SmartPhone Technologies LLC v. Research In Motion Corporation et al

Filing 352

MEMORANDUM OPINION AND ORDER adopting the constructions set forth in this order. Signed by Magistrate Judge John D. Love on 01/17/12. cc:attys 1-17-12(mll, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
SMARTPHONE
TECHNOLOGIES LLC,
Plaintiff,

v.
RESEARCH IN MOTION CORP., et al.,
Defendants.

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Civil Action No. 6:10-CV-74LED-JDL
JURY TRIAL DEMANDED

MEMORANDUM OPINION AND ORDER
This claim construction opinion construes the disputed claim terms in U.S. Patent No.
6,505,215 (the “215 Patent”), entitled “Method & Apparatus for Synchronization of Two Computer
Systems Supporting Multiple Synchronization Techniques by Using Synchronization Transport
Modules,” and U.S. Patent No. 6,711,609 (the “609 Patent”), entitled “Method and Apparatus for
Synchronization an Email Client on a Portable Computer System With an Email Client on a Desktop
Computer” that are unique to this action. Those disputed terms also found in the claims at issue in
Smartphone Technologies LLC v. HTC Corporation, No. 6:10-cv-580, will be construed subsequent
to a Markman Hearing scheduled for March 6, 2012. On December 15, 2011, the Court held a claim
construction hearing to construe the disputed terms unique to this action. For the reasons stated
herein, the Court adopts the constructions set forth below.
OVERVIEW OF THE PATENTS
The patents in suit are directed towards methods and apparatuses for synchronizing a
portable computer with a desktop or personal computer. See the ‘215 Patent at Abstract; the ‘609

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Patent at Abstract. The ‘215 Patent describes a portable computer device that synchronizes records
with a desktop or personal computer. Claim 17, the sole asserted claim of the ‘215 Patent, recites:
17. A portable computer comprising:
a first application executable on the portable computer;
a plurality of transport modules, including a first wireless transport module
and a first direct connection transport module;
a first set of records for use with the first application, the first set of records
being accessible to the transport modules in the plurality of transport modules;
a synchronization application executable on the portable computer to identify
at least a portion of the first set of records, to identify a selected a transport module
from the plurality of transport modules, and to send the portion of the first set of
records over a medium of the selected transport module in order to synchronize the
first set of records with a corresponding set of records of a first computer system.
‘215 Patent at 10:40-55. The ‘609 patent describes a method for synchronizing email on a portable
computer with a desktop computer. Claim 6 is representative of the asserted claims:
6. A method for exchanging data between a portable computer and a second
computer, the method comprising:
receiving, on the second computer, a first signal from the portable computer
to exchange data with the portable computer;
in response to the first signal, synchronizing a first set of messages on the
portable computer with a second set of messages on the second computer;
receiving, on the second computer, a second signal from the portable
computer through the second computer to an intended recipient;
in response to the second signal, receiving the data from the portable
computer, and
sending the data to the intended recipient; and
wherein the step of receiving the data from the portable computer is
performed concurrently with the step of synchronizing a first set of messages on the
portable computer with a second set of message on the second computer.
‘609 Patent at 7:6-25.
CLAIM CONSTRUCTION PRINCIPLES
“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to
which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d
2

1111, 1115 (Fed. Cir. 2004)). The Court examines a patent’s intrinsic evidence to define the
patented invention’s scope. Id. at 1313-1314; Bell Atl. Network Servs., Inc. v. Covad Commc’ns
Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). Intrinsic evidence includes the claims, the rest
of the specification, and the prosecution history. Phillips, 415 F.3d at 1312-13; Bell Atl. Network
Servs., 262 F.3d at 1267. The Court gives claim terms their ordinary and customary meaning as
understood by one of ordinary skill in the art at the time of the invention. Phillips, 415 F.3d at 131213; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003).
Claim language guides the Court’s construction of claim terms. Phillips, 415 F.3d at 1314.
“[T]he context in which a term is used in the asserted claim can be highly instructive.” Id. Other
claims, asserted and unasserted, can provide additional instruction because “terms are normally used
consistently throughout the patent.” Id. Differences among claims, such as additional limitations
in dependent claims, can provide further guidance. Id.
“[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)). “[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). In the specification, a patentee may define his own terms, give a claim term
a different meaning than it would otherwise possess, or disclaim or disavow some claim scope.
Phillips, 415 F.3d at 1316. Although the Court generally presumes terms possess their ordinary
meaning, this presumption can be overcome by statements of clear disclaimer. See SciMed Life Sys.,
Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343-44 (Fed. Cir. 2001). This

3

presumption does not arise when the patentee acts as his own lexicographer. See Irdeto Access, Inc.
v. EchoStar Satellite Corp., 383 F.3d 1295, 1301 (Fed. Cir. 2004).
The specification may also resolve ambiguous claim terms “where the ordinary and
accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of
the claim to be ascertained from the words alone.” Teleflex, Inc., 299 F.3d at 1325. For example,
“[a] claim interpretation that excludes a preferred embodiment from the scope of the claim ‘is rarely,
if ever, correct.” Globetrotter Software, Inc. v. Elam Computer Group Inc., 362 F.3d 1367, 1381
(Fed. Cir. 2004) (quoting Vitronics Corp., 90 F.3d at 1583). But, “[a]lthough the specification may
aid the court in interpreting the meaning of disputed language in the claims, particular embodiments
and examples appearing in the specification will not generally be read into the claims.” Constant
v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988); see also Phillips, 415 F.3d
at 1323.
The prosecution history is another tool to supply the proper context for claim construction
because a patentee may define a term during prosecution of the patent. Home Diagnostics Inc. v.
LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the specification, a patent
applicant may define a term in prosecuting a patent”). The well established doctrine of prosecution
disclaimer “preclud[es] patentees from recapturing through claim interpretation specific meanings
disclaimed during prosecution.” Omega Eng’g Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir.
2003). The prosecution history must show that the patentee clearly and unambiguously disclaimed
or disavowed the proposed interpretation during prosecution to obtain claim allowance. Middleton
Inc. v. 3M Co., 311 F.3d 1384, 1388 (Fed. Cir. 2002). “Indeed, by distinguishing the claimed
invention over the prior art, an applicant is indicating what the claims do not cover.” Spectrum Int’l

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v. Sterilite Corp., 164 F.3d 1372, 1378-79 (Fed. Cir. 1988) (quotation omitted). “As a basic
principle of claim interpretation, prosecution disclaimer promotes the public notice function of the
intrinsic evidence and protects the public’s reliance on definitive statements made during
prosecution.” Omega Eng’g, Inc., 334 F.3d at 1324.
Although, “less significant than the intrinsic record in determining the legally operative
meaning of claim language,” the Court may rely on extrinsic evidence to “shed useful light on the
relevant art.” Phillips, 415 F.3d at 1317 (quotation omitted). Technical dictionaries and treatises
may help the Court understand the underlying technology and the manner in which one skilled in
the art might use claim terms, but such sources may also provide overly broad definitions or may
not be indicative of how terms are used in the patent. Id. at 1318. Similarly, expert testimony may
aid the Court in determining the particular meaning of a term in the pertinent field, but “conclusory,
unsupported assertions by experts as to the definition of a claim term are not useful.” Id. Generally,
extrinsic evidence is “less reliable than the patent and its prosecution history in determining how to
read claim terms.” Id.
DISCUSSION
The disputed terms and their corresponding constructions are set forth below.
I.

