket No. 155 at 10 (citing
Docket No. 155-4 at 4). Plaintiffs argue that the patentees never described either reference as
executing programs at the server. Docket No. 155 at 10. Plaintiffs also argue that the patentees’
statement distinguishing Duvvoori related to that reference not having an application launcher
located on the client. Id.
For the following reasons, the Court finds that the term “registration operations” should

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be construed to mean “registration of the application program at the target on-demand
server(s).”
b) Analysis
The term “registration operations” appears in claims 1, 12 and 17 of the ’293 Patent. The
Court finds that the term is used consistently in the claims and is intended to have the same general
meaning in each claim. The Court further finds that “registration operation” refers to “registration
of the application program at the target on-demand server(s),” as the parties now appear to agree.
Plaintiffs originally contended that it was a registration of the “file packet” on the target ondemand server. Docket No. 140 at 6. The Court disagrees. As discussed above, the ’293 Patent
relates to the transmission of applications from a central management server to another server.
See, e.g., ’466 Patent at 17: 60–62 (“The application program software is then distributed by
Tivoli™ server 20 to specified on-demand servers 22, 22' at block 116.”); 4:13–17 (“A profile
manager import call is included in the distributed file packet along with an import text file
containing the data required to properly install and register the application program on the ondemand server and make it available to authorized users.”) (emphasis added); 5:35–38 (“A file
packet associated with the application program is prepared including a segment configured to
initiate registration operations for the application program at the target station.”) (emphasis
added). Accordingly, to the extent that Plaintiffs contend that the “registration operation” is the
registration of “the file packet,” the Court rejects that argument.
The parties also dispute whether the application program must “be available for access and
download responsive to user requests from client computers,” as Defendants propose. Defendants
contend that “making applications ‘available to users’ and ‘on-demand’– comprises making them
‘available for access and download responsive to user requests from client computers.” Docket

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No. 150 at 18. The Court disagrees. The “registration operation” relates to the transmission of
applications from a central management server to another server, and does not involve the
transmission of the applications to the client. For example, claim 12 recites “means for preparing
a file packet associated with the application program, the file packet including a segment
configured to initiate registration operations for the application program at the target on-demand
server.” A separate limitation in claim 12 address availability. Specifically, claim 12 further
recites “means for distributing the file packet to the target on-demand server to make the
application program available for use by a user at a client.” Thus, making the application program
available to a user is a separate limitation, and indicates that an “access and download” limitation
should not be read into the term “registration operations.”
The specification further confirms that the “registration operation” relates to the
transmission of applications from a central management server to another server, and does not
involve downloading to a user. The specification states that “[a]s will be understood from the
above description, the present invention allows development and deployment of managed
applications which are deployed to servers rather than to individual clients.” ’466 Patent at 16:61–
64. In describing Figure 10, the specification provides the example of “an import file name . . .
[that] allow[s] for automatic installation and registration of the new application program at each
of the target on-demand servers 22, 22’.” Id. at 19:1–5.
The intrinsic evidence further indicates that once the “registration operation” is complete,
the application program will be “available for use by a user at a client,” as recited in the claims.
For example, the specification states that “the applications are defined and access is controlled
centrally which provides control over various versions of software so that the latest software may
always be served on-demand to the end-users.” Id. at 16:64–67. However, as discussed above,

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this is a separate claim limitation, and does not warrant reading an “access and download”
limitation into the term “registration operations.”
Defendants argue that that the prosecution history supports their construction. During the
prosecution history, the patentee argued that “[a]s is clear from the highlighted recitations of Claim
15, the claimed embodiments of Claim 15 are directed to distribution of application programs from
a network management computer to on-demand server(s) and to registering the application
program at the on-demand server(s) so that they will be available to users accessing the programs
from client computers.” Docket No. 150-7 at 9. The Court disagrees that a person of ordinary
skill in the art would read this statement as requiring the “registration operation” to include
downloading from a client computer. The patentees’ argument repeats the claim language, which
does not recite “downloading by the client” as it relates to the “registration operation.”
Accordingly, the Court rejects this aspect of Defendants’ construction.
c) Court’s Construction
The Court construes the term “registration operations” to mean “registration of the
application program at the target on-demand server(s).”
5. “the initiating execution step”
Disputed Term
“the initiating
execution step”

Plaintiffs’ Proposal
Defendants’ Proposal
Claim 6 adds to claim 1 two
Indefinite
limitations: A) storing a user set and an
administrator set on a storage device,
before initiating the execution, and then
B) retrieving the stored sets in initiating
the execution.
Claim 8 adds to claim 1 the limitation:
obtaining default preference values in
initiating the execution.

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a) The Parties’ Positions
The parties dispute whether dependent claims 6 and 8 of the ’578 Patent are invalid because
the term “the initiating execution step” lacks antecedent basis. Defendants argue the term “the
initiating execution step” has no explicit antecedent basis, because neither claim 1, nor the
remaining sections of claims 6 or 8, recites a preceding step of “initiating execution.” Docket No.
150 at 19. Defendants contend that claim 1 only recites the step of “executing the application
program.” Id. According to Defendants, it is unclear whether claims 6 and 8 add a new step of
“initiating execution” to the claimed method, add the retrieval of preferences to the alreadyclaimed step of “executing the application program” or add separate “initiating” and
“retrieving”/“obtaining” steps to claim 1. Id. Defendants contend that each possible interpretation
is plausible, and each gives the claims a different scope, rendering the claims indefinite. Id.
Defendants further argue that the ’578 Patent does not resolve the ambiguity.

