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

Filing 248

MOTION to Strike Previously Construed Claim Terms From the Parties' P.R. 4-3 Statement by Uniloc Singapore Private Limited, Uniloc USA, Inc.. (Attachments: # 1 Text of Proposed Order)(Nelson, Edward)

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

UNILOC USA, INC., ET AL.
Plaintiffs,
vs.
SONY CORPORATION OF AMERICA,
ET AL.
Defendants.
UNILOC USA, INC., ET AL.
Plaintiffs,
vs.
DISK DOCTORS LABS, INC., ET AL.
Defendants.
UNILOC USA, INC., ET AL.
Plaintiffs,
vs.
NATIONAL INSTRUMENTS CORP., ET
AL.
Defendants.

UNILOC USA, INC., ET AL.
Plaintiffs,
vs.
ENGRASP, INC., ET AL.
Defendants.

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CASE NO. 6:10-CV-373
PATENT CASE

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CASE NO. 6:10-CV-471
PATENT CASE

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CASE NO. 6:10-CV-472
PATENT CASE

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CASE NO. 6:10-CV-591
PATENT CASE

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BMC SOFTWARE, INC., ET AL.
Defendants.

UNILOC USA, INC., ET AL.
Plaintiffs,
vs.
FOXIT CORPORATION, ET AL.
Defendants.

SYMANTEC CORPORATION, ET AL.
Plaintiffs,
vs.
UNILOC USA, INC., ET AL.
Defendants.

CASE NO. 6:10-CV-691
PATENT CASE

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vs.

CASE NO. 6:10-CV-636
PATENT CASE

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UNILOC USA, INC., ET AL.
Plaintiffs,

CASE NO. 6:11-CV-33
PATENT CASE

UNILOC’S MOTION TO STRIKE PREVIOUSLY CONSTRUED
CLAIM TERMS FROM THE PARTIES’ P.R. 4-3 STATEMENT
Plaintiffs Uniloc USA Inc. and Uniloc Singapore Limited (“Uniloc”) file this
Motion to Strike and would show the Court as follows:
I.

INTRODUCTION

In its May 20, 2011, Memorandum Opinion and Order, the Court stated:
The Court notes that many claim terms have been previously construed
and appealed to the Federal Circuit. While the Court understands the
parties‟ need to preserve their rights for appeal, the Court prefers to
minimize the time spent on previously construed terms. Accordingly,
before the parties file a Joint Claim Construction and Prehearing
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Statement, the parties shall meet and confer regarding preserving the
parties‟ arguments for appeal by stipulation rather than resubmitting
previously construed terms for construction. The parties must seek leave
and show good cause to submit previously construed terms for
construction.

(Id. at p. 7 (emphasis added)). The Court reaffirmed this sentiment in its June 8, 2011,
Docket Control Order:
The Court prefers to minimize the time spent on previously construed
terms. The parties shall meet and confer regarding preserving the parties‟
arguments for appeal by stipulation rather than resubmitting previously
construed terms for construction. The parties must seek leave and show
good cause to submit previously construed terms for construction. The
parties shall coordinate to file one Joint Claim Construction and
Prehearing Statement applicable to all the Uniloc cases.
The deadline for the parties to file their combined P.R. 4-3 Joint Claim
Construction and Prehearing Statement is today, August 29, 2011, and Uniloc‟s opening
claim construction brief is due on September 12, 2011. Uniloc‟s understanding of the
Court‟s Orders is that if Defendants wished to submit previously construed terms, they
needed to have sought leave from the Court weeks ago in order to provide the Court an
opportunity to consider the request and rule prior to the filing of the P.R. 4-3 Joint
Statement.
Yet in the P.R. 4-3 Statement, Defendants have submitted previously construed
terms for the Court‟s consideration. Also in this Statement, Defendants have buried a
purported request for leave to reconstrue the previously construed terms. By waiting
until this late date, however, Defendants have ignored this Court‟s Orders and put Uniloc
in the awkward position of having to prepare its opening Markman brief without certainty
as to whether or not it should brief the previously construed claim terms.

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Defendants should not be rewarded for their failure to diligently comply with this
Court‟s Orders, and Uniloc requests that the Court strike Defendants‟ proposed reconstructions such that they need not be address them in the parties‟ upcoming Markman
briefs.
II.