The ‘215 Patent
a. “synchronize”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

No construction necessary.

“comparing two sets of messages and
reconciling the differences”

If construed, “ensuring that the email state on
a portable computer matches the email state
on another computer”

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Plaintiff argues that the term “synchronize” is readily understandable to a lay juror and
therefore no construction is necessary. See PLAINTIFF’S CLAIM CONSTRUCTION BRIEF (DOC. NO.
294) (“PLTFF’S BRIEF”) at 13. Plaintiff argues that the term “synchronizing” and its variants are
broader than “reconciliation” and the patentee recognized this in the specification but deliberately
chose the term “synchronizing” in the claims rather than “reconciling” or a variant thereof. See
PLAINTIFF’S REPLY CLAIM CONSTRUCTION BRIEF (Doc. No. 324)(“REPLY”) at 6.
Defendants argue that synchronization should be construed as “comparing two sets of
messages and reconciling the difference” because the ‘215 patent incorporates by reference U.S.
Patent No. 5,727,202 (“the ‘202 patent”) which describes a synchronization process where two sets
of records are compared “to determine new, updated, or deleted records.” ‘202 Patent at 3:41-45;
DEFENDANTS’ RESPONSIVE CLAIM CONSTRUCTION BRIEF (DOC. NO. 315) (“RESPONSE”) at 14 (citing
‘215 Patent at 2:45-55).
Although a lay jury may understand the modern computer-related concept of “synchronize,”
the Court is tasked with determining “the meaning that the term would have to a person of ordinary
skill in the art in question at the time of the invention.” See Phillips, 415 F.3d at 1313. Moreover,
a “fundamental rule of claim construction is that terms in a patent document are construed with the
meaning with which they are presented in the patent document.” Merk & Co. v. Teva Pharms. USA,
Inc., 347 F.3d 1367, 1371 (Fed. Cir. 2003); Phillips, 415 F.3d at 1316 (accord). Thus, where the
specification “reveal[s] a special definition given to a claim term by the patentee that differs from
the meaning it would otherwise posses[,] . . . the inventor’s lexicography governs.” Phillips, 415
F.3d at 1316. “Although an inventor is indeed free to define the specific terms used to describe his
or her invention, this must be done with reasonable clarity, deliberateness, and precision.” In re

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Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).

In this case, the patentee clearly defined

synchronization: “The synchronization setting is the default method of operation wherein the
corresponding databases on both the desktop and portable are reconciled.” ‘215 Patent at 5:44-46;
see also id. at 2:38-41 (“the synchronization process combines the data from the modified personal
computer calendar 155 and the data from the modified hand held calendar 115 into a single
reconciled calendar”). Thus, the Court construes “synchronize” to mean “to reconcile the differences
between.”
The Court declines to include a comparing step as proposed by Defendants because
“synchronization” as defined by the patentee in the ‘215 specification, does not require a comparison
step. Although the incorporated ‘202 patent describes a synchronization method that includes a
comparison step, the patentee chose to use a broader definition in the ‘212 patent disclosure. See
‘215 Patent at 5:44-46. Defendants’ attempt to read an embodiment from an incorporated reference
into the claims is contradicted by the patentee’s unambiguous definition of “synchronization” in the
native ‘215 specification. See Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545, 1553
(Fed. Cir. 1996) (“incorporation by reference does not convert the invention of the incorporated
patent into the invention of the host patent”), overruled on other grounds by Festo Corp. v. Shoketsu
Kinzoku Kogyo Kabushiki Co., Ltd., 234 F.3d 556 (Fed. Cir. 2000); Fifth Generation Comp. Corp.
v. Int’l Bus. Machine Corp, 416 Fed. Appx. 74, 80 (Fed. Cir. 2011) (accord). Moreover, Defendants
provide no argument why one embodiment of a patent incorporated by reference should override
the patentee’s express definition in the ‘215 patent. Given the clear definition of synchronize in the
specification, a person having ordinary skill in the art would understand “synchronize” to mean “to
reconcile” despite the incorporated patents which disclose embodiments that include a comparing

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step.
Plaintiff’s arguments that “to reconcile” is not synonymous with “synchronizing” are
unavailing. First, Plaintiff argues that the ‘215 patent does not use the word “reconcile” in its
description of the preferred embodiment, the “Synchronization Transport Adaptation Layer.” REPLY
at 6. However, the specification clearly defines synchronization as a form of reconciling differences
and that definition is never modified or distinguished in the remainder of the specification.1 Second,
Plaintiff cites to a Wikipedia definition of “synchronize” dated November 28, 2011 which, according
to Plaintiff, distinguishes between reconciliation and synchronization.2 See id. (citing EX. G TO
REPLY). As explained above, the Court is tasked with determining what “synchronize” means to
a person having ordinary skill in the art at the time of the invention, i.e. at the time of the priority
date of the application. See Phillips, 415 F.3d at 1313. Thus, the Court gives this little weight. See
id. at 415 F.3d at 1317 (explaining that extrinsic evidence such as dictionary definitions is “less
significant than the intrinsic record in determining the legally operative meaning of claim

1

The Court notes that Plaintiff originally proposed that “synchronization application” be construed as
“software that reconciles data between applications on two or more computer systems” which supports the Court’s
construction of “synchronize” as “to reconcile.” See PLTFF’S BRIEF at 14. This proposed construction was,
however, withdrawn at the Markman hearing.” See TRANSCRIPT OF MARKMAN HEARING (Doc. No. 347)(“MARKMAN
TRANSCRIPT”) at 67:25-58:6, 69:17-7:22.
2

Plaintiff’s citation of a Wikipedia entry not only suffers from the deficiencies discussed above, but other
more fundamental problems. As this Court explained in Performance Pricing v. Google:
The content on this website is provided by volunteers from around the world—anyone with
internet access can provide or modify content. See Iovate Health Sciences, Inc. v. Bio–Engineered
Supplements & Nutrition, Inc., No. 9:07-cv-46, 2008 WL 859162, *8 n. 4 (E.D.Tex. Mar.28, 2008)
(Clark, J.). Thus, not only is the information unreliable, Techradium, Inc. v. Blackboard Connect
Inc., No. 2:08-cv-214 (Ward, J.), 2009 WL 1152985, *4 n. 5 (E.D.Tex. April 29, 2009), but it can
potentially change on a day-to-day basis.
Performance Pricing, Inc. v. Google, Inc., No. 2:07-cv-432, 2009 WL 2497102, at *12 n. 15 (E.D. Tex. Aug., 13,
2009).