Id.

Defendants contend that some passages suggest that there is a precursor step before execution
begins in which preferences are obtained. Id. at 19–20 (citing ’578 Patent at 4:9–14, 10:23–32).
Defendants further contend that other passages suggest that default preferences and user
preferences are obtained as part of execution of the application itself. Docket No. 150 at 20 (citing
’578 Patent at 9:43–46, 11:16–22). Defendants argue that the metes and bounds of the claim are
not reasonably clear because an accused infringer of claims 6 and 8 has no clear indication of
where, when, or by what entity the claimed “retrieving” or “obtaining” of preferences must be
performed. Docket No. 150 at 20.
Defendants also argue that Plaintiffs’ proposal results in more confusion because it
introduces the phrase “initiating the application.” Id. Defendants contend that it remains unclear
(1) whether “initiating the application” is a separate step that must be performed for infringement,
a component of the claimed step of “executing the application program,” or a mere predicate

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condition on execution; (2) whether “initiating the application” occurs immediately upon
application execution, or if it occur days or even weeks in advance; or (3) whether the same entity
that initiates the application program must also execute the program, or if different entities perform
these steps. Id. at 20–21. Defendants argue that this ambiguity is inherent in the faulty manner in
which these claims are drafted and cannot be cured during claim construction. Id. at 21.
Plaintiffs respond that claim 1 includes a step of executing an application, using certain
sets of configurable preferences. Docket No. 155 at 10. Plaintiffs argue that claim 6 adds two
limitations: (1) storing those sets on a storage device, before initiating the execution and then (2)
retrieving the stored sets in initiating the execution. Id. Plaintiffs contend that if claim 6 recited
“initiating the step of execution,” instead of “the initiating execution step,” Defendants would have
no argument. Id. Plaintiffs argue that claim 6, written either way, adds the same two unambiguous
limitations and has the identical scope. Id. at 11. Plaintiffs further contend that even if the Court
were to find that the current language introduces an ambiguity, the Court has the authority to
correct an error in a patent rather than find a claim indefinite. Id. (citing Novo Indus., L.P. v. Micro
Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003)). Finally, Plaintiffs argue that the analysis is
the same with respect to claim 8, which adds the limitation of obtaining default preference values
in initiating the execution. Docket No. 155 at 11.
For the following reasons, the Court finds that claims 6 and 8 of the ’578 Patent are not
indefinite. Claim 6 requires (1) the step of storing the obtained user set and the obtained
administrator set on a storage device coupled to the server, and (2) the step of retrieving the stored
user set and the stored administrator set from the storage device. Both steps occur after the steps
of “obtaining a user set” and “obtaining an administrator set,” but prior to the “step of executing”
recited in claim 1. Claim 8 requires: (1) the step of obtaining default preference values for any of

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the plurality of configurable preferences which are not specified by the user set or the administrator
set. The step occurs prior to the “step of executing” recited in claim 1.
b) Analysis
Claims 6 and 8 of the ’578 Patent depend from claim 1. These claims recite that “the
initiating execution step includes” steps of either retrieving stored sets of preferences (claim 6) or
obtaining default preference values (claim 8). The Court finds that the phrase is used consistently
in the claims and is intended to have the same general meaning in each claim. The Court further
finds that claim 1 does not provides explicit antecedent basis for the term “initiating execution
step” in dependent claims 6 and 8. However, the Court disagrees that the claims, read in light of
the specification and prosecution history, fail to “inform, with reasonable certainty, those skilled
in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct.
2120, 2124 (2014).
Starting with dependent claim 6, the Court finds that claim 1 provides antecedent basis for
a number of terms that appear in claim 6. For example, claim 1 provides antecedent basis for “the
step of executing,” “the obtained user set,” “the obtained administrator set,” and “the server.”
Moreover, claim 6 provides a logical, sequential order for performing the steps in light of the
antecedent basis. Claim 6 first recites that the additional steps are performed prior to the step of
executing recited in claim 1. Specifically, claim 6 recites “wherein the step of executing is
preceded by . . . .” It also follows that “the user set” and “the administrator set” recited in claim 1
cannot be stored until they are first obtained. Likewise, the “stored user set” and “stored
administrator set” cannot be retrieved until they are first stored. Consequently, the “user set” and
the “administrator set” cannot be used in the “step of executing” in claim 1 until they are first
retrieved. Thus, the steps in claim 6 must occur after the steps of “obtaining a user set” and

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“obtaining an administrator set,” but prior to the “step of executing” recited in claim 1.
The analysis of claim 8 is similar to claim 6. Claim 1 provides antecedent basis for terms
that appear in claim 8. For example, claim 1 provides antecedent basis for “the plurality of
configurable preferences,” “the user set,” and “the administrator set.” Like claim 6, claim 8
provides a logical, sequential order for performing the steps. Claim 8 recites that default
preferences values are obtained “for any of the plurality of configurable preferences which are not
specified by the user set or the administrator set.” The default preference values for the “user set”
and the “administrator set” cannot be used in the “step of executing” in claim 1 until they are first
obtained. Thus, claim 8 must occur prior to the step of executing.
The logical sequential ordering recited in the claims is further disclosed in the
specification. The Abstract states the following:
The application launcher program provides the identity of the user to the server
along with the request to initiate execution of the application program. The ondemand server then initiates execution of the application program using stored
values for the user and administrator set preferences or, if no preferences have yet
been obtained for the particular user, obtains user preferences before initiating
execution of the application program.
’578 Patent at Abstract. As indicated, the specification “initiates execution” by using stored values
for the user and administrator set preferences. Figure 3 provides a flowchart for the management
of configurable application programs on a network.