DEFENDANTS ARE SEEKING TO SUBMIT PREVIOUSLY
CONSTRUED TERMS WITHOUT PERMISSION FROM THE
COURT

On August 28, 2011, Uniloc was informed by Chad Huston, counsel for
Defendant Pervasive Software, Inc., that “Pervasive intends to seek leave of court to
construe „licensee unique ID‟ on Monday.” This term was previously construed by the
District of Rhode Island to mean “a unique identifier associated with a licensee.” See
Uniloc USA, Inc. v. Microsoft Corp., 447 F. Supp. 2d 177, 183-189 (D.R.I. 2006). And
the Federal Circuit affirmed it. 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.”). Uniloc does not believe
that Pervasive can show good cause to re-construe this term. Furthermore, Pervasive has
no excuse for its failure to seek leave before now.
Defendants have also expressed their intention to submit the term “local (in the
phrase „local licensee unique ID generating means‟)” for construction as indicated in the
P.R. 4-3 Joint Statement. The phrase “local licensee unique ID generating means” was
previously construed in Rhode Island to mean “Function: to generate a local or remote
licensee unique ID/registration key; Structure: a summation algorithm or a summer and
equivalents thereof.” Uniloc, 447 F. Supp. 2d 177, 190-192. Defendants have stated
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their belief that they do not need leave to present this term for construction. Even though
Defendants are ostensibly only construing the term “local” within the context of the
specific phrase “local unique ID generating means,” by doing so Defendants are
advocating to alter the previous construction. Accordingly, Uniloc contends they should
have sought leave prior to this point.
Finally, two separate groups of Defendants intend to submit two “disclaimers” of
varying scope for the Court‟s consideration based on statements attributable to the
patentee in reexamination.

Through the application of either alleged disclaimer,

Defendants are seeking to affect the construction of previously construed patent claims
through narrowing amendments to prior constructions.
As this Court is well aware, the doctrine of prosecution history disclaimer “limits
the interpretation of claims so as to exclude any interpretation that may have been
disclaimed or disavowed during prosecution in order to obtain claim allowance.” Omega
Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). For the doctrine to
apply, the disclaimer of claim scope must be clear and unmistakable. Computer Docking
Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2008). Indeed, the Federal
Circuit has stated, “we will find that the applicant disclaimed protection during
prosecution only if the allegedly disclaiming statements constitute a clear and
unmistakable surrender of subject matter.” Ecolab, Inc. v. FMC Corp., 569 F.3d 1335,
1342 (Fed. Cir. 2009) (quoting Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241,
1251 (Fed. Cir. 2000)).
There is no statement in the reexamination file history that meets this threshold,
and Defendants‟ disclaimer issue is little more than a backdoor attempt to re-address
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previously construed claim terms without making a threshold case for disclaimer that
meets the Court‟s good cause standard.
It bears mention that the last Office Action in the reexamination was mailed on
January 18, 2011, and Uniloc submitted its reply on or around March 18, 2011.
Defendants have had months to consider the reexamination file history and ample
opportunity to seek leave without leaving Uniloc to guess at what issues will be relevant
to its opening brief on claim construction.
III.

CONCLUSION

In order to provide clarity in the claim construction briefing process, Uniloc
respectfully requests that the Court strike Defendants‟ untimely attempts to submit
previously construed terms for construction. Specifically, Uniloc requests that the Court
issue an order stating (1) that the terms “local unique ID” and “local (in the phrase „local
licensee unique ID generating means)” shall not be briefed and (2) that the alleged
disclaimer issue affecting all terms shall not be briefed. If, however, the Court desires to
see some (or all) of the issues discussed above briefed and addressed in the upcoming
claim construction hearing, Uniloc respectfully requests the Court allow it at least five
additional days to submit pertinent briefing.

Dated: August 29, 2011

By:
/s/ Edward R. Nelson, III
Edward R. Nelson, III
Texas State Bar No. 00797142
Barry J. Bumgardner
Texas State Bar No. 24041918
Steven W. Hartsell
Texas State Bar No. 24040199
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S. Brannon Latimer
Texas State Bar No. 24060137
Jaime K. Olin
Texas State Bar No. 24070363
NELSON BUMGARDNER CASTO, P.C.
3131 West 7th Street, Suite 300
Fort Worth, Texas 76107
[phone]
[phone] (fax)
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
T. John Ward, Jr.
Texas State Bar No. 00794818
J. Wesley Hill
Texas State Bar No. 24032294
WARD & SMITH LAW FIRM
111 West Tyler St.
Longview, Texas 75601
Tel: [phone]
Fax: [phone]
[e-mail]
[e-mail]
ATTORNEYS FOR PLAINTIFFS
UNILOC USA, INC. AND
UNILOC SINGAPORE PRIVATE
LIMITED

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CERTIFICATE OF SERVICE
I hereby certify that on the 29th day of August 2011, I electronically filed the
foregoing document with the clerk of the court for the U.S. District Court, Eastern
District of Texas, Tyler Division, using the electronic case filing system of the court. The
electronic case filing system sent a “Notice of Electronic Filing” to the attorneys of
record who have consented in writing to accept this Notice as service of this document by
electronic means.
/s/ Edward R. Nelson, III
Edward R. Nelson, III

CERTIFICATE OF CONFERENCE
On Thursday, August 25, 2011, Uniloc and Defendants‟ counsel participated in a
telephonic conference to discuss the filing of the parties‟ P.R. 4-3 Statement. This
conference lasted over an hour and covered a number of topics related to the P.R. 4-3
Statement. During the conference, a discussion was held regarding the inclusion of the
two terms and “disclaimer” issue Uniloc seeks to strike in the present Motion. Uniloc
contended that the inclusion of these terms in the P.R. 4-3 Statement was improper
because defendants had not previously sought leave (or been granted leave) as called out
in the Court‟s Discovery Order. Defendants disputed Uniloc‟s contention. No resolution
to this issue was reached during the conference. Email correspondence on this issue
continued through the weekend. As of the time of this filing, no resolution has been
reached.
/s/ Barry J. Bumgardner
Barry J. Bumgardner

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