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language”)(internal quotations omitted).
Because the patentee acted as his own lexicographer to define “synchronizing” as the
“method of operation wherein the corresponding databases on both the desktop and the portable
computer are reconciled,” the Court construes “synchronize” as “to reconcile the differences
between.”
b. “application”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

No construction necessary.

“A software program used for a particular
function, excluding system control software
and support processes.”

If construed, “a computer program.”

At the outset, Defendants agree that there is no substantive difference between “a computer
program” and “a software program.” RESPONSE at 5 n.4. Thus, the essential dispute between the
parties is (1) whether to exclude “system control software and support processes” from the definition
of “application” and (2) whether to include a “used for a particular function” limitation. As will
be explained in more detail below, the Court construes “application” as “a computer program.”
Plaintiff argues that no construction is necessary because it is “readily apparent that this term
simply means an application that runs on a computer.” See PLTFF’S BRIEF at 9. Plaintiff further
argues that the specification does not limit application to computer programs with which a user
directly interacts. REPLY at 2. As an example, plaintiff cites to the abstract, which states that “‘the
selection [of a transport module] could be from a user.’” Id. at 2 (quoting ‘215 Patent at
Abstract)(alterations in original). For Plaintiff, “[t]his is consistent with the description of the
preferred embodiment, in which the synchronization program services applications, not users.” Id.
(citing ‘215 Patent at 7:23-37)(“The synchronization program then queries each synchronization

9

transport adaptation layer module to determine which applications can create ‘services’ for that
particular synchronization transport adaptation layer module (service creators)).”
Defendants argue that the plain and ordinary meaning of“application” excludes system
software. In other words, “[a]pplications are software programs with which users interact.”
RESPONSE at 5. Defendants argue that Figure 10 of the ‘215 Patent and its accompanying
description in the specification “distinguishes the high-level applications from [] lower level system
software” such as the DL server, synchronization transport adaptation layer, TCP/IP and PP stack,
and the serial link driver. Id. at 7. Moreover, at the Markman hearing Defendants pointed to
embodiments found in the ‘202 patent and other patents incorporated by reference that show an
application performing tasks for a user. See the ‘215 patent at 4:61-67 (“the system administrator
. . . requests a synchronization”); id. at 5:14-18 (“When a user that receives the preconfigured
portable computer system first synchronizes the portable computer system . . .”); id. at 7:55-60 ( “
. . . The user can then select which synchronization transport adaption layer module and service to
use when a synchronization is to be performed”). Defendants also rely heavily on several dictionary
definitions and textbook descriptions that contrast “application program” with system software or
operating systems. See id. at 5-6.
First, the Court declines to include the phrase “used for a particular function” in its
construction of application because the phrase is required by neither the specification nor the
extrinsic evidence provided by the parties. Defendants argue that because “Plaintiff did not dispute
Defendants’ requirement that the program be ‘used for a particular function” and they “cannot
conceive of any reasonable objection given that all programs perform functions.” RESPONSE at 5
n. 5. However, it is self evident from the claim language that the “application” performs functions.

10

See, e.g., ‘215 Patent at 10:48-55 (Claim 17)(“a synchronization application . . . to identify at least
a portion of the first set of records, to identify a selected transport module . . . and to send the portion
of the first set of records . . .”). Plaintiff’s objection appears, however, to be that Defendants’
proposal limits the application’s functions to those performed for a user at the exclusion of functions
performed at the system level.
The Court declines to adopt the remainder of Defendants’ construction for several reasons.
First, neither the specification nor the claims require a construction that excludes system control
software or support processes. While the specification discusses “applications” that interact with
a user, it does not do so at the exclusion of those that do not. For example, Claim 17 requires a
synchronization application to “send a portion of the first set of records over a medium of the
selected transport module.” See ‘215 Patent at 10:48-55 (Claim 17). This appears to allow for some
back-end functionality where the application is not interacting directly with the user. Similarly, the
specification discloses applications that are capable of providing back-end processes such as
“creating services” for system components and using the transport modules for particular functions.
See ‘215 Patent at 7:16-33;3 id. at 7:34-38 (“The synchronization program then queries each
synchronization transport adaptation layer module to determine which applications can create
‘services’ for that particular synchronization transport adaptation layer module (service creators)”);
id. at 7:49-51 (“After learning which applications may create services for each synchronization

3

“Referring to FIG. 10, the synchronization application communicates with a DL server (Desktop link
server) that acts as a single unified communication interface for the synchronization application. … when the
synchronization application is executed, the synchronization layer examines the creator ID and type of each
application installed on the portable computer system to determine if the application is a synchronization transport
adaptation layer module. Thus, the synchronization program generates a list of all the synchronization transport
adaptation layer modules.”

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transport adaptation layer module (the service creators), the synchronization program queries all the
service creators to obtain a list of the available services”); id. at 8:17-19 (“If an infrared device is
coupled to the serial port of the portable computer system then the synchronization application can
use the infrared synchronization transport module.)”
Defendants’ proposal requires the exclusion of “system control software” and “support
processes,” terms that are not found in the specification and would require further construction. It
is not readily apparent from the claims or the specification what “system control software” or
“support processes” is referring to. This creates a significant risk of confusion particularly where
Defendants’ proposal attempts to define “application” by what it excludes.
As stated above, the parties’ dispute centers on whether to construe “application” as
expressly excluding system control software and support processes. Finding that neither the claims
nor the specification requires a such a construction, the Court declines to construe “application”
beyond “a computer program.” See 02 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d
1351, 1361 (Fed. Cir. 2008).

c. “synchronization application”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

No construction necessary

To be construed in the context of the
constructions for “application” and
“synchronize.”

but if construed, “Software that reconciles
data between applications on two or more
computer systems”

If the Court desires a separate construction,
then: “an application that compares two sets
of records used by two other applications and
reconciles the differences.”

