Plano Encryption Technologies, LLC v. Alkami Technology, Inc.

Filing 168

CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER. Signed by Judge Rodney Gilstrap on 8/23/2017. (nkl, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
PLANO ENCRYPTION
TECHNOLOGIES, LLC,
Plaintiff,
v.
ALKAMI, INC., et al.,
Defendants.

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CASE NO. 2:16-cv-1032-JRG
LEAD CASE

CLAIM CONSTRUCTION
MEMORANDUM OPINION AND ORDER
Before the Court is Plano Encryption Technologies, LLC’s (“Plaintiff’s”) Opening MiniMarkman Claim Construction Brief (Dkt. No. 139). Also before the Court are Defendants
Alkami Technology, Inc., Best Buy Co., Inc., Etsy, Inc., J.C. Penney Corporation, Inc., and State
Farm Mutual Automobile Insurance Company’s (collectively, “Defendants’”)1 Mini-Markman
Responsive Claim Construction Brief (Dkt. No. 150) and Plaintiff’s Reply (Dkt. No. 156).
The Court held a narrowly targeted claim construction hearing, sometimes referred to as a
“mini-Markman,” on August 15, 2017. (See Dkt. No. 128, June 19, 2017 Order; Dkt. No. 119,
June 6, 2017 Order.)

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At the time of the August 15, 2017 hearing, Plaintiff had settled with Defendants Alkami
Technology, Inc., Best Buy Co., Inc., and Etsy, Inc. (See Dkt. Nos. 153, 155 & 160.)
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Table of Contents
I. BACKGROUND ....................................................................................................................... 3
II. LEGAL PRINCIPLES ........................................................................................................... 4
III. AGREED TERMS................................................................................................................. 8
IV. DISPUTED TERMS .............................................................................................................. 9
A. “including” ............................................................................................................................ 9
B. “response” ........................................................................................................................... 13
C. “a machine readable medium” and “a storage medium” .................................................... 18
V. CONCLUSION...................................................................................................................... 22