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Id. at Figure 3. The specification states that “[o]n-demand server 22 receives a request to initiate
execution of the application program at block 78.” Id. at 10:6–7. The specification adds that the
request received by server 22 allows it “to obtain the correct user specified preferences and provide
a stored set of user and/or administrator preferences for the application program for a particular
user.” Id. at 10:12–15. The specification further states that “[i]f a requesting user is a new user,
at block 82, the user's preferences for the application program are obtained from the user and stored

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on a storage device coupled to server 22.” Id. at 10:19–22. The specification also states that “[i]f
new user preference settings are not required, stored user preference values associated with the
authorized user as well as stored administrator and, when necessary, default values are obtained
from memory as indicated at block 84.” Id. at 10:26–29. The specification concludes that “[t]he
application program is then executed at block 86 using the retrieved user set and administrator set
of configurable preferences.” The specifications description of Figure 3 tracks the claim language
discussed above. Accordingly, the Court finds that the claims, read in light of the specification
and prosecution history, informs, with reasonable certainty, those skilled in the art about the scope
of the invention. Nautilus, 134 S. Ct. at 2124.
Defendants concede that the specification indicates that there may be a precursor step
before execution begins in which preferences are obtained. Docket No. 150 at 20. Defendants
argue that other passages suggest that default preferences and user preferences are obtained as part
of execution of the application itself. Id. The Court agrees that the passage cited by Defendants
indicates that “[i]n another embodiment, the application itself may contain default values coded
into the application allowing the application itself to provide default values if no stored default
values are available.” ’578 Patent at 9:43–46 (emphasis added). However, as discussed above, a
person of ordinary skill would understand that the claims-at-issue are not directed to this
embodiment, and provide a logical, sequential order for performing the recited steps in the other
disclosed embodiments.
c) Court’s Construction
The Court finds that claims 6 and 8 of the ’578 Patent are not indefinite. Claim 6 requires
(1) the step of storing the obtained user set and the obtained administrator set on a storage device
coupled to the server, and (2) the step of retrieving the stored user set and the stored administrator
set from the storage device. Both steps occur after the steps of “obtaining a user set” and
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“obtaining an administrator set,” but prior to the “step of executing” recited in claim 1. Claim 8
requires: (1) the step of obtaining default preference values for any of the plurality of configurable
preferences which are not specified by the user set or the administrator set. The step occurs prior
to the “step of executing” recited in claim 1.
6. “the computer readable program code means for executing the
application program” / “the computer readable program code means
for initiating execution” / “the means for executing the application
program” / “the means for initiating execution”
Disputed Term
“the computer readable
program code means
for executing the
application program” /
“the computer readable
program code means
for initiating
execution” / “the means
for executing the
application program” /
“the means for
initiating execution”

Plaintiffs’ Proposal
Defendants’ Proposal
Claim 35 is representative. Claim 35 Indefinite
adds to claim 32 the limitation: code
that actually executes the application
program.

a) The Parties’ Positions
The parties dispute whether dependent claims 20, 22, 24, 35, 37 and 39 of the ’578 Patent
are invalid because the term “computer readable program code means for executing/initiating
execution” and the term “the means for initiating execution” lack antecedent basis. Using claim
35 as an exemplary claim, Defendants argue that the claims refers to “the computer readable
program code means for executing the application program” and specifies that it includes means
for executing an application “responsive to a request . . . through the application launcher
program.” Docket No. 150 at 21. Defendants contend that no “computer readable program code
means for executing” appears in any parent claim to claim 35. Id. Defendants argue that
independent claim 32 refers to a “computer readable program code means for providing an

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instance of the application program and a stored user set and the administrator set of the plurality
of configurable preferences for use in executing the application program.” Id. Defendants contend
that it is unclear what structure is required by claim 35. Id.
According to Defendants, it is equally plausible that the structure could be the alreadyclaimed structure for “providing an instance,” or alternatively, a structure for “executing the
application program.” Id. Defendants argue that the difference between these interpretations is
material to appropriate claim scope because, under the former interpretation, the accused products
only need to include the “computer readable program code means for providing an instance of the
application program,” while under the latter interpretation, the accused products need to also
include the “computer readable code means for executing the application program.” Id. at 22.
Defendants concede that the ’578 Patent discloses structure that is consistent with the
“computer readable code means for executing the application program” being separate and in
addition to the “computer readable program code means for providing an instance of the
application program.” Id. Defendants argue that the same disclosure also supports a single, serverbased “computer readable program code means for providing an instance of the application
program” that receives the claimed “request” from the launcher program. Id. (citing ’578 Patent
at 11:60–65). Defendants contend that the claim scope is indefinite because both of these
interpretations are equally plausible, and one of ordinary skill in the art would not be able to
determine which one to apply. Docket No. 150 at 22–23.
Defendants further argue that similar flaws are found in claims 20, 22, 24, 37 and 39. Id.
at 23. Defendants contend that each is a dependent claim reciting a “means” not found implicitly
or explicitly in a parent claim. Id. Defendants argue that the Court has no reason to select one
plausible interpretation of these claims over another equally-plausible interpretation.