The Court construes “synchronization application” in the context of the constructions of

12

“application” and “synchronize.” Thus, for the reasons discussed above, the Court construes
“synchronization application” as “a computer program that reconciles differences.”
d. “transport module”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

No construction necessary.

a single interface for the synchronization
application that handles synchronization for a
specific communication medium

If construed, “a single interface that handles
communications over communications means
between a portable computer and another
computer system”

There are two main disputes over the proper construction of “transport module”: (1) whether
“transport module” is specifically tied to synchronization or is a generic communication interface
and (2) whether the transport modules are specific to a particular communication medium. As will
be explained in more detail below, the Court construes “transport module” as “a single interface that
handles synchronization for a specific medium.”
i. “transport modules” are specifically tied to synchronization
Plaintiff argues that the specification generally teaches that “the transport modules handle
synchronization between two computer systems over a respective interface connection.” PLTFF’S
BRIEF at 10 (citing ‘215 Patent at 7:61 - 8:22). Plaintiffs argue that Claim 17’s recitation of “a
plurality of transport modules, including a first wireless transport module and a first direct
connection module” leaves open the possibility of other types of transport modules unrelated to
synchronization. See Id. at 10 (citing ‘215 Patent at 10:43-45 (Claim 17)). Moreover, Plaintiff
argues that the specification disclosed a “single consistent interface” that is capable of synchronizing
but may have other uses. REPLY at 2-3.
Defendants argue that “transport module” should tied to synchronization because “the patent
13

identifies the transport modules of the synchronization transport adaptation lawyer as the ‘present
invention’ and thus distinguishes the transport modules from the prior art generic communication
interfaces.” RESPONSE at 8. As result, Defendants argue that “transport module” is a “coined term
with a particular meaning that distinguishes it from the generic interfaces known in the prior art.”
Id.
The Federal Circuit has repeatedly recognized that there is a “fine line between reading a
claim in light of the specification and importing a limitation from the specification into the claim.”
Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 632 F.3d 1246, 1255 (Fed. Cir. 2011)(citations
omitted); Phillips, 415 F.3d at 1323-24. A claim term can be limited by the specification when the
specification includes manifest words of exclusion or, in certain situations where “the specification
manifests a clear intent to limit the term by using it in a manner consistent with only a single
meaning.” Alrington Indus., 632 F.3d at 1254. A claim term may be limited if the patentee uses the
phrase “the present invention” or “this invention” to describe a particular feature. See Absolute
Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121, 1136 (Fed. Cir. 2011)(collecting cases). These
phrases may not be limiting where references to “the invention” are not uniform or “where other
portions of the intrinsic record do not support applying the limitation to the entire patent.” Id.
The Court construes “transport module” as “a single interface that handles synchronization
for a specific medium” because the specification uniformly discusses transport modules in the
context of “synchronization transport modules.” See, e.g., ‘215 Patent at Abstract (“a portable
computer system is loaded with synchronization transport modules”); id. at 7:43-45 (“For example,
a service for a network synchronization transport module would include the hostname and IP address
of the desktop personal computer to synchronize with”); id. at 8:17-19 (“If an infrared device is

14

coupled to the serial port of the portable computer system then the synchronization application can
use the infrared synchronization transport module. The infrared synchronization transport module
implements the necessary IrDA standards needed to communicate with a personal computer having
an IrDA compliant infrared port”). At no point in the specification does the patentee refer to the
transport modules as anything but “synchronization transport modules.”
Moreover, the specification distinguishes “transport modules” from generic communication
interfaces. Figure 10 of the ‘215 patent shows the synchronization transport adaptation layer
consisting of the cradle transport layer 1041, the network sync transport 1043, modem sync transport
1043, and infrared sync transport 1047, as separate from generic communication interfaces such as
the serial link driver 1060 and the serial port 1070. See ‘215 Patent Fig. 10. The specification
further states that the transport modules “handle[] synchronization.” For example:
Referring to FIG. 10, a first synchronization transport adaptation layer module is a
cradle transport. The cradle transport handles synchronization directly between a
serial port on the portable computer system and a serial port on the desktop computer
system.
The second synchronization transport is a network synchronization transport. The
network synchronization transport handles synchronization directly between the
portable computer system and a desktop computer system using TCP/IP networking.
‘215 Patent at 7:61-8:3 (emphasis added). Thus, a transport module handles synchronization for
a particular communication medium, e.g. serial port connection or network connection.
Lastly, the specification states “[t]o accommodate all these different synchronization
methods, the present invention introduces a synchronization transport adaptation layer.”4 While not
individually dispositive, the patentee’s identification of the “synchronization transport adaptation
4

During the Markman hearing, Plaintiff conceded that the “transport adaptation layer” is synonymous with
“transport modules.” See MARKMAN TRANSCRIPT at 38:10-12 (“the present invention introduces a synchronization
transport adaptation layer, which is the transportation modules”).

15

layer” as the invention combined with the specification’s uniform use of “synchronization transport
module” lends considerable support to a finding that “transport modules” are specifically tied to
synchronization. Thus, the Court finds that the patentee limited the term “transport module” to
synchronization.
ii. A “transport module” is tied to a particular communication medium
First, the phrase “communication medium” is supported by the claim language. For example,
Claim 17 requires that the synchronization application “identify a selected transport module from
the plurality of transport modules” and send records “over a medium of the selected transport
module.” See ‘215 Patent at 10:48-54 (Claim 17). Moreover, the term medium is consistently used
across the claims. See, e.g., id. at 9:1-2 (Claim 1) (“. . . sending over a medium corresponding to
the identified transport module . . .”); id. at 9:12-13 (Claim 2)(same); id. at 10:5-6 (Claim 10)(same);
id. at 10:14 (Claim 11) ( . . . in response to sending over the medium . . .”); id. at 10:57-60 (Claim
18) (“The portable computer of claim 17, wherein the synchronization application is executable to
receive a second set of records from the computer system over the medium of the selected transport
module . . .”). While the phrase “communication means” is found in the specification, reading it into
the claims would produce unnecessary confusion particularly where “communication medium” is
consistently found within the claims. This is particularly true where Plaintiff provides no
independent justification for including it in the construction of “transport module.”
Second, the specification clearly indicates that each transport module “handles
communication for a specific type of communication means.” id. at 7:22-24; see also id. at Fig. 10
(depicting four individual transport modules serving separate communication paths: cradle, network,
modem, and infrared). Moreover, the specification only describes individual transport modules as

16

being associated with a single communication medium. See, e.g., ‘215 Patent at 7:60-64 (cradle
module); id. at 7:65-8:3 (network module); id. at 6:16-21 (infrared module). As Defendants point
out, this does not preclude the possibility of having a portable computer with a plurality of transport
modules from a variety of communication media. See RESPONSE at 10.
In sum, the Court finds that the transport modules are specifically tied to synchronization
because the inventor described “the present invention” as a “synchronization adaptation layer,”
which the parties agree is referring to the transport modules; the specification uniformly describes
the transport modules in the context of “synchronization transport modules;” and the specification
distinguishes between the synchronization transport modules and generic interfaces. Thus, the Court
construes “transport module” as “a single interface that handles synchronization for a specific
medium.”
e. “direct connection”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