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I. BACKGROUND
Plaintiff brings suit alleging infringement of United States Patent Nos. 5,974,550 (“the
’550 Patent”) and 5,991,399 (“the ’399 Patent”) (collectively, the “patents-in-suit”) (Dkt.
No. 139, Exs. A–B).
The ’550 Patent, titled “Method for Strongly Authenticating Another Process in a
Different Address Space,” issued on October 26, 1999, and bears a filing date of December 12,
1997. The Abstract of the ’550 Patent states:
Authenticating a remote process operating in an address space different than that
of a local process includes the steps of creating, by the local process, a tamper
resistant module containing a temporary secret, sending the tamper resistant
module and a challenge from the local process to the remote process, executing
the tamper resistant module by the remote process and recovering the secret when
the integrity of the remote process is verified by the tamper resistant module,
encoding the challenge using the secret to produce a response, sending the
response to the local process, and decoding the response by the local process.
Optionally, the tamper resistant module includes a request for information from
the second process and the response includes the answer to the request for
information.
The ’399 Patent, titled “Method for Securely Distributing a Conditional Use Private Key
to a Trusted Entity on a Remote System,” issued on November 23, 1999, and bears a filing date
of December 18, 1997. The Abstract of the ’399 Patent states:
Secure distribution of a private key to a user’s application program (also called a
“trusted player” such as a DVD player or CD-ROM player) with conditional
access based on verification of the trusted player’s integrity and authenticity is
provided. Once validated, the trusted player uses the private key to decrypt
encrypted digital content. The private key is dynamically generated, associated
with specific digital content, and communicated in real-time from a server to the
trusted player in a secure manner, thereby controlling access to encrypted digital
content. The key is wrapped into an executable tamper resistant key module in
which the key can only be used by the right trusted player as determined by the
server based on user requests and payment. The key module plugs in to the
trusted player and executes to validate the player and decrypt the content. The
integrity of the trusted player is correlated to its ability to perform a cryptographic
operation using an asymmetric key pair in a manner that is tamper resistant,
thereby preventing an unencrypted copy of digital content to be made.
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Plaintiff has asserted Claims 10, 11, 12 and 20 of the ’550 Patent and Claims 1, 2, 9, 10,
11 and 34 of the ’399 Patent. (Dkt. No. 139 at 6.)
The Court previously addressed the ’399 Patent in Plano Encryption Technologies, LLC
v. American Bank of Texas, et al., No. 2:15-cv-1273, Dkt. No. 104 (E.D. Tex. July 22, 2016)
(“PET I”).
II. LEGAL PRINCIPLES
It is understood that “[a] claim in a patent provides the metes and bounds of the right
which the patent confers on the patentee to exclude others from making, using or selling the
protected invention.” Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed.
Cir. 1999). Claim construction is an issue of law for the court to decide. Markman v. Westview
Instruments, Inc., 52 F.3d 967, 970–71 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996).
“In some cases, however, the district court will need to look beyond the patent’s intrinsic
evidence and to consult extrinsic evidence in order to understand, for example, the background
science or the meaning of a term in the relevant art during the relevant time period.” Teva
Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015) (citation omitted). “In cases where
those subsidiary facts are in dispute, courts will need to make subsidiary factual findings about
that extrinsic evidence. These are the ‘evidentiary underpinnings’ of claim construction that we
discussed in Markman, and this subsidiary factfinding must be reviewed for clear error on
appeal.” Id. (citing Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996)).
To ascertain the meaning of claims, courts look to three primary sources: the claims, the
specification, and the prosecution history. Markman, 52 F.3d at 979. The specification must
contain a written description of the invention that enables one of ordinary skill in the art to make
and use the invention. Id. A patent’s claims must be read in view of the specification, of which
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they are a part. Id. For claim construction purposes, the description may act as a sort of
dictionary, which explains the invention and may define terms used in the claims. Id. “One
purpose for examining the specification is to determine if the patentee has limited the scope of
the claims.” Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000).
Nonetheless, it is the function of the claims, not the specification, to set forth the limits of
the patentee’s invention. Otherwise, there would be no need for claims. SRI Int’l v. Matsushita
Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). The patentee is free to be his own
lexicographer, but any special definition given to a word must be clearly set forth in the
specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992).
Although the specification may indicate that certain embodiments are preferred, particular
embodiments appearing in the specification will not be read into the claims where the claim
language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc.,
34 F.3d 1048, 1054 (Fed. Cir. 1994).
This Court’s claim construction analysis is substantially guided by the Federal Circuit’s
decision in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips,
the Circuit set forth several guideposts that courts should follow when construing claims. In
particular, the Court reiterated that “the claims of a patent define the invention to which the
patentee is entitled the right to exclude.” Id. at 1312 (quoting Innova/Pure Water, Inc. v. Safari
Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To that end, the words used in
a claim are generally given their ordinary and customary meaning. Id. The ordinary and
customary meaning of a claim term “is the meaning that the term would have to a person of
ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date
of the patent application.” Id. at 1313. This principle of patent law flows naturally from the

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recognition that inventors are usually persons who are skilled in the field of the invention and
that patents are addressed to, and intended to be read by, others skilled in the particular art. Id.
Despite the importance of claim terms, Phillips made clear that “the person of ordinary
skill in the art is deemed to read the claim term not only in the context of the particular claim in
which the disputed term appears, but in the context of the entire patent, including the
specification.” Id. Although the claims themselves may provide guidance as to the meaning of
particular terms, those terms are part of “a fully integrated written instrument.” Id. at 1315
(quoting Markman, 52 F.3d at 978). Thus, the Phillips court emphasized the specification as
being the primary basis for construing the claims. Id. at 1314–17. As the Supreme Court stated
long ago, “in case of doubt or ambiguity it is proper in all cases to refer back to the descriptive
portions of the specification to aid in solving the doubt or in ascertaining the true intent and
meaning of the language employed in the claims.” Bates v. Coe, 98 U.S. 31, 38 (1878). In
addressing the role of the specification, the Phillips court quoted with approval its earlier
observations from Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir.
1998):
Ultimately, the interpretation to be given a term can only be determined and
confirmed with a full understanding of what the inventors actually invented and
intended to envelop with the claim. The construction that stays true to the claim
language and most naturally aligns with the patent’s description of the invention
will be, in the end, the correct construction.
Phillips, 415 F.3d at 1316. Consequently, Phillips emphasized the important role the
specification plays in the claim construction process.
The prosecution history also continues to play an important role in claim interpretation.
Like the specification, the prosecution history helps to demonstrate how the inventor and the
United States Patent and Trademark Office (“PTO”) understood the patent. Id. at 1317. Because