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Id.

Defendants also argue that the claims are indefinite because their meaning and scope are not
reasonably certain. Id.
Plaintiffs respond that the disputed phrases are means-plus-function limitations. Docket
No. 140 at 9. Plaintiffs argue that a person of ordinary skill in the art would understand that the
structure corresponding to “computer readable program code means for executing the application
program” would be the code (including its relevant algorithms) written to cause a processor to
execute the application. Id. Plaintiffs also argue that the structure corresponding to “computer
readable program code means for providing an instance of the application program . . . for use in
executing the application program” from claim 32 would be the code written to cause the processor
to provide an instance of the application for use in executing the application. Id. at 9–10. Plaintiffs
contend that the structure that dependent claim 35 adds to the structures of claim 32 is the code
written to cause the processor to execute the application. Id. at 10; Docket No. 155 at 11.
According to Plaintiffs, the relevant code of claim 32 provides an executable copy of the program
for use in executing the application, and the code of claim 35 actually executes the program.
Docket No. 140 at 10; Docket No. 155 at 11. Plaintiffs contend that the analysis is identical for
the other claims Defendants cite. Docket No. 140 at 10.
For the following reasons, the Court finds that claims 20, 22, 24, 35, 37 and 39 of the ’578
Patent are indefinite because they fail to inform, with reasonable certainty, those skilled in the art
about the scope of the invention.
b) Analysis
The terms “computer readable program code means for executing/initiating execution” and
the term “the means for initiating execution” appear in either claims 20, 22, 24, 35, 37 or 39 of the
’578 Patent. The parties agree that the disputed terms are drafted in “means-plus-function” format.

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Docket No. 140 at 9. For means-plus-function limitations, the Court must construe the phrase to
cover the corresponding structures disclosed in the specification that performs the claimed
function. Northrop Grumman Corp. v. Intel Corp., 325 F. 3d 1346, 1349-50 (Fed. Cir. 2003) (“In
construing a means-plus-function limitation, a court must identify both the claimed function and
the corresponding structure in the written description for performing that function.”) (citing Micro.
Chem., Inc. v. Great Plains Chem. Co., 194 F. 3d 1250, 1258 (Fed. Cir. 1999)). Thus, lack of
antecedent basis is problematic when it prevents a person of ordinary skill from determining the
corresponding structure.
Here, the lack of antecedent basis renders the claims indefinite. For example, claim 35
refers to “the computer readable program code means for executing the application program,” and
specifies that it includes means for executing an application “responsive to a request . . . through
the application launcher program.” However, no “computer readable program code means for
executing” appears in any parent claim to claim 35. Rather, independent claim 32 refers to a
“computer readable program code means for providing an instance of the application program and
a stored user set and the administrator set of the plurality of configurable preferences for use in
executing the application program.” Therefore, it is unclear what structure is required by claim
35.
The structure could be the claimed structure for “providing an instance,” or, alternatively,
it could be a structure for “executing the application program.” The difference between these
interpretations is material because, under the former interpretation, the scope of the claim includes
only the “computer readable program code means for providing an instance of the application
program,” while under the latter interpretation, the scope of the claims also includes the “computer

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readable code means for executing the application program.”7 Because the scope of the claims are
not reasonably certain to a person of ordinary skill, the claims are indefinite.
Similar flaws are found in claim 20 (which mirrors claim 35) and claims 22, 24, 37 and 39.
Each is a dependent claim reciting a “means” not found implicitly or explicitly in a parent claim:
“the means for initiating execution” (claims 22, 24) and “the computer readable program code
means for initiating execution” (claims 37, 39). However, no “computer readable program code
means for initiating execution/executing” or “means for initiating execution” appears in any parent
claims. Thus, the scope of the claims is not reasonably certain to a person of ordinary skill, and
the claims are indefinite.
c) Court’s Construction
Claims 20, 22, 24, 35, 37 and 39 of the ’578 Patent are indefinite because they fail to inform,
with reasonable certainty, those skilled in the art about the scope of the invention.
7. “license availability”
Disputed Term
“license availability”

Plaintiffs’ Proposal
“determination that a
user can be issued a
license to the
selected application
program”

Defendants’ Proposal
ADP and Zendesk:
“determination that a user can be
issued a license to the selected
application program, distinct from
any determination that the user is
authorized to access the selected
application program”
All other Defendants:
“determination that a user can be
issued a license to the selected
application program.”

7

The language of the claims also distinguishes between “providing” and “executing” the
application programs. See, e.g., ’578 Patent, claim 32 (“computer readable program code means
for providing an instance . . . for use in executing . . . .”). Thus, means for providing may be
unrelated to means for executing.
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a) The Parties’ Positions
The parties agree that “license availability” is a “determination that a user can be issued a
license to the selected application program.” Defendants ADP and Zendesk further contend that
“license availability” is “distinct from any determination that the user is authorized to access the
selected application program.”