No construction necessary.

wired connection

If construed, “non-wireless connection”
Plaintiff argues that “direct connection” has a plain and ordinary meaning readily understood
by a lay jury and therefore no construction is necessary. PLTFF’S BRIEF at 11. Claim 17 recites “a
plurality of transport modules, including a first wireless transport module, and a first direct
connection transport module.” ‘215 Patent 10:42-44 (Claim 17) (emphasis added). Thus, “direct
connection” must be something other than a “wireless connection.” Plaintiff does not disagree that
a “direct connection” is distinct from a “wireless connection” but argues that construing “direct
connection” as “wired connection” unduly limits the scope of the claim. REPLY at 4. While “non-

17

wireless” may be broader than “wired” in the abstract sense of the terms, practically speaking, the
terms are equally limiting. This is highlighted by Plaintiff’s inability to identify a hypothetical
connection that is “non-wireless” but not wired. The addition of non-wireless into the claim risks
the possibility of confusion the jury with no added benefit. Although mindful of the dangers of
importing limitations into the claims, the Court nevertheless construes “direct connection” as “wired
connection” to prevent the possibility of juror confusion.
f. “the first set of records being accessible to the transport modules in the plurality of
transport modules”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction
“the first set of records can be synchronized
with a corresponding set of records using
each of the at least one wireless transport
module and at least one direct connection
transport module”

No construction necessary.
If construed, “the transport modules are able
to access the first set of records”

Defendants argue that “accessible” must be construed to include an explanation that the
transport modules referenced in the claim term must also include “at least one wireless transport
module and at least one direct connection transport module” as dictated by the remaining elements
of Claim 17. RESPONSE at 11-12. Defendants argue that the “only description in the patent that can
possibly correspond to the disputed claim limitation is the discussion of whether an application can
connect to a transport module . . . .” Id. at 12. Thus, for Defendants, “accessible” in the context of
the disputed claim term must mean that “the first set of records can be synchronized with a
corresponding set of records.” See id. Plaintiff counters that defining “being accessible” this way
is “nonsensical and contrary to the ordinary meaning of the word ‘accessible.’” REPLY at 4-5.
Plaintiff asserts that while the specification does not use the term “accessible” in relation to transport
modules, the specification uses the word in its “ordinary sense” in other places. Id. at 5 (citing the
18

‘215 Patent at 6:13-18) (“To minimize the synchronization time, the present invention also provides
a method of altering the synchronization behavior when the synchronization is being performed
across a modem link. This feature is configured on the portable computer system since the remote
desktop personal computer is not accessible.”)(emphasis added).
The Court construes “the first set of records being accessible to the transport modules in the
plurality of transport modules” as “the transport modules are able to access the first set of records.”
As noted above, “being accessible” is not explicitly defined in the specification; however, the
specification generally describes the phrase as:
After learning which applications may create services for each synchronization
transport adaptation layer module (the service creators), the synchronization program
queries all the service creators to obtain a list of the available services. After
obtaining a list of all the available services for all of the available synchronization
transport adaptation layer modules, the synchronization program displays a list of the
available synchronization transport adaptation layer modules and their respective
services. The user can then select which synchronization transport adaptation layer
module and service to use when a synchronization is to be performed.
‘215 Patent at 7:49-60. While Defendants are correct that this generally describes the acessibilty
feature in terms of the synchronization process, it does not follow that such language should be
inserted into the term’s construction. Having construed “transport module” above as “a single
interface that handles synchronization for a specific medium,” the Court finds no further need to
insert “synchronize” or its other variants into this claim element. The above paragraph suggests that
“being accessible” in the context of Claim 17 simply means that the transport modules have the
ability to access the first set of records.

In other words, a single interface that handles

synchronization for a specific medium has the ability to access the first of records.
Furthermore, Defendants are correct that Claim 17 requires that “the transport modules of
the plurality of transport modules” must include “at least one wireless transport module and at least
19

one direct connection transport module.” See RESPONSE at 12 (citing ‘215 Patent Claim 17).
However, the claim language speaks for itself. The Court declines to insert redundant claim
language when a juror could readily determine that the transport modules referred to in this element
are the same as those referred to in the first claim element.
g. “to identify at least a portion of the first set of records”
Plaintiff’s Proposed Construction
No construction necessary.

Defendants’ Proposed Construction
“To determine which of the first set of
records are to be communicated to another
computer system to synchronize the first set
of records.”

Defendants argue that construction of “to identify at least a portion of the first set of records”
is “necessary to clarify the claimed identification of records is not divorced from the synchronization
process.” RESPONSE at 13. The Court, however, declines to read “synchronization” into this term.
The surrounding claim language establishes that the identification is part of a larger synchronization
process. Indeed, the claim element in question recites: “a synchronization application executable
on the portable computer to identify at least a portion of the first set of records . . . .” ‘215 Patent
10:48-50 (Claim 17).

Thus, it is readily apparent from the claim language itself that the

identification is tied to the synchronization process and the Court finds no construction is necessary.
h. “computer system”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

No construction necessary.

“a personal computer”

Defendants argue that “computer system” should be limited to “a personal computer”
because several patents incorporated by reference refer to “the present invention” as methods and

20

apparatuses for synchronizing a portable computer system with a personal computer. See RESPONSE
at 15-17. Specifically with regards to the native ‘215 specification, Defendants argue that the
specification identifies the present invention as a “synchronization transport layer” to accommodate
synchronization methods between a portable computer and a desktop personal computer. See id. at
16-7 (citing ‘215 Patent at 6:62-7:10).
As explained above, the Federal Circuit has recognized that in certain situations, referencing
a feature of an invention as “the present invention” can justify importing a limitation into the claims.
See Absolute Software, Inc., 659 F.3d at 1136. However, the identification of “the present
invention” must be used uniformly across the disclosure. For example, in Absolute Software, the
court declined to import a limitation into the claim where a portion of specification identified the
purported limitation as one of “two optional features of the ‘present invention’”despite earlier
references in the specification requiring the “present invention” to include both features. Id. at 1137.
In this case, the ‘215 patent’s identification of the “present invention” as a “synchronization
transport adaptation layer” does not unambiguously limit “computer system” to a “personal
computer.” Even if Defendants are correct that this language identifies a feature of the “present
invention” as requiring a personal computer,5 the specification makes clear that a “personal
computer” is merely an optional variant computer system: “the present invention has been described
with reference to synchronization between a portable computer systems and a desktop personal
computer system. However, the same techniques can easily be applied to other types of computer