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the file history, however, “represents an ongoing negotiation between the PTO and the
applicant,” it may lack the clarity of the specification and thus be less useful in claim
construction proceedings. Id. Nevertheless, the prosecution history is intrinsic evidence that is
relevant to the determination of how the inventor understood the invention and whether the
inventor limited the invention during prosecution by narrowing the scope of the claims. Id. See
also Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (noting that
“a patentee’s statements during prosecution, whether relied on by the examiner or not, are
relevant to claim interpretation”).
Phillips rejected any claim construction approach that sacrificed the intrinsic record in
favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc Court
condemned the suggestion made by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193
(Fed. Cir. 2002), that a court should discern the ordinary meaning of the claim terms through
dictionaries or otherwise before resorting to the specification for certain limited purposes.
Phillips, 415 F.3d at 1319–24. According to Phillips, reliance on dictionary definitions at the
expense of the specification has the effect of “focus[ing] the inquiry on the abstract meaning of
words rather than on the meaning of claim terms within the context of the patent.” Id. at 1321.
Phillips emphasized that the patent system is based on the proposition that the claims cover only
the invented subject matter. Id.
Phillips does not preclude all uses of dictionaries in claim construction proceedings.
Instead, the Phillips Court assigned dictionaries a role subordinate to the intrinsic record. In
doing so, the Circuit emphasized that claim construction issues are not resolved by any magic
formula. The Court did not impose any particular sequence of steps for a court to follow when it
considers disputed claim language. Id. at 1323–25. Rather, Phillips held that a court must attach

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the appropriate weight to the intrinsic sources offered in support of a proposed claim
construction, bearing in mind the general rule that the claims measure the scope of the patent
grant.
In general, prior claim construction proceedings involving the same patents-in-suit are
“entitled to reasoned deference under the broad principals of stare decisis and the goals
articulated by the Supreme Court in Markman, even though stare decisis may not be applicable
per se.” Maurice Mitchell Innovations, LP v. Intel Corp., No. 2:04-cv-450, 2006 WL 1751779, at
*4 (E.D. Tex. June 21, 2006) (Davis, J.). See TQP Development, LLC v. Intuit Inc., No. 2:12-cv180, 2014 WL 2810016, at *6 (E.D. Tex. June 20, 2014) (Bryson, J.) (“[P]revious claim
constructions in cases involving the same patent are entitled to substantial weight, and the Court
has determined that it will not depart from those constructions absent a strong reason for doing
so.”). See also Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 839–40 (2015) (“[P]rior
cases will sometimes be binding because of issue preclusion and sometimes will serve as
persuasive authority”) (citation omitted); Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323,
1329 (Fed. Cir. 2008) (noting “the importance of uniformity in the treatment of a given patent”)
(quoting Markman, 517 U.S. at 390).
III. AGREED TERMS
The Parties have agreed that the term “key pair” means: “One or more asymmetric key
pairs, one of the asymmetric key pairs having the claimed public key and claimed private key,
the asymmetric keys of an asymmetric key pair being complementary by performing
complementary functions, such as encrypting and decrypting data or creating and verifying
signatures.” (Dkt. No. 133, at 1.)

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IV. DISPUTED TERMS
A. “including”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

Including / Ordinary Meaning

Containing
and
“including” modifies “executable tamper
resistant key module”

(Dkt. No. 133 at Ex. A; Dkt. No. 139 at 8; Dkt. No. 150 at 2 & 24; Dkt. No. 156 at 1; Dkt.
No. 158, Ex. A at 1.) Plaintiff submits that this disputed term appears in Claims 1 and 34 of the
’399 Patent. (Dkt. No. 139 at 6.)
(1) The Parties’ Positions
Plaintiff argues that “Defendants’ construction, here as it was before, is inconsistent with
Federal Circuit precedent as the Federal Circuit has held that ‘including’ is synonymous with
‘comprising,’ and should be given a broad construction.” (Dkt. No. 139 at 8.)
Defendants respond that “[t]he plain and ordinary meaning of the claim language,
confirmed by the specification, requires the module to contain the key and other data, and, as a
matter of grammar, ‘including’ modifies ‘executable tamper resistant key module.’” (Dkt.
No. 150 at 2.)
Plaintiff replies that “[t]he primary difference between ‘including’ and ‘containing’ is
that the latter has the connotation of a ‘container’ while ‘including’ does not.” (Dkt. No. 156
at 2.) Plaintiff also submits that “the notion that the ‘tamper resistant module’ needs to operate as
a ‘container’ was previously rejected by this Court . . . .” (Id.)

