Uniloc USA, Inc. et al v. Activision Blizzard, Inc.

Filing 577

MEMORANDUM OPINION AND ORDER. The Court interprets the claim language in this case in the manner set forth above. Signed by Judge Leonard Davis on 11/17/14. (mll, )

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

UNILOC USA, INC., ET AL.,
Plaintiffs,
v.
ACTIVISION BLIZZARD, INC.,
ET AL.,
Defendants.

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§ CAUSE NO. 6:13-CV-256
§
§ CONSOLIDATED LEAD CASE
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§
§
§
§

MEMORANDUM OPINION AND ORDER
This Memorandum Opinion construes the disputed claim terms in U.S. Patent No.
5,490,216 (“the ‟216 Patent”). In lieu of holding a Markman hearing on claim construction
issues in this case, the parties stipulated to rely on claim construction briefing and proceedings in
an earlier case, styled Uniloc USA, Inc. v. Sony Corp. of Am. et al., No. 6:10-cv-373 (“Uniloc I”).
Docket No. 72. The Court granted the parties‟ stipulation on July 17, 2014 and incorporated the
Uniloc I claim construction filings into the record. Docket No. 73. This Memorandum Opinion
and Order memorializes the constructions in Uniloc I and incorporates the agreed constructions
in the parties‟ stipulation.1
BACKGROUND
Plaintiffs Uniloc USA, Inc. and Uniloc Luxembourg S.A. (collectively, “Uniloc”) assert
the ‟216 Patent against Defendants Activision Blizzard Inc. and Electronic Arts, Inc. The ‟216
Patent discloses a software registration system that permits a user to activate software in a use
mode if and only if a license verification procedure has been successfully executed.
1

The claim constructions in this Order are based on Docket Nos. 192, 202, 204, 205, 207, 208, 209, 211, 213, 214,
215, and 221 in Uniloc I and the parties‟ joint stipulation in the instant case. See Docket No. 73 at 1–2.

APPLICABLE LAW
“It is a „bedrock principle‟ of patent law that „the claims of a patent define the invention
to which the patentee is entitled the right to exclude.‟” Phillips v. AWH Corp., 415 F.3d 1303,
1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys.,
Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). In claim construction, courts examine the patent‟s
intrinsic evidence to define the patented invention‟s scope. See id.; C.R. Bard, Inc. v. U.S.
Surgical Corp., 388 F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad
Commc’ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). This intrinsic evidence includes
the claims themselves, the specification, and the prosecution history. See Phillips, 415 F.3d at
1314; C.R. Bard, Inc., 388 F.3d at 861. Courts give claim terms their ordinary and accustomed
meaning as understood by one of ordinary skill in the art at the time of the invention in the
context of the entire patent. Phillips, 415 F.3d at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n,
342 F.3d 1361, 1368 (Fed. Cir. 2003).
The claims themselves provide substantial guidance in determining the meaning of
particular claim terms. Phillips, 415 F.3d at 1314. First, a term‟s context in the asserted claim
can be very instructive. Id. Other asserted or unasserted claims can also aid in determining the
claim‟s meaning because claim terms are typically used consistently throughout the patent. Id.
Differences among the claim terms can also assist in understanding a term‟s meaning. Id. For
example, when a dependent claim adds a limitation to an independent claim, it is presumed that
the independent claim does not include the limitation. Id. at 1314–15.
“[C]laims „must be read in view of the specification, of which they are a part.‟” Id.
(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)).

2

“[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)); see also Teleflex, Inc. v.
Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). This is true because a patentee may
define his own terms, give a claim term a different meaning than the term would otherwise
possess, or disclaim or disavow the claim scope. Phillips, 415 F.3d at 1316. In these situations,
the inventor‟s lexicography governs. Id. Also, the specification may 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.