5

The Court notes that the specification passage cited by Defendants does not unambiguously identify the
present invention as relating to a “personal computer.” As best, the specification identifies the “present invention”
as a “synchronization transport adaptation layer,” but this does not limit the disclosure to personal computers. Cf.
Honeywell Int’l, Inv. v. Honeywell Intellectual Properties, Inc., 452 F.3d 1312, 1318-19 (Fed. Cir. 2006) (limiting
the term “fuel injection system component” to “fuel filter” because the written description specifically referred to
“fuel filter” as the “this invention” or “the present invention”)

21

devices.” ‘215 Patent at 2:15-19; Absolute Software, Inc., 659 F.3d at 1137; See also Praxair, Inc.
v. ATMI, Inc., 543 F.3d 1306, 1326 (Fed. Cir. 2008) (references to a specific embodiment as “the
apparatus of this invention” in the specification “are contradicted by express statements in the
specification clearly indicating that [the feature at issue] is a feature only of certain embodiments”).
Thus, neither the native language in the ‘215 specification, nor the patents incorporated by reference
require the term “computer system” to be construed as “personal computer.”
Having concluded that “computer system” is not limited to “personal computer,” the Court
finds that the claim language speaks for itself and therefore finds no construction necessary. See
02 Micro Int’l Ltd., 521 F.3d at 1361.
II. The ‘609 Patent
a. “second computer”6
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

No construction necessary.

“a personal computer”

Defendants argue that “second computer” should be construed as a “personal computer”
because (1) the specification consistently describes synchronization between a portable computer
and a desktop personal computer; (2) in a parent application, the applicant distinguished prior art
by indicating that the “second computer” is a “personal computer;” and (3) “second computer” is
used throughout the claims of the ‘609 patent to refer to a personal computer. See RESPONSE at 2325. For the reasons set forth below, the Court adopts Defendants’ proposal and construes “second
computer” as “personal computer.”
The ‘609 specification consistently and uniformly describes the synchronization process as

6

The term “second computer” is found in claims 6,7, and 11-13 of the ‘609 Patent.

22

occurring between a portable computer and a desktop personal computer. See, e.g., ‘609 Patent at
Title (“Method and Apparatus for Synchronizing an Email Client on a Portable Computer System
with an Email Client on a Desktop Computer”)(emphasis added); id. at Abstract (“a fully integrated
email system for a desktop computer with an associated palmtop computer is disclosed”)(emphasis
added); id. at 1:16-20 (“the present invention discloses a system[] for synchronizing an email client
on a portable computer system with an email client on a desktop computer system”)(emphasis
added); id. at 1:55-61 (“the present invention introduces an email client for the portable computer
system and an email synchronization conduit for a desktop personal computer system”)(emphasis
added); id. at 2:20-43 (describing each Figure as illustrating synchronization between a portable
computer and a “personal computer system”)(emphasis added).
Furthermore, construing “second computer” as a “personal computer” is supported by the
prosecution history. The ‘609 patent is a continuation of application No. 08/790,622, issued as U.S.
Patent No. 6,401,112 (“the ‘112 Patent”). In responding to an examiner rejection, the patentee of
the ‘112 Patent explained:
The present invention comprises an email synchronization system for a portable
computer system. The main portion of the email synchronization system is an email
synchronization conduit that resides on the desktop personal computer. The email
synchronization conduit on the desktop personal computer system is responsible for
synchronizing the state of the portable computer client with an email client on a
personal computer.
Ex. I to RESPONSE, SELECTED ‘112 PROSECUTION HISTORY (Doc. No. 315-10) (“‘112 HISTORY”),
at 23 (emphasis added). The applicants further argued that the claims of the ‘112 patent should be
allowed over the asserted prior art references that described synchronization systems because neither
reference “discloses or teaches toward a synchronization system that uses portable computer system,
the personal computer system, and an email server . . .[which] uses a personal computer as the
23

intermediary between a portable computer system and an email server . . . . ” Id. at 23-25. Thus,
for the patentee, the presence of a portable computer system, personal computer system and/or an
email server is critical to the invention. While not dispositive, this lends support to the conclusion
that “second computer” is not a generic description of any computer system, but should be limited
to either a personal computer system, email server, or portable computer.
Just as the ‘609 specification and its parent’s prosecution history describe the invention in
terms of the a personal or desktop computer, the claim language of the ‘609 patent suggests that the
“second computer” is a “personal computer.” Similar to the patentee’s description of the invention
in the prosecution history of the ‘112 patent, Claim 1 of the ‘609 patent requires that a portable
computer system, an email server, and a “second computer” be present:
A computer implemented method of synchronizing email on two computer systems,
said method comprising the steps of:
reading a first set of email messages from a portable computer;
reading a second set of email messages from an email server;
comparing, on a second computer, said second set of email messages to said
first set of email messages . . .
‘609 Patent at 6:31-41 (Claim 1). Thus, the “second computer” cannot be a “portable computer” or
an “email server.” It follows from the specification’s consistent description of synchronization as
occurring between a portable computer and a desktop personal computer and from the prosecution
history of the ‘112 patent’s identification of three computer systems (portable computer, personal
desktop computer, and email server), that “second computer” must be a “personal computer.”
b. “signal”7
Plaintiff’s Proposed Construction

7

Defendants’ Proposed Construction

The term “signal” is found in claim 6 of the ‘609 Patent.

24

“request”

“request from the portable computer that is
separate and distinct from the data to be sent
and messages to be synchronized”

As an initial matter, both parties agree that a “signal” is a “request,” however, the parties
dispute whether the signal must be separate and distinct from the data to be synchronized. See
RESPONSE at 29; REPLY at 10. Because “signal” does not appear in the specification, the only
guidance provided in the ‘609 patent is the claim language itself. Defendants argue that the claim
language requires the “signal” to be distinct from the data to be synchronized:
in response to the first signal, synchronizing a first set of messages . . .
receiving on the second computer, a second signal from the portable
computer to send data from the portable computer through the second computer to
an intended recipient;
in response to the second signal, receiving the data from the portable
computer.
‘609 Patent at 7:11-19 (emphasized as in RESPONSE at 30). Thus, Defendants argue that the claim
language requires that “signals [are] distinct events that trigger the synchronization, sending, or
receiving of messages and data.” RESPONSE at 30. Plaintiffs counter that Defendants’ proposed
construction unnecessarily confuses the jury. REPLY at 10.
The Court finds that neither the specification nor the claims require that the “signal” and the
data to be synchronized are mutually exclusive. For example, neither the specification nor the
claims exclude the possibility that the leading edge of the first set of data or transmitted e-mail could
serve as a “signal.” Similarly, the occurrence of the first set of data or e-mail could serve as a
“signal.” Without any indication in the specification that a signal does not encompass these
possibilities, the Court will not import unnecessary limitations into the claims. As a result, the Court