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At the August 15, 2017 hearing, both sides presented oral argument. Plaintiff further
elaborated upon its argument that Defendants’ proposal of “containing” implies “contained
within,” which Plaintiff argued is clearly narrower than merely “including.”
(2) Analysis
Claim 1 of the ’399 Patent, for example, recites (emphasis added):
1. A method of securely distributing data comprising:
generating an asymmetric key pair having a public key and a private key;
encrypting predetermined data with the generated public key; and
building an executable tamper resistant key module identified for a
selected program, the executable tamper resistant key module including the
generated private key and the encrypted predetermined data.
As a threshold matter, the doctrine of the last antecedent 2 supports finding that the
language beginning with “including” modifies “the executable tamper resistant key module.”
The remaining dispute, then, is whether the term “including” is limited to “containing” or instead
is akin to “comprising.”
In PET I, the Court addressed a dispute as to whether “including” requires compiling:
As to what it means to “include” a key and data in a tamper resistant module,
Defendants point to an embodiment in the specification in which a key compiler
is used to turn the key into a piece of executing code that may be included in the
module. (Dkt. No. 86 at 16–17 (citing ’399 Patent 5:44–56).) The term in
question [(“including the generated private key and the encrypted predetermined
data”)], though, is much broader, merely requiring “including.”
PET I at 34–35. The Court “reject[ed] [the defendants’ proposal] of limiting ‘including’ to
compiling” and found that no further construction was necessary. Id. at 36.

The “doctrine of the last antecedent” is that “[r]eferential and qualifying words and phrases,
where no contrary intention appears, refer solely to the last antecedent, which consists of the last
word, phrase, or clause that can be made an antecedent without impairing the meaning of the
sentence for purposes of statutory construction.” Finisar, 523 F.3d at 1336 (emphasis omitted;
internal citations and quotation marks omitted) (finding that this doctrine of statutory
construction was useful in the context of determining the meaning of a prior art reference).
2

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At least one authority holds that “[t]he claim term ‘including’ is synonymous with
‘comprising,’ thereby permitting the inclusion of unnamed components.” Hewlett-Packard Co. v.
Repeat-O-Type Stencil Mfg. Corp., 123 F.3d 1445, 1451 (Fed. Cir. 1997). Although Defendants
have cited Hewlett-Packard as support for interpreting “including” as meaning “containing,” no
such construction is apparent in Hewlett-Packard. See id. Specifically, Hewlett-Packard used the
word “contain” when addressing what the claim at issue “reads on,” but Hewlett-Packard did not
expressly construe “including” to mean “containing.” See id.
Also, the Court has previously found as to the ’399 Patent that “the ’899 Patent, explicitly
incorporated by reference into the ’399 Patent, teaches that the tamper resistant modules can be
partitioned in time and space into sub-programs.” PET I at 26 (discussing U.S. Patent No.
5,892,899 (“the ’899 Patent”); citing ’899 Patent at 1:35–42, 3:48–4:20 & Fig. 1). See also ’899
Patent at 1:65–67 (“distributing the secret private key in time as well as in space”). These
disclosures that the modules can be “partitioned” and “distribut[ed]” weigh at least somewhat
against Defendants’ proposal of “containing,” which might be read as requiring a single
container.
Defendants here have also cited the Abstract of the ’399 Patent, which states that “[t]he
key is wrapped into an executable tamper resistant key module,” but this is a specific feature of
particular disclosed embodiments that should not be imported into the claims. See Phillips, 415
F.3d at 1323. See also id. at 7:47–58, 8:32–46 & 8:61–9:16. Further, other portions of the
specification are consistent with a broad interpretation of “including.” See ’399 Patent at 6:42–45
(“Trusted player 42 includes executable software 44, which is the code image of the trusted
player as loaded into the memory of client 32. Also included in the trusted player is a signed
manifest 46.” (emphasis added)). See also id. at 6:50–60.