But, “„[a]lthough the specification may aid the court in

interpreting the meaning of disputed claim language, particular embodiments and examples
appearing in the specification will not generally be read into the claims.‟” Comark Commc’ns,
Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced
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 patent applicant may also define a term in prosecuting 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 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.” Omeg 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

3

Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2008).

Prosecution

disclaimer does not apply where the prosecution history is ambiguous. See id. at 1375.
Although extrinsic evidence can be useful, it is “„less significant than the intrinsic record
in determining the legally operative meaning of claim language.‟” Phillips, 415 F.3d at 1317
(quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a court
understand the underlying technology and the manner in which one skilled in the art might use
claim terms, but technical dictionaries and treatises may provide definitions that are too broad or
may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert
testimony may aid a court in understanding the underlying technology and determining the
particular meaning of a term in the pertinent field, but an expert‟s conclusory, unsupported
assertions as to a term‟s definition is entirely unhelpful to a court. Id. Generally, extrinsic
evidence is “less reliable than the patent and its prosecution history in determining how to read
claim terms.” Id.
AGREED CLAIM TERMS
In their Joint Claim Construction and Prehearing Statement (Uniloc I, Docket No. 192 at
7–9), the Uniloc I parties agreed to the construction of the following terms:
Claim Term
licensee unique ID

Agreed Construction
a unique identifier associated with a licensee

local licensee unique ID generating means

Function: to generate a local or remote licensee
unique ID

remote licensee unique ID generating means
Structure: a summation algorithm or a summer
and equivalents thereof
algorithm

any set of instruction that can be followed to
carry out a particular task

4

includes the algorithm utilized by said local
licensee unique ID generating means to
produce said licensee unique ID

includes the identical algorithm used by the
local licensee unique ID generating means to
produce the licensee unique ID2

use mode

a mode that allows full use of the digital data
or software in accordance with the license

mode switching means

Function: to permit the digital data or software
to run in a use mode if the locally generated
licensee unique ID matches with the remotely
generated licensee unique ID3
Structure: program code which performs a
comparison of two numbers or a comparator
and equivalents thereof

has matched

a comparison between the locally generated
licensee unique ID and the remotely generated
licensee unique ID shows that the two are the
same4

registration system

a system that allows digital data or software to
run in a use mode on a platform if and only if
an appropriate licensing procedure has been
followed

local (in the phrase “local licensee unique ID
generating means”)5

on the computer on which the digital data is
executing or is to be executed

2

The Uniloc I parties agreed that the construction of this term is “includes the identical algorithm used by the local
licensee unique ID generating means to produce the licensee.” Uniloc I, Docket No. 192 at 7. Because it appears
that the omission of “unique ID” from the end of the construction was a typographical error, the Court construes this
term as set forth above.
3
The Uniloc I parties submitted this agreed construction to the Court, except that their construction read “. . . to run
in a use mode of the locally generated licensee unique ID matches . . . .” Uniloc I, Docket No. 192 at 8 (emphasis
added). The Court construes the term as set forth above to correct for an apparent typographical error.
4
The Uniloc I parties submitted this agreed construction to the Court as “a comparison between locally generated
licensee unique ID . . .” Uniloc I, Docket No. 192 at 8. The Court construes this term as set forth above.
5
In Uniloc I, the parties agreed to the construction of this term after submitting their Joint Claim Construction and
Prehearing Statement. Uniloc I, Docket No. 202 at 2. The parties in the instant case also agree on this construction.
Docket No. 73 at 2.

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DISPUTED CLAIM TERMS
permits use of said digital data . . . only if [the local licensee unique ID] has matched [the
remote licensee unique ID]
Plaintiffs’ Proposed Construction
The ordinary meaning of the phrase is clear
and unambiguous. Thus, the phrase does not
require construction.