25

construes “signal” as “request.”8
c. “in response to”9
Plaintiff’s Proposed Construction
No construction necessary

Defendants’ Proposed Construction
“as a result of and subsequent to”

Defendants argue that “in response to” should be construed as “as a result of and subsequent
to” because doing so confirms that the signal and the messages to be synchronize are mutually
exclusive. See RESPONSE at 30. Moreover, Defendants argue that “Claim 6 identifies the first signal
as the trigger for synchronizing a first set of messages and the second signal as the trigger for
receiving the data from the portable computer.” Id. Plaintiff argues that nothing in the ‘609 patent
limits “in response to” according to Defendants’ proposal.
The Court finds that neither the specification nor the claims require construing “in response
to” as “as a result of and subsequent to.” First, while Defendants’ are correct that Claim 6 identifies
the first signal as a trigger to synchronize the first set of messages, it does not follow that “in
response to” must mean “as a result of and subsequent to.” For example, Claim 6 recites “. . . in
response to the second signal, receiving the data from the portable computer . . . .” Defendants
would require the step of “receiving data from the portable computer” to occur as a result of and
subsequent to the occurrence of a second signal. However, the claim language does not preclude
the possibility that the leading edge of the “signal” triggers the response of receiving data from the

8

Defendants also propose that the larger phrase, “a second signal from the portable computer to send data
from the portable computer through the second computer to an intended recipient” be construed as “a request from
the portable computer to send the data to an indented recipient, other than the messages to be synchronized and the
data to be sent, through the second computer.” See RESPONSE at 29 n. 17. The Court rejects Defendants’ proposal
for the same reason it construes “signal” as “request.”
9

The term “in response to” is found in claim 6 of the ‘609 Patent.

26

portable computer. Thus, the claim language does not preclude the possibility of the signal and
response from over-lapping in time.
Similarly, the specification does not support Defendants’ proposal. The specification uses
the phrase “in response to” in the following context:
The MAPI software layer 253 transmit a request packet across the computer network
270 to the MAPI compliant email server 280. In response to the properly formatted
MAPI requests, the MAPI-compliant [sic] email server 280 sends information back
to the MAPI software lawyer 253.
‘609 Patent at 4:45-50. Nothing in this passage suggests that “in response to” must be construed as
“as a result of and subsequent to.” Thus, the Court rejects Defendants’ proposal and finds that no
construction is necessary.
c. “synchronizing”10
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

No construction necessary

“comparing two sets of messages and
reconciling the differences”

Or, if construed, “ensuring that the email state
on a portable computer matches the email
state on another computer”
Plaintiff argues that no construction is necessary because as “synchronizing” is readily
understandable by a lay jury. REPLY at 16-17. Defendants argue that the specification continuously
describes synchronizing as “comparing two sets of messages and reconciling their differences.”
RESPONSE at 27. Defendants also point to the prosecution history of the ‘112 patent, the ‘609
patent’s parent, where “the patentees specifically described how the synchronization process is to
be performed.” Id. As an initial matter, the Court finds that “synchronizing” must be construed for

10

The term “synchronizing” is found in claims 6,7, and 11-13 of the ‘609 Patent.

27

the same reasons that “synchronize” in the ‘215 patent must be construed, i.e., a lay jury’s
understanding of “synchronization” is likely different than that of a person having ordinary skill in
the art at the time of the invention. Unlike the ‘215 patent disclosure, however, the ‘609
specification does not explicitly define “synchronization.” For the reasons set forth below, the Court
construes “synchronizing” as “comparing and reconciling the differences between.”
First, the ‘609 patent disclosure supports construing synchronizing as “reconciling.” For
example, Figure 1b describes “software components that perform the synchronization of the two
computer systems.” ‘609 Patent at 3:3-5. In describing the synchronization process illustrated by
Figure 1b, the specification explains “the records from database 163 that are associated with
application program A and application program B are copied into the personal computer and then
reconciled with databases A and database [sic] B by conduit A and conduit B respectively.” Id. at
3:28-30 (emphasis added). Plaintiff argues that “synchronizing” may encompass reconciliation but
is not limited to that function. REPLY at 6. Although “reconciling” may not be completely
synonymous with “synchronizing,” such a construction is necessary to prevent a lay jury from
engrafting a modern interpretation of “synchronizing” onto the patentee’s use of the term in 1997,
the time of the invention. Plaintiff points to nothing in the ‘609 patent disclosure that is inconsistent
with construing “synchronizing” as including “reconciling.”
Second, the ‘609 specification consistently describes “synchronization” as requiring a
“comparing” step. For example, Figure 3, which the specification describes as illustrating “how the
email conduit 233 on the personal computer synchronizes the email state on the portable computer
system 210 and the personal computer system 250,” explicitly includes a comparing step. See id.
at Fig. 3; id. at 5:7-10; id. at 5:37-42 ([I]f this is not the same personal computer that was used in

28

the previous synchronization then the conduit proceeds to step 337 where it compares the email
from the portable computer system with the email from the last synchronization to determine the
new, changed, and deleted email from the portable computer system)(emphasis added); id. at 5:4952 (“Next, at step 340, the email from the email server 281 is compared with the email retried from
portable to determine the new, changed and deleted email from the email server 281”)(emphasis
added).
During the prosecution of the ‘609 patent’s parent application, the patentees specifically
described the synchronization process as requiring a “comparing” step:
To perform the synchronization operation, the email synchronization conduit reads
the mail that is currently within the portable computer system and the email that is
currently stored on an email server. The synchronization conduit then compares the
two sets of email messages to determine the new and deleted messages. The
synchronization conduit then writes back an updated set of email messages down to
the portable computer system.
‘112 HISTORY at 24 (emphasis added). This understanding is reflected in Claim1 of the ‘609 patent,
which recites a “method of synchronizing email on two computer systems” and includes a
comparing step. See ‘609 Patent at 6:32-40 (Claim 1). While not dispositive, the patentee’s
description of the Claim 1 as a synchronization method that includes “comparing” lends support to
the Courts’ construction. Indeed, Plaintiff conceded at the Markman hearing that step 337, which
requires “comparing,” is part of the synchronization process. See, e.g., PLTFF’S MARKMAN SLIDES
at 76 (showing that steps 320, 330, 335, 337, 340, and 350 of Fig. 3 are part of the synchronization
process).
d. “concurrently” and “wherein the step of . . . is performed concurrently with the
step of . . .”11

11

These terms are found in claims 6 of ‘609 Patent.