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Finally, Defendants have cited extrinsic dictionary definitions of “include” that refer to
“containing.” (Dkt. No. 150, Ex. 10, Webster’s Ninth New Collegiate Dictionary 609 (1988)
(“3 : to contain between or within”; “INCLUDE suggests the containment of something as a
constituent, component, or subordinate part of a larger whole”); Dkt. No. 150, Ex. 11, The
American Heritage Dictionary of the English Language 913 (3d ed. 1992) (“2. To contain as a
secondary or subordinate element.”).) On balance, however, this extrinsic evidence does not
justify limiting “including” to meaning “containing.” See Phillips, 415 F.3d at 1321 (“[H]eavy
reliance on the dictionary divorced from the intrinsic evidence risks transforming the meaning of
the claim term to the artisan into the meaning of the term in the abstract, out of its particular
context, which is the specification.”).
The Court therefore expressly rejects Defendants’ proposal that “including” means
“containing.” No further construction is necessary apart from the finding, set forth above, that
the language beginning with “including” modifies “the executable tamper resistant key module.”
See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (“Claim
construction is a matter of resolution of disputed meanings and technical scope, to clarify and
when necessary to explain what the patentee covered by the claims, for use in the determination
of infringement. It is not an obligatory exercise in redundancy.”). See also O2 Micro Int’l Ltd. v.
Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) (“[D]istrict courts are not
(and should not be) required to construe every limitation present in a patent’s asserted claims.”);
Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1207 (Fed. Cir. 2010) (“Unlike O2
Micro, where the court failed to resolve the parties’ quarrel, the district court rejected
Defendants’ construction.”); ActiveVideo Networks, Inc. v. Verizon Commcn’s, Inc., 694 F.3d

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1312, 1326 (Fed. Cir. 2012); Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1291 (Fed.
Cir. 2015).
The Court therefore construes “including” to have its plain meaning apart from finding
that the language beginning with “including” modifies “the executable tamper resistant key
module.”
B. “response”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

Response / Ordinary Meaning

“challenge encoded with the secret”3

(Dkt. No. 133 at Ex. A; Dkt. No. 139 at 11; Dkt. No. 150 at 18, 18 n.6 & 24; Dkt. No. 156 at 5;
Dkt. No. 158, Ex. A at 3.) Plaintiff submits that this disputed term appears in Claims 10 and 20
of the ’550 Patent. (Dkt. No. 139 at 6–7.)
(1) The Parties’ Positions
Plaintiff argues that “[o]ne of ordinary skill in the art would not read the patent and
prosecution history to try and read limitations into ‘response,’ which are not present in the
asserted claims, just as the Court did not in its previous construction [of ‘challenge’ in PET I].”
(Dkt. No. 139 at 12.)
Defendants respond that their proposed interpretation “is supported by the ’550 Patent
claims and specification, and is expressly required in view of disclaimers made by the ’550
Defendants previously proposed: “The challenge (and any information requested by the second
process) encoded with the secret only after integrity verification has been performed on the first
process (Claim 10)”; and “The challenge (and any information requested by the processor)
encoded with the secret only after integrity verification has been performed on the remote
process (Claim 20).” (Dkt. No. 133, Ex. A.) This prior proposal also appears in the parties’
July 26, 2017 Joint Claim Construction Chart (Dkt. No. 158, Ex. A at 3–4). However,
Defendants specifically stated in their responsive claim construction brief that they “have
amended their proposed construction,” and Defendants asserted that “[t]his shortened version
simplifies the proposed construction while still resolving the parties’ dispute and remaining true
to the intrinsic record.” (Dkt. No. 150 at 18 n.6.)
3