Opposing this construction, Plaintiffs argue that defining

something by saying what it is not is poor practice. Docket No. 140 at 11. Plaintiffs further
contend that it could also mislead the jury by implying a claim does not cover licensing availability
software that includes, as a first step in allocating licenses, determining which users are authorized.
Id.
Defendants ADP and Zendesk respond that Plaintiffs do not addresses the disclosure of the
Asserted Patents or the disclaimer from the prosecution history of the ’466 Patent pertaining to
this claim term. Docket No. 150 at 24. Defendants ADP and Zendesk argue that the claims of the
’466 Patent on their face distinguish between “authoriz[ation]” and “license availability.” Id.
Defendants ADP and Zendesk further argue that the described embodiments all treat
“authoriz[ation]” and “license availability” as separate and distinct steps. Id. Defendants ADP
and Zendesk contend that in the ’466 Patent the on-demand server first “see[s] if the user is
authorized to bring up,” and in a second step “processes a license request to determine if a license
is available for” that application. Id. (citing ’466 Patent at 13:50–56, 13:58–61, 15:37-39, 16:43–
56, Figures 6–7). Defendants ADP and Zendesk also contend that the ’766 Patent similarly
incorporates this distinction between “determin[ing] the license availability for the selected one of
the plurality of application programs” and “determining if a user requesting execution of the
application program is one of the plurality of authorized users.” Docket No. 150 at 25 (citing ’578
Patent at 7:17–21, 4:62–67, 5:45–53).
Defendants ADP and Zendesk further contend that the patentees argued during the

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prosecution of the ’466 Patent that “verifying license availability” is “distinct” from “determining
whether a user is authorized to access a resource.” Docket No. 150 at 25 (citing Docket No. 1505 at 13). Defendants ADP and Zendesk also contend that Plaintiffs’ argument against negative
limitations cannot overcome the express disclaimer set forth in the file history. Docket No. 150 at
26. Defendants ADP and Zendesk further contend that the jury will not be mislead by their
construction. Id. According to Defendants ADP and Zendesk, the jury will be able to apply the
Court’s instructions on patent infringement and will understand the open-ended nature of patent
claims. Id.
Plaintiffs reply that all parties agree that “license availability” means a determination that
a user can be issued a license to the selected application program. Docket No. 155 at 12. Plaintiffs
contend that this is not a claim construction issue but instead is a dispute over future jury
instructions. Id. Plaintiffs argue that this issue is better addressed at a charge conference rather
than a Markman hearing. Id.
For the following reasons, the Court finds that the term “license availability” should be
construed to mean “determination that a user can be issued a license to the selected
application program.”
b) Analysis
The term “license availability” appears in claims 9, 10, 24, 25, 37 and 38 of the ’466 Patent
and claims 1, 7 and 13 of the ’766 Patent. The Court finds that the term is used consistently in the
claims and is intended to have the same general meaning in each claim. Plaintiffs fail to address
the substantive arguments made by Defendants regarding this term. The Court generally agrees
with Defendants that the intrinsic evidence indicates that determining whether a user is authorized
to access a selected application program is not the same as determining whether a license is

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available to use a selected application program. However, the Court does not adopt Defendants’
construction because it could imply that an authorization step is required, even when an
authorization step is not recited in the claims. This would be contrary to the intrinsic evidence
because the specification discloses embodiments where all users are authorized and embodiments
where non-authorized users are allowed access. See, e.g., ’578 Patent at 8:26–29 (“[A]ll users
may be considered authorized users for any particular application or a subset of the user known to
server 22 may be designated as authorized users for a particular application program.”); ’466
Patent at 15:49–54 (“In other words, client management server 204 may be configured, based upon
the properties provided by a software designer for a particular managed application, to initiate
execution of an instance of an application by a non-authorized user while otherwise denying access
to the application management capabilities . . . .”). Accordingly, to avoid confusion, the Court
does not adopt Defendants’ additional proposal.
However, to the extent a party argues that determining whether a user is authorized to
access a selected application program is the same as determining whether a license is available to
use a selected application program, the Court rejects that argument. The intrinsic evidence draws
a distinction between authorization and license management. Generally speaking, the intrinsic
evidence indicates that authorization is related to controlling access to an application program,
whereas license management is related to usage of an application program. See, e.g., ’466 Patent
at 10:57–58 (“User authorization 212 provides control over which applications may be accessed
by a particular user or group.”); 11:35–38 (“The license management component 216 thereby
provides a convenient tool for tracking the usage of specified applications.”).
For example, in describing Figures 6 and 7, the specification states that “[a]t block 264,
the server system 22 checks the user’s credentials to see if the user is authorized to bring up the

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user desktop interface application,” and that “[i]f the user is authorized, server system 22 processes
a license request to determine if a license is available for the desktop application (block 268).” Id.
at 13:50–60. In other words, a user could be authorized to use an application, but the available
license may already be allocated. The patentees argued this distinction during the prosecution of
the ’466 Patent. Specifically, the patentee argued the following:
With respect to Claims 9-11, Applicants again can find no discussion of the ‘license
availability’ recitations of these Claims in the cited portions of Oh or in Bladow.
While Bladow does discuss determining whether a user is authorized to access a
resource, this is distinct from the recitations of these claims related to verifying
license availability. For example, a user could be authorized to use an application
but five instances of the application may already be executing and the server may
only have a five concurrent user license. Thus, an authorized user could be denied
an instance of a requested application because no license is available. (See, e.g.,
Specification, p. 18, lines 1-9; p. 21, line 31 to p. 22, line 9). Accordingly, these
claims are also patentable for at least these additional reasons.
Docket No. 150-5 at 13 (emphasis added). Accordingly, to the extent a party argues that
determining whether a user is authorized to access a selected application program is the same as
determining whether a license is available to use a selected application program, the Court rejects
that argument.
c) Court’s Construction
The Court construes the term “license availability” to mean “determination that a user
can be issued a license to the selected application program.”
8. “an instance” / “an instance of the application program” / “an
instance of the selected one of the plurality of application programs”
and “provid[e]/[ing]”