Defendants’ Proposed Construction
when [the local and remote licensee unique
IDs] have matched then the use of said digital
data is permitted

Claim 19 of the ‟216 Patent contains the term “permits use of said digital data . . . only if
[the local licensee unique ID] has matched [the remote licensee unique ID].”
The Uniloc I plaintiffs argued that no construction is necessary because the phrase would
be easily understood and applied by a jury. Uniloc I, Docket No. 202 at 13. The plaintiffs
criticized the defendants‟ proposed construction for merely “rearrang[ing] the words of the
disputed phrase.” Id. at 13–14. According to the plaintiffs, it would be improper to include the
defendants‟ “causal limitation” in the construction because the plain claim language does not
require it. Uniloc I, Docket No. 208 at 7–8. In response, the defendants argued that the
construction must require “a causal relationship between the matching and permitting of use” of
digital data. Uniloc I, Docket No. 205 at 4, 8–9. The defendants pointed to the First and Seventh
Embodiments in the specification to support their argument. Id. at 6–7.
The plaintiffs are correct. The claim language, particularly when read in view of the
specification and dependent claims, does not impose either a temporal or a direct and immediate
causation requirement. The defendants‟ construction improperly imports a limitation from two
embodiments by requiring access to the digital data “when” the licensee unique IDs match. See
Comark Commc’ns, Inc., 156 F.3d at 1187 (holding that particular embodiments in the
specification are generally not read into the claims). The Court finds that “permits use of said

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digital data . . . only if [the local licensee unique ID] has matched [the remote licensee unique
ID]” does not require construction.
Reexamination Disclaimer 1: Licensee Unique ID
Plaintiffs’ Proposed Construction
Defendants’ Proposed Construction
There is no disclaimer in the reexamination file The licensee unique ID cannot be generated by
history.
a checksum, summation algorithm, summer, or
equivalents thereof, used to test data integrity.
In Uniloc I, the defendants argued that the patentee had disclaimed the scope of “licensee
unique ID.” Uniloc I, Docket No. 205 at 10. The defendants argued that in order to overcome
prior art, the patentee had repeatedly stated “what its claims did and did not cover.”
(emphasis omitted).

Id.

The plaintiffs argued that the statements during reexamination were

explanations necessary to correct a misunderstanding by the examiner, rather than disclaimers.
Uniloc I, Docket No. 202 at 15.
The patentee did not disclaim the scope of “licensee unique ID” as the defendants argued.
In response to the examiner‟s non-final obviousness rejections, the patentee took issue with the
prior art‟s use of a checksum. Id. at 16 (“But Grundy‟s checksum is solely used to verify the
accuracy of user-entered information – it is not a unique identifier associated with a licensee.”).
The plaintiffs argued that the substitution of Grundy‟s checksum function in the second prior art
reference (“Hellman”), as advanced by the examiner, would not result in the claimed invention.
Id. at 16–17. This is because Grundy‟s checksum function would only provide Hellman with
data verification and not a licensee unique ID. See id. Therefore, the Court finds that there was
no disclaimer in the reexamination file history cited by the defendants in Uniloc I.

See

Honeywell Int’l, Inc. v. Universal Avionics Sys. Corp., 493 F.3d 1358, 1365 (Fed. Cir. 2007)

7

(declining to find disclaimer where a statement was not “sufficiently clear and deliberate to meet
the high standard for finding a disclaimer of claim scope”).
Reexamination Disclaimer 2: Licensee Unique ID
Plaintiffs’ Proposed Construction
Defendants’ Proposed Construction
There is no disclaimer in the reexamination file The licensee unique ID generated by the means
history.
recited in each of the claims must be derived
from at least one piece of information that is
specific to the user, such as name, billing
information, or product information unique to
the installation entered by the user. The
information cannot be specific to the computer
or independently generated by the computer.

The Uniloc I defendants also argued that the patentee had further disclaimed the scope of
“licensee unique ID” by limiting the types of information used to generate a licensee unique ID.
Uniloc I, Docket No. 205 at 16.

