Uniloc USA, Inc. et al v. NATIONAL INSTRUMENTS CORP. et al

Filing 247

NOTICE by Uniloc Singapore Private Limited, Uniloc USA, Inc. of Filing of Patent Rule 4-3 Joint Claim Construction and Pre-Hearing Statement (Attachments: # 1 Exhibit A, # 2 Exhibit B)(Nelson, Edward)

EXHIBIT A

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A. Uniloc’s Proposed Constructions and Supporting Evidence for the Disputed Terms
Pursuant to P.R. 4-3(b), Uniloc‟s proposed constructions and supporting evidence for the disputed terms of the „216 Patent are found in the
table below. Uniloc notes that the phrase “local licensee unique ID generating means” was previously construed. See Uniloc USA, Inc. v. Microsoft
Corp., 447 F. Supp. 2d 177, 190-192 (D.R.I. 2006). In addition, it is Uniloc‟s understanding that Defendant Pervasive intends to belatedly seek leave
to construe the phrase “licensee unique ID,” which was previously construed, see Uniloc USA, Inc. v. Microsoft Corp., 447 F. Supp. 2d 177, 183-189
(D.R.I. 2006), and was subsequently affirmed by the Federal Circuit, see Uniloc USA, Inc. v. Microsoft Corp., 290 Fed. Appx. 337, 344 (Fed. Cir.
2008) (“The district court correctly construed the „licensee unique ID‟ as a unique identifier associated with a licensee that can be, but is not limited
to, personally identifiable information about the licensee or user.”). Furthermore, Uniloc understands that Defendants intend to urge the Court to
adopt an alleged disclaimer that seeks to alter the construction of all of the previously construed claim terms. Uniloc maintains that the submission of
these terms and issues is improper as Defendants have not sought or received leave from the Court to do so.

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DISPUTED
TERMS AND
PHRASES
Permits use of said
digital data...only if...has
matched . . .
(claim 1)
Local (in the phrase
“local licensee unique ID
generating means”)

SUPPORTING EVIDENCE1

UNILOC’S PROPOSED
CONSTRUCTION
The ordinary meaning of the phrase is
clear and unambiguous. Thus, the
phrase does not require construction.

„216 Patent: Col. 3:22-42, Col. 4:30-43, Col. 4:55-63, Col. 7:2135, Col. 13:54-14:1.

Uniloc objects to the inclusion of this
phrase because under the Court‟s Orders
Defendants were first required to seek
leave before submitting previously
construed terms. The phrase “local
licensee unique ID generating means”
was construed previously. Uniloc will
address this phrase should the Court
grant leave inviting reconsideration,
however, Uniloc‟s position is that the
previous construction of “local licensee
unique ID generating means” should
govern:

Uniloc notes that this phrase was previously construed by the
District of Rhode Island. See Uniloc USA, Inc. v. Microsoft
Corp., 447 F. Supp. 2d 177, 190-192 (D.R.I. 2006). Uniloc
contends that Defendants require leave from the Court to reconstrue or alter this construction, which has not been granted.
Should the Court ultimately grant Defendants leave to submit
this term, Uniloc identifies the following:

Function: to generate a local or remote
licensee unique ID/registration key.
Structure: a summation algorithm or a
summer and equivalents thereof

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




Uniloc USA, Inc. v. Microsoft Corp., 447 F. Supp. 2d
177, 190-192 (D.R.I. 2006) and the references cited
therein.
Uniloc‟s Opening Claim Construction briefing from
Uniloc USA, Inc. et al. v. Microsoft, No. 03-CV-440,
Dkt. No. 137 (D.R.I. Feb. 24, 2006), including any
supporting materials and references therein.
Uniloc‟s Reply Claim Construction briefing from Uniloc
USA, Inc. et al. v. Microsoft, No. 03-CV-440, Dkt. No.
141 (D.R.I. Mar. 27, 2006), including any supporting
materials and references therein.

Uniloc also identifies the claim language of the asserted and unasserted claims of the „216 Patent. Furthermore, as Uniloc contends that several of the terms do not require
construction, and given that several of the terms require leave from the Court, which Defendants have not obtained as of the filing of this Joint Statement, Uniloc reserves the right
to rely on any intrinsic and extrinsic evidence proffered by Defendants. In addition, Uniloc reserves the right to present additional intrinsic or extrinsic evidence as necessary to
rebut any arguments proffered by any defendant.

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3

DISPUTED
TERMS AND
PHRASES
Comprises part of said
digital data when
executed on said
platform

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(claim 8)
Prosecution History
Disclaimer Applicable
To All Claims

SUPPORTING EVIDENCE1

UNILOC’S PROPOSED
CONSTRUCTION
Uniloc objects to construing this phrase
in isolation. This phrase requires no
construction when read in context.

„216 Patent: Col. 2:14-23, Col. 13:54-14:1, Col. 14:24-31.

Uniloc objects to the inclusion of this
issue because under the Court‟s Orders
Defendants were first required to seek
leave before seeking to alter previously
construed terms and phrases. Through
the application of this alleged
disclaimer, Defendants are seeking to
alter the construction of all of the
previously construed claims. Uniloc
will address this issue should the Court
direct, however, Uniloc‟s position is that
there has been no “prosecution history
disclaimer” and Defendants‟ position is
unfounded.

Uniloc understands that Defendants are essentially asking it to
prove a negative. As such, it is difficult for Uniloc to pinpoint
specific sections of the intrinsic record. Thus, if the Court
requires Uniloc to address this issue, it believes that it would
rely on portions of the intrinsic record, including the
reexamination prosecution history. In addition, Uniloc may also
rely on the previous opinions from the District of Rhode Island
and the Federal Circuit.

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