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Disputed Term
“an instance” / “an
instance of the
application program” /
“an instance of the
selected one of the
plurality of application
programs”

“provid[e]/[ing]”

Plaintiffs’ Proposal
A program is a sequence of
instructions that indicates which
operations the computer should
perform on a set of data.
An instance of a program is a
copy of a program that is
understandable by a computer’s
central processing unit and that
is ready to run as soon it is
copied from storage into
memory
“provide” – plain and ordinary
meaning

Defendants’ Proposal
Kaspersky Lab:
“instance” means “a copy of an
executable version of the
program that has been written to
the computer’s memory.”
All other Defendants:
“program” - plain meaning;
“instance” means “a copy” / “a
copy of the application program”
/ “a selected copy of the
application program”
Kaspersky, Ubisoft and Square
Enix:
“provid[e]/[ing]” - plain and
ordinary meaning
All other Defendants:
“provid[e]/[ing]” means
“download[ing]”

a) The Parties’ Positions
The parties dispute whether an “instance” is a copy of the application program, as most
Defendants propose, or whether it is a copy of an executable version of the program written to the
computer’s memory, as Plaintiffs and Defendant Kaspersky Lab generally propose. The parties
also dispute whether the terms “program” and “providing” require construction. Plaintiffs argue
that lay jurors will not understand the term “instance of a program.” Docket No. 140 at 11.
Plaintiffs contend that a document from the Linux Information Project forms the basis of its more
specific proposals. Id. Plaintiffs further suggest that Defendants would go along with “an
executable copy of an installed program.” Id.
Defendants respond that they agree an instance is a “copy” of an application program, but
disagree on the remaining constructions. Docket No. 150 at 28. Defendants argue that the claims
of the ’466, ’578 and ’766 Patents all use the term “instance” in accordance with its plain meaning.
Id. Defendants contend that the claims of the ’466, ’578 and ’766 Patents expressly require that
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(1) an application program is first installed at the server used to manage application programs; (2)
following that installation, a separate copy, or “instance,” of the application program is provided
to a client in response to a user request; and (3) this instance of the application program is then
executed. Id. (citing ’466 Patent at 21:20, 21:30–32, 21:33–35; ’578 Patent at 16:60–62, 17:25–
27, 17:3–8, 17:19–22).
Defendants further contend that the ’466, ’578 and ’766 Patent specifications are consistent
with this usage of the term “instance.” Docket No. 150 at 28–29 (citing ’466 Patent at 17:60–62,
9:52–55, 4:34–38, 16:18–25; ’578 Patent at 7:62–65, 10:54–11:8, 11:60–12:1, 5:32–37).
Defendants further argue that the term “instance” clarifies that each copy of an application program
stored on an individual client is separate from the other copies stored on other clients, such that
each copy can by executed by its respective client separately. Docket No. 150 at 29 (citing ’466
Patent at 15:66–16:5). According to Defendants, each client has its own separate and complete
instance, or copy, of the application program that was previously installed at the server. Docket
No. 150 at 30.
Defendants argue that Plaintiffs’ proposed “is understandable by a computer’s central
processing unit” introduces unnecessary complexity into the construction of “instance.” Id.
Defendants further contend that the remainder of Plaintiffs’ proposed construction (i.e., that an
instance “is ready to run as soon it is copied from storage into memory”) is not based on the
intrinsic record of the ’466, ’578 or ’766 Patents. Id. Defendants also contend that these patents
set no temporal limit on when an instance of an application is or must be executed on the client.
Id. Defendants argue that these patents only note that, once the instance of the application program
is downloaded from a server to a client, at some point it can be executed at the client. Id. (citing
’466 Patent at 4:34–38; ’578 Patent at 11:60–12:1). Defendants also argue that Plaintiffs’

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proposed language regarding copying “from storage into memory” may obfuscate how the claimed
“instance” must be installed on a server (e.g., an on-demand server) before it is
provided/downloaded to the client for execution. Docket No.150 at 30.
Defendants further argue that Plaintiffs fail to identify a single citation from the intrinsic
record in support of its apparent construction of “instance” or supplemental construction of
“program.”

Id. at 31.

Defendants contend that Plaintiffs rely exclusively on a non-

contemporaneous piece of extrinsic evidence from the “Linux Information Project.”

Id.