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Patent applicant during examination.” (Dkt. No. 150 at 18.) Defendants explain that “[l]ogically,
if the ‘response’ is not encoded, there is nothing to decode,” and “the claims require that the
‘response’ be ‘a response to the challenge.’” (Id. at 19.) Defendants also urge that “[t]he ’550
Patent applicant clearly narrowed the definition of ‘response’ so that a process may be
authenticated via encoding the challenge with the secret, rather than merely authenticating a
human user via stored information.” (Id. at 22.) Finally, Defendants submit that “[t]he Court’s
prior construction of ‘challenge’ does not conflict with ‘response’ construed as ‘challenge
encoded with the secret.’” (Id. at 23.)
Plaintiff replies that “the statements cited by Defendants from the prosecution history are
pulled out of context,” and “there is certainly ambiguity in whether the patentees’ statements
were intended as a disclaimer at all, or were merely describing the features present in a subset of
the claims.” (Dkt. No. 156 at 7.)
At the August 15, 2017 hearing, both sides presented oral argument. Plaintiff reiterated
its argument that the prosecution history is ambiguous as to whether the statements cited by
Defendants referred to Claims 10 and 20, particularly because the limitation proposed by
Defendants appears in other claims. Defendants responded that the prosecution history at issue
applied to all claims, including the claims that issued as Claims 10 and 20, and that the claimed
authentication works only if the secret is obtained.
(2) Analysis
The Parties have noted that the Court previously construed “challenge” to mean “prompt
for information for use in authentication.” PET I at 67.
Claim 10 of the ’550 Patent, for example, recites (emphasis added):
10. An apparatus for authenticating a first process operating in an address space
different than that of a second process comprising:
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a processing unit for executing programming instructions; and
a storage medium having stored therein a plurality of programming
instructions of the second process to be executed by the processing unit, wherein
when executed, the plurality of programming instructions create a tamper resistant
module containing a secret, create a challenge, send the tamper resistant module
and the challenge to the first process, receive a response to the challenge from the
first process, and decode the response.
This claim recites “decode the response,” which implies that the response has been
encoded. Yet, the limitation proposed by Defendants, that the “response” must be the “challenge
encoded with the secret,” is not expressly set forth in the claim, and no clear implication to such
effect is apparent in the claim. Further, as discussed in PET I, the Background of the Invention
states that “challenge-response protocols” may involve merely a shared secret. See PET I at 65.
See also ’550 Patent at 1:12–29.
The specification contains disclosure that is consistent with Defendants’ proposed
interpretation:
If the tamper resistant module runs properly and Process B’s current image in
memory is successfully verified according to the signed manifest of Process B’s
image 17, then Process B recovers the secret and uses the secret to encode the
provided challenge to produce the appropriate response. Thus, response 20
includes an encrypted challenge E(challenge) 22. The response is sent back to
Process A. Process A, already knowing the secret, decrypts the encrypted
challenge.
Id. at 3:41–49 (emphasis added).
On balance, however, this use of a secret to encode a challenge is a specific feature of
particular disclosed embodiments that should not be imported from the specification into the
seemingly generic term “response.” See id.; Phillips, 415 F.3d at 1323.
Also, the limitation proposed by Defendants appears in other claims. See ’550 Patent at
Cl. 14 (“encode the challenge using the secret to produce a response”); ʼ550 Patent at Cls. 19 &

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21–23 (similar). See also Phillips, 415 F.3d at 1314 (“Differences among claims can be a useful
guide in understanding the meaning of particular claim terms.”).
Nonetheless, the prosecution history supports Defendants’ proposed construction. During
prosecution of the ’550 Patent, the examiner rejected all of the pending claims, and the patentee
responded by amending claims and by presenting arguments. (See Dkt. No. 150, Ex. 12, May 14,
1999 Office Action at 2 (FH0176); see also id., June 17, 1999 Amendment and Response
(FH0191–200).) The application claims 10 and 20 pending at that time, as amended by that
amendment, issued as Claims 10 and 20. (See id. at 2 & 4 (FH0192 & FH0194).) In responding
to a rejection as to all pending claims, the patentee stated as follows regarding the “Penzias”
reference, U.S. Patent No. 5,311,594:
Penzias discloses a simple variation on a well known challenge/response protocol
whereby a human requester must supply a selected one of several previously
provided and stored pieces of information in order to participate in a credit card
transaction. This method provides some minimal level of protection by
purportedly authenticating a human user to prevent theft of telephone service.
However, the pre-stored information may be acquired by a thief just as a “PIN”
number can be. Penzias does not teach or disclose a remote process, executing in
an address space different than a local process, being authenticated and having its
integrity verified as presently claimed. Penzias does not teach or suggest using
the challenge in the challenge/response protocol as the response and encoding it
with a secret (key) obtained from a tamper resistant module only after integrity
verification has been performed on the remote process, as is required by the
limitations of the present claims.
Neither Berry [(United States Patent No. 4,964,163)] nor Penzias, nor Official
Notice, alone or in combination, teach or suggest the invention as presently
claimed, including all of the recited limitations. Neither Berry nor Penzias, nor
Official Notice, teach or suggest authentication, integrity verification, or the use
of a tamper resistant module to deliver a secret to a remote process. Neither Berry
nor Penzias teach or suggest that a key used to encode a response to a challenge
may be embedded within a tamper resistant module, and that the key is accesible
[sic] only after integrity verification of the remote process is performed.
Furtermore [sic], neither Berry nor Penzias teach that such an authentication
procedure may be implemented in a bilateral fashion. The present claims have
been amended to more particularly point out these novel and nonobvious features