According to the defendants, the patentee stated during

reexamination that the invention requires “a unique identifier associated with a licensee.” Id. at
16–17. The examiner then issued a Notice of Intent to Issue Ex Parte Reexamination Certificate
in which he stated that “[t]he licensee unique ID . . . must be derived from at least [one] piece of
information that is specific to the user. . . . The information cannot be specific to the computer or
independently generated by the computer.” Uniloc I, Docket No. 205-5, Ex. 5. Therefore, the
defendants argued, the licensee unique ID must be unique to a licensee. Id. at 19–26. The
plaintiffs argued that there was no disclaimer and that the Federal Circuit acknowledged as much
when it construed “licensee unique ID” as merely “a unique identifier associated with a
licensee.” Uniloc I, Docket No. 202 at 23–25.
As the Uniloc I plaintiffs argued, there was no disclaimer. In separate litigation involving
the same patent, the Federal Circuit rejected an argument that the “licensee unique ID” must be
based on personal information about the user. Uniloc USA, Inc. v. Microsoft Corp., 290 F.
8

App‟x 337, 342 (Fed. Cir. 2008). The Federal Circuit recognized that although the specification
makes “ample reference to the licensee unique ID being generated from information unique to
the user,” it would be improper to import limitations from the preferred embodiments into the
claims. Id. at 342–43.
Here, the Uniloc I defendants have failed to show that the examiner‟s comments are
inconsistent with the construction of “licensee unique ID” as confirmed by the Federal Circuit.
Rather than require the patentee to amend the claim, the examiner allowed the claim as it was
previously construed. See Ancora Technologies, Inc. v. Apple, Inc., 744 F.3d 732, 736 (Fed. Cir.
2014) (explaining that an examiner‟s remarks in a notice of allowance may be insufficient to
limit claim scope).

Accordingly, the Court finds that there was no disclaimer in the

reexamination file history cited by the defendants.
CONCLUSION
For the foregoing reasons, the Court interprets the claim language in this case in the
manner set forth above. For ease of reference, the Court‟s claim interpretations are set forth in a
table in Appendix A and the parties‟ agreed constructions are set forth in a table in Appendix B.
So ORDERED and SIGNED this 17th day of November, 2014.

__________________________________
LEONARD DAVIS
UNITED STATES DISTRICT JUDGE

9

APPENDIX A
Claim Term
permits use of said digital data . . . only if [the
local licensee unique ID] has matched [the
remote licensee unique ID]

Court’s Construction
The Court finds that this term does not require
construction.

Reexamination Disclaimer 1: Licensee
Unique ID

The Court finds that there was no disclaimer
regarding the licensee unique ID.

Reexamination Disclaimer 2: Licensee
Unique ID

The Court finds that there was no disclaimer
regarding the licensee unique ID.

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APPENDIX B
Claim Term
licensee unique ID

Agreed Construction
a unique identifier associated with a licensee

local licensee unique ID generating means

Function: to generate a local or remote licensee
unique ID

remote licensee unique ID generating means
Structure: a summation algorithm or a summer
and equivalents thereof
algorithm

any set of instruction that can be followed to
carry out a particular task

includes the algorithm utilized by said local
licensee unique ID generating means to
produce said licensee unique ID

includes the identical algorithm used by the
local licensee unique ID generating means to
produce the licensee unique ID

use mode

a mode that allows full use of the digital data
or software in accordance with the license

mode switching means

Function: to permit the digital data or software
to run in a use mode if the locally generated
licensee unique ID matches with the remotely
generated licensee unique ID
Structure: program code which performs a
comparison of two numbers or a comparator
and equivalents thereof

has matched

a comparison between the locally generated
licensee unique ID and the remotely generated
licensee unique ID shows that the two are the
same

registration system

a system that allows digital data or software to
run in a use mode on a platform if and only if
an appropriate licensing procedure has been
followed

local (in the phrase “local licensee unique ID
generating means”)

on the computer on which the digital data is
executing or is to be executed

11