Defendants argue that the Court should strike or disregard this evidence. Id.
Defendants also contend that they offered construing “instance” as “an executable copy of
an installed program” as a compromise construction because it is consistent with the plain and
ordinary meaning of “instance” in view of the intrinsic record. Id. at 32. According to Defendants,
the claimed “instance” is a copy of an application program that was previously installed on a server
and which is provided to and executed on a client. Id. Defendants also argue that the term
“program” does not appear in the claims outside its use in the term “application program” or
“application launcher program.” Id. Defendants contend that Plaintiffs’ proposal is an attempt to
introduce an untimely, new construction for the term “application program.” Id.
Regarding the term “providing,” the majority of Defendants ask the Court to further clarify
that “providing” an instance of an application program means that the copy is downloaded from
the claimed server to the client. Id. Defendants argue that the plain language of the claims supports
their construction. Id. (citing ’466 Patent at 21:33–35; ’578 Patent at 16:51–52, 16:59, 17:3–4,
22:15–17). According to Defendants, the plain language of the claims consistently requires that
the server provide the instance of the application program to the client. Id. at 33.
Defendants argue that the ’466 and ’578 Patent specifications are also consistent with their

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proposed construction. Id. (citing ’466 Patent at 4:34–38, 16:1–5; ’578 Patent at 5:58–60, 10:9–
12, 11:41–47, 12:1–6, 11:43–47).

Defendants contend that the specification clarifies that

“providing” means “downloading.” Docket No. 150 at 33 (citing ’466 Patent at 3:55–4:1).
Defendants argue that the “Summary of the Invention” section of the ’466 Patent states that,
according to the “present invention,” “[t]he desktop accesses and downloads selected application
programs from the server responsive to a request from the user, such as the selection of an icon
associated with the application program which is displayed on the user desktop screen at the
client.” Docket No. 150 at 34 (citing ’466 Patent at 3:55–4:1).
Defendants further argue that the specifications consistently refer to provision of programs
from the server to the client as “downloading.” Docket No. 150 at 34 (citing ’466 Patent at
Abstract, 14:20–23, 12:42–52; ’578 Patent at 12:1–6). Finally, Defendants argue that the patentees
repeatedly reaffirmed during prosecution of the ’466 Patent that the claimed providing of
applications takes place between the server and client. Docket No. 150 at 34 (citing Docket No.
150-5 at 8, 25, 41, 49).
Plaintiffs reply that the parties seem to agree what an “instance of a program” means to
those in the art. Docket No. 155 at 12. Plaintiffs argue that Defendants (other than Defendant
Kaspersky Lab) want the Court to give nothing more than the unhelpful statement that an
“instance” is a “copy.” Id. Plaintiffs state that they agree with Defendant Kaspersky Lab’s
arguments. Id. at 12–13.
For the following reasons, the Court finds that the term “instance” should be construed to
mean “an executable copy of the application program.” The Court further finds that the
terms “program” and “provid[e]/[ing]” should be given their plain and ordinary meaning.
b) Analysis

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The terms “instance” and “program” appear in claims 1, 14, 15, 16, 19, 28 and 41 of the
’466 Patent; claims 3, 9 and 15 of the ’766 Patent; and claims 15–17, 31–32 and 46 of the ’578
Patent. The Court finds that the terms are used consistently in the claims and are intended to have
their respective meanings in each claim. The term “provid[e]/[ing]” appear in claims 1, 15 and 16
of the ’466 Patent; claims 3, 9 and 15 of the ’766 Patent; and claims 15, 16, 17, 32 and 46 of the
’578 Patent. The Court finds that the term is used consistently in the claims and is intended to
have the same general meaning in each claim.
The Court further finds that “instance” should be construed to mean “an executable copy
of the application program.” Generally speaking, the intrinsic evidence indicates that (1) an
application program is first installed at the server used to manage application programs; (2) an
executable copy, or “instance,” of the application program is then provided in response to a user
request; and (3) the instance of the application program is then executed. For example, the
specification states that “[t]he application program software is then distributed by Tivoli™ server
20 to specified on-demand servers 22, 22’ at block 116.” ’466 Patent at 17:60–63; see also ’578
Patent at 7:63–65 (“[T]he application program may be provided to on-demand server 22 from a
central location such as Tivoli™ server 20.”). A user may then select one of the application
programs by clicking on an icon displayed by an application launcher program. See, e.g., ’466
Patent at 9:52–55 (“Upon selection of the icon displayed by the application launcher, the selected
application is ‘launched’ by requesting the URL of the application from the on-demand server.”);
’578 Patent at 10:58–63 (“The display icon is displayed through the browser’s graphic user
interface representing the users’ desktop and allowing an authorized user to execute an application
program by selecting the displayed icon of the application launcher program, typically through use
of a mouse.”).

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The on-demand server then receives the request from the client, and provides an instance
of the application to the requesting client for execution. See, e.g., ’466 Patent at 4:34–38 (“The
server receives a selection of one of the plurality of application programs from the user desktop
interface and provides an instance of the selected one of the plurality of application programs to
the client for execution responsive to the selection.”) (emphasis added); ’578 Patent at 11:60–12:1
(“The application launcher applet then detects selection by the user of the application program’s
associated icon from the user desktop interface at clients 24, 24’, 26, 26’ and requests an instance
of the selected one of the plurality of application programs associated with the icon from server
system 22. The application launcher program then populates clients 24, 24’, 26, 26’ with the
instance of the selected application program for execution.”) (emphasis added); ’466 Patent at
16:23–25 (“The application launcher program then populates client station 202 with the instance
of the selected application program for execution.”) (emphasis added); ’578 Patent at 5:31–37
(“The server is also requested to provide an instance of the application program and a stored user
set and an administrator set of the plurality of configurable preferences for use in executing the
application program responsive to a request from the one of the plurality of authorized users.”)
(emphasis added).
The specification further explains that an “instance” of the application is provided because
the application program may be executed by multiple users concurrently. ’466 Patent at 15:66–
16:5 (“As the application program supported by server system 22 may be executable via a variety
of users concurrently, server system 22 provides an instance of the selected one of the plurality of
application programs to populate the application launcher to client station 202 for execution
responsive to a selection of the application program from the user.”). Accordingly, the intrinsic
evidence indicates that “instance” means “an executable copy of the application program.”