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of the present invention. Based on the foregoing, the claims are allowable as
currently presented.
(Id. at 8–9 (FH0198–99) (emphasis added).)
Plaintiff has argued that the patentee distinguished the prior art references based on
amendments adding “tamper resistant” to the claims, and Plaintiff urges that “[t]he patentee then
made various statements which clearly only applied to some of the claims, and not to all of the
claims.” (Dkt. No. 156 at 7.) Despite Plaintiff’s arguments, no relevant ambiguity is apparent in
the above-reproduced statements by the patentee, even when viewed in the context of the entire
Amendment and Response. See Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1374
(Fed. Cir. 2007) (“An applicant’s invocation of multiple grounds for distinguishing a prior art
reference does not immunize each of them from being used to construe the claim language.
Rather, as we have made clear, an applicant’s argument that a prior art reference is
distinguishable on a particular ground can serve as a disclaimer of claim scope even if the
applicant distinguishes the reference on other grounds as well.”). Plaintiff has also cited
Massachusetts Institute of Technology v. Shire Pharmaceuticals, Inc., 839 F.3d 1111, 1120–21
(Fed. Cir. 2016), but in that case the applicant proposed an amendment that the examiner rejected
as new matter. The circumstances of MIT are therefore distinguishable from the abovereproduced definitive statements made in the present case.
On balance, the patentee definitively stated that all of the pending claims, including the
claims that issued as Claims 10 and 20, require “using the challenge . . . as the response and
encoding it with a secret (key) obtained from a tamper resistant module,” as set forth above. The
term “response” should therefore be construed so as to give effect to these definitive statements
by the patentee. See, e.g., Omega Eng’g v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003)
(“As a basic principle of claim interpretation, prosecution disclaimer promotes the public notice
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function of the intrinsic evidence and protects the public’s reliance on definitive statements made
during prosecution.”); Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1381 (Fed. Cir.
2011) (“The patentee is bound by representations made and actions that were taken in order to
obtain the patent.”); Fenner Invest., Ltd. v. Cellco P’ship, 778 F.3d 1320, 1327 (Fed. Cir. 2015)
(“Although claim differentiation is a useful analytic tool, it cannot enlarge the meaning of a
claim beyond that which is supported by the patent documents, or relieve any claim of
limitations imposed by the prosecution history.”) (citations omitted).
The Court therefore construes “response” to mean “challenge encoded with the
secret.”
C. “a machine readable medium” and “a storage medium”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

One or more media / Ordinary Meaning

“one or more media, one medium storing all of
the claimed instructions”