29

Term

Plaintiff’s Proposed
Construction

Defendants’ Proposed
Construction

“concurrently”

“overlapping in duration”

Construed in the context of
the larger phrase [below]

“wherein the step of . . . is
performed concurrently with
the step of . . .”

No construction needed

“wherein [the two steps] are
programmed to be performed
at the same time”

The parties dispute whether “concurrently” should be construed as meaning “overlapping
in duration” or “at the same time.” Claim 6 requires the step of receiving data and the step of
receiving a first set of messages are to be performed “concurrently.” See ‘609 Patent at 7:21-26
(Claim 6). Plaintiff argues that “concurrently” cannot mean “at the same time” because, according
to Plaintiff, “[t]he preferred embodiment of the ‘609 patent describes . . . a single, concurrent, twostep process in which new outgoing messages first are sent, and then existing email messages are
synchronized.” REPLY at 9 (citing ‘609 patent at 5:7 - 6:11 & Fig. 3)(emphasis added); see also
MARKMAN TRANSCRIPT at 103:2-13. Thus, for Plaintiff, the two steps need not be completed at the
same time but can occur one after the other.
In contrast, Defendants argue that the plain meaning of the term “concurrently” is “at the
same time.” See RESPONSE at 28-29. Moreover, Defendants cite several district court opinions
construing “concurrently” as “at the same time” or some variant thereof. Id; see, e.g., Epicrealm,
Licensing, LLC v. Autoflex Leasing, Inc., 2006 WL 3099603, at *11 (E.D. Tex. Oct. 30, 2006)
(construing phrase with “concurrently” to mean “at the same time”); Hewlett-Packard Dev. Co., v.
Gateway, Inc., No. 3:04-cv-613, slip op. at 9 (S.D. Cal. Jan. 26, 2005) (Ex. J) (construing
“concurrently” as “at least partially at the same time”); Girafa.com, Inc. v. IAC Search & Media,
Inc., 2009 WL 2949526, at *1 (D. Del. Sept. 15, 2009) amended, 2009 WL 3074712 (D. Del. Sept.
30

25, 2009) (construing “at least partially concurrently” as “to some extent, occurring at the same
time”); Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1314-15 (Fed. Cir. 2009) (construing
“concurrently displaying” as “displaying at the same time . . .”); Broadcom Corp. v. SiRF Tech.,
Inc., No. 8:08-cv-546, slip. op. at 28 (C.D. Cal. Sept. 3, 2010) (Ex. K) (construing “concurrently
transferring blocks . . .” as “transferring at the same time . . .”). Lastly, Defendants cite to the
prosecution history where the patentees added the “concurrently” limitation in order to gain
allowance of the asserted claims over the prior art references. See id. at 29 (citing Ex. L to
RESPONSE, SELECTED ‘609 PROSECUTION HISTORY (Doc. No. 315-13) (“‘609 HISTORY”)).
First, the prosecution history makes clear that “concurrently” cannot simply mean “in
sequence” and/or “during the same process” as suggested by Plaintiff. During the prosecution of
the ‘609 Patent, the examiner rejected the entirety of what is now Claim 6 as anticipated by U.S.
Patent No. 5,857,201 (“the ‘201 patent” or “the Wright reference”). See ‘609 HISTORY at 4. The
examiner explained:
Regarding Claim [6], Wright discloses a method for exchanging data between a
portable computer and a second computer, the method comprising: receiving, on the
second computer, a first signal from the portable computer to exchange data with the
portable computer; in response to the first signal, synchronizing a first set of
messages on the portable computer with a second set of messages on the second
computer; receiving, on the second computer, a second signal from the portable
computer to send data from the portable computer through the second computer to
an intended recipient; in response to the second signal, receiving the data from the
portable computer; and sending the data to the intended recipient.
Id. at 4-5 (citations omitted). In response, the patentee added the concurrently limitation in dispute.
See id. at 12 (adding the limitation “wherein the step of receiving the data from the portable
computer is performed concurrently with the step of synchronizing a first set of messages on the
portable computer with a second set of messages on the second computer”). Thus, Claim 6 was

31

allowed only after the “concurrently” limitation was added. As a result, “concurrently” must mean
more than merely occurring in sequence, one after the other, as argued by Plaintiff. See Spectrum
Int’l, 164 F.3d at 1378-79 (“by distinguishing the claimed invention over the prior art, an applicant
is indicating what the claims do not cover”).
However, neither the specification nor the claims require that “concurrently” be interpreted
as occurring at precisely the same time, as argued by Defendants. At the Markman hearing, Plaintiff
characterized the preferred embodiment shown in Fig. 3 as two steps that are performed during the
same process. See MARKMAN TRANSCRIPT at 87:5 -89:25. For Plaintiff, the “receiving data” step
of Claim 6 includes Steps 310, 315, and 317 while the “synchronizing” step of Claim 6 includes
Steps 320, 330, 335, 337, 340, and 350. As such, the “concurrently” limitation added during
prosecution requires the first grouping (Steps 310, 315, and 317) to occur “concurrently” with the
second grouping (Steps 320, 330, 335, 337, 340, and 350). Defendants’ proposed construction
requires the time-duration of the first grouping and of the second grouping to be co-extensive.
Nothing in the prosecution history suggests such a limitation.
The prosecution history makes clear that “concurrently” cannot simply mean in sequence
during the same process as argued by Plaintiff. However, as explained above, neither the
specification nor the prosecution history requires that concurrently be construed as “at the same
time.” Moreover, as noted by Defendants in their briefing and at the Markman hearing, construing
“concurrently” as “at least partially at the same time” is in accordance with the ordinary meaning
of “concurrently” and is supported by case law. See Hewlett-Packard Dev. Co., slip op. at 9
(construing “concurrently” as “at least partially at the same time”); RESPONSE at 28 (citing HewlettPackard Dev. Co. in agreement); MARKMAN TRANSCRIPT at 106:7-10 (“if it truly is a definition that

32

occurs partially at the same time, then that would likely satisfy the concurrent definition”). For the
sake of clarity, the Court declines to construe “concurrently” individually but construes “wherein
the step of . . . is performed concurrently with the step of . . .” as “wherein [the two steps] are
performed at least partially at the same time.”
.
CONCLUSION
For the foregoing reasons, the Court adopts the constructions set forth above.

So ORDERED and SIGNED this 17th day of January, 2012.

___________________________________
JOHN D. LOVE
UNITED STATES MAGISTRATE JUDGE

33