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The Court does not adopt Plaintiffs’ and Defendant Kaspersky Lab’s construction because
it adds unnecessary complexity to the construction of “instance.” See, e.g., Invensys Sys., Inc. v.
Emerson Elec. Co., 63 F. Supp. 3d 663, 676 (E.D. Tex. 2014) (rejecting a “proposal [that] is
unnecessarily complex and complicates an easily understood phrase”). For example, the claims
recite the necessary server and client without introducing a “computer’s memory,” or types of
memory into the claims. Moreover, the remainder of Plaintiffs’ construction (i.e., that an instance
“is ready to run as soon it is copied from storage into memory”) is not based on the intrinsic record
of the ’466, ’578 or ’766 Patents. The intrinsic evidence sets no temporal limit on when an instance
of an application is or must be executed on the client. Rather, the specification states that once the
instance of the application program is downloaded from a server to a client, it may be executed at
the client. See, e.g., ’466 Patent at 4:34–38 (“The server receives a selection of one of the plurality
of application programs from the user desktop interface and provides an instance of the selected
one of the plurality of application programs to the client for execution responsive to the
selection.”); ’578 Patent at 11:65–12:1 (“The application launcher program then populates clients
24, 24’, 26, 26’ with the instance of the selected application program for execution.”).
Regarding the extrinsic evidence cited by Plaintiffs and Defendant Kaspersky Lab, the
Court finds that it is generally consistent with the Court’s construction. The Linux Information
Project Document states that “[a]n instance of a program is a copy of an executable version of the
program that has been written to the computer’s memory.” Docket No. 140-8 at 2. The document
further states that “[a]n instance of a program is typically created by a user clicking on an icon
(i.e., small image) on a GUI (graphical user interface) or by entering a command at the command
line and then pressing the ENTER key.” Id. As discussed above, the specification explains that
an “instance,” or executable copy of the application, is provided because the application program

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may be executed by multiple users at the same time. ’466 Patent at 15:66–16:5. Accordingly, the
Court construes “instance” to mean “an executable copy of the application program.”
Regarding the term “program,” the Court finds that it should be given its plain and ordinary
meaning. The term “program” does not appear in the claims outside of its use in the term
“application program” or “application launcher program.” The Court has construed these terms
separately. Moreover, Plaintiffs has not provided a persuasive reason to construe the term
“program” as it proposes.
Regarding the term “provid[e]/[ing],” the Court finds that the term should be given its plain
and ordinary meaning. Defendants argue that the claim language and specification is consistent
with their proposed construction. Docket No. 150 at 32–34. Although it may be consistent, the
Court is not persuaded that the term “providing” should be redrafted as “downloading.” The claim
language does not recite “downloading,” and there is nothing confusing with the phrase “providing
. . . to the client.” The specification repeatedly uses the term “providing” and does not indicate
that it should be replaced with “downloading” in the claims. For example, the ’466 Patent
describes that the “server . . . provides an instance of the selected one of the plurality of application
programs to the client for execution . . . .” ’466 Patent at 4:34–38. Similarly, the ’578 Patent
describes the “server associated with the client which provides an instance of the selected one of
the application programs to the client for execution.” ’578 Patent at 5:58–60, see also id. at 10:9–
12, 11:41–47, 12:1–6. The specifications further state that the server “provides an instance of the
selected one of the plurality of application programs to populate the application launcher.” ’466
Patent at 16:1–5; ’578 Patent at 11:43–47. As indicated, there is nothing confusing or ambiguous
with the term “providing.”
Defendants further argue that the applicants repeatedly reaffirmed during prosecution of

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the ’466 Patent that the claimed providing of applications takes place between the server and client.
Specifically, the patentee argued that “[t]he application program is then provided from the server
and executed at the client.” Docket No. 150-5 at 25; see also id. at 49 (“An ‘instance of the
selected’ application program is then provided from the server for execution at the client.”).
Consistent with the other intrinsic evidence, the patentees used the term “provided,” not
“downloading.” Accordingly, the Court will not redraft the claim language as Defendants propose.
Finally, in reaching its conclusion, the Court has considered the extrinsic evidence submitted by
the parties, and given it its proper weight in light of the intrinsic evidence.
c) Court’s Construction
The Court construes the term “instance” to mean “an executable copy of the
application program.” The terms “program” and “provid[e]/[ing]” will be given their plain
and ordinary meaning.
VI.

.

CONCLUSION

The Court adopts the constructions above for the disputed and agreed terms of the Asserted

Patents. Furthermore, the parties should ensure that all testimony that relates to the terms
addressed in this Order is constrained by the Court’s reasoning. However, in the presence of the
jury the parties should not expressly or implicitly refer to each other’s claim construction positions
and should not expressly refer to any portion of this Order that is not an actual construction adopted
by the Court. The references to the claim construction process should be limited to informing the
jury of the constructions adopted by the Court.
It is SO ORDERED.
SIGNED this 16th day of August, 2017.

____________________________________
ROBERT W. SCHROEDER III
UNITED STATES DISTRICT JUDGE
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