(Dkt. No. 133, Ex. A; Dkt. No. 139 at 13; Dkt. No. 150 at 10; see id. at 24; Dkt. No. 156 at 8;
Dkt. No. 158, Ex. A at 2.) Plaintiff submits that these disputed terms appear in Claims 10 and 20
of the ’550 Patent. (Dkt. No. 139 at 6–7.)
(1) The Parties’ Positions
Plaintiff argues that “[w]hile the parties have agreed that because of the unique claim
language of ‘key pair,’ that term is an exception to the rule, there is no reason to read a limitation
that all of the instructions have to be on a single ‘medium’ in the claims.” (Dkt. No. 139 at 13.)
Defendants respond that “the single set of claimed instructions are all of a single specific
operating process, the second process,” and “this second process is operating on a single
machine that may or may not be the same machine as the one in which the first process is
operating.” (Dkt. No. 150 at 10.) Defendants argue that “[t]he ’550 Patent claim language makes
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clear that the asserted claims are directed to the arrangement of one medium storing all of the
claimed instructions, even if other media are present in the system.” (Id. at 11.) Further,
Defendants argue that “[Plaintiff’s] construction finds no support in the claim language or the
specification.” (Id. at 17.)
Plaintiff replies that “the ‘one or more’ construction is a bedrock rule of patent law, with
very limited exceptions, none present in this case.” (Dkt. No. 156 at 8.) Plaintiff also argues that
“the ’550 specification explicitly teaches multiple media may be used for storing instructions.”
(Id. at 9.)
At the August 15, 2017 hearing, both sides presented oral argument.
(2) Analysis
Claims 10 and 20 of the ’550 Patent recite (emphasis added):
10. An apparatus for authenticating a first process operating in an address space
different than that of a second process comprising:
a processing unit for executing programming instructions; and
a storage medium having stored therein a plurality of programming
instructions of the second process to be executed by the processing unit, wherein
when executed, the plurality of programming instructions create a tamper resistant
module containing a secret, create a challenge, send the tamper resistant module
and the challenge to the first process, receive a response to the challenge from the
first process, and decode the response.
***
20. A machine readable medium having stored therein a plurality of machine
readable instructions designed to be executed by a processor, the machine
readable instructions for creating a tamper resistant module containing a secret,
creating a challenge, sending the tamper resistant module and the challenge to a
remote process, receiving a response to the challenge from the remote process,
and decoding the response.
As Plaintiff has argued, “[a]s a general rule, the words ‘a’ or ‘an’ in a patent claim carry
the meaning of ‘one or more.’” TiVo, Inc. v. EchoStar Commc’ns Corp., 516 F.3d 1290, 1303
(Fed. Cir. 2008) (citation omitted). Accord KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351,
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1356 (Fed. Cir. 2000) (“This court has repeatedly emphasized that an indefinite article ‘a’ or ‘an’
in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the
transitional phrase ‘comprising.’”); WundaFormer, LLC v. Flex Studios, Inc., No. 2016-1301,
2017 WL 631751, at *4 (Fed. Cir. Feb. 16, 2017) (“The term ‘comprising’ indicates the claim is
open-ended and does not exclude additional, unrecited elements. The indefinite article ‘a’ is
interpreted to carry the meaning of ‘one or more.’” (citations omitted)).
Here, however, each claim recites a particular medium and then recites limitations as to
instructions that are stored on the medium and that are to be executed by a processor. Thus, one
particular medium must store all of these instructions. The case of In re Varma is analogous in
this regard:
[H]ere the question is not whether there can be more than one request in a
claim-covered system: there can. Rather, the question is whether “a” can serve to
negate what is required by the language following “a”: a “request” (a singular
term) that “correspond[s]” to “two or more selected investments.” It cannot. For
a dog owner to have “a dog that rolls over and fetches sticks,” it does not suffice
that he have two dogs, each able to perform just one of the tasks. In the present
case, no matter how many requests there may be, no matter the variety of the
requests the system may receive, the system must be adapted to receive a request
that itself corresponds to at least two investments.
In re Varma, 816 F.3d 1352, 1362–63 (Fed. Cir. 2016) (footnote omitted). Accord Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1342 (Fed. Cir. 2016) (regarding “a logical table,” finding that
the limitations at issue were required to be “in the same logical table”); East Coast Sheet Metal
Fabricating Corp. v. Autodesk, Inc., No. 12-cv-517-LM, 2015 WL 226084, at *13 (D.N.H.
Jan. 15, 2015), amended by 2015 WL 925614 (Mar. 3, 2015) (“[B]ecause each claim recites a
single computer-readable medium, each claim necessarily requires that all of its steps are
performed by that single computer-readable medium.”). At the August 15, 2017 hearing, Plaintiff
attempted to distinguish In re Varma, as well as Enfish, based on particular disclosures in the

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specifications in those cases, but Plaintiff has failed to demonstrate that the above-cited legal
principle does not apply in the present case.
This remains true even though, as the specification discloses and as the Court noted in
PET I, the first process and the second process may each arise from more than one computer
program and may be on different computer systems. See PET I at 56 & 59. See also ’550 Patent
at 2:18–20, 4:61–5:3 & 5:22–28. Indeed, the specification discloses processes executing on
particular computer systems but does not disclose a single process executing across multiple
computer systems. Id. at 4:61–5:3. See id. at 5:14–21 (“These elements perform their convention
[sic, conventional] functions well known in the art.”). Although Plaintiff has cited the disclosure
of multiple computer memories in Figure 3, this illustration of “Cache Memory,” “Main
Memory,” “Video Memory,” and “Mass Storage” is not inconsistent with the recital in the claims
of a particular medium that must satisfy the recited limitations. Further, the evidence submitted
by Defendants as to the meanings of “cache,” “main memory,” “primary storage,” and “video
memory,” although extrinsic and therefore of somewhat limited weight here, provides additional
support for Defendants’ interpretation of the disputed terms. (See Dkt. No. 150, Ex. 1, Microsoft
Computer Dictionary 81, 326, 419, 552 (5th ed. 2002); Dkt. No. 150, Ex. 2, Random House
Webster’s Computer & Internet Dictionary 332 (1999).)
Finally, the Court discussed and applied the above-cited Enfish and In re Varma
authorities as to an analogous dispute regarding the term “an asymmetric key pair” in PET I. See
PET I at 12–15.
Based on all of the foregoing, the Court hereby construes the disputed terms as set forth
in the following chart:

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Term

Construction

“a storage medium”

“one or more storage media, at least one of
which stores all of the recited instructions”

“a machine readable medium”

“one or more machine readable media, at
least one of which stores all of the recited
instructions”

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

SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 23rd day of August, 2017.

____________________________________
RODNEY GILSTRAP
UNITED STATES DISTRICT JUDGE

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